Ex Parte Landesmann

Board of Patent Appeals and Interferences

Aug 17, 2009

09888439 (B.P.A.I. Aug. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte MARK LANDESMANN 8
___________ 9
10
Appeal 2009-000421 11
Application 09/888,439 12
Technology Center 3600 13
___________ 14
15
Decided: August 17, 2009 16
___________ 17
18
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and 19
ANTON W. FETTING, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
23
An Oral Hearing was held on July 8, 2009. 24
Appeal 2009-000421
Application 09/888,439

2
STATEMENT OF THE CASE 1
Mark Landesmann (Appellant) seeks review under 35 U.S.C. § 134 of a 2
final rejection of claims 1, 10-13, 47-49, 51-52, 64-65, 68, 94, 100-103, 137-3
139, 141-142, 154-155, 158, 204, 206, 207- 238, 246, 250, 252-290, 298, 4
302, 304-339, 347, 351, and 353-357. These, along with claims 239-245, 5
247-249, 251, 291, 297, 299-301, 303, 340-346, 348-350, and 352 which 6
are withdrawn from consideration are the only claims pending in the 7
application on appeal. 8
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 9
(2002). 10
SUMMARY OF DECISION1 11
We AFFIRM-IN-PART. 12
THE INVENTION 13
The Appellant’s invention, comprises a method for buyer-driven targeting 14
comprising the steps of: separately receiving for each of a plurality of buyer 15
entities a respective third party proof of purchase record; entering 16
information from the received proof of purchase records into a searchable 17
electronic database; obtaining search criteria for the database; searching the 18

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed January 18, 2008) and Reply Brief (“Reply Br.,” filed April 16,
2008), and the Examiner’s Answer (“Ans.,” mailed April 16, 2008).
Appeal 2009-000421
Application 09/888,439

3
information in the database using the search criteria to obtain a group of 1
buyer entities; and providing an incentive to each of a plurality of the buyer 2
entities in said group. Specification 6:¶ 0020. 3
There are seven independent claims. Claim 207 is the broadest of the 4
independent method claims. Independent claims 259 and 308 are drawn to a 5
computer program product and a system for performing the method in claim 6
207. Independent method claim 1, essentially contains the limitations of 7
claim 207, plus most of the limitations added by dependent claims 208-228. 8
Independent claims 94 and 204 are drawn to a computer program product 9
and a system for performing the method in claim 1. Independent method 10
claim 206 is the narrowest of the independent claims. 11
An understanding of the invention can be derived from a reading of the 12
independent method claims 207 and 1, which are reproduced below 13
[bracketed matter and some paragraphing added]. Claim 207 is a broader 14
form of claim 1. The remaining independent claims are variants of these 15
claims expressed as a system or as a computer program product. 16
207. A method for buyer-driven targeting by a system 17
comprising: 18
[1] receiving data 19
from each of a plurality of buyer entities 20
comprising at least one respective third party purchase 21
record or information derived therefrom; 22
[2] electronically storing information associated with the data; 23
[3] for a plurality of product or service items offered for sale, 24
wherein each different item in the plurality of items is 25
either manufactured or marketed or distributed or 26
provided by a different third party advertiser in a 27
plurality of third party advertisers, 28
Appeal 2009-000421
Application 09/888,439

4
electronically making with respect to at least one of the 1
buyer entities, 2
based at least in part on the data, 3
at least one decision associated with the offering of 4
at least one from among a plurality of different 5
incentives, 6
with each incentive associated with at least one of 7
the product or service items and associated with at 8
least one of the third party advertisers, 9
wherein there is at least one different incentive 10
from each of a plurality of the different third party 11
advertisers, 12
each of the incentives offering at least one benefit 13
in exchange for at least one action associated with 14
a purchase of at least one of the items; and 15
[4] facilitating the offering of at least one of the incentives to 16
the buyer entity, 17
with the condition precedent for this operation that the 18
system has received from that buyer entity the at least 19
one respective third party purchase record or information 20
verifiably derived therefrom. 21
1. A method for buyer-driven targeting by a system comprising: 22
[1] receiving 23
from each of a plurality of buyer entities 24
at least one respective third party purchase record or 25
information derived therefrom, said purchase record or 26
information derived therefrom comprising 27
data associated with the purchase of products or 28
services 29
for which the payment was not carried out by the 30
system, 31
wherein the receipt of the third party purchase record or 32
information derived therefrom occurs 33
Appeal 2009-000421
Application 09/888,439

5
on the initiative and with the consent of the buyer 1
entity associated with that purchase record; 2
[2] electronically storing information associated with said data; 3
[3] for a plurality of product or service items offered for sale, 4
wherein each different item in said plurality of 5
items is either manufactured or marketed or 6
distributed or provided by a different third party 7
advertiser in a plurality of third party advertisers, 8
and 9
wherein said manufacture, marketing, distribution, 10
point of sale payment or provision of the product 11
or service is not carried out by the system in the 12
ordinary course of business, 13
electronically making with respect to at least one of said 14
buyer entities, 15
based at least in part on said data, 16
at least one decision associated with the offering 17
of at least one from among a plurality of 18
different preferential incentives, 19
with each incentive 20
associated with at least one of said 21
product or service items and 22
associated with at least one of the 23
third party advertisers, 24
wherein there is at least one different 25
preferential incentive from each of a 26
plurality of the different third party 27
advertisers, 28
each of said incentives offering at 29
least one benefit in exchange for at 30
least one action associated with a 31
purchase of at least one of said items, 32
said benefit not normally and publicly 33
accessible to said buyer entity or other 34
Appeal 2009-000421
Application 09/888,439

6
buyer entities in the same geographic 1
region on terms 2
which are at least objectively 3
equivalent, and 4
which do not include material 5
conditions that are different 6
from said at least one action, 7
said decision regarding the at least one incentive 8
that is to be offered to the buyer entity being based 9
at least in part on 10
stored information associated with the data 11
relating to a purchase 12
made by said buyer entity 13
with a merchant other than the third 14
party advertiser that is associated with 15
the incentive; and 16
[4] facilitating the offering of at least one of said preferential 17
incentives to said buyer entity, 18
without having transferred to said third party advertiser 19
any full name 20
associated with said buyer entity at the time that 21
the incentive is offered 22
but has not yet been responded to by said buyer 23
entity, 24
with the condition precedent for this step 25
that the system has received from that buyer entity 26
the at least one respective third party purchase 27
record or information verifiably derived therefrom. 28
29
THE REJECTIONS 30
The Examiner relies upon the following prior art: 31
Weinblatt US 5,515,270 May 7, 1996
Appeal 2009-000421
Application 09/888,439

