Ex Parte Bhatia et al

Patent Trial and Appeal Board

May 4, 2016

12726518 (P.T.A.B. May. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121726,518 03/18/2010 Tarun Bhatia
97531 7590 05/04/2016
Mauriel Kapouytian Woods LLP
15 W. 26th Street
7th Floor
New York, NY 10010
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.
10033-2002500 1449
EXAMINER
MUNSON, PATRICIA H
ART UNIT PAPER NUMBER
3622
MAILDATE DELIVERY MODE
05/04/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TARUN BHATIA and ERIC THEODORE BAX
Appeal2014-002209 1
Application 12/726,5182
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
June 24, 2013) and Reply Brief ("Reply Br.," filed December 9, 2013), and
the Examiner's Answer ("Ans.," mailed October 7, 2013), Advisory Action
("Adv. Act.," mailed June 26, 2013), and Final Office Action ("Final Act.,"
mailed January 30, 2013).
2 Appellants identify Yahoo! Inc.as the real party in interest. App. Br. 1.
Appeal2014-002209
Application 12/726,518
CLAIMED INVENTION
Appellants' claimed invention relates to a system and method for
"targeting of online advertisements, including targeting based on a brand-
associated customer state, such as a conversion-associated state or a brand
favorability state" (Spec. i-f 3).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method comprising:
using one or more computers, obtaining and storing a first
set of information comprising information relating to behavior of
each of a set of individuals in association with a first brand
associated with a first advertiser, wherein the behavior comprises
online behavior of at least some of the set of individuals and
offline behavior of at least some of the set of individuals;
using one or more computers, obtaining and storing a
second set of information comprising a set of possible states, of
customers of the first advertiser and potential customers of the
first advertiser, relative to conversion in association with the first
brand;
using one or more computers, using information of the
first set of information, classifying each of the set of individuals
into at least one state of the set of possible states; and
using one or more computers, based at least in part on a
state of the set of possible states into which a first individual of
the set of individuals is classified, targeting the first individual
with an advertisement associated with the first brand.
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Appeal2014-002209
Application 12/726,518
REJECTIONS3
Claims 1--4 and 6-19 are rejected under 35 U .S.C. § 102(b) as
anticipated by Abe (US 2008/0249844 Al, pub. Oct. 9, 2008).
Claims 5 and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Abe and Flake (US 2008/0005313 Al, pub. Jan. 3, 2008).
ANALYSIS
Anticipation
Independent claims 1 and 16 and dependent claims 2--4, 6--15, and 17-19
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claims 1 and 16 under 3 5 U.S. C. § 102(b) because
Abe does not disclose "obtaining and storing a first set of information
comprising information relating to behavior of each of a set of individuals in
association with a first brand associated with a first advertiser," as recited in
claim 1, and similarly recited in claim 16 (App. Br. 6-9).
In the Final Office Action, the Examiner interprets the term "brand" to
mean a "[ n Jame, term, design, symbol, or any other feature that identifies
one seller's good or service as distinct from those of other sellers," and the
Examiner takes the position that under the broadest reasonable interpretation
standard, a product and its attributes are "associated with a brand," as called
for in the claims (Ans. 18). The Examiner finds that Abe, at least in
Figure 24 and paragraphs 153-157 and 169-171, discloses obtaining and
storing information concerning customer behavior on various online (web)
and offline (store, kiosk, direct mail) channels as well as data relating to a
3 The rejection of claim 20 under 35 U.S.C. § 101 has been withdrawn.
Adv. Act. 1.
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Appeal2014-002209
Application 12/726,518
customer's shopping and browsing history in association with a retailer
(advertiser), including personalized product recommendations by the retailer
for promoting, cross-selling and up-selling specific products and offers. The
Examiner finds that specific products and offers are "in association" with a
brand, as broadly claimed, and that Abe, therefore, discloses "obtaining and
storing a first set of information comprising information relating to behavior
of each of a set of individuals in association with a first brand associated
with a first advertiser," as recited in claim 1, and similarly recited in
claim 16 (id. at 19-21).
Abe is directed to a system and method for "sequential decision-
making for customer relationship management" (see, e.g., Abe ,-r 3,
Abstract), and discloses that the method includes providing customer data
comprising stimulus-response history data (i.e., data pertaining to a
customer's past response(s) to a particular stimulus or stimuli), and
automatically generating actionable rules, i.e., targeted marketing rules,
based on the customer data (see, e.g., id. ,-r 59). Abe discloses that customer
data, including demographic features and transaction history data (e.g., the
number of purchases made to date, number of purchases made in recent
months, the amount of purchases made, the amount of purchases made
recently, the frequency of web access, frequency of web access made
recently, possibly categorized by the types of web pages, etc.) are collected
and used to generate customer relationship management ("CRM") rules (id.
,-r 128). These rules are, thus, formulated based on a customer's past history
of purchases and promotions over the life of the customer's relationship with
the retailer (see id. ,-r 67), and are intended to predict the best marketing
action to take as a function of the customer's profile data (id. ,-r 149).
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Appeal2014-002209
Application 12/726,518
Abe discloses, in paragraphs 153-157, cited by the Examiner, that customer
behaviors are tracked across all touchpoints and that this knowledge is
leveraged for targeted marketing, and further discloses in paragraphs 169-
171 that targeted marketing actions on the worldwide web may involve
personalized cross-channel web campaigns where a seller offers "cross-sell"
information or "up-sell" coupons on the web following in-store or catalogue
purchases of related products.
We agree with the Examiner that under the broadest reasonable
interpretation standard, a product is "associated" with a brand (Ans. 17).
Therefore, "information regarding behavior in association with a brand," can
reasonably be construed to include information regarding behavior in
association with, e.g., purchases of, a product or products that share a
common "brand" (e.g., products that share a "[n]ame, term, design, symbol,
or any other feature that identifies one seller's good or service as distinct
from those of other sellers"). Yet we find nothing in the cited portions of
Abe that discloses obtaining and storing information relating to the behavior
of a customer "in association" with a product or products of a particular
"brand," as the Examiner interprets that term, and therefore nothing that
discloses or suggests obtaining and storing information "relating to behavior
of each of a set of individuals in association with a first brand associated
with a first advertiser," as called for in independent claims 1 and 16.
Instead, the best that Abe discloses in paragraphs 153-157 and 169-171, on
which the Examiner relies, is that targeted marketing actions may involve
personalized cross-channel web campaigns based on information obtained
regarding customer in-store or catalogue purchases of related products (Abe
i-fi-f 169-171 ), which in the absence of any disclosure that "related products"
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Appeal2014-002209
Application 12/726,518
share a common brand (and the Examiner has not pointed to any such
disclosure), is not the same as "information relating to behavior ... in
association with a first brand."
In view of the foregoing, we do not sustain the Examiner's rejection
of claims 1 and 16 under 35 U.S.C. § 102(b ). For the same reasons, we also
do not sustain the Examiner's rejection of dependent claims 2--4, 6-15, and
17-19.
Obviousness
Dependent claim 5
Claim 5 depends from claim 1. The rejection of claim 5 based on
Flake, in combination with Abe, does not cure the deficiency in the
Examiner's rejection of claim 1under35 U.S.C. § 102(b). Therefore, we do
not sustain the Examiner's rejection of claim 5 under 35 U.S.C. § 103(a) for
substantially the same reasons set forth above with respect to claim 1.
Independent claim 20
Claim 20 includes language substantially similar to the language of
claim 1, and was rejected based on the same rationale regarding Abe applied
with respect to claim 1. Therefore, we do not sustain the Examiner's
rejection of claim 20 under 35 U.S.C. § 103(a) for substantially the same
reasons set forth above with respect to claim 1.
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Appeal2014-002209
Application 12/726,518
DECISION
The Examiner's rejection of claims 1--4 and 6-19 under 35 U.S.C.
§ 102(b) is reversed.
The Examiner's rejection of claims 5 and 20 under 35 U.S.C. § 103(a)
is reversed.
REVERSED
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