Ex Parte Fusz

Patent Trial and Appeal Board

Mar 26, 2018

14473268 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/473,268 08/29/2014
76656 7590
Patent Docket Department
Armstrong Teasdale LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
03/28/2018
FIRST NAMED INVENTOR
Eugene A. Fusz
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.
29022-19 8972
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE A. FUSZ
Appeal2017-000234 1
Application 14/473,2682
Technology Center 3600
Before BRADLEY B. BAY AT, AMEE A. SHAH, and
MATTHEWS. MEYERS, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Eugene A. Fusz ("Appellant") appeals under 35 U.S.C. § 134(a) from
the final rejection of claims 39-58. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our Decision references Appellant's Appeal Brief ("Appeal Br.," filed
Dec. 23, 2015) and Reply Brief ("Reply Br.," filed Sept. 29, 2016), the
Examiner's Answer ("Ans.," mailed Aug. 1, 2016) and Final Office Action
("Final Act.," mailed July 31, 2015).
2 Appellant identifies "Fusz Digital Ltd." as the real party in interest.
Appeal Br. 1.
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CLAIMED INVENTION
Appellant's invention relates to a method and system "which allows
consumers to generate anonymous, self-generated profiles which further
allows the consumers to provide self-defined marketing data to marketers."
Spec. i-f 2. Method claim 39 and system claim 49 are the independent claims
on appeal and recite substantially similar subject matter. See Appeal Br.15,
17, Claims App. Independent claim 39, with added bracketed notations, is
illustrative of the claims on appeal and recites:
3 9. A method for generating a database of personalized
anonymous consumer profiles, said method comprising:
[ ( 1)] transmitting, by a server computer to a consumer
computer, a questionnaire including only questions
configured such that answers to the questions include only
non- identifying information concerning a consumer;
[(2)] receiving answers to the questionnaire by the server
computer from the consumer computer, the answers entered via
a user interface displayed by the consumer computer, the user
interface configured such that only answers containing non-
identifying information may be entered into the user interface;
[(3)] transmitting, by the server computer, instructions to the
consumer computer to not store the answers;
[(4)] configuring the received answers as a consumer profile
within a consumer profile database coupled to the server
computer, the consumer profile database including only non-
identifying information concerning the consumer;
[ ( 5)] transmitting at least one advertisement to the consumer
computer based on data within the consumer profile database;
[(6)] receiving, by the server computer, anonymous feedback
on the at least one advertisement;
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[(7)] transmitting, by the server computer, the anonymous
feedback to at least one marketer computer such that the
consumer is not identified to the at least one marketer
computer; and
[(8)] updating the consumer profile database based on the
received feedback.
Appeal Br. 15, Claims App.
REJECTIONS
Claims 39-58 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 39-41, 43-51, and 53-58 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Goldhaber and Kepecs.
Claims 42 and 52 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Goldhaber, Kepecs, and Gabber.
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Banklnt'l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1300 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
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patent-eligible applications of these concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," id., e.g., to an
abstract idea. If the claims are not directed to an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered "individually and 'as an ordered combination'"
to determine whether there are additional elements [that] "'transform the
nature of the claim' into a patent-eligible application." Alice Corp.,
134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297).
Alice Step One
According to Alice step one, we determine whether the claims at issue
are directed to a patent-ineligible concept, such as an abstract idea. Alice,
134 S. Ct. at 2355. The "directed to" inquiry in the claims applies a stage-
one filter to the claims, considered in light of the Specification, based on
whether "their character as a whole is directed to excluded subject matter."
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015); see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369,
1376 (Fed. Cir. 2016); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016) (Inquiring into "the focus of the claimed advance over the
prior art.").
