W.W. Grainger, Inc.

Patent Trials and Appeals Board

Aug 20, 2020

2019003034 (P.T.A.B. Aug. 20, 2020)

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.
15/081,153 03/25/2016 Geoffry A. Westphal 31083.33US2 8600
34018 7590 08/20/2020
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
WU, YICUN
ART UNIT PAPER NUMBER
2153
NOTIFICATION DATE DELIVERY MODE
08/20/2020 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):
chiipmail@gtlaw.com
clairt@gtlaw.com
jarosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte GEOFFRY A. WESTPHAL1
_____________

Appeal 2019-003034
Application 15/081,153
Technology Center 2100
______________

Before JASON V. MORGAN, DEBORAH KATZ, and
JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of Claims 1–8, all claims on appeal. Appeal Br.
1. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicants” as defined in
37 C.F.R. § 1.42(a). The Appeal Brief identifies W.W. Grainger, Inc., as the
real party in interest. Appeal Br. 2.
Appeal 2019-003034
Application 15/081,153

2

INVENTION
The invention is directed to a method for providing personalized
search results. See Abstract. Claim 1, reproduced below, is the sole
independent claim and is representative of the invention.2
1. A method for providing personalized search results, the
method comprising:
storing within a database for each of a plurality of users
information related to an interaction with a one or more opt-out
elements associated with a direct marketing email electronically
sent to each of the plurality of users wherein the stored
information is cross-referenced to a unique user identifier for
each of the plurality of users;
receiving at a server device from a user device associated
with a one of the plurality of users a search request for
searching an electronic catalog;
using by the server device a unique user identifier for the
one of the plurality of users to locate within the database
information related to interaction by the one of the plurality of
users with a one or more opt-out elements associated with a
direct marketing email;
providing by the server device to a search engine
associated with the electronic catalog the search request
received from the one of the plurality of users and information
related to interaction by the one of the plurality of users with a
one or more opt-out elements associated with a direct marketing
email as located within the database;
using by the search engine the provided search request to
generate an electronic search result wherein the electronic

2 Claim 5 recites, inter alia, “[t]he computer-readable media as recited in
claim 1.” Claim 1 does not recite “computer-readable media.” Should
prosecution continue, the Examiner is encouraged to determine whether
Claim 5 has proper antecedent basis.
Appeal 2019-003034
Application 15/081,153

3

search result comprises a plurality of items within the electronic
catalog and the provided information related to interaction by
the one of the plurality of users with a one or more opt-out
elements associated with a direct marketing email as located
within the database to personalize the generated electronic
search result wherein one or more items from the plurality of
items within the electronic catalog are removed from the
generated electronic search result; and
causing the server device to electronically transmit the
personalized search result to the user device for display on a
display associated with the user device as a response to the
received search query.

PRIOR ART
Name Reference Date
Bostock US 8,312,009 B1 Filed Nov. 13, 2012
Huynh US 8,296,378 B2 Filed Oct. 23, 2012

REJECTIONS3 AT ISSUE4
Claims 1–8 stand rejected under 35 U.S.C. § 103(a) over Huynh and
Bostock. Final Act. 3–7.

ANALYSIS

3 The present application is being examined under the pre-AIA first to invent
provisions. Final Act 2.
4 Throughout this Decision, we refer to the Appeal Brief (“Appeal Br.”) filed
November 9, 2018, the Reply Brief (“Reply Br.”) filed March 7, 2019, the
Final Office Action (“Final Act.”) mailed August 13, 2018, the Examiner’s
Answer mailed January 9, 2019, and the Specification (“Spec.”) filed March
25, 2016.
Appeal 2019-003034
Application 15/081,153

4

We have reviewed the rejections of Claims 1–8 in light of Appellant’s
arguments that the Examiner erred. We have considered in this Decision
only those arguments Appellant actually raised in the Briefs. Any other
arguments which Appellant could have made but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We
provide the following explanation to highlight and address specific
arguments and findings primarily for emphasis. We consider Appellant’s
arguments as they are presented in the Appeal Brief and the Reply Brief.

