Ex Parte Shaya et al

Board of Patent Appeals and Interferences

Jun 9, 2009

09981516 (B.P.A.I. Jun. 9, 2009)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN A. SHAYA, NEAL MATHESON,
JOHN ANTHONY SINGARAYAR, NIKIFOROS KOLLIAS
and JEFFREY ADAM BLOOM
____________

Appeal 2008-005606
Application 09/981,516
Technology Center 3600
____________

Decided:1 June 10, 2009
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-005606
Application 09/981,516

2
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-29 and 103 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to systems and methods
of utilizing communications networks and product recommending
processing operating on multivariate data characterizing consumers and
products to predict product use effects or recommend products from a
predefined population of commercially available products. (Specification
[0031]). Claim 1, reproduced below, is representative of the subject matter
of appeal.

1. A method of formulating individualized product
recommendations, comprising:
receiving a first set of data from a consumer regarding a target
substrate that includes a requirement to be addressed by a product;
and
generating a set of individualized product recommendations for
the consumer from a plurality of products within a product category
with the assistance of one or more computing devices, the generating
comprising:
feeding the first set of data as inputs into an intelligent
performance-based product recommendation engine;
classifying the consumer, based on the inputs, in a population of
consumers who previously used a product in the product category in
connection with a substantially similar substrate and who are
Appeal 2008-005606
Application 09/981,516
3
substantially similar to the consumer;
determining, based on the inputs and the classification of the
consumer, a likelihood that the products in the product category will
address the requirement with a predefined level of success when used
in connection with the target substrate; and
selecting a set of products from the product category having a
predefined likelihood of successfully addressing the requirement, the
selected set of products comprising the set of individualized product
recommendations.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Herz US 6,029,195 Feb. 22, 2000
Bieganski US 6,321,221 B1 Nov. 20, 2001
Hosken US 6,438,579 B1 Aug. 20, 2002
Wilmott US 6,782,307 B2 Aug. 24, 2004

The following rejections are before us for review:
1. Claims 1-4, 8, 13-27, and 103 are rejected under 35 U.S.C. §
102(e) as anticipated by Herz.
2. Claims 5-7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Herz and Bieganski.
3. Claims 9-12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Herz and Hosken.
4. Claims 28-29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Herz and Wilmott.
Appeal 2008-005606
Application 09/981,516
4
THE ISSUE
At issue is whether the Appellants have shown that the Examiner
erred in making the aforementioned rejections.
This issue turns on whether Herz discloses “classifying the consumer,
based on the inputs, in a population of consumers who previously used a
product in the product category, in connection with a substantially similar
substrate and who are substantially similar to the consumer.”

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2
FF1. Herz discloses a system for the customized electronic identification of
desirable objects, such as news articles, in an electronic media environment
(Abstract).
FF2. Herz constructs a “target profile” for each target object in the
electronic media for example based on the frequency with each word
appears in the article. Herz also constructs a “target profile interest
summary” for each user which describes the user’s interest level in various
types of target objects (Abstract).
FF3. Herz discloses that the “target profiles” are evaluated to generate a
user customized rank ordered listing of the target objects (Abstract).
FF4. Herz discloses that the information delivery process is based on
determining a similarity between a profile for the target object and the

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2008-005606
Application 09/981,516
5
profiles of target objects for which the user (or a similar user) has provided
positive feedback in the past (Col. 6:38-43).
FF5. Herz discloses that once a new user has been partially profiled the
method disclosed predicts if the new user’s interests resemble the known
interests of other users with similar profiles (Col. 28:55-58).
FF6. Herz fails to disclose classifying the consumer in a population of
consumers who previously used a product in the product category and who
are substantially similar to the consumer.

PRINCIPLES OF LAW
Principles of Law Relating to Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

Principles of Law Relating to Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
Appeal 2008-005606
Application 09/981,516
6
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) In KSR, the Supreme Court emphasized “the need
for caution in granting a patent based on the combination of elements found
in the prior art,” id. at 415-16.

