Ex Parte Kogan et al

Patent Trial and Appeal Board

Jul 18, 2014

11320028 (P.T.A.B. Jul. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte SANDRA L. KOGAN and MICHAEL MULLER
___________

Appeal 2011-013002
Application 11/320,028
Technology Center 3600
___________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Sandra L. Kogan and Michael Muller (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1–23, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
The Appellants invented a way to address deficiencies of the art in
respect to customer relationship management and provide for on-demand
customer satisfaction measurement (Spec. para. 6).

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed March 31, 2011) and Reply Brief (“Reply Br.,” filed August 8,
2011), and the Examiner’s Answer (“Ans.,” mailed June 6, 2011).
Appeal 2011-013002
Application 11/320,028

2

An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. An on-demand customer satisfaction measurement method
comprising:
[1] publishing a target profile
for end users
to receive an abbreviated survey;
[2] matching
by survey logic
executing in memory of an application host
the target profile
to
a usage profile
of application usage
by an associated user
to determine whether the associated end user is to
receive an abbreviated survey;
[3] forwarding the abbreviated survey
to the end user
only if the target profile and usage profile match;
and,
[4] collecting survey results
for the abbreviated survey.
The Examiner relies upon the following prior art:
Goldband US 2001/0018673 A1 Aug. 30, 2001
Parker US 2002/0052774 A1 May 2, 2002
Guheen US 6,519,571 B1 Feb. 11, 2003
Benderev US 2004/0133463 A1 July 8, 2004

Appeal 2011-013002
Application 11/320,028

3

Claims 1–5, 9–19, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Parker, Guheen, and Goldband.
Claims 6–8 and 20–22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Parker, Guheen, Goldband, and Benderev.

ISSUES
The issues of obviousness turn primarily on whether the Examiner
showed that one of ordinary skill would have used Goldband’s triggers
based on usage to trigger Parker’s survey deployment based on a user
profile.

FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of “usage
profile.”
Facts Related to the Prior Art
Parker
02. Parker is directed to collecting data using surveys and, more
particularly, to analyzing the survey data, visually displaying
survey results, and running new surveys based on the analysis.
Parker para. 2.
03. Engine 30 provides different levels of surveys, from general
surveys meant to obtain high-level information, such as overall
Appeal 2011-013002
Application 11/320,028

4

customer satisfaction, to focused surveys meant to obtain detailed
information about a specific matter, such as reseller satisfaction
with specific aspects of after-sale service or support. The process
may run a high-level survey initially and then follow-up with one
or more specific surveys to obtain more specific information about
problems or questions identified through the high-level survey.
Parker para. 24.
04. The survey is distributed to clients 14 and 16 via a network
connection, allowing for real-time distribution and response-data
collection. Each survey question and response is formatted as a
computer-readable tag that contains a question field and an
associated response field. Engine 30 builds questions for the
survey by inserting data into the question field. The response field
contains placeholders that contain answers to the corresponding
questions. When a respondent replies to a survey question, the tag
containing both the question and the response is stored in server
12. At server 12, engine 30 parses the question field to determine
the content of the question and parses the response field to
determine the response to the question. Parker para. 41.
05. Area 126 also includes options for deploying, i.e., distributing, the
survey to respondents. Information to distribute the surveys may
be stored in memory. This information may include, for example,
respondents' electronic mail (e-mail) addresses or network
addresses of clients. Channels option specifies to whom in a
distribution channel, e.g., salesperson, retailer, etc., the survey is
to be distributed. Locations option specifies the locations at
Appeal 2011-013002
Application 11/320,028

