Ex Parte Nangle

Patent Trial and Appeal Board

Mar 8, 2018

13729969 (P.T.A.B. Mar. 8, 2018)

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.
13/729,969 12/28/2012 Paul M. Nangle III RSW920120145US1 1165
75532 7590
LEE LAW, PLLC
IBM SVL IP
P.O. BOX 189
PITTSBORO, NC 27312
EXAMINER
JOHNSON, ROBERT C
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
03/12/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @ leelawpllc .com
docketing_archive @ leelawpllc .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL M. NANGLE III1
Appeal 2016-007718
Application 13/729,969
Technology Center 3600
Before CAROLYN D. THOMAS, MICHAEL M. BARRY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Non-Final Rejection of claims 10-25, all the pending claims in
the present application. Claims 1-9 are canceled. See Claims Appendix.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to capturing web marketing
channel correlation information for multiple web access sessions. See
Abstract.
appellant names International Business Machines Corporation as the real
party in interest (App. Br. 3).
Appeal 2016-007718
Application 13/729,969
Claim 10 is illustrative:
10. A system, comprising:
a communication interface; and
a processor programmed to:
update, based upon captured web marketing
channel correlation information that identifies each
marketing channel accessed by a consumer in association
with an order placed by the consumer via a web sales-
capable server, a respective one of a first-click
accumulated statistical historical effectiveness metric, a
middle-click accumulated statistical historical
effectiveness metric, and a last-click accumulated
statistical historical effectiveness metric of each
correlated marketing channel according to whether the
respective marketing channel originated a first-click web
access session, originated one of at least one middle-click
web access session, or originated a last-click web access
session correlated with the order; and
evaluate, for each correlated marketing channel, a
historically-accumulated effectiveness of the respective
marketing channel at contributing to orders over time
using the updated respective one of the first-click
accumulated statistical historical effectiveness metric, the
middle-click accumulated statistical historical
effectiveness metric, and the last-click accumulated
statistical historical effectiveness metric of each
correlated marketing channel.
Appellant appeals the following rejections:
R1. Claims 10-25 are provisionally rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over claims 1-9 of copending Application No. 14/060,154 (Non-Final Act.
3);
R2. Claims 10-25 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception without significantly
2
Appeal 2016-007718
Application 13/729,969
more (id. at 4-6);
R3. Claims 10-14, 16-22, 24, and 25 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Hsiao (US 2011/0302025 Al, Dec. 8, 2011)
(id. at 6-20); and
R4. Claims 15 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hsiao and Latona (US 2005/0027587 Al, Feb. 3, 2005)
(id. at 20-21).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
RELATED DECISION
The Board’s related decision (PTAB Appeal No. 2016-008079
(Application No. 14/060,154) (Examiner Affirmed) addresses the same or
similar issues such that our decision, analysis, and findings there are adopted
and incorporated by reference herein.
ANALYSIS
Double Patenting Rejection
Issue 1: Did the Examiner err in provisionally rejecting the claims
under the judicially created doctrine of obviousness-type double patenting?
The Examiner provisionally rejects claims 10-25 under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over claims 1-9 of copending Application No. 14/060,154 (see Non-Final
Act. 3).
3
Appeal 2016-007718
Application 13/729,969
Appellant contends that “this issue is not yet ripe for consideration
because the present application has not been indicated to be allowable”
(App. Br. 20).
“Panels have the flexibility to reach or not reach provisional
obviousness-type double-patenting rejections.” Ex parte Jerg, No. 2011-
000044, 2012 WL 1375142, at *3 (BPAI 2012) (expanded panel)
(informative) (emphasis added). Given this flexibility, we note that
arguments not made are considered waived. See 37 C.F.R.
§ 41.37(c)(l)(vii). Therefore, we pro forma affirm the Examiner’s
provisional obviousness-type double patenting rejection of claims 10-25.
