Ex Parte Heiser et al

Patent Trial and Appeal Board

Sep 22, 2016

11865466 (P.T.A.B. Sep. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/865,466 10/01/2007
27885 7590
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
09/23/2016
FIRST NAMED INVENTOR
Russel Robert Heiser II
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.
SEGM 200003US01 5353
EXAMINER
HENRY, RODNEY M
ART UNIT PAPER NUMBER
3681
MAILDATE DELIVERY MODE
09/23/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte RUSSEL ROBERT HEISER II, NATHAN W. SHAHAN, and
JOHN CALE
Appeal2014-007056
Application 11/865,466
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. PETTING, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 2, 3, 5-11, 28, 31, and 33--42. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b). Appellants appeared for
oral hearing on September 13, 2016.
We REVERSE.
Appeal2014-007056
Application 11/865,466
Claim 36 is illustrative:
36. A method for selectively delivering consumer-
unsolicited internet advertising by an advertising delivery
provider to a set of consumers in a pre-existing association with
a financial institution, wherein the ad is delivered through a
website of the financial institution, including:
the advertising delivery provider receiving anonymous
records from the financial institution identified by anonymous
codings comprising consumer records of financial activity and
status and lacking personal identity information and an
indication of a consumer preference for delivery of internet
advertising, for forming an anonymous relationship between the
consumers and the advertising delivery provider;
the advertising delivery provider collating, via a
processor, the anonymous records in response to a targeted
advertising program received from a marketer including
matching the anonymous records to the targeted advertising
program and identifying the matches with corresponding ones
of the plurality of anonymous codings by selecting indicators
from the consumer records matching the targeted advertising
program;
the advertising delivery provider determining a plurality
of the targeted corresponding anonymous codings for
generating a market segment selected for receipt of an ad
comprising the advertising campaign;
the advertising delivery provider receiving a signal from
the financial institution indicative that a determined anonymous
coding corresponding to a consumer of the market segment is
on the website; and,
the advertising delivery provider communicating the ad
back to the financial institution for display as the unsolicited
advertisement to the corresponding consumer via the website in
direct response to the financial institution signal and without
consumer authorization therefor, and wherein the anonymous
relationship is maintained during the communicating.
2
Appeal2014-007056
Application 11/865,466
Appellants appeal the following rejections:
1. Claims 2, 7-11, 28, 31, 33-39, 41, and 42 under 35 U.S.C. § 102(e) as
anticipated by Apple (US 2007/0038516 Al, pub. Feb. 15, 2007).
2. Claims 3 and 40 under 35 U.S.C. § 103(a) as unpatentable over Apple
and Bender (US 2002/0099824 Al, pub. July 25, 2002).
3. Claim 5 under 35 U.S.C. 103(a) as unpatentable over Apple and
Tokorotani (US 2003/0036979 Al, pub. Feb. 20, 2003).
4. Claim 6 under 35 U.S.C. 103(a) as unpatentable over Apple, Tokorotani
and Ives (US 2007/0067267 Al, pub. Mar. 22, 2007).
ISSUE
Did the Examiner err in rejecting claim 36 because Apple does not
describe an advertising delivery provider receiving anonymous records
lacking personal identity information?
ANALYSIS
Anticipation
The Appellants argue that Apple does not disclose the claimed
anonymity between the ad provider and the consumer. We agree.
The Examiner relies on paragraphs 489 and 708 of Apple for teaching
this subject matter.
We find that Apple discloses a user response measurement system
("URMS ") for measuring, through a media device, when and/ or where a
wireless device user views an advertisement and/ or if, when, how and/ or to
what degree such user responds to the advertisement (Apple i-f 215). The
URMS includes various modules including a Payment Code Module 0730
3
Appeal2014-007056
Application 11/865,466
(Id. i-f 355). The Payment Code Module 0730 generates a payment file that
reflects a user's purchase of a product (Id. i-f 487). The payment file is
created from an electronic receipt that includes a code to identify the product
and a code to identify the customer. The customer code is any data used by
the advertiser or retailer to identify the customer and may include a Shopper
Loyalty ID code assigned to the customer by the retailer, a phone number, a
name and/or any other data which identifies the customer (Id. i-f i-f 488-489).
The Shopper Loyalty ID Code is a code given to the customer by the
Retailer or Advertiser. As such, this portion of Apple does not disclose an
advertising delivery provider receiving anonymous records comprising
consumer records as required by claims 36 and 38 from which claims 2, 7-
11, 28, 31, 33-36, 37-39.
Paragraph 708 of Apple discloses that an Anonymous User Code is
given to the user. However, this portion of Apple also discloses that this
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