Sundaresan, Neelakantan

Patent Trials and Appeals Board

Apr 23, 2020

11647544 - (D) (P.T.A.B. Apr. 23, 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.
11/647,544 12/28/2006 Neelakantan Sundaresan IP2043.403US1/
EBAY.281159
8893
150601 7590 04/23/2020
Shook, Hardy & Bacon L.L.P.
(eBay Inc.)
2555 Grand Blvd.
KANSAS CITY, MO 64108-2613
EXAMINER
BEKERMAN, MICHAEL
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
04/23/2020 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):
IPDOCKET@SHB.COM
docket.shb@clarivate.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NEELAKANTAN SUNDARESAN

Appeal 2019-001129
Application 11/647,544
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
BRADLEY B. BAYAT, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 appeals from the Examiner’s rejections of claims 1, 4,
6–11, 14–16, 21–27, 29–31, 33–35, and 37–43 under 35 U.S.C. § 101
(Rejection I) and 35 U.S.C. § 103 (Rejection II). We do not sustain either of
these rejections, and, therefore, we REVERSE.2

1 The Appellant is the “applicant” as defined by 37 C.F.R. § 1.42 (e.g., “the
inventor”). “The real party in interest is eBay Inc.” (Appeal Br. 3.)
2 We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
Appeal 2019-001129
Application 11/647,544

2
BACKGROUND
The Appellant’s invention relates to an advertising servicing program
for advertising in an Internet environment. (See Spec. ¶ 3.)
The Appellant’s disclosed advertising strategy involves a person that
possesses certain demographic details; a company that wants to target its
advertisement towards a person having a designated demographic detail;
and a displayer that displays the company’s advertisement to this person
because he/she possesses this designated demographic detail. (See Spec.
¶¶ 18–22.) Thus, the Appellant implements, via computer components, the
commercial interaction that occurs when a company targets its advertisement
towards a person possessing a certain designated demographic detail.3
As the displayed advertisement will “refer” the targeted person to the
advertised company, the displayer can be called the “referrer,” and the
advertised company can be called the “referee.” (See Spec. ¶¶ 26–27.)
In a brick-and-mortar environment, a referrer is aware of a
demographic detail designated by a referee (i.e., the to-be-advertised
company) for targeting purposes. Consequentially, the referrer displays the
company’s advertisement in a manner aligned with this designated
demographic detail. If the advertisement is successful, the targeted person
visits the company’s store (e.g., the store’s street address listed in the

3 “There can be no doubt that television commercials for decades tailored
advertisements based on the time of day during which the advertisement was
viewed” based on a demographic detail of the people watching these
advertisements (Intellectual Ventures I LLC v. Capital One Bank (USA),
729 F.3d 1363,1370 (Fed. Cir. 2015).) “For example, a television channel
might choose to present a commercial for children’s toys during early
morning cartoon programs but beer during an evening sporting event.” (Id.)
Appeal 2019-001129
Application 11/647,544

3
displayed advertisement). When the targeted person arrives at the
company’s store, he/she is greeted by a salesperson, who adapts a sales
presentation based on another apparent demographic detail of the targeted
person.
For example, suppose a referrer is aware that a company selling
design-your-own shirts wants to target its advertisement towards people who
are 17 to 22 years old. The referrer would display the advertisement on a
college campus (e.g., rather than at a retirement community), and a 19-year-
old person would see the displayed advertisement. If the advertisement is
successful, the 19-year-old person visits the company’s store. When the
19-year-old person arrives at the store, he/she is greeted by a salesperson
who adapts a sales presentation based upon various criteria, such as a
person’s gender. For instance, the salesperson presents masculine shirts if
the 19-year-old person is male; and the salesperson presents feminine shirts
if the 19-year-old person is female. (See Spec. ¶¶ 61–64, Fig. 8.)
In an Internet environment, the referrer is aware of the person’s
demographic information (“user profile information”) and displays the
company’s advertisement (“referrer content”) to this person because he/she
has the demographic detail designated by the company. (See Spec. ¶¶ 3–6.)
The advertisement includes a hyperlink (“reference”) to the advertised
company’s website, and, when the advertisement is successful, the targeted
person clicks on this hyperlink and arrives at the company’s website.
According to the Appellant, when the targeted person arrives at the
company’s website, he/she is not greeted with the Internet-equivalent of a
salesperson. (See Spec. ¶¶ 5, 22.) Instead, “the content pages of the
advertisers remain static.” (Id. ¶ 22.) And when “content provided to users
Appeal 2019-001129
Application 11/647,544

