Ex Parte Bhatia et al

Patent Trial and Appeal Board

Jun 15, 2016

12726556 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121726,556 03/18/2010 Tarun Bhatia
97531 7590 06/15/2016
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.
10033-2002700 1501
EXAMINER
MUNSON, PATRICIA H
ART UNIT PAPER NUMBER
3622
MAILDATE DELIVERY MODE
06/15/2016 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, ERIC THEODORE BAX, and
DARSHANV. KANTAK
Appeal2014-002673
Application 12/726,5561
Technology Center 3600
Before: NINA L. MEDLOCK, PHILIP J. HOFFMANN,
and ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to the Appellants, Yahoo! Inc. is the real party in interest.
Appeal Br. 1.
Appeal2014-002673
Application 12/726,556
ILLUSTRATIVE CLAIM
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 one
or more brands 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 top customers of
the first advertiser, wherein a customer can include a purchaser
or a potential purchaser relative to at least one of the one or
more brands; and
using one or more computers, for a first top customer of
the set of top customers of the first advertiser, based at least in
part on information of the first set of information relating to
behavior of the first top customer, targeting the first top
customer with an online advertisement associated with at least
one of the one or more brands.
CITED REFERENCES
The Examiner relies upon the following references:
Flake et al. US 2008/0005313 Al Jan.3,2008
(hereinafter "Flake '313 ")
Flake et al. US 2008/0103952 Al May 1, 2008
(hereinafter "Flake '952")
Abe et al. US 2008/0249844 Al Oct. 9, 2008
(hereinafter "Abe")
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REJECTIONS2
I. Claims 1-17 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Flake '313 and Abe.
II. Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Flake '313, Abe, and Flake '952.
FINDINGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Final
Action at pages 3-17 and the Answer at pages 4--23. Additional findings of
fact may appear in the Analysis below.
ANALYSIS
Rejection I
Independent Claims 1, 16, and 20
The Appellants make three arguments as to why the rejection of
independent claim 1 is allegedly erroneous. Appeal Br. 6-16. The
Appellants state that these same three arguments also apply to independent
claims 16 and 20. Id. at 16. Because these arguments are unpersuasive, as
set forth below, the rejection of claims 1, 16, and 20 is sustained.
1. Whether the Cited References Teach "information
comprising a set of top customers of the first advertiser"
The Appellants (Appeal Br. 6-9) dispute the Examiner's finding
(Final Action 3--4) that Flake '313 discloses "obtaining and storing a second
2 The Final Action includes a rejection of claim 20 under 35 U.S.C. § 101 as
being drawn to non-statutory subject matter. Final Action 2. This rejection
was overcome pursuant to a later-filed amendment. See Advisory Action 1.
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Application 12/726,556
set of information comprising a set of top customers of the first advertiser,"
as recited in claim 1.
According to the Examiner, Flake '313 meets the claim limitation
because the reference discloses obtaining and storing customer information
(regarding, for example, customers' purchase history, personal data, and
brand preferences) and further discloses that "a group of users is prioritized
and profiles are categorized and clustered (top customers) for advertisement
placement." Final Action 4 (citing Flake '313 i1i134--41, 62----67, and Fig. 8).
The Appellants contend that Flake '313 "is completely silent as to 'a
group of users [being] prioritized'" and "is silent as to top customers in
general or, in particular, 'a set of top customers of the first advertiser."'
Appeal Br. 8.
Yet, the Appellants admit that Flake '313 teaches that customer
profiles can be categorized and clustered according to various values used to
determine the applicability of particular types of advertising. Id. (citing
Flake '313 i167). Nevertheless, the Appellants state that such categorization
according to profile values "is not the equivalent of' the identified limitation
of claim 1. Id. at 9; see also Reply Br. 2-3.
The Appellants' argument is unpersuasive because, as the Examiner
finds, Flake '313 teaches a quantifiable valuation of customer profiles in
regard to factors bearing upon advertisement placement (purchase history,
brand preference), such that the cluster of such profiles with the highest
value is the "set of top customers" of claim 1. Final Action 3--4 (citing
Flake '313, Fig. 8, i1i134--41, 62----67); see also Answer 16-17 (citing
Flake '313 i1i163----67).
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The Appellants' remark in the Reply Brief~ to the effect that
Flake '313 "never even clusters the profiles, let alone identifies which
cluster includes the highest valued profiles" (Reply Br. 3) is also
unpersuasive of error - being at odds with both the Appellants' admission
(Appeal Br. 8) as to the teachings of Flake '313, as well as the Flake '313
disclosure, which states that its "[p ]rofiles can be categorized and clustered
according to these values for determining application for particular types of
advertising" (Flake '313 i-f 67).
