Herbert BOOS et al.

Patent Trials and Appeals Board

Feb 28, 2022

2021002968 (P.T.A.B. Feb. 28, 2022)

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. 15/396,127 12/30/2016 Herbert BOOS HG81 1428 27956 7590 02/28/2022 KLAUS J. BACH 4407 TWIN OAKS DRIVE MURRYSVILLE, PA 15668 EXAMINER BROWN, LUIS A ART UNIT PAPER NUMBER 3682 MAIL DATE DELIVERY MODE 02/28/2022 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 HERBERT BOOS and FLORIAN MEYER ____________ Appeal 2021-002968 Application 15/396,1271 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, JAMES P. CALVE, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1, 3, 6-9, and 11-15. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real parties in interest as “the inventors Herbert Boos and Florian Meyer.” (Appeal Br. 1.) Appeal 2021-002968 Application 15/396,127 2 CLAIMED SUBJECT MATTER Appellant’s “invention relates to a method and a device for controlling the issuing of product-related advertising messages in sales facilities in order to optimize the efficiency of addressing customers with advertising messages of this type.” (Spec. 1.) Claims 1 and 8 are the independent claims on appeal.2 Claim 1 is illustrative. It recites (bracketed material added): 1. A method for controlling the issuing of advertising messages in sales facilities, wherein product-related advertising messages are provided for use as required and output media for issuing the advertising messages in the sales facility are provided, the method comprising the following steps: [(a)] acquiring boundary condition data such as day of week, time of day, outside temperature, temperature in the sales room, air pressure, air humidity and weather conditions during business hours, and temporarily storing these data in a data processing system, [(b)] issuing product-related advertising messages from the data processing system to output media located in the sales facility in order to promote specific selected products, [(c)] detecting the effective quantity of promoted products sold, including recording the time of selling associating the boundary condition data collected at the respective time of selling, with the respective sales of the advertised products by the data processing system in a cashpoint area of the sales facilities on the basis of cash register data, 2 We note that claim 1 appearing on pages 17-18 of the Appeal Brief differs from claim 1 as entered by the Examiner in response to the claim amendments filed by Applicant on October 24, 2019. Claim 1 appearing above reflects the claim as entered by the Examiner. As used herein, “Appeal Brief” refers to the substitute appeal brief filed by Appellant on November 24, 2020. Appeal 2021-002968 Application 15/396,127 3 [(d)] collecting and storing of sales data with respectively associated boundary condition data by the data processing system cumulatively over a period of time, [(e)] evaluating the collected sales data and determining the boundary conditions under which promoted products are particularly frequently sold by the data processing system, and [(f)] controlling by the data processing system the issuing of advertising messages relating to the respective product, during the presence of a boundary condition that has been determined to boost sales, [(g)] wherein, in an entrance area of the sales facility, an individualizing identification is assigned to a customer in the form of a technically readable or detectable ID of a shopping cart or a shopping basket used by the customer for tracking the customer during a shopping trip, and this identification is also assigned to the recorded and collected purchase data or items thereby providing for personal anonymity of the customer using the shopping cart or basket. REJECTION Claims 1, 3, 6-9, and 11-15 are rejected under 35 U.S.C. § 1033 as unpatentable in view of Opdycke (US 2005/0039206 A1, pub. Feb. 17, 2005), Gonzalez (US 2011/0231236 A1, pub. Sept. 22, 2011), and Morton (US 2011/0119132 A1, pub. May 19, 2011.) 3 This application was filed December 30, 2016. (The Application Data Sheet filed with this application states that the application is a continuation- in-part of PCT/EP/2014/001805 claiming a filing or § 371(c) date of July 2, 2014.) Title 35, § 103 was amended effective March 16, 2013. Therefore, this application is to be examined under amended § 103. The amendment removed § 103(a)-(c), replacing them with a new § 103. The Examiner erroneously states that the claims are rejected under § 103(a). (Final Action 2.) However, the language in new § 103 is, in relevant part, similar to that in § 103(a), and the stated bases for the Examiner’s obviousness rejection are in accord with the standards set forth in new § 103. Therefore, in this case, we treat the Examiner’s error as harmless. Appeal 2021-002968 Application 15/396,127 4 ANALYSIS Obviousness is a legal conclusion involving a determination of underlying facts. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966)). With regard to the scope and content of the prior art, the Examiner finds that Opdycke teaches limitations (a)-(f) and part of limitation (g). (Final Action 3-4; see also Answer 4.) Appellant argues that in Opdycke “there is no customer-related correlation of sales with boundary conditions as claimed in the present application. Rather, Opdycke teaches correlation of sales (recorded at a certain point-of-sale, not at a cash point) with system-created advertising content.” (Reply Br. 4 (emphasis omitted); see also id. at 3-5.) Appellant also argues that “contrary to the Examiner’s allegation, none of [paragraphs 28, 54, 58-61, and 76 of Opdycke] teaches any recording of the time of selling of the advertised products or associating the boundary condition data collected at the respective time of selling the respective sales of the advertised products.” (Appeal Br. 8.) Appeal 2021-002968 Application 15/396,127 5 Opdycke teaches a software facility (“facility”) [that] provides an integrated behavioral analytics for digital signage, which provides users, such as marketers, . . . the ability to gauge the response, e.g., sales increases, to their digital signage. For example, the facility retrieves viewer behavioral data (e.g., sales data, store foot traffic data, etc.) and data regarding the content actually played on the digital signage (e.g., play logs), and compares the play log data with sales data corresponding to the products promoted by the content displayed or delivered through the digital signage, and provides users a way to view and analyze the comparative results. (Opdycke ¶ 21.) In particular, Opdycke teaches a digital signage network that may execute a playlist “composed of ContentA, ContentB and ContentC that advertises Product1. . . . A point-of-sale device may be collecting and registering data regarding sales of Product1.” (Id. ¶ 58.) Opdycke teaches that “viewer behavioral data may be a record of the sales (e.g., units or revenue) of Product1 and an indication of the time and location each of the items were sold.” (Id. ¶ 59.) The facility may retrieve play logs showing actual content presented on the digital signage. (Id.) “[T]he play logs may specify the proximate date, time, and location each of ContentA, ContentB, and ContentC was played.” (Id.) The facility maps the viewer behavioral data to the play log data. (Id. ¶ 60.) The facility may analyze the data “based on the units or revenue of Product1 sold during the proximate times and locations the particular content advertising the particular product was being played.” (Id. ¶ 61.) Opdycke teaches that the facility “modifies the playlists based on an analysis of the most recent data collected” and “modifies the existing playlist characteristics to reflect the current best predictive model of input that influence view behavior towards the goal,” e.g., increased sales. (Id. ¶¶ 100-101.) In short, Opdycke teaches mapping Appeal 2021-002968 Application 15/396,127 6 product sales data (e.g., units, revenue, time, location) to data regarding the date, time, and location particular advertising content was played, and appropriately modifying the playlist. With regard to Appellant’s argument that Opdycke teaches “sales (recorded at a certain point-of-sale, not at a cash point [sic])” (Reply Br. 4), Appellant provides no citation to support the argument. In particular, Appellant points to no definition of cashpoint in the Specification. At best, the Specification states that “[i]n the cashpoint area 3, the purchases of customers are recorded at the cash register 31.” (Spec. 6.) In other words, a cashpoint area includes an area in which a cash register, that is, a point-of- sale device, is located. Thus, a sale recorded at the point-of-sale device is recorded in a cashpoint area. We do not find Appellant’s argument persuasive. Appellant argues that claim 1 requires determining more than one boundary condition under which products are sold.4 (Reply Br. 3; see also Answer 3.) Appellant argues that “[t]his may not be clear from the term 4 Appellant argues that the Examiner erred in treating limitation (a) as a Markush group. (Reply Br. 3; see also Answer 3.) A Markush group should be closed, i.e., it should be characterized with the phrase “consisting of” rather than, e.g., comprising. Abbott Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d 1274, 1280 (Fed. Cir. 2003). Limitation (a) recites “acquiring boundary condition data such as day of week, time of day, outside temperature, temperature in the sales room, air pressure, air humidity and weather conditions during business hours, and temporarily storing these data in a data processing system.” (Emphasis added.) Applying a broadest reasonable interpretation, we interpret limitation (a) as not defining a closed group. Rather, it is open to include conditions such as those enumerated in the claim. Therefore, we agree that limitation (a) does not recite a Markush group. However, we find this error in naming to be harmless. Appeal 2021-002968 Application 15/396,127 7 ‘boundary condition data’ alone, but it is clear from using the plural ‘boundary conditions’ in the evaluation step.” (Reply Br. 3.) The evaluation step, limitation (e), recites “evaluating the collected sales data and determining the boundary conditions under which promoted products are particularly frequently sold by the data processing system.” In the limitation, both “boundary conditions” and “promoted products” are recited in the plural. Applying a broadest reasonable interpretation,5 we do not agree with Appellant that the limitation requires determining more than one boundary condition for each promoted product, i.e., the limitation does not recite “determining the boundary conditions under which each promoted product is sold.” Nor does the limitation recite “determining a single boundary condition under which promoted products are sold.” Rather, under a broadest reasonable interpretation, the limitation requires evaluation of more than one promoted product, and includes determining a single boundary condition for all promoted products, as well as determining multiple boundary conditions for each promoted product. Regardless, with regard to the question of whether Opdycke teaches evaluation of one or more boundary conditions per product sold, the Examiner determines that Opdycke discloses boundary conditions including “stored constraints and parameters received from the advertising merchants for an in-store ad campaign, such as day of week, time of day, and [0075] 5 “During examination, ‘claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . 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 Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)). Appeal 2021-002968 Application 15/396,127 8 which also mentions weather as a constraint.” (Final Action 3 (citing Opdycke ¶¶ 22, 24, 26, 69, 75, 84, 93) (brackets in original); see also Answer 3-6 (citing Opdycke ¶¶ 22, 24, 38, 59-61, 69, 98-100).) The examiner also points to paragraph [0038] which teaches collection and analysis of heat and light levels in conjunction with digital signage content presentation and subsequent user response. Paragraphs [0059]-[0061] of Opdycke detail a process in which play log data from the digital signage system in the retail setting, and particularly “time and location” data, is correlated with sales of Product 1 during the times when or just after when the particular Content A, B, or C, was being played on the digital signage system. This would constitute “time of day” as the limitation in question claims. (Answer 4 (brackets in original).) As an initial matter, we note that paragraphs 22, 24, and 26 of Opdycke discuss how “[u]sers utilize the facility to specify a goal and one or more constraints (e.g., parameters such as advertising content, time, locale, etc.) of an advertising campaign to measure the effectiveness of a campaign conducted on [a] digital signage network.” (Opdycke ¶ 22.) In other words, paragraphs 22, 24, and 26 refer to goals or constraints a user of the Opdycke facility can set for data collection, rather than collected data. Appellant argues that paragraph 38 of Opdycke, relied on by the Examiner, is limited to “the delivery of system-created influencing conditions” and “does not teach collection of boundary conditions.” (Reply Br. 4 (emphasis omitted).) We disagree. Paragraph 38 of Opdycke refers to both environmental conditions the Opdycke facility may provide, and data that may be collected and analyzed related to the behavior of a target population. Specifically, paragraph 38 discloses that [p]rogram server computer 106 provides services to enable creation of real-time or near real-time, intelligent, positive Appeal 2021-002968 Application 15/396,127 9 feedback loops by dynamically linking the delivery of controlled sensory input, e.g., digital sign images, pricing, type and volume of music, heat level, light level, etc., to a targeted population and/or population segment, the ongoing collection and analysis of target population behavioral data, e.g., response data, population traffic data, etc., and provides the iterative input variable modification based, for example, on the analytics and optimization techniques previously discussed, in order to more effectively influence audience behavior towards a desired goal or result. (Opdycke ¶ 38; see also Answer 4.) In other words, paragraph 38 teaches both delivering controlled sensory inputs including heat and light levels, and linking these through ongoing collection and analysis of behavioral data (“e.g., sales data, store foot traffic data, etc.”) to the target population. (Opdycke ¶¶ 21, 38.) Limitations (d) and (e) recite, in relevant part, “collecting and storing of sales data with respectively associated boundary condition data” and “evaluating the collected sales data and determining the boundary conditions under which promoted products are particularly frequently sold.” As noted above, the Examiner determines that Opdycke detail[s] a process in which play log data from the digital signage system in the retail setting, and particularly “time and location” data, is correlated with sales of Product 1 during the times when or just after when the particular Content A, B, or C, was being played on the digital signage system. This would constitute “time of day” as the limitation in question claims. (Answer 4.) Thus, we agree with the Examiner that Opdycke teaches collecting time and location data, data that may be retrieved from a point-of- sale device, and using that data in evaluating sales. (See Answer 4 (citing Opdycke ¶¶ 59-61).) Moreover, we also agree with the Examiner that Opdycke teaches collecting data regarding delivered heat and light levels Appeal 2021-002968 Application 15/396,127 10 and using that data when evaluating behavior (including sales data) of a target population. (See id.; see also Opdycke ¶¶ 21, 38, 59-61.) Therefore, we do not agree with Appellant that Opdycke fails to disclose “determining the boundary conditions under which promoted products” are sold, including those conditions under which the “products are particularly frequently sold,” as recited in limitation (e). With regard to limitation (g), the Examiner finds that Opdycke teaches wherein an individualising [sic] identification is assigned to the customers, for example in the form of a technically readable or detectable ID of a shopping cart used, and this identification is also assigned to the recorded and collected purchase data (see [0074]-[0075] including the ID being associated with a shopping cart). (Final Action 4 (second brackets in original) (emphasis omitted); see also Answer 8.) Appellant argues that paragraphs 74 and 75 of Opdycke relied on “by the Examiner do not disclose any individualization of customers by the system and, in particular, do not teach to provide an identification assigned to the customers in the form of a technical readable or detectable ID of a shopping cart used.” (Appeal Br. 11; see also Reply Br. 7 (“[T]here is no disclosure of any shopping cart ID which may be detected by technical means; rather, it is said that shopping basket contents . . . may be detected by radio frequency identification devices.”).) Opdycke discloses the use of “a variety of devices that enable the identification of a specific viewing audience or individuals” and that “[i]dentification methods may include processes and devices, such as, by way of example, swiping loyalty and credit cards in a card reader, Appeal 2021-002968 Application 15/396,127 11 fingerprint identification, image recognition, keyboard input, detection of shopping basket contents using radio frequency identification devices, 3rd party observation, and the like.” (Opdycke ¶ 74.) We note that with regard to a shopping basket or cart, Opdycke refers to detecting the contents of a shopping basket using radio frequency ID devices, rather than detecting a basket or cart itself. Thus, we disagree with the Examiner that the cited paragraphs of Opdycke teach “an individualising [sic] identification is assigned to the customers . . . in the form of a technically readable or detectable ID of a shopping cart used.” (See Final Action 4) (emphasis omitted.) Further with regard to limitation (g), the Examiner relies on Morton to teach wherein in an entrance area of the sales facility, an individualizing identification is assigned to customer in the form of a technically readable or detectable ID of a shopping cart or a shopping basket used by the customer for tracking the customer during a shopping trip, and this identification is also assigned to the recorded and collected purchase data or items. (Final Action 4-5 (citing Morton ¶¶ 22, 46, 51) (emphasis omitted).) Morton teaches “[a] system and method for correlating mobile devices with temporary and permanent markers used by an advertising system that delivers content to consumers via a network of display devices.” (Morton, Abstract.) Morton teaches that “[a] ‘marker’ is any technology component that allows the presence and location of the marker to be detected within a desired accuracy in the retail environment” (id. ¶ 18), and that a marker may be a “radio frequency identification (RFID) tag[]” (id. ¶ 1). Morton discloses that “the marker may be embedded in an identification component that is attached to the shopping cart.” (Id. ¶ 19.) In other words, the cited Appeal 2021-002968 Application 15/396,127 12 portions of Morton teach that an RFID tag may be embedded in a shopping cart/basket and, thus, an ID may be assigned at the entrance of a sales facility where shopping carts are typically found. (See Final Action 4-5.) The cited portions of Opdycke, on the other hand, teach that RFID tags may be attached to the contents of a shopping cart/basket. In short, in the cited portions of Opdycke, an ID is not associated with a customer or shopping basket/cart until, at the earliest, a tagged item is placed in the cart, presumably somewhere inside the sales facility. The Examiner determines that it would have been obvious to combine Morton with Opdycke because Opdycke already teaches the ID’s being in such as a shopping cart but does not include a discussion of where the shopping carts are identified, and since shopping carts are usually near an entrance the identification being near the entrance would allow for efficient and timely identification. (Id. at 5 (emphasis omitted).) The Examiner’s expressed basis for combining Morton with Opdycke is based on a flawed understanding of Opdycke, i.e., that the shopping basket/cart of Opdycke, like the shopping basket/cart of Morton, has a technically readable or detectable ID. We do not, in the first instance, make a determination as to whether the Examiner’s proposed combination, i.e., modification of Opdycke in view of Morton, would have been obvious to one of ordinary skill in the art, based on a proper understanding of the disclosure in the cited portions of Opdycke. Therefore, we will reverse the rejection of claim 1 and dependent claims 3, 6, and 7. Independent claim 8 contains similar language and for similar reasons we will reverse the rejection of claim 8 and dependent claims 9 and 11-15. Appeal 2021-002968 Application 15/396,127 13 CONCLUSION The Examiner’s rejection of claims 1, 3, 6-9, and 11-15 under 35 U.S.C. § 103 is reversed. Specifically: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 6-9, 11-15 103 Opdycke, Gonzalez, Morton 1, 3, 6-9, 11-15 REVERSED