Ex Parte Fedele

Board of Patent Appeals and Interferences

Aug 5, 2011

11044501 (B.P.A.I. Aug. 5, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/044,501 01/27/2005 Samuel A. Fedele A3042USNP/XERZ200735US01 1366
62095 7590 08/05/2011
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
BORISSOV, IGOR N
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
08/05/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SAMUEL A. FEDELE
____________________

Appeal 2009-012948
Application 11/044,501
Technology Center 3600
____________________

Before: HUBERT C. LORIN, JOHN A. JEFFERY, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012948
Application 11/044,501

2
STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 (2002) from the
Examiner’s final rejection of claims 1-20. We affirm in part.

THE CLAIMED INVENTION
Appellant claims a customer profiling engine (Specification 2:5-7).
Claim 1 is illustrative of the claimed subject matter:
1. In a network, a customer profiling system comprising:

a first client server being configured:
to implement a first customer account,
to perform a profiling algorithm on a set of predefined
customer parameters, and
to assign said first customer account to a first one of a
plurality of predefined account classes; and,
a host server at a vendor facility, said host server separated
from said first client server by a customer firewall and being
configured:
to present an inquiry tab to said first customer account
and,
when said tab is selected, to port a user at said first
customer account to a first portal in accordance with said first
one of said plurality of predefined account classes assigned to
said first customer account.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hoffman

US 2003/0069859 A1

Apr. 10, 2003

Appeal 2009-012948
Application 11/044,501

3
REJECTIONS
The following rejection is before us for review:
The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) over
Hoffman.

ISSUES
Did the Examiner err in rejecting claims 1 and 10 under 35 U.S.C.
§ 103(a) over Hoffman as disclosing a client server that performs a profiling
algorithm and assigns a customer account, since Hoffman discloses
registering users for a computer system based on information regarding
preexisting relationships?
Did the Examiner err in rejecting claims 9 and 18 under 35 U.S.C. §
103(a) over Hoffman as disclosing assigning a first customer class to said
client server from among a plurality of customer classes based on the
searched parameters, each of said plurality of customer classes being
associated with a plurality of URLs, since Hoffman only has a single URL at
a “web start page” and no plurality of URLs associated with customer
classes?
Did the Examiner err in rejecting claims 2 and 11 under 35 U.S.C.
§ 103(a) over Hoffman as disclosing a device database and account classes
based on said device database since Hoffman does not contain such a
database or use of such database for assigning account classes?

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
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Appeal 2009-012948
Application 11/044,501

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5. Hoffman discloses a methodology that “provides the means to
efficiently capture, analyze, and feed back timely Supply Chain data to
the appropriate parties.” (¶ [0252]).
6. The Specification describes that the act of port[ing] a user at said first
customer account to a first portal involves being “routed to appropriate
portals containing specific information tailored to the client's profile.”
(Specification ¶ [0018]).
7. Hoffman discloses presenting an inquiry tab and port[ing] a user at
said first customer account to a first portal in accordance with said first
one of said plurality of predefined account classes assigned by its
Secure Web Portal, at which:
... any Internet user can get to the supply chain coordinator web
site start page. However, preferably, only a user with a valid
pre-established user identification can log in to the site. The
user identification (user name and password) assigns the user to
the appropriate user group and links this user to the appropriate
retail outlets, distribution centers and ADI's.”
(¶ [0544]).

8. Hoffman discloses a single URL at a “web site start page” where “any
Internet user can get to the supply chain coordinator” (¶ [0544]).
9. Hoffman discloses linking a user to retail sites once a user is logged on
the supply chain system, where the “user identification (user name and
password) assigns the user to the appropriate user group and links this
user to the appropriate retail outlets, distribution centers and ADI’s.” (¶
[0544]).
Appeal 2009-012948
Application 11/044,501

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10. Hoffman discloses separation or partitioning of information and
administration functions between different domains or servers such that
a change in one domain occurs without notice of another:
The separation of community 7702 and directory 7704 also
allows the administration in each community to be different
even though the user is shared. Consider the example presented
earlier in this section. The supply chain coordinator's IT may
control administration for board member reports, while the
actual community member controls administration for the order
management application. The separation allows changes to a
user's profile in one community without impacting the user's
existence in another.
(¶ [1314]).

