Ex Parte Westphal et al

Patent Trial and Appeal BoardFeb 8, 2016

12850149 (P.T.A.B. Feb. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/850,149 08/04/2010 Geoffry A. Westphal 34018 7590 02/10/2016 GREENBERG TRAURIG, LLP 77 WEST WACKER DRIVE SUITE 3100 CHICAGO, IL 60601-1732 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. 31083.08US5 9231 EXAMINER HAQ,NAEEMU ART UNIT PAPER NUMBER 3625 NOTIFICATION DATE DELIVERY MODE 02/10/2016 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): j arosikg@gtlaw.com chiipmail@gtlaw.com escobedot@gtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEOFFRY A. WESTPHAL and THOMAS JOHN CARROLL Appeal 2013-004301 1 Application 12/850,1492 Technology Center 3600 Before ANTON W. PETTING, BIBHU R. MOHANTY, and NINA L. MEDLOCK, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1--4. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Our decision references Appellants' Appeal Brief ("App. Br.," filed August 14, 2012) and Reply Brief ("Reply Br.," filed January 29, 2013), and the Examiner's Answer ("Ans.," mailed December 4, 2012) and Final Office Action ("Final Act.," mailed April 12, 2012). 2 Appellants identify W.W. Grainger, Inc. as the real party in interest. App. Br. 2. Appeal2013-004301 Application 12/850,149 CLAIMED fNVENTION Appellants' claimed invention "generally relates to dynamic merchandising and, more particularly, relates to a system and method for directing a customer to additional purchasing opportunities" (Spec. 1, 11. 11- 13). Claim 1, reproduced below, is the sole independent claim and is representative of the subject matter on appeal: 1. A computer-readable media embodied in a non- transient, physical memory device having stored thereon computer-executable instructions for presenting additional purchasing opportunities to a consumer, the instructions performing steps comprising: discerning within a plurality of purchase orders pairings of products that were purchased together and that have at least one product attribute which differ; creating from the discerned pairings of products ordered lists which contain data indicative of degrees to which combinations of different product attributes appear within the discerned pairings of products; in response to data provided by the consumer indicative of a first product attribute, using the data to select from the created ordered lists one or more second product attributes wherein the one or more selected second product attributes are different from the first product attribute and wherein the one or more selected second product attributes occur in combination with the first product attribute within the discerned pairings of products; and presenting the one or more selected second product attributes to the consumer whereby the consumer may interact with the presented one or more selected second product attributes to access information relevant to products having the one or more selected second product attributes. 2 Appeal2013-004301 Application 12/850,149 REJECTIONS Claims 1-3 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bieganski (US 6,412,012 Bl, iss. June 25, 2002) and Peyrelevade (US 7,437,344 B2, iss. Oct. 14, 2008). Claim 4 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bieganski, Peyrelevade, and Song (US 7,254,582 B2, iss. Aug. 7, 2007). ANALYSIS Independent claim 1 and dependent claims 2 and 3 Appellants argue that the Examiner erred in rejecting independent claim 1under35 U.S.C. Â§ 103(a) because neither Bieganski nor Peyrelevade discloses or suggests "discerning within a plurality of purchase orders pairings of products that were purchased together and that have at least one product attribute which differ," as recited in claim 1 (App. Br. 3--4 and 6-7). The Examiner maintains that Bieganski discloses the argued limitation at column 16, lines 15--'25 and 57---64, column 18, lines 50-64, and Figure 9 (Final Act. 3; see also Ans. 2-3). We agree with Appellants. Bieganski is directed to a method for generating a compatibility-aware recommendation based on user preference data and rules governing the compatibility of the recommended item with other items purchased by the user (Bieganski, col. 4, 1. 62 - col. 5, 1. 11 ). Bieganski discloses a data structure 900, with reference to Figure 9, for inferring item compatibility. The data structure is a 2-dimensional array that stores information regarding the number of times each pair of items was purchased together, either as part of a single transaction or as part of a longer-term customer relationship (id. at col. 16, 11. 15-21 ). This information is augmented by a simple array 903 3 Appeal2013-004301 Application 12/850,149 that stores the number of times each item was purchased (id. at col. 16, 11. 22-25). Bieganski discloses that the complement rule inference method "finds pairs of items such that one item is generally purchased when the other is purchased" (id. at col. 16, 11. 47--49). Thus, for example, based on the number of times milk was purchased, the number of times cereal was purchased, and the number of times milk and cereal were purchased together, Bieganski discloses that a rule is inferred that when people buy cereal, they generally also buy milk (id. at col. 16, 11. 57---64). Bieganski further discloses (at column 18, lines 50-64) a "compatibility aware recommendation engine" in use in an on-line bookstore for offering recommendations to a user based on books that the user is currently planning to buy or has recently purchased. But we find nothing in this or any of the other cited portions of Bieganski that discloses or suggests "discerning pairings of products that were purchased together" and "that have at least one product attribute which differ," as recited in claim 1. Instead, Bieganski merely determines pairs of products that are purchased together - some of which may happen to differ in at least one product attribute, e.g., cereal and milk. In view of the foregoing, we do not sustain the Examiner's rejection of claim 1 under 35 U.S.C. Â§ 103(a). For the same reasons, we also do not sustain the Examiner's rejection of dependent claims 2 and 3. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious"). 4 Appeal2013-004301 Application 12/850,149 Dependent claim 4 The Examiner's rejection of claim 4 based on Song, in combination with Bieganski and Peyrelevade, does not cure the deficiency in the Examiner's rejection of independent claim 1. Therefore, we do not sustain the Examiner's rejection of claim 4 under 35 U.S.C. Â§ 103(a) for the same reasons set forth above with respect to claim 1. DECISION The Examiner's rejections of claim 1--4 under 35 U.S.C. Â§ 103(a) are reversed. REVERSED 5