Ex Parte Quatse et al

Board of Patent Appeals and Interferences

Aug 27, 2012

10616486 (B.P.A.I. Aug. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/616,486 07/08/2003 Jesse T. Quatse 134779.01101 9731
21269 7590 08/27/2012
PEPPER HAMILTON LLP
ONE MELLON CENTER, 50TH FLOOR
500 GRANT STREET
PITTSBURGH, PA 15219
EXAMINER
LASTRA, DANIEL
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
08/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JESSE T. QUATSE, ANSSI KARHINEN, and
ERIC G. WASSERMAN
___________

Appeal 2010-011574
Application 10/616,486
Technology Center 3600
____________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011574
Application 10/616,486

2
STATEMENT OF THE CASE
Jesse T. Quatse, Anssi Karhinen, and Eric G. Wasserman (Appellants)
seek our review under 35 U.S.C. § 134 of the final rejection of claims 7-27.
We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b). 1

THE INVENTION
This invention is a system that “matches promotional offers to
individual customers in such a way that each customer can receive a limited
number of offers that are estimated to be most likely to be acceptable by the
customer.” Spec. 6:28-30.
Claim 23, reproduced below, is illustrative of the subject matter on
appeal.
23. In an electronic system for distributing promotional offers,
a method of targeting a plurality of customers from a customer
database for distribution of limited quantities of promotional offers,
the method comprising:
[A] generating a plurality of scores for said plurality of
customers, each said score being associated with one said customer
and with one said offer, and each said score measuring a probability
that the associated customer will make a purchase in accordance with
the associated offer;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Feb. 9, 2010) and Reply Brief (“Reply Br.,” filed Jun. 17, 2010),
and the Examiner’s Answer (“Ans.,” mailed May 6, 2010).

Appeal 2010-011574
Application 10/616,486

3
[B] identifying, by a computing device in said electronic
system, a highest score in said plurality of scores;
[C] determining:
a customer, from said plurality of customers, associated
with said highest score, and
a first promotional offer, from said plurality of
promotional offers, associated with said highest score;
[D] assigning said first promotional offer to a first personalized
offer list for said customer if said first promotional offer satisfies one
or more constraints on one or more of the following:
a total number of first promotional offers that are
distributable, and
a total number of promotional offers that are distributable
to said customer;
[E] successively repeating said identifying, determining and
assigning steps for each next highest score until all of the promotional
offers in said plurality of promotional offers have been assigned to
personalized offer lists; and
[F] distributing one or more of the promotional offers to one or
more of the customers in said plurality of customers.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Sridhar US 2003/0208754 A1 Nov. 6, 2003
Deaton US 6,684,195 B1 Jan. 27, 2004
The Examiner took Official Notice “that it is old and well known in
the computer art to use software programs to create bar charts from
input data and adjust said bar charts according to a user preference.”
Ans. 14. [Hereinafter “Official Notice”].

The following rejections are before us for review:
1. Claims 7-12, 18, and 20-27 are rejected under 35 U.S.C.
§102(e) as being anticipated by Sridhar.
Appeal 2010-011574
Application 10/616,486

4
2. Claims 13-17 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Sridhar and Deaton.
3. Claim 19 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Sridhar and Official Notice.

ISSUES
The first issue is whether claims 20 and 23 are anticipated under 35
U.S.C. §102(e) by Sridhar. Specifically, whether Sridhar describes a
plurality of scores for a plurality of customers, and identifying the highest
score in the plurality of scores. The rejection of claims 7-12, 21-22, and 24-
27 under 35 U.S.C. §102(e) as being anticipated by Sridhar and the rejection
of claims 13-17 under 35 U.S.C. §103(a) as being unpatentable over Sridhar
and Deaton turns on the same issue.
The second issue is whether claim 18 is anticipated under 35 U.S.C.
§102(e) by Sridhar and whether claim 19 is unpatentable under 35 U.S.C.
§103(a) over Sridhar and Official Notice.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. Sridhar describes a purchase prediction, which is the probability
that a subscriber will purchase a particular product in a particular
week. Paragraph [0116].
Appeal 2010-011574
Application 10/616,486

5
2. Sridhar describes selecting an ad of the product with the largest
purchase prediction for a subscriber from the products associated
with a selected event. Paragraph [0169].
3. Sridhar describes selecting the appropriate promotional offer for an
event entered by the subscriber, wherein a sponsor may impose a
restriction on the number of offers and therefore is required to
select subscribers based on appropriate criteria such as
demographic information of the subscriber, previous history of the
subscriber with respect to similar past offers, and details of the last
accepted offer. Paragraphs [0175-0178].

ANALYSIS
The rejection of claims 7-12 and 20-27 under §102(e) as being anticipated
by Sridhar, and the rejection of claims 13-17 under 35 U.S.C. §103(a) as
being unpatentable over Sridhar and Deaton.
Claims 7-17 and 20-27
The Appellants argue that Sridhar does not describe all the limitations
of independent claim 23. App. Br. 14-17 and Reply Br. 5-16. Specifically,
the Appellants argue that Sridhar does not describe a plurality of scores for a
plurality of customers (i.e., step A of claim 23) and identifying the highest
score from among all the scores, (i.e., step B of claim 23), because Sridhar is
directed to a single customer in isolation from all other customers and thus
the Sridhar system is incapable of identifying the highest score in the
plurality of scores. App. Br. 15-16 and Reply Br. 6.
We are persuaded by the Appellants’ argument on pages 15-17 of the
Appeal Brief and pages 6-10 of the Reply Brief. The Examiner cites Sridhar
Appeal 2010-011574
Application 10/616,486

