Digiprint IP LLC

Patent Trials and Appeals Board

Nov 13, 2020

2020004550 (P.T.A.B. Nov. 13, 2020)

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.
15/672,193 08/08/2017 Avery Levy USDL-004 6718
138718 7590 11/13/2020
Polsinelli LLP
3 Embarcadero Center
Suite 2400
San Francisco, CA 94111
EXAMINER
WEISENFELD, ARYAN E
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
11/13/2020 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):
sfpatent@polsinelli.com
uspt@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AVERY LEVY
____________

Appeal 2020-004550
Application 15/672,193
Technology Center 3600
____________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 3, 4, 6–13, 15, 16, 18–25, and 27–38. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed January 29, 2020) and Reply Brief (“Reply Br.,” filed June 1, 2020),
and the Examiner’s Answer (“Ans.,” mailed April 20, 2020) and Final
Office Action (“Final Act.,” mailed March 13, 2019). Appellant identifies
Digiprint IP LLC as the real party in interest (Appeal Br. 3).
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Application 15/672,193

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CLAIMED INVENTION
The claimed invention relates generally to “systems and methods for
selling products or services”; “[m]ore specifically, the present invention
assists providers and customers [to] better identify products or services that
may be of interest to those customers” (Spec. ¶ 1).
Claims 1, 13, and 25 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method for providing offerings to customers
utilizing associated product tags, the method comprising:
[(a)] storing information relating to a plurality of
products that are offered by a plurality of providers;
[(b)] receiving information related to a tag associated
with a first product from the plurality of products from a user
device, the tag associated with the first product at a time of
shipment of the first product, wherein the tag provides
information for associating upsell advertisement information for
products or services;
[(c)] polling one or more provider computers for the
upsell advertisement information for the products or services
based on the received tag information;
[(d)] receiving the upsell advertisement information from
a provider computer as a result of polling the one or more
provider computers, the upsell advertisement information
identifying a second product or service and including an offering
to purchase the second product or service, wherein the provider
computer providing the upsell advertisement information is
associated with a provider that can provide the second product or
service when the second product or service is ordered; and
[(e)] sending the received upsell advertisement
information to the user device, the upsell advertisement
information allowing for ordering of the second product or
service and subsequent fulfillment of the same by the provider.
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Application 15/672,193

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REJECTIONS
Claims 1, 8, 11, 13, 20, 23, 25, and 31–33 are rejected under
35 U.S.C. § 102(a)(l) and § 102(a)(2) as anticipated by Jacobi et al.
(US 6,317,722 B1, issued Nov. 13, 2001) (“Jacobi”).
Claims 3, 4, 6, 7, 9, 15, 16, 18, 19, 21, 27–30, 34, and 35 are rejected
under 35 U.S.C. § 103 as unpatentable over Jacobi and Slonimsky et al.
(US 2014/0095282 A1, published Apr. 3, 2014) (“Slonimsky”).
Claims 10 and 22 are rejected under 35 U.S.C. § 103 as unpatentable
over Jacobi and “ebay Enforces New Picture Requirements,” June 4, 2013,
(“Ebay”).
Claims 12 and 24 are rejected under 35 U.S.C. § 103 as unpatentable
over Jacobi and Katukuri et al. (US 2015/0095185 A1, published Apr. 2,
2015) (“Katukuri”).
Claims 36–38 are rejected under 35 U.S.C. § 103 as unpatentable over
Jacobi.
ANALYSIS
Anticipation
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1, 13, and 25 as anticipated by Jacobi at least
because Jacobi does not disclose “receiving[, from a user device,]
information related to a tag associated with a first product . . . at a time of
shipment of the first product, wherein the tag provides information for
associating upsell advertisement information for products or services” and
for “polling one or more provider computers for the upsell advertisement
information for the products or services,” i.e., limitations (b) and (c), as
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Application 15/672,193

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recited in claim 1, and similarly recited in claims 13 and 25 (Appeal Br. 8–
12).
Jacobi is directed to a computer-implemented service for
recommending products to individual users of an electronic commerce
system,2 and discloses that, in one embodiment, the service identifies items
currently in the user’s electronic shopping cart, and uses those items to
generate a list of additional items that are predicted to be of interest to the
user (Jacobi Abstract). Jacobi describes that the recommendations are
generated and displayed to the user in response to the user’s selection of a
corresponding hyperlink, e.g., a hyperlink reading “Instant Book
Recommendations” or “Instant Music Recommendations”; in the shopping
cart implementation, when the user initiates a display of a shopping cart, the
recommendations are displayed on the same web page as the shopping cart
contents (id. at col. 10, ll. 38–55). “The recommendations may alternatively
be conveyed to the user by email, facsimile, or other transmission method”
(id. at col. 12, ll. 9–11).
In rejecting independent claims 1, 13, and 25 as anticipated by Jacobi,
the Examiner ostensibly takes the position that a hyperlink is equivalent to
the claimed “tag” that provides information for “associating upsell
advertisement information for products or services” and “polling one or
more provider computers for the upsell advertisement information.” The
Examiner equates the claimed “tag associated with a first product at a time
of shipment of the first product” to the hyperlink that the user selects to add
the “first product” to his or her shopping cart (Final Act. 4). And, citing

2 Jacobi is assigned to Amazon.com, and describes the recommendation
service in the context of the Amazon.com website.
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Jacobi at column 10, lines 38–55, the Examiner takes the position that the
first product also is associated with another “tag,” —“a hyperlink for
‘Instant Recommendations’” (id.). Further, citing Jacobi at column 12,
lines 5–15, the Examiner notes that Jacobi discloses that each recommended
item is presented as a hyperlink to the item’s product information page (id.).
And the Examiner posits that these hyperlinks, which the Examiner
characterizes as “tags,” are “upsell advertisements because they are
advertising other products that could be purchased to make the purchase
more profitable” (id.).
Appellant describes in the written description portion of the
Specification that a product to which a customer has access may include “a
tag, such as a circuit, a chip, or printed matter which may be affixed, printed
or embedded that may provide information to an electronic device of a
customer,” and that “[a]fter the customer’s device receives the information
provided by the product tag, information on other products or services
related to the tagged product may be received by the customer device”
(Spec. ¶ 30). The Specification, thus, discloses that the “tag” may be read
by various circuitry and/or scanning devices to provide information, which
then is used “for associating upsell advertisement information for products
or services” and for “polling[, i.e., querying,] one or more provider
computers for the upsell advertisement information for the products or
services” (see, e.g., Spec. ¶¶ 60, 68, 69, 75, 115).
We agree with Appellant that a person of ordinary skill in the art, on
reviewing the Specification, would not understand that a hyperlink is a
“tag,” as called for in claims 1, 13, and 25, that provides product-specific
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information that is used for “polling,” i.e., querying, product providers for
available upsell opportunities (Appeal Br. 10).
Jacobi’s hyperlinks convey the location of a specific web page, and
Jacobi discloses, as described above, that “recommendations are generated
and displayed in real-time . . . in response to selection by the user of a
corresponding hyperlink” (Jacobi at col. 10, ll. 38–44). In other words,
Jacobi’s hyperlink is used to direct a user to a specified location, e.g., a web
page. It does not convey information for use in polling provider computers
for available upsell information, as called for in the independent claims.
Indeed, there seemingly would be no need, in the Jacobi service, for
“polling” provider computers for upsell advertisement information because
the hyperlink itself directs the user to the specific web page (Appeal Br. 10).
As Appellant observes in its Reply Brief, “[w]hen a hyperlink is
selected . . ., a browser of the user device retrieves information at a computer
pointed to by a link included in the hyperlink” (Reply Br. 11–12). “In such
an instance a website computer pointed to by the link does not poll other
computers based on information received from a user device,” as claimed;
instead the hyperlink causes the user device to retrieve information from an
address or website computer to which the hyperlink points (id.).
The Examiner reasons that “polling is synonymous with sending a
request to” (Final Act. 5). But, we agree with Appellant that retrieving
specific linked content, as Jacobi discloses, does not constitute “polling
provider computers” to determine whether upsell advertisement information
related to a tagged product is available (Appeal Br. 11–12). “As such,
Jacobi’s retrieval of linked content does not teach the . . . receipt of upsell
information that is ‘a result of polling’ as claimed” (id. at 12).
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We are persuaded on the present record that the Examiner erred in
rejecting independent clams 1, 13, and 25 as anticipated by Jacobi.
Therefore, we do not sustain the Examiner’s rejection of independent
claims 1, 13, and 25 under 35 U.S.C. § 102(a)(l) and § 102(a)(2). For the
same reasons, we also do not sustain the Examiner’s rejection of dependent
claims 8, 11, 20, 23, and 31–33.
Obviousness
The Examiner’s rejections of dependent claims 3, 4, 6, 7, 9, 10, 12,
15, 16, 18, 19, 21, 22, 24, 27–30, and 34–38 are based on the same rationale
with respect to Jacobi applied in the anticipation rejection of the independent
claims. Therefore, for substantially the same reasons set forth above, we do
not sustain the Examiner’s rejections of dependent claims 3, 4, 6, 7, 9, 10,
12, 15, 16, 18, 19, 21, 22, 24, 27–30, and 34–38 under 35 U.S.C. § 103.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 8, 11,
13, 20, 23,
25, 31–33
102(a)(1),
102(a)(2)
Jacobi 1, 8, 11, 13,
20, 23, 25,
31–33
3, 4, 6, 7,
9, 15, 16,
18, 19, 21,
27–30, 34,
35
103 Jacobi, Slonimsky 3, 4, 6, 7, 9,
15, 16, 18,
19, 21, 27–
30, 34, 35
10, 22 103 Jacobi, Ebay 10, 22
12, 24 103 Jacobi, Katukuri 12, 24
36–38 103 Jacobi 36–38
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Application 15/672,193

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome
1, 3, 4, 6–
13, 15, 16,
18–25, 27–
38
REVERSED