Ex Parte Peterson et al

Patent Trial and Appeal Board

Jun 29, 2018

13916107 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/916,107 06/12/2013
67260 7590 07/03/2018
TAR GET BRANDS, INC.
1000 NICOLLET MALL, TPS-3165
MINNEAPOLIS, MN 55403
FIRST NAMED INVENTOR
Sarah Roxanne Peterson
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.
201203758 3639
EXAMINER
REINHARDT, RICHARD G
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
USPTO.MAIL@TARGET.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SARAH ROXANNE PETERSON,
AMBER MARIE REIMER, JOEL MICHAEL SEEGER,
TRINATH SUBUDHI, and BENJAMIN JOSEPH DUPONT 1
Appeal2017-001410
Application 13/916, 107
Technology Center 3600
Before CARLA M. KRIVAK, JASON V. MORGAN, and
AARON W. MOORE, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-8 and 10-20. Claim 9 is canceled. See App. Br. 15,
Claims App.; see also Ans. 4, 16. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Appellant is the applicant, Target Brands, Inc., which the Appeal Brief
identifies as the real party in interest. App. Br. 3.
Appeal2017-001410
Application 13/916,107
Invention
The Abstract discloses a method for retrieving a list of offers that
match a search criteria and ordering the list based on quantities of users who
selected the offer using an offer selection application.
Representative Claim
1. A computer-implemented method comprising:
retrieving a list of offers that match search criteria provided by a
searcher;
requesting a list of site contacts that are linked to the searcher on a
social media site;
for each offer in the list of offers, determining a quantity of qualified
selections of the offer, wherein a quantity of qualified selections for
an offer comprises a quantity of people in the list of site contacts who
are also registered users of an offer selection application and who
selected the offer using the offer selection application;
ordering, by a processor, the list of offers based on the quantities of
qualified selections to produce an ordered list of offers such that an
offer with a highest quantity of qualified selections is placed first in
the ordered list; and
providing, by the processor, a user interface displaying the ordered list
of offers such that the offer placed first in the ordered list is shown on
the display with a top banner of the display.
Rejections and References
The Examiner rejects claims 1-8 and 10-20 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. Final Act. 2--4; see also Ans.
4.
The Examiner rejects claims 1--4, 10-14, and 16-20 under
35 U.S.C. § 103 as being unpatentable over Bachman (US 2013/0117097
Al; published May 9, 2013), Soza et al. (US 2009/0319359 Al; published
Dec. 24, 2009) ("Soza"), Brown et al. (US 2004/0249712 Al; published
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Application 13/916,107
Dec. 9, 2004) ("Brown"), and Acosta-Cazaubon (US 2013/0110595 Al;
published May 2, 2013). Final Act. 4--11; Ans. 16.
The Examiner rejects claims 5 and 15 under 35 U.S.C. § 103 as being
unpatentable over Bachman, Soza, Brown, Acosta-Cazaubon, and the
Examiner's Official Notice. Final Act. 11-12.
The Examiner rejects claims 6-8 under 35 U.S.C. § 103 as being
unpatentable over Bachman, Soza, Brown, Acosta-Cazaubon, and Madsen et
al. (US 2014/0074628 Al; published Mar. 13, 2014) ("Madsen"). Final Act.
12-13.
35 U.S.C. § 101
Findings and Contentions
In rejecting claim 1 as being directed to non-statutory subject matter,
the Examiner concludes that the claimed method is abstract and that "no
machine or specialized computer is needed" to perform the steps directed to
"retrieving a list of offers ... requesting contacts ... determining contacts
who selected offers, ordering a list offers, and providing an interface to
display the offers." Final Act. 2. The Examiner further concludes that the
claimed "functions are already well-known in the industry" (id.) and "there
are no meaningful limitations in the claim that transform the [underlying
abstract idea] into a patent eligible application" (id. at 3).
Appellant contends the Examiner erred because "the problem solved
by claim 1 is necessarily rooted in computer technology." App. Br. 7.