2. Whether the Cited References Teach "targeting the first
top customer with an online advertisement associated with
at least one of the one or more brands"
The Appellants (Appeal Br. 9-11) contend that the Examiner
erroneously relies upon the combination of Flake '313 with Abe for teaching
claim 1 's limitation of "targeting the first top customer with an online
advertisement associated with at least one of the one or more brands."
First, the Appellants argue (Appeal Br. 9-10) that the Examiner erred
because Abe allegedly fails to disclose either "a first top customer of the set
of top customers of the first advertiser" or "targeting the first top customer."
This argument is unpersuasive because the Examiner relies upon Flake '313
- not Abe - for teaching the "top customers"; thus, the Examiner relies upon
a combination of Flake '313 and Abe for teaching "targeting the first top
customer" -not Abe alone. See Final Action 4--5; see also Answer 18-19.
"[O]ne cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references." In
re Keller, 642 F.2d 413, 426 (CCPA 1981).
The Appellants (Appeal Br. 10) also take issue with the statement in
the Final Action that the "Examiner interprets the first customers in the list
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of customers to be the first top customers of Flake ['313] and the first of
these customers to be the first [t]op customer" (Final Action 16). The
Appellants' argument is not persuasive because it does not address the
substance of the Examiner's finding, but merely the characterization thereof
(particularly the Examiner's use of the word "list") - asserting that
Flake '313 does not disclose "any 'list of customers' at all, anywhere in the
disclosure." Appeal Br. 10.
The Appellants also contend that the Abe reference fails to teach the
claim limitation's feature of targeting a customer because Abe discloses
"cross-channel web marketing based on related products," which the
Appellants claim is "not the equivalent of' the claimed subject matter.
Appeal Br. 11. The Appellants' argument is unpersuasive because it fails to
address the substance of the Examiner's findings regarding Abe, which
concern directing targeted advertising to a particular customer based upon
information obtained about that customer's behavior. See Final Action 4--5
(citing Abe i-fi-f 153-157, 169-171, and Fig. 24); see also Answer 18-19
(citing Abe i-fi-f 153-157, 169-171, and Figs. 17, 18, 24).
Finally, the Appellants contend that the Examiner erred in relying
upon Abe because the reference is "completely unrelated to targeting
associated with a brand of the first advertiser." Appeal Br. 11. This
argument lacks any supporting explanation and is, therefore, unpersuasive of
any alleged error in the Final Action. See 37 C.F.R. § 41.37(c)(1)(4) ("A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.") Moreover,
the Examiner relies upon a combination of Flake '313 and Abe for teaching
the recited feature (Final Action 4--5; see also Answer 19-20), as opposed to
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Abe alone, and finds that Abe's targeting an advertisement to a customer,
based upon collected product purchase information, teaches the claimed
targeted advertisement "associated with" a brand, as set forth in the
identified limitation of claim 1 (Answer 19-20).
3. Whether the Rejection Provided an Adequate Reason to
Combine the Teachings of Flake '313 and Abe
The Appellants also argue that the Examiner did not adequately
articulate a motivation to combine Flake '313 with Abe. Appeal Br. 11-16.
According to the Appellants, the rejection does not provide evidence of a
motivation to combine at the particular time of the invention and,
furthermore, provides only a vague, general statement of motivation to
combine that is unrelated to the claimed subject matter. Id. at 14; see also
Reply Br. 3---6.
The Appellants' argument is unpersuasive. Contrary to the
Appellants' assertions, the Examiner sets forth a sufficiently articulated
reason for combining the teachings of Flake '313 with Abe (both of which
relate to targeted customer advertising), in finding "that users who tend to
interact with others users having similar interests can be targeted with
similar advertising." Answer 20-21; see also Appeal Br. 14 (quoting
Examiner's rationale). After all, "any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007). In addition, the Examiner finds that
the subject matter of claim 1 amounts to a combination of old elements that
perform the same function as they did separately, so as to obtain predictable
results. See Final Action 4--5; see also Answer 20-21.
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Although the Appellants suggest that the Examiner's articulated
rationale might not be reflective of the time the invention was made (Appeal
Br. 14), the Appellants do not explain the basis for such an alleged error.
See 37 C.F. R. § 41.37(c)(l)(iv).
Dependent Claims 2-13 and 17
The Appellants state that the arguments for independent claims 1, 16,
and 20 also apply to dependent claims 2-13 and 17. Appeal Br. 18.
Because the rejection of independent claims 1, 16 and 20 is sustained herein,
the rejection of dependent claims 2-13 and 17 is also sustained.
Dependent Claim 14
The Appellants' claim 14 recites:
The method of claim 1, wherein the targeting comprises
utilizing an emotional profile of the first top customer and an
emotional state into which the first top customer is classified
based at least in part on the emotional profile.
