Ex Parte Holt et alDownload PDFPatent Trial and Appeal BoardJan 8, 201611210615 (P.T.A.B. Jan. 8, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111210,615 08/24/2005 45095 7590 HOFFMAN WARNICK LLC 540 Broadway 4th Floor ALBANY, NY 12207 01/12/2016 FIRST NAMED INVENTOR Alexander W. Holt 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 ATTORNEY DOCKET NO. CONFIRMATION NO. CHA920040022US 1 4784 EXAMINER NAHAR, QAMRUN ART UNIT PAPER NUMBER 2196 NOTIFICATION DATE DELIVERY MODE 01112/2016 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): PTOCommunications@hoffmanwarnick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte ALEXANDER W. HOLT, MICHAELE. MORAN, and JEFFREYS. SCHAFFER Appeal2013-008510 Application 11/210,615 Technology Center 2100 Before KAL YANK. DESHPANDE, DAVID M. KOHUT, and JUSTIN T. ARBES, Administrative Patent Judges. ARBES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-24, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 1 We reverse and enter a new ground of rejection under 37 C.F.R. § 41.50(b). 1 Our decision will make reference to Appellants' Appeal Brief ("App. Br.," filed Dec. 17, 2012) and Reply Brief ("Reply Br.," filed June 19, 2013), and the Examiner's Answer ("Ans.," mailed Apr. 25, 2013) and Final Office Action ("Final Act.," mailed July 19, 2012). Appeal2013-008510 Application 11/210,615 The claims are directed to a system, method, and computer readable storage medium comprising a computer program product for generating content rules for a Web application server, and a method for deploying an application for generating such rules. Claim 1 is exemplary: 1. A system for generating content rules for a Web application server comprising: a computing device including: a content manager for receiving a selected content item by a user; and a segment manager for enabling the user to define a segment of customers to associate with the selected content item wherein the segment of customers is less than all the customers in a customer database, wherein the segment manager provides the selected content item for display to the segment of customers and generates a multifaceted search interface for enabling the user to define the segment of customers based on previously collected customer data in the customer database including customer type and previous customer order history, wherein customers purchase goodsiservices associated with the seiected content item. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Moore Smith US 6,330,575 Bl US 2003i0041050 Al REJECTION Dec. 11, 2001 Feb.27,2003 Claims 1-24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Moore and Smith. Final Act. 2-7. 2 Appeal2013-008510 Application 11/210,615 ISSUES Appellants argue that the Examiner's rejection of claims 1-24 is in error. App. Br. 5-11; Reply Br. 2-8. These arguments present us with the following issues: (1) Did the Examiner err in finding that Smith teaches "enabling the user to define the segment of customers based on previously collected customer data in the customer database including customer type and previous customer order history," as recited in claim 1 and similarly recited in claims 9, 17, and 24? (2) Did the Examiner err in finding that Smith teaches "generat[ing] a multifaceted search interface for enabling the user to define the segment of customers," as recited in claim 1 and similarly recited in claims 9, 17, and 24? ANALYSIS Appellants argue that Smith fails to teach "enabling the user to define the segment of customers based on previously collected customer data in the customer database including customer type and previous customer order history," as recited in claim 1 and similarly recited in claims 9, 17, and 24. App. Br. 5-11; Reply Br. 2---6. Rather, Appellants contend, Smith teaches a personalization system that responds to customer data input on a website by applying a series of "if-then" rules. App. Br. 6-7; Reply Br. 3--4. Appellants also argue that Smith teaches away from collecting customer data including customer type and previous customer order history because Smith's system decouples and generalizes customer events for purposes of behavioral analysis. App. Br. 6-9. We agree with Appellants that the portions of Smith cited by the Examiner, and the Examiner's explanation of those portions, pertain to 3 Appeal2013-008510 Application 11/210,615 providing real-time personalized content to each individual customer based on contemporaneously-entered customer data and the customer's profile, not defining a segment of customers based on previously collected customer data. See Final Act. 3-5 (citing Smith i-fi-17-9, 76, 156, Fig. 3); Ans. 5-7. Accordingly, we do not sustain the Examiner's rejection of independent claims 1, 9, 17, and 24, as well as dependent claims 2-8, 10-16, and 18-23. We determine, however, that it would have been obvious to a person of ordinary skill in the art based on Smith to "enable[ e] the user to define the segment of customers based on previously collected customer data in the customer database including customer type and previous