Ex Parte Martin et al

Patent Trial and Appeal Board

Oct 21, 2015

12715311 (P.T.A.B. Oct. 21, 2015)

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.
12/715,311 03/01/2010 Anthony Martin 2103-3.747BS 8500
86636 7590 10/21/2015
BRUNDIDGE & STANGER, P.C.
2318 MILL ROAD, SUITE 1020
ALEXANDRIA, VA 22314
EXAMINER
BULLOCK, JOSHUA
ART UNIT PAPER NUMBER
2162
MAIL DATE DELIVERY MODE
10/21/2015 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 ANTHONY MARTIN, DAVID L. GOULDEN,
DOMINIC V. BENNETT, ROGER PETERSEN,
and REMIGIUSZ K. PACZKOWSKI
____________________

Appeal 2013-009908
Application 12/715,311
Technology Center 2100
____________________

Before CARL W. WHITEHEAD JR., HUNG H. BUI, and
NABEEL U. KHAN, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.2

1 The Real Party in Interest is CARHAMM LTD., LLC. Br. 2.
2 Our decision refers to Appellants’ Appeal Brief filed March 13, 2013
(“Br.”); Reply Brief filed August 5, 2013 (“Reply Br.”); Examiner’s Answer
mailed June 5, 2013 (“Ans.”); Final Office Action mailed March 23, 2012
(“Final Act.”); and original Specification filed March 1, 2010 (“Spec.”).
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STATEMENT OF THE CASE
Appellants’ Invention
Server-side database is known to store user behavior data collected by
servers connected to websites that users visit or search. Spec. ¶ 4.
Advertising can be targeted to a particular user based on matching the user
to the server-side database. Id. at ¶¶ 4–5.
In contrast, Appellants’ invention provides client-side software
(behavior watcher program) running on a client computer, shown in Figure
1, to monitor and summarize user behavior data on the client computer and
publish summarized user behavior data in the form of a memory structure on
the client computer that become accessible to a server hosting an authorized
domain when a user accesses the authorized domain without reliance on
matching the user to the server-side database. Id. at ¶ 5, Fig. 1, Abstract.
Appellants’ Figure 1 is reproduced below with additional markings
for illustration.

Appellants’ Figure 1 shows a behavior watcher program 120 installed
at a client computer 100 to observe user interest across different search
engines, web sites, and browsers.
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Illustrative Claim
Claims 1, 13, and 15 are independent. Claim 1 is illustrative of
Appellants’ invention, and is reproduced below:
1. A computer-implemented method, implemented, at least
in part, by hardware in combination with software, the method
comprising:
[1] collecting, using hardware in combination with
software on a client computer, cross-network user behavior data
related to a user’s interactions on the client computer with a
plurality of web sites,
wherein not all of the plurality of web sites are associated
with a content provider, and not all of the plurality of web sites
are associated with a portal;
[2] summarizing the cross-network user behavior data on
the client computer, the summarizing including, for a plurality
of subject categories, one or more of:
categorizing recency of the user visiting a web site
on the client computer in at least some of the plurality of
subject categories,
categorizing user category involvement from the
user visiting the website on the client computer in at least
some of the subject categories by rolling up indicators of
visits into categorical time segments,
categorizing recency of selections of at least one
banner advertisement on the client computer, and
categorizing user category involvement from user
selections of the at least one banner advertisement on the
client computer; and
[3] publishing the summarized cross-network user
behavior data on the client computer to one or more memory
structures on the client computer; and
[4] in response to the user accessing an authorized
domain via the client computer via a network, providing at least
some of the summarized cross-network user behavior data in
the one or more memory structures on the client computer to a
server at the authorized domain.

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App. Br. 14 (Claims Appendix) (paragraph notations added; disputed
limitations in italics).

Evidence Considered
Yu US 2003/0009497 A1 Jan. 9, 2003
Martin US 2003/0018778 A1 Jan. 23, 2003
Radwin US 2003/0050863 A1 Mar. 13, 2003
Zohar US 2005/0273463 A1 Dec. 8, 2005

Examiner’s Rejections
(1) Claims 1–3 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yu and Martin. Final Act 6–9.
(2) Claims 4–12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yu, Martin, and Radwin. Id. at 9–13.
(3) Claims 13 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yu, Martin, and Zohar. Id. at 14–17.
(4) Claims 14 and 16–19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Yu, Martin, Zohar, and Radwin. Id. at 17–21.

ANALYSIS
With respect to independent claim 1, the Examiner finds Yu discloses
a method comprising: (1) collecting, on a client computer, cross-network
user behavior data related to a user’s interactions on the client computer with
a plurality of web sites, and (2) summarizing the cross-network user
behavior data for a plurality of subject categories on the client computer.
Ans. 6–7 (citing Yu ¶¶ 31–32, 35–36, 39–41 “tracking user activities based
on user activity levels and the use of hierarchical categorization”).
The Examiner acknowledges Yu does not expressly disclose, but finds
Martin teaches: (3) publishing the summarized cross-network user behavior
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data on the client computer to one or more memory structures on the client
computer, and (4) in response to the user accessing an authorized domain via
the client computer via a network, providing at least some of the
summarized cross-network user behavior data in the one or more memory
structures on the client computer to a server at the authorized domain in
order to support the conclusion of obviousness. Id. at 6–7 (citing Martin ¶¶
59–60, 62) (emphasis added).
Appellants dispute the Examiner’s factual findings regarding Yu and
Martin. In particular, Appellants acknowledge Yu teaches tracking user
activities and the use of hierarchical categorization. App. Br. 9 (citing Yu ¶¶
31–32, 35). However, Appellants argue Yu’s user activities are tracked and
processed at web-based servers and server-side databases, not at Appellants’
claimed “client computer.” App. Br. 10 (citing Yu ¶¶ 22, 25); Reply Br. 4
(citing Yu ¶¶ 10, 11, 34).
In addition, Appellants acknowledge Martin teaches storing a private
portion of profile information about a user on the client side (i.e., client
computer, shown in Figure 2). App. Br. 11; Reply Br. 5–6 (citing Martin ¶
62). However, Appellants argue Martin’s storage of a private portion of a
user’s profile on the client side is not and does not teach or suggest
Appellants’ claimed “publishing the summarized cross-network user
behavior data on the client computer to one or more memory structures on
the client computer” as recited in claim 1. App. Br. 12; Reply Br. 6
(emphasis omitted, underlining added).
The Examiner responds: (1) the client (user’s browser) where
collected user data is sent in Yu’s system represents a client computer; (2) in
a network system, a client computer can act as a client as well as a server,
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and Yu’s “client is computer hardware or software that accesses a service by
way of a network, wherein the server is not always on another computer
system”; and (3) Appellants’ claim 1 “only requires storage on the client
side” and irrespective of a portion size, “Martin clearly teaches [0062]
storage of data on the client computer” and, as such, teaches “publishing the
summarized cross-network user behavior data on the client computer to one
or more memory structures on the client computer” as recited in Appellants’
claim 1. Ans. 3–4 (citing Yu ¶ 28, Martin ¶ 62).
We are persuaded by Appellants’ arguments and do not agree with the
Examiner’s findings. At the outset, we note Appellants already
acknowledge user behavior data is well known as well as the use of server-
side databases to store such user behavior data collected by servers as
disclosed by Yu. See Yu ¶¶ 26, 28. In contrast, Appellants’ claim 1 is
directed to client-side software (behavior watcher program) running on a
client computer, shown in Figure 1, to monitor and summarize user behavior
data on the client computer and publish the summarized user behavior data
in the form of a memory structure on the client computer. The memory
structure becomes accessible to a server hosting an authorized domain when
a user accesses the authorized domain without reliance on matching the user
to the server-side database. See Spec. ¶ 5, Fig. 1, Abstract, and Claim 1.
As recognized by Appellants, user behavior data sent to a user’s
browser at a client computer as disclosed by Yu is not the same as
Appellants’ claimed “user behavior data” collected, summarized and
published by a client computer. App. Br. 10 (citing Yu ¶¶ 22, 25); Reply Br.
4 (citing Yu ¶¶ 10, 11, 34). Likewise, a client computer and a server in a
client-server model have specific and different functions. For example, a
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server is a provider of a resource or service, and typically runs one or more
server programs which share their resources with clients. In contrast, a
client computer does not share any of its resources, but requests a server’s
content or service function. While the Examiner may be correct in noting
that a client computer can act as a client as well as a server, Yu’s
personalization system does not allow the server-side databases 120, 130
shown in Yu’s Figure 1 to act as a client computer. Instead, user behavior
data are collected by servers and stored in the server-side databases 120, 130
disclosed by Yu. See Yu ¶¶ 26, 28.
Moreover, and contrary to the Examiner’s characterization,
Appellants’ claim 1 requires more than a simple storage of any portion of
user profile on the client side. Instead, Appellants’ claim 1 recites, inter
alia: “publishing the summarized cross-network user behavior data on the
client computer to one or more memory structures on the client computer.”
As described by Appellants’ Specification, a memory structure can be a so-
called “cookie” and these cookies [including summarized cross-network user
behavior data] are provided to a server at an authorized domain, via a
network, when the user uses the network to access the authorized domain.
These features are neither taught nor suggested by Yu or Martin, whether
taken individually or in combination, as alleged by the Examiner.
“[O]bviousness requires a suggestion of all limitations in a claim.”
CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
(citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). Because the
Examiner has not shown the combination of Yu and Martin discloses or
suggests all limitations of Appellants’ claim 1, we do not sustain the
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Examiner’s obviousness rejection of Appellants’ claim 1 and its dependent
claims 2–12 and 20.
With respect to claims 13 and 15, Appellants reiterate the same
arguments presented relative to claim 1. App. Br. 12–13. For the same
reasons discussed relative to claim 1, we also do not sustain the Examiner’s
obviousness rejection of claims 13 and 15 and their respective dependent
claims 14 and 16–19.

CONCLUSION
On the record before us, we conclude Appellants have established the
Examiner erred in rejecting claims 1–20 under 35 U.S.C. § 103(a).

DECISION
As such, we REVERSE the Examiner’s final rejection of claims 1–20.

REVERSED

ELD