11. The Specification describes that the “present exemplary embodiment
relates to the field of marketing goods and services using computer
networks.” (Specification 1:1-2).
12. The Specification describes that making information available to users
faces the problem of “avoiding supplying the customer with wasteful,
unnecessary, and/or unrelated information, offers, or the like.”
(Specification 1: 24-25).
13. Hoffman discloses that problems with making information available
includes that “[s]upply chain information flows today are fragmented,
limited, and, in some cases, non-existent. The lack of timely
communication between the different participants in the supply chain
has resulted in higher costs for the system” (¶ [0003]).
Appeal 2009-012948
Application 11/044,501

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ANALYSIS
Claims 1 and 10
Initially, we note that Appellant argues independent claims 1 and 10
together as a group. (App. Br. 11). Correspondingly, we select
representative claim 1 to decide the appeal of these claims, with remaining
claim 10 standing or falling with claim 1. See, 37 C.F.R. § 41.37(c)(1)(vii)
(2004).
Appellant argues Hoffman does not “teach or suggest the claimed
element of the ‘assignment of an account to an account class’.” (Appeal Br.
11).
We are not persuaded by Appellant’s argument, because Hoffman
discloses user registration in which a profiling algorithm on a set of
predefined customer parameters is used (FF 1), and users are “assigned to
specific user groups” (FF 2), thus meeting the claim language.
Appellant argues Hoffman fails to “teach or suggest a client server
with a first component that performs a profiling algorithm on a set of
predefined customer parameters nor do these paragraphs show assigning a
first customer account to a first one of a plurality of predefined account
classes.” (Appeal Br. 12).
We are not persuaded by Appellant’s argument. We find that the
Specification does not define the term client server (FF 3), so we generally
construe client server to mean a computer that performs functions related to
clients. We thus find that Hoffman discloses a client server at its policy
server (FF 4) because the policy server, like the client server in Hoffman, is
Appeal 2009-012948
Application 11/044,501

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a computer which establishes client identifications and associates the
identifications with an account class (FF 1, 2).
Appellant next argues Hoffman does not “show a second software
component at the host server that performs the recited presentation and
porting functions according to the assigned account classes.” (Appeal Br.
17).
We are not persuaded by Appellant’s argument because we find that
using a second software component at the host server in Hoffman would be
an obvious expedient in the art. This is because we find the Specification
describes that to port is simply routing a user to a web site containing
specific information tailored to the user (FF 6). We also find Hoffman
discloses a web server (FF 4), which we read as Appellant’s host server,
because it hosts a portal where a user’s login profile determines which links
are presented for corresponding content based on the login profile and where
the user is to be routed to the content. (FF 7). We further find Hoffman
discloses partitioning servers with data and administrative privileges
particular only to certain servers. (FF 10). We also find that it would have
been obvious to one of ordinary skill in the art to substitute a networking
firewall for the separation between client and host servers in Hoffman since
it would be a substitution of known parts with predictable results. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing United States v.
Adams, 383 U.S. 39, 40 (1966)).
We therefore find Hoffman’s web server portal as modified above
meets the claim requirements related to the functions of the host server.
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Appellant next argues Hoffman is not analogous art, because the
“present application is in the marketing art, whereas the Hoffman device is
in the accounting art.” (Appeal Br. 20-21).
The analogous-art test requires that the Board show that a reference is
either in the field of the applicant's endeavor or is reasonably pertinent to the
problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed.
Cir. 1992). References are selected as being reasonably pertinent to the
problem based on the judgment of a person having ordinary skill in the art.
Id.
We find both Hoffman and Appellant’s system address common
problems in the field of using computer networks to provide information to
users in the marketing of goods and services (FF 5, 11), to avoid
information quality problems that make selling products more difficult (FF
12, 13). We therefore find Hoffman is analogous art.
Appellant argues that in Hoffman, “none of the sections make any
mention of an algorithm ...” (Appeal Br. 22).
We are not persuaded by Appellant’s argument, because while the
elements must be arranged as required by the claim, this requirement is not
an ipsissimis verbis test, i.e., identity of terminology is not required. In re
Bond, 910 F.2d 831 (Fed. Cir. 1990). We find therefore, as explained above,
that Hoffman discloses “users can be registered based on information” (FF
1) which we find is a type of algorithm used to profile customer classes.
Appellant argues “clear error” because the Examiner “does not
present any analysis of how the cited paragraphs relates to the claim
language of the present application” (Appeal Br. 11, 19-20) and “also fails
Appeal 2009-012948
Application 11/044,501

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to address any or all of the specific arguments presented in the amendment
response to the previous non-final rejections ...” (Appeal Br. 22).
We are not persuaded by Appellant’s argument, because the Examiner
provides specific citations in Hoffman for each claim limitation, which we
find would enable one of ordinary skill in the art to understand the
relationship of the cited Hoffman paragraphs to each claim element. For
example, in the rejection of claim 1, the Examiner recites the first claim
limitation and associated citations, as follows: “a client server being
configured to: implement a first customer account [0678]-[0687]” (Answer
3). Additionally, the Examiner further explains:
Hoffman et al. does not specifically teach that the host server
separated from said first client server by a customer firewall.
However, Hoffman et al. does teach that “the various computers
may be connected to the network 4404 by way of a server 4414
which may be equipped with a firewall for security purposes.”
[0411], [0476].
(Answer 4). We therefore find the Examiner’s analysis articulated in the
Answer is sufficient..
Claims 2-8
Dependent claim 2 recites, in pertinent part, said first client server
includes a device database storing information relating networked devices at
said first customer account; said profiling algorithm is configured to
generate profile attributes and said first one of said plurality of defined
account classes based on said device database.
Appellant argues the “patentably distinct elements of a database, the
profiling attributes, and the database not being directly accessible by the host
server are not made mention of in Hoffman.” (Appeal Br. 23).
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We agree with Appellant. The Examiner rejected claim 2 with the
“[s]ame reasoning as applied to claim 1” without further explanation
(Answer 5). The Examiner’s response is that “he has cited particular
portions of the Hoffman reference as applied to the claims for the
convenience of the applicant and attempted to designate the relevant
portions of the cited sections as nearly as practicable ...” (Answer 9).
We find, however, no cited portions in the record of the device
database and account classes based on said device database in Hoffman,
and in our analysis of Hoffman we do not find these elements.
We therefore cannot sustain the rejection of claim 2. Since claims 3-8
depend from claim 2, and since we cannot sustain the rejection of claim 2,
the rejection of claims 3-8 likewise cannot be sustained.
Claims 11-17
Dependent claim 11 recites, in pertinent part, a device database and
account classes based on said device database in language very similar to
claim 2.
Appellant makes the same argument at claim 11 as presented at claim
2. For the same reasons at claim 2, above, we do not sustain the rejection of
claim 11. Since claims 12-17 depend from claim 11, and since we cannot
sustain the rejection of claim 2, the rejection of claims 12-17 likewise cannot
be sustained.
Claim 9
Independent claim 9 recites a method, comprising, in pertinent part,
searching selected parameters stored in the database using said profiling
engine; using the profiling engine, assigning a first customer class to said
client server from among a plurality of customer classes based on the
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searched parameters, each of said plurality of customer classes being
associated with a plurality of URLs, said first customer class being
associated with a first URL; using said first URL associated with said first
customer class, pointing to a first portal in said host server.
Appellant argues:
Based on the parameter interrogation, the method of claim 9
also includes assigning a first customer class to the client server
from among a plurality of customer classes using the profiling
engine, where each of the plurality of customer classes is
associated with a plurality of URLs and the first customer class
is associated with a first URL. The cited paragraphs [1043],
[1314], and [1416] of Hoffman appear silent with respect to this
further element of claims 9 or 18.
(Appeal Br. 26).

We agree with Appellant.
While we find Hoffman discloses user registration and assigning users
to customer classes (FF 1, 2), we do not find in Hoffman a disclosure of a
plurality of URLs which are associated with a customer class. We find
Hoffman discloses a single “web start page” associated with its application
which is accessible by anyone on the Internet (FF 8), and find that a logged
on user has access to links to content (FF 9). But this falls short of meeting
the recited claim language because the start page is reached via a single
URL, and there is no plurality of URLs associated with the customer classes
of which any is used to point a user to a portal, and Hoffman only provides
links to “retail outlets, distribution centers and ADI’s” (Areas of Direct
Influence), not a URL pointing to a portal.
We therefore do not sustain the rejection of claim 9. Claim 9 has no
dependent claims.
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Claims 18 and 19
Independent claim 18 recites, in pertinent part, a client server; said
client server being configured to interrogate selected parameters stored in a
database on said client server and to assign a first customer class to said
client server from among a plurality of customer classes based on the
interrogation, each of said plurality of customer classes being associated
with a plurality of URLs….
Appellant argues claim 18 in conjunction with claim 9, presenting the
same arguments (Appeal Br. 24-26).
We construe the interrogation of claim 18 to be the same step as
searching of claim 9, and therefore find claim 18 contains the same
requirement for a plurality of URLs associated with a portal as in claim 9.
Therefore, for the same reasons set forth above at claim 9, we do not sustain
the rejection of claim 18. Claim 19 depends from claim 18, and since we
cannot sustain the rejection of claim 18, the rejection of claim 19 likewise
cannot be sustained.
Claim 20
Dependent claim 20 recites, in pertinent part, wherein the host server
presents the inquiry tab to said first customer account and ports the user to
the first portal in accordance with the assigned class without any access to
said customer parameters.
Appellant argues that claim 20 recites “that the first client server
includes a device database” like claims 2 and 11, which database Hoffman
does not disclose (Appeal Br. 23).
We are not persuaded by Appellant’s argument, because Appellant is
arguing a claim limitation not present in the claims which does not call for a
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device database as set forth above. We further find that the customer
parameters on the client server may be “preexisting relationships” (FF 1),
which the host server... ports the user ... without any access to said customer
parameters because the authentication/authorization algorithm that uses the
preexisting relationship information is on the policy/client server (FF 4).
CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1, 10, and 20 under 35
U.S.C. § 103(a) over Hoffman.
The Examiner erred in rejecting claims 2-9 and 11-19 under 35 U.S.C.
§ 103(a) over Hoffman.

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 10, and
20 is AFFIRMED, and the Examiner’s rejection of claims 2-9 and 11-19 are
REVERSED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

MP