Ex Parte McFadden

Patent Trial and Appeal Board

Jul 31, 2018

14215034 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/215,034
113654 7590
Brian McFadden
P.O. Box 0050
FILING DATE
03/16/2014
08/02/2018
New York, NY 10101
FIRST NAMED INVENTOR
Brian David McFadden
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.
1000
EXAMINER
ALMAN!, MOHSEN
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
licensing@adjacent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN DAVID McFADDEN
Appeal2017-001477
Application 14/215,034
Technology Center 2100
Before ERIC B. CHEN, JEREMY J. CURCURI, and
PHILLIP A. BENNETT, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-001477
Application 14/215,034
This is an appeal under 35 U.S.C. § I34(a) from the non-final
rejection of claims 20-41 and 43--47. Claims 1-19 and 42 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm-in-part.
STATEMENT OF THE CASE
Appellant's invention relates to regulating the information exchange
between information producer and information consumer. (Abstract.)
Claims 20, 34, and 40 are exemplary, with disputed limitations in
italics:
20. A method for using a computer system for determining
inclusion of an information item to an information stream of an
information consumer comprising:
determining for the information item a producer priority
relating to the information consumer;
determining for the information consumer a consumer
priority relating to the information item;
determining whether to include an information item into
the information stream of the information consumer for the
producer priority and the consumer priority according to a
decision matrix;
a participation prediction map relating expected item
value for the information consumer and predicted participation;
a distribution of information items over a range of
consumer priority and producer priority;
adjusting the decision matrix, wherein an include region
for the decision matrix is determined, such that:
(a) any item from the distribution of information
items in the region is more preferred to an item not in the
region according to an exchange value function, and
(b) a participation metric related to the number of
items from the distribution of information items in the
region is approximately equal to a predicted participation
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from the participation prediction map for a derived
expected item value.
34. A method in a computer system for assigning priority to
an audience target for use with at least one information item
compnsmg:
obtaining multiple audience targets;
obtaining an order for the audience targets wherein the audience
targets are ranked;
obtaining a derived audience size relating to each audience
target;
an audience size limits map relating audience size and priority:
determining a priority for each audience target using the
derived audience size for said audience target and the audience size
limits map; and
whereby the multiple audience targets are assigned a priority.
40. An information exchange system for regulating the
exchange of at least one information item between an information
producer and an information consumer comprising:
a decision matrix;
a decision matrix control loop;
a means for determining inclusion of the information item in an
information stream of the information consumer, wherein the means
for determining inclusion uses the decision matrix;
a means for predicting participation of an information exchange
user;
a means for determining a success metric, wherein said success
metric is derived from predicted participation; and
a means for controlling the information stream, wherein the
means for controlling uses the decision matrix control loop to adjust
the decision matrix to improve or maintain the success metric.
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Application 14/215,034
Claims 40 and 41 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
Claims 20-33, 40, 43, and 47 stand rejected under 35 U.S.C. § 103 as
unpatentable over Kramer (US 6,327,574 Bl; Dec. 4, 2001) and American
Society for Quality (Nancy R. Tague, The Quality Toolbox 219--223 (ASQ
Quality Press 2nd ed. 2004) reprinted as American Society for Quality,
Decision Matrix, http://asq.org/leam-about-quality/decision-making-
tools/overview/decision-matrix.html).
Claims 44--46 are rejected under 35 U.S.C. § 103 as unpatentable over
Kramer, American Society for Quality, and Sturman (EP 2,463,001 A2; June
13, 2012).
Claims 34--39 and 41 stand rejected under 35 U.S.C. § 103 as
unpatentable over Kramer and Sturman.
ANALYSIS
§ 103 Rejection-Kramer and American Society for Quality
Claims 20-33, 43, and 47
We are persuaded by Appellant's arguments (App. Br. 13) that the
combination of Kramer and American Society for Quality would not have
rendered obvious independent claim 20, which includes the limitation "a
distribution of information items over a range of consumer priority and
producer priority."
The Examiner found that Illumination Sorter 816 of Kramer, which
includes Boolean Matching 1016 and Metric Matching 1018 to sort
illuminations (i.e., a piece of targeted content), corresponds to the limitation
"a distribution of information items over a range of consumer priority and
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Application 14/215,034
producer priority." (Non-Final Act. 5; see also Ans. 17-18.) We do not
agree with the Examiner's findings.
