Ex Parte Shahoumian et al

Patent Trial and Appeal Board

Nov 6, 2012

10157661 (P.T.A.B. Nov. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TROY SHAHOUMIAN and HARLAN CROWDER
___________

Appeal 2011-000026
Application 10/157,661
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000026
Application 10/157,661

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STATEMENT OF THE CASE
Troy Shahoumian et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1, 2, 4-12, 14-16, and 18. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for customizing the content of
targeted advertising comprising:
creating a record of in-store behavior having at
least one item of expressed interest;
creating a targeted message comprising
additional information about said item of
expressed interest, wherein said creating of said
targeted message comprises creating a
customized Web page having said additional
information about said item of expressed
interest; and
sending said targeted message to a specific
audience.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Sep. 18, 2009) and Reply Brief (“Reply Br.,” filed Aug. 30,
2010), and the Examiner’s Answer (“Ans.,” mailed Jul 1, 2010).

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
“Belk Launches E-Commerce Website Featuring New Online Gift
Registry For Bridal Customers.” PR Newswire, Jan. 18, 2001 at p. 1.
[Hereinafter, Belk.]
William M. Bulkeley, “Technology (A Special Report) – What’s
Ahead for . . . Retailing: Retail stores are bringing the Net into the
world of bricks and mortar.” Wall St. J., Jun. 25, 2001, at R16.
[Hereinafter, Bulkeley.]
The Examiner took Official Notice that “it is old and well known to
print any received message or a Web page if it is desired to keep a
hard copy of the message or Web page.” Ans. 7. [Hereinafter,
Official Notice.]

The following rejections are before us for review:
1. Claims 15, 16, and 18 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which applicant
regards as the invention.
2. Claims 1-2, 5-7, 9-10, and 14-16 are rejected under 35 U.S.C.
§102(a) as being anticipated by Belk.
3. Claims 4, 12, and 18 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Belk and Official Notice.
4. Claims 8 and 11 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Belk and Bulkeley.

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Application 10/157,661

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ISSUES
The first issue is whether claims 15, 16, and 18 are indefinite under 35
U.S.C. § 112, second paragraph. Specifically, whether the Examiner has
established a prima facie showing that claim 15 is indefinite because the
Specification fails to set forth sufficient corresponding structure for the
claimed means-plus-function limitations
The second issue is whether claims 1-2, 5-7, 9-10, and 14-16 are
anticipated under 35 U.S.C. § 102(a) by Belk. Specifically, the issue is
whether Belk describes all of the limitations of claim 1. The rejection of
claims 4, 12, and 18 under §103(a) as being unpatentable over Belk and
Official Notice and the rejection of claims 8 and 11 under 103(a) as being
unpatentable over Belk and Bulkeley also turn on this issue.

ANALYSIS
The rejection of claims 15, 16, and 18 under § 112, second paragraph, as
indefinite
We are persuaded by the Appellants’ argument that the Examiner
erred in rejecting claim 15 as indefinite. See Reply Br. 1-2. In rejecting
claim 15, the Examiner does no more than assert that “the Specification
provides no software instructions or algorithms for providing the functions”
or the means for collecting, means for creating a category, or means for
creating a target. See Ans. 11. Further, we note that the Examiner provides
no explanation as to why the Appellants’ specific citations (see Reply Br. 1-
2 and App. Br. 11-12) to the Specification do not show the corresponding
structure.
Also, where relatively low level functions are claimed, the disclosure of a
general purpose computer may be sufficient.
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Katz has not claimed a specific function performed by a
special purpose computer, but has simply recited the
claimed functions of "processing," "receiving," and
"storing." Absent a possible narrower construction of the
terms "processing," "receiving," and "storing," [] those
functions can be achieved by any general purpose
computer without special programming. As such, it was
not necessary to disclose more structure than the general
purpose processor that performs those functions. Those
seven claims do not run afoul of the rule against purely
functional claiming, because the functions of
"processing," "receiving," and "storing" are coextensive
with the structure disclosed, i.e., a general purpose
processor.
Katz v Am. Airlines, 639 F,3d 1303, 1316 (Fed,Cir. 2011)
Accordingly, the rejection of claims 15, 16, and 18 under 35 U.S.C.§ 112,
second paragraph, as being indefinite is reversed.

The rejection of claims 1-2, 5-7, 9-10, and 14-16 under § 102(a) as being
anticipated by Belk
The Appellants argue claims 1-2, 5-7, 9-10, and 14-16 as a group.
See App. Br. 14-17. We select claim 1 as the representative claim for this
group, and the remaining claims 2, 5-7, 9-10, and 14-16 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
We are not persuaded by the Appellants’ argument (App. Br. 14-17)
that that the Examiner erred by rejecting claim 1 as being anticipated by
Belk. We agree with the Examiner for the reasons discussed on pages 11-15
of the Answer, which we will not repeat here, that Belk describes all of the
limitations of claim 1. Accordingly, the rejection of claims 1-2, 5-7, 9-10,
and 14-16 under 35 U.S.C. § 102(a) as being anticipated by Belk is affirmed.

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The rejection of claims 4, 12, and 18 under §103(a) as being unpatentable
over Belk and Official Notice and the rejection of claims 8 and 11 under
103(a) as being unpatentable over Belk and Bulkeley
We also shall sustain the standing 35 U.S.C. § 103(a) rejections of
dependent claims 4, 8, 11, 12, and 18 as being unpatentable over the prior art
since the Appellants have not challenged such with any reasonable
specificity, thereby allowing claims 4, 8, 11, 12, and 18 to stand or fall with
their parent claims (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).

DECISION
The decision of the Examiner to reject claims 1, 2, 4-12, 14-16, and
18 is affirmed.
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) (2011).

AFFIRMED

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