7
Dedrick US 5,717,923 Feb. 10, 1998
Goldhaber US 5,855,008 Dec. 29, 1998
Walker US 6,434,534 B1 Aug. 13, 2002
Day US 6,484,146 B2 Nov. 19, 2002
1
Claims 1, 10-13, 47-49, 51-52, 64-65, 94, 100-103, 137-139, 141-142, 2
154-155, 204, 207-230, 232-238, 246, 250, 255, 259-282, 284-290, 298, 3
302, 308-331, 333-339, 347, and 351 stand rejected under 35 U.S.C. § 4
103(a) as unpatentable over Goldhaber, Weinblatt, and Day. 5
Claims 68 and 158 stand rejected under 35 U.S.C. § 103(a) as 6
unpatentable over Goldhaber, Weinblatt, Day, and Dedrick. 7
Claims 206, 231, 252-254, 256-258, 283, 304-306, 307, 308-310, 332, 8
353-355, 356, and 357-359 stand rejected under 35 U.S.C. § 103(a) as 9
unpatentable over Goldhaber, Weinblatt, Day, and admitted art. 10
ARGUMENTS 11
Claims 1, 10-13, 47-49, 51-52, 64-65, 94, 100-103, 137-139, 141-142, 154-12
155, 204, 207-230, 232-238, 246, 250, 255, 259-282, 284-290, 298, 302, 13
308-331, 333-339, 347, and 351 rejected under 35 U.S.C. § 103(a) as 14
unpatentable over Goldhaber, Weinblatt, and Day. 15
16
Independent Claims 207, 259 and 308 17
The Appellant argues these claims as a group. App. Br. 33-34. The 18
Appellant argues that the references do not disclose the submission of third 19
Appeal 2009-000421
Application 09/888,439

8
party purchase records by buyer entities within step [1], nor receiving step 1
[1] or facilitating step [4]. 2
Independent Claims 1, 94, and 204 3
The Appellant argues these claims as a group. App. Br. 14. The 4
Appellant argues that (1) Goldhaber does not disclose the receiving step [1] 5
(App. Br. 19-21); (2) Weinblatt does not remedy the third party purchase 6
record deficiency of Goldhaber (App. Br. 21-23); and (3) none of 7
Goldhaber, Weinblatt nor Day disclose or suggest the decision step [3] or the 8
offering step [4] (App. Br. 24-30). 9
Dependent Claims 10
The Appellant argues claims 10-13, 47-49, 51, 52, 64, 65, 229, 230, 232, 11
234-237, 246, and 250 individually, grouping some of those claims with 12
other dependent claims. 13
Claims 68 and 158 rejected under 35 U.S.C. § 103(a) as unpatentable over 14
Goldhaber, Weinblatt, Day, and Dedrick. 15
These claims depend from claims 13 and 103. The Appellant argues the 16
art does not describe calculating a charge for providing the incentive based 17
on both the size of a group of buyer entities, resulting from a search of the 18
stored data and the scores of the buyer entities. App. Br. 36. 19
Claims 206, 231, 252-254, 256-258, 283, 304-306, 307, 308-310, 332, 353-20
355, 356, and 357-359 rejected under 35 U.S.C. § 103(a) as unpatentable 21
over Goldhaber, Weinblatt, Day, and admitted art. 22
Independent Claim 206 23
Appeal 2009-000421
Application 09/888,439

9
The Appellant argues that (1) claim 206 contains the limitations as in 1
claim 1 and is patentable for the same reasons and (2) that none of the art 2
describes the limitation of gathering buyer information by automatically 3
accessing web-based online buyer accounts using buyer passwords and 4
usernames. App. Br. 40-42. 5
The remaining are all dependent claims. The Appellant argues 6
limitations in claims 231, 252-254, 256-258, 283, 304-306, 308-310, 332, 7
353-355, and 357-359. 8
ISSUES 9
The issues of whether the Appellant has sustained its burden of showing 10
that the Examiner erred in rejecting the claims turns on whether the prior art 11
describes the limitations argued by the Appellant within the scope of the 12
claims as broadly construed and whether one of ordinary skill would have 13
considered the teachings of Weinblatt and Day in practicing the invention in 14
Goldhaber. 15
FACTS PERTINENT TO THE ISSUES 16
The following enumerated Findings of Fact (FF) are believed to be 17
supported by a preponderance of the evidence. 18
19
20
Facts Related to Claim Construction 21
01. The disclosure contains no lexicographic definition of “third 22
party purchase record” but does refer to purchases listed from a 23
Appeal 2009-000421
Application 09/888,439

10
plurality of independent third parties in the proof of purchase 1
records. Spec. ¶ 0027. 2
Facts Related to Appellant’s Disclosure 3
02. One of the current efforts in prior art practice at the time of 4
filing by businesses to capture or infer information about a buyer 5
entity's purchases with other companies was establishing a 6
network of non-competing vendors who share information with 7
each other about a customer's past purchases, and who sell this 8
information to other non-competing businesses. Spec. ¶ 0007-09. 9
03. Advertising messages can be delivered or made accessible to 10
buyer entities thru any distribution channel including the 11
following channels or a combination thereof: by Email, Direct 12
Postal Mail (for single promotional mailings as well as catalogues 13
containing multiple incentive offers), messages sent to wireless 14
devices such as cell phones, pagers and PDA's (personal digital 15
assistants), on a central web site, thru banner ads that are served at 16
multiple web sites, thru the use of interactive television, thru 17
interactive kiosk's, by telephone and thru other channels. Spec. 18
35: ¶ 0178. 19
20
21
22
Goldhaber 23
Appeal 2009-000421
Application 09/888,439

