Ex Parte GANESAN et al

Patent Trials and Appeals Board

May 11, 2017

13297795 - (D) (P.T.A.B. May. 11, 2017)

United States Patent and Trademark Office
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.
13/297,795 11/16/2011 Dinesh GANESAN 20110915 3894
7590 05/15/201725537
VERIZON
PATENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
EXAMINER
SHIBEROU, MAHELET
ART UNIT PAPER NUMBER
2171
NOTIFICATION DATE DELIVERY MODE
05/15/2017 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):
patents @ verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DINESH GANESAN,
SAIVIVEK THIYAGARAJAN, and ROHIT P. DOOBAY
Appeal 2016-006670
Application 13/297,795
Technology Center 2100
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—4, 6—12, 14—20 and 22—27. Claims 5, 13 and 21
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-006670
Application 13/297,795
A. INVENTION
According to Appellants, the invention relates to providing “web
advertisements (e.g., banner advertisements) that are dynamically
customized to a user based on a user profile and based on the user's
transactions with a particular provider.” (Spec. 112).
B. REPRESENTATIVE CLAIM
Claim 1 is exemplary:
1. A method, comprising:
receiving, by a device, information associated with a user
of a user device;
receiving, by the device, information associated with one
or more transactions performed by the user, via the user device,
with a first web site;
creating, by the device, a user profile for the user based on
the information associated with the user and based on the
information associated with the one or more transactions;
receiving, by the device and from a second web site, a
cookie associated with the one or more transactions performed
via the user device;
retrieving, by the device, the user profile based on the
cookie;
receiving, by the device and from the second web site, an
Internet protocol (IP) address of the user device;
determining, by the device, a location of the user device
based on the IP address;
determining, by the device, whether products or services
offered by an entity associated with the first web site can be
purchased within a particular distance from the location;
generating, by the device and based on the user profile, an
advertisement customized to the user and the location when the
products or services offered by the entity associated with the
first web site can be purchased within the particular distance
from the location;
generating, by the device and based on the user profile, a
second advertisement customized to the user when the products
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or services offered by the entity associated with the first web site
cannot be purchased within the particular distance from the
location; and
providing, by the device and to the second web site, the
advertisement or the second advertisement.
C. REJECTION
Claims 1—4, 6—12, 14—20 and 22—27 stand rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over the teachings of Sahni et al. (US
2010/0023399 Al, publ. Jan. 28, 2010) (“Sahni”), McFadden et al. (US
2005/0086109 Al, publ. Apr. 21, 2005) (“McFadden”), Bauman et al. (US
2008/0086368 Al, publ. Apr. 10, 2008) (“Bauman”), and Morrisroe et al.
(US 2005/0144073 Al, publ. June 30, 2005) (“Morrisroe”).
II. ISSUES
The principal issues before us are (i) whether the Examiner erred by
improperly combining the cited references under 103(a), and (ii) whether the
Examiner erred in finding that the combination of Sahni, McFadden,
Bauman and Morrisroe teaches or would have suggested:
receiving, by the device and from the second web site, an
Internet protocol (IP) address of the user device;
determining, by the device, a location of the user device based
on the IP address;
determining, by the device, whether products or services
offered by an entity associated with the first web site can be
purchased within a particular distance from the location',
generating, by the device and based on the user profile, an
advertisement customized to the user and the location when the
products or services offered by the entity associated with the first
web site can be purchased within the particular distance from
the location',
(claim 1, emphasis added).
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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Bauman
1. Bauman discloses when the user visits the web page 100 a location
based content targeted ad is displayed as shown in Fig. IB. (1 17).
Such ads include markers which correspond to markers on a map
located below the targeted advertising display, where the markers
show the locations of the advertiser’s store. (120). Map services
such as an estimate of the distance in miles between the user’s
location and the target location is provided. (121).
2. Baumann discloses using the IP address of a user to determine the
geographic location of the user. (131).
3. Baumann teaches storing user information in a cookie. (135).
Sahni
4. Sahni discloses a Webserver request, which includes web page
data, is sent to an ad server requesting an ad for display on a
webpage. (H 21, 35). Sahni’s webpage data includes the identity
and location of the user. (H 21, 35, 36).
5. Sahni discloses use of two or more websites in determining
whether the advertisement is a best match for the user. (137).
McFadden
6. McFadden discloses using a consumer’s browsing activities to
select relevant advertisement to deliver to the consumer. (127).
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7. McFadden discloses tracking a customer’s browsing activities and
passing the contents of the user’s cookie to an advertising server.
(137).
IV. ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
103(a) Rejection of Claim 1
Appellants argue:
BAUMAN does not disclose or suggest that the ads are offered
by an entity associated with a first web site with which the user
has performed one or more transactions, as required by claim 1.
Instead, the ads of BAUMAN appear to be related to information
displayed on the currently displayed web site, which, at best, can
be construed as corresponding to the second web site of claim 1.
(App. Br. 12 (emphasis omitted)).
Appellants further argue:
BAUMAN does not disclose or suggest determining whether
products or services offered by an entity associated with the page
previously visited by the user can be purchased within a
particular distance from the location, as would be required by
claim 1. Instead, these sections of BAUMAN merely disclose
determining a geographical region based on a page previously
visited by the user.
{Id. (emphasis omitted)).
We have considered all of Appellants’ arguments and evidence