Claim 20 recites "a distribution of information items over a range of
consumer priority and producer priority" ( emphasis added). One relevant
plain meaning for "distribution" is "the position, arrangement, or frequency
of occurrence ( as of the members of a group) over an area or throughout a
space or unit of time." MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY 338
(10th ed. 1999). Moreover, Appellant's Specification describes the
following:
In one embodiment, a distribution of information items on the
two dimensional decision matrix 70 or decision grid may be
computed for each consumer. The distribution records the
number of information items for a time period for each point in
the decision matrix 70 or decision grid 70d. Any number of
techniques specific to the information exchange can be used for
recoding the distribution based on historical data. For example
using weighted history, rolling average or other computations.
Multiple distributions are possible and can be used for different
purposes in computing other metrics. In one embodiment,
aggregations of distributions across consumer may be used.
(Spec. 14:21-27 (emphases added).) Thus, under the broadest reasonable
interpretation consistent with the Specification, we interpret "distribution" as
the position, arrangement, or frequency of occurrence over an area or
throughout a space or unit of time.
Kramer relates "to the creation and maintenance of models of
consumers, based upon transactional data extracted from structured
information received via electronic channels and viewed by the consumer,
and the use of those models to aid in presenting targeted content." (Col. 1,
11. 15-19.) Figure 8 of Kramer illustrates system 800 for using hierarchical
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Application 14/215,034
consumer models for illuminating documents (col. 4, 11. 11-12), which
includes database 804, attribute vector 808, Boolean Abstractor 812, and
Illumination Sorter 816 ( col. 21, 11. 51---61 ). Kramer explains that "the
Illumination Sorter 816 includes a Boolean Matching 1016 and Metric
Matching 1018," such that "[t]he Boolean Matching 1016 evaluates the
Boolean query 1034 used to select all illuminations that do meet the query
constraints with respect to the facts in the database 804 or abstracted data
from the attribute vector 808 via the Boolean Abstractor 812." (Col. 23, 11.
41--46.) Kramer further explains that "[e]ach Boolean query may also be
given a 'priority,' which is used to sort a set of illuminations that only use
Boolean queries, and do not use model queries" and that "[ t ]hose
illuminations with higher priorities will appear earlier in the sorted
illumination list." (Col. 23, 11. 54--62.)
Although the Examiner cited to Illumination Sorter 816 of Kramer,
which includes a Boolean Matching 1016 and Metric Matching 1018, such
that Boolean query 1034 is prioritized, the Examiner has provided
insufficient evidence to support a finding that Kramer teaches "a distribution
of information items over a range of consumer priority and producer
priority." In particular, although Kramer explains that illuminations can be
prioritized, Kramer is silent with respect to determining position,
arrangement, or frequency of occurrence over an area or throughout a space
or unit of time for consumer priority and producer priority, and accordingly,
Kramer cannot teach the limitation "a distribution of information items over
a range of consumer priority and producer priority," as required by claim 20.
Accordingly, we are persuaded by Appellant's arguments that "[t]he
Examiner does not provide any basis in fact and/or technical reasoning to
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reasonably support the determination that show specifics of how 'a set of
illuminations' or 'the sorted illumination list' in Kramer alone could be
interpreted as a distribution of information items." (App. Br. 13 ( emphases
omitted).)
Thus, we do not sustain the rejection of independent claim 20 under
35 U.S.C. § 103(a). Claims 21-33, 43, and 47 depend from independent
claim 20. We do not sustain the rejection of claims 21-33, 43, and 47 under
35 U.S.C. § 103(a) for the same reasons discussed with respect to
independent claim 20.
Claim 40
We are also persuaded by Appellant's arguments (App. Br. 18) that
the Examiner erred in concluding that the combination of Kramer and
American Society for Quality would have rendered claim 40 obvious.
Claim 40 recites "a means for determining inclusion of the
information item in an information stream of the information consumer," "a
means for predicting participation of an information exchange user," "a
means for determining a success metric," and "a means for controlling the
information stream" ( emphases added). We interpret "means for" as a
means-plus-function claim limitation. Accordingly, such language must be
construed in accordance with 35 U.S.C. § 112, sixth paragraph, or 35 U.S.C.
§ 112(±) by "look[ing] to the specification and interpret[ing] that language in
light of the corresponding structure, material, or acts described therein, and
equivalents thereof, to the extent that the specification provides such
disclosure." In re Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994)
(en bane).
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However, because the Examiner has not performed the initial step of
"look[ing] to the specification and interpret[ing] that language in light of the
corresponding structure, material, or acts described" (Non-Final Act. 11-
12), the Examiner has erred by not meeting the initial burden of
demonstrating that independent claim 40 is unpatentable under 35 U.S.C.
§ 103.