Rejection under §101
Claims 10—25
Issue 2: Did the Examiner err in finding that the claims are directed
to non-statutory subject matter?
The Examiner finds that “[cjlaims 10-17 are directed to an abstract
idea ... of updating web marketing channel data for first click, middle-click,
and last-click accumulated historical effectiveness metrics that led to
conversions . . . [which] is a fundamental economic practice . . . [and]
includes the abstract idea of evaluating marketing channels” (Non-Final Act.
4). The Examiner further finds that the claims “require no more than a
generic computer performing functions that are well-understood, routine and
conventional activities previously known in the industry” {id. at 5). The
Examiner further finds that “[c]laims 18-25 are rejected as ineligible ... for
substantially the same reasons as claims [10]—17” (id. ).
Appellant contends that the invention “improves computing
technology itself by improving the operating platform of a web sales-capable
4
Appeal 2016-007718
Application 13/729,969
server to integrate accumulated statistical historical effectiveness metrics of
individual marketing channels” (App. Br. 23), and is “automation that
enhances computing technology itself’ {id.). Appellant further argues the
“claimed subject matter is not directed to economy or commerce” {id. at 24),
“is not directed to agreements between people ... is not directed to creating
a contractual relationship . . . [and] is further not directed to mitigating risks
or hedging” {id. at 25). Appellant also contends that the claimed invention
“cannot be performed by the human mind or mentally, and is not a mental
process” {id. at 25), and “cannot be performed by a human using pen and
paper” (id. at 26).
We disagree with Appellant’s contentions. Instead, we find that the
Examiner has provided a sufficient response supported by a preponderance
of evidence (Ans. 20-25). As such, we refer to, rely on, and adopt the
Examiner’s findings and conclusions set forth in both the Non-Final Action
and the Answer. Our discussions here will be limited to the following points
of emphasis.
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: laws of nature, natural phenomena,
and abstract ideas are not patentable. Alice Corp. v. CLS Banklnt'l, 134 S.
Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63, 67 (1972)
(“Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.”). Notwithstanding, that a law of nature
or an abstract idea, by itself, is not patentable, the application of these
5
Appeal 2016-007718
Application 13/729,969
concepts may be deserving of patent protection. Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293-94 (2012). In Mayo, the
Court stated that “to transform an unpatentable law of nature into a patent
eligible application of such a law, one must do more than simply state the
law of nature while adding the words ‘apply it.’” Id. at 1294.
In Alice, the Court reaffirmed the framework set forth previously in
Mayo “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims “individually and ‘as an ordered combination”’ to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S.
Ct. at 1298, 1297).
In other words, the second step is to “search for an ‘inventive
concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting
Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea
“cannot be circumvented by attempting to limit the use ... to a particular
technological environment or adding insignificant post-solution activity.”
Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (citation and internal
quotation marks omitted). The Court in Alice noted that “‘[s]imply
appending conventional steps, specified at a high level of generality,’ was
6
Appeal 2016-007718
Application 13/729,969
not ‘enough’ [inMayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct.
at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Step one: Are the claims at issue directed to a patent-ineligible concept?
Claim 10 recites two functions of a processor: (a) updating metrics
based on captured data and (b) evaluating an effectiveness using the metrics.
Each of these steps involve “marketing channel” information. First, middle,
and last-click accumulated statistical historical effectiveness metrics are
updated and a historically-accumulated effectiveness of the respective
marketing channel is evaluated. This is the essence of updating collected
data, and evaluating web marketing channel data.
Appellant disputes that the claimed subject matter is directed to an
abstract idea, in essence because it “is not a mental process” (App. Br. 25)
and “is not directed to economy or commerce” {id. at 24). However, the
Examiner highlights that the claims are directed to a fundamental economic
practice of updating and evaluating marketing channels (Non-Final Act. 4-
5), i.e., “obtaining and comparing intangible data” (Ans. 20).