presented. However, we disagree with Appellants’ contentions regarding the
Examiner’s rejections of claim 1 over the cited references. We agree with
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and adopt the Examiner’s findings, and find no error with the Examiner’s
conclusion that claim 1 would have been obvious over the combined
teachings.
We note Appellants appear to argue Bauman does not teach the
contested limitations (App. Br. 12). However, the test for obviousness is
what Sahni, McFadden and Morrisroe when combined with Bauman, teach
or would have suggested to one of ordinary skill in the art. See In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). That is, “[o]ne cannot show
nonobviousness by attacking references individually where ... the
rejections are based on combinations of references.” In re Keller, 642 F.2d
413,426 (CCPA1981).
Here, we find no error with the Examiner’s reliance on Sahni, not
Bauman, for teaching and suggesting the contested limitation “receiving, by
the device, information associated with . . . transactions performed by the
user . . . with a first web site.” (Final Act. 3).
And, regarding the limitation,
generating, by the device and based on the user profile, a
second advertisement customized to the user when the products
or services offered by the entity associated with the first web site
cannot be purchased within the particular distance from the
location,
the Examiner relies on both Sahni and Bauman to teach and suggest this
limitation. (Final Act. 3, citing Sahni Fig. 1, pars 21, 30—32, 35—38, Final
Act. 5—6, citing Baumann pars. 17—18, 31, 33, 34, 44, Figs. 1A—B).
Furthermore, we agree with the Examiner’s findings that Baumann’s
website-location-based ads show pizza providers that are close to the user’s
location, which teaches or suggests the limitations “determining . . . can be
purchased within a particular distance from the location” and “generating . . .
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within the particular distance from the location.” (FF1—2). In fact, Bauman
specifically teaches determining the distance between the user’s location and
the advertised pizza providers. (Id.).
Although Appellants further argue “the final Office Actions’s
piecemeal rejection” makes it “unreasonable” to combine “sections of Sahni
and Bauman” “without the benefit of hindsight” (App. Br. 13—15), we agree
with the Examiner:
it would have been obvious to a person of ordinary skill in the art
at the time the invention was made to modify the method of Sahni
and McFadden with the teachings of Bauman. One would have
been motivated to make such a combination to allow advertisers
reach users without them interacting with the location products
(paragraph 0005).
(Final Act. 6). In fact, Sahni teaches the use of multiple websites in
developing targeted advertising. (FF 4—5). We are not persuaded of
Examiner error in finding the simple substitution of one known equivalent
element for another (first website and second website) would have obtained
predictable results.
Although we are fully aware that hindsight bias can plague
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful the Supreme Court has clearly stated the
“combination of familiar elements according to known methods is likely to
be obvious when it does no more than yield predictable results.” KSR Int'l
Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). That is, when considering
obviousness of a combination of known elements, the operative question is
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. at 417. The skilled
artisan is “a person of ordinary creativity, not an automaton.” Id. at 421.
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Here, we find Bauman provides advertisements, on a first website, for
products that can be purchased within a particular distance from the location
of the user device. (FF 1—3). We conclude combining this teaching with
determining the location of the user device, and receiving information on the
user’s past transaction history and user profile, would have yielded no more
than predictable results.
Further, Appellants have presented no evidence that combining
Bauman’s determination whether the product can be purchased within a
particular distance from the user’s location based on the user’s profile and
transaction history (FF 1—3), with Sahni’s development of targeted
advertising (FF 4—5), and McFadden’s tracking of a user’s browsing
activities by advertising servers (FF 6—7), where all three references are in
the same art, would have been “uniquely challenging or difficult for one of
ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Although
Appellants contend “BAUMAN merely disclose[s] determining a
geographical region based on a page previously visited by the user” (App.
Br. 12 (emphasis omitted)), we agree with the Examiner’s finding that
Bauman discloses determining the distance between the product sought and
the user’s location (Ans. 3; FF 1—2).
We find it would have been well within the skill of one skilled in the
art to incorporate Bauman’s providing of information related to products that
could be purchased within a particular distance from the user device’s
location into Sahni’s method of receiving device information and creating a
user profile for targeted advertisement, thereby using the distance
information to provide advertisements. See KSR, 550 U.S. at 417. That is,
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we agree Appellants’ invention is simply a modification of familiar prior art
teachings (as taught or suggested by the cited references) that would have
realized a predictable result, id. at 421.
On this record, we find no error in the Examiner’s rejection of
claim 1, and dependent claims 2-4 and 25 falling therewith (App. Br. 16),
over Sahni, Mcfadden, Bauman, and Morrisroe.
Although Appellants raise additional arguments urging for the
patentability of claims 6—9, 14—17, 22—24, rejected on the same basis as
claim 1 (App. Br. 17—26), we find that the Examiner has rebutted each of
those arguments in the Answer by a preponderance of the evidence. (Ans.
4—9). Therefore, we adopt the Examiner’s findings and underlying
reasoning, which we incorporate herein by reference. Consequently, we
have found no reversible error in the Examiner’s rejections of claims 6—9,
14—17, 22—24, and not separately argued dependent claims 10—12, 18—20,
26, and 27 falling therewith.
V. CONCLUSION AND DECISION
We affirm the Examiner’s rejections of claims 1—4, 6—12, 14—20 and
22-27 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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