5

which survey data is to be collected. For example, for B2B
(business-to-business) clients, option may list sales regions. For
B2C (business-to-customer) clients, option may specify locations,
such as a store or mall. Audience option specifies demographic or
other identifying information for the respondents. For example,
audience option may specify that the survey is to be distributed
only to males between the ages of eighteen and twenty-four.
Parker para. 42.
06. Area 126 also includes an option for automatically running the
current general purpose survey. If selected, server 12
automatically runs the survey at the interval specified. Parker
para. 43.
Guheen
07. Guheen is directed to user identification systems and processes
and more particularly pertains to utilizing a user profile to
customize an interface. Guheen 1:6–8.
08. Figure 68 is an illustration for facilitating a virtual shopping
transaction by comparing different products and services. Guheen
6:4–6.
09. Guheen describes a web architecture framework (WAF) that
secures, administers, and audits electronic information use.
Guheen 163:46–48.
10. In Figure 68, in operation 1610, a customer's profile is developed.
This profile may be developed from many sources including
customer input, customer buying habits, customer income level,
Appeal 2011-013002
Application 11/320,028

6

customer searching habits, customer profession, customer
education level, customer's purpose of the pending sale,
customer's shopping habits, etc. Such information may be input
directly by the user, captured as a user uses the network, and may
be downloaded periodically from a user's system. Guheen
180:18–26.
11. Guheen describes examples of the types of user activities
captured, such as: end-user preference specifications for limiting
the price per transaction, unit of time, and/or session, for accessing
history information concerning previous transactions, for
reviewing financial information such as budgets, expenditures
(e.g., detailed and/or summary) and usage analysis information.
Guheen 272:15–24.
Goldband
12. Goldband is directed to customer support for computer programs.
Goldband para. 2.
13. Goldband provides for broad-based, systematic, individualized,
interactive customer software support through a two-way,
voluntary automated exchange of information between a software
agent installed on a customer's machine and a server machine via
a wide area computer network, e.g., the Internet. The agent is
software non-specific and may be instructed to operate with
respect to any arbitrary software program, and may further be
instructed at various different times to operate with respect to
various different software programs, including multiple different
Appeal 2011-013002
Application 11/320,028

7

software programs on a single machine. The agent, with the
user's informed consent, gathers activity information about the
operations of the software program(s) and uploads this
information to a particular server machine within a distributed
server machine architecture, where it is stored in a database on a
per-software-copy basis. A rules engine may cause instructions
carrying a message targeted specifically toward the customer
(based on the activity information) to be downloaded to the
agent. Based on these instructions, the agent may take any of
various actions, such as present a survey, present an
advertisement, send an upgrade notice, present a limited-time
offer, deliver individualized marketing messages, offer goods for
sale and fulfill the commercial transaction, install an upgrade or
bug fix for either an application or the agent itself, etc. Timing
may be relative to individual program menu selections. For
example, a message relating to a particular product feature may be
presented just after that feature has been used. Exemplary uses
include marketing, sales, customer registration, technical support,
market research, customer surveys, usage monitoring, software
testing, in-product advertising, etc. Goldband para. 8.
14. The server applies rules that have been created in a table
sequentially to determine which if any of those rules are true for a
particular agent that is querying the server at a particular point in
time. Upon discovering that one or more of those rules "fires,"
i.e., is true, then the corresponding one or more command files are
downloaded to the agent. The publisher therefore enjoys very
Appeal 2011-013002
Application 11/320,028

8

"fine-grain" control of the activities of an agent based on the
attributes of that agent. Very sharp targeting results in which
particular information is sent to a particular agent based on its
characteristics and its history. Goldband para. 54.

ANALYSIS
We adopt the Examiner’s findings and analysis from Answer, pages
6–22 and reach similar legal conclusions. As to the Reply Brief, we are not
persuaded by the Appellants’ argument that
Examiner has failed to account for a finding that the one of skill
in the art could have substituted the "matching by survey logic
executing in memory of an application host the target profile to
a user profile in general, and forwarding the abbreviated survey
to the end user only if the target profile and user profile match"
as taught by Guheen with the "application usage profile" of
Goldband.
Id. at 5. The Examiner found that Parker describes claim 1 generally,
including matching data to trigger forwarding a survey. The Examiner
found that Guheen describes collecting user profile information including
usage information, and that Goldband describes triggering deployment of
software based on activity information. Thus, as Parker describes triggering
deployment of a survey, and Goldband describes an implementation in the
form of a software agent for so deploying software as in Parker, one of
ordinary skill would have looked to Goldband for such implementation
suggestions for Parker. Goldband’s added criteria for deployment based on
actual usage would have informed one of ordinary skill of using such criteria
for forwarding Parker’s survey. Guheen adds corroborating evidence that
Appeal 2011-013002
Application 11/320,028