4
once a click-through has occurred remains generic,” this “may negatively
impact the conversion rates and the value to be attributed to the
advertisements.” (Id. ¶ 5.)
As indicated above, in an Internet environment, the referrer is aware
of user profile information, and displays the company’s advertisement to a
user because he/she has a designated demographic detail. (See Spec. ¶ 22.)
However, “[a]lthough the user profile information is used to select the type
of advertisement to be placed, the user profile information is not sent to the
systems associated with the advertisements.” (Id. ¶ 22, drawing numerals
omitted.) And, without particular user profile information, the advertised
company cannot adapt its presentation (e.g., webpage) to be “more relevant
to the user.” (Id. ¶ 25.) For example, if the shirt company is unaware of the
19-year-old person’s gender, it cannot choose between a webpage presenting
masculine shirts (if this targeted person is male) and a webpage presenting
feminine shirts (if this targeted person is female). (See id. ¶¶ 61–64, Fig. 8.)
The Appellant discloses a referrer system 80 and a referee system 82
which work in conjunction with each other to provide the advertised
company with the particular demographic detail its needs to adapt a webpage
for presentation to a targeted user. (See Spec. ¶¶ 26–40.)
When the Appellant’s systems 80 and 82 work in conjunction with
each other, the referrer system 80 obtains a user’s user profile information,
and displays referrer content 104 (e.g., on a webpage 106) to the user. (See
Spec. ¶ 46, Figs. 5, 6.) The referrer content 104 includes a reference 102
(e.g., a hyperlink) to the referee system 82. (See Spec. ¶ 28, Fig. 3.) When
the user selects the reference 102 (e.g., clicks on the hyperlink), three
communications occur: 1) the referrer system 80 “advise[s] the referee
Appeal 2019-001129
Application 11/647,544

5
system 82 that certain user profile information relating to [the] user is
available” (id. ¶ 57); 2) the referee system 82 “request[s] only the user
profile information it is able to process or use” (id.); and 3) the referrer
system 80 transmits the requested user profile information “to the referee
system 82 as [an] extended URL” (id. ¶ 56). When the referee system 82
receives the requested user profile information, the referee system 82 uses
this information to create adapted referee content 120 (e.g., a webpage 122),
and the adapted content 120 is presented to the user. (See id. ¶¶ 40, 58–60,
Figs. 3, 7.)
For example, when the targeted 19-year-old person selects the shirt
company’s advertisement: 1) the referrer system 80 advises the shirt
company (the referee system 82) that user profile information is available for
this user; 2) the shirt company requests the user’s gender; and 3) the referrer
system 80 transmits the requested information (the user’s gender) to the shirt
company. (See Spec. ¶¶ 61–64, Fig. 8.) Upon receipt of this requested
information, the user is presented with a webpage that shows masculine
shirts (if the user is male) or is presented with a webpage that shows
feminine shirts (if the user is female). (See id.)
Thus, when the Appellant’s systems 80 and 82 work in conjunction
with each other, three communications occur: 1) a first communication from
the referrer system 80 to the referee system 82; 2) a second communication
from the referee system 82 to the referrer system 80; and 3) a third
communication (via an extended URL) from the referrer system 80 to the
referee system 82. The first communication advises of the availability of
certain information; the second communication requests particular
information (from the available information); and the third communication
Appeal 2019-001129
Application 11/647,544