Appellant contends, "the contacts are not just any contacts but instead are
contacts linked to the search on a social media site. Such social media sites
exist only on the Internet and reconciling a list of such site contacts cannot
be done in a person's head or using paper and pencil." Id. Appellant further
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argues, "the limited size of the display creates a problem for displaying
search results, which does not have an analog in the pencil and paper world."
Reply Br. 3; see also App. Br. 8.
With respect to the Examiner's 35 U.S.C. § 101 rejections of claims
10 and 16, Appellant similarly argues steps directed to receiving and using
credentials to request a list, and to requesting and receiving a list from a
social media site, "are necessarily rooted in computer technology because
they require a processor that interacts with a social media site." App. Br. 9.
Analysis
We agree with the Examiner that claim 1 is directed to an abstract
idea. In particular, the claimed method of providing a list of offers-
relevant to a search criteria and ordered by the popularity of the offers with
contacts of the searcher-is directed to tailoring advertisements (i.e.,
through ordering) based on information known about the searcher (based on
the searcher's association with others on a social media site and their
evidence preferences). Targeting consumers based on their likely
preferences, identified as based on being part of a shared community,
represents an abstract idea-a practice that is fundamental and long
prevalent---similar to taking into account a customer's location or the time
of day. See Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1369--70 (Fed. Cir. 2015).
Marketing has long involved segmentation to tailor promotional
messages and offers to increasingly narrower subsets of consumers. Here,
such segmentation is based on the contacts of a particular searcher (i.e.,
those who, based on the information recorded by a social media site, are
most likely to have preferences similar to the searcher). While the searcher
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is narrowly targeted in this context, and the information used for such
targeting comes from a social media site, the underlying idea is nonetheless
abstract.
We agree with the Examiner that claim 1 does not have additional
recitations making the claimed method anything significantly more than the
underlying abstract idea. Appellant argues the problem solved is necessarily
rooted in computer technology because the contacts are on a social media
site and because "reconciling a list of such site contacts cannot be done in a
person's head or using paper and pencil." App. Br. 7. However, we agree
with the Examiner, "[ r ]equesting a list of contacts is not something that is
rooted in computer technology." Ans. 5.
Contact lists have long been available outside the realm of computer
technology. For example, non-computer address books, desktop card
indexes, phone books, and organization directories allow for contact
information maintenance without computer technology. Furthermore, we
agree with the Examiner that performing the claimed analysis-using
computer technology to count how many of a searcher's contacts selected
any particular offer---does not make claim 1 amount to anything
significantly more than the underlying abstract idea. Performing such
analysis on a computer does not require a "nonconventional computer,
network, or display components, or even a 'non-conventional and non-
generic arrangement of known, conventional pieces."' Electric Power
Group LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (citing
Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1349--52 (Fed. Cir. 2016)).
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We are also unpersuaded that "claim 1 provides significantly more
than the abstract idea itself because the claim is directed to solving a
problem that arises in computer displays in which the displays are too small
to contain all the information that is to be displayed." App. Br. 7. This
benefit is not recited as part of the claimed invention. Moreover, we agree
with the Examiner that "[ o ]rdering and displaying lists in descending order
... is beyond well-known or routine in the art." Ans. 6.
For these reasons, we agree with the Examiner that claim 1 is directed
to non-statutory subject matter. Accordingly, we sustain the Examiner's 35
U.S.C. § 101 rejection of claim 1, and claims 2-8, which Appellant does not
argue separately. For similar reasons, we also sustain the Examiner's 35
U.S.C. § 101 rejections of claims 10-20.
