Rodger Cosgrove

Patent Trials and Appeals Board

Jun 30, 2021

2020001878 (P.T.A.B. Jun. 30, 2021)

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.
12/834,861 07/12/2010 Rodger Cosgrove 103487.0001US1 9212
24392 7590 06/30/2021
FISH IP LAW, LLP
2603 Main Street
Suite 1000
Irvine, CA 92614
EXAMINER
CHOI, YUK TING
ART UNIT PAPER NUMBER
2153
NOTIFICATION DATE DELIVERY MODE
06/30/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Patents@fishiplaw.com
rfish@fishiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RODGER COSGROVE
____________________

Appeal 2020-001878
Application 12/834,861
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, NORMAN H. BEAMER, and
NABEEL U. KHAN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claim 1 (the only pending claim). Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies the “real party in interest is Rodger Cosgrove.”
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claim 1 (emphasis, formatting, and bracketed material added):
1. A method of generating a printed periodical publication,
comprising:
a) a user database set comprising a plurality of users;
b) a plurality of publication content database sets
comprising a plurality of publication content;
c) for each of said users, generating a custom subset of
content from said plurality of publication content
based upon a dynamic scoring function to match
content with each user;
d) physically printing said custom subset of publication
content for each of said users to generate said printed
periodical publication for each user; and,
e) delivering said physically printed publication to a
distinct physical address for each of said users;
[f)] wherein each user is a receiver of publication
content;
[g)] wherein each user has access to provide input to the
dynamic scoring criteria for sending and receiving
said publication content;
[h)] wherein each user has access to provide publication
content to other users;
[i)] wherein a plurality of users provide input to the
dynamic scoring criteria for receiving said publication
content;
[j)] wherein a plurality of users provide input to the
dynamic scoring criteria for providing said publication
content for other users; and,
[k)] wherein at least one inclusion criteria is part of the
dynamic scoring function for each publication content.
Appeal Br. 11 (claims App.).
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REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Kloosterman US 2003/0189725 A1 Oct. 9, 2003
Herrington US 2005/0033657 A1 Feb. 10, 2005

REJECTIONS
A.
The Examiner rejects claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kloosterman and Herrington. Final
Act. 10–14.
B.
The Examiner also rejected claim 1 under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter. Final Act.
9–10.
“The 35 U.S.C [§]101 rejection to claim 1 has been withdrawn due to
the Revised Guidance in 2019.” Ans. 3. Therefore, the merits of the § 101
rejection are no longer before us.

