Ex Parte Kursar et al

Patent Trial and Appeal Board

Jun 27, 2016

13646517 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/646,517 10/05/2012
33401 7590 06/29/2016
McDermott Will & Emery LLP
The McDermott Building
500 North Capitol Street, N.W.
Washington, DC 20001
FIRST NAMED INVENTOR
Brian Kursar
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.
064666-0077 1119
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
mweipdocket@mwe.com
las_ip_docket@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN KURSAR and JAYADEV GOPINATH
Appeal2014-005620 1
Application 13/646,5172
Technology Center 3600
Before KENNETH G. SCHOPPER, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1--4, 6, 8-11, 13-19, 21, 23-26, and 28-34.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Throughout this opinion, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed Jan. 8, 2014) and Reply Brief ("Reply Br.," filed Apr. 7,
2014), the Examiner's Answer ("Ans.," mailed Feb. 5, 2014) and Final
Office Action ("Final Act.," mailed July 8, 2013), and the Specification
("Spec.," filed Oct. 5, 2012).
2 According to the Appellants, the real party in interest is Toyota Motor
Sales, U.S.A., Inc. Appeal Br. 1.
Appeal2014-005620
Application 13/646,517
STATEMENT OF THE CASE
The Appellants' invention relates to "determining product
configurations and allocations and to social media postings." Spec. i-f 2. In
particular, the invention is directed to "a business information system that
uses social media postings to assist in making business-related
determinations, including prioritizing marketing leads, configuring and
allocating products, and validating customer complaints." Id. i-f 23.
Claims 1 and 16 are the independent claims on appeal and recite
substantially similar limitations. Claim 1 (Claims App.), which we
reproduce below, is illustrative of the subject matter on appeal:
1. A system for determining configurations and allocations
of automotive vehicles that each are within a brand and series of
automotive vehicles comprising:
a computer data processing system that includes at least one
processor and that is configured to:
query a computer system for social media postings made
in a social media network system that each satisfy all of the
following criteria:
identify one or more of the vehicles or series;
indicate an intent to purchase one of the vehicles; and
indicate a location of the author of the social media
posting;
generate a score for at least some of the social media
postings returned by the query, each score based on an evaluation
of a plurality of predetermined criteria in relation to a given
social media posting where each predetermined criterion
positively or negatively influences the score thereof;
use the scores generated for the social media postings to
determine at least one of configurations or allocations of the
vehicles in each of multiple geographic locations; and
store the at least one of configurations or allocations.
2
Appeal2014-005620
Application 13/646,517
REJECTIONS
Claims 1, 6, 16, 21, and 31-34 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Newton (US 2012/0233212 Al, pub.
Sept. 13, 2012) and Reisman (US 2011/0295722 Al, pub. Dec. 1, 2011).
Claims 2 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Newton, Reisman and Kenton (US 2010/0325107 Al,
pub. Dec. 23, 2010).
Claims 3, 4, 13, 14, 18, 19, 28, and 29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Newton, Reisman, and Galas
(US 2012/0059713 Al, pub. Mar. 8, 2012).
Claims 8 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Newton, Reisman and Kannan (US 2010/0138282 Al,
pub. June 3, 2010).
Claims 9 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Newton, Reisman, Kannan, and Dilip
(US 2012/0066073 Al, pub. Mar. 15, 2012).
Claims 10 and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable Newton, Reisman, and McCrea (US 2011/0288912 Al, pub.
Nov. 24, 2011).
Claims 11 and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Newton, Reisman, McCrea, and Khan
(US 2011/0082747 Al, pub. Apr. 7, 2011).
Claims 15 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Newton, Reisman, Galas, and Payne
(US 2012/0022956 Al, pub. Jan. 26, 2012).
3
Appeal2014-005620
Application 13/646,517
ANALYSIS
The Appellants contend the Examiner's rejection of claims 1 and 16 is
in error because Newton, upon which the Examiner relies, does not disclose
querying for postings that satisfying all three specific criteria, as required by
the claims. Appeal Br. 3.
The Examiner finds that Newton discloses a system configured to
query a computer for postings that each satisfy all the recited criteria at
paragraphs 19, 21, 22, 28, and 61. See Final Act. 6, 8. The Examiner also
finds that the claimed "query consisting of three different parts" is not "truly
substantively differen[t] from [the] three separate queries" ofNewton. See
Ans. 2. The Examiner further determines that, to the extent those are two
different things,
all three queries can be envisioned in the same system [of
Newton]. Thus, no motivational statement was needed in regards
to the three cited passages of Newton. Note that all 3 queries are
related, and can be simply summarized as determining the
location of the author who expresses an intent to purchase a
vehicle. The Examiner notes that no unexpected results are
achieved by the combination of the three components into a
single query - each query effectively identifies a potential
customer for targeted marketing. A conclusion of obviousness
is therefore in line with the reasoning expressed in KSR v.
Teleflex (Rationale A).
Id. at 3.
The Appellants argue that a "query for postings that have A and Band
C is most definitely substantively different than a query for postings that
have A, a query for postings that have B, and a query for postings that have
C." Reply Br. 2. The Appellants further argue that the Examiner does not
clearly articulate a reason why one of ordinary skill in the art would modify
4
Appeal2014-005620
Application 13/646,517
Newton, and thus, "fails to satisfy the most fundamental requirement of an
obviousness rejection." Appeal Br. 3--4; see also Reply Br. 3.
The Appellants' arguments are persuasive. Even assuming the
Examiner's finding that Newton discloses the three individually recited
criteria (see Final Act. 6) is reasonable, it is not clear, and the Examiner does
not show, how Newton discloses querying for posts that satisfy all three
criteria, as required by the claim. The Examiner's finding that Newton
discloses "determining the location of the author who expresses an intent to
purchase a vehicle" (Ans. 3), and thus, presumably, posts satisfying all three
criteria, is not adequately supported. At best, Newton discloses using author
information to search repositories to determine author location or
connections to other authors (Newton i-f 22), and querying for something
satisfying two criteria, i.e., querying data for top 10 people (something) in
on-topic posts (first criterion) with the "Dell" company (second criterion)
(id. i-f 61 ). Moreover, although the Examiner states, as a reason to combine,
"Rationale A," it is not clear how "combining prior art elements according to
known methods to yield predicable results"3 would lead one of ordinary skill
in the art to modify Newton to query for posts that satisfy all three recited
criteria, as opposed to one or two criteria.
3 We interpret "Rationale A" to be referring to the reasoning designated
"Rationale A" in the "TC 3600 Business Methods KSR Training Examples,"
of May 9, 2008, that can be found at http://www.uspto.gov/patent/laws-and-
re gulations/ examination-policy I examination-guidelines-training-materials-
view-ksr, referring to the Supreme Court's reason for finding a claimed
invention obvious because "[ t ]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398,
415-16 (2007).
5
Appeal2014-005620
Application 13/646,517
Thus, we agree that the Examiner has erred in the rejection of claims 1
and 16, and we do not sustain the rejection of independent claims 1 and 16,
and dependent claims 6, 21, and 31-34. Because we do not sustain the
rejection of independent claims 1 and 16, we also do not sustain the
rejections of dependent claims 2--4, 8-11, 13-15, 17-19, 23-26, and 28-30.
Cf In re Fritch, 972 F.2d. 1260, 1266 (Fed. Cir. 1992) ("dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious").
DECISION
The Examiner's rejections of claims 1--4, 6, 8-11, 13-19, 21, 23-26,
and 28-34 under 35 U.S.C. § 103(a) are REVERSED.
REVERSED
6