Adobe Inc.

Patent Trials and Appeals BoardJun 9, 2021

2019006896 (P.T.A.B. Jun. 9, 2021)

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. 14/533,509 11/05/2014 Kyle W. Smith 20030.14 8923 119741 7590 06/09/2021 Keller Jolley Preece / Adobe 1010 North 500 East, Suite 210 North Salt Lake, UT 84054 EXAMINER HOLLAND, SHERYL L ART UNIT PAPER NUMBER 2161 NOTIFICATION DATE DELIVERY MODE 06/09/2021 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): docketing@kjpip.com gjolley@kjpip.com ljohnson@kjpip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KYLE W. SMITH, BENJAMIN R. GAINES, NATHAN A. PURSER, and WILLIAM BRANDON GEORGE ____________________ Appeal 2019-006896 Application 14/533,509 Technology Center 2100 ____________________ Before ERIC S. FRAHM, CARL L. SILVERMAN, and JAMES W. DEJMEK, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1–8, 11–20, 23, and 24. Appellant has canceled claims 9, 10, 21, and 22. See Appeal Br. 36, 42. We have jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). 1 Throughout this Decision, we use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies Adobe, Inc. as the real party in interest. Appeal Br. 3. Appeal 2019-006896 Application 14/533,509 2 STATEMENT OF THE CASE Introduction Appellant’s disclosed invention generally relates to using web analytics and user-defined queries to identify different segments of users. See Spec. ¶¶ 3, 6–7. In particular, Appellant describes “an analytics engine that allows users to efficiently and effectively create and identify segments of usage patterns.” Spec. ¶ 25. According to the Specification, the analytics engine may provide a graphical user interface (GUI) to build a user-defined segment query including a first and second event. Spec. ¶ 26. For a particular segment query, the analytics engine can query an analytics database to identify “a segment of users who performed the first event followed by the second event in accordance with the sequence condition” specified by the user. Spec. ¶ 26. Figure 3A is illustrative and is reproduced below: Appeal 2019-006896 Application 14/533,509 3 Figure 3A shows a segment generation user interface. Spec. ¶ 18. As shown in Figure 3A, the segment query building GUI (300) includes various fields including a title field (302), description field (304), a definition or segment canvas (306) and a results summary display (308). Spec. ¶¶ 80–88. The segment canvas (306) allows a user to enter “various segment-query building controls.” Spec. ¶ 85. Within segment canvas (306), is a first event control (312a) wherein a user may specify an event type (318), an event operator (320), and event specification text (322). Spec. ¶ 90. In the illustrated example, the first event is characterized by a user visiting the webpage at home.htm. See Spec. ¶ 104. Similarly a second event may be defined within a second event control (312b). Spec. ¶ 95. Additionally, a user may specify a sequence in which the events occur. Spec. ¶ 94. Sequence information is entered into sequence control (314). Spec. ¶ 94. As shown in Figure 3A, sequence operator (324), “Then” specifies the first event (i.e., visiting home.htm) occurs some time before the second event (visiting newproducts.htm) is performed. Spec. ¶¶ 95–96. Further, controls (326a, 326b, 328) may be used to place a condition on sequential control (314). Spec. ¶ 97. In the example illustrated in Figure 3A, the additional conditions are “after 2 hours” and “within 2 purchases.” Spec. ¶ 98. Thus, according to the Specification, the full segment query built by the user as illustrated in FIG. 3A would cause the analytics engine 104 to identify users in the analytics database 108 who visited ‘home.htm,’ then after two hours but within two purchases where the purchases are of a bike, a TV, or a computer, visited ‘newproducts.htm.’ Spec. ¶ 104. Claims 1, 13, and 17 are independent. Claim 1 is representative (see Appeal Br. 21–27; see also 37 C.F.R. § 41.37(c)(1)(iv)) of the subject matter Appeal 2019-006896 Application 14/533,509 4 on appeal and is reproduced below with a limitation of interest emphasized in italics: 1. A method for sequentially segmenting a data set comprising: providing, by a server device to a client device, a graphical user interface, the graphical user interface comprising a query type control; providing, in response to receiving a sequential query type via the query type control: a first event control, a second event control, and a sequential control comprising two or more sequence operators each associated with at least one specific dimension item value; receiving, via the first event control, parameters for a first event; receiving, via the second event control, parameters for a second event; receiving, via the sequential control, a first sequence condition that defines a segment of users who performed the first event followed by the second event within which the first event follows the second event according to a sequence defined by the two or more sequence