9

usage information was data collected to inform one of a user’s profile as in
Parker.
Beyond that, there is little reason to give any patentable weight to the
phrase “a usage profile of application usage.”
While data per se applied to some computer process causes a
functional effect on the computer and process, that data per se is an arbitrary
pattern of bits based on unrecited encoding protocols and unrecited
generating steps and structure. How one chooses to mentally interpret or
label that bit pattern is itself of no functional consequence. Absent some
functional or structural generating limitation necessarily resulting in the
recited data being inherently described by the recited data label, the data
label is not a limitation that can distinguish the claim from the art. The
patentability issue devolves to whether the prior art describes the recited
structure or function irrespective of how one labels the data.
In a non-precedential decision, our reviewing court reminded us of the
applicability of the precedential In re Gulack, 703 F.2d 1381 (Fed. Cir.
1983), In re Bernhart, 417 F.2d 1395 (CCPA 1969), and In re Lowry, 32
F.3d 1579 (Fed. Cir. 1994) decisions.
We have held that patent applicants cannot rely on printed
matter to distinguish a claim unless “there exists [a] new and
unobvious functional relationship between the printed matter
and the substrate.” In re Gulack, 703 F.2d 1381, 1386 ([Fed.
Cir. 1983]) . . . .

. . . .
. . . [T]he Board did not create a new “mental
distinctions” rule in denying patentable weight . . . . On the
contrary, the Board simply expressed the above-described
functional relationship standard in an alternative formulation—
consistent with our precedents—when it concluded that any
Appeal 2011-013002
Application 11/320,028

10

given position label’s function . . . is a distinction “discernable
only to the human mind.” . . . ; [see] In re Lowry, 32 F.3d 1579,
1583 ([Fed. Cir. 1994]) (describing printed matter as “useful
and intelligible only to the human mind”) (quoting In re
Bernhart, . . . 417 F.2d 1395, 1399 (CCPA 1969)).
In re Xiao, 462 Fed. Appx. 947, 950–52 (Fed. Cir. 2011) (non-precedential).
Thus, non-functional descriptive material, being useful and intelligible only
to the human mind, is given no patentable weight. See also In re Ngai, 367
F.3d 1336, 1339 (Fed. Cir. 2004). “The rationale behind this line of cases is
preventing the indefinite patenting of known products by the simple
inclusion of novel, yet functionally unrelated limitations.” King
Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed Cir
2010). (The relevant inquiry here is whether the additional instructional
limitation has a “new and unobvious functional relationship” with the
method, that is, whether the limitation in no way depends on the method,
and the method does not depend on the limitation).
Here, the matching is based solely on arbitrary binary data in the
computer memory, as is done in Parker. The matching step in no way
depends on the mental interpretation of the target and usage profiles, and the
target and usage profiles themselves in no way depend on the matching step.
The recited target profile and usage profile are functionally unrelated
limitations. Again, the binary data in the computer are functionally related,
but not the mental interpretation of that data.

CONCLUSIONS OF LAW
The rejection of claims 1–5, 9–19, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Parker, Guheen, and Goldband is proper.
Appeal 2011-013002
Application 11/320,028

11

The rejection of claims 6–8 and 20–22 under 35 U.S.C. § 103(a) as
unpatentable over Parker, Guheen, Goldband and Benderev is proper.

DECISION
The rejections of claims 1–23 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED

hh