ANALYSIS
The Appellants argue that the rejection of claims 1 and 103 is
improper because Herz fails to disclose “classifying the consumer … in a
population of consumers who previously used a product in the product
category … and who are substantially similar to the consumer” (Br. 11).
In contrast the Examiner has determined that Herz does disclose
“classifying the consumer … in a population of consumers who previously
used a product in the product category … and who are substantially similar
to the consumer” (Ans. 18-19). The Examiner has determined that the
process of Herz determines a similarity between a profile for a target object
and target objects for which the user, or similar users, provided positive
feedback in the past (Ans. 18). The Examiner has also determined that once
new users are profiled in Herz, it is predicted if the new user’s interests
resemble the known interests of users with similar profiles (Ans. 19).
Appeal 2008-005606
Application 09/981,516
7
We agree with the Appellants. Herz discloses a system for the
customized electronic identification of desirable objects, such as news
articles, in an electronic media environment (FF1). Herz constructs a
“‘target profile’” for each target object in the electronic media for example
based on the frequency with each word appears in the article (FF2). As
presented here claims 1 and 103 both include limitations which require
classifying the consumer in 1) a population of consumers who previously
used a product in the product category in connection with a substantially
similar substrate and 2) who are substantially similar to the consumer.
While Herz does construct a “‘target profile interest summary’” for each
user which describes the user’s interest level in various types of target
objects (FF2), this does not relate the consumer to “a population of
consumers who previously used a product in the product category in
connection with a substantially similar substrate.” Also, while Herz does
show that once a new user has been partially profiled the method disclosed
predicts if the new user’s interests resemble the known interests of other
users with similar profiles (FF5) as asserted by the Examiner, this does not
meet the claim limitations for “classifying … the consumer … in a
population of consumers who previously used a product in the product
category in connection with a substantially similar substrate” as required for
example in claim 1. Herz has not disclosed classifying the consumer in a
population of consumers who previously used a product in the product
category and who are substantially similar to the consumer (FF6) as claimed.
For these reasons the rejection of claims 1 and 103 under 35 U.S.C. § 102(e)
as anticipated by Herz is not sustained. The rejection of dependent claims 2-
4, 8, and 13-27 which depend from claim 1 is not sustained for these same
reasons.
Appeal 2008-005606
Application 09/981,516
8
The rejection of claims 5-7 under 35 U.S.C. § 103(a) as unpatentable
over Herz and Bieganski is not sustained for the same reasons given above
as the Examiner has not asserted that Bieganski discloses the claim
limitation addressed in the discussion of claims 1 and 103 above.
The rejection of claims 9-12 under 35 U.S.C. § 103(a) as unpatentable
over Herz and Hosken is not sustained for the same reasons given above as
the Examiner has not asserted that Hosken discloses the claim limitation
addressed in the discussion of claims 1 and 103 above.
The rejection of claims 28-29 under 35 U.S.C. § 103(a) as
unpatentable over Herz and Wilmott is not sustained for the same reasons
given above as the Examiner has not asserted that Wilmott discloses the
claim limitation addressed in the discussion of claims 1 and 103 above.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1-4, 8, 13-27, and 103 under 35 U.S.C. § 102(e) as
anticipated by Herz.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 5-7 under 35 U.S.C. § 103(a) as unpatentable over Herz and
Bieganski.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 9-12 under 35 U.S.C. § 103(a) as unpatentable over Herz
and Hosken.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 28-29 under 35 U.S.C. § 103(a) as unpatentable over Herz
and Wilmott.

Appeal 2008-005606
Application 09/981,516
9
DECISON
The Examiner’s rejection of claims 1-29 and 103 is reversed.

REVERSED

hh

Woodcock Washburn LLP
46th Floor
One Liberty Place
Philadelphia, PA 19103