Ex parte Selinger

• Decision Date: 18 May 2020
• Docket Number: Application 12/012,Appeal 2019-002308,280
• Parties: Ex parte DAVID SELINGER, TYLER KOHN, MICHAEL DeCOURCEY, SUNDEEP AHUJA, JAMES OSIAL, and ALBERT SUNWOO Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte DAVID SELINGER, TYLER KOHN, MICHAEL DeCOURCEY, SUNDEEP AHUJA, JAMES OSIAL, and ALBERT SUNWOO Technology Center 3600

Appeal 2019-002308

Application 12/012, 280

United States Patent and Trademark Office, Patent Trial and Appeal Board

May 18, 2020

FILING DATE: 02/01/2008

Before JUSTIN BUSCH, CATHERINE SHIANG, and JASON J. CHUNG, Administrative Patent Judges.

DECISION ON APPEAL

BUSCH, Administrative Patent Judge.

Appellant^[1] appeals under 35 U.S.C. § 134(a) from a Non-Final Rejection of claims 1-19. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b).

We affirm.

CLAIMED SUBJECT MATTER

Appellant's disclosure generally relates to "providing targeted content, such as advertising, by analyzing the context in which the content is to be provided in light of known attributes of the content available to be provided and the one or more recipients of the content." Spec. ¶ 1, Abstract. Claims 1, 11, and 16 are independent claims, and claim 1 is reproduced below:

1. A computer-implemented process comprising

obtaining, by a configured computer system, a selection model that includes a plurality of data sets identifying popular products available from a plurality of retailers and includes a rule set for identifying non-competitive advertisements

obtaining, by the configured computer system, a user model that includes user-specific activity data regarding user behavior of a specific user

receiving, by the configured computer system, a request to provide electronic advertising for the specific user along with other information from an originating retailer, wherein the other information is related to one or more products available from the originating retailer, and wherein the configured computer system is operated by an operator distinct from the originating retailer

selecting, by the configured computer system and in response to the received request, personalized non-competitive electronic advertising for the specific user from one or more other retailers of the plurality of retailers who are distinct from the originating retailer, the selecting including using the selection model and the user model to determine advertisements that are relevant to the specific user and including using the rule set of the selection model to identify at least one of the determined advertisements that are for products available from the one or more other retailers and that are non-competitive for the originating retailer, the products available from the one or more other retailers being distinct from the one or more products available from the originating retailer;

formatting, by the configured computer system, one or more of the identified advertisements in an electronic format that appears to be from the originating retailer; and

initiating presentation to the specific user of the formatted one or more identified advertisements along with the other information from the originating retailer, the initiating of the presentation including providing, by the configured computer system, the formatted one or more identified advertisements in the electronic format.

REJECTIONS

Claims 1-19 stand rejected under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement. Non-Final Act. 2-3.

Claims 1-19 stand rejected under 35 U.S.C. § 101 as being directed to patent-in eligible subject matter. Non-Final Act. 4-7.

Claims 1-3, 5-8, 10-14, and 16-19 stand rejected under 35 U.S.C. § 103 as being obvious in view of Barton (US 2009/0192888 A1; July 30, 2009) and Ross (US 6, 629, 135 B1; Sept. 30, 2003). Non-Final Act. 8-12.^[2]

Claim 4 stands rejected under 35 U.S.C. § 103 as being obvious in view of Barton, Ross, and Official Notice. Non-Final Act. 13.

Claims 9 and 15 stand rejected under 35 U.S.C. § 103 as being obvious in view of Barton, Ross, and Nayfeh (US 7, 747, 676 B1; June 29, 2010). Non-Final Act. 13-14.

ANALYSIS

Rejection under 35 U.S.C. § 112, First Paragraph

The Examiner rejects claims 1-19 under 35 U.S.C. § 112, first paragraph for failing to comply with the written description requirement. Non-Final Act. 2-3. Specifically, the Examiner finds the Specification does not provide written description support for three clauses: (1) "formatting, by the configured computer system, one or more of the identified advertisements in an electronic format that appears to be from the originating retailer," (hereinafter "formatting step") as recited in claim 1 and commensurately recited in claims; (2) "generating the selection model using a feedback model," as recited in claim 7 and commensurately recited in claim 13[3; and (3) "wherein the selecting of the personalized non-competitive electronic advertising for the specific user includes using a weighted scoring system identifying correlations in the user-specific activity data," as recited in claims 9 and 15. Non-Final Act. 3; Ans. 5-6.

With respect to the formatting step, the Examiner finds that, although the Specification supports communicating or providing an advertisement so that it appears to have been sent by the originating retailer, the Specification does not support formatting an advertisement in a format that appears to be from the originating retailer. Non-Final Act. 3 (citing Spec. ¶¶ 31, 32, 120, 122); Ans. 5-6 (citing Spec. ¶ 32). More specifically, the Examiner finds the Specification supports, for example, sending an email that appears to be from one retailer instead of another. Ans. 6.

Appellant argues Figure 9 and the accompanying description, both of which disclose "communicating the electronic advertising to the users such that each advertisement appears to have been sent by the respective originating retailer," support the recited formatting step. Appeal Br. 32 (quoting ¶ 134, Fig. 9 (it em 960) (emphasis omitted)). Appellant also contends the Specification supports the formatting step because it discloses formatting an advertisement into an electronic format and providing the identified advertisements in an electronic format. Appeal Br. 32-33 (quoting Spec. ¶¶ 103, 104, 117, ^[4] 121). Finally, Appellant asserts the originally filed claims support the formatting limitation as currently recited. Appeal Br. 33; see Spec. 41 (originally filed claim 1 reciting "providing in an electronic format one or more . . . advertisements . . . wherein the provided electronic format is affiliated with an originating retailer" and originally filed claim 2 additionally reciting "providing in an electronic format includes providing on a website").

To satisfy the written description requirement, the disclosure must reasonably convey to ordinarily skilled artisans that Appellant possessed the claimed invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Specifically, the test requires "an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art" to determine whether the specification describes "an invention understandable to that skilled artisan and show[s] that the inventor actually invented the invention claimed." Ariad Pharms., 598 F.3d at 1351 (quotations and citations omitted). However, it is not enough to satisfy the written description requirement that the claimed subject matter would have been obvious to a person of ordinary skill in view of the written description. See Ariad Pharms., 598 F.3d at 1352 (citing Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72 (Fed. Cir. 1997)); ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009); see also Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566-67 (Fed. Cir. 1997) (explaining that "an applicant complies with the written description requirement by describing the invention, with all its claimed limitations, not [by describing merely] that which makes it obvious" (quotations omitted)).

Moreover, when construing claim terminology during prosecution before the Office, claims are to be given their broadest reasonable interpretation consistent with the Specification, reading claim language 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). We are mindful, however, that limitations are not to be read into the claims from the Specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Because "applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).

We agree with Appellant that the Specification supports creating or formatting an advertisement in an electronic format and providing or communicating that advertisement to a user. See Appeal Br. 32-33 (quoting Spec. ¶¶ 103, 104, 117, 121). The Specification describes creating advertisements. Spec. ¶ 117 ("advertisements may be created as part of the selection process, wherein a personalized advertisement is created, for example, using information from the selection model and user model"). The Specification also describes providing advertisements to a user in an electronic format. Spec. ¶¶ 103 ("providing . . . advertisements in an electronic format"), 104 ("advertisement is provided to the user . . . through networked computers, a mobile device, . . . electronic paper, or any number of non-electronic formats"), 121 (disclosing that "once an advertisement has been selected, or created, as described above, the advertisement may be provided to the user 26 in electronic format"; describing exemplary formats including HTML, Flash, binary, and XML; and explaining that "any method of delivering an electronic or personalized electronic advertisement may be used"...