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief and Reply Brief arguments.
A.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
The Examiner admitted that Kloosterman does not teach
the limitations related to dynamic scoring function. See October
2018 Final Office Action, at Page 12 (“Kloosterman does not
explicitly disclose generating a custom subset of content from
said plurality of content based upon a dynamic scoring function
to match content with each user, wherein each user has access to
provide input to the dynamic scoring criteria for sending and
receiving said publication content.”).
The Examiner purportedly found the dynamic scoring
function in Herrington, but that was only because the Examiner
incorrectly conflated content profiling with dynamic scoring.
Dynamic scoring in claim 1 refers to modifying content based
upon the user’s input to the dynamic scoring criteria.
Herrington’s content profiling refers to modifying content based
upon the user’s past activities. See Herrington at [0046] (“. . .
content that users have searched for, viewed, kept or tracked in
the past.”). In claim 1 the user has access to modifying the
criteria. In Herrington, the user can only indirectly influence
data that might or might not fit into the criteria, depending on the
operator. See Herrington at [0046] (“. . . an operator of the
media platform can recommend other new or highly ranked items
which correlate closely with an individual user or defined groups
in which users may belong.”). Since neither Kloosterman nor
Herrington teaches the dynamic scoring function in claim 1,
individually or in combination, claim 1 is not obvious over
Kloosterman in view of Herrington.
Appeal Br. 8–9 (emphasis added).
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The Examiner responds:
[T]he Herrington reference discloses a personalized
content management and presentation system provides user
personalization functionality that is tailored to specific
characteristics and individual tastes. In order to personalize the
media content offerings that can be viewed on a website or other
media platform, the system uses content profiling tracking a
selected collection of items can be grouped together consisting
of content the users have searched for, viewed, kept or tracked in
the past. The historical information or prior user history can be
saved as part of a personal digital content library corresponding
to selected individual users. Based on upon the selected concepts
and topics of interest or content in which users express an
interest, an operator of the media platform can recommend other
new or highly ranked items which correlate closely with an
individual user or defined groups in which users may belong (See
Herrington, para. [0046] and Figure 3). The Herrington
reference also indicates the system’s content profiles are
associated with the suggested media content functionality of
the personalization engine to select personalization content
based on a number of established or known algorithms or
functions which weight various factors including, among other
things, the current and past actions of a user. These algorithms
or functions are dynamic scoring functions designed to accept
different input [e.g. parameters including content type viewed by
a user, user information, user behavior, the current and past
actions] to pinpoint the personalization results with great
accuracy (See Herrington, para. [0048]). Thus, the
Herrington[] system uses content profiling to provide user
personalization functionality that is tailored to specific
characteristics and individual tastes.
Ans. 5 (emphasis added).
The Appellant further argues:
Examples of users having input into the scoring criteria
can be readily found in the pending Specification. For example,
Specification para [0062] teaches that a hospital and urgent care
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facility might want to use families with children and convenience
as scoring criteria, whereas a veterinarian’s practice would more
likely use whether a family has pets, and especially whether they
have exotic animals. A user might specify that they have two
children and no pets. But whether that data is scored at all,
depends on [] what the scoring criteria are. The pending claims
require that a user has input into the scoring criteria.
Reply Br. 5 (emphasis added).3
We are unpersuaded by Appellant’s argument. First, Appellant’s
“hospital and urgent care facility” disclosure does not support the argument
made at page 5 of the Reply Brief. Contrary to Appellant’s argument, we
find no mention of a “scoring criteria” at paragraph 71 of the Specification
of Appellant’s application as filed.
Second, Appellant’s Appeal Brief argument is not commensurate with
the scope of claim 1. We do not find the argued “access to modify” set forth
in claim 1. Nor do we find any similar requirement. At most, claim 1
requires only the more general “each user has access to provide input.”
Claim 1, step g).
Third, to the extent that Appellant’s argues that Herrington fails to
teach, suggest, or otherwise render obvious “each user has access to provide
input,” we disagree. Essentially, with Appellant argues that “indirectly

