Geoff Baum et al.

Patent Trials and Appeals Board

Jun 19, 2020

13039266 - (D) (P.T.A.B. Jun. 19, 2020)

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.
13/039,266 03/02/2011 Geoff Baum B1322 1537
108982 7590 06/19/2020
SBMC
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
COPPOLA, JACOB C
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/19/2020 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):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFF BAUM and WALTER CHANG
Appeal 2020-000257
Application 13/039,266
Technology Center 3600
BeforeERIC S. FRAHM, LARRY J. HUME, and
LINZY T. MCCARTNEY,Administrative Patent Judges.
HUME,Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1, 3–4, 22–26, 28–33, and 35–40,
which are all rejections pending in the application. Appellant has canceled
claims 2, 5–21, 27, and 34. See Appeal Br. 50 et seq. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Adobe Inc. Appeal
Br. 2.
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Application 13/039,266

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STATEMENT OF THE CASE2
The claims are directed to a persistent metadata for a user-controlled
policy of personal data disclosure and usage for online advertising. See
Spec. (Title). In particular, Appellant’s disclosed embodiments and claimed
invention “generally relate[] to advertising [and m]ore particularly, the
disclosure relates to a user-controlled policy for advertising.” Spec. ¶ 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
Appeal (emphasis added to limitations contested for lack of written
description support):
1. A computer-readable storage memory device for
protecting user information of users to which micro-segmented
electronic offers are targeted, the computer-readable storage
memory comprising a compliance module stored as instructions
that are executable and, responsive to execution of the
instructions by a computing device, the computing device
performs operations of the compliance module comprising to:
receive the user information and a user policy from a
client device of a user by the computing device, the user policy
defined according to user input received via the client device
and indicating a type of offer that the user is interested in
receiving from a plurality of offers, the user policy further
defining user policy criteria for disclosure of the user
information and a price, the user policy criteria for disclosure
comprising permission to receive offers that are micro-
segmented, and the price defined according to the user input

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Feb. 28, 2019); Reply Brief (“Reply Br.,” filed Oct. 14, 2019); Examiner’s
Answer (“Ans.,” mailed Aug. 27, 2019); Final Office Action (“Final Act.,”
mailed Oct. 11, 2018); and the original Specification (“Spec.,” filed
Mar. 2, 2011).
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received via the client device indicating the price that the user
will be paid for the disclosure of the user information;
generate metadata for communication to a micro-
segmentation system, the metadata persisting the received user
policy and the user policy criteria;
store the user information and the generated metadata
associated with the user in a computer store of the computing
device;
communicate the user information and the metadata that
is associated with the user from the computing device to the
micro-segmentation system that protects the user information
with a digital rights management system that implements the
user-defined policy to protect the user information;
based on the micro-segmentation system determining
with a natural language processing (NLP) technique that the
user information matches a set of key discriminating features of
a micro-segment targeted by a campaign, receive the offer for
the user over the network from the micro-segmentation system
by the computing device, the offer including offer data that
indicates a description of offer content and an offer criterion
indicating the micro-segment, the set of key discriminating
features including a size of the micro-segment;
compare the offer criterion to the user policy criteria, by
the computing device, to validate that the offer criterion
complies with the user policy criteria in the persisted metadata
from the computer store; and
communicate the received offer by the computing device,
to the client device of the user based on the validation that the
offer criterion complies with the user policy criteria in the
persisted metadata from the computer store.
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REJECTION3
Claims 1, 3, 4, 22–26, 28–33, and 35–40 stand rejected under pre-AIA
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Final Act. 8.4
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 14–17) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the
written-description rejection of claims 1, 3, 4, 22–26, 28–33, and 35–40 on
the basis of representative claim 1.5
ISSUE
Appellant argues (Appeal Br. 14–17; Reply Br. 2–7) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 112, first paragraph, as lacking
written description support, is in error. These contentions present us with
the following issue:

3 The Examiner withdrew the § 101 subject matter eligibility rejection and
the § 103 obviousness rejection of claims 1, 3, 4, 22–26, 28–33, and 35–40.
Ans.
4 Although the Examiner provides alternative bases for rejection under pre-
AIA and AIA statutes (Final Act. 8), based upon the filing date of March 2,
2011, this application falls under pre-AIA provisions of Title 35 U.S.C.
5 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Did the Examiner err in finding limitation of “based on the micro-
segmentation system determining with a natural language processing (NLP)
technique that the user information matches a set of key discriminating
features of a microsegment targeted by a campaign, receive the offer for the
user over the network from the micro-segmentation system by the
computing device,” as recited in claim 1, lacks written description support?
PRINCIPLES OF LAW
The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he level of detail
required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology.” Id.; cf. U.S. v. Telectronics, Inc., 857 F.2d 778,
785 (Fed. Cir. 1988) (“The test of enablement is whether one reasonably
skilled in the art could make or use the invention from the disclosures in the
patent coupled with information known in the art without undue
experimentation.”).
However, “actual ‘possession’ or reduction to practice outside of the
specification is not enough. Rather, . . . it is the specification itself that must
demonstrate possession.” Ariad, 598 F.3d at 1352; see also PowerOasis,
Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306-07 (Fed.Cir.2008)
(explaining that § 112, first paragraph, “requires that the written description
actually or inherently disclose the claim element”). “[I]t is not a question of
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whether one skilled in the art might be able to construct the patentee’s
device from the teachings of the disclosure. . . . Rather, it is a question
whether the application necessarily discloses that particular device. . . . A
description which renders obvious the invention for which an earlier filing
date is sought is not sufficient.” Lockwood v. American Airlines, Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533,
536 (CCPA 1963)).
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 1, 3,
4, 22–26, 28–33, and 35–40 and, unless otherwise noted, we incorporate by
reference herein and adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken, and (2) the
reasons and rebuttals set forth in the Examiner’s Answer in response to
Appellant’s arguments. We highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.
The Examiner finds the Specification does not clearly describe the
limitation “based on the micro-segmentation system determining with a
natural language processing (NLP) technique that the user information
matches a set of key discriminating features of a micro-segment targeted by
a campaign.” Final Act. 8 (emphasis added).
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Appellant contends the Specification in paragraphs 28 through 30
provides “at least implicit support, if not express support” for the disputed
limitation of claim 1. Appeal Br. 14. In particular, Appellant argues “[i]n
relation to ‘incrementally and continuously’ updating ‘memberships within
micro-segments,’ the specification at ¶[0028] describes that ‘intentional
semantics may be automatically detected and extracted utilizing behavioral
and natural language processing ("NLP") information.’” Appeal Br. 15.
The full text of paragraph 28 of the Specification reads as follows:
Further, membership within micro-segments may be
incrementally and continuously updated within micro-
segments. In addition, intentional semantics may be
automatically detected and extracted utilizing behavioral and
natural language processing (“NLP”) information.
Spec. ¶ 28 (emphasis added). This is the only mention of NLP processing in
the Specification.
In response, the Examiner finds:
The term “natural language processing” is recited once in
Appellants’ specification. Appellants refer to the one recitation
in their argument (App. Br. 15). Particularly, Appellants’
specification discloses “intentional semantics may be
automatically detected and extracted utilizing behavioral and
natural language processing (‘NLP’) information” (Spec.
[0028]).
First, the Examiner notes that while the above disclosure
mentions “natural language processing [ ] information”
(emphasis added) there is no mention of a “natural language
processing (NLP) technique” (emphasis added), as recited by
the claims. On this basis alone, the claims contain new matter in
the form of a “[NLP] technique” found nowhere in Appellants’
16 original disclosure, and therefore the new matter rejection
should be sustained.
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Second, as discussed in further detail below, the
Examiner notes that the function associated with NLP as
discussed in Appellants’ specification is not the function
associated with NLP as recited by the claims, which again
results in the claims containing new matter.
