Ex Parte Singh et al

Board of Patent Appeals and Interferences

May 16, 2011

10267978 (B.P.A.I. May. 16, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MAN JIT SINGH and DAVID CANCEL
____________________

Appeal 2009-007361
Application 10/267,9781
Technology Center 2400
____________________

Before LANCE LEONARD BARRY, JAY P. LUCAS, and ST. JOHN
COURTENAY III, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 28, 30 to 33, 57, 59
to 63, 65, 66, 69 to 76, 78, 79, and 81 to 90 under authority of
35 U.S.C. § 134(a). Claims 1 to 27, 29, 34 to 56, 58, 64, 67, 68, 77 and 80

1 Application filed October 9, 2002. Appellants claim the benefit under
35 U.S.C. § 119 of various applications dating to March 7, 2002. The real
party in interest is Complete, Inc.
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are cancelled. The Board of Patent Appeals and Interferences (BPAI) has
jurisdiction under 35 U.S.C. § 6(b).
We affirm the rejections.

Appellants’ invention relates to a method for modifying an off-line
marketing promotion based on analysis of online user actions. In the words
of Appellants:
Methods and systems are also provided for
providing a host computer for handling a plurality
of processes, the host system having a collection
facility, a network, a pre-calculation facility, a
calculation facility, and a post-calculation facility;
obtaining an input data set of online user data from
a plurality of data providers, wherein the input data
set represents HTTP transactions of a plurality of
online users; and sending an output data set to a
co-location facility to permit remote access by a
party other than the host.
. . . .
The methods and systems may further
comprise providing a panel selection process for
selecting a panel of users, data for which will be
used in an input data set. The process may include
conducting a survey of user demographics for an
initial user panel; determining a statistic related to
the demographics of the users in the user panel;
comparing the statistics to the statistics for a past
user panel; selecting a new panel of users
representing a desired set of demographic
characteristics; and determining whether to keep or
discard a data item based on membership of a user
in the panel.
. . . .
In embodiments the methods and systems
may include obtaining a set of data reflecting
online actions of a plurality of users; analyzing the
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data to identify characteristics of the user’s
behavior; and modifying an off-line business
process based on the identified characteristics.
(Spec. 2, ll. 14 to 19; 4, ll. 8 to 14; 6, ll. 11 to 14).
The following illustrates the claims on appeal:
Claim 28:
28. A method, comprising:

obtaining an input data set reflecting online
actions of a plurality of online users, wherein the
plurality of online users are selected according to a
panel selection process based on demographic
characteristics of the online users;

analyzing the data set to identify
characteristics of cross-shopping behavior of the
users between different brands of automobiles; and

modifying an off-line marketing promotion
that includes an offline incentive for buying a
particular brand of automobile based on the
identified characteristics.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Holtz US 2002/0053078 A1 May 02, 2002
Perkowski US 2002/0198791 A1 Dec. 26, 2002
(filed on Jan. 28, 2002)
Townsend US 2003/0135405 A1 Jul. 17, 2003
(filed on Jan. 17, 2002)
Parekh US 2005/0234922 A1 Oct. 20, 2005
(filed on May 13, 1999)
Konig US 6,981,040 B1 Dec. 27, 2005
(filed on Dec. 28, 1999)

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REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 28, 59, 65, 70 and 78 stand rejected under 35 U.S.C. § 112,
paragraph 2 for being unclear concerning the meaning of panel selection.
R2: Claims 65, 66, 78, 79, and 81 to 85 stand rejected under 35
U.S.C. § 103(a) for being obvious over Perkowski in view of Parekh.
R3: Claims 28 and 30 to 33 stand rejected under 35 U.S.C. § 103(a) for
being obvious over Perkowski in view of Parekh and further in view of
Townsend.
R4: Claim 57 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Perkowski in view of Parekh and further in view of Townsend and
Konig.
R5: Claims 69 to 75, 87 and 90 stand rejected under 35 U.S.C. § 103(a)
for being obvious over Perkowski in view of Parekh and further in view of
Konig.
R6: Claim 76 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Perkowski in view of Parekh and further in view of Konig and Holtz.
R7: Claims 88 and 89 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Perkowski in view of Parekh and further in view of Konig and
Townsend.
R8: Claims 59 to 62 and 86 stand rejected under 35 U.S.C. § 103(a) for
being obvious over Perkowski in view of Parekh and further in view of
Hotz.
R9: Claim 63 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Perkowski in view of Parekh and further in view of Holtz and Konig.

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We will review the rejections in the order argued in the Briefs. We
have only considered those arguments that Appellants actually raised in the
Briefs. Arguments Appellants could have made but chose not to make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 112 paragraph 2 and
35 U.S.C. § 103(a). The issue specifically turns on the meaning of a panel
selection process as claimed and whether it is taught in the references.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Appellants have invented a method for analyzing a data set reflecting
the actions of a selected panel of users. (Spec. 19, middle). The data can be
used in many lines of business. (Spec. 37, middle). Various incentives or
off-line media can be derived from this data to encourage users to buy
certain products, such as automobiles. (Spec. 39, bottom).

PRINCIPLES OF LAW

Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
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rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).

The Court of Appeals for the Federal Circuit has cautioned against
unreasonably broad claim construction:
Although the PTO emphasizes that it was
required to give all “claims their broadest
reasonable construction” particularly with respect
to [the] use of the open-ended term “comprising,”
see Genentech, Inc. v. Chiron Corp., 112 F.3d 495,
501 (Fed. Cir. 1997) (“the open-ended term
comprising ... means that the named elements are
essential, but other elements may be added”), this
court has instructed that any such construction be
“consistent with the specification, ... and that claim
language should be read in light of the
specification as it would be interpreted by one of
ordinary skill in the art.” In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990).
In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010).

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ANALYSIS
Arguments with respect to the rejection
of claims 28, 59, 65, 70 and 78
under 35 U.S.C. § 112 para. 2 [R1]

The Examiner has rejected the noted claims for being unclear, stating
“It's unclear to the examiner what exactly does panel selection process
contain? Does it mean displaying the product, advertisement or what?”
(Ans. 3, middle).
Claims terms are to be interpreted in the light of the Specification.
(See In re Bond, cited above). Appellants assert that the panel selection
process is described in Figure 9 and pages 19 to 20 of the Specification. We
agree, and find that the description is clear and sufficient to overcome the
rejection under 35 U.S.C. § 112.
Appellants have demonstrated error in this rejection.

Arguments with respect to the rejection
of all claims
under 35 U.S.C. § 103(a) [R2 to R9]

The Examiner has rejected the noted claims for being rendered
obvious over some combination of Perkowski, Parekh and sometimes other
secondary references.
We have reviewed Appellants’ arguments for each of the rejections
and find them variants of two major contentions. (App. Br. 6 to 13).
First, specifically with respect to rejection R2, Appellants contend that
“The cited references, both individually and in combination, however, fail to
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teach or suggest a panel selection process as recited in independent claims
65 or 78.” (App. Br. 7, middle) (emphasis omitted). In response, the
Examiner points to the Parekh reference, especially paragraphs 150 to 152.
(Ans. 28, middle).
Reviewing the Parekh reference, we note the teaching of analyzing
users of a site to determine their location, age, language and other
demographic characteristics. (¶ [0150]). This information is then used to
focus advertising toward that set of users and in some cases to exclude some
users based on their demographics e.g. preventing under-age users from
accessing “adult content” sites. (Id.) Those selected users of a site are
further analyzed “in order to compile a geographic and/or connection speed
breakdown of Internet users 5 to aid in the marketing of Internet sites.”
(¶ [0153], last sentence).
In reviewing the various teachings of this reference, we find sufficient
support for concluding the claim language to be obvious. The claim requires
“users are selected according to a panel selection process based on
demographic characteristics of the online users.” Parekh teaches selection of
online users, based on demographics of the users, rendering this limitation of
the claim obvious over the cited art.
A second argument presented in the context of R8 but applicable to
numerous claims states: “Holtz, when read in its entirety, do[es] not
describe, teach, or suggest a process for presenting an offline media item, as
recited in Appellants’ independent claim 59.” (App. Br. 12, top) (emphasis
omitted). The Examiner responds by pointing to Perkowski, especially
paragraphs 91 and 100. (Ans. 29, middle). Perkowski teaches using of
marketing data, including that gathered online, to determine offline
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presentation of product and product supply chains (¶ [0012]), physical brand
imaging and physical (off line) marketing including point of sale displays
(¶ [0091]), even to determine the particular shelf locations for best sale of
products (¶ [0100]). We find this sufficient suggestion to render obvious the
claimed limitation quoted above.
CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown that the Examiner erred in rejecting claims 28,
30 to 33, 57, 59 to 63, 65, 66, 69 to 76, 78, 79, and 81 to 90.

DECISION
We reverse the Examiner’s rejection R1 under 35 U.S.C. § 112,
paragraph 2. We affirm the Examiner’s rejections R2 to R9 of claims 28, 30
to 33, 57, 59 to 63, 65, 66, 69 to 76, 78, 79, and 81 to 90.

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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