6
paragraph [0169] for teaching the limitation marked B above of claim 23:
identifying, by a computing device in said electronic system, a highest score
in said plurality of scores. However, this citation only describes selecting an
ad of the product with the largest purchase prediction for a subscriber from
the products associated with a selected event. FF 2. In other words, an ad is
selected for an individual subscriber based on his purchase prediction, which
is simply the probability that a subscriber will purchase a particular product
in a particular week. FF 1. The purchase prediction is specific to the
subscriber, and does not require comparison of an individual subscriber’s
purchase prediction score against other subscribers’ purchase prediction
scores. Thus, there is no identifying a highest score in the plurality of
scores, where “the plurality of scores” refers to “the plurality of scores for
said plurality of customers” generated in step A.
Furthermore, the Examiner cites Sridhar paragraphs [0175-0178] for
teaching “a purchase acceptance probability of an offer for a particular
subscriber in comparison to the purchase acceptance probability of said offer
from other subscribers in order to select a subscriber to target offers that are
limited in number.” Ans. 15-16. However, this is a misinterpretation of the
citation, which actually describes that selecting the appropriate offer for a
subscriber at an event may include a sponsor imposing a restriction on the
number of offers, and therefore, the sponsor selects subscribers based on
criteria such as a subscriber’s demographic information, previous history, or
last accepted offer. FF 3. The sponsor may impose a restriction on the
number of offers, but again the sponsor is selecting an ad for the individual
subscriber based on the subscriber’s personal data (e.g., demographic,
history, last offer). The sponsor is not selecting the ad based on a
Appeal 2010-011574
Application 10/616,486

7
comparison to other subscribers. Thus, the cited portions of Sridhar do not
describe identifying a highest score in a plurality of scores for a plurality of
customers as required by limitation B of claim 23.
Independent claim 20 recites a similar limitation: “for a customer
included in said portion of the customers… determine an estimated
probability that said customer will purchase a product… in comparison to all
other customers included in said portion of customers.” App. Br. 32. The
Appellants present similar arguments as recited above for claim 23. App.
Br. 21-22. Thus, claim 20 is rejected using the same rationale as above.
Accordingly, we reverse the rejection of independent claims 20 and 23 under
§102(e) as being anticipated by Sridhar, and claims 7-17, 21-22, and 24-27
dependent thereon.

The rejection of claim 18 under §102(e) as being anticipated by Sridhar, and
the rejection of claim 19 under §103(a) as being unpatentable over Sridhar
and Official Notice.
Claims 18-19
As discussed below, we find that claims 18-19 are indefinite under 35
U.S.C. § 112, second paragraph. Therefore, the rejections of claim 18 under
35 U.S.C. § 102(e) and claim 19 under 35 U.S.C. § 103(a) must fall pro
forma because they are necessarily based on a speculative assumption as to
the scope of these claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA
1962). Our decision is based solely on the indefiniteness of the claims.
Accordingly, the rejection of claim 18 under 35 U.S.C. § 102(e) as
being anticipated by Sridhar is reversed, pro forma. The rejection of claim
Appeal 2010-011574
Application 10/616,486

8
19 under 35 U.S.C. § 103(a) as unpatentable over Sridhar and Official
Notice is reversed, pro forma.

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of claims 18-19 under 35 U.S.C. § 112, 2nd paragraph.
Claims 18-19
Claim 18 is reproduced below, with emphasis added.
18. In an electronic system for distributing promotional offers,
a method of adjusting the distribution of limited quantities of
promotional offers from a plurality of promotional offers to a plurality
of customers comprising:
[A] providing, for each combination of customer and
promotional offer from said pluralities, a measure of an acceptance
probability that the customer will accept the promotional offer, said
acceptance probability being indicative of a likelihood said customer
will accept the promotional offer in comparison to other customers
included in said plurality of customers;
[B] presenting the measures of acceptance probabilities for an
individual customer in a graphical display on said electronic system,
[C] wherein said graphical display includes a plurality of
graphic elements, one said graphic element being associated with each
said measure of acceptance probability provided for said individual
customer at least for the highest ranking of said measures;
[D] enabling adjustment of said measures of acceptance
probability by movement of the associated graphic elements;
[E] selecting, by a computing device in said electronic system, a
limited quantity of offers from said plurality of offers for distribution
to said individual customer,
[F] wherein said limited quantity of offers are selected
substantially in descending order of said measures of acceptance
probabilities as adjusted in said enabling step; and
[G] distributing at least one of the limited quantity of offers to
said individual customer.
Appeal 2010-011574
Application 10/616,486

9

Claim 18 fails to particularly point out and distinctly claim the subject
matter which the Appellants regard as their invention as required by 35
U.S.C. § 112, 2nd paragraph. Specifically, the scope of limitation C is
indefinite because it recites “the highest ranking of said measures,” which
can refer to either the plurality of measures of acceptance probability that is
provided for each combination of customer and promotional offer from said
pluralities as recited in limitation A, or the measures of acceptance
probabilities for an individual customer as recited in limitation B. Thus, the
scope of claim 18 cannot be determined because the claim language fails to
set out and circumscribe which “measures” (i.e., for the plurality of
customers or an individual customer) it refers to in the limitation at issue
with a reasonable degree of precision and particularly when read in light of
the application disclosure as would be interpreted by one of ordinary skill in
the art. In re Moore, 439 F.2d. 1232, 1235 (CCPA 1971).

DECISION
The decision of the Examiner to reject claims 7-27 is reversed. We
enter a NEW GROUND OF REJECTION of claims 18 and 19.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.” 37 C.F.R. §
41.50(b) also provides that the Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
Appeal 2010-011574
Application 10/616,486

10
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the Examiner.
(2) Request rehearing. Request that the proceeding be reheard under §
41.52 by the Board upon the same record.

REVERSED; 37 C.F.R. § 41.50(b)

mls