Ex Parte Bender et al

Board of Patent Appeals and Interferences

Nov 22, 2010

09983493 (B.P.A.I. Nov. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO.
I EXAMINER I
WORJLOH, JALATEE
091983,493 10/24/200 1 Brad H. Bender 16113-1353001 9793
FILING DATE
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
ATTORNEY DOCKET NO.
DELIVERY MODE
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CONFIRMATION NO.
11/24/2010 ELECTRONIC
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Exparte BRAD H. BENDER,
GARRETT J. CRONIN, and
JOHN A. LLOYD
Appeal 2010-009239
Application 091983,493
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL'
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-009239
Application 091983,493
STATEMENT OF THE CASE
Brad H. Bender, et al. (Appellants) seek our review under 35 U.S.C.
5 134 (2002) of the final rejection of claims 1-4, 6- 15, and 17-25. We have
jurisdiction under 35 U.S.C. 5 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.^
THE INVENTION
The invention relates to "sharing online user information in an
anonymous manner." Specification [0002].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method for sharing anonymous user
information, comprising:
generating, with a computer system, anonymized user
information by:
(a) accessing personally identifiable information about a user,
(b) using the personally identifiable information about the user
to identify generalized, non-personally identifiable demographic
information that defines a set of generalized information that includes
demographic information consistent with the personally identifiable
information about the user, and
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed Jan. 25, 2010) and Reply Brief ("Reply Br.," filed Jun. 14, 2010),
and the Examiner's Answer ("Answer," mailed Apr. 13, 20 10).
Appeal 2010-009239
Application 091983,493
(c) assigning the generalized, non-personally identifiable
demographic information as anonymized user information
corresponding to the user;
associating via the computer system an identifier with the
anonymized information of the user; and
sending via the computer system the anonymized user
information to a receiving party.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability :
Gabber US 5,961,593 Oct. 5, 1999
Thomas US 6,128,663 Oct. 3, 2000
Buck US 200210055912 A1 May 9,2002
The following rejections are before us for review:
1. Claims 1-4, 12-15, and 23 are rejected under 35 U.S.C. §102(e) as
being anticipated by Thomas.
2. Claims 6-11 and 17-22 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Thomas and Gabber.
3. Claims 24 and 25 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Thomas and Buck.
ISSUE
The issue is whether Thomas inherently describes sharing anonymous
user information comprising generating anonymized user information by,
inter alia, using "personally identifiable information about the user to
identify generalized, non-personally identifiable demographic information
that defines a set of generalized information that includes demographic
Appeal 2010-009239
Application 091983,493
information consistent with the personally identifiable information about the
user" (claims 1, 12, and 23) and thus anticipates the claimed invention under
35 U.S.C. 5102(e).
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Examiner's
Answer. Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 1-4, 12-15, and 23 under 35 U.S.C. §102(e) as being
anticipated by Thomas.
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros., Znc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). Thus, in order for Klassen to anticipate the claimed
invention it must either expressly or inherently describe a method (claim I),
an apparatus (claim 12), and a system (claim 23) whereby anonymized user
information is generated by, inter alia, using "personally identifiable
information about the user to identify generalized, non-personally
identifiable demographic information that defines a set of generalized
information that includes demographic information consistent with the
personally identifiable information about the user."
The Examiner found that the disclosure at column 4, lines 23-37 and
claim 1 (a) of Thomas describes using "personally identifiable information
about the user to identify generalized, non-personally identifiable
demographic information that defines a set of generalized information that
Appeal 2010-009239
Application 091983,493
includes demographic information consistent with the personally identifiable
information about the user. See Answer 3-4.
Column 4, lines 23-37 of Thomas is reproduced below.
The acquisition of the demographic information can be
performed either by a remote server or a local browser. In
the case of the remote server, the remote server
encourages the user to login to or register with one of its
web pages so that the remote server can identify the user
against its database of users. Once the user is identified,
the remote server determines or retrieves an appropriate
demographic identifier for the user. In the case of a local
browser, the local browser can have available to it the
appropriate demographic identifier by previously storing
the appropriate demographic identifier on a local
machine that hosts the local browser. The previous
determination of the appropriate identifier can be
performed in a variety of ways, including by a remote
server login or registration as noted above or by a local
determination by the local browser or local machine.
In either case, once the appropriate demographic
identifier is known, it can be transmitted between remote
servers and/or between a local browser and a remote
server in various ways. One way is to embed the
demographic identifier into the pages being delivered by
the remote server to the local browser. The local browser
can thereafter store the demographic identifier, perform
local customization, and/or transmit the demographic
identifier to other remote servers with or following a
request.
Claim l(a) of Thomas reads as follows: "[l](a) obtaining
demographic information on the computer network user, the demographic
information in the computer network user being entirely self-represented yet
the computer network user remains anonymous."
Appeal 2010-009239
Application 091983,493
Column 4, lines 23-37 of Thomas, describe acquiring a user's
demographic information via a remote server or local browser. In the case
of a remote server, appropriate demographic information is
determinedlretrieved when the user is identified, i.e., when the login matches
registration information. In the case of a local browser, an appropriate
demographic identifier can be stored for later availability. In either case,
once the appropriate demographic identifier is known, it can be transmitted
between, e.g., a local browser and remote server. Claim l(a) of Thomas
describes obtaining the demographic information while the computer user
remains anonymous. Neither disclosure describes "defining a set of
generalized information that includes demographic information consistent
with the personally identifiable information about the user." Accordingly,
neither column 4, lines 23-37 nor claim l(a) of Thomas expressly describe
using "personally identifiable information about the user to identify
generalized, non-personally identifiable demographic information that
defines a set of generalized information that includes demographic
information consistent with the personally identifiable information about the
user" as claimed.
Thomas can nevertheless anticipate the claimed invention if it
inherently describes using "personally identifiable information about the
user to identify generalized, non-personally identifiable demographic
information that defines a set of generalized information that includes
demographic information consistent with the personally identifiable
information about the user" as claimed.
To that end the Examiner appears to reason that Thomas necessarily
"defin[es] a set of generalized information that includes demographic
Appeal 2010-009239
Application 091983,493
information consistent with the personally identifiable information about the
user." Answer 1 1.
As for the step of using the personally identifiable information
about the user to identify generalized, non-personally
identifiable demographic consistent with the personally
identifiable information of the user, once the user of Thomas'
system is identified, the remote server determines or retrieves
an appropriate demographic identifier for the user (see col. 4,
lines 23-27). Also, see claim l(a) of Thomas.
Answer 1 1.
The difficulty with the Examiner's reasoning is that the claimed
invention requires "defining a set of generalized information that includes
demographic information consistent with the personally identifiable
information about the user." Determining or retrieving an appropriate
demographic identifier for the user does not necessarily define a set of
generalized information that includes demographic information consistent
with the personally identifiable information about the user. While it may be
possible to do so, it does not necessarily follow. "Inherency, however, may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient."
Hansgirg v. Kernrner, 102 F.2d 212,214 (CCPA 1939), quoted in
Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir.
1991).
Accordingly, Thomas does not necessarily, or inherently, disclose
using "personally identifiable information about the user to identify
generalized, non-personally identifiable demographic information that
defines a set of generalized information that includes demographic
Appeal 2010-009239
Application 091983,493
information consistent with the personally identifiable information about the
user" as claimed.
Because Thomas does not expressly or inherently describe a method
(claim I), an apparatus (claim 12), and a system (claim 23) whereby
anonymized user information is generated by, inter alia, using "personally
identifiable information about the user to identify generalized, non-
personally identifiable demographic information that defines a set of
generalized information that includes demographic information consistent
with the personally identifiable information about the user", Thomas does
not anticipate the claimed invention.
Accordingly, the rejection of claims 1-4, 12- 15, and 23 under 5 102(e)
is reversed.
The rejection of claims 6-1 1 and 17-22 under 35 U.S. C. §103(a) as being
unpatentable over Thomas and Gabber.
The rejection of claims 24 and 25 under 35 U.S. C. $1 03(a) as being
unpatentable over Thomas and Buck.
We will reverse these rejections as well.
Claims 6-1 1, 17-22, 24, and 25 are dependent claims. The
Examiner's position as to what Thomas discloses is the same as was taken in
rejecting independent claims 1, 12, and 23 under 5 102(e); namely, that
Thomas describes using "personally identifiable information about the user
to identify generalized, non-personally identifiable demographic information
that defines a set of generalized information that includes demographic
information consistent with the personally identifiable information about the
user". See Answer 5-8. Since we have determined that Thomas does not
expressly or inherently describe using "personally identifiable information
Appeal 2010-009239
Application 091983,493
about the user to identify generalized, non-personally identifiable
demographic information that defines a set of generalized information that
includes demographic information consistent with the personally identifiable
information about the user", prima facie cases of obviousness under 5 103(a)
over Thomas and Gabber for the subject matter of claims 6-1 1, 17-22 and
over Thomas and Buck for the subject matter of claims 24 and 25 have not
been established in the first instance.
DECISION
The decision of the Examiner to reject claims 1-4, 6-15, and 17-25 is
reversed.
REVERSED
mev
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