6
conveys the requested particular information. Additionally, the transmission
of the third communication (i.e., the requested particular information) is
done in response to the user’s selection of the reference 102 in the referrer
content 104, and/or the adapted referee content 120 is presented when the
user accesses the referee system 82.
Consequently, when the Appellant’s systems 80 and 82 work in
conjunction with each other, there are three communications, these three
communications occur in a specific sequence (ordered arrangement), and the
third communication occurs in response to, and/or is followed by, user
interaction with the referee system 82.
ILLUSTRATIVE CLAIMS
1. A system comprising:
a content module comprising one or more processor
devices configured to identify referrer content published by a
referrer system to a user, the referrer content including a
reference to a referee system;
a profile module comprising at least one computer
processor configured to collect user profile information about
the user;
cause communication of a user profile availability
indication from the referrer system to the referee system to
indicate availability of the user profile information for the user,
and
receive a communication from the referee system in
response to the user profile availability indication, the
communication indicating particular user profile information
that is to be transmitted to the referee system;
a contextual provider module implemented by one or
more computer processors configured to generate an extended
universal resource locator (extended URL) based on the
reference and including the particular user profile information
indicated by the communication from the referee system, and
Appeal 2019-001129
Application 11/647,544

7
a publisher module comprising one or more computer
processor devices configured to transmit the extended URL to
the referee system in response to a selection of the reference by
the user.

10. A system comprising:
a user information module comprising at least one
computer processor configured to:
receive from a referrer system a user profile availability
indication that indicates availability of user profile information
for a user to whom referrer content including a reference to a
referee system is published,
in response to the user profile availability indication,
transmit to the referrer system a communication indicating
particular personal details from the user profile information that
are to be transmitted to the referee system, and
receive an extended universal resource locator (extended
URL) containing the particular personal details about the user,
the referrer content including the extended URL of a referee
system;
a URL parser comprising one or more processors
configured to extract the particular personal details about the
user from the extended URL,
a content module configured to adapt referee content
based on the received particular personal details; and
a publisher module configured to present the adapted
referee content to the user when the user accesses the referee
system.

REJECTION I
The Examiner rejects claims 1, 4, 6–11, 14–16, 21–27, 29–31, 33–35,
and 37–43 under 35 U.S.C. § 101 as being directed to a judicial exception
without significantly more. (Non-Final Action 2.) We do not sustain this
rejection.
Appeal 2019-001129
Application 11/647,544

8
Judicial Exceptions
The Patent Act defines subject matter eligible for patent protection as
“any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof.” (35 U.S.C. § 101.)
However, the Supreme Court has “long held” that this provision contains an
important implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” (Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589 (2013).) These three concerns are
“judicially created exceptions to § 101,” or more concisely, “judicial
exception[s].” (McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1311–12 (Fed. Cir. 2016).)
The Alice Test
In Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Supreme
Court set out a two-step test to guard against an attempt to patent a purely
abstract idea. (Alice, 573 U.S. at 217–18.) In Alice step one, a
determination is made as to whether the claim at issue is “directed to” an
abstract idea. (Id. at 218.) If a claim is “not directed to an abstract idea
under step one of the Alice [test], we do not need to proceed to step two.”
(Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).)
More succinctly, “we stop at [Alice] step one.” (Id.)
Thus, if a claim is not “directed to” an abstract idea so as to satisfy
Alice step one, the Alice test for patent eligibility is complete, and the claim
passes muster under 35 U.S.C. § 101.4

4 If the claim at issue is directed to an abstract idea so as to satisfy Alice step
one, the second step of the Alice test must be performed. In Alice step two, a
determination is made as to whether additional elements in the claim
Appeal 2019-001129
Application 11/647,544

9
The 2019 § 101 Guidance
The 2019 Revised Patent Subject Matter Eligibility Guidance (“2019
§ 101 Guidance”) provides us with a two-pronged step (Step 2A) for
analyzing whether a claim is “directed to” an abstract idea so as to satisfy
Alice step one. (See Federal Register, Vol. 84, No. 4, 50 (Jan. 7, 2019).) In
the first prong of Step 2A (Prong One), we determine whether the claim
recites a judicial exception; and, in the second prong of Step 2A (Prong
Two), we determine whether the judicial exception is integrated into a
practical application of the judicial exception.” (Id. at 50.) “If the recited
exception is integrated into a practical application of the exception, then the
claim is eligible at Prong Two” and “[t]his concludes the eligibility
analysis.” (Id. at 54.)5
Analysis
Per the 2019 § 101 Guidance, we begin our analysis with Prong One
of Step 2A, where a determination is made as to whether a claim at issue
“recites” an abstract idea. (2019 § 101 Guidance, Federal Register, Vol. 84,
No. 4, 54.) The Guidance “extracts and synthesizes key concepts identified
by the courts as abstract ideas,” and these concepts include “[c]ertain
methods of organizing human activity,” particularly “fundamental economic
practices,” more particularly, “commercial interactions,” and, even more

