Ex Parte Selinger et al

Patent Trial and Appeal Board

Feb 8, 2016

12012452 (P.T.A.B. Feb. 8, 2016)

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.
12/012,452 02/01/2008 David Selinger 800054.406 2816
500 7590 02/08/2016
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
POUNCIL, DARNELL A
ART UNIT PAPER NUMBER
3621
MAIL DATE DELIVERY MODE
02/08/2016 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
___________

Appeal 2013-004134
Application 12/012,452
Technology Center 3600
___________

Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
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 1–6 and 8–20, the only claims

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed January 3, 2012) and Reply Brief (“Reply Br.,” filed January 29,
2013), and the Examiner’s Answer (“Ans.,” mailed November 30, 2012),
and Final Rejection (“Final Act.,” mailed August 3, 2011).
Appeal 2013-004134
Application 12/012,452

2

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. 1.
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] generating a selection model
based on product data and user-specific data,
wherein the selection model
includes a plurality of data sets identifying
relationships between products
and
includes a rule set for identifying non-competitive
advertisements,
the generating of the selection model being performed by
a configured computer system;
[2] generating a user model
using the user-specific data,
wherein the user-specific data
includes user-specific identification data for a
specific user
and
includes user-specific activity data regarding user
behavior of the specific user that involves
interactions with a specific retailer,
the generating of the user model being performed by the
configured computer system;
and
Appeal 2013-004134
Application 12/012,452

3

[3] selecting non-competitive personalized electronic
advertising
to present to the specific user
from a plurality of competitive and non-competitive
advertisements
by using the selection model and the user model
to identify relevant advertisements
and
by using the rule set
to identify advertisements not competitive to the
specific retailer,
the selecting of the non-competitive personalized
electronic advertising being performed by the configured
computer system.
The Examiner relies upon the following prior art:
Barton US 2009/0192888 A1 July 30, 2009
Badros US 2010/0094867 A1 Apr. 15, 2010
Claims 1–3, 5, 6, 8–16, and 18–20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Barton and Badros.
Claims 4 and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Barton, Badros, and Official Notice.
ISSUES
The issues of obviousness turn primarily on the breadth of the term non-
competitive and whether the term is deserving of patentable weight.
Appeal 2013-004134
Application 12/012,452

4

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 the Prior Art
Barton
01. Barton is directed to targeted advertisements. Barton, para. 1.
02. Barton describes providing an advertisement on a website by
obtaining purchase information submitted by a user making a
purchase on the website. The purchase information can be used to
determine an advertisement for a product or service related to the
purchase but of a different type than the purchase. In an example,
the at least one advertisement is displayed on the website when the
purchase is completed. Barton, para. 7.
03. Barton describes how, rather than displaying advertisements for
goods or services similar to the good or service just purchased, it
may be useful to the user to display advertisements for goods or
services that are related to and/or complementary to the good or
service just purchased. The user is more likely to purchase a
related or complementary good or service than a similar good or
service, since there is no need for a good or service similar to that
just purchased. Further, it is likely that the related or
complementary good or service will be highly relevant to the user,
since the user was interested enough to complete a purchase for
the purchased good or service. Barton, para. 17.
Appeal 2013-004134
Application 12/012,452

5

04. Barton describes purchase information as including information
about the product(s) or service(s), the cost of the product(s), the
amount the user paid, the location of the user, personal and
financial information, the behavior of the user on the website,
products selected and removed before checkout, or any other
information that could be used to determine a relevant
advertisement. Barton, para. 18.
05. Barton describes keyword-advertisement relationship information
as including search keyword information tracked, linked, or
related to advertisements that were displayed or measured for their
level of success in attracting commercial activity. Barton, para.
26.
06. Barton describes how purchase information is analyzed to select
one or more advertisements for products or services that are
complementary and/or related to the purchased product or service.
The advertisement for a complementary and/or related product or
service may be selected based on a type of product or service
included in the advertisement. That is, rather than selecting for
display an advertisement for a similar type of product or service,
an advertisement for a different type of product or service that is
related in some way to the product or service purchased may be
selected for display. Barton, para. 29.
Appeal 2013-004134
Application 12/012,452

6

Badros
07. Badros is directed to displaying a plurality of documents on a
time-multiplexed basis according to specific criteria, such as a
preference or relatedness. Badros, para. 2.
08. Badros describes different document types being selected and/or
excluded from selection. For instance, Badros may select only
one ad from each of several different product categories. In this
way, Badros may select a plurality of ads from non-competing
product types, wherein each ad advertises a product that does not
compete with any other ad. For instance, on a camping webpage,
a plurality of different ads may be selected, each for a different
item of camping gear such as a different ad for each of a tent,
lantern, sleeping bag, and pocket knife. After each ad is selected,
other ads for competing products may be excluded from selection.
Badros, para. 56.
ANALYSIS
The Examiner found that Barton describes collecting data about product
relationships and rules for identifying advertisements, and data about a user
from purchase history data, and selecting an ad based on that data. The
Examiner found that Badros explains the advantages of selecting non-
competitive product ads. We are not persuaded by the Appellants’ argument
that the art fails
to consider any information about a retailer when selecting
advertisements to present to a user interacting with that retailer,
let alone to identify advertisements that are not competitive to
that specific retailer. Instead, the Barton reference is generally
related to selecting an advertisement to provide to a customer
Appeal 2013-004134
Application 12/012,452

7

based on a product being purchased by the customer, with the
advertisement in some situations being for a product of a
different type than that purchased.
Reply Br. 5. See also App. Br. 12–17. The limitation at issue is “selecting .
. . to identify advertisements not competitive to the specific retailer.” The
Specification defines non-competitive as generally accepted to not be
competitive as understood by the originating retailer. Spec. para. 10. Thus,
the interpretation is that by the specific retailer, and not by an objective
standard. The issue then is whether any of the non-competitive ads
described by Barton and Badros would be understood by the originating
retailer as generally accepted to not be competitive.
Barton describes the advantages of such ads being that the user is more
likely to purchase a related or complementary good or service than a similar
good or service, since there is no need for a good or service similar to that
just purchased. Further, it is likely that the related or complementary good
or service will be highly relevant to the user, since the user was interested
enough to complete a purchase for the purchased good or service. This same
reasoning in the mind of the buyer would naturally follow with the retailer,
as the retailer has a business that tries to attract that buyer. Beyond that,
limitations perceptible only in the mind of the beholder cannot distinguish a
claim over the art.
Our reviewing court has held that nonfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
Appeal 2013-004134
Application 12/012,452

8

terms of patentability). King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any
new and unobvious functional relationship between the printed matter and
the substrate.’”) (citations omitted).
The rationale behind this lack of patentable weight is preventing the
repeated patenting of essentially a known product by the mere inclusion of
novel non-functional descriptive material. King Pharm., Inc, 616 F.3d at
1279) (“The rationale behind this line of cases is preventing the indefinite
patenting of known products by the simple inclusion of novel, yet
functionally unrelated limitations.”) Cf. In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004) (“If we were to adopt Ngai’s position, anyone could
continue patenting a product indefinitely provided that they add a new
instruction sheet to the product.”).
Here, the process in no way depends on ads being perceived as non-
competitive and the non-competitive perception of the ads in no way
depends on the process.
We are persuaded by the Appellants’ argument that the art fails to
describe using a weighted scoring system to identify correlations between
user specific activity data in claims 5 and 18. The Examiner makes no
findings showing where this is taught, instead only finding that the art
describes keyword searching. Ans. 17–18.
We are not persuaded by the Appellants’ argument that the Examiner
failed to provide an affidavit supporting the official notice taken in support
of the rejection of claim 4. Claim 4 recites data sets identifying popular
products. The Examiner took notice that identifying popular products is
well known. First, Appellants conflate the procedure for an Examiner
Appeal 2013-004134
Application 12/012,452

9

entering evidence of his personal knowledge with the Examiner taking
notice of what one of ordinary skill knew. Second, Appellants have not
made any showing that there was any reason to dispute this fact. Third, by
its very definition, popular products are the most desired and so most readily
identified.
The remaining claims are argued using arguments similar to claim 1.
CONCLUSIONS OF LAW
The rejection of claims 1–3, 6, 8–16, and 19–20 under 35 U.S.C.
§ 103(a) as unpatentable over Barton and Badros is proper.
The rejection of claims 5 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Barton and Badros is improper.
The rejection of claims 4 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Barton, Badros, and Official Notice is proper.
DECISION
The rejection of claims 1–6, 9–17, 19, and 20 is affirmed.
The rejection of claims 5 and 18 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED-IN-PART