Ex Parte Horadan et al

Patent Trial and Appeal Board

Dec 29, 2016

13114780 (P.T.A.B. Dec. 29, 2016)

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.
13/114,780 05/24/2011 Peter H. HORADAN INK.GUM 2195
82551 7590 12/30/2016
Mersenne Law
9600 S.W. Oak Street
Suite 500
Tigard, OR 97223
EXAMINER
MANDEL, MONICA A
ART UNIT PAPER NUMBER
3621
MAIL DATE DELIVERY MODE
12/30/2016 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 PETER H. HORADAN, MATTHEW R. SHANAHAN, and
MARK B. UPSON
____________

Appeal 2014-009021
Application 13/114,7801
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JAMES A. WORTH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 17–28. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

1 According to the Appellants, the real party in interest is ServiceSource
International, Inc. Appeal Br. 1.
Appeal 2014-009021
Application 13/114,780

2
ILLUSTRATIVE CLAIM
17. A non-transitory computer-readable medium
containing instructions to cause a programmable processor to
perform operations comprising:
receiving a device fingerprint from a client computer;
locating a similar device fingerprint in a database;
extracting a persistent token corresponding to the similar
device fingerprint in the database; and
transmitting a message to cause the client computer to
adopt the persistent token for a future sequence of requests for
digital resources.

REJECTIONS
I. Claims 17–19 and 21–23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over McGee et al. (US 2003/0131045 A1, pub. July 10,
2003) (“McGee”) and Busch et al. (US 2004/0054784 A1, pub. Mar. 18,
2004) (“Busch”).
II. Claims 20, 24, 25, and 28 are rejected under 35 U.S.C. § 103(a)
as unpatentable over McGee, Busch, and Kolkowitz et al. (US 2010/0293094
A1, pub. Nov. 18, 2010) (“Kolkowitz”).
III. Claims 26 and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over McGee, Bush, and Official Notice.