35 U.S.C. § 103----CLAIMS 1-8, 10-14, 16-20
Findings and Contentions
In rejecting claim 1 as being obvious, the Examiner relies on
Bachman's method of presenting advertisements to a user based on the
user's interactions with other users, in combination with the teachings and
suggestions of Soza, Brown, and Acosta-Cazaubon, to render obvious the
disputed recitations. Final Act. 4--6. In particular, the Examiner finds
"Brown teaches determining a quantity of qualified selections of the offer,
wherein a quantity of qualified selections for an offer comprises a quantity
of people in the list of registered users of an offer selection application and
who selected the offer using the offer selection application" (Final Act. 5
(citing Brown i-fi-148, 52, 71, 132, and 190)), while "Soza teaches ordering
the list of offers based on the quantities of qualified selections" (Final Act. 5
(citing Soza i-fi-130-32 and 34--37)).
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Appellant contends the Examiner erred because Bachman's "principle
of operation is to first display an offer to a user, then obtain permission to
access the user's social media friends, and lastly display the offer to those
social media friends." App. Br. 10. Appellant argues that modifying
Bachman would not have been obvious to an artisan of ordinary skill
because the modification would result in "all advertisers hav[ing] access to
every consumer's list of social media friends at all times." Id. at 11; see also
Reply Br. 4---6.
Analysis
We do not agree with Appellant that modifying Bachman in the
manner proffered by the Examiner would change Bachman's principle of
operation. Appellant characterizes Bachman's teachings as being applicable
only in the context of a single advertisement and user response. See App.
Br. 10. However, we agree with the Examiner that Bachman's teachings and
suggestions are applicable in the context of an initial advertisement and a
user response (i.e., one permitting access to a contact list) that affects
subsequent advertisements. See Ans. 13. Bachman explicitly teaches using
a user's social network account information to generate a list of users along
with information "that may be useful in determining users to whom certain
types of advertisements should be targeted." Bachman i-f 34 (cited in Ans.
11 ). Because the social network account information is obtained with the
consent of the user in Bachman (see i-f 34), the targeted advertisements
represent an example of subsequent advertisements. Thus, the Examiner's
finding that Bachman distinguishes between a first advertisement (seeking
consent from a user to obtain access to contact information) and subsequent
advertisements (that can be affected by the information obtained) is
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supported by the cited teachings and suggestions of Bachman. Appellant's
argument that modifying Bachman would allow "advertisers full access to
everyone's social media contacts" (Reply Br. 6) does not persuasively
address the distinction between initial and subsequent advertisements the
Examiner finds are taught or suggested by Bachman. Moreover, Appellant
does not provide persuasive arguments or evidence showing that modifying
Bachman in the manner proffered by the Examiner requires such unfettered
access to social media contact data. Therefore, Appellant's argument is
unpersuasive of error.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103 rejection of
claim 1, and claims 2-8, 10-14, and 16-20, which Appellant does not argue
separately with specificity. See App. Br. 10-11 and 13.
35 U.S.C. § 103----CLAIM 15
Findings and Contentions
In rejecting claim 15 as being obvious, the Examiner takes official
notice that "it was old and well known to add a counter of actions" such as
"how many hits [a] page has received." Final Act. 12. Thus, the Examiner
concludes it would have been obvious to display the "count of a number of
friends in a subset of friends who selected an offer" as taught or suggested
by Soza. Ans. 16; see also Final Act. 9 (citing Soza i-fi-130-32, 34--38, 40,
42, 49, and Fig. 5).
Appellant contends the Examiner erred because displaying "a counter
of visitors to a web page is significantly different from [displaying] a count
of the number of friends in a subset of friends who selected an offer." App.
Br. 12.
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Analysis
We find Appellant's argument unpersuasive. We agree with the
Examiner's findings that Soza teaches or suggests the count information
recited in claim 15. See Final Act. 9; see also Ans. 16. We also agree with
the Examiner an artisan of ordinary skill would have recognized that simply
displaying this information to the user would have been an obvious use of
the information. See Final Act. 12.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103 rejection of
claim 15.
DECISION
We affirm the Examiner's decision rejecting claims 1-8 and 10-20
under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1-8 and 10-20
under 35 U.S.C. § 103.
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.
§ 41.50(f).
AFFIRMED
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