In line with the Examiner’s findings, we note that information
collection and analysis, including when limited to particular content, is
within the realm of abstract ideas. See, e.g., Elec. Power Grp. LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that “collecting
information, analyzing it, and displaying certain results of the collection and
analysis” are “a familiar class of claims ‘directed to’ a patent-ineligible
concept”); Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94
(Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs.for
7
Appeal 2016-007718
Application 13/729,969
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); and CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).
Further, claim 10 employs little more than updating and evaluating captured
web channel data in association with an order placed. Similar processes
have been found to be abstract ideas. See Digitech, 758 F.3d at 1351
(quoting Parker v. Flook, 437 U.S. 584, 595 (1978)); see also In re
Maucorps, 609 F.2d 481, 482, 485-86 (CCPA 1979) (holding a method of
“optimizing the organization of sales representatives” unpatentable), cited in
CyberSource, 654 F.3d at 1371 n.2.
Because the claims are directed to information collection, updating,
and evaluation of data, an abstract idea, the claims at issue are directed to
patent-ineligible subject matter.
Step two: Is there something else in the claims that ensures that they are
directed to significantly more than a patent-ineligible concept?
The Examiner finds that “Appellant’s claimed method can be
performed by a general purpose computer” (Ans. 23) and there is “no
improvement^ to the functioning of the computer itself’ (id. at 24). We
agree with the Examiner.
“A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].”’ Alice, 134 S. Ct. at 2357 (brackets in
original) (quoting Mayo, 132 S. Ct. at 1297). The prohibition against
patenting an abstract idea “cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment or adding
insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. at 610-11
8
Appeal 2016-007718
Application 13/729,969
(citation and internal quotation marks omitted). The recitation in claim 10
pertaining to “a processor programmed to” is analogous to the recitation of a
conventional “computer” discussed in Alice.
Additionally, as recognized by the Federal Circuit in Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), Bilski’s “machine-or-
transformation” (MoT) test can also provide a “useful clue” in the second
step of the Alice framework. See Bilski, 561 U.S. at 611. Under Bilski’s
MoT test, a claimed process can be considered patent-eligible under § 101 if:
(1) “it is tied to a particular machine or apparatus”; or (2) “it transforms a
particular article into a different state or thing.” In re Bilski, 545 F.3d 943,
954 (Fed. Cir. 2008) (citing Gottschalk, 409 U.S. at 70, 93 S. Ct. 253).
Here, Appellant contends the invention “improves computing
technology itself by improving the operating platform of a web sales-capable
server” (App. Br. 23). In essence, Appellant merely contends that system
claim 10, and its corresponding computer program product claim 18, are tied
to a computer and offer improvements to computer technology, but do not
argue that the claims are involved in any type of transformation of any
particular article.2 Claim 10 merely recites a “processor programmed to”
(see claim 10). We agree with the Examiner that claim 10 simply
incorporates a generic component, i.e., a computing device, into the system
to perform the abstract concept of updating and evaluating data.
As recognized by the Supreme Court, “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” See Alice, 134 S. Ct. at 2358-59 (concluding claims
2 Alice also confirmed that if a patent’s systems claims are no different in
substance from its method claims, they will rise and fall together. 134 S. Ct.
at 2360. The same was true of the Alice patent’s media claims. Id.
9
Appeal 2016-007718
Application 13/729,969
“simply instructing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer” not patent eligible); see
also Ultramercial, 772 F.3d at 715-16 (holding claims merely reciting an
abstract idea of using advertising as currency as applied to particular
technological environment of the Internet are not patent eligible); and
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012)
(“[sjimply adding a ‘computer aided’ limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible” (internal citation omitted)). Limiting such an abstract concept of
“updating and evaluating marketing channels” to generic components, such
as computer-implemented, does not make the abstract concept patent-
eligible under 35 U.S.C. § 101.
