Ex Parte Merenda et al

Patent Trial and Appeal Board

Sep 26, 2012

10390956 (P.T.A.B. Sep. 26, 2012)

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.
10/390,956 03/18/2003 Ann C. Merenda POU920000085US2 7371
7590 09/27/2012
IBM Corporation
Intellectual Property Law
2455 South Road, P386
Poughkeepsie, NY 12601
EXAMINER
HARPER, ELIYAH STONE
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
09/27/2012 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 ANN C. MERENDA and HILON POTTER
____________________

Appeal 2010-003275
Application 10/390,956
Technology Center 2100
____________________

Before ERIC S. FRAHM, KALYAN K. DESHPANDE, and
JOHNNY A. KUMAR, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003275
Application 10/390,956

2
STATEMENT OF THE CASE1
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm-in-part.
Appellants’ Disclosed Invention
Appellants disclose a method of directing advertising to targeted
customers by using customer related or customer provided information while
still protecting the privacy interests of those customers (see e.g., Spec.
¶¶ [0005]-[0008]).
Exemplary Claims
An understanding of the invention can be derived from a reading of
exemplary claims 1 and 20, which are reproduced below with emphases
added:
1. A method for directing advertising to a select list of customers,
the method comprising the steps of:

providing a public data set and a private data set;
giving a search requestor on a first computer access to the
public data set;
said search requestor searching through said public data set and,
on the basis of said searching, said search requestor identifying a
record from a specific customer, said record including an identifier
for said specific customer;

1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed May 18, 2009) and Reply Brief (“Reply Br.,” filed October 28, 2009),
and the Examiner’s Answer (“Ans.,” mailed September 1, 2009).
Appeal 2010-003275
Application 10/390,956

3
said search requestor sending to a viewer application, a request
comprising said identifier for the specific customer, and one or more
given conditions;
said viewer application on a second computer receiving said
request and an advertisement to promote or make known, the
advertisement to be sent to selected customers in the interest group;
said viewer application using said identifier to perform a blind
search through the private data set, on behalf of said search requestor,
to identify one or more records in the private data set from said
specific customer, and using said one or more records in the private
data set, to determine whether the specific customer meets said one or
more given conditions, wherein only the public information is
viewable by said search requestor; and
said viewer application transmitting the advertisement on behalf
of said search requestor to said specific customer at addresses found
in the blind search.

20. A method according to Claim 1, wherein:
the step of identifying specific individual customers includes
the step of obtaining from the public data set a respective one code
identifier for each of said individual customers;
the sending step includes the step of the search requestor
sending to the viewer application said code identifiers for said
individual customers;
the step of providing a public data set and a private data set
includes the step of including in the private data set records having
code identifiers for a number of customers;
the step of performing a blind search includes the step of
searching through the private data set for records having code
identifiers matching the code identifiers received from the search
requestor;
wherein the advertisement includes a document having a
multitude of fields;
the search requestor adds data, from the public data set, to a
first group of said fields;
Appeal 2010-003275
Application 10/390,956

4
the search requester includes variables in a second group of said
fields, said variables representing data to be inserted into said second
group of fields;
the viewer application adds data, from the private data set, to
the second group of said fields, and
said given conditions are based on data in the private data set.

The Examiner’s Rejection
The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Gifford (US 5,614,927), Eldering (US
6,298,348 B1), and Angles (US 5,933,811). Ans. 3-8.
Appellants’ Contentions
Appellants contend (App. Br. 20-25; Reply Br. 2-9) that the Examiner
erred in rejecting claims 1-20 under 35 U.S.C. § 103(a) for numerous
reasons, including:2
(1) the combination of applied references fails to disclose or make
obvious the distribution functions between the search requester and the
viewer application, and the way the search requester and viewer application
work together to prepare and send an advertisement to a targeted customer,
as recited in representative claim 1 and similarly recited in claims 6 and 11
(App. Br. 20-24; Reply Br. 4-5);

2 Appellants present arguments on the merits with regard to independent
claim 1 and present claim 1 as representative of independent claims 1, 6, and
11 (see App. Br. 20-25; Reply Br. 2-8). No arguments for separate
patentability were presented for dependent claim 2-5, 7-10, and 12-19.
Appellants present separate patentability arguments for dependent claim 20
(see App. Br. 25; Reply Br. 8-9). Therefore, we select claim 1 as
representative of the group of claims 1-19 (see 37 C.F.R. § 41.37(c)(1)(vii)),
and we treat claim 20 separately.
Appeal 2010-003275
Application 10/390,956

5
(2) Gifford’s column 3, lines 35-45 and column 7, lines 35-40 do not
disclose the advertiser sending identifiers for the customers to a viewer
application as recited in claim 1, and instead Gifford teaches away from
Appellants’ invention by disclosing that the search requester, and not the
viewer application, obtains the identifiers for specific customers from a
private database (as opposed to Appellants’ invention which obtains
identifiers from a public database) database (App. Br. 22-23; Reply Br. 5-6);
(3) Gifford’s identifiers in claim 1 are not obtained in the same way
that they are in Appellants’ invention, because Gifford’s advertiser profiles
are not specific identifiers for customers (Reply Br. 5);
(4) the combination of applied references fails to disclose or render
obvious the way in which the search requester and the viewer application
work together using code identifiers, as recited in dependent claim 20 (App.
Br. 25; Reply Br. 8-9); and
(5) Gifford’s column 2, lines 35-41; column 7, lines 1-7; and column
7, lines 65 to column 8, line 10 do not disclose the use of code identifiers by
a viewer application to search through a private data base for records having
the code identifiers, as recited in claim 20, and Gifford “does not provide a
respective one profile for each of the customers” (Reply Br. 9).
Issues on Appeal
(1) Did the Examiner err in rejecting claims 1-19 because Gifford
fails to teach or suggest identifying a record from a specific customer by
searching through a public data set, the record including an identifier for the
specific customer, as recited in claim 1 and similarly recited in claims 6 and
11?
Appeal 2010-003275
Application 10/390,956

6
(2) Did the Examiner err in rejecting claim 20 because Gifford fails to
teach or suggest the use of code identifiers used by a viewer application to
search through a private data base for records having the code identifiers, as
recited in claim 20?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contention in the Appeal Brief (App. Br. 20-25) and the Reply Brief (Reply
Br. 2-9) that the Examiner has erred.
Appellants’ contentions (4) and (5), that Gifford fails to teach or
suggest searching through the private data set for records having code
identifiers matching the code identifiers received from the search requestor
as recited in claim 20, are persuasive. We agree with Appellants’
contentions (4) and (5) as to claim 20 (App. Br. 25; Reply Br. 8-9) because
(i) Gifford’s profiles are not the same as the code identifiers of claim 20, and
(ii) Gifford does not perform a blind search through a private data set for
records with code identifiers that match the code identifiers received from
the search requester, as recited in claim 20.
While Gifford’s column 2, lines 35-41 refers to profiles that are
executed against a database, the Examiner has not established that Gifford
discloses (i) code identifiers (e.g., a key XXXXXX identifying records 213
and 214 as described at Spec. [0020] and shown in Fig. 2), (ii) providing a
respective one profile for each customer, or (iii) searching for the code
identifiers in a private database (see Ans. 7-8). The Examiner has not
rebutted Appellants’ contention (5), or shown that Gifford’s profiles are the
same as the code identifiers recited in claim 20. Records 213 and 214 may
Appeal 2010-003275
Application 10/390,956

7
also include a key “XXXXXX” (see Fig. 2). Appellants describe that “[i]n a
preferred embodiment, the merchants may be provided with [] the value of
the key XXXXXX identifying the records 213, 214 with which access to the
designated contact information may be enabled” (Spec. ¶ [0020], second
sentence). Thus, Gifford’s aliases and profiles are not the same as the code
identifiers recited in claim 20, and shown in Figure 2 as keys XXXXXX for
records 213 and 214.
However, we disagree with the Appellants’ conclusions for claims 1-
19. We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to the
Appellants’ Appeal Brief (Ans. 3-7 and 9-14). We highlight and amplify
certain teachings and suggestions of the reference to Gifford as follows.
We agree with the Examiner (Ans. 3-7 and 9-14) that Gifford teaches
or suggests identifying a record from a specific customer by searching
through a public data set, the record including an identifier for the specific
customer, as recited in claim 1 and similarly recited in claims 6 and 11.
Gifford discloses assigning “aliases” to each customer based on profiles
identifying target audiences, and sends aliases for individual customers 71-
74 based on demographic information about the customers such as network
addresses (col. 3, ll. 14-20 and 35-46). Gifford’s processor 155 transmits
aliases and an identifier to the advertiser 122 (col. 7, ll. 35-41). The
“advertiser specified profile” (col. 1, l. 19) is used to target specific
customers (col. 1, ll. 15-19), and as such is an identifier, at least inasmuch as
Appellants have defined the term in the Specification (see ¶¶ [0014] and
Appeal 2010-003275
Application 10/390,956

8
[0017]-[0020]; Fig. 2, records 213 and 214 may include information about a
customer such as name, address, phone, email).
Because Gifford’s profile or aliases can identify a specific customer,
either of these is encompassed by the term “identifier” as used in claim 1.
In view of the foregoing, we will sustain the Examiner’s obviousness
rejection of claims 1-19, and we will not sustain the Examiner’s obviousness
rejection of claim 20.

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1-19 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of references
because Gifford to teaches or suggests identifying a record from a specific
customer by searching through a public data set, the record including an
identifier for the specific customer, as recited in claim 1.
(2) Appellants have established that the Examiner erred in rejecting
claim 20 as being unpatentable under 35 U.S.C. § 103(a) over the
combination of references because Gifford fails to teach or suggest
searching through the private data set for records having code identifiers
matching the code identifiers received from the search requestor, as recited
in claim 20.
(3) Claims 1-19 are not patentable.

Appeal 2010-003275
Application 10/390,956

9
DECISION
The Examiner’s rejection of claims 1-19 under 35 U.S.C. § 103(a) is
affirmed.
The Examiner’s rejection of claim 20 under 35 U.S.C. § 103(a) 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)(1)(iv).

AFFIRMED-IN-PART

msc