operators and the associated specific dimension item values; querying, by the server device, an analytics database for a segment of users who performed the first event followed by the second event within which the first event follows the second event according to the sequence defined by the two or more sequence operators and the associated specific dimension item values; identifying, from among tracked user data within the analytics database, users who performed the first event followed by the second event within which the first event follows the second event according to the sequence defined by the two or Appeal 2019-006896 Application 14/533,509 5 more sequence operators and the associated specific dimension item values; and providing, by the server device, a query result that represents the segment of users for display via the graphical user interface on the client device. The Examiner’s Rejections2 1. Claims 1–8 and 11–19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ertugrul et al. (US 2008/0222283 A1; Sept. 11, 2008) (“Ertugrul”); Alessandro Acquisti and Hal R. Varian, Conditioning Prices on Purchase History, Marketing Science, vol. 24, no. 3, pp. 367–81 (2005 (“Acquisti”); and Turpin et al. (US 2009/0063284 A1; Mar. 5, 2009) (“Turpin”). Final Act. 16–33. 2. Claim 20 stands rejected under 35 U.S.C. § 103 as being unpatentable over Ertugrul, Acquisti, Turpin, and Hasan et al. (US 2016/0217521 A1; July 28, 2016) (“Hasan”). Final Act. 34–35. 3. Claims 23 and 24 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ertugrul, Acquisti, Turpin, and Kirkland et al. (US 2004/0122816 A1; June 24, 2004) (“Kirkland”). Final Act. 36–40. ANALYSIS3 For the reasons discussed below, we conclude the pending claims are indefinite under 35 U.S.C. § 112(b). 2 The Examiner had also rejected claims 1, 13–15, 17, 23, and 24 under 35 U.S.C. § 112(a) and claim 14 under 35 U.S.C. § 112(b). Final Act. 11– 15. The Examiner has withdrawn these rejections. See Ans. 29. 3 Throughout this Decision, we have considered the Appeal Brief, filed March 14, 2019 (“Appeal Br.”); the Reply Brief, filed September 9, 2019 (“Reply Br.”); the Examiner’s Answer, mailed July 10, 2019 (“Ans.”); and the Final Office Action, mailed September 20, 2018 (“Final Act.”), from which this Appeal is taken. Appeal 2019-006896 Application 14/533,509 6 It is ordinarily improper to reject a claim over prior art when the meaning of a claim cannot be determined. As the predecessor to our reviewing court explained, “[a]ll words in a claim must be considered in judging the patentability of that claim against the prior art. If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious—the claim becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); see also In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (“As we have previously indicated, our analysis of the claims leaves us in a quandary as to what in fact is covered by them. We think the examiner and the board were wrong in relying on what at best are speculative assumptions as to the meaning of the claims and basing a rejection under 35 U.S.C. § 103 thereon.”). Because one would need to speculate as to the meaning of the pending claims, the prior art rejections must fall, pro forma, because they necessarily are based on speculative assumption as to the meaning of the claims. It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. We do not reach the merits of the Examiner’s obviousness rejection with respect to the pending claims. In view of the foregoing, we reverse the Examiner’s rejections under 35 U.S.C. § 103 of claims 1–8, 11–20, 23, and 24, pro forma. NEW GROUNDS OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new grounds of rejection for claims 1–8, 11–20, 23, and 24 under 35 U.S.C. § 112(b), for indefiniteness and under 35 U.S.C. § 112(a), for lack of written description. Appeal 2019-006896 Application 14/533,509 7 The patent statute requires that claims “particularly point[] out and distinctly claim[] the subject matter which the inventor or a joint inventor . . . regards as the invention.” 35 U.S.C. § 112(b). During prosecution, “‘[a] claim is indefinite when it contains words or phrases whose meaning is unclear.’” Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (quoting Packard, 751 F.3d at 1310, 1314); see In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (“claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms”) (per curiam). Independent claim 1 recites, in part, receiving, via the sequential control, a first sequence condition that defines a segment of users who performed the first event followed by the second event within which the first event follows the second event according to a sequence defined by the two or more sequence operators and the associated specific dimension item values. (Emphasis added.) It is unclear what is meant by a “segment of users who performed the first event followed by the second event within which the first event follows the second event.” In the Appeal Brief, Appellant