In addition, we note Appellant’s claims are neither rooted in computer
technology as outlined in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257-58 (Fed. Cir. 2014) (cautioning that “not all claims purporting to
address Internet-centric challenges are eligible for patent”), nor do they seek
to improve any type of computer capabilities, such as a “self-referential table
for a computer database” outlined in Enflsh, LLC v. Microsoft Corp., 822
F.3d 1327, 1336-37 (Fed. Cir. 2016). Instead, Appellant’s independent
claims 10 and 18 are directed to a patent-ineligible abstract concept and do
not recite something “significantly more” under the second prong of the
Alice analysis. “Indeed, the claim language here provides only a result
oriented solution, with insufficient detail for how a computer accomplishes
it. Our law demands more.” Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
10
Appeal 2016-007718
Application 13/729,969
Thus, we sustain the Examiner’s rejection of claims 10 and 18 as well
as respective dependent claims 11-17 and 19-25 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter in light of Alice and its
progeny. For the foregoing reasons, Appellant’s contentions are
unpersuasive as to error in the rejection under 35 U.S.C. § 101.
Rejection under § 102(b) under Hsiao
Claims 10, 17, 18, and 25
Issue 3: Did the Examiner err in finding that Hsiao discloses first,
middle, and last-click web access sessions, as set forth in claim 10?
Appellant contends that Hsiao “is different from and does not
factually disclose separate accumulated statistical historical effectiveness
metrics (first-click, middle-click, and last-click) associated with each of a set
of marketing channels” (App. Br. 35) because “the disclosed conversion
paths of the Hsiao reference factually disclose a single web access session”
{id. at 36). Appellant further contends that “[t]he cited ‘keywords’ ... of the
Hsiao reference are fundamentally different from web marketing channels”
(App. Br. 37).
The Examiner finds “that like Appellant’s claimed invention Hsiao
teaches analyzing conversion cycles over multiple user sessions for
correlations related to conversions and measuring the performance for first-
clicks, last-clicks, or middle-clicks” (Ans. 4) (emphasis omitted) (citing
Hsiao 46-47, 67, 76-78, 398-99). This is because “Hsiao teaches
analyzing a conversion cycle that can be measured and/or constrained by
time or actions and can span multiple user sessions” {id. at 6) (emphasis
omitted) (citing Hsiao 56, 77, 405-06, 411-15, 420, 437). We agree with
the Examiner.
11
Appeal 2016-007718
Application 13/729,969
We refer to, rely on, and adopt the Examiner’s findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.
For example, Hsiao discloses a system for providing conversion path
performance measures and reports whereby “user interactions include any
presentation of content to a user and any subsequent affirmative actions or
non-actions” 46). In Hsiao, “[u]ser interaction measures can include one
or more of time lag measures (i.e., measures of time from one or more
specified user interactions to a conversion), . . . [and] user interaction paths
(i.e., sequences of user interactions that occurred prior to the conversion)”
fl[ 47). Further, Hsiao discloses that “every subsequent page request to the
same server will include the cookie for that server. . . . [T]he use of cookies
allows an external service ... to track particular actions and status of a user
over multiple sessions” 56), “[t]he conversion cycle can be measured
and/or constrained by time or actions and can span multiple user sessions”
fl[ 77), and user interaction data “can be drawn from multiple sources,” such
as “an analytics apparatus that tracks user interactions with web pages”
411).
In other words, Hsiao discloses a conversion path that can track
various types of interactions with web marketing channels (i.e., affirmative
actions such as purchases and non-actions such as no purchases) of the user
over multiple web sessions, i.e., by using cookies to track particular actions
over multiple sessions. Thus, contrary to Appellant’s contentions (see App.
Br. 16-17), the disclosed conversion path in Hsiao is not limited to a single
web access session, but clearly can span multiple web sessions over time and
many types of interactions (i.e., affirmative actions or non-actions) within
12
Appeal 2016-007718
Application 13/729,969
those sessions. Therefore, we find that the claimed web marketing channel
correlation information that identifies each marketing channel accessed by a
consumer in association with an order placed by the consumer via a web-
sales-capable server reads on Hsiao’s aforementioned conversion cycle.
The Examiner further finds that the “targeting keywords in ad groups
cause presentation of the first clicked ad in a conversion path [and] [t]his
first clicked ad is part of the marketing channel that leads to a conversion . . .
[and] can also present middle click and last click ads in the conversion path”
(Ans. 10) (citing Hsiao 56, 67, 77, 385, 399). We agree with the
Examiner.
For example, Hsiao discloses that keywords cause presentation of
advertisements prior to a conversion and contribute to measuring the
conversion cycle (see 66-69). Furthermore, as noted supra, Hsiao clearly
discloses that “[t]he conversion cycle [itself] can be measured and/or
constrained by time or actions and can span multiple user sessions” (][ 77),
i.e., originate from discrete and different web access sessions. Specifically,
Hsiao discloses that:
if an advertiser is provided data specifying that, on average, the
time from a converting user’s . . . first exposure to an
advertisement^ i.e., first click] to a conversion is 20 days, the
advertiser can use this data to infer an amount of time that users
spend researching alternative sources prior to converting
fl[ 81). In other words, Hsiao looks collectively at multiple sessions from a
user’s first visit to a last visit, including researched alternative sources, in
determining the conversion cycle.
13
Appeal 2016-007718
Application 13/729,969
Thus, we find unavailing Appellant’s aforementioned contention that
the disclosed web access session of the Hsiao reference is a single web
access session, given the disclosures highlighted supra.
Accordingly, we sustain the Examiner’s anticipation rejection of
independent claims 10 and 18, and dependent claims 17 and 25, which
Appellant argues are patentable for similar reasons (see App. Br. 57-60).
Claims 11 and 19
Appellant contends that the Examiner’s rejection “provides no
citations to any evidence” for the claimed “capturing . . . the web marketing
channel correlation information” (App. Br. 42).
In response, the Examiner finds that “Hsiao teaches using cookies to
capture data over multiple web access sessions” (Ans. 11) (emphasis
omitted). We agree with the Examiner.
For example, Hsiao discloses that “every subsequent page request to
the same server will include the cookie for that server [and] [t]he cookie can
store a variety of data ... to track particular actions and status of a user over
multiple sessions” (^ 56). In other words, Hsiao captures web channels over
multiple sessions by storing cookies for sites visited by the user.
Thus, we find unavailing Appellant’s contention that Hsiao fails to
capture web marketing channel correlation information, given the
aforementioned disclosures. Accordingly, we affirm the rejection of claims
11 and 19.
14
Appeal 2016-007718
Application 13/729,969
Claims 12 and 20
Appellant contends that “[t]he rejection appears to omit any
consideration of Appellant’s claimed ‘statistical marketing attribution
correlation model’ . . . [because] [n]o model has been alleged or factually
cited within the evidence of record” (App. Br. 48).
We agree with Appellant that the Examiner is silent as to any
“statistical marketing attribution correlation model” being used in the cited
art (see Ans. 11-12; see also Final Act. 9-10 (citing Hsiao 73-76, 80-81,
with the entire explanation consisting of “the keywords are attributed to the
conversions that they led to”)). Here, the Examiner merely highlights
Hsiao’s teachings related to a database and records contained therein. No
mention of where the claimed “model” is found in Hsaio is mentioned in the
Examiner’s findings for claims 12 and 20.3 An Examiner cannot entirely
ignore any limitation in a claim while determining whether the subject
matter of the claim would have been anticipated or obvious. In re Wilson,
424 F.2d 1382, 1385 (CCPA 1970).
As such, we reverse the rejection of claims 12 and 20 under 35 U.S.C.
§ 102(b) as being anticipated by Hsiao.
Claims 13, 14, 21, and 22
In rejecting claim 13, the Examiner finds Hsiao discloses “user
interaction data can be tracked by a cookie that is usable to correlate web
3 Although the Examiner fails to address the “model” limitation for claims
12 and 20, the Examiner made separate findings for the “model” in claims
16 and 24 (see Ans. 15) which Appellant failed to rebut. In case of further
prosecution, the Examiner should consider making similar findings for
claims 12 and 20.
15
Appeal 2016-007718
Application 13/729,969
access sessions” (Non-Final Act. 10 (citing Hsiao 419-20)). Appellant
contends the Examiner errs because “[t]he cited disclosure of a cookie [in
Hsiao] is factually different from creating a session correlation data structure
within a memory” (App. Br. 50) because “using different cookies directly []
does not factually disclose a single unified session correlation data structure
that is separate from a cookie” {id. at 51).
Although the Examiner points out, and we agree, that “Hsiao teaches
that the user interaction data can be tracked by a cookie” (Ans. 13, citing
Hsiao 421-22) (emphasis omitted), the Examiner is silent about where or
how Hsiao teaches creating “a session correlation data structure,” as set forth
in claim 13. We agree with Appellant that by themselves, Internet “cookies”
do not disclose creating the “session correlation data structure,” as recited.
Here, the Examiner’s findings are silent as to any such data structure
{see Ans. 12-13). As noted supra, an Examiner cannot entirely ignore any
limitation in a claim while determining whether the subject matter of the
claim would have been anticipated or obvious. As such, we reverse the
rejection of claims 13 and 21 under 35 U.S.C. § 102(b) as being anticipated
by Hsiao. Because this issue is also dispositive regarding our reversal of
dependent claims 14 and 22, which depend from claims 13 and 21
respectively, we need not address Appellant’s separate arguments regarding
claims 14 and 22 (App. Br. 52-54).
Accordingly, the anticipation rejection of claims 13, 14, 21, and 22 is
reversed.
16
Appeal 2016-007718
Application 13/729,969
Claims 16 and 24
Regarding claim 16’s “statistical marketing attribution correlation
model,” the Examiner finds that Hsiao “teaches the creation of a campaign
performance report that provides the same factual data as the model required
by Appellant’s claims” (Ans. 15 (citing Hsiao 73-76)) and Hsiao also
“teaches statistical measures . . . [and] a histogram” {id., citing Hsiao
121-22, 173, 179)). Similar findings were made for claim 24.
Although Appellant contends in the Appeal Brief that in Hsiao the
“generation of a report is factually different from creation of a ‘model’ as
required by Appellant’s claims, and is different from creation of a statistical
marketing attribution correlation model” (App. Br. 56) (emphasis added),
Appellant’s Reply Brief fails to rebut the Examiner’s additional findings in
the Answer regarding Hsiao’s disclosed “statistical measures” and does not
explain how or why this is distinguishable from the claimed model (see
Reply Br. 15-16).
Appellant’s Specification indicates that “[t]he statistical marketing
attribution correlation model may be created to incorporate a statistically-
accumulated marketing channel attribution metric” (][ 15). In other words,
the claimed “model” reads on statistical measures being performed. The
Examiner has directed our attention to the fact that Hsiao discloses providing
“statistical measures of the measure of time between the reference user
interaction and the associated conversions” {see TJ 121). The measures “can
be used to generate a time lag distribution” that may be represented by a
histogram (Hsiao ^ 122). Moreover, “the time lag type control 326 provides
user options to display conversion information from the ‘first impression,’
from the ‘first click,’ or from the ‘last click’ (Hsiao ^ 130). Thus, even if
17
Appeal 2016-007718
Application 13/729,969
Hsiao’s report is distinguishable from the claimed model, as argued by
Appellant, such contentions fail to explain how the claimed model
distinguishes over Hsiao’s disclosure of generating statistical measures and
histograms.
Accordingly, we affirm the Examiner’s rejection of claims 16 and 24.
Rejection under § 103(a) under Hsiao andLatona
Claims 15 and 23
Issue 4: Did the Examiner err in finding that the combined cited art
teaches or suggests assigning a prorated portion, as set forth in claims 15 and
23?
Regarding “assigning] a prorated portion of revenues generated by
the order to each correlated marketing channel” as recited in claims 15 and
23, Appellant contends that “spending revenue (‘revenue spent’) is factually
different from Appellant’s claimed assigning prorated portion of revenues
‘to’ marketing channels that originated completely different web access
‘sessions’ that contributed over time to an order” (App. Br. 62).
Appellant further contends that “[tjhere is no disclosure within the Latona
reference as cited of any correlation between the advertisements” (id. at 63)
and “[t]he term ‘prorate’ does not appear to exist within the Latona
reference” (id.).
In response, the Examiner finds that Latona “teaches correlating the
advertisements by comparing their relative effectiveness to each other,
including the revenue generated by each advertisement” (Ans. 18) (emphasis
omitted) (citing Latona 38^41) and “the Hsiao reference does factually
disclose Appellant’s claimed first-click, middle-click, and last-click
18
Appeal 2016-007718
Application 13/729,969
accumulated statistical historical effectiveness metrics” {id. at 18-19). We
agree with the Examiner.
The Examiner is relying on the combined teachings of Hsiao and
Latona to teach or suggest the claimed assigning a prorated portion of
revenues to each of the first, middle, and last-click metrics. For example,
Latona teaches looking at the effectiveness of advertisements and
ascertaining which advertisements realize the most revenue per impression
{see 37). In Latona, “[e]ach advertisement is associated with ... a
description of the incentive, ... the revenue realized (e.g., an aggregation of
all revenues realized through all impressions rendered or some subset
thereof’ 38) and an advertisement (ADI) “is associated with a revenue
sharing incentive” fl] 39). In other words, Latona assigns a prorated portion
of revenues, i.e., revenue sharing incentive, to each correlated marketing
channel. The ordinary and usual meaning of “prorated” is to divide. See
Merriam-Webster’s Collegiate Dictionary, p.944 (9th ed. 1990). Here,
Latona is clearly dividing the revenues among the advertisements, i.e.,
marketing channels.
Further, as noted supra, Hsiao teaches a conversion path that can track
various types of interactions (i.e., affirmative action such as purchases and
non-actions such as no purchases) of the user over multiple web sessions.
Specifically, Hsiao discloses that “[t]he conversion cycle [itself] can be
measured and/or constrained by time or actions and can span multiple user
sessions” fl] 77), i.e., originate from discrete and different web access
sessions. In other words, Hsiao looks collectively at multiple sessions from
a user’s first visit to a last visit, including researched alternative sources, in
determining the conversion cycle. The Examiner further determines “it
19
Appeal 2016-007718
Application 13/729,969
would have been obvious ... to modify the system of Hsiao ... to assign a
prorated portion of revenues, as taught by Latona, in order to increase the
amount of money spent on advertisements associated with user conversions”
(Non-Final Act. 21 (citing Hsiao ^ 81)).
Therefore, we agree with the Examiner that the combined teachings of
Hsiao and Latona teaches or suggests the claimed assigning a prorated
portion of revenues, as set forth in claims 15 and 23. Furthermore,
Appellant’s argument against Latona separately from Hsiao does not
persuasively rebut the combination made by the Examiner. One cannot
show non-obviousness by attacking references individually, where the
rejections are based on combinations of references. In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425-26
(CCPA 1981).
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 15 and 23.
DECISION
We reverse the Examiner’s § 102(b) rejection of claims 12-14 and
20-22.
We affirm the Examiner’s provisional double patenting rejection of
claims 10-25.
We affirm the Examiner’s § 101 rejection of claims 10-25.
We affirm the Examiner’s § 102(b) rejections of claims 10, 11, 16-19,
24, and 25.
We affirm the Examiner’s § 103(a) rejection of claims 15 and 23.
20
Appeal 2016-007718
Application 13/729,969
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
21