11
04. Goldhaber is directed to delivering information electronically, 1
and more particularly, positively and negatively priced 2
advertising. Goldhaber 1:8-11. 3
05. Goldhaber’s user profiles. Goldhaber’s system links an ad and 4
the appropriate viewer by applying private, dynamic, and 5
interactive demographic profiles of potential viewers. Goldhaber 6
protects member privacy while maintaining the personal 7
information files for specialized targeting of ads. While many 8
businesses keep such profiles of customer interests and 9
transactions, Goldhaber’s profiles can be used and even marketed 10
while protecting the customer's identity. For example, a merchant 11
may be permitted to scan a profile to determine his affinity for the 12
customer, but cannot learn the customer's name or address. The 13
demographic profiles are constructed from interest questionnaires 14
and electronic tracking of his/her usage of the service, evolving 15
with the customer's transaction history. A customer can exclude 16
any transaction, such as purchasing of certain products from his 17
profile. A customer may edit his profile at any time to add or 18
delete interest features, and to delete any transaction records. 19
Goldhaber 6:28-60. Goldhaber develops a consumer profile in 20
two steps. First, a consumer pro-actively describes him or herself 21
to form a "base profile." Then the consumer's actions are 22
monitored, such that a representation is "overlaid" upon the self 23
description. Goldhaber can also generate a base profile from 24
historical data as well as self description. Goldhaber 7:11-22. 25
Appeal 2009-000421
Application 09/888,439

12
06. Editing Goldhaber’s profiles. Goldhaber allows the customer 1
to edit and update their profile at any time. Goldhaber 13:45. If 2
the consumer selects Goldhaber’s profile edit screen, the 3
consumer computer displays a plain-text representation of the 4
consumer's interest profile and allows the consumer to edit the 5
profile, add or delete items. Goldhaber 19:1-4. If the consumer 6
selects Goldhaber’s history screen, the consumer computer 7
displays the contents of account history and permits the consumer 8
to delete items. Goldhaber 19:11-14. 9
07. Goldhaber’s financial clearinghouse for payment. Goldhaber 10
describes using a financial clearinghouse for performing financial 11
transactions and may maintain account or transaction information 12
for each of the consumers, and may be responsible for assuring 13
that consumers pay for content delivered to them and are 14
compensated for paying attention to other information content 15
delivered to them. Goldhaber 10:1-8. The payment transactions 16
may be handled through an account debit or credit via the 17
financial clearinghouse. Goldhaber 10:58-61. 18
08. Goldhaber’s attention broker and trading house. Goldhaber 19
describes two variations of its invention implemented on a server, 20
an attention broker and a trading house. Goldhaber 10: 63-65. 21
Attention brokerage is the business of buying and selling 22
(brokering) the "attention" of consumers, that establishes a market 23
for advertisers to compete for the attention of consumers. 24
Goldhaber 4:46-50. A trading house includes the buying and 25
selling of arbitrary goods and services (including information) 26
Appeal 2009-000421
Application 09/888,439

13
over an electronic network. With the trading house, the 1
consumer's software agent may carry specific search buy/sell 2
instructions issued by the consumer, and the purveyors of items 3
and information for "sale" can also be represented by software 4
agents (called "salesmen") that actively seek out interested buyers. 5
Goldhaber 19:21-35. 6
09. Goldhaber’s software agents as individual subsystems. 7
Goldhaber’s consumer interest profiles may be stored at consumer 8
computers and/or at attention brokerage servers. In either case, 9
the consumer's interests are represented by one or more software 10
agents that stand in for the consumer even when the consumer's 11
computer is turned off. These software agents can "live" 12
anywhere in system. The function of the software agent is to 13
screen or filter ads or other forms of information against the 14
consumer interest profiles. When a customer signs up, Goldhaber 15
builds a personal agent for the customer that works around the 16
clock, searching out and screening new ads that match interests. 17
Goldhaber also provides a salesman agent, to search out interested 18
viewers and bring ads to their attention. Goldhaber 14:47 – 15:15. 19
10. Goldhaber’s negative pricing incentive. Goldhaber describes 20
its use of negative pricing by which advertisers compete for 21
available attention. Advertisers may make fixed offers that 22
viewers select, or may use attention bidding, a mechanism by 23
which advertisers actively compete by bidding for a viewer's 24
attention based on consumer interest estimates derived from 25
access to the viewer's electronic profiles detailing preferences and 26
Appeal 2009-000421
Application 09/888,439

14
past consuming behavior. Goldhaber 4:52-62. All the ads on 1
Goldhaber’s list are targeted to the consumer's needs, interests, 2
and preferences. Further, Goldhaber provides cash incentives to 3
view ads. Goldhaber 5:31-35. Alternatively, Goldhaber may 4
provide some other incentive such as a coupon. Goldhaber 11:13-5
14; 27-31. 6
11. Goldhaber’s description of existing practice. Goldhaber 7
describes how advertisers give consumers an incentive such as 8
money saving coupons and discount offers. For example, a 9
lingerie company can provide coupons or discount sales offers to 10
give the recipients a strong incentive to purchase the company's 11
lingerie. Goldhaber 3:30-40. 12
12. Goldhaber’s customization. Goldhaber designs ads virtually 13
custom-fitted to consumer preferences, so that ad messages are 14
welcomed and attentively viewed by the consumer. Finely 15
targeting and customizing ads based on the interests of particular 16
individual consumers maximizes efficiency and benefits both the 17
advertisers and the consumers. Goldhaber 5:3-10. 18
13. Goldhaber describes various forms of distribution via internet, 19
cable TV, on-line systems, local-area networks, wide-area 20
networks, and physically distributed CD-ROMs. Goldhaber 21
21:10-16. 22
23
24
25
Appeal 2009-000421
Application 09/888,439