“amount[] to significantly more” than the abstract idea itself. (Alice, 573
U.S. at 218.)
5 If it is determined under Step 2A that the claim at issue is directed to an
abstract idea, Step 2B of the 2019 § 101 Guidance must be performed. In
Step 2B attention is given, for the first time, as to whether additional
elements in the claim are well-understood, conventional and/or routine. (See
2019 § 101 Guidance, Federal Register Vol. 84, No. 4, 56.)
Appeal 2019-001129
Application 11/647,544

10
particularly “advertising.” (Id. at 52.) For example, the Federal Circuit has
held that “tailoring information” presented in an advertisement is “an
abstract overly broad concept long practiced in our society.” (Intellectual
Ventures I, 792 F.3d at 1371.)
Independent claim 1 sets forth the collection of demographic
information about a person (“collect user profile information about the
user”); the display of an advertisement to a person’s demographic details
(“referrer content” is published to the user); and a reference to a company in
the advertisement (“the referrer content including a reference”). (Appeal
Br., Claims App.) Thus, claim 1 recites the commercial interaction that
occurs when a referrer targets a company’s advertisement towards a person
possessing a certain designated demographic detail.
Independent claim 10 sets forth knowing a demographic detail about a
person (“particular personal details about the user”), the adaption of a
company’s sales approach to a person based on this known demographic
detail (“adapt referee content” based on “particular personal details”), and
the presentation of this adapted sales approach to this person (“present the
adapted referee content to the user”). Thus, claim 10 recites the commercial
interaction that occurs when a person is greeted by a salesman at a
company’s store, and the salesperson adapts a sales presentation based upon
a perceivable demographic detail of this person.
Consequently, independent claims 1 and 10 recite commercial
interactions that are commonplace in advertising strategies which have been
“long practiced in our society.” (Intellectual Ventures, 792 F.3d at 1371.)
Advertising is a commercial interaction (and/or a fundamental economic
practice), and, therefore, a certain method of organizing human activity that
Appeal 2019-001129
Application 11/647,544

11
constitutes an abstract idea. (See 2019 § 101 Guidance, Federal Register
Vol. 84, No. 4, at 52.)
Thus, independent claims 1 and 10 recite an abstract idea under Prong
One of Step 2A of the 2019 § 101 Guidance, and we proceed to Prong Two
of Step 2A of the Guidance.
In Prong Two of Step 2A of the Guidance, a determination is made as
to “whether the claim as a whole integrates the recited judicial exception
into a practical application of the exception.” (2019 § 101 Guidance,
Federal Register Vol. 84, No. 4, at 54.) “Some elements may be enough on
their own to meaningfully limit an exception, but other times it is the
combination of elements that provide the practical application.” (Id. at 55.)
Thus, “[w]hen evaluating whether an element (or combination of elements)
integrates an exception into a practical application, examiners should give
careful consideration to both the element and how it is used or arranged in
the claim as a whole.” (Id.)
Independent claims 1 and 10 require three communications: 1) a first
communication from the referrer system;6 2) a second communication from
the referee system and/or to the referrer system;7 and 3) a third
communication via an extended URL.8 The Examiner characterizes each of

6 Claim 1 recites “communication of a user profile availability indication
from the referrer system,” and claim 10 recites “receive from a referrer
system.” (Appeal Br., Claims App.)
7 Claim 1 recites “communication from the referee system,” and claim 10
recites “transmit to the referrer system.” (Appeal Br., Claims App.)
8 Claim 1 recites “transmit [an] extended URL,” and claim 10 recites
“receive an extended universal resource locator (extended URL).” (Appeal
Br., Claims App.)
Appeal 2019-001129
Application 11/647,544

