Ex Parte Frengut et al

Board of Patent Appeals and Interferences

Jan 30, 2009

09825269 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RENEE FRENGUT, JOHN BURDICK, and
JOHN BELLANTONI
____________

Appeal 2008-5183
Application 09/825,269
Technology Center 3600
____________

Decided:1 January 30, 2009
____________

Before, HUBERT C. LORIN, DAVID B. WALKER, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, 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 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-5183
Application 09/825,269
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-30 which are all of the pending claims in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM-IN-PART.

THE INVENTION
The invention provides a consumer with a network interface tailored
in appearance and content to the consumer’s specifications. A customized
interface is achieved by generating a computer file or "page" based on
information about the user and advertisement. Information about the user
comprises a user profile including any preferences for content or layout of
the page. Information about the advertisements comprises an ad profile
including a description of the ad and optionally a definition of the targeted
audience. The user profiles and ad profiles are compared to determine
matches according to a prescribed parameter. (Specification, 3:1-15). Claim
1, reproduced below, is representative of the subject matter of appeal.
1. A method for generating a customized interface, comprising
the steps of:
associating in a computer one or more ads with respective ad
profiles;
displaying an online page to one or more users seeking
information from the one or more users and allowing the one or more
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users to knowingly enter their information for creating their
respective one or more user profiles;
associating in a computer the one or more user profiles with
the respective one or more users, each user profile created from
information inputted by a corresponding user and transmitted to the
computer, wherein each user personally and knowingly assists in the
creation of his or her user profile by knowingly inputting the
information and is aware that the information will be used to
create a customized interface for each user profile,
determining matching ad profiles by comparing the ad profiles
with user profiles for matches; and
selectively including in the interface of a user at least one
of the one or more ads associated with the ad profiles matching a
user profile associated with the user.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Gerace US 5,848,396 Dec. 8, 1998
Tuzhilin US 6,236,978 B1 May 22, 2001

The following rejections are before us for review:
1. Claims 1-3, 6-10, 12-23, and 27-30 are rejected under 35
U.S.C. § 102(b) as anticipated by Gerace.
2. Claims 11 and 24-26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gerace.
3. Claims 4-5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gerace and Tuzhilin.
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THE ISSUE
At issue is whether the Appellants have shown that the Examiner
erred in making the aforementioned rejections.
With regards to claims 1-12 and 15-30 this issue turns on whether
Gerace discloses the user knowingly inputting information for each user
profile.
With regards to claims 13-14 this issue turns on whether Gerace
discloses that the ads included in the interface are restricted to the amount of
space defined in the user profile.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence2:
FF1. Gerace discloses that a User Object 37 is set up to maintain a user
profile. The user profile includes the user’s chosen nickname, language,
demographic and lifestyle information (Col. 5:63-Col. 6:13).
FF2. As Gerace discloses that the user profile includes the user’s chosen
nickname, the user must knowingly enter this information into the system on
a web page.

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF3. Gerace discloses that advertisements are transmitted for display to the
user based on the psychographic and demographic profiles of the user to
provide targeted marketing (Col. 2:24-35).
FF4. Gerace does not disclose that the ads included in the interface are
restricted to the amount of space defined in the user profile (Col. 7: 39-40
and Col. 7:53-57).

PRINCIPLES OF LAW
Principles of Law Relating to Anticipation
“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. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the Specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

Principles of Law Relating to Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
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subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18,
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

ANALYSIS
Claims 1-14 and 16-30
The Appellants argue as a group the rejection of claims 1-2, 6-10, 12,
15-23, and 27-30 under 35 U.S.C. § 102(b) as anticipated by Gerace. We
select claim 1 as representative of this group and the remaining claims stand
or fall with claim 1. See 37 C.F. R. § 41.37(c)(1)(vii)(2007). The
Appellants argue that the rejection of claim 1 is improper because the claim
requires that a page is displayed to the user seeking information from the
user and allowing the user to knowingly enter his or her information to
create the user profile (Br. 10). The Appellants argue that Gerace uses
“cookies” to monitor the online activities unbeknownst to the user instead of
the user profile being created from information intentionally input by the
user (Br. 9-10).
In contrast, the Examiner has found that Gerace discloses the claimed
limitations of the rejected claim 1. The Examiner had determined that
Gerace discloses a user profile being created by the user (Ans. 7). The
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Examiner has also determined that Gerace discloses matching the ad profiles
and user profiles (Ans. 7).
We agree with the Examiner. Gerace discloses that a User Object 37
is set up to maintain a user profile. The user profile includes a user chosen
nickname, language, demographic and lifestyle information (FF1). This user
profile must be entered on a page and “knowingly provided” since the user
must enter for example their nickname into the system (FF2). Gerace also
discloses that advertisements are transmitted for display to the user based on
the psychographic and demographic profiles of the user to provide targeted
marketing (FF3). As Gerace discloses that the demographic profile which is
entered by the user (FF1, FF2) is used to match the ads to the user (FF3) the
argued claim limitations are met by the reference. For the above reasons, the
rejection of claims 1-2, 6-10, 12, 15-23, and 27-30 under 35 U.S.C. § 102(b)
as anticipated by Gerace is sustained. The Appellants’ arguments for claim
3 are the same as those addressed above and the rejection of claim 3 under
35 U.S.C. § 102(b) as anticipated by Gerace is sustained for the above
reasons.
The Appellants’ arguments with regard to claims 11 and 24-26 under
35 U.S.C. § 103(a) as unpatentable over Gerace are the same as presented
for claim 1 and the rejection of these claims is sustained for the reasons
given above.
The Appellants’ arguments with regard to claims 4 and 5 under 35
U.S.C. § 103(a) as unpatentable over Gerace and Tuzhilin are the same as
presented for claim 1 and the rejection of these claims is sustained for the
reasons given above.

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Claims 13-14
The Appellants argue that the rejection of claims 13-14 under 35
U.S.C. § 102(b) as anticipated by Gerace is improper because Gerace fails to
disclose the user defining the amount or percentage of space for the ads (Br.
11). In contrast, the Examiner has determined that Gerace does disclose
such a feature in Column 7, lines 39-40 and 53-57 (Ans. 8).
We agree with the Appellants. Gerace does not disclose that the ads
included in the interface are restricted to the amount of space defined in the
user profile (FF 4). For these reasons, the rejection of claims 13-14 under 35
U.S.C. § 102(b) as anticipated by Gerace is not sustained.

CONCLUSIONS OF LAW
We conclude that Appellants have failed to show that the Examiner
erred in rejecting claims 1-3, 6-10, 12, 15-23, and 27-30 under 35 U.S.C. §
102(b) as anticipated by Gerace.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 13-14 under 35 U.S.C. § 102(b) as anticipated by Gerace.
We conclude that Appellants have failed to show that the Examiner
erred in rejecting claims 11 and 24-26 are under 35 U.S.C. § 103(a) as
unpatentable over Gerace.
We conclude that Appellants have failed to show that the Examiner
erred in rejecting claims 4-5 under 35 U.S.C. § 103(a) as unpatentable over
Gerace and Tuzhilin.

DECISON
The Examiner’s rejection of claims 1-12 and 15-30 is sustained. The
Examiner’s rejection of claims 13-14 is not sustained.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

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LV:

DANIEL S. POLLEY, P.A.
1215 EAST BROWARD BOULEVARD
FORT LAUDERDALE, FL 33301
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