customer order history," as recited in claim 1 and similarly recited in claims 9, 17, and 24. In addition to providing real-time personalized content to a customer based on "if-then" rules, the system disclosed in Smith also allows a company to create, refine, and manage those rules as part of a marketing campaign. Smith i-fi-f 13, 72-75. "Campaign Planner" functionality provides "information on customer behavior and buying patterns" for a customer, and allows "[ c ]ustomer segments [to] be easily selected from a defined set of attributes, or unique segments [to] be created for specific campaigns." Id. i-fi-f 17, 226, 230. Customer analytics functionality also allows the company to "identify and refine customer segments based on trends, patterns and customer behaviors." Id. i-fi-121, 25, 31, 233 ("Behavior tracking records ... add-to and remove-from shopping cart actions, purchases, and order history for use in analysis of customer shopping and buying patterns."), 234 ("The administrator can analyze customer behavior, e-commerce traffic patterns, shopping and sales trends, and content effectiveness by combining information from online activity with information from touch points across 4 Appeal2013-008510 Application 11/210,615 the entei prise through the Unified Customer Profile. This analysis allows a company to identify and continually refine customer segments .... "). Thus, Smith teaches enabling a user to define a segment of customers based on the behavior and buying patterns, including order histories, of those customers. A person of ordinary skill in the art would have understood this to include a general assessment of customer type as well, and would have had reason to modify Moore's system, for example, to allow a user (e.g., a company) to design marketing campaigns for specific groups of customers in order to increase the effectiveness of the targeted marketing. See Ans. 7. We also note that Smith's customer analytics functionality, described above, tracks the behavior and buying patterns of individual customers, whereas the behavioral tracking cited by Appellants is used for "tracking user[] actions on a Web-site." See Smith i-fi-f 156-58. Accordingly, Appellants' argument that Smith teaches away from enabling a user to define a segment of customers based on previously collected customer data is not persuasive. Because our analysis with respect to the defining limitation of independent claims 1, 9, 17, and 24 differs from that of the Examiner, we designate this rejection as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Accordingly, claims 1-24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Moore and Smith. Appellants present an additional argument alleging error in the Examiner's rejection, which we consider now. Appellants argue that Smith fails to teach "generat[ing] a multifaceted search interface for enabling the user to define the segment of customers," as recited in claim 1 and similarly recited in claims 9, 17, and 24. App. Br. 8-9. Appellants contend that 5 Appeal2013-008510 Application 11/210,615 Smith does not teach a multifaceted search interface because it merely allows a user to define "if-then" rules. Id. Smith, however, teaches allowing a user to view customer and campaign information and define customer segments based on previously collected customer data, with search functionality. See, e.g., Smith i-fi-172-73, 197, 226-234 ("The Campaign Manager provides a unified view of the customer across all touch points and delivers information on customer behavior and buying patterns throughout the organization."); Ans. 7. Accordingly, we are not persuaded of error in the Examiner's analysis as to the "multifaceted search interface" limitation of the claims. 2 CONCLUSION We are persuaded of error in the Examiner's decision to reject claims 1-24 under 35 U.S.C. § 103(a).3 We enter a new ground of rejection for claims 1-24. 2 We also note that the Specification states that "[i]llustrative multifaceted search engines, which are well understood in the art, include ENDECA PROFIND™ and FAST DATA SEARCH™." Spec. i-f 24 (emphasis added). 3 We have decided the appeal before us. However, should there be further prosecution of claims 9-16, which recite a "computer readable storage medium" comprising a "computer program product," the Examiner's attention is directed to 35 U.S.C. § 101, Ex parte Mewherter, No. 2012-007692, 107 USPQ2d 1857, 2013 WL 4477509 (PTAB May 8, 2013) (precedential), and U.S. Patent & Trademark Office, Subject Matter Eligibility of Computer-Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). 6 Appeal2013-008510 Application 11/210,615 DECISION For the above reasons, the Examiner's decision to reject claims 1-24 is reversed. We newly reject claims 1-24 under 35 U.S.C. § 103(a) as being unpatentable over Moore and Smith. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. ... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record .... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). REVERSED 37 C.F.R. § 41.50(b) 7 Copy with citationCopy as parenthetical citation