Ex Parte Snodgrass et al

Board of Patent Appeals and Interferences

Aug 26, 2009

09876611 (B.P.A.I. Aug. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte RYAN J. SNODGRASS 8
and 9
MICHAEL MCDANIEL 10
____________________ 11
12
Appeal 2009-001297 13
Application 09/876,611 14
Technology Center 3600 15
____________________ 16
17
Decided: August 26, 2009 18
____________________ 19
20
21
Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and 22
JOSEPH A. FISCHETTI, Administrative Patent Judges. 23
24
CRAWFORD, Administrative Patent Judge. 25
26
27
DECISION ON APPEAL28
Appeal 2009-001297
Application 09/876,611

2
STATEMENT OF THE CASE 1
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 38 to 65. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 3
Appellants invented a method for identifying and providing targeted 4
content to users having common interests (Spec. 1). 5
Claim 38 under appeal reads as follows: 6
38. A computer-implemented method, 7
comprising: 8
tracking referrals of users from each of a 9
plurality of referring web sites to a target web site 10
that hosts an electronic catalog of items, said 11
referrals resulting from user selections of links 12
provided on the referring web sites; 13
identifying a group of users referred to the 14
target web site by a selected subset of said 15
plurality of referring web sites, said group of users 16
comprising a plurality of users, and representing a 17
subpopulation of a general user population of the 18
target web site; 19
collecting user activity data reflective of 20
preferences of particular users for particular items 21
represented in the electronic catalog of items, said 22
user activity data encompassing actions of both 23
members and non-members of said group of users; 24
identifying a set of items that correspond to 25
group preferences of said group of users, wherein 26
the set of items is identified based on the collected 27
user activity data of both the members and the 28
non-members of said group of users; and 29
causing the set of items to be displayed (a) 30
on the target web site to users who are referred 31
thereto from a referring web site in said subset of 32
referring web sites, and/or (b) on a referring web 33
site in said subset of referring web sites. 34
Appeal 2009-001297
Application 09/876,611

3
The prior art relied upon by the Examiner in rejecting the claims on 1
appeal is: 2
Aggarwal US 6,307,965 B1 Oct. 23, 2001 3
Aggarwal US 6,356,879 B2 Mar. 12, 2002 4
Osmar R. Zaiane et al., Discovering Web Access Patterns and Trends 5
by Applying OLAP and Data Mining Technology on Web Logs, 6
Proceedings of the Advances in Digital Libraries Conference, 19-29 7
(1998) (hereinafter referred to as “Zaiane”). 8
The Examiner rejected claims 46 and 59 under 35 U.S.C. § 9
112, second paragraph as being incomplete for omitting essential steps, such 10
omission amounting to a gap between the steps. 11
The Examiner rejected claims 38 to 65 under 35 U.S.C. § 103(a) as 12
being unpatentable over Aggarwal ‘879 in view of Zaiane. 13
14
ISSUES 15
Have Appellants shown that the Examiner erred in holding that claims 16
46 and 59 do not comply with 35 U.S.C. § 112, second paragraph because 17
there is an omission in an essential step? 18
Have the Appellants shown that the Examiner erred in rejecting 19
claims 38 to 65 under 35 U.S.C. § 103(a) as being unpatentable over 20
Aggarwal ‘879 in view of Zaiane because the combined teachings of the 21
prior art do not teach the step of identifying a group of users referred to the 22
target web site by a selected subset of a plurality of referring web sites and 23
because there would be no reason to combine the teachings of Aggarwal 24
‘879 and Zaiane in the manner suggested by the Examiner. 25
Appeal 2009-001297
Application 09/876,611

4
FINDINGS OF FACT 1
Aggarwal ‘879 discloses a method for making product 2
recommendations based on customer user behavior (col. 1, ll. 6 to 9). The 3
user behavior includes user browsing and purchasing behavior (col. 2, ll. 10 4
to 12). The recommendations are made at an e-commerce site (col. 2, ll. 12 5
to 13). The method is implemented by deriving product characterizations 6
for each product and creating customer characterizations for each customer 7
based on the products browsed or bought (col. 2, ll. 22 to 36). The customer 8
characterizations are used to cluster users into peer groups and the product 9
recommendations are made using the customer characterizations and 10
categorized peer groups (col. 2, ll. 31 to 33). The product characterizations 11
are derived from text characterizations of each the products (col. 2, ll. 40 to 12
48). This process to create product characterizations includes selecting those 13
words contained within the text descriptions of each product offered at the e-14
commerce site which prove to be valuable indicators of customer behavior 15
(col. 4, ll. 60 to 64). Some words that are valuable indicators of customer 16
behavior at a site regarding movies or CDs, for example, include words such 17
as “action,” “romance,” “mystery,” “drama,” etc. (col. 4, ll. 64 to 67). The 18
product characterizations are used to group customers into clusters or peer 19
groups (col. 5, ll. 6 to 7). 20
Zaiane discloses that the behavior of a web page reader is imprinted in 21
the web server log files and that the analysis of the behavior or users can be 22
used to identify populations of potential customers for electronic commerce 23
(page 1). The web servers register a web entry for every single access they 24
get in which they save the URL requested (page 1). Zaiane also discloses 25
Appeal 2009-001297
Application 09/876,611

5
that recent research and development of data mining technology have 1
promoted some studies on efficient data mining for user access patterns that 2
can be used to make wise marketing decisions (page 2). 3
4
PRINCIPLES OF LAW 5
Second paragraph of 35 U.S.C. § 112 6
The second paragraph of 35 U.S.C. § 112 requires claims to set out 7
and circumscribe a particular area with a reasonable degree of precision and 8
particularity. In re Johnson, 558 F.2d 1008, 1015 (CCPA 1977). In making 9
this determination, the definiteness of the language employed in the claims 10
must be analyzed, not in a vacuum, but always in light of the teachings of 11
the prior art and of the particular application disclosure as it would be 12
interpreted by one possessing the ordinary level of skill in the pertinent art. 13
Id. 14
The Examiner's focus during examination of claims for compliance 15
with the requirement for definiteness of 35 U.S.C. § 112, second paragraph, 16
is whether the claims meet the threshold requirements of clarity and 17
precision, not whether more suitable language or modes of expression are 18
available. Some latitude in the manner of expression and the aptness of 19
terms is permitted even though the claim language is not as precise as the 20
Examiner might desire. If the scope of the invention sought to be patented 21
cannot be determined from the language of the claims with a reasonable 22
degree of certainty, a rejection of the claims under 35 U.S.C. § 112, second 23
paragraph, is appropriate. 24
Appeal 2009-001297
Application 09/876,611

6
A claim which fails to interrelate essential elements of the invention 1
as defined by Applicants in the specification does not comply with the 2
requirements of 35 U.S.C. § 112, second paragraph. See In re Venezia, 530 3
F.2d 956, 958-59 (CCPA 1976); In re Collier, 397 F.2d 1003, 1005 (CCPA 4
1968). 5
Obviousness 6
An invention is not patentable under 35 U.S.C. § 103 if it is obvious. 7
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007). The facts 8
underlying an obviousness inquiry include: Under § 103, the scope and 9
content of the prior art are to be determined; differences between the prior 10
art and the claims at issue are to be ascertained; and the level of ordinary 11
skill in the pertinent art resolved. Against this background the obviousness 12
or nonobviousness of the subject matter is determined. Such secondary 13
considerations as commercial success, long felt but unsolved needs, failure 14
of others, etc., might be utilized to give light to the circumstances 15
surrounding the origin of the subject matter sought to be patented. Graham 16
v. John Deere Co., 383 U.S. 1, 17-18 (1966). In addressing the findings of 17
fact, “[t]he combination of familiar elements according to known methods is 18
likely to be obvious when it does no more than yield predictable results.” 19
KSR at 416. As explained in KSR: 20
If a person of ordinary skill can implement a 21
predictable variation, § 103 likely bars its 22
patentability. For the same reason, if a technique 23
has been used to improve one device, and a person 24
of ordinary skill in the art would recognize that it 25
would improve similar devices in the same way, 26
using the technique is obvious unless its actual 27
application is beyond his or her skill. Sakraida 28
Appeal 2009-001297
Application 09/876,611

7
and Anderson's-Black Rock are illustrative - a court 1
must ask whether the improvement is more than 2
the predictable use of prior art elements according 3
to their established functions. 4
KSR at 417. 5
A prior art reference is analyzed from the vantage point of all that it 6
teaches one of ordinary skill in the art. In re Lemelson, 397 F.2d 1006, 1009 7
(CCPA 1968) (“The use of patents as references is not limited to what the 8
patentees describe as their own inventions or to the problems with which 9
they are concerned. They are part of the literature of the art, relevant for all 10
they contain.”). Furthermore, “[a] person of ordinary skill is also a person of 11
ordinary creativity, not an automaton.” KSR at 421. The obviousness 12
analysis need not seek out precise teachings directed to the specific subject 13
matter of the challenged claim, for a court can take account of the inferences 14
and creative steps that a person of ordinary skill in the art would employ. Id. 15
at 418. 16
On appeal, Applicants bear the burden of showing that the Examiner 17
has not established a legally sufficient basis for combining the teachings of 18
the prior art. Applicants may sustain their burden by showing that where the 19
Examiner relies on a combination of disclosures, the Examiner failed to 20
provide sufficient evidence to show that one having ordinary skill in the art 21
would have done what Applicants did. United States v. Adams, 383 U.S. 39, 22
52 (1966). 23
24
25
Appeal 2009-001297
Application 09/876,611

8
ANALYSIS 1
We will not sustain the Examiner’s rejection under 35 U.S.C. § 112, 2
second paragraph. The Examiner is of the view that essential steps are 3
missing from claims 46 and 59. In this regard, the Examiner reasons that in 4
accordance with the recitations in claim 38, the user is on the target web site 5
and that therefore a step must be incorporated into the methods of claims 46 6
and 59 to get the user back to the referring website so that the items can be 7
displayed thereon. However, the claims do not recite that the same user 8
returns to the referral website so that the items can be displayed. The claims 9
merely recite that the items are caused to be displayed on the referral 10
website. This display is not connected to a user but rather to the referral 11
website. As such, the claims recite that the items are displayed on the 12
referral website so that anyone who accesses the website even users who 13
have never visited the target website can view the items. 14
We will not sustain the Examiner’s rejection under 35 U.S.C. § 103. 15
Aggarwal ‘879 forms the peer groups based on the products browsed or 16
bought by customers and makes product recommendations based on a text 17
characterization of the product names. Zaiane discloses that information on 18
websites visited by users can be used for marketing purposes. The Examiner 19
reasons that it would have been obvious to include the information about the 20
websites visited in the data used to form peer groups. However, the 21
Examiner has not established how this website information would be used to 22
provide product recommendations. Aggarwal ‘879 uses a text 23
characterization process to derive the product characterization in which 24
certain words in the product name are considered valuable indicators of the 25
customer behavior. The Examiner has not established how the text 26
Appeal 2009-001297
Application 09/876,611

9
characterization process disclosed by Aggarwal ‘879 can be used in regard 1
to the name of websites. We note in this regard that many website names do 2
not include the names of products sold at the website. 3
In addition, the Examiner has not articulated a reason for combining 4
the teachings of Aggarwal ‘879 and Zaiane i.e., using the websites visited 5
information in the system of Aggarwal ‘879 to make product 6
recommendations. As websites do not always relate strictly to one product, 7
information that a consumer visited a certain website would not necessarily 8
produce any valuable information regarding the products that the consumer 9
is interested in and as such would not contribute to making product 10
recommendations. In contrast, the information about the products bought or 11
browsed gives direct information about the products a consumer is interested 12
in. As such, in our view, there would be no reason to include the website 13
information as taught by Zaiane in the process of Aggarwal ‘879. 14
In view of the foregoing, we will not sustain the Examiner’s rejection 15
under 35 U.S.C. § 103. 16
17
CONCLUSION OF LAW 18
On the record before us, Appellants have shown that the Examiner 19
erred in rejecting the claims. 20
Appeal 2009-001297
Application 09/876,611

10
DECISION 1
The decision of the Examiner is reversed. 2
3
REVERSED 4
5
6
7
8
9
10
hh 11
12
KNOBBE MARTENS OLSON & BEAR LLP 13
2040 MAIN STREET 14
FOURTEENTH FLOOR 15
IRVINE, CA 92614 16
17
18