Particularly, the function associated with NLP as
discussed in Appellants’ specification is “automatically
detect[ing] and extract[ing]” “intentional semantics” (Spec. id.),
where the function is performed by “utilizing behavioral and
natural language processing (‘NLP’) information” (Spec. id.;
emphasis added). This is not the function added to the claims
via amendment.
Ans. 3–4.
Thus, the distinction the Examiner draws is between use of NLP
information, and techniques to obtain that information for application in a
particular situation, i.e., the Specification only identifies and supports use of
behavioral and NLP information to automatically detect and extract
intentional semantics while, in contrast, the claim recites conditionally
“receiv[ing] the offer for the user over the network from the micro-
segmentation system by the computing device” in response to “determining
with a natural language processing (NLP) technique that the user
information matches a set of key discriminating features of a microsegment
targeted by a campaign,” as recited in claim 1 (emphasis added), and as
similarly recited in each of independent claims 24 and 31. We see no
explicit or implicit disclosure of using NLP information for matching
purposes.
Appellant responds by alleging:
Appellant submits that the capability to perform natural
language processing to produce information certainly supports
use and/or possession of a “natural language processing (NLP)
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technique,” as claimed. Appellant also submits that use of the
term “technique,” rather than simply reciting “natural language
processing (NLP),” is not an addition of new subject matter as
alleged by the Examiner. The Examiner also alleges that the
claims contain new matter because the function associated with
NLP, as discussed in Appellant’s specification, is not the
function recited by the claims (Examiner’s Answer, p. 3).
Appellant submits that the claimed feature is not new matter as
alleged by the Examiner
Reply Br. 3.
Thus, Appellant argues that the use of NLP information necessarily
(and implicitly) supports disclosure of a technique for determining or
obtaining such NLP information. However, Appellant does not cite to any
disclosure of actually using a NLP technique (or NLP information) to carry
out the functions claimed, in particular, the function of “determining . . . that
the user information matches a set of key discriminating features of a
microsegment targeted by a campaign,” as recited in claim 1.
We are not persuaded by Appellant’s argument, and agree with the
Examiner’s finding that the Specification’s disclosure of using behavioral
and NLP information to “detect and extract intentional semantics” does not
provide sufficient explicit or implicit support for the conditional recitation of
“based on the micro-segmentation system determining with a natural
language processing (NLP) technique,” “receiv[ing] the offer for the user” in
response to determining that “the user information matches a set of key
discriminating features of a microsegment targeted by a campaign,” as
recited in claim 1. See Ans. 2 et seq.
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We agree with the Examiner because we see no support in the
originally-filed Specification for using NLP information or techniques to
perform the recited matching function.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s factual findings in support of a
determination that the disputed limitation lacks written description support.
Accordingly, we sustain the Examiner’s written description rejection
of independent claim 1, and grouped claims 3–4, 22–26, 28–33, and 35–40
which fall therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–7) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSION6
The Examiner did not err with respect to the written description
rejection of claims 1, 3, 4, 22–26, 28–33, and 35–40 under pre-AIA 35
U.S.C. § 112, first paragraph, and we sustain the rejection.

6 In the event of further prosecution, we invite the Examiner’s
reconsideration of the subject matter eligibility of the claims under the
USPTO’s Revised Guidance concerning the application of § 101. See 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 2019) (“Revised Guidance”) (https://www.govinfo.gov/content/
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Application 13/039,266

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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
1, 3, 4, 22–26,
28–33, 35–40
§ 112, ¶ 1
(pre-AIA),
Written
Description
1, 3, 4, 22–26,
28–33, 35–40
FINALITY AND RESPONSE
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). See 37
C.F.R. § 41.50(f).
AFFIRMED

pkg/FR-2019-01-07/pdf/2018-28282.pdf). All USPTO personnel are, as a
matter of internal agency management, expected to follow the guidance.”
Id. at 51; see also October 2019 Update at 1 (October 2019 Update: Subject
Matter Eligibility). Although the Board is authorized to reject claims under
37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects
not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02.