Optimizely, Inc.

Patent Trials and Appeals Board

Aug 5, 2021

2020001703 (P.T.A.B. Aug. 5, 2021)

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.
14/823,643 08/11/2015 Meng Xiao He O105809 1040US.1 9924
160821 7590 08/05/2021
Womble Bond Dickinson (US) LLP/Optimizely, Inc.
Attn: IP Docketing
P.O. Box 7037
Atlanta, GA 30357-0037
EXAMINER
WELCH, JENNIFER N
ART UNIT PAPER NUMBER
2143
NOTIFICATION DATE DELIVERY MODE
08/05/2021 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):
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MENG XIAO HE, TYLER BRANDT,
RICHARD KLAFTER, JONATHAN DOBBIE,
AJITH MASCARENHAS, and CHRIX FINNE
Appeal 2020-001703
Application 14/823,643
Technology Center 2100
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, 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 claims 1–21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Optimizely, Inc.
Appeal Br. 2.
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Application 14/823,643
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CLAIMED SUBJECT MATTER
The claims are directed “to conducting controlled, randomized
experiments” with versions of webpages “and more particularly to
determining which version of content undergoing an experiment to display
to users.” Spec. ¶ 1.
Claim 1, reproduced below with the disputed limitation italicized, is
illustrative of the claimed subject matter:
1. A computer-implemented method for determining a
variation of a web page to provide to client devices of a user, the
method comprising:
receiving, from an application of a first client device of a
user, an indication of a request by the first client device for a web
page, the web page associated with a plurality of different
variations of the web page;
determining an identifier associated with a user of the first
client device;
applying a function to the identifier to generate an
assignment identifier for the user;
selecting a variation of the web page from the plurality of
different variations of the web page that corresponds to the
assignment identifier for the user; and
receiving, from an application of a second client device of
the user that is a different client device type from the first client
device of the user, an indication of a request by the second client
device for the same web page requested by the first client device;
wherein the same selected variation of the web page is
provided to both the first client device of the user and the second
client device of the user.
REFERENCE(S)
The prior art relied upon by the Examiner is:
Name Reference Date
Lawbaugh US 2014/0189714 A1 July 3, 2014
Gumm US 2014/0278747 A1 Sept. 18, 2014

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Application 14/823,643
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REJECTION
Claims 1–212 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Gumm and Lawbaugh. Final Act. 2–8.
OPINION
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this Decision, we consider
all evidence presented and all arguments made by Appellant. We disagree
with Appellant’s arguments, and we incorporate herein and adopt as our
own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Act. 2–8; Adv. Act. 2), and (2) the
reasons and rebuttals set forth in the Examiner’s Answer in response to
Appellant’s arguments (Ans. 3–4).3 We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
The Examiner finds Gumm teaches “wherein the same selected
variation of the web page is provided to both the first client device of the
user and the second client device of the user” as recited in claim 1. Adv.

2 The Examiner split the rejection of claims 1–4, 6–16, and 18–21 from the
rejection of claims 5 and 17. See Final Act. 2, 8. Because the same art was
used in each rejection, we have combined them.
3 See Icon Health and Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042 (Fed.
Cir. 2017) (“As an initial matter, the PTAB was authorized to incorporate
the Examiner’s findings.”); see also In re Brana, 51 F.3d 1560, 1564 n.13
(Fed. Cir. 1995) (upholding the PTAB’s findings, although it “did not
expressly make any independent factual determinations or legal
conclusions,” because it had expressly adopted the examiner’s findings).

