Ex Parte Pfeifer et al

Board of Patent Appeals and Interferences

Apr 7, 2010

10601996 (B.P.A.I. Apr. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RONALD PFEIFER, GERHARD STENZEL, and
KATHLEEN WOLFRAM
___________

Appeal 2009-003717
Application 10/601,996
Technology Center 2100
____________

Decided: April 7, 2010
____________

Before JOSEPH L. DIXON, JAY P. LUCAS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 1-19. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

Appeal 2009-003717
Application 10/601,996

STATEMENT OF THE CASE
INVENTION
The invention on appeal relates to a user interface of a data processing
system like websites, or application programs in which user action is
tracked. (Spec. 1, ll. 4-6).

ILLUSTRATIVE CLAIM

1. A method for analyzing user behavior in a man-machine interface of a
data processing system in which user action is tracked, characterized by the
steps of:

(a) defining at least one success element associated with user
navigation within said man-machine interface occurring during a user
session,

(b) storing user navigation information from a plurality of said user
sessions, said user navigation information being associated with said at least
one success element and reflecting the user navigation behavior within said
man-machine interface occurring during said plurality of said user sessions,

c) correlating, within said user navigation information, said at least
one success element to user navigation behavior within said man-machine
interface occurring during said plurality of said user sessions, and

d) performing a statistical analysis on a plurality of different sets of
navigation information collected in respective different user sessions.

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Application 10/601,996

PRIOR ART
The Examiner relies upon the following reference as evidence:
Venkatesan US 6,928,474 B2 Aug. 9, 2005

THE REJECTIONS1
1. The Examiner rejected claims 17-19 under 35 U.S.C. §112, first
paragraph, for failing to comply with the written description requirement.

2. The Examiner rejected claims 1-19 under 35 U.S.C. § 102(e) as
anticipated by Venkatesan.

CLAIM GROUPING
Based upon Appellants’ arguments in the Brief, we select claims 1
and 17 as representative claims for the anticipation rejection. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:

Issue 1: Under the written description requirement of § 112, first
paragraph, did the Examiner err by finding that the subject matter of

1 Appellants seek review of the Examiner’s objection to the Specification.
(Reply Br. 2). However, this is a petitionable matter to the Technology
Center Director under 37 C.F.R. § 1.181 and thus is not within the
jurisdiction of the Board.
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Application 10/601,996

“analyzing said user navigation information to identify
differences between the behavior of users navigating within
said web site during a first subset of said plurality of user web
sessions and the behavior of users navigating within said web
site during user web sessions which are not within said first
subset of said plurality of user web sessions, said first subset of
said plurality of user web sessions being user web sessions of
said plurality of user web sessions for which at least one said
success element as defined by said defining step is associated
with user navigation of said interface provided by said web site
during the respective user web session, said first subset being
fewer than all said user web sessions,”

is not supported in the Specification? (Claim 17, see step (c)).

Issue 2: Under § 102, did the Examiner err by finding that
Venkatesan fails to disclose or describe (a) defining a success element and
(c) correlating the success element to user navigation behavior occurring
during the plurality of “user sessions,” as required by the language of claim
1? (Claim 1, see steps (a) and (c).).

Issue 3: Under § 102, did the Examiner err by finding that
Venkatesan discloses or describes defining a success element and identifying
a first subset of user web sessions and the user navigation behaviors
occurring during that first subset of user web sessions, as distinct from user
web sessions not in the first subset and corresponding user navigation
behaviors, the first subset being determined by the defined “success
element?”(Claim 17, see step (c)).
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Appeal 2009-003717
Application 10/601,996

PRINCIPLES OF LAW
112 first paragraph, Written Description
The test for written description is summarized in Purdue Pharma L.P. v.
Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (internal quotation
marks and citations omitted):
In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec
verba support for the claimed subject matter at issue. . . .
Nonetheless, the disclosure must . . . convey with reasonable
clarity to those skilled in the art that . . . [the inventor] was in
possession of the invention. . . . Put another way, one skilled in
the art, reading the original disclosure, must immediately
discern the limitation at issue in the claims. . . . That inquiry is
a factual one and must be assessed on a case-by-case basis.

Anticipation under § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.

Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(citations omitted).
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FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by the record:
Appellants’ Specification
1. Appellants’ Specification describes distinguishing between a first
group and a second group of web sessions (not within the first group) and
stores one of the groups of web sessions as a dataset (Data(Success
element; location; Time)). (See Spec. pg. 10, ll. 10-11).
We further find that Appellants’ Specification describes that the results
described above are analyzed. For example, the Specification describes a
statistical analysis that may be performed. (See pg. 11, ll. 3-6, 12-15; pg.
12, ll. 1-3, 18-26).

The Venkatesan Reference
2. Venkatesan discloses “collecting E-commerce and/or marketing
related information such as the number of hits a web page containing a
certain ad is receiving, discovering customer profiles, and the number of
completed transactions in a given time period.” (Col. 2, ll. 42-47).

3. Venkatesan discloses a technique for predicting future web navigation
sequences. (Col. 2, ll. 20-24).

4. Venkatesan discloses element 420 which stores the monitored web
navigation sequences performed by users visiting the web site while
browsing the web pages. (Col. 6, ll. 32-36; Fig. 4).
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5. Venkatesan discloses element 430 which analyzes each of the stored
web navigation sequences to predict future web navigation patterns of the
web site. (Col. 6, ll. 37-39; Fig. 4).

ANALYSIS
Issue 1
We decide the question of whether the Examiner erred in finding
under the written description requirement of § 112 that step (c) of claim 17
is not supported in the Specification.
Based upon our review of the record, we agree with Appellants’
arguments at pages 7-11 of the principal Brief. We find the portions of
Appellants’ Specification noted in FF 1 support the features recited in step
(c) of claim 17. Although not expressed in these noted portions of the
Specification in exactly corresponding terms, we find analyzing the user
navigation information to note differences between the behavior of two
different sets of users (FF 1) is sufficient to show possession, as of the filing
date of the application, of the specific features recited in step (c) of claim 17.
Contrary to the apparent view of the Examiner, there is no word for word or
“ipsis verbis” requirement for the written description portion of 35 U.S.C. §
112, first paragraph. See Union Oil Co. v. Atlantic Richfield Co., 208 F.3d
989, 1000 (Fed. Cir. 2000) (The invention claimed does not have to be
described in ipsis verbis in order to satisfy the written description
requirement). Therefore, we reverse the Examiner’s rejection of dependent
claims 17-19 under the written description requirement of 35 U.S.C. § 112,
first paragraph.
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Issue 2
We decide the question of whether Venkatesan fails to disclose or
describe (a) defining a success element and (c) correlating the success
element to user navigation behavior occurring during the plurality of “user
sessions,” as required by the language of claim 1. (see steps (a) and (c)).
At the outset, we note that the feature “success element” is, as
admitted by Appellants, broadly defined and could “broadly encompass any
of various things.” (App. Br. 17). As such, we broadly but reasonably
construe the claimed “success element” as an indication of a favorable
termination of attempts.
Appellants contend that Venkatesan does not disclose or suggest
defining a “success element.” (App. Br. 17). However, given our
aforementioned construction, we agree with the Examiner’s findings with
respect to this feature. (Ans. 5-6). More particularly, as noted above, we
find that Venkatesan discloses a number of completed transactions, i.e., the
number of hits received by a web page containing a certain ad (a favorable
termination of a search). (FF 2). Thus, we find that Venkatesan discloses a
“success element” as claimed.
We note Appellants state that correlating “could encompass any of
various forms of analysis which might somehow show the connection
between the success element and certain user navigation behavior.” (App.
Br. 17). In this light, we find that Venkatesan discloses that the success
element (hits on a web site) is a variable in analyzing user navigation
behavior (analyzing future web navigation sequences of users). (FF 3).
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Therefore, we find that Venkatesan discloses a success element that
correlates with user navigation behavior during a plurality of user sessions.
Based on the above, we find the Examiner did not err in rejecting
representative claim 1. Accordingly, we affirm the Examiner’s § 102
rejection of claim 1 and associated dependent claims 2-16 which fall
therewith.
Issue 3
We decide the question of whether the Examiner erred by finding that
Venkatesan discloses or describes defining a success element and identifying
a first subset of user web sessions and the user navigation behaviors
occurring during that first subset of user web sessions, as distinct from user
web sessions not in the first subset and corresponding user navigation
behaviors, the first subset being determined by the defined “success
element.”(Claim 17, see step (c)).
Appellants contend that the claim requires: (1) a success element be
defined, and (2) the data is analyzed to identify differences between the
navigation behavior occurring in user web sessions in a first subset of user
web sessions and the navigation behavior occurring in user web sessions
which are not within the first subset. (App. Br. 13-14).
We have found that Venkatesan discloses the argued feature of
“defining a success element,” as discussed supra regarding claim 1.
Appellants further contend that Venkatesan does not distinguish between a
successful website visitor and an unsuccessful web site visitor. (App. Br.
13). However, we agree with the Examiner’s observation that these
limitations are not recited in the claim, and we will not endeavor to read
these argued limitations into claim 17. (Ans. 11).
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Appeal 2009-003717
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We further agree with the Examiner that Venkatesan distinguishes
between two types of users browsing a website. (Ans. 12-13). Venkatesan
distinguishes between users on a website that visit a web page within the
website containing a certain ad as opposed to those who do not visit the web
page containing the ad. (FF 2).
With regards to Appellants’ second contention, we find that
Venkatesan discloses analyzing stored navigation sequences. The stored
sequences are monitored web sessions performed by users visiting the web
site while browsing the web pages. (FF 4-5)
For at least the aforementioned reasons, we find the Examiner did not
err in determining that Venkatesan discloses the limitations recited in step
(c) of claim 17. Accordingly, we sustain the Examiner’s § 102 rejection of
representative claim 17, as well as associated dependent claims 18 and 19
which fall therewith.

CONCLUSION
Based on the findings of facts and analysis above:
The Examiner erred in rejecting claims 17-19 under 35 U.S.C. § 112,
first paragraph.
The Examiner did not err in rejecting claims 1-19 under 35 U.S.C.
§ 102(e).

ORDER
We reverse the Examiner’s rejection of claims 17-19 under 35 U.S.C.
§ 112, first paragraph.
We sustain the Examiner’s rejection of claims 1-19 under 35 U.S.C.
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§ 102(e).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
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

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