Ex Parte Krishnamoorthy et al

Patent Trial and Appeal BoardApr 28, 2016

12831967 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/831,967 07/07/2010 Prabhakaran Krishnamoorthy 97531 7590 04/29/2016 Mauriel Kapouytian Woods LLP 15 W. 26th Street 7th Floor New York, NY 10010 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 10033-2007600 3489 EXAMINER VIG,NARESH ART UNIT PAPER NUMBER 3622 MAILDATE DELIVERY MODE 04/29/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PRABHAKARAN KRISHNAMOORTHY and UDAYSANKARSEN Appeal2014-000623 1 Application 12/831,9672 Technology Center 3600 Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision finally rejecting claims 1-22. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed June 24, 2013), the Examiner's Answer ("Ans.," mailed July 18, 2013), the Reply Brief ("Reply Br.," filed Sept. 18, 2013), the Final Office Action ("Final Act.," mailed Jan. 25, 2013), and the Specification ("Spec.," filed July 7, 2010). 2 According to the Appellants, the real party in interest is Yahoo! Inc. Appeal Br. 1. Appeal2014-000623 Application 12/831,967 STATEMENT OF THE CASE The Appellants' invention is directed "systems and methods in which review, comment (which can include opinion), or purchase information is obtained, the information being associated with a first user and relating to a product or service, product or service type, or brand." Spec. i-f 3. Claims 1, 19, and 22 are the independent claims on appeal. Claim 1, which we reproduce below, is illustrative of the subject matter on appeal: 1. A method comprising: using one or more computers, obtaining review, comment, or purchase information, associated with a first user and relating to a first product or service, product or service type, or brand; using one or more computers, identifying a second user in an explicit or implicit social network of the first user; and using one or more computers, generating a first online advertisement, targeted to the second user, relating to the first product or service, product or service type, or brand, comprising utilizing the review, comment, or purchase information. Appeal Br. 22 (Claims App.). REJECTIONS Claims 1-22 stand rejected under 35 U.S.C. Â§ 112, second paragraph. Final Act. 6. Claims 1-18 and 22 stand rejected under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter. Final Act. 4. Claims 1-22 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Fusz (US 2009/0157497 Al, pub. June 18, 2009) and Krishnan (US 2008/0307052 Al, pub. Dec. 11, 2008). Final Act. 6. 2 Appeal2014-000623 Application 12/831,967 ANALYSIS Indefiniteness - Â§ 112 The Examiner rejects claims 1-22 "as being vague to determine [sic] the scope of claimed subject matter which applicant regards as the invention." Final Act. 6. The Examiner deems that the limitation of generating the first online advertisement targeted to a second user is "an insignificant activity" because the results of the generating are not used in the claimed invention. Id. We determine that the Appellants' argument is persuasive. Whether generating the advertisement is "vague" is a matter of breadth and not indefiniteness. See In re Gardner, 427 F.2d 786, 788 (CCPA 1970). We find that one of ordinary skill in the art would understand what is claimed as the invention, regardless of whether the limitation recites an insignificant activity. See Appeal Br. 5. Thus, we are persuaded the Examiner's rejection is in error and do not sustain the rejection of claims 1-22 under 35 U.S.C. Â§ 112. Non-Statutory Subject Matter - Â§ 101 The Examiner rejects claims 1-8 and 22 as directed to an abstract idea and thus non-statutory subject matter because "a human manually performs the claimed limitations by using their computer." Final Act. 4. The Examiner appears to use the machine or transformation test of Bilski v. Kappas, 561 U.S. 593 (2010) in finding that the "[i]nvention as currently claimed does not positively claim that a computer performs the claimed invention." Final Act. 5. 3 Appeal2014-000623 Application 12/831,967 We agree with the Appellants that the Examiner "has not persuasively established that the claims fall outside the scope ofÂ§ 101." Appeal Br. 6. The Examiner states that the claims are directed to an abstract idea "[b ]ased upon consideration of all the relevant factors with respect to the claim as a whole" (Final Act. 4), but provides insufficient analysis as to how the factors apply to the claims in determining whether the claims at issue are directed to a non-statutory abstract idea. Thus, we do not sustain the Examiner's rejection of claims 1-18 and 22 under 35 U.S.C. Â§ 101. Obviousness - Â§ 103(a) Claims 1 and 19 The Examiner finds that Fusz discloses