identifies Figure 3A and paragraphs 86 and 90 through 98 for support of this phrase. Appeal Br. 3–4 (Summary of Claimed Subject Matter). Our review of the identified portions (as well as the rest of the Specification) does not further inform our understanding of what is intended by “within which the first event follows the second event” in the context of this limitation. For example, it is unclear whether this clause is intended to modify the segment of users or the second event. In addition, because the claim recites that the segment of users who performed the first event followed by the second event, it is unclear (and Appeal 2019-006896 Application 14/533,509 8 appears contradictory) that the claim further recites “the first event follows the second event.” See, e.g., claim 1. For the reasons discussed supra, we newly reject independent claim 1 under 35 U.S.C. § 112(b) as being indefinite. For similar reasons we also newly reject under 35 U.S.C. § 112(b) independent claims 13 and 17, which recite similar limitations. In addition, we newly reject under 35 U.S.C. § 112(b) dependent claims 2–8, 11, 12, 14–16, 18–20, 23, and 24, which inherit the deficiencies of their respective base claims. To satisfy the written description requirement under 35 U.S.C. § 112(a), the disclosure must reasonably convey to 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 description must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed” and 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. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed. Ariad Pharms., Inc., 598 F.3d at 1351 (internal quotations and citations omitted). Further, 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 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 that which makes it obvious” (quotations omitted)). Appeal 2019-006896 Application 14/533,509 9 Although there is no requirement for the Specification to use the exact language recited in the claims, we note that the Specification does not describe the “within which the first event follows the second event” clause as it is recited in the claims. See Lockwood v. American Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997) (“Although the exact terms need not be used in haec verba, . . . the specification must contain an equivalent description of the claimed subject matter.”). Rather, we find the cited portions of the Specification describe a first sequence condition that defines a segment of users who performed a first event followed by a second event (e.g., users that visited home.htm and then, after 2 hours, visited newpage.htm). See, e.g., Spec. ¶ 104, Fig. 3A. However, we do not find written description support for “within which the first event follows the second event according to a sequence defined by the two or more sequence operators and the associated specific dimension item values,” as recited in claim 1. In addition, we note that Appellant amended independent claims 1 and 17 to add the claim language at issue (i.e., “a segment of users who performed the first event followed by the second event within which the first event follows the second event”). See Amdt 2 (filed Jan. 29, 2018); see also Amdt 6–7 (filed Aug. 24, 2018) (amending independent claim 13 with commensurate language). In the remarks accompanying the amendments, Appellant did not identify support within the Specification for the amended language. For the reasons discussed supra, we newly reject independent claim 1 under 35 U.S.C. § 112(a) for failing to comply with the written description requirement. For similar reasons we also newly reject under 35 U.S.C. § 112(a) independent claims 13 and 17, which recite similar limitations. In addition, we newly reject under 35 U.S.C. § 112(a) dependent claims 2–8, Appeal 2019-006896 Application 14/533,509 10 11, 12, 14–16, 18–20, 23, and 24, which inherit the deficiencies of their respective base claims. CONCLUSION We reverse, pro forma, the Examiner’s decision rejecting claims 1–8, 11–20, 23, and 24 under 35 U.S.C. § 103. We enter a new ground of rejection rejecting claims 1–8, 11–20, 23, and 24 under 35 U.S.C. § 112(b). We enter a new ground of rejection rejecting claims 1–8, 11–20, 23, and 24 under 35 U.S.C. § 112(a). Appeal 2019-006896 Application 14/533,509 11 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed New Ground 1–8, 11– 19 103 Ertugrul, Acquisti, Turpin 1–8, 11–19 20 103 Ertugrul, Acquisti, Turpin, Hasan 20 23, 24 103 Ertugrul, Acquisti, Turpin, Kirkland 23, 24 1–8, 11– 20, 23, 24 112(b) Indefinitenes s 1–8, 11– 20, 23, 24 1–8, 11– 20, 23, 24 112(a) Written description 1–8, 11– 20, 23, 24 Overall Outcome 1–8, 11– 20, 23, 24 1–8, 11– 20, 23, 24 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to Appeal 2019-006896 Application 14/533,509 12 the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, Appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended. 37 C.F.R. § 1.136(a)(1)(iv); see 37 C.F.R. § 41.50(f). REVERSED; NEW GROUND 37 C.F.R. § 41.50(b)