15
Weinblatt 1
14. Weinblatt is directed to obtaining and storing information on 2
the purchasing behavior of a consumer as well as advertisements 3
to which the consumer has been exposed. Weinblatt 4:5-7. 4
15. Weinblatt describes how consumers are rewarded as part of 5
consumer monitoring. The value of the reward to the consumer is 6
enhanced if it is targeted by customizing the reward to the 7
purchases that have been made. Weinblatt 2:51 – 3:5. 8
16. Weinblatt describes several methods for obtaining customer 9
purchase data via in store computer system, including entering by 10
swiping or keying in a card. Weinblatt 2:12-17. 11
Day 12
17. Day is directed to a paperless coupon system which tracks 13
consumer purchasing behavior. Day’s system presents special 14
promotional offers to customers that include customized targeted 15
offers for specific customers. Day 3:19-22. 16
18. A determination is made whether a household has redeemed a 17
special offer up to the maximum quantity for which the special 18
offer was available. If so, the household will not see that special 19
offer again unless the manufacturer reinstates it. After a check-out 20
transaction is completed, and a sale is closed, the shopping history 21
of the customer is updated, to reflect all purchases made by the 22
customer. A determination can be made as to whether the 23
customer accepted a special offer, passed on the special offer (did 24
not make a purchase of any product for the category), or rejected 25
Appeal 2009-000421
Application 09/888,439

16
the special offer (purchased a competitor's product). Day 14:54-1
64. 2
19. Day can automatically increase the value of a special offer 3
available to a customer for a product if the customer previously 4
did not purchase that product offering a discount for that product 5
to the customer. Day 7:66 – 8:6. 6
20. Day describes using targeting parameters to decide on offers. 7
These parameters are applied to information on potential 8
customers. Day 4:18-31. 9
Dedrick 10
21. Dedrick is directed to dynamically customizing information. 11
Dedrick 2:3-5. 12
22. Dedrick’s system compiles aggregate information during 13
statistical compilation when requested for gathering metrics. 14
Dedrick 5:20-32. 15
Facts Related To The Level Of Skill In The Art 16
23. Neither the Examiner nor the Appellant has addressed the level 17
of ordinary skill in the pertinent arts of systems analysis and 18
programming, sales promotions or design of sales and 19
promotional systems. We will therefore consider the cited prior 20
art as representative of the level of ordinary skill in the art. See 21
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) 22
(“[T]he absence of specific findings on the level of skill in the art 23
does not give rise to reversible error ‘where the prior art itself 24
reflects an appropriate level and a need for testimony is not 25
Appeal 2009-000421
Application 09/888,439

17
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. 1
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). 2
Facts Related To Secondary Considerations 3
24. There are five affidavits submitted as evidence of non-4
obviousness. None of the affidavits refer to the art applied in the 5
current rejections, nor do they provide objective evidence of 6
commercial success or long felt need. 7
PRINCIPLES OF LAW 8
Obviousness 9
A claimed invention is unpatentable if the differences between it and 10
the prior art are “such that the subject matter as a whole would have been 11
obvious at the time the invention was made to a person having ordinary skill 12
in the art.” 35 U.S.C. § 103(a) (2000). See KSR Int’l Co. v. Teleflex Inc., 13
550 U.S. 398, 406 (2007). See also Graham v. John Deere Co., 383 U.S. 1, 14
13-14 (1966). 15
In Graham, the Court held that that the obviousness analysis is 16
bottomed on several basic factual inquiries: “[(1)] the scope and content of 17
the prior art are to be determined; [(2)] differences between the prior art and 18
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 19
in the pertinent art resolved.” 383 U.S. at 17. See also KSR, 550 U.S. at 20
406. “The combination of familiar elements according to known methods is 21
likely to be obvious when it does no more than yield predictable results.” Id. 22
at 416. 23
Appeal 2009-000421
Application 09/888,439

18
ANALYSIS 1
Claims 1, 10-13, 47-49, 51-52, 64-65, 94, 100-103, 137-139, 141-142, 154-2
155, 204, 207-230, 232-238, 246, 250, 255, 259-282, 284-290, 298, 302, 3
308-331, 333-339, 347, and 351 rejected under 35 U.S.C. § 103(a) as 4
unpatentable over Goldhaber, Weinblatt, and Day. 5
Independent Claims 207, 259 and 308 6
The first argument that the references do not disclose the receipt2 of third 7
party purchase records from buyer entities requires us to first construe the 8
phrases “third party purchase record” and “receiving data from each of … 9
buyer entities.” The disclosure contains no lexicographic definition of a 10
third party purchase record” but does refer to purchases listed from a 11
plurality of independent third parties in the proof of purchase records. FF 12
01. The plain meaning of the phrase is a purchase record from or associated 13
with a third party. 14
A purchase record is simply the noun “record” modified by the noun 15
adjective “purchase” and is therefore a record indicative of some purchase. 16
We find that because the adjective “purchase” is not further limited, the 17
purchase may be real or imagined and prospective, current, or retrospective 18
in scope. 19
The phrase “third party” is more ambiguous. On its face, the phrase 20
refers to a party other than two parties. The claim refers to buyer entities 21
and third party advertisers. By implication, the buyer entities must be one of 22
the first two parties and the third party advertisers are third parties. Thus the 23
Appeal 2009-000421
Application 09/888,439

19
claim does not specify a second of the first two parties. The Specification 1
does not refer to first or second parties as such. Thus, the scope of parties 2
who might be third parties is ambiguous. However, it is reasonably clear 3
that the supplier of a prior purchase is a third party because this is provided 4
as an example. FF 01. 5
The phrase “receiving data from each of … buyer entities” requires that 6
data be received somewhere and that the data be in some manner from buyer 7
entities. The phrase does not limit the manner of receipt or how directly or 8
indirectly the receipt is obtained from buyer entities. It is clear that any 9
historical records of purchases by a buyer are from the buyer executing a 10
purchase transaction as a buyer entity. The somewhere the records are 11
received from is the transaction site. 12
Having construed the terms at issue, we now compare the limitation to 13
the prior art. Goldhaber does obtain purchase transaction history data, which 14
is included among its profile data that is available for search. FF 05. This 15
data is obtained from the customer by software agents tracking all buy and 16
sell transactions. FF 09. Because the historical transactions are by the 17
various vendors the purchaser bought from, the vendors of those historical 18
purchases are third parties and the purchase records maintained by 19
Goldhaber are accordingly third party purchase records. Thus, we find that 20
Goldhaber describes receiving third party buyer records from buyer entities 21
as in limitation [1]. 22

2 The Appellant’s argument uses the word “submission” (App. Br. 33-34)
but claim 207’s limitation actually has the word “receiving.”
Appeal 2009-000421
Application 09/888,439