12
these three communications as, individually, representing a data-handling
operation that could be done by any general purpose computer (i.e., a
generic computer function performed by a generic computer). (See Non-
Final Action 3–5.) Merely using a computer to perform a task “more
quickly or more accurately” is not a ticket into patent-eligible territory.
(OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
2015).)
Thus, the Examiner explains, on the record, why each of the claimed
communications does not individually integrate the abstract idea
(advertising) into a practical application. (2019 § 101 Guidance, Federal
Register Vol. 84, No. 4, at 55.)
However, it can be “the combination of elements that provide the
practical application,” which is why “careful consideration” must be given to
how an element “is used or arranged in the claim as a whole.” (2019 § 101
Guidance, Federal Register Vol. 84, No. 4, at 55.) Indeed, the Federal
Circuit has held that its possible for a claim to a computer-implemented
advertising system to pass the Alice test if it recites limitations, which, when
“taken together as an ordered combination,” yield a result “that overrides the
routine and conventional sequence of events ordinarily triggered by the click
of a hyperlink.” (DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1258 (Fed. Cir. 2014).)
Independent claims 1 and 10 require: 1) the first communication to
advise on the availability of certain information;9 2) the second

9 Claim 1 recites “a user profile availability indication” that “indicate[s]
availability of the user profile information for the user,” and claim 10 recites
Appeal 2019-001129
Application 11/647,544

13
communication to request particular information (from the available
information) needed by the referee system;10 and 3) the third communication
(via the extended URL) to transmit the requested particular information.11
Additionally, the transmission of the third communication (i.e., the requested
particular information) is done in response to the user’s selection of a
reference in the referrer content (published by the referrer system), and the
referee content (adapted by the referee system) is presented when the user
accesses the referee system.12
As such, independent claims 1 and 10 do not just require three
communications, they require the three communications to occur in a
specific sequence; and they require the third communication to occur in
response to, or to be followed by, user interaction with the referee system.

“a user profile availability indication that indicates availability of user
profile information for [the] user.” (Appeal Br., Claims App.)
10 Claim 1 recites “particular user profile information that is to be
transmitted to the referee system,” and claim 10 recites “indicating particular
personal details from the user profile information that are to be transmitted
to the referee system.” (Appeal Br., Claims App.) Claims 1 and 10 also
both require the second communication to be “in response to” the first
communication. (Id.)
11 Claim 1 recites that the extended URL “includ[es] the particular user
profile information indicated by the communication from the referee
system,” and claim 10 recites that the extended URL “contain[s] the
particular personal details about the user.” (Appeal Br., Claims App.)
12 Claims 1 and 10 recite “referrer content including a reference to the
referee system.” (Appeal Br., Claims App.) Claim 1 recites “transmit the
extended URL” (the third communication) to the referee system “in response
to a selection of the reference by the user.” (Id.) Claim 10 recites “present
the adapted referee content to the user when the user accesses the referee
system.” (Id.)
Appeal 2019-001129
Application 11/647,544

14
The Examiner does not discuss this ordered arrangement of the
communications and/or its relationship to the user’s interaction with the
referee system. (See Non-Final Action 2–6; Answer 2–9.)13
Thus, it is not established, on the record before us, that independent
claims 1 and 10 fail to integrate a recited abstract idea (i.e., advertising) into a
practical application under Prong Two of Step 2A. As such, we need not
proceed to Step 2B of the 2019 § 101 Guidance, and “[t]his concludes the
eligibility analysis.” (Id. at 54.)14
Summary
We do not sustain the Examiner’s rejection of independent claims 1
and 10 under 35 U.S.C. § 101. The Examiner’s rejection of the rest of the
independent claims on appeal (claims 16, 27, 29, 31, 40, and 42) are made in
tandem with the rejection of independent claims 1 and 10. (See Non-Final
Action 2–5.) And the Examiner’s further findings and determinations with
respect to the dependent claims do not compensate for the shortcomings in
the rejections of the independent claims. (See id.)