Claim 39 recites "[a] method for generating a database of personalized
anonymous consumer profile, said method comprising" eight steps, in which
steps 1--4, 6, and 7 are performed "by a server computer," including (1)
"transmitting ... to a consumer computer, a questionannaire," (2) "receiving
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answers to the questionnaire,"3 (3) "transmitting ... instructions to the
consumer computer," ( 4) "configuring the received answers as a consumer
profile within a consumer profile database," (5) "transmitting at least one
advertisement to the consumer computer," (6) "receiving ... anonymous
feedback on the at least one advertisement," (7) "transmitting the
anonymous feedback to at least one marketer computer," (8) "and updating
the consumer profile database based on the received feedback." Claim 49
recites "[a Jn anonymous consumer profiling system comprising a server
computer that includes one or more processors and is coupled to a memory,
said server computer is configured to:" perform the same eight steps recited
in claim 3 9.
In Enfzsh, the Federal Circuit noted that "[s]oftware can make non-
abstract improvements to computer technology just as hardware
improvements can[.]" Enfish, 822 F.3d at 1335. The court in Enfzsh
presented the question as "whether the focus of the claims is on [a] specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Enfish, 822 F.3d at 1335-1336. There, the court found the "plain
focus of the claims" was on "an improvement to computer functionality
itself, not on economic or other tasks for which a computer is used in its
ordinary capacity." Id. at 1336.
3 We note that claims 39 and 49 optionally recite "the user interface
configured such that only answers containing non-identifying information
may be entered into the user interface." See claims 39 and 49 (emphasis
added).
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"In determining the eligibility of [Appellant's] claimed process for
patent protection under§ 101, the[] claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981). The question is whether the
claims as a whole "focus on a specific means or method that improves the
relevant technology" or are "directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery." McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016). In this case, claims 39 and 49 as a whole are focused on serving an
advertisement to a consumer computer based on data within a consumer
profile database and receiving feedback about the advertisement from the
consumer anonymously. Contrary to Appellant's contention that "[t]he
pending claims are analogous to those in Enfzsh" (Reply Br. 3), we fail to
see how claim 3 9 is focused on an improvement to the claimed "server
computer." Cf In re TL! Communications LLC Patent Litigation, 823 F.3d
607, 613 (Fed. Cir. 2016) (The claims' focus "was not on an improved
telephone unit or an improved server."). Nor do we see that claim 49 is
focused on an improvement to the claimed "server computer," "one or more
processors," or "memory." We note that the claimed "non-identifying
information" is merely information represented by data stored in a database
(claim 39) or memory (claim 49).
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Texas, LLC v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(citing Elecric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
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Cir. 2016)); see also Enfish, 822 F.3d at 1335, quoted in Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).
In that regard, the Background section of the Specification recognizes
that "[ o ]ne well accepted marketing method is to gather information about a
target audience and directs a product, or service, to that audience for
review," and discusses the problems, which are that "it is difficult to obtain
information about the target audience because many individuals do not
freely provide information about themselves to strangers" (Spec. i-f 3), and
that to market a product or service, the vendor currently has to retain a
marketing and advertising company to purchase targeting marketing and the
media through which the targeted marketing will be applied, which "is
inefficient because the timing for the marketing is likely inappropriate for a
large segment of the targeted consumers." Spec. i-f 4. The inventor solved
the problem via "self-generating an anonymous consumer profile,
personalized to the user, providing access to the anonymous consumer
profile to one or more entities, receiving marketing data from the entities
based on the anonymous consumer profile, providing feedback on the
received marketing data, the feedback becoming a part of the anonymous
consumer profile, and repeating the receiving marketing data and providing
feedback steps." Id. i-f 5. According to the Specification:
At least one result is a consumer centric marketing system which
provides largely personalized marketing to consumers at a time
and place of their choosing, with the relevancy of the marketing
being determined by the consumers themselves. The marketing
is based on demographics and professed desires with regard to
products and services that might be offered as the consumers
provide the information in their profiles that serve as the
definitions that allow marketers to provide appropriate marketing
data directly to them by filtering the profiles. In addition, the
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consumers are able to filter marketers, as in one embodiment, a
marketer has to be "approved" by a consumer before that
marketer has access to the anonymous profile. In addition, such
methods and apparatus provide vendors with an ability to provide
targeted marketing when desired by consumers while not
requiring personal contact information for the consumer. It is
believed to be desirable to provide consumers with timely
marketing that they are interested in experiencing.