3 Appellant references paragraph 62 of the Specification of Appellant’s
published application. This corresponds to paragraph 71 of the Specification
of Appellant’s application as filed. Appellant’s published application is not
part of the Record before the PTAB. Only Appellant’s application as filed is
part of the Record. See 37 C.F.R. § 41.30 (definition of “Record”).
Arguments must refer to “parts of the Record relied on.” See 37 C.F.R.
§ 41.37(c)(1)(iv).
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influenc[ing] data” (Appeal Br. 9) is precluded by the language of claim 1.
For the reasons set forth by the Examiner, we disagree.
Fourth, we note that Appellant’s criteria is disclosed as:
A paper periodical can be targeted more accurately to sets of
individuals according to demographics, credit data, property
data, other financial data, self reported behaviors, and other
criteria that are normally associated with individuals and their
home or office addresses.
Spec. ¶ 24 (emphasis added).
Herrington teaches such criteria as:
User profiling requires gathering of some personal information
about a user, such as age, income, home city, interests and
gender, finding similar users with known behavior, and then
recommending items these users liked.
Herrington ¶ 46 (emphasis added).
B.
Also, Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
The Appellant maintains that the Examiner erred in
finding motivation to combine Kloosterman with Herrington.
Kloosterman teaches a method for optimizing print jobs from
multiple documents having different page definitions (e.g.,
documents that “can vary in page length, the type of media used,
the number of pages that exceed the imaging area, number of
copies, and finishing”). See Kloosterman Abstract and [0017].
Kloosterman is concerned with the format and style of a printing
job.
Herrington, on the other hand, is only concerned with
content. Herrington teaches a “graphical user interface” through
which users can select publications as if they were on a rack,
click on a publication, and can then view that publication
digitally, as one would read an e-book. See Herrington Abstract.
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Herrington does not teach using the “graphical user interface” to
create an entire publication. The printing function in Herrington
is merely incidental, as it only pertains to specific content
selected by the user. See Herrington at [0010] (“With a
personalized graphical user interface, the particular user may
accomplish a variety of tasks with selected digital content such
as viewing or reading, printing, emailing, organizing and storing
such information . . . .”). Since there is no teaching, suggestion
or motivation to use Herrington’s graphical interface to print an
entire customized publication, the Examiner erred in finding
motivation to combine Kloosterman with Herrington.
Appeal Br. 9–10.
We are not persuaded by Appellant’s argument. First, Appellant is
essentially arguing that Kloosterman and Herrington are not analogous art.
We determine that Kloosterman and Herrington are both in the field of
endeavor of personalized digital printing.
We also determine that Kloosterman is “reasonably pertinent to the
particular problem with which the inventor is involved” because
Kloosterman’s personalized digital printing (“The present invention is
related to digital printing, and more particularly, to digital printing systems
employing variable data combined with static data.” (Kloosterman ¶ 3))
would logically have commended itself to an inventor’s attention in
considering the inventor’s personalized digital printing problem. Spec. ¶ 4.
We further determine that Herrington is “reasonably pertinent to the
particular problem with which the inventor is involved” because
Herrington’s personalized digital printing (“The invention relates to systems
and methods for distributing digital media content. More particularly, the
invention relates to the personalized management and presentation of media
content including magazines and other newsstand publications.” (Herrington
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¶ 2)) would logically have commended itself to an inventor’s attention in
considering the inventor’s personalized digital printing problem.
Second, to the extent that Appellant argues the printing in Herrington
is limited to “specific content selected by a user” (Appeal Br. 9) and an
artisan would not use Herrington teaching “to create an entire publication”
(Id.), Appellant is arguing that the artisan is an automaton capable of only
rote application of the teachings of the Herrington reference. We disagree.
We conclude this premise is contrary to our reviewing courts guidance.
“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). We
determine that extension of Herrington printing specific selected content to
an entire publication’s content is such ordinary creativity.
C.
Further, Appellant raises the following argument in contending that
the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
A later limitation [at step j)] in Claim 1 requires “a
plurality of users provide input to the dynamic scoring criteria
for providing said publication content for other users.” In this
limitation users are required to provide input to the scoring
criteria used to determine content, not for themselves, but for