13 The Examiner’s discussion of the claims’ “additional elements” appears to
be done in the context of the second step of the Alice test. Alice step two
requires the consideration of the claims’ additional elements both
“individually” and “as an ordered combination.” (Alice, 573 U.S. at 217.)
There is no mention of the “ordered combination” of the claims’ additional
elements in the Examiner’s discussion.
14 Put another way, the record does not establish that independent claims 1
and 10 are “directed to” an abstract idea so as to satisfy Alice step one, and
so we need not proceed to Alice step two.
Appeal 2019-001129
Application 11/647,544

15
REJECTION II
The Examiner rejects claims 1, 4, 6–11, 14–16, 21–27, 29–31, 33–35,
and 37–43 under 35 U.S.C. § 103 as unpatentable over Thomas15 and
Flake.16 (Non-Final Action 6.) We do not sustain this rejection.
Obviousness
A combination that “simply arranges old elements with each
performing the same function it had been known to perform” is “obvious”
if it “yields no more than one would expect from such an arrangement.”
(KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).) However, in
order for a claim to be unpatentable over such a combination, the proposed
arrangement of the old elements must possess each and every limitation
required by the claim. (See id. at 399, 423.) Consequently, in order for us
to properly evaluate an examiner’s obviousness rejection based on this
rationale, it must be apparent, from the record, how the “old elements” are
arranged in the examiner’s proposed combination of the prior art.
Analysis
Independent claims 1 and 10 set forth systems involving a “referee
system,” a “referrer system,” and “referrer content including a reference to
[the] referee system.” (Appeal Br., Claims App.) The Examiner finds that
Thomas discloses a referee system, a referrer system, and referrer content
including a reference to the referee system. (See Non-Final Action 6.)
Thomas discloses a networked computer system 200 comprising a
first server 204 and a second server 206. (See Thomas 5:56–65.) The first

15 US 6,128,663; issued Oct. 3, 2000.
16 US 2008/0004949 A1; published Jan. 3, 2008.
Appeal 2019-001129
Application 11/647,544

16
server 204 displays a first page 102 on the user’s computer 212, and, when
the user selects a button 108 on the first page 102, the second server 206
displays a second page 104 on the user’s computer 212. (See id. at 6:15–27,
Fig. 1.) When the user selects a button 110 on the second page 104, the first
server 204 redisplays the first page 102. (See id. at 6:18–27, Fig. 1.) In
other words, the second page 104 includes a reference (link) to the first
server 204. (See id. at 5:42–45.)
In the Examiner’s rejection, Thomas’s first server 204 is the referee
system, Thomas’s second server 206 is the referrer system, and Thomas’s
second page 104 is the referrer content. (See Non-Final Action 6.)
Independent claims 1 and 10 require three communications: 1) a first
communication from the referrer system; 2) a second communication from
the referee system and/or to the referrer system; and 3) a third communication
via an extended URL. Claims 1 and 10 require the extended URL to include
“particular user profile information” and/or to contain “particular person
details about the user.” (Id.) The Examiner finds that Thomas discloses an
extended URL “including user profile information” and/or “containing
personal details about a user.” (Non-Final Action 6, 8.)
As indicated above, in Thomas’s system 200, when the user selects a
button 108 on the first page 102, the second server 206 displays the second
page 104 on the user’s computer 212. (See Thomas 6:18–27.) “Through
user interaction” with the second server 206 or the second page 104,
“demographic information about the user is obtained.” (Id. at 6:24–27.)
“Thereafter,” when the user selects the button 110 on the second page 104,
“a page request” for the first page 102 is sent to the first server 204, and this
page request “provides demographic information” to the first server 204.
Appeal 2019-001129
Application 11/647,544