Accordingly, we are persuaded by Appellant's argument that
"claim 40 unambiguously recites language in the form needed to meet the
requirements for interpretation under 35 U.S.C. § 112 (f)" and "[t]he
Examiner has erred in the rejection of claim 40 under 35 U.S.C. § 103(a) by
not interpreting the claim under 35 U.S.C. § 112 (f)." (App. Br. 18.)
Thus, we do not sustain the rejection of independent claim 40 under
35 U.S.C. § 103.
§ 103 Rejection-Kramer, American Society for Quality, and Sturman
Claims 44--46 depend from independent claim 20. Sturman was cited
by the Examiner for teaching the additional features of claims 44--46. (Non-
Final Act. 13-14.) However, the Examiner's application of Sturman does
not cure the above noted deficiencies of Kramer and American Society for
Quality.
§ 103 Rejection-Kramer and Sturman
Claims 34--39
We are not persuaded by Appellant's arguments (App. Br. 22-26; see
also Reply Br. 24--30) that the Examiner improperly combined Kramer and
Sturman.
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The Examiner found that the targeting criteria of Sturman, for
example, date range or time of day targeting, and the impression counts of
Sturman, collectively correspond to the limitations "obtaining a derived
audience size relating to each audience target." (Non-Final Act. 15.) The
Examiner further found that the "Run Rate" for an advertising campaign,
which is either ahead or behind schedule, corresponds to the limitation
"determining the priority for each audience target using the derived audience
size for said audience target and an audience size limits map." (Id.) The
Examiner concluded that "it would have been obvious ... to combine these
analogous arts and assign priority to an audience target based on the size of
the audience needed to be reached in Kramer because doing so would allow
for delivery of content more effectively" (id.) because "using the run rate [ of
Sturman] further allows a user of Kramer to set a limit that how many
advertisements should be executed" (Ans. 41). We agree with these findings
and conclusions.
As discussed previously, Kramer relates "to the creation and
maintenance of models of consumers, based upon transactional data
extracted from structured information received via electronic channels and
viewed by the consumer, and the use of those models to aid in presenting
targeted content ... in a way that does not compromise the consumer's
privacy." (Col. 1, 11. 15-21.) Kramer explains that"[ c ]onsumer profiles are
developed from an analysis of the consumer's past transactions" ( col. 11,
11. 24--25) and "with the explicit permission of randomly selected consumers,
consumer profiles can be fed back to the model in order to refine appeal
profiles" (col. 11, 11. 34--36). Also discussed previously, Kramer explains
that "[ e Jach Boolean query may also be given a 'priority,' which is used to
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sort a set of illuminations that only use Boolean queries, and do not use
model queries" and that "[t]hose illuminations with higher priorities will
appear earlier in the sorted illumination list." (Col. 23, 11. 54--59.)
Sturman relates to advertisement delivery schemes, in particular,
targeted advertisements for multiple video games. (Abstract.) Sturman
explains that "a matching process involves taking a set of submitted
advertisements/advertisement campaigns that are designated for flight in a
given time period and, based on targeting criteria provided by the
advertisers," for example, date range targeting or time of day targeting.
(i-f 53.) Sturman further explains that "an advertisement with a lower run
rate ( e.g., has only run once so far) may take precedence over an
advertisement with a higher run rate (e.g., has run three times so far)."
(i-f 63.) Additionally, Sturman explains that "run rate may be calculated
based on percent of goal achieved divided by the time period that has
passed." (i-f 65.)
A person of ordinary skill in the art would have recognized that
incorporating the run rate of Sturman with the consumer models of Kramer
for illuminating documents, would improve Kramer by controlling the run
rate of previously prioritized illuminations of Kramer. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill."). Thus, we
agree with the Examiner (Non-Final Act. 15) that modifying Kramer to
incorporate the run rate of Sturman would have been obvious.
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Appellant argues that "[ f]or the referenced prior art to be obvious the
problem solved by the claim would need to have been know[ n] to a person
of ordinary skill." (App. Br. 23 ( emphasis omitted); see also Reply Br. 24--
26.) In particular, Appellant argues that "neither Kramer or Sturman suggest
or anticipate the problem or the solution described by the claim" because
"Kramer can not anticipate or suggest the need to assign priority to an
audience target using audience size, and Kramer can not anticipate or
suggest using the audience size limits map to solve that need." (App. Br. 22
( emphases omitted).) Similarly, Appellant argues that "Sturman does not
suggest or anticipate the need to assign priority to an audience target using
audience size, and Sturman does not suggest or anticipate a solution for
assigning priority to an audience target using audience size." (Id. at 23.)
