Ex Parte Gadhia et al

Patent Trial and Appeal Board

Sep 19, 2016

13605393 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/605,393 09/06/2012
130011 7590 09/21/2016
Shook, Hardy & Bacon L.L.P.
(AOL Inc.)
Intellectual Property Department
2555 Grand Blvd.
Kansas City, MO 64108-2613
FIRST NAMED INVENTOR
Hemang N. Gadhia
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
AOLI.246040 1810
EXAMINER
ANDERSON, SCOTT C
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/21/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
kspringer@shb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEMANG N. GADHIA,
RISHI KUMAR,
HELLMUT ADOLPHS,
andMATTHEWM. SAUNDERS
Appeal2014-003537
Application 13/605,393
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
BART A. GERSTENBLITH, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Hemang N. Gadhia, Rishi Kumar, Hellmut Adolphs, and Matthew M.
Saunders (Appellants) seek review under 35 U.S.C. § 134 of a final rejection
of claims 1--4 and 6-30, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed August 5, 2013) and the Examiner's Answer ("Ans.," mailed
November 12, 2013), and Final Action ("Final Act.," mailed March 5,
2013).
Appeal2014-003537
Application 13/605,393
The Appellants invented a way of providing mobile advertising using
data networks based on intelligence data associated with Intemet-
connectable devices. Spec., para. 3.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added). 2
1. A computer system for providing mobile advertising using
data networks based on intelligence data associated with
Intemet-connectable devices, the computer system comprising:
[A] a processor;
and
[BJ a memory coupled to the processor, the memory storing
instructions to cause the processor to perform operations
compnsmg:
[ 1] receiving
from an Intemet-connectable device
a first location event
captured by the Intemet-connectable device;
[2] determining a first location
of the Intemet-connectable device
based on the first location event;
[3] determining a first audience category
associated with a user of the Intemet-connectable device
based on the first location of the Intemet-connectable
device,
wherein the first audience category represents a brand or
subject matter of a brand associated with the first location
of the Intemet-connectable device;
2 Claims 1, 20, and 22 are the independent claims on appeal.
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[ 4] receiving
from the Intemet-connectable device
a second location event
captured by the Intemet-connectable device;
[5] determining a second location of the Intemet-connectable
device
based on the second location event;
[ 6] determining a second audience category
associated with the user of the Intemet-connectable
device
based on the second location of the Intemet-connectable
device;
[7] determining an audience segment to which the user of the
Intemet-connectable device belongs
and
based on at least the first audience category and the
second audience category,
wherein the audience segment comprises a group of
Intemet-connectable device users
defined based on at least one criterion common
among the group of Intemet-connectable device
users;
[8] transmitting an advertisement to the Internet-connectable
device,
wherein the advertisement is determined based on the
audience segment.
The Examiner relies upon the following prior art:
Grannan US 2007 /0244750 Al Oct. 18, 2007
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Appeal2014-003537
Application 13/605,393
Claims 12 and 16 stand rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention.
Claims 1--4 and 6-30 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Grannan.
ISSUES
The issues of definiteness tum primarily on whether one of ordinary
skill would understand the scope of the claims. The issues of anticipation
tum primarily on whether mental perceptions such as audience category and
segment, are deserving of patentable weight, and if so, whether Grannan is
within the scope of the claims.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are supported by a
preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of "event."
02. The plain meaning of "event" is something that takes place. 3
3 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE,
retrieved from https ://www.ahdictionary.com/word/ search.html? q=event
(5th ed. 2015) (last visited Aug. 22, 2016).
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Application 13/605,393
Facts Related to the Prior Art
Grannan
03. Grannan is directed to providing selected advertising to send to
a recipient. Grannan, para. 2.
04. Grannan describes the Advertising Knowledge Management
System (AKMS) accessing the advertisements database to select a
targeted advertisement to send to the subscriber. The AKMS
automatically calculates a product interest correlation score and
recommends and/ or selects an advertisement, access device and
advertisement modality to be used to send a selected
advertisement to a selected subscriber access device based on the
subscriber's current usage scenario. A subscriber usage scenario
includes a subscriber's current access device, location and
activity. For example, if a subscriber has a product interest
correlation score higher than a product interest correlation score
threshold set by an advertiser for a product category, the AKMS
can select and send an advertisement in the product category
formatted suitably for reception on the subscriber's cell phone
(access device) as the subscriber drives near one of the
advertiser's merchant physical locations. The subscriber's
location can be tracked by global positioning system (GPS), cell
tower proximity or triangulation or WiFi hot spot proximity and
factored into the bid price by the advertiser. Alternatively, the
user's current location, activity, and correlation scores for product
categories may be used to select and queue up an advertisement
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Application 13/605,393
for delivery later through a different access device. For example,
a merchant who is in the vicinity of a subscriber's recent location
may choose to send a 30-second television commercial, which
cannot be accommodated on the subscriber's current portable