Id. i-f 13. In light of the Specification's description of the problems and
solution, the advance over the prior art by the claimed invention is in
improving the collection of consumer information to conduct more effective
and efficient targeted marketing.
Given the focus of claims 39 and 49 as a whole is on data gathering
activities to create personalized anonymous consumer profiles for effectively
targeting the serving of online advertisements, and in light of the
Specification, the focus of the invention is analyzing and updating the online
consumer profiles to conduct more effective and efficient targeting. The
claims are properly characterized as being "directed to" customizing online
advertising to an audience. 4 See Ans. 3--4. Targeting online advertising to
an audience is a fundamental economic practice. In view of the above,
claims 39 and 49 are directed to an abstract idea. 5 We underscore the
4 Cf Elec. Power Grp., 830 F.3d at 1353 (When "the focus of the asserted
claims" is "on collecting information, analyzing it, and displaying certain
results of the collection and analysis," the claims are directed to an abstract
idea.)
5 See Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1014 (C.D. Cal. 2014),
aff'd, 622 F. App'x 915 (Fed. Cir. 2015) (claims directed to "targeting
advertisements to certain consumers, and using a bidding system to
determine when and how advertisements will be displayed" held to be an
abstract idea). Matching consumers with a given product or service "has
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similarity of this case to Intellectual Ventures I, in which the Federal Circuit
held that "customizing information based on ... information known about
the user" is an abstract idea. Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015). The court in Intellectual
Ventures I explained that tailoring of content based on information about the
user-such as where the user lives (identifying information) or what time of
day the user views the content (non-identifying information}--is an abstract
idea and fundamental practice long prevalent. Id. at 1370. And the type of
information processed (e.g., non-identifying information) is not patentably
distinguishing because "[i]nformation as such is an intangible." Elec. Power
Grp., 830 F.3d at 1353 ("collecting information, including when limited to
particular content (which does not change its character as information), [is]
within the realm of abstract ideas.").
Alice Step Two
Step two is "a search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice, 134 S. Ct. at 2355. This inventive concept must do
more than simply recite "well-understood, routine, conventional activity."
Mayo, 132 S. Ct. at 1298.
been practiced as long as markets have been in operation." Id. (citation
omitted); see also OpenTV, Inc. v. Netflix Inc., 76 F.Supp.3d 886, 893 (N.D.
Cal. 2014) ("The concept of gathering information about one's intended
market and attempting to customize the information then provided is as old
as the saying, 'know your audience."').
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Under the second step of the Alice framework, we agree with the
Examiner (Final Act. 2-3; Ans. 7-8) and conclude that claims 39 and 49 do
not contain an inventive concept sufficient to "'transform the nature of the
claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355 (citation
omitted). The introduction of a server computer or a generic processor into
the claims does not alter the analysis here. 6 See, e.g., Spec. i-f 17. The
claims do no more than simply instruct the practitioner to implement the
abstract idea on a generic computer. See Elec. Power Grp., 830 F.3d at 1355
("Nothing in the claims, understood in light of the specification, requires
anything other than off-the-shelf, conventional computer, network, and
display technology for gathering, sending, and presenting the desired
information"); see also Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012) ("Simply adding a 'computer aided' limitation to a claim
6 [T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[ t ]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer implementation
is not generally the sort of "additional featur[ e ]" that provides
any "practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself."
Alice, 134 S. Ct. at 2358 (citations omitted).
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covering an abstract concept, without more, is insufficient to render [a]
claim patent eligible") (citation omitted).
