Ex Parte WestphalDownload PDFPatent Trial and Appeal BoardFeb 2, 201613091919 (P.T.A.B. Feb. 2, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/091,919 04/21/2011 Geoffry A. Westphal 34018 7590 02/04/2016 GREENBERG TRAURIG, LLP 77 WEST WACKER DRIVE SUITE 3100 CHICAGO, IL 60601-1732 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. 31083.33US1 5514 EXAMINER WU,YICUN ART UNIT PAPER NUMBER 2158 NOTIFICATION DATE DELIVERY MODE 02/04/2016 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): j arosikg@gtlaw.com chiipmail@gtlaw.com escobedot@gtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte GEOFFRY A. WESTPHAL 1 Appeal2014-004218 Application 13/091,919 Technology Center 2100 Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and JAMES W. DEJMEK, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-17, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies W.W. Grainger, Inc. as the real party in interest. App. Br. 2. Appeal2014-004218 Application 13/091,919 STATEMENT OF THE CASE Introduction Appellant's invention is directed to "providing personalized search results wherein the search results are personalized by using opt-out information that is associated with direct marketing materials sent to a user, such as emails." Spec. 3. Claim 1, reproduced below with the disputed limitation emphasized in italics, is representative of the claimed subject matter: 1. A computer-readable media embodied in a non-transient, physical memory device having stored thereon computer executable instructions for providing personalized search results, the instructions performing steps comprising: sending to a user a direct marketing email having one or more associated opt-out elements; storing within a database information related to the user's interaction with the one or more opt-out elements associated with the direct marketing email; and in response to a search request submitted to a search engine by the user, using the information related to the user's interaction with the one or more opt-out elements associated with the direct marketing email to inhibit inclusion within the search results as provided by the search engine of one or more items. The Examiner's Rejections The Examiner made the following rejections: 1. Claims 1--4, 6-10, and 12-17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Huynh et al. (US 8,296,378 B2; Oct. 23, 2012) ("Huynh") and Bostock (US 8,312,009 Bl; Nov. 13, 2012). Final Act. 2-8. 2 Appeal2014-004218 Application 13/091,919 2. Claims 5 and 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Huynh, Bostock, and Wendkos et al. (US 7,640,322 B2; Dec. 29, 2009) ("Wendkos"). Final Act. 8-9. Issue on Appeal Did the Examiner err in finding the combination of Huynh and Bostock teaches or suggests "in response to a search request submitted to a search engine by the user, using the information related to the user's interaction with the one or more opt-out elements associated with the direct marketing email to inhibit inclusion within the search results as provided by the search engine of one or more items" (hereinafter, "the disputed limitation"), as recited in independent claim 1? ANALYSIS2 We disagree with Appellant's contentions regarding the Examiner's rejections of the claims. We adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 2-9), and (2) the reasons set forth by the Examiner in the Answer in response to arguments made in Appellant's Appeal Brief (Ans. 3---6). We highlight and address specific findings and arguments below. Appellant contends Huynh does not disclose the disputed limitation. App. Br. 4. In particular, Appellant argues Huynh's receiving device 304 2 Throughout this opinion we have considered the Appeal Brief filed July 2, 2013 ("App. Br."); the Reply Brief filed January 22, 2014 ("Reply Br."); the Office Action mailed on March 14, 2013 from which this Appeal is taken ("Final Act."); and the Examiner's Answer mailed on November 27, 2013 ("Ans."). 3 Appeal2014-004218 Application 13/091,919 does not provide "both information related to a user's interaction with one or more opt-out elements associated with a direct marketing email and a 'search request'" to Huynh's server. App. Br. 5 (citing Huynh 7:5-39, 10:63-11:12, 11:15-38). Appellant argues Huynh's server "only receives from the 'receiving device' user interactions with one or more 'opt-out' or 'opt-in' elements (i.e., there is no further 'query' being submitted to the server by the 'receiving device')." App. Br. 6. Appellant argues Huynh's server only receives a request from sending device 302 to forward a direct marketing email that was created at sending device 302 but fails to teach submitting a search request to Huynh's server (i.e., the search engine) as required by claim 1. App. Br. 6. We find