other users. And just as neither of the cited references allows
users to have any impact on the scoring criteria used to allocate
their own content, the cited references fail to teach, suggest or
motivate users having impact on the scoring criteria used to
allocate content to others.
Reply Br. 5 (emphasis added).
We are unpersuaded by Appellant’s argument. First, Appellant
presents for the first time a new argument against the rejection of claim 1.
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Appellant’s previous mention of the “other users” (Appeal Br. 7) was within
an argument directed to the now withdrawn § 101 rejection of claim 1, and
was not as any particularized § 103 argument directed to the “other users”
limitation. This Reply Brief argument is not previously argued in the
Appeal Brief, or newly raised by the Examiner in the Answer. Rather, this is
a belated argument that reasonably should have been raised in the original
Appeal Brief.
In the absence of a showing of good cause by Appellant, we decline to
consider an argument raised for the first time in the Reply Brief, as the
Examiner has not been provided a chance to respond. See 37 C.F.R.
§ 41.41(b)(2) (2012); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000)
(noting that an argument not first raised in the brief to the Board is waived
on appeal); Ex parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010)
(informative) (explaining that arguments and evidence not timely presented
in the principal brief will not be considered when filed in a reply brief,
absent a showing of good cause explaining why the argument could not have
been presented in the principal brief); Ex parte Borden, 93 USPQ2d 1473,
1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not
require the Board to take up a belated argument that has not been addressed
by the Examiner, absent a showing of good cause.”). Appellant has
provided no showing of good cause.
Second, in this case, even if we were to consider Appellant’s above
argument to be timely, this argument would not convince us the Examiner
erred. Appellant is mistaken in arguing that “the cited references fail to
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teach, suggest, or motivate users having impact on the scoring criteria used
to allocate content to others.”
A selected collection of items can be grouped together consisting
of content that users have searched for, viewed, kept or tracked
in the past. This historical information or prior user history can
be saved as part of a personal digital content library
corresponding to selected individual users. Based upon the
selected concepts and topics of interest or content in which users
express an interest, an operator of the media platform can
recommend other new or highly ranked items which correlate
closely with an individual user or defined groups in which users
may belong. . . . User profiling requires gathering of some
personal information about a user, such as age, income, home
city, interests and gender, finding similar users with known
behavior, and then recommending items these users liked.
Herrington ¶ 46 (emphasis added). Based on the teaching of Herrington,
we determine that Herrington is suggestive of the benefit of using scoring
criteria for providing said publication content for other users.
D. Other Issues
As the Examiner has shown that claim 1 is unpatentable, we do not
further reject Appellant’s claim 1 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. However, should
there be further prosecution of these claims, the Examiner’s attention is
directed to our following concern.
On April 25, 2016, Appellant filed an amendment adding limitations
to claim 1. These newly added claim limitations include language requiring
(emphasis and bracketed material added):
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[f)] wherein each user is a receiver of publication content;
[g)] wherein each user has access to provide input to the
dynamic scoring criteria for sending and receiving said
publication content;
[h)] wherein each user has access to provide publication content
to other users;
[i)] wherein a plurality of users provide input to the dynamic
scoring criteria for receiving said publication content;
[j)] wherein a plurality of users provide input to the dynamic
scoring criteria for providing said publication content for other
users;
(Claim 1). We have reviewed Appellant’s Specification and find no support
for these particular limitations. To the contrary, these particular limitations
are new matter.
The claim language does not find written descriptive support in the
Specification as originally filed. Although Appellant identify portions of the
Specification to support this claim language (Appeal Br. 2), our review finds
no mention of these particular claim steps in the cited portions of the
Specification.4 See Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598
F.3d 1336, 1352 (Fed. Cir. 2010) (“[A] description that merely renders the
invention obvious does not satisfy the [written description] requirement.)”
Appellant describes the Specification as follows:
Each user has access to provide input to the dynamic
scoring criteria for sending and receiving said publication
content and has access to provide publication content to other