The functions performed by the process in claim 39 and components
recited in the system of claim 58 represent well-understood, routine, and
conventional activities and structures. Cf Alice at 2360 ("Nearly every
computer will include a 'communications controller' and 'data storage unit'
capable of performing the basic calculation, storage, and transmission
functions required by the method claims."). The recited functions of
transmitting information (e.g., questionnaire, instructions) and receiving
information (e.g., answers, feedback) are routine and conventional. See, e.g,
.~y1nantec; 838 F.3d at 1321 (receiving or transmitting data over a network-~ -
using the Internet to gather data), OIP Techs., Inc., v. Amazon.com, Inc., 788
F.3d 1359, 1363, (Fed. Cir. 2015) (sending messages over a network);
ln~ygJFlT, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)
(computer receives and sends information over a network). The claimed
activities of configuring information as a profile within a database and
updating the profile database are routine functions. See, e.g., Versata Dev.
Group, Inc. v. SAP Am .. Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) (storing
and retrieving information in memory); Alice, 134 S. Ct. at 2359 (creating
and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716
(updating an activity log). And transmitting an advertisement based on data
within a consumer profile database 7 by comparing data is one of the most
basic functions of a computer. The claims require nothing more than a
7 "[T]he consumer generated anonymous data system includes a processor
programmed to compare the set of data with each consumer generated
profile." Spec. i-f 37.
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generic computer performing generic computer functions. See Spec. i-fi-f l 7-
21 (describing a system with generic components). Looking at the claimed
elements separately, the function performed by the computer at each step of
the process is purely conventional. Considered as an ordered combination,
the computer components of claims 39 and 49 add nothing that is not already
present when the steps are considered separately. Viewed as a whole,
Appellant's claims simply recite the concept of personalized targeted online
advertising to an audience as performed by a generic computer-albeit using
non-identifying information, which is not recited with any particular
implementation and fails to transform the abstract idea into a patent-eligible
application. "We have repeatedly held that such invocations of computers
and networks that are not even arguably inventive are 'insufficient to pass
the test of an inventive concept in the application' of an abstract idea." Elec.
Power Grp., 830 F.3d at 1355 (quoting buySAFE, 765 F.3d at 1353).
We now address Appellant's arguments in the briefs, which we find
unpersuasive to overcome the conclusion reached in the rejection thereof. 8
Appellant argues that the claims recite patent eligible subject matter
because they are comparable to the claims the Supreme Court found patent
eligible in Diamond v. Diehr, 450 U.S. 175 (1981). Appeal Br. 6. Appellant
focuses specifically on an implementation of the claims on the Internet and
the non-identifying nature of the information, which would "enable a person
to remain anonymous while providing marketing sources with their
consumer profile and providing feedback based on advertisements received
8 In view of the Examiner's additional reasoning in the Answer and our
explanation in the Decision, Appellant's contentions as to any deficiencies
have been addressed. See Appeal Br. 4--5; see also Reply Br. 1-3.
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from marketing sources" (id.) as similar to Diehr's control of the rubber-
mold press. We find no parallel. Indeed, neither claim 39 nor claim 49
recite a computer network or the term Internet. And as we have explained,
the evidence supports construing the claimed "server computers" and
"processors" as covering generic computers that do nothing more than limit
the type of received information. We do not see and Appellant does not
persuasively explain, how these limitations render claims 39 and 49
comparable to the Diehr claims - which "involv[ ed] the transformation of
an article, in this case raw, uncured synthetic rubber, into a different state or
thing." Diehr, 450 U.S. at 184.
We disagree with Appellant's argument that the claims here are
"analogous to those in DDR Holdings". Appeal Br. 7-8 (citing DDR
Holding, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)).
