Ex Parte Selinger et al

Patent Trial and Appeal Board

Jun 22, 2016

12012323 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/012,323 02/01/2008 David Selinger
500 7590 06/22/2016
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH A VE
SUITE 5400
SEATTLE, WA 98104
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.
800054.405 3040
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3682
MAILDATE DELIVERY MODE
06/22/2016 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 DAVID SELINGER,
TYLER KOHN,
MICHAEL DECOURCEY,
SUNDEEP AHUJA,
JAMES OSIAL,
and ALBERT SUNWOO
Appeal2013-010680
Application 12/012,323
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2013-010680
Application 12/012,323
STATEl\tIENT OF THE CASE 1
David Selinger, Tyler Kohn, Michael DeCourcey, Sundeep Ahuja,
James Osial, and Albert Sunwoo (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1-22, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
The Appellants invented a way of providing targeted content. Spec.
para. 19.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer-implemented process comprising:
[ 1] collecting user-specific data for a specific user
that indicates a plurality of interactions performed by the
specific user with one or more of a plurality of retailers,
the collecting of the user-specific data being performed
by a configured computer system;
[2] generating a user model for the specific user
based on the user-specific data,
and
the generating of the user model being performed by the
configured computer system;
[3] using the generated user model to determine a personalized
electronic advertisement
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed June 10, 2013) and Reply Brief ("Reply Br.," filed September 3,
2013), and the Examiner's Answer ("Ans.," mailed July 2, 2013), and Final
Action ("Final Act.," mailed December 10, 2012).
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Application 12/012,323
for presentation to the specific user on a first retail Web
site of a first retailer,
the using of the generated user model being performed by
the configured computer system and including:
[ 4] identifying,
by the configured computer system,
a first product of interest for the specific user;
[5] identifying,
by the configured computer system,
multiple other relevant products of possible
interest to the specific user based on the identified
first product,
the identified multiple other relevant products
having a defined type of inter-product relationship
between the multiple other relevant products and
the identified first product,
the identified multiple other relevant products
being available from a second retailer
distinct from the first retailer
and
not being available from the first retailer;
[ 6] generating,
and
by the configured computer system,
a score for a second retail Web site of the second
retailer
based at least in part on products or services
offered on the second retail Web site;
[7] selecting,
by the configured computer system,
an identified advertisement for one of the
identified multiple other relevant products
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Application 12/012,323
to use as the determined personalized electronic
advertisement
based at least in part on a score generated for the
selected identified advertisement and on the
generated score for the second retail Web site,
the generated score for the selected identified
advertisement being based at least in part on the
defined type of inter-product relationship.
The Examiner relies upon the following prior art:
Inala US 6,442,590 B 1 Aug. 27, 2002
Chaudhary US 2003/0009360 Al Jan.9,2003
Feng US 2008/0015878 Al Jan. 17,2008
Musgrove US 2008/0077471 Al Mar. 27, 2008
Henkin US 7,478,089 B2 Jan. 13,2009
Claims 1-12, 15, 16, 18, 19, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Feng, Musgrove, and Chaudhary.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Feng, Musgrove, Chaudhary, and Henkin.
Claims 14, 17, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Feng, Musgrove, Chaudhary, and Inala.
ISSUES
The issues of obviousness tum primarily on whether the references
describe selecting advertisements as recited in the claims.
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Appellants' Disclosure
01. The disclosed instance of a score based on a web site is a score
for the web site based on the products offered. Spec. para. 119.
This is a score for the product offerings that is perceptually then
attributed to the web site as a source of product.
Facts Related to the Prior Art
Feng
02. Feng is directed to web applications. Feng para. 3.
03. Feng describes a modem goal of online service providers and
Internet advertisers as targeted content, such as advertisements,
personalized to the user based on the user's interests. Interest
information may be gleaned from a user's various profiles and
from a user's activity data. An online service provider may track
user activity based on a user's interaction with the online service
and may store the user profile and activity data for future use.
Feng para. 5.
04. Feng describes a unified platform for storing user profile data
and user activity data in order to create a user's universal profile
based on up-to-the-second user activities. Feng allows online
service providers to access a user's universal profile in order to
present targeted personalized content based on up-to-the-second
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interest information gleaned from the user's universal profile and
taking action on stored user profile data and stored user activity
data such as sending a notification, which may result in sending
marketing information to a user, where such action may be based
on triggering user events, updating a user profile, passage of a set
period of time, or other criteria. Feng para. 6.
05. Feng describes web applications as those applications that offer
various services including, for example, e-mail, instant messaging
(IM), online shopping, dating and personals services, search
engines, directories and guides, audio and video services, image
hosting, fantasy sports, games, and the like. Feng para. 24.
06. Feng describes Targeted Ads/Content Service (TACS) using
received profile information to present targeted content to the user
via a banner advertisement on the web application. T ACS
receives the user profile information and determines an
appropriate (relevant in content, relevant in time, user specific,
etc.) targeted content for the user based on the profile information
received. The user's universal profile may include information
reflecting the user's prior interaction with a music service and
may include information reflecting the user's prior interaction
with one or more other web applications, such as a shopping
service. Armed with this information, T ACS may present targeted
content to the user, such as links to play and/or purchase and
download classic rock music titles using the music service. The
web application may also receive the universal profile information
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and use it to assist the user, provide a customized interface, to
complete forms, etc. Feng para. 27.
Musgrove
07. Musgrove is directed to processing of product-related data, and
more particularly, to automated selection of, and generation of
data for, products that are associated with a main product.
Musgrove para. 3.
08. Musgrove describes allied products as goods and services that
are associated with another good or service, also referred to as a
main product. Allied products may include accessories,
connectors, parts, and supplies that merchants are cross-selling
with a main product. Musgrove para. 35.
09. Musgrove describes automating selection of allied products in
association with a main product. Musgrove automatically creates
an optimal list of allied products based on optimization rules. The
optimal list may include automatically generated content, such as
textual information, that corresponds to each allied product. Due
to the automated aspects of the present invention, embodiments
may be implemented on a computer system or other
programmable processing system capable of making repeated
calculations or evaluations. Musgrove para. 3 7.
10. Musgrove describes assigning a scalar value (toward a total
scalar score) to each allied product according to relevant attributes
of the allied product based on its product category to rate the
allied products. In general, each attribute is accorded a point
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Application 12/012,323
value, and the sum of point values for all attributes provides the
total scalar value. Musgrove para. 47.
11. Musgrove describes an exemplary approach for rating the allied
products. Musgrove evaluates an allied product by determining
whether the allied product and its attributes meet particular
criteria. If the allied product and its attributes meet the particular
criteria, points are added to the total scalar score of the allied
product. Musgrove para. 49.
12. Musgrove may evaluate an allied product according to brand
ratings. In particular, an editor may enter a list of preferred brands
or a ranking of brands into the system. Such a list or ranking is
used as the basis to add points to the total scalar score. Musgrove
para. 53.
Chaudhary
13. Chaudhary is directed to improving a car service by automating
a scheduling and referral service. Chaudhary para. 2.
14. Chaudhary describes providing referrals to one of a plurality of
car service companies from either a centralized location or another
car service company. These referrals are useful because many
users would otherwise not be able to receive service from that first
car service company because the pickup or arrival locations are
outside of the car service company's field of service. In addition,
that car service company may not have enough available drivers
or cars for that service at that time. Therefore, this first car service
company would need to send a referral to a second car service
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Application 12/012,323
company. There is also a quality rating system. Chaudhary para.
3--4.
15. Chaudhary describes a user inputting service quality
information to describe the quality of the service presented by a
car service company. The user selects a certain characteristic for
the service provided by the car service company. The user then
rates the quality of these characteristics. Chaudhary para. 26.
ANALYSIS
Claims 1, 15, and 18 are the only independent claims. As to claim 1, we
are persuaded by Appellants' argument that the applied references fail to
describe "generating ... a score for a second retail Web site of the second
retailer based at least in part on products or services offered on the second
retail Web site." App. Br. 13-19. The Examiner finds that the score as such
is based primarily on the products. Ans. 23. We agree insofar as this goes.
FF 01. This limitation in claim 1 even recites as much. The problem for the
Examiner, though, is that no matter how the score is computed, it must be
for "products or services offered on the second retail Web site." The
Examiner makes no finding as to that second web site. This is because the
reference the Examiner relies on, Chaudhary, only refers to products offered
by another merchant, without describing the marketing techniques, such as
web pages, of that other merchant.
The remaining two independent claims do not have analogous
limitations regarding another retailer's web site. Both claims recite only
"generating ... a score based at least in part on products or services offered
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Application 12/012,323
by the retailer." Appellants argue these claims with the same arguments
presented as to claim 1. As such arguments are not commensurate with the
scope of these claims, these arguments are unpersuasive here.
On the other hand, claims 21 and 22, which depend from claims 18 and
15 respectively, add back the limitation regarding the second merchant
website, and so the arguments here are persuasive as with claim 1.
CONCLUSIONS OF LAW
The rejection of claims 1-12, 21, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Feng, Musgrove, and Chaudhary is improper.
The rejection of claims 15, 16, 18, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Feng, Musgrove, and Chaudhary is proper.
The rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable over
Feng, Musgrove, Chaudhary, and Henkin is improper.
The rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable over
Feng, Musgrove, Chaudhary, and Inala is improper.
The rejection of claims 17 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Feng, Musgrove, Chaudhary, and Inala is proper.
DECISION
The rejection of claims 1-14, 21, and 22 is reversed.
The rejection of claims 15-20 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
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AFFIRl\tIED-IN-P ART
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