access device. The commercial can be queued for delivery once
the subscriber is at home watching television rather than
immediately sending an advertisement to the subscriber's cell
phone. Grannan, para. 62.
ANALYSIS
Claims 12 and 16 rejected under 35 U.S. C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the invention
We are persuaded by Appellants' argument that one of ordinary skill
would understand the scope of the claims.
Claims 1--4 and 6--30 rejected under 35 U.S.C. § 102(b) as anticipated by
Grannan
Before entering into an analysis, we first make a claim construction
determination as to the two claims argued, claims 14 and 20. Claim 1 recites
receiving a location event and claim 20 recites receiving a network event.
As an event is an occurrence, which is not something amenable to reception,
we construe these receiving limitations as receiving data somehow reflecting
an event regarding some location or network.
4 Appellants argue claims 1 and 22 together. Br. 10-16.
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Application 13/605,393
With this in mind, the Examiner finds that Grannan describes the first
three steps as Grannan receives customer location data and correlates the
position with merchant physical locations. Thus, Grannan receives data
regarding an event of a customer's travelling and determines the location
based on that travel event. The correlation with a merchant's physical
location determines whether the customer is in a category of customers near
that location. Such a physical merchant location is a subject matter of the
merchant's brand. As the next three steps in the claim repeat the first three
steps, Grannan's description of continually tracking a customer accounts for
such repetition. As Grannan then makes a determination that the customer is
passing near the merchant physical location, this is within the scope of
determining that the customer is part of an audience segment approaching
the merchant location based on the customer categories of being located at
two locations approaching the location. The segment would be comprised of
all such customers approaching the location. Grannan then explicitly
describes transmitting the advertisement.
We are not persuaded by Appellants' argument that product interest
correlation scores are not determined based on location data. Br. 11. The
limitation at issue is determining an audience category. Although Grannan
relies on customer profiles to categorize customers, Grannan also relies on
location as this is needed to determine proximity to physical merchant
locations.
We are not persuaded by Appellants' argument that Grannan
describes determining an application based on a single location. Br. 12.
Appellants fail to consider that Grannan continues to track location.
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Application 13/605,393
We are not persuaded by Appellants' argument that Grannan fails to
describe the recited audience category and segment. As the Examiner finds,
both terms are broad. We illustrated how Grannan describes these, supra.
The Examiner goes on to find that the terms "category" and "segment" are
not deserving of patentable weight. Final Act. 6-7.
Claim 1 recites five determining steps, viz., determining each of a first
and second location of an Intemet-connectable device, determining each of a
first and second X based on the first and second locations and determining Y
based on the Xs. The Xs are labeled as a first audience category and a
second audience category associated with a user of the Intemet-connectable
device. One of the Xs, i.e., the first audience category, is further labeled as
representing a brand or subject matter of a brand associated with the first
location of the Intemet-connectable device. Y is labeled as an audience
segment to which the user of the Intemet-connectable device belongs based
on at least the first audience category and the second audience category,
wherein the audience segment comprises a group of Intemet-connectable
device users defined based on at least one criterion common among the
group of Intemet-connectable device users. Thus, the determining steps are
really to determine a location and some associated data. Nothing in the
claim depends on or enforces the perceptual labels. Mental perceptions of
what data represent are non-functional and given no weight. King Pharm.,
Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) ("[T]he
relevant question is whether 'there exists any new and unobvious functional
relationship between the printed matter and the substrate.'") (citations
omitted). See also In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994)
(describing printed matter as "useful and intelligible only to the human
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Application 13/605,393
mind" (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). uata
labels are just examples of such mental perceptions. Data, being a
succession of binary digits, are just those digits, not perceptual labels of
those digits. The binary digits may impose some functional consequence,
but absent some recitation of how so, such consequence is not an issue. We
therefore agree with the Examiner that even if the category and segment
limitations were not broad enough to encompass Grannan, although we find
they are supra, these limitations are undeserving of patentable weight.
Claim 20, separately argued, is similar to claim 1 except that claim 20
refers to network events rather than location events. The analysis is
accordingly similar given that Grannan's transmission of locations over a
network falls within the scope of both location events and network events.
After all, a transmission over a network is an occurrence of the network,
which is the definition of an event.
CONCLUSIONS OF LAW
The rejection of claims 12 and 16 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention is improper.
The rejection of claims 1--4 and 6-30 under 35 U.S.C. § 102(b) as
anticipated by Grannan is proper.
DECISION
The Examiner's decision rejecting claims 1--4 and 6-30 under 35
U.S.C. § 102(b) is affirmed.
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Application 13/605,393
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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