In DDR Holdings, the Federal Circuit determined that, although the
patent claims at issue involved conventional computers and the Internet, the
claims addressed the problem of retaining website visitors who, if adhering
to the routine, conventional functioning of Internet hyperlink protocol,
would be transported instantly away from a host's website after "clicking"
on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d
at 1257. The court, thus, held that the claims were directed to statutory
subject matter because they claim a solution "necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks." Id. No such technological advance is evident in the
claimed invention. Unlike the situation in DDR Holdings, Appellants do not
identify any problem particular to computer networks and/or the Internet that
claim 39 and 49 allegedly overcome. As discussed above, the invention
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addresses problems associated with the reluctance of customers to provide
information and the inefficiency of retaining outside marketing, advertising,
and media- business problems. See Spec. i-fi-13, 4. And as we indicated
above, the claims do not even recite a computer network, so DDR Holdings
is not analogous. See Intellectual Ventures I, 792 F.3d at 1371 ("The patent
claims here do not address problems unique to the Internet, so DDR has no
applicability.").
Finally, we find Appellant's contention that "the pending claims recite
an inventive concept as defined by the BASCOM case" unavailing. See
Reply Br. 3--4 (citing BASCOM Global Internet Services v AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016)). A plain reading of the claim in
BASCOM shows that it is directed to a "content filtering system" comprising
a filtering scheme, logical filtering elements, an ISP server associating a
network account to a filtering scheme and a filtering element; the ISP further
executing an associated filtering scheme utilizing an associated set of logical
filtering elements. The court found that "[ t ]he claims carve out a specific
location for the filtering system (a remote ISP server) and require the
filtering system to give users the ability to customize filtering for their
individual network accounts." BASCOM, 827 F.3d at 1352. We do not see,
and Appellant does not explain, in what way claims 39 and 49 are like
claim 1 of BASCOM in claiming a technology-based solution.
In view of the foregoing, we sustain the rejection of independent
claims 39 and 49 under 35 U.S.C. § 101. We also sustain the rejection of
dependent claims 40--48 and 50-58, which are not argued separately, for the
same reasons. Because our reasoning in sustaining the rejection under
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35 U.S.C. § 101 deviates from that of the Examiner, we denominate it as a
new ground of rejection.
Obviousness over Goldhaber and Kepecs
In rejecting independent claim 39 as obvious over Goldhaber and
Kepecs, the Examiner finds that Goldhaber discloses all the claim limitations
except for "the consumer profile database including only non-identifying
information concerning the consumer." Final Act. 5. To cure this
deficiency, the Examiner finds "Kepecs discloses a discount administration
process (OAP) computer 11 that maintains a Key database of consumer
accounts (column 5, lines 54-57), wherein the lowest level of identification
is simply the KEY with no other identification data, thus maintaining
complete consumer anonymity (column 6, lines 52-54)." Id. The Examiner
explains:
Both Goldhaber et al and Kepecs are concerned with an
effective method of marketing products to potential consumers.
It would have been obvious to one having ordinary skill in the art
at the time the invention was made to include all of the stored
files and the one or more consumer profile databases including
only nonidentifying information concerning the consumer in
Goldhaber et al, as seen in Kepecs, since the claimed invention
is merely a combination of old elements, and in the combination
each element merely would have performed the same function as
it did separately, and one of ordinary skill in the art would have
recognized that the results of the combination were predictable.
Id. at 5---6.
Appellant argues that "Goldhaber does not disclose or suggest,
'transmitting, by a server computer to a consumer computer, a questionnaire
including only questions configured such that answers to the questions
include only non-identifying information concerning a consumer."' Appeal
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Br. 9; see also Reply Br. 4 Appellant contends that "the profile information
of Goldhaber is asserted as being the equivalent of only questions configured
such that answers to questions include only nonidentifying information
concerning a consumer." Id. According to Appellant, "[w]hile the profile
information of Goldhaber may not include personal data of a consumer, the
profile information is not the only information entered by a consumer.
Therefore, the Examiner's use of the profile information, on page 4 of the
Office Action, by itself, as the only questions in a questionnaire is
misleading as to the scope of Goldhaber." Id.
We are not peruaded of Examiner error because Appellant's argument
is not commensurate with the scope of claim 39. Claim 39 does not require
that all questionnaires transmitted to the consumer include only questions
configured such that the answers include only non-identifying information.