17
(Id. at 6:27–35.) “The [first] server 204 that receives the demographic
information,” uses this demographic information to customize “[a] banner
advertising region 106” on the first page 102. (Id. at 6:35–43.)
According to the Examiner, Thomas’s second server 206 transmits,
and Thomas’s first server 204 receives, the demographic information via an
extended URL. (See Non-Final Action 6.) However, the Examiner seems to
acknowledge that, prior to the transmission/receipt of this extended URL,
Thomas’s first server 204 and Thomas’s second server 206 do not
communicate with each other. (See id. at 6–7.)
Thus, independent claims 1 and 10 require three communications,
only the third of which is disclosed by Thomas. Independent claims 1
and 10 also require the second communication (from the referee system
and/or to the referrer system) to request what particular information is
needed by the referee system. The Examiner finds that “Flake teaches
receiving from a first system a communication indicating particular user
profile information that is to be transmitted to a second system, and sending
that particular user profile information indicated by the communication from
the second system.” (Non-Final Action 6.)
Flake discloses methods for managing “user profile information,” in
which a “user controls the amount of information exposed to the entity.”
(Flake ¶ 37.) In one method, the user “initiates interaction” with an online
merchant, and the merchant “must coordinate” with an independent
repository to gain access to the user profile information. (Id. ¶ 38.) In
another method, “an entity requests access to profile information,” the user
exposes an “amount of profile information” to the entity, and “the entity
Appeal 2019-001129
Application 11/647,544

18
responds with an offer of enticement to expose more profile information,”
(Id. ¶ 39)
The Examiner determines that it would have been obvious, in view of
the teachings of Flake, to modify Thomas’s system 200 “to allow a request
for particular profile information.” (Non-Final Action 6.) The Examiner
explains that “the referrer and referee systems are disclosed in the Thomas
reference,” and “[t]he Flake reference is used for the details surrounding
obtaining of user profile information.” (Answer 9.) And the Examiner
explains that combining Thomas’s system 200 with Flake’s teaching “to
allow a request for particular profile” is “merely a combination of old
elements.” (Non-Final Action 6.)
We do not necessarily disagree with the Examiner that Flake teaches
allowing a request for particular profile information. Additionally, we do
not necessarily disagree with the Examiner that one of ordinary skill in the
art would appreciate that Thomas’s system 200 could be modified to include
a request for particular user profile information.
However, the trouble with the Examiner’s rejection is that it is not
apparent, from the record before us, how these elements (i.e., Thomas’s
system 200 and a request for particular user profile information) are
arranged in the Examiner’s proposed combination of the prior art.
Independent claims 1 and 10 not only require three communications,
they require the second communication to be received from referee system,
and/or transmitted to referrer system. The Examiner does not explain why,
in the proposed combination of the prior art, the request for particular
information would be received from Thomas’s first server 204 and/or
transmitted to Thomas’s second server 206. (See Non-Final Action 6–9.)
Appeal 2019-001129
Application 11/647,544

19
As pointed out by the Appellant (see Appeal Br. 35–36), Flake does not
disclose a request for particular information in the context of a referrer
system, a referee system, and referrer content that includes a reference to the
referee system. (See Flake ¶¶ 37–39, 58.)17
Thus, it is not established, on the record before us, that independent
claims 1 and 10 would have been unpatentable over Thomas and Flake.
Summary
We do not sustain the Examiner’s rejection of independent claims 1
and 10 under 35 U.S.C. § 103. The Examiner’s rejection of the rest of the
independent claims on appeal (claims 16, 27, 29, 31, 40, and 42) are made in
tandem with the rejection of independent claims 1 and 10, and so they fall
therewith. (See Non-Final Action 6–9.) And the Examiner’s further
findings and determinations with respect to the dependent claims do not
compensate for the shortcomings in the rejections of the independent claims.
(See id. at 7–10.)

17 Moreover, independent claims 1 and 10 require the three communications
to occur in a specific sequence, and specifically require the second
communication being in response to the first communication, and followed by
the third communication. As such, the Examiner would need to additionally
explain why, in Thomas’s modified system 200, the first server 204’s request
to the second server 206 for particular information would occur in this
sequence.
Appeal 2019-001129
Application 11/647,544

20
CONCLUSION
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4, 6–11,
14–16,
21–27,
29–31,
33–35,
37–43
§ 101

Eligibility 1, 4, 6–11,
14–16,
21–27,
29–31,
33–35,
37–43
1, 4, 6–11,
14–16,
21–27,
29–31,
33–35,
37–43
§ 103

Thomas, Flake

1, 4, 6–11,
14–16,
21–27,
29–31,
33–35,
37–43
Overall
Outcome
1, 4, 6–11,
14–16,
21–27,
29–31,
33–35,
37–43

REVERSED