Ex Parte Angell et al

Patent Trial and Appeal Board

Mar 27, 2015

11862374 (P.T.A.B. Mar. 27, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBERT LEE ANGELL and JAMES R. KRAEMER
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Appeal 2013-001885
Application 11/862,374
Technology Center 3600
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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.
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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.
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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.
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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.
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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
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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
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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.
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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
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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
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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.
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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,
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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.
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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