As the Examiner finds, Goldhaber discloses that a "consumer computer 104
may display the following 'profile questionnaire' and associated information
requesting certain demographic related information from the consumer,"
such as: gender, birth date, ethnicity, religion, and interests. See Goldhaber
13:32-14:5; see also Ans. 9 (citing Goldhaber 13:32--40). Goldhaber's
aforementioned profile questionnaire includes only questions that would
elicit only non-identifying information concerning the user; Goldhaber
underscores this fact by declaring: "Your profile does NOT include your
contact [or identifying] information." Goldhaber 14:9-10. Appellant does
not adequately explain why this finding by the Examiner, under the broadest
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reasonable interpretation, does not account for the recited language of the
claim.
Appellant further argues that
the proposed combination of Kepecs with the system of
Goldhaber teaches away from Goldhaber because Goldhaber is
directed towards an attention brokerage system which
compensates a consumer who views advertisements based on the
personal information they provide to an advertiser. In this case,
in order for a consumer to be compensated, personal information
about the consumer is provided to an advertiser. Thus, any
anonymity provided by using a key, as described in Kepecs,
would frustrate the purpose of Goldhaber in allowing consumers
to sell their personal information. Accordingly, Claim 39 is
submitted to be patentable over Goldhaber and Kepecs.
Appeal Br. 12.
Appellant however provides no objective supporting evidence to show
that Goldhaber is rendered inoperable for using only non-identifying
information. Rather, Goldhaber teaches that a consumer can opt to make a
profile available to advertisers as a "blind profile," without any identifying
information, leave the default to remain "anonymous," or "hide" the profile
from advertisers. See Goldhaber 13:55-14: 15. And the fact that a consumer
may choose not to release contact (identifying) information for
compensation certainly does not render Goldhaber inoperable.
There also is no basis for a finding of a "teaching away" based on our
review of the record. Appellants do not point to any passage in Goldhaber
that criticizes, discredits, or otherwise discourages providing only non-
identifying information, which is required to establish a "teaching away."
See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (A teaching away occurs
when a reference discourages one skilled in the art from following the
claimed path, or when the reference would lead one skilled in the art in a
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direction divergent from the path that was taken by the applicant); see also
In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004) (The prior art's mere
disclosure of more than one alternative does not constitute a teaching away
from any of the alternatives when the disclosure does not criticize, discredit,
or otherwise discourage the solution claimed). In other words, substituting
the identifying and non-identifying information in Goldhaber with only non-
identifying information results in the proposed alternative, such that a
consumer's anonymity is preserved while not exercising the option of being
compensated by allowing identifying information to be released to an
advertiser.
Accordingly, we are not apprised of error by the Examiner in rejecting
claim 39 as obvious over Goldhaber and Kepecs. We, therefore, sustain the
rejection of independent claim 39, including independent claim 49, which is
not argued separately. See Appeal Br. 12. We also sustain the rejection of
claims 40, 41, 43--48, 50, 51, and 53-58, which are argued based on their
dependence from those independent claims. See id.
Obviousness over Goldhaber, Kepecs, and Gabber
We are not persuaded by Appellant's argument that "Gabber does not
describe or suggest 'transmitting, by a server computer to a consumer
computer, a questionnaire including only questions corifigured such that
answers to the questions include only non-identifYing information
concerning a consumer,' as recited in Claim 39." As discussed above,
Goldhaber teaches this disputed limitation. Accordingly, we are not
apprised of error by the Examiner in rejecting claims 42 and 52 as obvious
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Appeal2017-000234
Application 14/473,268
over Goldhaber, Kepecs, and Gabber. We, therefore, sustain the rejection of
claims 4 2 and 5 2.
DECISION
The rejection of claims 39-58 under 35 U.S.C. § 101 is affirmed.
The rejections of claims 39-58 under 35 U.S.C. §103(a) are affirmed.
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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