FINDINGS OF FACT
We rely upon and adopt the Examiner’s findings stated in the Final
Office Action at pages 3–9 and the Answer at pages 2, 3, and 5, except as
stated otherwise in the Analysis below. Additional findings of fact may
appear in the Analysis below.
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ANALYSIS
Independent Claim 17
The Appellants argue that the Examiner erred in rejecting independent
claim 17 because of alleged shortcomings in the McGee reference. Appeal
Br. 3–6.
In one aspect, the Appellants contend that McGee fails to teach
features of claim 17 because McGee allows multiple devices to be
recognized as tied to one user (associated with a particular account), whereas
the claim involves mechanisms for identifying a particular single device.
According to the Appellants, the claimed method
goes more-or-less directly from “device fingerprint” to
“persistent token.” McGee must insert an additional lookup,
because his cookies are keyed to an Account ID, which is
uniquely tied to an individual (i.e., a person), not to any
particular computer. (See McGee [0012], [0018], [0028].)
Appeal Br. 5; see also Reply Br. 1–2.
The Examiner addresses this argument by pointing out that the claim
does not preclude associating multiple devices/computers with a single
person (indeed, the claim does not even mention a person) nor does the
claim prohibit the use of an account ID that corresponds to one or more
devices/computers. Answer 3.
The Appellants’ argument is not persuasive of error on this basis,
because it is not commensurate with the claim language. As the Examiner
correctly determines, the Appellants do not identify any purported
deficiency of McGee that corresponds to a limitation set forth in claim 17.
In another aspect, the Appellants allege error in the rejection of claim
17, contending that McGee’s account ID does not possess the features of the
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claimed “similar device fingerprint” (specifically, the “similar” quality
thereof). Appeal Br. 6.
In response, the Examiner points out that the rejection does not equate
McGee’s account ID with the “similar device fingerprint.” Answer 3.
Rather, the Examiner explains (Answer 3), McGee discloses locating “all
log entries corresponding to the account” (McGee ¶ 52), wherein such log
entries contain “machine session IDs” (id. at ¶ 36).
In view of the Appellants’ misperception of the nature of the rejection,
the Appellants’ argument on this basis is also unpersuasive.
Therefore, the Examiner’s rejection of independent claim 17 under 35
U.S.C. § 103(a) is sustained.
Dependent Claim 22
Dependent claim 22 recites:
22. The computer-readable medium of claim 17
containing additional instructions to cause the programmable
processor to perform operations comprising:
comparing a pair of device fingerprints to estimate a
likelihood that the device fingerprints were received from the
same client computer.
The Appellants contend that McGee does not teach “estimat[ing] a
likelihood” that a “pair of device fingerprints” “were received from the same
client computer”; rather, the Appellants contend (Appeal Br. 7) that
McGee’s “IDs are the same or they are not the same,” with no allowance for
claim 22’s “estimat[ing] a likelihood.”
In response, the Examiner’s Answer states that McGee teaches the
limitation in question, by “identify[ing] the account to which the client
machine belongs” and by determining that the log for a machine being
updated corresponds to the machine that sent the request. Answer 4 (citing
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McGee ¶ 20). Further, the Examiner takes the position that the limitation at
issue amounts to an intended use that does not distinguish the prior art and,
still further, that the Specification “provides no working example or
direction as to what constitutes ‘estimat[ing] a likelihood . . . from the same
client computer.’” Id. at 4–5.
The Appellants’ argument is persuasive of error in the rejection of
claim 22, because the aspects of McGee, which are identified by the
Examiner, do not disclose “estimat[ing] a likelihood” that indicia “were
received from the same client computer.” For example, McGee’s
description of a notification as “includ[ing] sufficient information to at least
identify the account to which the client machine belongs” (McGee ¶ 20)
does not teach “estimat[ion]” or “likelihood.” Further, the Examiner’s
Answer does not establish that the claim limitation at issue amounts to
intended use or that another basis for rejecting the claim applies.
Accordingly, the rejection of claim 22 under 35 U.S.C. § 103(a) is not
sustained.
Dependent Claims 20, 24, 25, and 28
The Appellants contend that the Examiner erred in rejecting
dependent claims 20, 24, 25, and 28, because the Kolkowitz reference
(which is relied upon in the rejection of these claims) is not properly
combinable with the other references (McGee and Busch), on account of it
being non-analogous art and there being no motivation for combining
Kolkowitz with the other references. Appeal Br. 7–9.
In particular, the Appellants contend that, in contrast to the claimed
subject matter (which concerns tracking user activity though web
interactions), Kolkowitz concerns authenticating electronic transactions and
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identifying fraudulent payments — a completely different field of endeavor.
Id. at 8. The Appellants also contend that because authentication is not at
issue in McGee or Busch, Kolkowitz does not “address any appreciated,
unsolved problem in those references, and does not improve their operation
in any way” and, conversely, “neither McGee nor Busch would commend
themselves to Kolkowitz.” Id. at 8–9. Further, the Appellants urge that the
lack of relation between Kolkowitz and the other references undermines the
Examiner’s articulated motivation to combine. Id. at 8. The Appellants also
contend that combining Kolkowitz with McGee would degrade McGee’s
performance and that features of McGee and Busch would impair the
function of Kolkowitz, if so combined. Id. at 8–9.
In response, the Examiner’s Answer states that Kolkowitz is
analogous art because it is in the same field of endeavor as the claimed
subject matter — that is, Kolkowitz is concerned with identifying a user by
identifying the user’s computer for online services, and the Specification
“relates to user tracking in online services.” Answer 5 (quoting Spec. ¶ 2).
Further, the Answer states that Kolkowitz is also analogous art because it is
reasonably pertinent to the problem of tracking a person using identifying
information (such as various types of electronic fingerprints) and the
information contained therein. Id. (citing Kolkowitz ¶ 15). In addition, the
Answer says that the rejection does not involve applying Kolkowitz’s
authentication function to McGee, such that the potential degradation
complained of, by the Appellants, would not ensue. Id.
The Appellants’ argument is unpersuasive because Kolkowitz is
reasonably pertinent to the problem at issue in the claimed subject matter —
specifically, the problem of tracking/identifying a device based upon its
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electronic indicia, as the Examiner explains. See Answer 5. In addition, the
Appellants’ discussion of whether Kolkowitz might be analogous art, based
upon its reasonable pertinence, fails to consider whether the reference in
question would commend itself to the problem addressed in the claimed
subject matter, see In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992), even if
the reference does not necessarily commend itself to the problem presented
in another reference employed in the rejection, as the Appellants argue. See
Appeal Br. 8–9.
Accordingly, the rejection of dependent claims 20, 24, 25, and 28
under 35 U.S.C. § 103(a) is sustained.
Dependent Claims 18, 19, 21, 23, 26, and 27
The Appellants do not present any separate arguments for dependent
claims 18, 19, 21, 23, 26, and 27 — each of which depends from
independent claim 17. Because the rejection of claim 17 is sustained (as
discussed above), the Examiner’s decision to reject dependent claims 18, 19,
21, 23, 26, and 27 under 35 U.S.C. § 103(a) is sustained.

DECISION
We AFFIRM the Examiner’s decision rejecting claims 17–19, 21, and
23 under 35 U.S.C. § 103(a).
We REVERSE the Examiner’s decision rejecting claim 22 under 35
U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART