Ex Parte Dhamodharan

Patent Trial and Appeal Board

Jun 16, 2017

12185332 (P.T.A.B. Jun. 16, 2017)

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.
12/185,332 08/04/2008 Rajasekaran Dhamodharan P-14140US/119945-141400US 9159
95352 7590 06/20/2017
Greenberg Traurig, LLP (VISA)
Intellectual Property Department
77 West Wacker Drive, Suite 3100
Chicago, IL 60601
EXAMINER
BERONA, KIMBERLY SUE
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
06/20/2017 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):
clairt@gtlaw.com
rupickd@gtlaw.com
gtipmail @ gtlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJASEKARAN DHAMODHARAN
Appeal 2015-002984
Application 12/185,332
Technology Center 3600
Before ANTON W. FETTING, JAMES A. WORTH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-002984
Application 12/185,332
STATEMENT OF THE CASE1
Rajasekaran Dhamodharan (“Appellant”) seeks review under
35 U.S.C. § 134 of a final rejection of claims 38, 41, 42, 44-46, 49, 50, 52—
55, and 57, the only claims pending in the application on appeal.2 We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented a form of real time marketing of goods and
services using behavioral targeted advertising techniques. Specification
para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 57, which is reproduced below (bracketed matter and some
paragraphing added).
57. A method, comprising:
[1] processing, by a transaction processor, a plurality of
transactions for goods or services between merchants and a
consumer
to provide an account transaction history for an account
associated with the consumer,
wherein each of the transactions is executed by a portable
consumer device of the consumer;
[2] receiving, by the transaction processor,
a request from a content provider for an advertisement,
1 Our decision will make reference to the Appellant’s Appeal Brief (“App
Br.,” filed May 28, 2014) and Reply Brief (“Reply Br.,” filed January 16,
2015), and the Examiner’s Answer (“Ans.,” mailed November 18, 2014),
and Final Action (“Final Act.,” mailed January 28, 2014).
2 Although the Final Action also includes claims 43 and 51, these claims
were canceled in an amendment filed May 27, 2014, and the cancellation
was entered by the Examiner (Ans. 9).
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Application 12/185,332
wherein the advertisement is to be targeted to the
consumer,
and
wherein the consumer has requested content from the
content provider;
[3] obtaining, by the transaction processor, via a computing
device,
a spending profile for the consumer using the account,
wherein the obtaining the spending profile comprises
accessing the account transaction history,
and
deriving the spending profile from the account
transaction history;
[4] selecting, by the transaction processor, via the computing
device,
a first advertisement from an advertisement database,
wherein the first advertisement is selected for the
consumer based on the spending profile;
and
[5] sending the first advertisement to the content provider,
[6] wherein the first advertisement is to be included in a page to
be sent for display on the portable consumer device,
and
[7] wherein the content provider is to fit the first advertisement
and the requested content to the page, and deliver the page to
the portable consumer device.
The Examiner relies upon the following prior art:
Sosa US 2002/0095387 A1 July 18, 2002
Inoue US 2004/0054577 A1 Mar. 18,2004
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Application 12/185,332
Ives US 2007/0067267 A1 Mar. 22,2007
Lovett US 2008/0126261 A1 May 29, 2008
Fisher US 2012/0150601 A1 June 14, 2012
Claims 38, 41, 44, 46, 49, 53, 54, and 57 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ives, Lovett, and Sosa.
Claims 42 and 50 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ives, Lovett, Sosa, and Inoue.
Claims 45, 52, and 55 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ives, Lovett, Sosa, and Fisher.3
ISSUES
The issues of obviousness turn primarily on whether it was predictable
for a content provider to defer to the ad provider to look up the pertinent
audience attributes.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
3 A rejection of claims 43 and 54 under 35 U.S.C. § 112, fourth paragraph
was withdrawn. Ans. 9.
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Application 12/185,332
Facts Related to the Prior Art
Ives
01. Ives is directed to managing the display of sponsored links
together with search results in a search engine system. Ives, para.
1.
02. Ives describes a need for improved techniques for presenting
advertising (and other material), in particular in association with
search results, on a wireless mobile communication device. Ives,
para. 8.
Lovett
03. Lovett is directed to cashless vending systems and processes.
Lovett, para. 2.
04. Lovett describes a prospective customer first establishing an
account with a payment processing center (PPC). When the
customer uses the cell phone to purchase a product from the
vending machine, an encrypted copy of the transaction is stored in
the vending machine and in the cell phone. When the vendor
stocks the machine, the vendor may read the memory of the
vending machine and download all cell phone transaction
information to a storage device. The vendor then takes the
transaction information to a warehouse, where the transaction
information is loaded onto a computer and communicated to the
payment processing center. The payment processing center may
then apply the transaction information to the account. Lovett,
para. 48.
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Application 12/185,332
05. Lovett describes the vending company gathering spending
pattern data on the customer and sending the customer
advertisements and special offers, such as discount coupons that
may be used as payment or part payment through the system.
Lovett, para. 70.
Sosa
06. Sosa is directed to enabling purchase transactions employing
cash accounts in exchange for online portals for marketing. Sosa,
para. 3.
ANALYSIS
The independent claims are drawn to the conventional use of a server to
supply ads to content providers, but turns the selection process on its head
by having the server find the pertinent selection criteria instead of the
content supplier providing the criteria. The issue is whether it was
predictable for a content provider to defer to the ad provider to look up the
pertinent audience attributes. The Examiner’s rejections do not provide
sufficient evidence to show this was predictable.
Appellant couches this issue in the argument that the equivalents of the
recited transaction processor and content provider in the art are the same
entities. App. Br. 9. The Examiner responds that the search engine in Ives
is mapped to the recited content provider and pretty much everything else
(transaction processor/merchant/distributor of advertisements) is mapped to
the recited transaction processor. Ans. 10. The Examiner bases the plural
such mapping to the recited transaction processor on the examples cited in
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the instant Specification. Appellant properly explains that this is a
misunderstanding of the Specification. Reply Br. 4.
The Specification says that a transaction processor might be a payment
transaction handler (Spec., para. 30) or might be a distributor of
advertisements that has access to a payment transaction handler (Spec., para.
33). The Examiner takes this to mean the transaction processor may be
mapped to the combination of a merchant and distributor of advertisements
without showing the distributor of advertisements that has access to a
payment transaction handler. This is logical error.
Perhaps seeing the weakness in this reasoning, the Examiner goes on to
find that Lovett describes the same party sending advertisements to a
customer based on transactions. Final Act. 14. The Examiner finds this is
an example of a transaction processor choosing advertisements. Final Act.
14. We agree. The problem for the Examiner is that the claims do not recite
the same entity requesting the ad and accessing the transactions; the recited
content provider requesting the advertisements is separate from the
transaction processor. In Lovett, the party requesting the ad has the criteria
for advertisement selection, whereas in the instant claims, that party does
not. The Examiner provided no articulated reasoning for why one of
ordinary skill would have thought to have the search engine in Ives poll the
party selling a product. Instead, the Examiner found this was a combination
of known elements. Final Act. 14.
The Examiner appears to be using the reasoning exemplified in MPEP
§2141(111. A) viz., combining prior art elements according to known
methods to yield predictable results. This section along with section 2143,
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Application 12/185,332
makes several caveats that there must be some reason articulated for the
combination. Almost every invention is a combination of familiar elements
to some degree. It is insufficient to simply say the elements are already
known themselves. There must be some reason articulated to combine them.
“[I]t can be important to identity a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). In KSR, the invention simply combined two elements
of an accelerator, each already described as desirable with an accelerator
pedal. The Examiner has made no similar finding of commonality of
context in a paired versus unitary party sharing in the prior art. Instead, the
Examiner finds that in hindsight, the combination provides predictable
results. This is equivalent to a conclusory statement that the answer to the
key issue in the patentability determination is that a combination whose
results were predictable once the combination was suggested is itself
unpatentable.
CONCLUSIONS OF LAW
The rejection of claims 38, 41, 44, 46, 49, 53, 54, and 57 under
35 U.S.C. § 103(a) as unpatentable over Ives, Lovett, and Sosa is improper.
The rejection of claims 42 and 50 under 35 U.S.C. § 103(a) as
unpatentable over Ives, Lovett, Sosa, and Inoue is improper.
The rejection of claims 45, 52, and 55 under 35 U.S.C. § 103(a) as
unpatentable over Ives, Lovett, Sosa, and Fisher is improper.
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DECISION
The rejection of claims 38, 41, 42, 44-46, 49, 50, 52—55, and 57 is
reversed.
REVERSED
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