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Act. 2.4 Specifically, the Examiner finds that “Gumm discloses stratification
factors that take into consideration different types of devices.” Id. (citing
Gumm ¶ 21). The Examiner further finds that “[a] person of ordinary skill
in the art would know from Gumm that two distinct client devices that are of
different types associated with the same user would access the same
variation of the web page.” Id. (citing Gumm Fig. 5). According to the
Examiner, Gumm paragraph 8
inherently teaches the use of different types of devices by a user
where each of the devices (stratification factors) are evaluated
against each of the variations. This anticipates the feature that
the “same selected variation of the web page is provided to both
the first client device of the user and the second client device of
the user.”
Id.; see also Ans. 3–4.
Appellant argues Gumm does not teach the disputed limitation. See
Appeal Br. 6–11.5 More specifically, Appellant argues Gumm teaches the
exact opposite. Id. at 8. According to Appellant, Gumm considers the type
of client device and, as a result, “the user may receive different variations of
a website depending on the type of client device the user is using to request
the website.” Id. at 8–9 (citing Gumm ¶¶ 56–57). Additionally, Appellant
argues in the Reply Brief that such a feature is not inherent.

4 The Examiner also finds Lawbaugh teaches the disputed limitation. See
Final Act. 3. Because we find Gumm teaches the disputed limitation, we do
not address the Examiner’s alternative findings regarding Lawbaugh.
Additionally, for the same reason, Appellant’s argument regarding
Lawbaugh are moot.
5 The Appeal Brief does not includes pagination. Our citations are based on
the cover page being page 1.
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We are not persuaded by Appellant’s argument that the Examiner
erred.
First, we do not consider the inherency argument raised for the first
time in the Reply Brief. The Examiner explicitly finds the feature was
inherent in the Advisory Action. See Adv. Act. 2. Despite the explicit
finding, Appellant did not address inherency in the Appeal Brief. Because
Appellant did not raise that argument in the opening brief and good cause
has not been shown why it should be considered, we will not consider this
argument. 37 C.F.R. § 41.41(b)(2) (2021); Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (Informative) (“[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”).
Second, we do not find Appellant’s remaining arguments persuasive.
Although Gumm teaches that the type of client device may be a stratification
factor used to determine which variation will be used (Gumm ¶¶ 21, 56),
that is not the only stratification factor. Instead, Gumm explicitly teaches
that other stratification factors may be used, such as age. Id. Specifically,
Gumm teaches that “an age range of users could be a stratification factor, if
in a multivariate test measuring a user’s total number of mouse clicks, the
test provider determines that the age of the user generally influences the
user’s total number of mouse clicks.” Id. ¶ 21. Similarly, Gumm further
lists that “age (or age range) of users” can be used. Id. ¶ 56.
“Just as ‘an accused product that sometimes, but not always, embodies
a claimed method nonetheless infringes,’ Bell Communications Research,
Inc. v. Vitalink Communications Corp., 55 F.3d 615, 622–623 (Fed. Cir.
1995), a prior art product that sometimes, but not always, embodies a
claimed method nonetheless teaches that aspect of the invention.” Hewlett-
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Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003). For
example, in Power Integrations, Inc. v. Fairchild Semiconductor
International, Inc., 843 F.3d 1315, 1336 (Fed. Cir. 2016), the Federal Circuit
determined that it was sufficient to show that a reference anticipated in “the
process of startup,” even if the reference did not show anticipation during
“normal operation,” reasoning that “[n]othing in the claims requires that the
current threshold increase during the power supply’s normal operation.” See
also ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361 (Fed. Cir.
2018) (“Similarly, a prior art reference may anticipate or render obvious an
apparatus claim—depending on the claim language—if the reference
discloses an apparatus that is reasonably capable of operating so as to meet
the claim limitations, even if it does not meet the claim limitations in all
modes of operation.”). Because a user’s age is consistent when using
different devices, when using age as the only stratification factor, a user will
be assigned the same variation regardless of the user’s device.
Accordingly, we sustain the rejection of independent claim 1 along
rejection of claims 2–21, which are not argued separately.6
CONCLUSION
The Examiner’s rejection under 35 U.S.C. § 103 is affirmed.

6 Appellant does not argue claims 2–21 separately. See Appeal Br. 11–12.
Accordingly, we decide the appeal of these claims on the basis of
representative claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
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Application 14/823,643
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–21 103 Gumm, Lawbaugh 1–21

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