The Appellants' arguments of alleged error provided as to
independent claim 1 also apply to claim 14. Appeal Br. 16. Those
arguments are unpersuasive, as set forth herein.
The Appellants also contend that the Examiner erred in rejecting
claim 14, because the cited references do not disclose the recited "emotional
profile." Appeal Br. 16-17. The Appellants argue that Flake '313 -which,
according to the Examiner's finding, meets the added limitations of claim 14
(Final Action 10-11) - "is completely silent" as to the recited features and
that "[i]n fact, the words 'emotional' or 'emotional profile,' never appear in
the disclosure of Flake[' 313 ]" (Appeal Br. 17).
The Appellants' argument is unpersuasive. The Appellants do not
address the substance of the rejection, which describes the use, in
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Flake '313, of a customer's emotional response data in analyzing the type of
advertising to be presented to the customer. See Final Action 10-11 (citing
Flake '313 i-fi-160, 71-73); see also Answer 21-22. Furthermore, the
Appellants' charge - to the effect that the precise words "emotional" and
"emotional profile" are absent from the Flake '313 disclosure - is of no
moment. The substance of a reference's technological teaching is not
necessarily bound to the use of a particular verbal formulation. After all,
"[t]hings are not made for the sake of words but words for things." Fromson
v. Advance Offset Plate, Inc., 720 F.2d 1565, 1569 (Fed. Cir. 1983) (quoting
Autogiro Co. of Am. v. United States, 384 F.2d 391, 397 (Ct. Cl. 1967)).
The rejection of claim 14 is sustained.
Dependent Claim 15
The Appellants' claim 15 recites: "The method of claim 1, wherein
the targeting comprises utilizing a psycho graphic profile of the first top
customer."
The Appellants' arguments of alleged error provided as to
independent claim 1 also apply to claim 15. Appeal Br. 17. Those
arguments are unpersuasive, as set forth herein, such that the rejection of
claim 15 is sustained.
The Appellants also contend that the Examiner erred in rejecting
claim 15, because the cited references do not disclose the recited
"psychographic profile." Appeal Br. 17-18. "In fact," the Appellants assert,
"the words 'psychographic' and 'psychographic profile' never appear in the
disclosure of Flake ['313]." Appeal Br. 17-18; see also Reply Br. 6 ("A
user reaction to an ad in Flake [ '313] is not the equivalent of a
psycho graphic profile of a top customer, as claimed.")
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The Appellants' argument is unpersuasive. Although the Appellants
point out alleged deficiencies of Flake '313 -which the Examiner finds to
teach the limitations of claim 15 (Final Action 11) - the Appellants do not
address the reference's relevant aspects, in regard to the Examiner's
analysis. In particular, the Examiner finds that Flake '313 employs a
customer's perception, reaction or attitude toward certain information, which
constitutes a psycho graphic profile. See Answer 21 (citing Flake '313 i-fi-1 60,
71-73); see also Final Action 11. Furthermore, as stated above (in regard to
claim 14), the Appellants' emphasis (Appeal Br. 17-18) on whether the
word "psychographic" appears in Flake '313 fails to evaluate the substantial
teaching of the reference. The rejection of claim 15 is sustained.
Rejection II
Claims 18 and 19 both depend from independent claim 16 and both
relate to and recite "an online advertising auction-based marketplace."
In alleging error in the rejection of claims 18 and 19, the Appellants
rely on arguments concerning claim 16. Appeal Br. 18. As stated above,
those arguments are unpersuasive.
The Appellants also contend that the Examiner erred in rejecting
claims 18 and 19 by failing to provide a sufficient reason for combining the
teachings of the cited references-Flake '313, Abe, and Flake '952- at the
time of the invention. Appeal Br. 19.
The Appellants' argument is unpersuasive. The Examiner's
combination of the teachings of Flake '313 and Abe (in rejecting
independent base claim 16) are addressed above, in regard to Rejection I. In
addition, the Examiner sets forth a sufficient reason for combining the
teachings of Flake '313 and Flake '952, by finding that both references teach
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bid information and that claims 18 and 19 amount to a combination of old
elements that perform the same function as they did separately, so as to
obtain predictable results. See Final Action 13-14 (citing Flake '313 i-fi-165,
67 and Flake '952 i-fi-175-78); see also Answer 22-23.
Although the Appellants suggest that the Examiner's articulated
rationale might not be reflective of the time the invention was made (Appeal
Br. 19), the Appellants do not explain the basis for such an alleged error.
See 37 C.F. R. § 41.37(c)(l)(iv).
The rejection of claims 18 and 19 is sustained.
DECISION
We affirm the Examiner's decision rejecting claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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