CLAIMS 1–8: OBVIOUSNESS OVER HUYNH AND BOSTOCK.
Search engine.
Claim 1, the sole independent claim, recites, inter alia: “providing by
the server device to a search engine associated with the electronic catalog
the search request received from the one of the plurality of users” and “using
by the search engine the provided search request to generate an electronic
search result.”
Appellant contends Huynh is directed to an email delivery system and
that the Examiner finds Huynh does not explicitly disclose, teach, or suggest
“a search engine.” Appeal Br. 5. Appellant argues:
because the Office has failed to provide a basis in fact and/or
technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessarily flows from the
teachings of the applied prior art, it cannot be said that Huynh
inherently discloses a “search engine.”
Id. Appellant further argues because Huynh fails to teach or suggest a
search engine, Huynh must further fail to teach or suggest “a server
device providing anything to a search engine.” Appeal Br. 7.
Appeal 2019-003034
Application 15/081,153

5

The Examiner finds Huynh does not explicitly teach a search engine,
but that “[t]he process of identifying ‘digital content elements’ fig. 6 item
604 is consider a searching process, and thus, is considered inexplicitly read
on ‘a search engine.’” Ans. 3. The Examiner finds Bostock was introduced
to teach search engines are well-known in the art. Id. See Final Act. 2
(“Huynh is the primary reference, which teaches majority of claim
limitations. Bostock is introduced to show that search engine is well known
in the art. So applicant’s argument does not stand as to argument against
search engine.”).
Appellant contends disclosure of a “search engine” does not teach or
suggest the specific, claimed properties of the search engine. See Appeal Br.
7 (because Huynh fails to teach or suggest a search engine, Huynh must
further fail to teach or suggest “a server device providing anything to a
search engine.”). Appellant argues:
no explanation or reasoning has been provided to explain how or
why this disclosure within Huynh, reads on that which is
claimed, i.e., “using by the search engine the provided search
request to generate an electronic search result wherein the
electronic search result comprises a plurality of items within an
electronic catalog and the provided information related to
interaction with the one of the plurality of users with a one or
more opt-out elements . . .”
Reply Br. 2.
We find the Examiner has synthesized the “search engine” limitation
from the combined teachings of Huynh and Bostock, but that Appellant
argues the limitations separately. “[O]ne cannot show non-obviousness by
attacking references individually where . . . the rejections are based on
combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981);
In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed.Cir.1986).
Appeal 2019-003034
Application 15/081,153

6

Motivation to combine Huynh and Bostock.
In response to Appellant’s contention that there is no reason to
combine Huynh and Bostock, the Examiner finds:
In response to the Applicant’s arguments, that “reasons to
combine,” the argument has been fully considered but is not
found to be persuasive, because the Examiner recognizes that
obviousness can only be established by combining or modifying
the teachings of the prior art to produce the claimed invention
where there is come teaching, suggestion, or motivation to do so
found either in the references themselves or in the knowledge
generally available to one of “ordinary skill in the art.”
Ans. 4 (citing In re Fine5 and In re Jones6). The Examiner further finds:
Huynh and Bostock are analogous art because they are from the “same field
of endeavor” and both from the same “problem-solving area.” Namely, they
are both from the field of “user preference data.” Id.
Appellant argues the reasoning the Examiner provides fails “to
provide . . . articulated reasoning with some rational underpinning” to show
that the combination would have been obvious. Reply Br. 2. Thus,
Appellant argues the Examiner’s “conclusion of obviousness is based upon
nothing more than impermissible use of hindsight reasoning.” Id. at 2–3.
But the Examiner’s findings show that the claimed invention merely
represents the combination of familiar elements according to known
methods to yield predictable results. See Final Act. 4–5; Ans. 4; KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). We are not persuaded that
the Examiner relies on improper hindsight reasoning and we, therefore, are
not persuaded of error in the Examiner’s rejection.

5 In re fine, 837 F.2d 1071 (Fed. Cir. 1988).
6 In re Jones, 958 F.2d 347 (Fed. Cir. 1992).
Appeal 2019-003034
Application 15/081,153

7

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–8 103 Huynh, Bostock 1–8 --

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)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED