Ex Parte Angell et alDownload PDFPatent Trial and Appeal BoardMar 27, 201511862374 (P.T.A.B. Mar. 27, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT LEE ANGELL and JAMES R. KRAEMER ____________ Appeal 2013-001885 Application 11/862,374 Technology Center 3600 ____________ Before LINDA E. HORNER, JILL D. HILL, and LISA M. GUIJT, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Robert Lee Angell and James R. Kraemer (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1– 25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE CLAIMED SUBJECT MATTER Appellants’ disclosed subject matter relates to “dynamically presenting marketing content to a customer based on a marketing decision tree for the customer.” Spec. 3, para. 3. Claims 1, 13, 21, and 23 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. Appeal 2013-001885 Application 11/862,374 2 1. A computer implemented method for decision tree based marketing to a customer in a retail facility, the computer implemented method comprising: responsive to identifying a customer associated with the retail facility, retrieving a marketing decision tree for the customer and identifying a plurality of items previously purchased by the customer using a past purchase history of the customer, wherein the marketing decision tree indicates a set of paths through the retail facility that the customer will most likely follow while shopping; identifying areas of the retail facility traversed by the customer during a current visit to the retail facility to form a set of currently covered areas; identifying items in a shopping container associated with the customer to form a set of current shopping basket contents; identifying, using a processing unit, a next probable location of the customer using a current location of the customer and the marketing decision tree, wherein identifying the next probable location further comprises: identifying a plurality of locations in proximity to the current location; identifying a set of items from the plurality of items that are not present in the set of current shopping basket contents and that are located within the plurality of locations; and predicting the next probable location from the plurality of locations based on a number of previous purchases for items in the set of items and the set of currently covered areas; and generating a customized marketing message for an identified item from the plurality of items located in the next probable location of the customer to present to the customer upon arrival at the next probable location, the identified item selected based on past purchase history and current contents of the shopping container. Appeal 2013-001885 Application 11/862,374 3 THE EVIDENCE The Examiner relies upon the following evidence: Sorensen US 2006/0200378 A1 Sept. 7, 2006 Huang US 2008/0004951 A1 Jan. 3, 2008 Head US 2008/0010114 A1 Jan. 10, 2008 Stawar US 2008/0243626 A1 Oct. 2, 2008 Lee US 2010/0169229 A1 July 1, 2010 THE REJECTIONS Appellants seek review of the following Examiner’s rejections of the claims: 1. Claims 7 and 17 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 1–3, 5, 6, 8–16, and 18–25 under 35 U.S.C. § 103(a) as unpatentable over Sorensen, Huang, and Stawar. 3. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Sorensen, Huang, Stawar, and Lee. 4. Claims 1–3 and 5–25 under 35 U.S.C. § 103(a) as unpatentable over Sorensen, Huang, Stawar, and Head. ANALYSIS Written Description The Examiner rejected claims 7 and 17 as failing to comply with the written description requirement because the Examiner could find no mention in the Specification of “providing to the customer a list of savings accounting over the regular price of purchased items if the customized message had not been viewed and used.” Final Act. 2. Appeal 2013-001885 Application 11/862,374 4 The Specification describes that the customer is provided with incentives to use display devices to obtain marketing incentives, promotional offers, discounts, etc. Spec. 32, para. 100. The Specification further describes that “[w]hen the customer has finished shopping, the customer may be provided with a list of savings or ‘tiered’ accounting of savings over the regular price of purchased items if a display device had not been used to view and use customized digital marketing messages.” Id. A person having ordinary skill in the art upon reading this description in the Specification of the list of savings accounting would understand Appellants to have had possession of the claimed method and computer program product in which the customer is provided a list of savings accounting over the regular price of purchased items if the customized message had not been reviewed and used. For these reasons, we reverse the rejection of claims 7 and 17 under 35 U.S.C. § 112, first paragraph. Rejection of claims 1–3, 5, 6, 8–16, and 18–25 under 35 U.S.C. § 103(a) as unpatentable over Sorensen, Huang, and Stawar Appellants argue claims 1–3, 5, 6, 8–16, 18–22, and 24 1 subject to the second ground of rejection as a group. Appeal Br. 14–15, 20‒23. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (2014). Claims 2, 3, 5, 6, 8–16, 18–22, and 24 stand or fall with claim 1. Appellants present 1 Claim 24 depends indirectly from independent claim 21. Appellants mistakenly group claim 24 with claim 23. Appeal Br. 23. For purposes of this Decision, we group claim 24 with the first argued subgroup, and it stands or falls with claim 1. Appeal 2013-001885 Application 11/862,374 5 separate arguments for independent claim 23 and its dependent claim 25. Appeal Br. 23. We address claim 23 separately below. With regard to claim 1, Appellants argue that “the proposed combination of Sorensen, Huang and Stawar, when viewed as a whole, fails to teach or suggest [the step of identifying a next probable location of the customer and its recited sub-steps].” Appeal Br. 14–15. Specifically, Appellants argue: Feature (1) of Appellants’ Claim 1 distinguishes over the cited references, at least in part, by reciting the method step of identifying a set of items from the plurality of items that are not present in the set of current shopping basket contents and that are located within the plurality of locations. The feature clearly indicates identification of a set of items from the plurality of items that are not present in the set of current shopping basket contents. The plurality of items was previously identified as those items previously purchased, therefore using historical information. Predicting the next probable location from the plurality of locations based on a number of previous purchases for items in the set of items and the set of currently covered areas uses information for previously purchased items in the subset defined as the identified set of items from the plurality of items that are not present in the set of current shopping basket contents. Appeal Br. 20–21. In support of these assertions, Appellants appear to argue on pages 21 through 22 of the Appeal Brief that Sorensen alone fails to disclose or suggest using historical purchase data for items and identification of items not present in the current shopping basket to predict the next probable location. This argument is not persuasive of error because the Examiner did Appeal 2013-001885 Application 11/862,374 6 not rely on Sorensen alone for this teaching. Appellant’s arguments as to Sorensen fail to address the Examiner’s rejection, which is based on a determination of what would have been obvious to one of ordinary skill in the art in view of the combined teachings of the prior art. Final Act. 3–8. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Appellants argue that “Huang does not teach use of a shopping cart” and “[t]he Examiner’s position that the ‘carrying of items’ in Huang is equivalent to use of a cart is not supported in the disclosure of Huang or envisioned in an embodiment of Huang.” Appeal Br. 22. As noted by the Examiner in response to this argument, the Examiner relied on Stawar to teach the concept of a shopping cart. Ans. 43 (citing Stawar, paras. 74, 75, 84). We agree with the Examiner’s finding that Stawar teaches use of a shopping cart and determining an inventory of items in the cart. Appellants argue the Examiner erred in finding that Sorensen teaches “tracking of products the shopper has selected to purchase.” Appeal Br. 22 (arguing that Sorensen teaches only determining whether a part of a shopper path is within a predefined region). Appellants mischaracterize the disclosure of Sorensen. Sorensen specifically teaches that the system can determine a shopping behavior of a shopper within a predefined region, which includes “the shopper purchasing a product within the predefined region.” Sorensen 1, para. 10; id. at 3–4, para. 42 (data analyzer links Appeal 2013-001885 Application 11/862,374 7 shopper purchase records with shopper path); id. at 5, para. 62 (data analyzer examines purchase data associated with the shopping path to detect whether any products from the predefined region were purchased by the shopper). Further, as noted by the Examiner, Stawar discloses tracking of products the shopper has selected to purchase as the customer moves through the store. Final Act. 6; Stawar 5–6, paras. 74, 75, 84. Appellants assert that “each cited reference teaches away from the claimed feature because the cited references do not disclose use of negative information as in the claimed feature to identify a set of items used in the prediction of a next probable location.” Appeal Br. 22–23. Although Appellants invoke the “teaches away” language, they do not point out why a person of ordinary skill, upon reading each reference, would be led in a direction divergent from the path taken by Appellants. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). “[M]ere disclosure of alternative designs does not teach away.” Id. For the reasons provided by the Examiner in the Final Action, the teachings of the cited references would have led one having ordinary skill in the art to combine the teachings in the manner set forth in claim 1. For instance, as discussed below, Stawar discloses using negative information to determine which advertisements to present to customers, and Sorensen and Huang disclose using a predicted path of a customer for marketing purposes. Appeal 2013-001885 Application 11/862,374 8 The Examiner relied on Sorensen for teaching that it was known in the art to use a shopper’s prior shopping paths linked to the frequent shopping or discount card to impute or predict a path in the same or a different shopping environment for that shopper to predict the effectiveness of a marketing display at a particular location within a store. Final Act. 3–4 (citing Sorensen, paras. 40–44). In other words, Sorensen discloses that one method known in the art to predict the path for a shopper is to analyze prior shopping paths and historic purchase data linked to the shopper’s frequent shopper card. Sorensen 4, para. 43. We agree with the Examiner’s findings as to the teachings in Sorensen. We further note that Stawar teaches using prior shopping paths to determine current location of a cart. Stawar 15, para. 153 (it “may be know[n] that a consumer will likely travel a certain path based upon the position within the store and same may be used to help track and position the cart as it traverses the anticipated path.”). The Examiner relied on Huang to disclose “generating a customized marketing message for an identified item from the plurality of items[,] the identified item selected based on past purchase history and current contents of the shopping container.” Final Act. 4–5 (citing Huang, paras. 7, 31, 32, 54). We agree with the Examiner’s findings as to the teachings of Huang. We further note that Huang, in paragraph 54 and the paragraphs immediately following, discloses using past purchase history and a prediction of a probable next location of a customer to determine which customized advertisements to present to the customer. Huang 4, paras. 54–57 (disclosing use of velocity sensing and past customer profile information to Appeal 2013-001885 Application 11/862,374 9 infer purchase of same product as purchased in past and use of a directional sensing subsystem to determine heading of a customer to anticipate where the customer is going and present advertisements accordingly, customized for the location at which the customer is expected to pass by or stop). The Examiner relied on Stawar to disclose “identifying items in a shopping container associated with the customer to form current shopping basket contents.” Final Act. 6 (citing Stawar, paras. 74–75). We agree with the Examiner’s findings as to the teachings in Stawar. We further note that Stawar discloses using customer purchase history to develop a shopping list, correlating inventory contained in the shopping cart of a current trip with the shopping list to determine which items are in the cart (and by implication which items are not yet in the cart), and using the location of the shopping cart and a video display to display an advertisement on the display for a product on the shopping list when the cart is located proximate the product. Stawar 5–6, paras. 73–77, 80–81. We further agree with the Examiner’s finding that “knowledge of a customer’s purchase history and the contents of the current shopping cart would certainly disclose items missing from the shopping cart.” Final Act. 7; see also Stawar 5–6, paras. 77, 80 (disclosing correlating inventory in shopping cart with the shopping list, which was developed based on the customer’s purchase history, to determine which product on the list are present in the cart). As such, rather than teaching away from using negative information to predict a next probable location of a customer, the prior art teaches Appeal 2013-001885 Application 11/862,374 10 identifying a set of items from the shopping list that are not present in the shopping cart and delivering an advertisement when the customer is proximate the location of one of the items in this set of items. The prior art further teaches using anticipated shopping paths to determine which advertisements to present to customers. For these reasons, we agree with the Examiner’s findings as to the disclosures of Sorensen, Huang, and Stawar and determination that the combination of these teachings would render obvious identifying a next probable location of the customer as set forth in claim 1. Claim 23 Appellants rely on the same arguments presented for claim 1 to argue for reversal of the rejection of claim 23 over Sorensen, Huang, and Stawar. Appeal Br. 23. For the same reasons provided above for claim 1, we agree with the Examiner’s findings as to the disclosures of Sorensen, Huang, and Stawar and determination that the combination of these teachings would render obvious the subject matter of claim 23. Dependent claim 25 falls with claim 23. Rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable over Sorensen, Huang, Stawar, and Lee With regard to the third ground of rejection, Appellants rely on the arguments made for patentability of claim 1, and argue that Lee does not remedy the deficiencies of Sorensen, Huang, and Stawar. Appeal Br. 25. For the same reasons provided above for claim 1, we find no deficiencies in the base combination of Sorensen, Huang, and Stawar. Appeal 2013-001885 Application 11/862,374 11 Appellants further assert that because Sorensen is directed toward product placement using historical information to plan and test placement of displays, Sorensen is not in need of the image system taught by Huang. Id. Huang teaches using an image system to determine what products the customer is carrying to be purchased. Huang 2, para. 32. We agree with the Examiner that it would have been obvious that this technique could be used to improve Sorensen by using the same imaging system to capture data on shopper behaviors within the predefined region (e.g., to determine which products, if any, a customer is selecting off a shelf in the predefined region in response to the advertising campaign) so as to obtain better feedback to assess the effectiveness of the campaign. Final Act. 25 (determining it would have been obvious to modify Sorensen with the image system of Huang “to improve the advertiser’s targeting methods.”). As such, we are not persuaded by Appellants that the Examiner erred in determining that one having ordinary skill in the art would have had a reason to use Huang’s image system in Sorensen. Rejection of claims 1–3 and 5–25 under 35 U.S.C. § 103(a) as unpatentable over Sorensen, Huang, Stawar, and Head With regard to the fourth ground of rejection, the Examiner relied on the base combination of Sorensen, Huang, and Stawar for the rejection of all but claims 7 and 17, and added the teachings of Head to address the obviousness of the subject matter of dependent claims 7 and 17. Final Act. 26–28. Appellants rely on the arguments made for patentability of claim 1, and argue that Head does not remedy the deficiencies of Sorensen, Appeal 2013-001885 Application 11/862,374 12 Huang, and Stawar. Appeal Br. 27–28. For the same reasons provided above for claim 1, we find no deficiencies in the base combination of Sorensen, Huang, and Stawar. Appellants further assert that Head teaches away from the subject matter of claims 7 and 17 because “Head requires use and redemption by the customer of an electronic coupon” but the claims do not require the customer “to have knowledge of and redeem a coupon.” Appeal Br. 28. Appellants’ arguments appear to misconstrue the language of its own claims. We understand claims 7 and 17, when read in light of the Specification, to call for the system to provide to the customer a comparison of the regular prices of the purchased items to the discounted prices, which, but for the customer’s use of the display device to view the customized marketing messages, the customer would not have received. Spec. 32, para. 100 (discussing creating incentives for the customer to use the display devices to obtain marketing messages). As such, Appellants’ claimed method requires the customer to have used the display device to view the marketing message in order to receive the discounted price for the product. For this reason, we do not find Appellants’ arguments persuasive of error in the rejection. DECISION The decision of the Examiner to reject claims 7 and 17 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is REVERSED. The decision of the Examiner to reject claims 1–25 under 35 U.S.C. § 103(a) is AFFRMED. Appeal 2013-001885 Application 11/862,374 13 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. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation