Ex Parte Siegel et al

Board of Patent Appeals and Interferences

Jul 31, 2007

09726973 (B.P.A.I. Jul. 31, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BRIAN M. SIEGEL and GREG GUDORF
__________

Appeal 2007-1517
Application 09/726,973
Technology Center 2100
__________

Decided: July 31, 2007
__________

Before JOHN C. MARTIN, LEE E. BARRETT, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-18.
We AFFIRM.

Appeal 2007-1517
Application 09/726,973

THE INVENTION
The disclosed invention relates generally to methods of providing
information over the Internet and more particularly to providing a user with
a personalized Internet experience responsive to the user’s interests and
background (Specification 1).

Independent claim 1 is illustrative:
1. A method of personalizing information presented at a
host web site comprising:

assigning a unique ID to each device among a plurality of
devices used for presenting the personalized information;

using the host web site for obtaining personal data about
a user during a visit to the host web site;

after the host web site obtains the personal data about the
user, using the host web site for monitoring the content of
information viewed by the user while the user visits other web
sites; and

during a subsequent visit by the user to the host web site,
personalizing the information presented to the user, wherein the
host web site modifies the content of the information presented
to the user based upon the unique ID of the device used to
access the host web site, the personal data obtained about the
user and the content of the other web sites visited by the user,
wherein the content of the information presented to the user is
different for each unique ID assigned to each device among the
plurality of devices.

THE REFERENCES
Mitchell US 2002/0013850 A1 Jan. 31, 2002
(filed Jun. 28, 2000)
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Application 09/726,973

Nickerson US 6,606,581 B1 Aug. 12, 2003
(filed Jun. 14, 2000)
Subramonian US 6,701,362 B1 Mar. 2, 2004
(filed Feb. 23, 2000)
Philyaw US 6,836,799 B1 Dec. 28, 2004
(filed Aug. 24, 1999)
Haitsuka US 6,847,992 B1 Jan. 25, 2005
(filed Jul. 31, 2000)

THE REJECTIONS
Claims 1-18 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1, 2, 4-7, 13, and 15-17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the teachings of Mitchell in view of
Haitsuka.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Mitchell in view of Haitsuka, and further
in view of Subramonian.
Claims 8-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Mitchell in view of Haitsuka, and further
in view of Official Notice.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Mitchell in view of Haitsuka, and further
in view of Nickerson.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Mitchell in view of Haitsuka, and further
in view of Philyaw.
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Application 09/726,973

Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs, the Final Action, and the Answer for the
respective details thereof.
Written Description Requirement
The Examiner has raised a new ground of rejection for claims 1-18
under 35 U.S.C. § 112, first paragraph (Answer 4). The Examiner contends
the Specification fails to disclose assigning a unique ID to each device
among a plurality of devices used for presenting the personalized
information, in addition to using the assigned unique ID in the manner
claimed (id.). In particular, the Examiner finds the disclosure of paragraphs
[0006], [0009], and [0012] inadequate to support the instant claims (id.).
In response, Appellants contend support can be found in the
Specification at pages 2-4, paragraphs [0007]-[0011] (Reply Br. 4-5).
We note that the Court of Appeals for the Federal Circuit has held that
“[t]o fulfill the written description requirement, the patent specification must
describe an invention in sufficient detail that one skilled in the art can clearly
conclude that the inventor invented what is claimed.” Cordis Corp. v.
Medtronic AVE, Inc., 339 F.3d 1352, 1364, 67 USPQ2d 1876, 1885 (Fed.
Cir. 2003) (citations omitted). Our reviewing court has cautioned, however,
that “[t]he disclosure as originally filed does not . . . have to provide in haec
verba support for the claimed subject matter at issue.” id. at 1364, 67
USPQ2d at 1885. “Although [the applicant] does not have to describe
exactly the subject matter claimed, . . . the description must clearly allow
persons of ordinary skill in the art to recognize that [he or she] invented
what is claimed.” In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614,
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1618 (Fed. Cir. 1989) (citations omitted). Put another way, “the applicant
must . . . convey with reasonable clarity to those skilled in the art that, as of
the filing date sought, he or she was in possession of the invention.”
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111,
1117 (Fed. Cir. 1991). Finally, “[p]recisely how close the original
description must come to comply with the description requirement of § 112
must be determined on a case-by-case basis.” Eiselstein v. Frank, 52 F.3d
1035, 1039, 34 USPQ2d 1467, 1470 (Fed. Cir. 1995) (citation omitted).
Here, we find paragraph [0009] of the Specification conveys with
reasonable clarity to those skilled in the art that Appellants were in
possession of the invention as of the instant filing date:
[0009] In certain preferred embodiments, a user may be
assigned a unique identity that is linked to the personal
computer (PC) used to access the host web site. For example, a
user may visit business related web sites from a first PC at work
and entertainment related sites from a second PC at home. The
host web site of the present invention desirably assigns a first
cookie to the user's work PC and a second cookie to the user's
home PC. The cookie assigned to the work PC will track and
monitor the web sites that the user visits at work. This
information will be stored in a database maintained by the
server of the host web site. The cookie assigned to the home PC
will track and monitor the web sites that the user visits at home.
This information will also be stored by the server of the host
web site. The information stored about usage of the work PC
will have a different content than the information stored on
usage of the home PC. As a result, the user's experience when
visiting the host web site may be very different depending upon
which PC is utilized to visit the host web site.

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(Specification 3-4, ¶ [0009]).

While not providing literal support, we nevertheless find the recited
language “assigning a unique ID to each device” is adequately supported by
the disclosed unique user identity that is linked to the personal computer
(PC) used to access the host web site (id.). For example, if two individuals
use different computers to access a web site, and each user has a unique user
ID that is linked to their own computer, then a unique ID has effectively
been assigned (i.e., linked) to each computer (i.e., device). For at least the
aforementioned reasons, we find sufficient detail has been disclosed in the
Specification to satisfy the written description requirements of 35 U.S.C.
§ 112, first paragraph.
Obviousness
We consider next the Examiner’s rejection of claims 1, 2, 4-7, 13, and
15-17 as being unpatentable over the teachings of Mitchell in view of
Haitsuka. Since Appellants’ arguments with respect to this rejection have
treated these claims as a single group which stand or fall together, we will
select independent claim 1 as the representative claim. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2004).
Mitchell discloses using cookies to store identification codes
representing user IDs (Mitchell 6, para. [0049]). The Examiner contends
that Haitsuka teaches “assign[ing] a unique ID (e.g. cookie) to each device
among a plurality of device used for presenting the personalized information
(col. 2, lines 64-67, col. 3, lines 1-3, 11-20)” (Answer 6) and that a “cookie
is inherently known to contain user or device information.” (Id.)
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Appellants argue Haitsuka does not inherently disclose that a cookie
contains device information (Br. 8).
The Examiner disagrees. The Examiner contends that the rejection is
based on the interpretation that Haitsuka’s “cookie” is the unique ID in the
same manner that Appellants’ “cookie” provides the unique ID assigned to
each device, as the Examiner contends Appellants have argued (Answer 12-
13).
After carefully considering all of the evidence before us, we find that
we need not reach the issue of inherency to decide this appeal. The Supreme
Court has recently reaffirmed that “[s]ection 103 forbids issuance of a patent
when ‘the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art to which said subject matter pertains.’” KSR Int'l Co. v. Teleflex
Inc., 127 S. Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007).
Here, Haitsuka explicitly discloses that “Cookies are computer-
specific, not user-specific.” (Haitsuka, col. 3, ll. 14-15). Also, as noted by
Appellants (Reply Br. 7), Haitsuka explains that “[c]ookies can be used by a
web server to customize pages for a user’s browser type” (col. 3, ll. 11-13).
We understand this to mean that a single user who uses two computers
having different types of browsers will have different cookies stored on each
computer. Thus, we find that Haitsuka would have suggested to a person
having ordinary skill in the art that a cookie could have been made
“computer-specific” by including within the cookie’s data a unique ID
assigned to a device (i.e., computer). We note the primary Mitchell
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reference teaches the use of cookies to store a user ID such that user systems
are automatically recognized, even when the user does not log in (Mitchell
6, ¶ [0049], ll. 1-8). Thus, we find that Haitsuka’s teaching of computer-
specific cookies would have further improved Mitchell’s system by
providing the enhanced capability of uniquely distinguishing computers (in a
manner either independent of or in association with a user ID). Accordingly,
we sustain the Examiner’s rejection of independent claim 1 as being
unpatentable over Mitchell in view of Haitsuka.
Pursuant to 37 C.F.R. § 41.37(c)(1)(vii), we have decided the appeal
with respect to the remaining claims in this group on the basis of the selected
claim alone. Therefore, we will sustain the Examiner’s rejection of claims
2, 4-7, 13, and 15-17 as being unpatentable over Mitchell in view of
Haitsuka for the same reasons discussed supra with respect to representative
claim 1.
Dependent claims 3, 8-12, 14, and 18
We further note that Appellants have not presented any substantive
arguments directed separately to the patentability of dependent claims
3, 8-12, 14, and 18. In the absence of a separate argument with respect to
the dependent claims, those claims stand or fall with the representative
independent claim. See In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Therefore, we will sustain the Examiner’s rejection of claim 3 as being
unpatentable over Mitchell in view of Haitsuka and Subramonian. We will
also sustain the Examiner’s rejection of claims 8-12 as being unpatentable
over Mitchell in view of Haitsuka and Official Notice. Likewise, we will
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sustain the Examiner’s rejection of claim 14 as being unpatentable over
Mitchell in view of Haitsuka and Nickerson. Lastly, we will sustain the
Examiner’s rejection of claim 18 as being unpatentable over Mitchell in
view of Haitsuka and Philyaw.
CONCLUSION
We have sustained at least one rejection for each claim on appeal.
Therefore, the decision of the Examiner rejecting claims 1-18 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)(1)(iv).

AFFIRMED

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