Optimizely, Inc.Download PDFPatent Trials and Appeals BoardAug 5, 20212020001703 (P.T.A.B. Aug. 5, 2021) Copy Citation 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. Appeal 2020-001703 Application 14/823,643 2 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 Appeal 2020-001703 Application 14/823,643 3 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). Appeal 2020-001703 Application 14/823,643 4 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. Appeal 2020-001703 Application 14/823,643 5 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- Appeal 2020-001703 Application 14/823,643 6 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). Appeal 2020-001703 Application 14/823,643 7 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 Copy with citationCopy as parenthetical citation