Ex Parte Fernandes

Board of Patent Appeals and Interferences

Jun 27, 2005

09514946 (B.P.A.I. Jun. 27, 2005)

1 Application for patent filed February 28, 2000.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD FERNANDES
____________
Appeal No. 2005-0473
Application No. 09/514,9461
____________
ON BRIEF
____________
Before DIXON, SAADAT and NAPPI, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 1, 3-10, and 22-25. Claims 2 and 11-21 have
been canceled.
We reverse.
BACKGROUND
Appellant’s invention is directed to presenting a tailored
promotion to a customer over a distributed communication network
based on the activity information related to the already visited
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web sites upon the customer’s visit to subsequent web sites. An
understanding of the invention can be derived from a reading of
exemplary independent claim 1, which is reproduced as follows:
1. A computer-implemented electronic commerce
apparatus for generating a tailored promotion of goods
and/or services offered by a subscriber to said apparatus
based on personal consumer preferences for presentation by
said subscriber to a consumer over a distributed
communication network, comprising:
a connection to said distributed communication network;
a database of goods and/or service promotion data
pertaining to goods and/or services offered by subscribers
to said apparatus; and
a consumer information storage, said consumer
information storage including a consumer identifier storage
for storing consumer identifier information identifying
individual consumers, and including for each stored consumer
identifier activity information pertaining to network sites
accessed by said individual consumers and associated with
individual consumers;
wherein said electronic commerce apparatus receives
said activity information, stores said activity information
in said consumer information storage by individual consumer,
receives from a particular subscriber network site consumer
identifier information associated with a consumer requesting
access to that subscriber network site, uses said stored
activity information in conjunction with said goods and/or
services promotion data in said database to create a
tailored promotion of goods and/or services offered by said
particular subscriber network site in response to said
received consumer identifier information, and transmits said
tailored promotion to said particular subscriber network
site for presentation to said consumer.
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The Examiner relies on the following references in rejecting
the claims:
U.S. Patents
Gardenswartz et al. (Gardenswartz) 6,055,573 Apr. 25, 2000
(filed Jan. 7, 1999)
Roth et al. (Roth) 6,285,987 Sep. 4, 2001
(filed Jan. 22, 1997)
Published U.S. Patent Application
Travis et al. (Travis) US 2002/0010668 A1 Jan. 24, 2002
(filed Jan. 27, 2000)
Claims 1, 3-10, and 22-25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gardenswartz and Roth.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gardenswartz and Travis.
We make reference to the answer (Paper No. 18, mailed May 6,
2004) for the Examiner’s reasoning and to the appeal brief (Paper
No. 17, filed February 17, 2004) and the reply brief (Paper No.
19, filed July 6, 2004) for Appellant’s arguments thereagainst.
OPINION
With respect to the 35 U.S.C. § 103 rejection of the claims
over Gardenswartz and Roth, we note that the Examiner relies on
Gardenswartz for teaching that cookies are used to record the
online activities of a consumer while the stored preferences may
be interpreted as the sites visited (answer, page 4). The
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Examiner further relies on Roth for teaching targeting ads by
tracking user’s visits to specific web sites (col. 1, lines 30-
38) where the characteristics of the subscribing site is
displayed to the user depending on the customer visiting (col. 2,
lines 20-42) (id.).
Appellant argues that the Gardenswartz sends targeted
advertisement to the consumers’ computers based on the consumers’
offline purchase histories that are sent to a database (brief,
page 6; reply brief, page 3). Appellant further asserts that
Gardenswartz mentions use of online activity only in the
background of the invention and identifies such activity for
providing tailored promotions as disadvantageous (brief, page 7;
reply brief, pages 4 & 5). Additionally, Appellant points out
that the proposed combination of Gardenswartz and Roth lacks
proper motivation and would not have resulted in the claimed
structure as no technical principle to tie the two references is
presented (id.).
In response to Appellant’s arguments, the Examiner merely
asserts that relying on the disclosed background is proper and
would provide the required suggestion regardless of other
teachings in Gardenswartz (answer, page 7). The Examiner further
argues that the participating web site that displays the targeted
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advertising is taken as the subscriber which subscribes to and
receives the services of the central server (id.).
As a general proposition, in rejecting claims under 35
U.S.C. § 103, the examiner bears the initial burden of presenting
a prima facie case of obviousness. See In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993) and In re Fine,
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). A
prima facie case of obviousness is established when the teachings
of the prior art itself would appear to have suggested the
claimed subject matter to one of ordinary skill in the art. See
In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir.
1993); Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051,
5 USPQ2d 1434, 1438 (Fed. Cir. 1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664
