Ex Parte Nguyen

Patent Trial and Appeal Board

Apr 2, 2013

10119995 (P.T.A.B. Apr. 2, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BINH Q. NGUYEN
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Appeal 2011-006987
Application 10/119,995
Technology Center 3600
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Before ANTON W. FETTING, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006987
Application 10/119,995

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.
1

BACKGROUND
Appellant’s invention relates to the correlation of web browsing with
purchase behavior so that the effectiveness or ineffectiveness of web content
can be more easily evaluated (Spec. 1, ll. 5-7).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method of correlating the obtaining of an item at an off-
line location with an on-line search session leading to the
obtaining of said item, comprising the steps of:
assigning a session identifier to said on-line search
session when a session participant initiates said on-line search
session;
presenting said session identifier to said session
participant in connection with an incentive to obtain said item
at said off-line location;
requiring said session participant to present said session
identifier at said off-line location to obtain the benefit of said
incentive;
correlating said obtaining of said item with said on-line
search session based on said session identifier; and

1
Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed July 28, 2005) and the Examiner’s Answer (“Ans.,” mailed
October 12, 2010).
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storing the results of said correlation as a correlation data
set for subsequent analysis.

THE REJECTION
The following rejection is before us for review:
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee (US 2002/0188508 Al, pub. Dec. 12, 2002) in view of
Hunt (US 6,223,215 B1, iss. Apr. 24, 2001).

ANALYSIS
Appellant argues claims 1-20 as a group (Br. 6). We select claim 1 as
representative. The remaining claims stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).
We are not persuaded that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) by Appellant’s argument that neither Lee nor Hunt
suggests that they be combined or modified to achieve the elements of the
claim or that such a modification, (i.e., “presenting said session identifier to
said session participant in connection with an incentive to obtain said item at
said off-line location” and “requiring said session participant to present said
session identifier at said off-line location to obtain the benefit of said
incentive”) would be desirable (Br. 7-8). Indeed, to the extent that Appellant
seeks an explicit suggestion or motivation in the references themselves, that
no is longer the law. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007).
Both Lee and Hunt are concerned with judging the effectiveness of an
advertising campaign and both describe schemes for measuring the
effectiveness of an ad campaign on the Internet (Ans. 5). In Hunt, a session
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identifier is used to track a customer’s on-line activity. Hunt describes that
the session tracking data is gathered and analyzed offline to measure the
effectiveness of advertisement placements (see Hunt, col. 1, ll. 52-60).
Lee describes a scheme in which a visitor to a website selects a link
corresponding to a product or offer and prints a corresponding discount
coupon. The merchant (whose website the coupon was printed from)
redeems the coupon by making the sale to the customer, and is able to track
the number of times a customer visits the advertising website and elects to
purchase merchandise from the merchant (and thereby able to judge the
effectiveness of the ad campaign) by counting the number of coupons
received (see Lee, para. [0004]).
In our view, modifying Lee to include a session identifier, as taught
by Hunt, is nothing more than a combination of prior art elements according
to their established functions, and yields a predictable result. Therefore, it
would have been obvious at the time of Appellant’s invention. See KSR,
550 U. S. at 416 (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results”).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of claims 2-20, which stand or fall with claim 1.

DECISION
The Examiner’s rejection of claims 1-20 under 35 U.S.C. § 103(a) is
affirmed.

Appeal 2011-006987
Application 10/119,995

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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).

AFFIRMED

ELD