4 Appellant references paragraphs 43–44 of the Specification of Appellant’s
published application. This corresponds to paragraphs 37–38 of the
Specification of Appellant’s application as filed.
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users. See [0043] (“. . . the Aggregated Dynamic Scoring (ADS)
model provides a powerful predictive functionality to magazine
or newspaper advertising unlike anything previously offered due
to its theoretically higher predictive power at far lower costs due
to amortization of the development and maintenance costs of the
scoring model by many participating sponsors and advertisers.”)
and [0044] (“ADS enables unsophisticated users to harness the
power of advanced data mining and analytical techniques
typically available to larger, more expert marketing
organizations.”). The users provide input to the dynamic scoring
criteria for receiving said publication content and provide input
to the dynamic scoring criteria for providing said publication
content for other users.
Appeal Br. 2. However, the Specification merely states:
As stated earlier, the peculiar novelty and usefulness of the
Variable Participation Publishing invention is primarily
predicated on three new aspects of, and improvements to, prior
VDP models: first, the ubiquity of the publication’s distribution
in the Special Case would produce an emergent phenomenon of
a new type of social media not otherwise possible. Second, the
orientation towards a publishing software platform that allows
and encourages flexible roles and influences on the publication
by all the involved and associated parties, according to those
various parties’ voluntary and variable interactions with the VPP
data-media integrating graphic composition engine, according to
rules established by the publisher(s ). Third, the Aggregated
Dynamic Scoring (ADS) model provides a powerful predictive
functionality to magazine or newspaper advertising unlike
anything previously offered due to its theoretically higher
predictive power at far lower costs due to amortization of the
development and maintenance costs of the scoring model by
many participating sponsors and advertisers.
ADS enables unsophisticated users to harness the power
of advanced data mining and analytical techniques typically
available to larger, more expert marketing organizations.
Analogous to the way creditor-recipients to credit reporting
agencies all benefit by contributing and sharing data for
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analytical processes to improve direct response rates, sales
conversion rates, or to mitigate risk, ADS lets smaller businesses
target their best prospects from demand, risk or other scores
derived from relatively large samples of records related to their
specific market space and purposes. Larger sets of records
correlated to certain observed behaviors, e, g., response or
purchase, and appended with other predictive attributes from
third party databases should yield better overall economic
predictive value than simpler heuristic data segmentation
schemes. The methods used by a skilled analyst may vary
according to the goals of the model user, the quality of the data
and other factors, but in general these processes would include,
although not be limited to, methods such as simple profiling, i.e.,
using simple indices applied to readily definable sub-sets and
derived from one or a few variables at the more elementary end
of the analytical spectrum, to use of the more sophisticated Chi
Squared Automatic Interaction Detector (CHAID), both
techniques many business managers reasonably understand
intuitively. A more sophisticated approach would be to use the
much more “black box” method of so-called neural networks or
genetic algorithms which are not intuitively comprehensible by
the vast majority of users. The advantage of neural networks and
genetic algorithms is they are readily incorporated into an
automated, unattended process that may be continually updated
and improved with fresh data. In some cases where economically
warranted, the analyst would resort to the “gold standard” of
predictive modeling, linear or logistic regression which often
promises more causative explanatory power from the data.
Unfortunately, regression mathematics require a more skilled
practitioner than the black box methods which often rival and
sometimes exceed the performance of regression models.
Bayesian analytics may also be employed fruitfully in a largely
automated record ranking process. Data contributions to ADS by
any of the aggregated users can be achieved through automated
processes such as reporting by a customer relationship
management program, professional office or dealer management
system software, or other programmed data channels. Or the
information could be uploaded by more manual means, including
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submission of a spreadsheet, entry through an internet portal's
user interface, or other more labor intensive data entry practices.
The scoring model would need to be built for each vertical
market targeted by the publisher on behalf of the advertiser for a
particular vertical market. In this way the publisher would have
a set of models for various applications, and these models should
continue to get stronger as they are continually refined with more
and more reported behaviors, i.e., outcomes from the marketing
effort's offers, timing and other factors correlated with database
attributes. The publisher can provide automated ways to capture
and integrate response data, such as monitoring PURL sites or
other response, inquiry or purchase channels, in order to make it
easier and more reliable for the advertiser to report outcomes for
each record targeted with a marketing offer.
Spec. ¶ 37–38. Contrary to Appellant’s Brief, this portion of Appellant’s
Specification provides only a general discussion and does not provide
support for these particular claim steps. Nor do we find such support
elsewhere in Appellant’s application as filed.
CONCLUSION
The Examiner has not erred in rejecting claim 1 as being unpatentable
under 35 U.S.C. § 103(a).
The Examiner’s rejection of claim 1 as being unpatentable under
35 U.S.C. § 103(a) is affirmed.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1 103(a) Kloosterman, Herrington 1
Overall
Outcome

1

TIME PERIOD FOR RESPONSE
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).

AFFIRMED