(Fed. Cir. 1985). In considering the question of the obviousness
of the claimed invention in view of the prior art relied upon,
the Examiner is expected to make the factual determination set
forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459,
467 (1966), and to provide a reason why one having ordinary skill
in the pertinent art would have been led to modify the prior art
or to combine prior art references to arrive at the claimed
invention. See also In re Rouffet, 149 F.3d 1350, 1355, 47
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USPQ2d 1453, 1456 (Fed. Cir. 1998). Such evidence is required in
order to establish a prima facie case. In re Piasecki, 745 F.2d
1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984).
We observe that claim 1 includes limitations related to the
use of consumer identifier information associated with a consumer
requesting access to a subscriber network site for transmitting
tailored promotions to the particular subscriber network site for
presentation to the consumer. Therefore, the consumer identifier
information based on the consumer’s online activities are used in
conjunction with the goods and services promotion data to create
the tailored promotion of goods and services offered by that
particular subscriber network site.
Gardenswartz, in the background of the invention section,
describes a method of targeted advertising over the Internet
using “cookies” that track a consumer’s online activity (col. 1,
lines 11-19). Once the consumer attempts to access as
advertiser’s web site, the advertiser generates banner ads
visible to the consumer when that site is visited (col. 1, lines
37-42). Although Gardenswartz disclosed invention takes
advantage of the consumer’s offline purchases for targeted
advertising, as stated by the Examiner, the information in the
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background section in itself teaches the use of cookies for
extracting consumer information.
Roth on the other hand, based on the tracked information
related to the sites a viewer has visited, provides a bidding
opportunity for various advertisers according to a set criteria.
The highest bid from those with matching specifications is
selected and the advertisement specified therein is displayed
(col. 2, lines 54-60).
Therefore, we agree with Appellant that, even based on the
background section and contrary to the Examiner’s assertion
(answer, page 5), it is not clear how the cookies in Gardenswartz
uses the consumer identifier information in conjunction with the
promotion data to send the claimed targeted ad to a subscriber
web site for presentation to the customer. Furthermore, we do
not find any specific arguments presented by the Examiner to
address the points of contention raised by Appellant as to how
Roth would have provided the missing features or to point to any
teaching in the references that would provide a suggestion for
combining Gardenswartz and Roth.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. “In
reviewing the examiner’s decision on appeal, the Board must
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necessarily weigh all of the evidence and argument.” In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). In this case, taking the web site that displays an ad as
a “subscriber” and taking displaying an ad for goods as the goods
offered by a subscriber (answer, page 5), as discussed by
Appellant (reply brief, pages 5 & 6), would result in improper
construction of the claimed language.
Rejections based on § 103 must also rest on a factual basis
with these facts being interpreted without hindsight
reconstruction of the invention from the prior art. The examiner
may not, because of doubt that the invention is patentable,
resort to speculation, unfounded assumption or hindsight
reconstruction to supply deficiencies in the factual basis for
the rejection. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967). In concluding that the bidding for the
advertisement displayed to a user in Roth is even relevant to
Gardenswartz’s tracked activities using cookies, without
providing any reasonable factual evidence, the Examiner attempts
to forge a combination of entirely different advertising
approaches.
In view of our analysis above, we find that the Examiner has
failed to set forth a prima facie case of obviousness because the
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necessary teachings and suggestions related to the claimed
creating a tailored promotion of goods and/or services offered by
the subscriber network site in response to a consumer identifier
information, as recited in independent claims 1 and 22 are not
shown. Accordingly, based on the weight of the evidence and the
arguments presented by the Examiner and Appellant, we are
constrained to reverse the Examiner’s decision and not sustain
the 35 U.S.C. § 103 rejection of claims 1, 3-10, and 22-25.
We note that the Examiner, in rejecting claim 8, in
alternative, relies on the combination of Gardenswartz and Travis
which neither includes any teaching that reads on the disputed
claimed features nor provides any suggestion for storing and
using products and goods reviewed information in conjunction with
the goods and services promotion data by a server. Accordingly,
we do not sustain the alternate 35 U.S.C. § 103 rejection of
claim 8.
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CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 1, 3-10, and 22-25 under 35 U.S.C. § 103 is
reversed.
REVERSED
JOSEPH L. DIXON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MAHSHID D. SAADAT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )
MDS/ki
Appeal No. 2005-0473
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