20
As to limitation [4], Goldhaber describes the existing practice of offering 1
incentives, such as coupons to purchasers. FF 11. Goldhaber also makes 2
such offers of cash or coupons with attention bidding derived from access to 3
the viewer’s profiles that results in ads targeted to an individual consumer’s 4
needs, interests and preferences. FF 10. These viewer profiles include the 5
above third party purchase data. FF 05. As found by the Examiner, one of 6
ordinary skill would have considered making such third party purchase data 7
that is already present in Goldhaber the condition precedent to offering the 8
coupons in Goldhaber. Ans. 29. It was known, as described by Weinblatt 9
that in consumer monitoring programs such as that of Goldhaber, the value 10
of the reward is enhanced if it is targeted by customizing the reward to the 11
purchases that have been made. FF 15. Thus, knowing the purchases would 12
be a condition precedent to making a customized offer. 13
For these reasons we find the Appellant’s arguments unpersuasive. To 14
the extent the Appellant relies on arguments that were made with regard to 15
the narrower claim 1 in support of claim 207 without specifying which 16
arguments were to be considered, we consider the claim 1 arguments next. 17
Independent Claims 1, 94, and 204 18
Argument (1) - Goldhaber does not disclose the receiving step [1]. This 19
is the same argument presented with claim 207 supra and we find it 20
unpersuasive for the same reasons. In particular, the Appellant again 21
paraphrases the limitation as the buyer submitting data (App. Br. 20: First 22
full ¶); whereas the claim limitation is that of receiving data from a buyer. 23
The Appellant argues that Goldhaber’s system submits the data. This 24
ignores the plain fact that the buyer caused those records to be created. 25
Appeal 2009-000421
Application 09/888,439

21
Again, the claim does not restrict the manner or level of indirection with 1
which such receipt occurs. 2
Limitation [1] in claim 1 contains two additional limitations beyond that 3
in claim 207 that the Appellant argues. In claim 1, the payment of the third 4
party purchase data was not carried out by the system and the data receipt is 5
on the initiative and with the consent of the buyer. 6
As to payment not through the system, the Examiner found that this term 7
is ambiguous because the bounds of the system are not circumscribed in the 8
claim. Clearly it cannot mean any system, because the totality of all 9
commerce is a single system, which would render the claim internally 10
inconsistent. Therefore the issue is whether there are at least two 11
subsystems with some separation from one another that encapsulate the data 12
gathering and the payment as claimed. This is essentially what the Examiner 13
found. Ans. 19. Goldhaber discloses the use of software sales agents that 14
seek sales opportunities. Each such agent is a system cooperating with other 15
agents. FF 09. Goldhaber also describes a trading house system that would 16
generate such purchase records. FF 08. Further, Goldhaber describes a 17
clearinghouse as a yet different system for processing payment. FF 07. 18
Thus, there are at least two subsystems that would generate and access the 19
purchase records that are separate from the payment subsystem. 20
As to data receipt is on the initiative and with the consent of the buyer, 21
Goldhaber’s system is voluntarily subscribed to by the customers and they 22
have the ability to delete records not desired in the data. FF 05 and 06. 23
The argument that Weinblatt does not remedy the third party purchase 24
record deficiency of Goldhaber is irrelevant as we found that Goldhaber has 25
Appeal 2009-000421
Application 09/888,439

22
no such deficiency, at least within the breadth of the claims as properly 1
construed. The Appellant refers to the Examiner’s findings that Weinblatt 2
describes methods by which such data could be mechanically generated and 3
the reasons why one of ordinary skill would desire to obtain such data. Ans. 4
6. Thus, the Examiner was merely adding evidence cumulative to that 5
already within Goldhaber. 6
The Appellant also argues there is no reason to combine Weinblatt with 7
Goldhaber (App. Br. 23:Bottom ¶). However, Weinblatt is directed to 8
obtaining and storing information on the purchasing behavior of a consumer 9
as well as advertisements to which the consumer has been exposed (FF 14) 10
and so its descriptions of mechanisms for how to enter such data and the 11
reasons for wanting such data are useful implementation and scope details 12
toward Goldhaber’s use of such data. 13
As to the offering step in limitation [4], again we found that Goldhaber 14
and Weinblatt describe the existing practice of offering incentives, such as 15
coupons to purchasers, and we found that the condition precedent was at 16
least predictable to one of ordinary skill in the analysis of claim 207. The 17
Appellant emphasizes the preferential nature of the claimed incentive. App. 18
Br. 24-26. Weinblatt describes customizing such incentives based on actual 19
purchases. FF 15. Customization designed to a specific customer implies 20
the custom incentive is not generic, i.e. one that is normally and publicly 21
accessible, to that customer or any other, in the same geographic region on 22
terms which are at least objectively equivalent, and which does not include 23
material conditions that are different from whatever gave rise to the 24
incentive. Certainly the rationale behind customization of increasing the 25
Appeal 2009-000421
Application 09/888,439

23
value to a specific customer leads one of ordinary skill to consider incentives 1
that are not those ordinarily available. 2
The Appellant further argues that the claim requires that the advertised 3
products are either manufactured or marketed or distributed or provided by 4
the advertiser but that manufacture, marketing, distribution, payment or 5
provision is not carried out by the system in the ordinary course of business. 6
The Appellant contends that in Day, the advertised products are all 7
distributed by the system. App. Br. 26-27. As we found supra, there are at 8
least two subsystems that would generate and access the purchase records 9
that are separate from the payment subsystem. Similarly, the subsystem for 10
actual physical distribution would differ from the subsystem that would 11
generate and access the purchase records. More to the point, the reference to 12
these activities is in the form of a series of alternative limitations. It is 13
sufficient that at least one of the manufacture, marketing, distributions, point 14
of sale payment or provision be not carried out by the system. The 15
Appellant has not argued that manufacturing is carried out by any system in 16
any of the references and we find that none of the systems in the references 17
carry out such manufacture. 18
The Appellant further argues that Day does not describe the decision 19
being based on purchase data from a merchant other than the merchant 20
offering the incentive. App. Br. 27. As we found with claim 207, the 21
purchase data are historical transactions by the various vendors the 22
purchaser bought from in Goldhaber and so at least some of the historical 23
data would be from a merchant other than the one offering an incentive. 24
Appeal 2009-000421
Application 09/888,439

