Ex Parte Graham

Patent Trial and Appeal Board

Sep 25, 2012

10639811 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE
PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAUL GRAHAM
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Appeal 2010-008879
Application 10/639,811
Technology Center 3600
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Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008879
Application 10/639,811

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 2, 4-6, 8-17, 29, 31, and 32. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We reverse.

BACKGROUND
Appellant’s invention is directed to profiling offers and consumers,
and using the profiles to determine or predict the relevance of the offers to
consumers (Spec., para. [0001]).
Claim 1 is illustrative:
1. A computer-implemented method of determining relevance
of offers to consumers, the method comprising:
(a) providing a profile server, the profile server
configured to:
(i) construct a plurality of offer profiles, each of
the offer profiles associated with an offer and based at least in
part on statistical properties of consumer communications
unrelated to the offer, a subset of the consumer communications
being associated with consumers to which the offers were
previously sent;
(ii) construct a plurality of consumer profiles, each
of the consumer profiles associated with a consumer and based
on statistical properties of communications associated with the
respective consumer; and
(iii) determine a relevancy of one of the offers to
one of the consumers by comparing the offer profiles associated
with the offers to a consumer profile associated with the
consumer; and
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(b) a web server, the web server configured to present
one or more of the offers to the consumer based at least in part
on the determined relevancy.

Appellant appeals the following rejections:
Claims 1, 2, 4-6, 8-17, 29, 31, and 321 are rejected under 35 U.S.C. §
103(a) over Schiff (US 2003/0158777 A1, pub. Aug. 21, 2003) and Eldering
(US 7,062,510 B1, iss. Jun. 13, 2006).
Claims 31 and 322 are rejected under 35 U.S.C. § 103(a) over Schiff,
Eldering, and Childs (US 7,272,573 B2, iss. Sep. 18, 2007).

ANALYSIS
Claims 1, 2, 4-6, 8-11, 29, and 31
Appellant argues the combination of Schiff and Eldering does not
disclose the claimed “offer profiles.” App. Br. 9-10, Rep. Br. 3-4.
The Examiner variously finds3 the undefined “offer profiles” in Schiff
(at the user’s surfing habits (Ans. 3), the user portfolios created by the Rich
Media Campaign Server (Ans. 3), and the server itself with “means for
generating messages/offers” (Ans. 4)), and in Eldering (at the profile formed
“by recording computer activity and viewing habits of the end user” (Ans.

1 The Examiner also includes claims 19, 21, 26-28, and 30 in the rejection,
but these claims were canceled in the Amendment of Sep. 28, 2009 and the
Amendment apparently was entered by the Examiner in the Advisory Action
of Jan. 27, 2010.
2 The Examiner also includes claims 22-25 and 33 in the rejection, but these
claims were canceled in the Amendment of Sep. 28, 2009.
3 Citing to Schiff paras. [0005] and [0037] (Ans. 3), [0082] (Ans. 4), [0017]-
[0019] (Ans. 24), and Eldering Abstract (Ans. 5, 24), col. 2, ll. 31-35, col. 3,
ll. 45-50, col. 3, l. 65 to col. 4, l. 5, col. 4, ll. 20-29, col. 6, ll. 21-33 (Ans.
23), and col. 4, ll. 49-57 (Ans. 24).
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5), the “measurement of the potential applicability of an advertisement”
(Ans. 23), “profile, based on user viewing of agate information” (Ans. 24),
and at “heuristic rules for a given item” (Ans. 25)). Some of the findings,
however, are also cited as the claimed “consumer profiles,” such as
paragraphs [0017]-[0019] of Schiff (Ans. 4). Because of the variety of
findings and explanations, it is not clear to us exactly how the Examiner
construes the term “offer profiles,” or exactly what in the prior art
corresponds to this undefined claim term.
In addition, the Examiner directs us to paragraphs [0011], [0037], and
[0082] of Schiff for the “comparing the offer profiles associated with the
offers to a consumer profile associated with the consumer” (Ans. 4), but we
do not find any of the “offer profiles” cited above used in any comparison to
a “consumer profile.”
We therefore are persuaded of error on the part of the Examiner by
Appellant’s argument that the combination does not disclose “offer
profiles.” The Examiner has not directed us to a disclosure in the references
for the claimed “offer profiles,” and for this reason reverse the rejection of
claim 1 and dependent claims 2, 4-6, 8-11, 29, and 31.

Claims 12-17 and 32
Independent system claim 12 recites, inter alia, “a first profile server
for determining an offer profile for an offer,” and “a second profile server
for determining a consumer profile.”
The Examiner has not directed us to any portions of the references
which disclose these servers, because the Examiner instead refers to “a first
profiler for determining an offer profile” and “a second profiler” (Ans. 8-9),
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but no claim language requiring servers. These “profiler” terms are no
longer part of the claim. (See Amdt. filed Sep. 28, 2009 and Adv. Act.
mailed Jan. 27, 2010). Therefore we reverse the rejection of claim 12 and
dependent claims 13-17 and 32.

DECISION
We reverse the rejections of claims 1, 2, 4-6, 8-17, 29, 31, and 32.

REVERSED

hh