Rodger CosgroveDownload PDFPatent Trials and Appeals BoardJun 30, 20212020001878 (P.T.A.B. Jun. 30, 2021) Copy Citation 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. Appeal 2020-001878 Application 12/834,861 2 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.). Appeal 2020-001878 Application 12/834,861 3 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. Appeal 2020-001878 Application 12/834,861 4 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). Appeal 2020-001878 Application 12/834,861 5 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 Appeal 2020-001878 Application 12/834,861 6 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). Appeal 2020-001878 Application 12/834,861 7 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. Appeal 2020-001878 Application 12/834,861 8 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 Appeal 2020-001878 Application 12/834,861 9 ¶ 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. Appeal 2020-001878 Application 12/834,861 10 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 Appeal 2020-001878 Application 12/834,861 11 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): Appeal 2020-001878 Application 12/834,861 12 [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. Appeal 2020-001878 Application 12/834,861 13 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 Appeal 2020-001878 Application 12/834,861 14 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 Appeal 2020-001878 Application 12/834,861 15 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. Appeal 2020-001878 Application 12/834,861 16 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 Copy with citationCopy as parenthetical citation