24
The Appellant also argues that physically combining Day with 1
Goldhaber and Weinblatt would cause merchants to participate in having 2
other merchants poach their own customers. App. Br. 28-29. 3
"The test for obviousness is not whether the features of a secondary 4
reference may be bodily incorporated into the structure of the primary 5
reference. . . . Rather, the test is what the combined teachings of those 6
references would have suggested to those of ordinary skill in the art." In re 7
Keller, 642 F.2d 413, 425, (CCPA 1981). See also In re Sneed, 710 F.2d 8
1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the 9
references be physically combinable to render obvious the invention under 10
review."); and In re Nievelt, 482 F.2d 965, (CCPA 1973) ("Combining the 11
teachings of references does not involve an ability to combine their specific 12
structures."). 13
It is the description of how to track consumer purchasing behavior with 14
customized targeted offers for specific customers in Day that the Examiner 15
found to be applied to Goldhaber, not the physical system in Day. In 16
Goldhaber no such poaching would occur because Goldhaber’s system 17
rather than a merchant tracks the behavior. 18
The Appellant also argues the lack of motivation to combine the 19
references. The Appellant contends such a combination presents a conflict 20
among marketers. App. Br. 29. As the Appellant acknowledges, the 21
Examiner did make findings as to why one of ordinary skill would have 22
combined the references. Thus, the Appellant’s argument goes to 23
overcoming the initial finding of obviousness. However, the Appellant’s 24
argument here is essentially the same as the argued problem with physically 25
combining the references just discussed and again, physical incorporation is 26
Appeal 2009-000421
Application 09/888,439

25
not what the Examiner found, but rather incorporating the behavioral 1
findings supporting customizing incentives found in the two secondary 2
references. 3
Finally, the Appellant refers us to the five declarations submitted as 4
evidence of non-obviousness. None of the declarations refer to the art 5
applied in the current rejections, nor do they provide objective evidence of 6
commercial success or long felt need of the claimed subject matter. FF 24. 7
Although each of the Declarants opine as to the non-obviousness relative to 8
the art of which they were aware, without Thus, these declarations provide at 9
best nominal weight to offset the heavier weight of the evidence supporting 10
the Examiner’s prima facie case of obviousness. The balance must rest with 11
a finding of obviousness. 12
Thus, we find the Appellant’s arguments unpersuasive. 13
Claims 10 and 100, 12 and 102, 13 and 103, and 47 and 137 14
The Appellant argues the Examiner did not make findings as to 15
motivation to combine. App. Br. 30-31. The Examiner made such findings. 16
Ans. 10-11. 17
Claims 11 and 101 18
Claim 11 requires obtaining follow up information. The Examiner found 19
this in Day. Ans. 10. We agree. FF 18. 20
The Appellant argues that Day would not allow information from other 21
vendors. This argument is not commensurate with the scope of the claim. 22
The limitation added by claim 11 does not recite which vendor receives 23
which follow up information. 24
Appeal 2009-000421
Application 09/888,439

26
Claims 48, 49, and comparable claims 138 and 139 1
Claim 48 requires determining if a recalculated score qualifies a buyer 2
entity for an on-going incentive. Claim 49 requires recalculating an 3
incentive by applying a recalculated score of a buyer to an incentive function 4
or algorithm. The Examiner found these in Day. Ans. 12. We agree. FF 5
19. 6
The Appellant argues that Day rewards a customer for not purchasing, 7
and that Day would not need the recalculation of claim 49. App. Br. 31-32. 8
These arguments are not commensurate with the scope of the claims. The 9
limitation added by claim 48 does not recite determining whether a buyer 10
makes or does not make a purchase. Whether Day needs to perform a 11
recalculation is not pertinent where Day implicitly does perform a 12
recalculation as found by the Examiner and as in FF 18. Claim 49 does not 13
specify the nature of the recalculation, so Day’s value increase would be an 14
instance of such a recalculation. 15
The Appellant also argues the Examiner did not make findings as to 16
motivation to combine. Id. The Examiner made such findings. Ans. 12. 17
Claims 51, 52, and comparable claims 141 and 142 18
Claim 51 requires the incentives be provided across multiple distribution 19
channels. The Examiner found this in Goldhaber. Ans. 12. We agree. FF 20
13. 21
Claim 52 requires receiving additional information that one of the buyers 22
visited a predetermined web site; and recalculating one of the scores that 23
buyer to increase the score based on additional information. The Examiner 24
Appeal 2009-000421
Application 09/888,439

27
found the activities in Goldhaber applied to claim 1 implicitly included such 1
visits and recalculations. Ans. 12. We agree. 2
The Appellant argues that the modes of distribution in Goldhaber are not 3
those defined in the Specification. App. Br. 32. The Appellant does not cite 4
where such a definition is to be found. The only portion of the Specification 5
we find referring to the channels argued by the Appellant is a list of 6
exemplary channels, including the phrase “and thru other channels” and is 7
therefore not a limiting definition. FF 03. The Appellant also argues adding 8
web visit data as in Goldhaber is different from adding such data in the 9
claimed invention. App. Br. Id. Whether there is some unclaimed 10
difference is not pertinent. Goldhaber meets the broadly defined limitations 11
of claim 52. 12
The Appellant also argues the Examiner did not make findings as to 13
motivation to combine. App. Br. Id. The Examiner found these limitations 14
in the primary reference. 15
Claims 64, 65,and comparable claims 154 and 155 16
Claim 64 requires asking a buyer to rate a product or service item only if 17
the purchase record indicates that a purchase of the item to be rated has been 18
or might have been made and claim 65 requires weighting the ratings 19
according to money spent. The Examiner found these in Goldhaber. Ans. 20
13. The Appellant argues that Goldhaber describes rating advertisements, 21
not products purchased. App. Br. 33. Here we must agree with the 22
Appellant. Goldhaber 13:50-51 cited by the Examiner does not describe 23
rating products as required by claims 64 and 65. 24
Claims 209-228 and comparable claims 260-280 and 309-329 25
Appeal 2009-000421
Application 09/888,439

28
These claims add various limitations found in independent claim 1 to the 1
broader claim 207. Accordingly we agree with the Examiner that the art 2
describes these claims for the same reasons as with claim 1 supra. The 3
Appellant’s arguments are essentially the same as those in support of claim 4
1. We find those arguments unpersuasive for the same reasons as in claim 1. 5
Claims 229, 281, and 330 6
Claim 229 requires that the decision making include determining a 7
function and budget-related limit associated with at least one of the 8
incentives, 9
receiving newly-submitted purchase records with the condition precedent 10
that the function and budget-related limit has been determined; automatically 11
making a new decision based at least in part on the function, the budget 12
limit, and the newly- submitted purchase records; distributing the incentive 13
based at least in part on the new decision; and halting the distributing when 14
the budget-related limit is met. 15
The Appellant argues that Day, put forth by the Examiner for these 16
limitations, does not describe such a budget related limit. Day describes 17
setting a maximum quantity that may be provided in a special offer. Once 18
the maximum is reached, no more offers are provided. FF 18. The 19
Appellant argues Day does not limit the advertising expenditures. App. Br. 20
37. The claim does not narrow the budget to expenditures. Those of 21
ordinary skill in the accounting arts knew that budgets were drawn to any 22
quantitative constraint, including outputs. Thus, a maximum for the 23
quantitative number offered was a budget for such offers. 24
Appeal 2009-000421
Application 09/888,439

29
The Appellant further argues that Day’s targeting parameters are not 1
incentive functions because Days does not disclose calculating weighted 2
factors. Claim 229 does not recite such weighted factors, and so this 3
argument is unpersuasive. Finally, the Appellant argues that Day does not 4
disclose third party purchase records and that no motivation was provided. 5
But, again, Goldhaber was applied for such records, and as the Examiner 6
stated, the motivation was provided in the independent parent claim. Ans. 7
53. 8
Claims 230 and 232, and comparable claims 282, 283, 331, and 332 9
Claim 230 requires that the decision making be based on potential 10
audience, incentive definition, and parameter information. The remainder of 11
the limitations, are similar to those in the parent claim. The Appellant 12
argues the Examiner has not cited portions of the art describing these. The 13
Appellant has not argued why these citations do not show the limitations, but 14
has merely asserted they do not. The Appellant also argues the Examiner 15
has not described motivation to combine the features. App. Br. 54. The 16
Examiner cites Day 4:18-31; 14:52-56; and 6:57-60. We agree with the 17
Examiner. Day describes using targeting parameters to decide on offers. 18
These parameters are applied to information on potential customers. FF 20. 19
Claim 232 requires making the decision to offer an incentive based on 20
whether the buyer previously accepted an offer. This is found in Day. FF 21
19. The Appellant argues the Examiner provided no motivation to combine 22
Day with Goldhaber. App. Br. 38. 23
As the Examiner stated, the motivation for both claims 230 and 232 was 24
provided in the independent parent claims. Ans. 38. 25
Appeal 2009-000421
Application 09/888,439

30
Claims 233, 284, and 333 1
Claim 233 requires obtaining multiplier-effect-information on said buyer 2
entity. The Appellant argues that Day only describes in store purchase 3
amounts, not the referral potential called for in claim 233. App. Br. 38. We 4
agree with the Appellant. The Examiner has not referred to the multiplier-5
effect-information in the analysis and accordingly has failed to present a 6
prima facie case. 7
Claims 234, 235, and 246, and comparable claims 286, 287, 298, 335, 336, 8
and 347 9
Claim 234 requires calculating and presenting a measure indicating the 10
amount of benefits available to the buyer based on the information stored 11
about the buyer. Claim 235 requires the decision being made at least in part 12
based on the location of a wireless device. Claim 246 requires calculating a 13
price for the offering based on buyer information. The Examiner took 14
official notice of the notoriety of presenting information and of calculating 15
the cost of promotions. Ans. 55-56. The Appellant argues that the Official 16
Notice is improper. App. Br. 39-40. The Appellant has provided no reason 17
that the facts so noticed by the Examiner were not well known, and has 18
therefore improperly traversed the Official Notice. The Appellant has not 19
provided any arguments that the remainder of the claims were not described 20
by the prior art. Accordingly the argument that the Official Notice was 21
improper is unpersuasive. 22
23
24
Appeal 2009-000421
Application 09/888,439

31
Claims 236, 237, and 250, and comparable claims 288, 289, 302, 337, 338, 1
and 351 2
Claim 236 requires making a decision based on manual input. Claim 3
237 requires making a decision based on browsing behavior. Claim 250 4
requires sending buyer information to a third party after authorization. The 5
Examiner applied Weinblatt’s entry of information on a card. Ans. 15. See 6
also FF 16. The Appellant argues this is not manual input. App. Br. 39-40. 7
We agree with the Examiner. Entry of information on a card requires either 8
manually swiping a card or keying in the data printed on the card. Either 9
mode requires manual performance. As to claims 237 and 250, the 10
Appellant again argues the Examiner provided no motivation. App. Br. 40. 11
The Examiner responded that the limitations were found in the primary 12
reference. Ans. 56-57. The Appellant also alleged that the Examiner failed 13
to make finding as to where the limitations of claim 50 were found. App. 14
Br. 40. We disagree with the Appellant. The Examiner found the 15
limitations to be described by Goldhaber 8:16-18. Ans. 57. 16
The remaining claims without any arguments made specifically to 17
themselves fall with claim 207. 18
Claims 68 and 158 rejected under 35 U.S.C. § 103(a) as unpatentable over 19
Goldhaber, Weinblatt, Day, and Dedrick. 20
Claim 68 requires calculating a charge for providing the incentive based 21
on both the size of a group of buyer entities resulting from a search of the 22
stored data and the scores of the buyer entities. The Appellant argues that 23
none of the portions of the art cited by the Examiner describe this limitation. 24
App. Br. 36. The Examiner found charging for promotions at Goldhaber 25
Appeal 2009-000421
Application 09/888,439

32
8:59-61 and a fee based on buyer scores for buyers getting incentives 1
described by Dedrick 5:20-30. Ans. 57-58. 2
Here we must agree with the Appellant. The Examiner has not described 3
any of the art as actually describing the limitations of claim 68, but only 4
parts of the limitations. The Examiner has made no findings that the art 5
describes calculating a charge based on the size of a group of buyers. 6
Therefore, the Examiner has failed to present a prima facie case. 7
Claims 206, 231, 252-254, 256-258, 283, 304-306, 307, 308-310, 332, 353-8
355, 356, and 357-359 rejected under 35 U.S.C. § 103(a) as unpatentable 9
over Goldhaber, Weinblatt, Day, and admitted art. 10
Independent Claim 206 11
As to the argument based on the patentability of claim 1, this is 12
unpersuasive fro the same reasons as in the analysis of claim 1 supra. As to 13
the argument that none of the art describes the limitation of gathering buyer 14
information by automatically accessing web-based online buyer accounts 15
using buyer passwords and usernames, we must agree with the Appellant. 16
The Examiner cites Goldhaber 6: 50-65 and 8:40-53 plus the bulk of 17
Goldhaber in col. 13-20. None of these portions describe automatically 18
accessing the buyer accounts to receive the purchase information using the 19
buyer username and passwords. In Goldhaber, the user must logon using a 20
username and password to create the data. Goldhaber is silent as to what 21
password security might impede the software agents. The Examiner has 22
failed to present a prima facie case as to this limitation. 23
24
Appeal 2009-000421
Application 09/888,439

33
Claims 231, 252-254, 256-258, and comparable claims 283, 304-306, 308-1
310, 332, 353-355, and 357-359 2
Claim 231 requires access the buyer accounts to retrieve information, but 3
without the use of username and password in claim 206. Goldhaber’s 4
software agents obtain the requisite permission to retrieve such information. 5
FF 09. 6
Claim 252 requires supplementing the information. The Examiner found 7
this in Day. Ans. 17. See also FF 19. 8
Claim 253 requires accumulating purchase amounts and rewarding a 9
buyer if the cumulative amount passes a threshold. The Examiner relied on 10
Official Notice to add purchases over time and reward for going over a 11
threshold. Ans. 17. The Appellant argues that the Official Notice is 12
improper. App. Br. 42. The Appellant has provided no reason that the facts 13
so noticed by the Examiner were not well known, and has therefore 14
improperly traversed the Official Notice. The Appellant has not provided 15
any arguments that the remainder of the claims were not described by the 16
prior art. Accordingly the argument that the Official Notice was improper is 17
unpersuasive. Given that Goldhaber already describes rewarding purchase 18
behavior, it was predictable to increase the award for greater levels of 19
purchase behavior. 20
Claim 254 requires sending an offer in return for access. The Examiner 21
found that Goldhaber described a buyer authorizing transfer of its purchase 22
histories from multiple merchants to the system. The Examiner did not 23
provide a citation to such a finding and we are unable to discern a portion of 24
Appeal 2009-000421
Application 09/888,439

34
Goldhaber meeting this limitation. Accordingly, we agree the Examiner 1
erred in rejecting claim 254 and comparable claims 306 and 355. 2
Claims 256-258 are composites of claims 229-231 and the Appellant 3
relied on the arguments of those claims. Accordingly, claims 256-258 fall 4
with claims 229-231. 5
The remaining claims without any arguments made specifically to 6
themselves stand or fall with their parent claims. None of the remaining 7
claims depend from a claim whose rejection we reverse. 8
CONCLUSIONS OF LAW 9
The Appellant has not sustained its burden of showing that the Examiner 10
erred in rejecting claims 1, 10-13, 47-49, 51-52, 94, 100-103, 137-139, 141-11
142, 204, 207-230, 232, 234-238, 246, 250, 255, 259-282, 285-290, 298, 12
302, 308-331, 334-339, 347, and 351 under 35 U.S.C. § 103(a) as 13
unpatentable over Goldhaber, Weinblatt, and Day. 14
The Appellant has sustained its burden of showing that the Examiner 15
erred in rejecting claims 64, 65, 154, 155 233, 284, and 333 under 35 U.S.C. 16
§ 103(a) as unpatentable over Goldhaber, Weinblatt, and Day. 17
The Appellant has sustained its burden of showing that the Examiner 18
erred in rejecting claims 68 and 158 under 35 U.S.C. § 103(a) as 19
unpatentable over Goldhaber, Weinblatt, Day, and Dedrick. 20
The Appellant has not sustained its burden of showing that the Examiner 21
erred in rejecting claims 231, 252-253, 256-258, 283, 304-305, 307, 308-22
310, 332, 353-354, 356, and 357-359 under 35 U.S.C. § 103(a) as 23
unpatentable over Goldhaber, Weinblatt, Day, and admitted art. 24
Appeal 2009-000421
Application 09/888,439

35
The Appellant has sustained its burden of showing that the Examiner 1
erred in rejecting claims 206, 254, 306, and 355 under 35 U.S.C. § 103(a) as 2
unpatentable over Goldhaber, Weinblatt, Day, and admitted art. 3
DECISION 4
To summarize, our decision is as follows: 5
• The rejection of claims 1, 10-13, 47-49, 51-52, 94, 100-103, 137-139, 6
141-142, 204, 207-230, 232, 234-238, 246, 250, 255, 259-282, 285-7
290, 298, 302, 308-331, 334-339, 347, and 351 under 35 U.S.C. § 8
103(a) as unpatentable over Goldhaber, Weinblatt, and Day is 9
sustained. 10
• The rejection of claims 64, 65, 154, 155 233, 284, and 333 under 35 11
U.S.C. § 103(a) as unpatentable over Goldhaber, Weinblatt, and Day 12
is not sustained. 13
• The rejection of claims 68 and 158 under 35 U.S.C. § 103(a) as 14
unpatentable over Goldhaber, Weinblatt, Day, and Dedrick is not 15
sustained. 16
• The rejection of claims 231, 252-253, 256-258, 283, 304-305, 307, 17
308-310, 332, 353-354, 356, and 357-359 under 35 U.S.C. § 103(a) as 18
unpatentable over Goldhaber, Weinblatt, Day, and admitted art is 19
sustained. 20
• The rejection of claims 206, 254, 306, and 355 under 35 U.S.C. § 21
103(a) as unpatentable over Goldhaber, Weinblatt, Day, and admitted 22
art is not sustained. 23
Appeal 2009-000421
Application 09/888,439

36
No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 2
3
AFFIRMED-IN-PART 4
5
6
7
mev 8
FOLEY AND LARDNER LLP 9
SUITE 500 10
3000 K STREET NW 11
WASHINGTON DC 20007 12