However, the identification of the "problem to be solved" is only one of
many rationales that the Examiner can provide in order to support a
conclusion of obviousness. See KSR, 550 U.S. at 415--421. As discussed
previously, the rationale provided by the Examiner for combining Kramer
and Sturman was based upon the improvement of a similar device in the
same way as in the prior art.
Appellant further argues that
[a] person of ordinary skill in the art having read the description
of Kramer would be deterred from combining Kramer and
Sturman, as suggested by the Examiner, after realizing that
Sturman' s suggestion of setting "priority" based on "RunRate"
... would give a priority to Kramer's "illuminations" that would
vary with time and usage by other "users" or "consumer units"
in Kramer.
(App. Br. 24--25 (emphases omitted); see also Reply Br. 29--30.) However,
the Examiner's proposed modification of Kramer with Sturman is based
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upon supplementing the selected illuminations of Kramer with the run rate
of Sturman, rather than the hypothetical modification argued by Appellant.
Appellant further argues that "'consumer profiles' are clearly different
from the 'executed advertisement instances' needed for Sturman's
'impression Counted' and 'fed back to the model' suggests an entirely
different purpose and time frame." (App. Br. 25 (emphases omitted).)
Accordingly, Appellant argues, "the references of Kramer in view of
Sturman when combined as suggested by the Examiner destroy the intent of
Kramer [because] 'no information collected, generated or inferred by TIC
ever leaves the user's control' and any person of ordinary skill would be
deterred from combining them for at least this reason." (Id. ( emphases
omitted).) However, although Kramer generally explains that "personal
information about the user only flows from external sources into the user
computer" ( col. 6, 11. 2-3), Kramer also provides an exception to the use of
personal data such that "with the explicit permission of randomly selected
consumers, consumer profiles can be fed back to the model in order to refine
appeal profiles" (col. 11, 11. 34--36).
Therefore, the Examiner has properly combined Kramer and Sturman
to reject independent claim 34 under 35 U.S.C. § 103(a).
Accordingly, we sustain the rejection of independent claim 34 under
35 U.S.C. § 103(a). Claims 35-39 depend from claim 34, and Appellant has
not presented any additional substantive arguments with respect to these
claims. Therefore, we sustain the rejection of claims 35-39 under 35 U.S.C.
§ 103(a), for the same reasons discussed with respect to independent
claim 34.
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Claim 41
We are persuaded by Appellant's arguments (App. Br. 27) that the
Examiner erred in concluding that the combination of Kramer and Sturman
would have rendered independent claim 41 obvious.
Claim 41 recites "a means for obtaining a derived size for the
audience target," "a means for computing the audience size limits map," "a
means for determining a success metric," and "a means for determining a
priority for the audience target" ( emphases added). Again, we interpret
"means for" as a means-plus-function claim limitation. Accordingly, such
language must be construed in accordance with 35 U.S.C. § 112, sixth
paragraph, or 35 U.S.C. § 112(±) by "look[ing] to the specification and
interpret[ing] that language in light of the corresponding structure, material,
or acts described therein, and equivalents thereof, to the extent that the
specification provides such disclosure." Donaldson, 16 F.3d at 1193.
However, because the Examiner has not performed the initial step of
"look[ing] to the specification and interpret[ing] that language in light of the
corresponding structure, material, or acts described" (Non-Final Act. 17-
18), the Examiner has erred by not meeting the initial burden of
demonstrating that independent claim 41 is unpatentable under 35 U.S.C.
§ 103(a).
Accordingly, we are persuaded by Appellant's argument that
"claim 41 unambiguously recites language in the form needed to meet the
requirements for interpretation under 35 U.S.C. § 112(±)" and "[t]he
Examiner has erred in the rejection of claim 41 under 35 U.S.C. § 103(a) by
not interpreting claim 41 under 35 U.S.C. § 112(±)." (App. Br. 27.)
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Thus, we do not sustain the rejection of independent claim 41 under
35 U.S.C. § 103(a).
§ 101 Re} ection
We do not sustain the rejection of independent claims 40 and 41 under
35 U.S.C. § 101 for the reasons discussed previously with respect to the
rejections of claims 40 and 41 under 35 U.S.C. § 103(a), and in particular
because the Examiner has failed to interpret the claims under 35 U.S.C.
§ 112(±).
DECISION
The Examiner's decision rejecting claims 20-33, 40, 41, and 43--47
under 35 U.S.C. § 103 is reversed.
The Examiner's decision rejecting claims 34--39 under 35 U.S.C.
§ 103 is affirmed.
The Examiner's decision rejecting claims 40 and 41 under 35 U.S.C.
§ 101 is reversed.
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-IN-PART
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