Appellant's contention unpersuasive of Examiner error. Appellant's argument that Huynh is deficient does not address the Examiner's finding that "Bostock Fig. 1 is relied upon to teach 'search request' (i.e. query) and 'search results' too (i.e. response) (fig. 1, item 113 and 115)." Ans. 5. In the absence of sufficient evidence or technical reasoning in a rebuttal, we agree with the Examiner's findings and adopt them as our own. Appellant further contends the Examiner has not established a prima facie case of obviousness. Reply Br. 2. In particular, Appellant argues the Examiner's "conclusions [from the Final Action] are unsupported by any facts and/or arguments and simply fail to provide a clear articulation of the reason( s) why the claimed invention would have been obvious over the relied upon combination of Huynh and Bostock." Reply Br. 2 (quoting "[i]t would have been obvious to a person having ordinary skill in the art at the time the invention was made to have modified Huynh by the teaching of 4 Appeal2014-004218 Application 13/091,919 Zhang ... " from Final Act. 3 ). Appellant further argues the Examiner's "conclusory assertion [from the Answer] also fails to be supported by any facts and/or arguments and again simply fails to provide a clear articulation of the reason( s) why the claimed invention would have been obvious over the combination of Huynh and Bostock." Reply Br. 2-3 (quoting Ans. 4). We are not persuaded by Appellant's arguments. The Examiner rejected claims 1--4, 6-10, and 12-17 under 35 U.S.C. § 103(a) as being unpatentable over Huynh and Bostock (Final Act. 2-8), and Appellant addressed the merits of the rejection of these claims with respect to Huynh and Bostock (App. Br. 4--8). Thus, we find the Examiner's typographical error in a single, mistaken reference to Zhang (a reference not relied upon in any rejection) rather than Bostock in providing rationale for combining the references to be harmless. For purposes of the appeal, we understand the Examiner's statement of obviousness to be "[i]t would have been obvious to a person having ordinary skill in the art at the time the invention was made to have modified Huynh by the teaching of [Bostock] .... " Final Act. 3. Further, we find the Examiner has set forth an articulated reasoning with some rational underpinning to combine the references, i.e., "for accurately ranking search results based on user preferences as taught by Bostock." Final Act. 3; see also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441F.3d977, 978 (Fed. Cir. 2006)). Appellant further contends "that any conclusion of obviousness based upon the teachings of Huynh and Bostock could only be arrived at through the impermissible use of hindsight reasoning." Reply Br. 4. In particular, the combination of Huynh and Bostock, "[b ]y way of example only, ... would only function to provide ranked search results in response to a search 5 Appeal2014-004218 Application 13/091,919 query while continuing to 'block' the sending of direct marketing emails from a 'sending device' to a 'receiving device."' Reply Br. 3--4. See also App. Br. 7. We are not persuaded by Appellant's arguments. Any judgment on obviousness is ... necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). See also Radix Corp. v. Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989) ("[A]ny obviousness inquiry necessarily involves some hindsight."). Furthermore, to the extent Appellant argues the combination of teachings would not result in the claimed invention (App. Br. 7; Reply Br. 3), we note "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." KSR, 550 U.S. at 421. In particular, all of the features of one reference need not be bodily incorporated into the other, but consideration should be given to what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art (see In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Therefore, contrary to Appellant's contention, we find the Examiner has articulated reasoning with rational underpinnings sufficient to justify the legal conclusion of obviousness, as discussed supra. Final Act. 3. For the above reasons, we are not persuaded the Examiner erred by finding the combination of Huynh and Bostock teaches or suggests the disputed limitations of independent claims 1, 7, and 12, and sustain the 6 Appeal2014-004218 Application 13/091,919 rejection of these independent claims. Appellant does not separately argue dependent claims 2---6, 8-11, and 13-17 and, thus, for the same reasons as in claims 1, 7, and 12, we sustain the rejection of those dependent claims. DECISION The Examiner's decision to reject claims 1-17 is affirmed. 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(±). AFFIRMED 7 Copy with citationCopy as parenthetical citation