Ex Parte Patil et alDownload PDFPatent Trial and Appeal BoardJul 28, 201613523106 (P.T.A.B. Jul. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/523, 106 06/14/2012 Dhanurjay A.S. Patil 49845 7590 08/01/2016 SCHWEGMAN LUNDBERG & WOESSNER/EBAY P.O. BOX 2938 MINNEAPOLIS, MN 55402 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. 2043.455US2 2386 EXAMINER VINCENT, DAVID ROBERT ART UNIT PAPER NUMBER 2129 NOTIFICATION DATE DELIVERY MODE 08/01/2016 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): USPTO@SLWIP.COM SLW@blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DHANURJA Y A.S. PATIL, TIMOTHY M. MURPHY, HUGO OLLIPHANT, BRIAN ANDREW PHILLIPS, GEORGE LEE, and DANIELL. PRITCHETT Appeal2014-007762 Application 13/523,106 Technology Center 2100 Before CARLA M. KRIVAK, JOHN F. HORVATH, and JOHN R. KENNY, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal2014-007762 Application 13/523,106 STATEMENT OF THE CASE Appellants' invention is directed to data mining applications for tracking individual and network behavior (Spec. i-f2). Independent claim 1, reproduced below, is exemplary of the subject matter on appeal. 1. A method comprising: receiving, from a first member, attribute data about a network of users, each user of the network of users having conducted a prior transaction with the first member, the network of users identified based on page views of the network of users at a first website; comparing, using one or more processors, the attribute data about the network of users to a predefined threshold of a second member; based on a request to transact with the second member from a first user of the network of users, providing an alert instructing the second member to grant a modified contractual term to the first user. REFERENCES and REJECTIONS The Examiner rejected claims 1-5, 9-18, and 20 under 35 U.S.C. § 103(a) based upon the teachings of Vallier (US 2008/0059297 Al; Mar. 6, 2008) and Williams (US 7,565,332 B2; July 21, 2009), The Examiner rejected claims 6-8 and 19 under 35 U.S.C. § 103(a) based upon the teachings of Vallier, Williams, and Johnson (US 2010/0223211 Al; Sept. 2, 2010). ANALYSIS Appellants contend the Examiner erred in finding Vallier discloses all the features of Appellants' claimed invention except for using a threshold for 2 Appeal2014-007762 Application 13/523,106 which the Examiner cites Williams (Br. 7-14). Particularly, Appellants argue Vallier teaches "participating consumers are identified based on whether they have joined a loyalty program and not based on page views" (Br. 1 O); Vallier teaches collecting information by an entity and not receiving information from an entity, as claimed (Br. 11 ); and Vallier' s email is not an alert instructing a second member to grant a modified contractual term to a first member (Br. 13-14). Appellants further contend Williams does not remedy Vallier's deficiencies (Br. 14). We do not agree. We agree with and adopt the Examiner's findings as our own (Ans. 3- 22). Particularly, we agree Vallier discloses identifying consumers based on page views in that "all consumer activity at an online retailer amounts to page views" (Ans. 15) and claim 1 only recites a transaction, which can be any type of transaction not merely a financial transaction (Ans. 14). We also agree Vallier discloses receiving information from an entity as the claims recite "receiving from a member" and a member can be any part of the retailer network (Ans. 16-17). As to Appellants' argument Vallier does not disclose an alert instructing a second member to grant a modified contractual term to the first member, we are unpersuaded. As the Examiner finds, an alert can be a promotional email (Ans. 17-18) and instructing a second member to grant a modified term to first user is not further defined in Appellants' Specification, thus, this limitation reads on any product or service offered at a reduced price as in a promotional email (Ans. 18-19). Appellants have not provided rebuttal evidence in a Reply Brief to the Examiner's reasonable findings. Thus, in light of the broad terms recited in the claims and the arguments presented, Appellants have failed to clearly distinguish their 3 Appeal2014-007762 Application 13/523,106 claimed invention over the prior art relied on by the Examiner. We find the weight of the evidence supports the Examiner's ultimate legal conclusion of obviousness, and therefore sustain the Examiner's rejection of claims 1-5, 9-18, and 20 argued together (Br. 16-17), and claims 6-8 and 19, which were not addressed. Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S.Ct. 2347 (2014), and the Examination guidelines provided by the Office in view of that decision. DECISION The Examiner's decision rejecting claims 1-20 is affirmed. 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). AFFIRMED 4 Copy with citationCopy as parenthetical citation