one or more server computers, one or more databases, and obtaining information associated with a first user and relating to a first product or service, as recited in claims 1 and 19. See Final Act. 7. The Examiner finds Fusz does not explicitly teach identifying a second user, and cites Krishnan for that feature. Id. The Examiner finds that Fusz in view of Krishnan teaches "capability and concept for" identifying a second user and generating a first online advertisement as claimed. See Final Act. 7-8, citing Fusz, Fig. 6, 7 and "associated disclosure," and Krishnan ,-r,-r 2, 9. The Appellants contend the rejection of claims 1 and 19 is in error because the references do not teach each feature of the claims. Appeal Br. 8. Generating a first online advertisement The Appellants contend the rejection of claims 1 and 19 is in error because "[t]he cited references fail to disclose 'generating a first online 4 Appeal2014-000623 Application 12/831,967 advertisement, targeted to the second user, relating to the first product or service, product or service type, or brand, comprising utilizing the review, comment, or purchase information,' as recited in these independent claims." Appeal Br. 8-9. We first note that the Appellants' arguments that Fusz does not teach the limitation as a whole (see Appeal Br. 8-9) are unpersuasive because the Examiner relies on the combination of Fusz and Krishnan for teaching the limitation. The test for obviousness is not what any one reference would have suggested, but rather what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). "[O]ne cannot show non-obviousness by attacking references individually were, as here, the rejections are based on combinations of the references." Id. (citation omitted). The Appellants' arguments that the Examiner's findings are in error (see Appeal Br. 8-15) are unpersuasive for the reasons discussed below. The Specification does not provide a specific definition for an "advertisement" or for "generating" an advertisement. The Specification does provide that "[ m ]any types of advertisements are contemplated, including textual advertisements, rich advertisements, video advertisements, etc." Spec. ,-r 11. The Specification further provides that generating the first online advertisement "includes incorporating, as an implicit or explicit recommendation, at least one textual or visual element associated with the review, comment, or purchase information." Id. ,-r 19. The Specification also provides that "[ r ]eview, comment, or purchase information may be combined or otherwise incorporated or integrated, perhaps after processing 5 Appeal2014-000623 Application 12/831,967 or re-formatting, with other advertisement information to generate an advertisement targeted to the other user." Id. i-f 21. Fusz, in discussing Figures 6 and 7, discloses that the first or second commenter creates a new comment relating to a resource (product) (Fusz i-f3 l ), whereby the comment identifies the resource (id. i-f 33) and may be in the form of a message, a link to a manufacturer website, a video commercial, and/or an audio commercial (id. i-f 31 ). Thus, we find unpersuasive the Appellants' argument that Fusz's comment is not an advertisement (Appeal Br. 9), because Fusz's comment can be an implicit or explicit recommendation including at least one textual (link) or visual (video) element associated with the comment or purchase information, i.e., an advertisement. See Spec. i-fi-1 11, 19. We further find unpersuasive the Appellants' argument that "using reviews or comments to target advertisements is not the equivalent of sending the same reviews or comments" (Appeal Br. 9) at least because it is not commensurate with the scope of the claim. The limitation does not require that reviews or comments are used to target advertisements, but rather that advertisements, targeted to a user, are generated utilizing reviews or comments, as reasonably interpreted by the Examiner, and disclosed by Fusz at paragraphs 31 and 33. The Appellants' argument that sending a comment is not the same as generating an advertisement (Appeal Br. 10) is also unpersuasive. The Appellants do not provide adequate evidence or technical reasoning why Fusz' s creating of a comment by a user (Fusz, i-fi-131, 33) is not "generating" a first comment/ advertisement. See Spec. i-fi-1 19, 21. 6 Appeal2014-000623 Application 12/831,967 Therefore, we find that the Examiner's finding that Fusz discloses generating (creating) an advertisement targeted (sent) to a second user relating to a product and utilizing the comment or purchase information is adequately supported. See Final Act. 8, Ans. 13. Identifying a second user The Appellants further contend the rejection of claims 1 and 19 is in error because Krishnan, upon which the Examiner relies, does not disclose the "identifying a second user" feature. Appeal Br. 11. We disagree. The Specification does not specify the manner in which a second user is identified. See Spec. ,-r 46 ("Various techniques are contemplated in identifying people in social networks, etc."). Krishnan discloses selecting on-line advertisements by a user to display in the user's personal media space. Krishnan ,-r 2. Krishnan further discloses that the personal media space in which the advertisement is displayed is "accessible to a list of users approved by the first user." Krishnan ,-r 9. Thus, Krishnan discloses identifying (including in an approval list) a second user to receive, (view) advertisements. Therefore, we find that the Examiner's finding that Krishnan discloses identifying a second user is adequately supported. See Final Act. 7. Inadequate Reasoning The Examiner finds "Krishnan teaches capability and concept identifying second user." Final Act. 7, citing Krishnan ,-r,-r 2, 9. The Examiner then determines at the time of the invention, it would have been obvious to one of ordinary skill in the art to modify Fusz by adopting teachings of Krishnan to send advertisements relevant to the users; apply a known technique to a known device (method, or product) ready 7 Appeal2014-000623 Application 12/831,967 for improvement to yield predictable results; known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art. Final Act. 7. As discussed above, we find no error with the Examiner's findings. Further, the Examiner provides reasons why one of ordinary skill in the art at the time of the invention would modify Fusz with Krishnan, including to apply a known technique to a known device, method, or product to yield predictable results. See Final Act. 7. Thus, the Examiner provides sufficient rational underpinning to support a legal conclusion of obviousness. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The Appellants do not provide evidence or reasoning why the Examiner's reasoning is faulty, but rather that "the Examiner has failed to provide any evidence that the ordinary artisan would have been so motivated at the time of invention. Indeed, the Examiner has not provided any evidence regarding motivation to combine." Appeal Br. 13. This argument is unpersuasive because the Appellants assert that the Examiner has not provided sufficient rationale without addressing the rationale that was given - to apply a known technique to a known method to yield predictable results. The KSR court found that applying a known technique to a known method to yield predictable results likely renders a claim obvious. KSR at 417. Such a combination is itself sufficient reasoning with rational underpinning to support a finding of obviousness. Further, KSR held that motivation is a helpful insight, but does not control. Id. at 419. 8 Appeal2014-000623 Application 12/831,967 For the above reasons, we are unpersuaded of error on the part of the Examiner in rejecting claims 1 and 19 as unpatentable over Fusz and Krishnan. Claim 4 The Appellants' argument that claim 4 is patentable based on its dependency from claim 1 (Appeal Br. 15) is unpersuasive because we are not persuaded of error in the rejection of claim 1. The Appellants further contend the Examiner's rejection of claim 4 is in error because the "cited references fail to disclose 'wherein generating the first advertisement comprises incorporating at least one element identifying the first user or relating to the personal identity of the first user,' as recited in the claim," because the Examiner does not cite any portion of a reference for this limitation. Id. at 15-16. We have reviewed the Final Office Action and the Answer and find the Examiner provides sufficient facts and reasons to put Appellants on notice of the specific teachings in Fusz that read on the limitation. See Ans. 13, citing Fusz, Fig. 7 "and associated disclosure". See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (finding that the Examiner satisfies the procedural burden of establishing a prima facie case when the rejection "notif1ies] the applicant ... [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.") (quoting 35 U.S.C. Â§ 132). Fusz at paragraph 33 describes Figure 7 and discloses that the server tracks the identifier of the first commenter, i.e. user, in the database. The 9 Appeal2014-000623 Application 12/831,967 Appellants' argument does not explain the significance of any difference between the identifier of the first commenter as disclosed by Fusz and the claim and ignores that the Examiner cited Figure 7 and the associated disclosure. Further, the Appellants provide no explanation how they reach the conclusion that the Examiner's stated rejection does not disclose the limitation of claim 4. See Appeal Br. 16. Thus, the Appellants' argument that the Examiner has not cited any portion of the reference is unsupported. The Appellants' argument that the Examiner fails to provide evidence that "the ordinary artisan would have so motivated at the time of the invention was made," (Appeal Br. 16), is unpersuasive because, as discussed above with reference to claims 1 and 19, the Appellants assert that the Examiner has not provided sufficient rationale without addressing the rationale that was given - to be able to compensate the procuring user. See Final Act. 9. For the above reasons, we are unpersuaded of error on the part of the Examiner in rejecting claim 4 as unpatentable over Fusz and Krishnan. Claim 5 The Appellants' argument that claim 5 is patentable based on its dependency from claim 1 (Appeal Br. 15) is unpersuasive because we are not persuaded of error in the rejection of claim 1. The Appellants' further contend the Examiner's rejection of claim 5 is in error because Fusz does not disclose "aggregating review, comment or purchase information from multiple users," or "including elements of the review, comment or purchase information from each of the multiple users in an advertisement" as recited in claim 5, but rather that comments are sent without being aggregated and 10 Appeal2014-000623 Application 12/831,967 without being included in an advertisement. Appeal Br. 17. These arguments are unpersuasive. As discussed above, we agree with the Examiner that the comment is an advertisement. The Examiner cites Fusz at Figure 7 and "associated disclosure" to teach the limitation of claim 5. See Final Act. 9. Fusz, in discussing Figure 7, discloses forwarding a comment from the first user to a third user (Fusz i-f 34), and thus elements of each user's comment are included in the advertisement (forwarded comment). Fusz further discloses aggregating purchase information from multiple users used to determine rewards (id. i-fi-133, 36-38), meeting the limitation of aggregating review, comment or purchase information. For the above reasons, we are unpersuaded of error on the part of the Examiner in rejecting claim 5 as unpatentable over Fusz and Krishnan. Claims2. 3. 6-16. 18. 20. and21 The Appellants' contend the rejections dependent claims 2, 3, 6-16, 18, 20, and 21 are in error "for similar reasons to those provided for Claim 4" and based on their dependency from claims 1 and 19 (Appeal Br. 18). Thus, we are unpersuaded of error for the same reasons the arguments against the rejection of claims 1, 4, and 19 are unpersuasive. Claim 22 The Appellants' argument that the rejection of claim 22 is in error "for similar reasons to those provided for Claims 1 and 19" (Appeal Br. 18) is unpersuasive for the same reasons the arguments against the rejection of claims 1 and 19 are unpersuasive. 11 Appeal2014-000623 Application 12/831,967 We also find unpersuasive the Appellants' further argument that Krishnan does not disclose incorporating a textual or visual element associated with the review, comment, or purchase information that is visually integrated with other elements of the advertisement not associated with the review, comment, or purchase information. See Appeal Br. 18-19. The Specification provides no specific definition of "integrated" or "associated." The Examiner finds Krishnan teaches the limitation at Figures 4F-4G and "associated disclosure." Final Act. 8. Figure 4F of Krishnan depicts an Instant Messaging window displaying an advertisement (items 411, 412, 413), and a user's image (item 118") and history window with past messages (item 104) alongside (visually integrated with) the advertisement, whereby the image and history window are separate from (not associated with) the purchase information. Further, Krishnan discloses that an advertisement can be video-based (visual elements) or banners with images and/or text (having textual and visual elements). See Krishnan i-fi-14, 5, 48. Thus, the Examiner's finding that Krishnan teaches the limitation is adequately supported. For the above reasons, we are unpersuaded of error on the part of the Examiner in rejecting claim 22 as unpatentable over Fusz and Krishnan. DECISION The Examiner's rejection of claims 1-22 under 35 U.S.C. Â§ 112, second paragraph, is REVERSED. The Examiner's rejection of claims 1-18 and 22 under 35 U.S.C. Â§ 101 is REVERSED. 12 Appeal2014-000623 Application 12/831,967 The Examiner's rejection of claims 1-22 under 35 U.S.C. Â§ 103(a) is AFFIRMED. No time period of taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 13