Ex Parte Jaye

Patent Trial and Appeal Board

Jan 31, 2014

10919506 (P.T.A.B. Jan. 31, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/919,506 08/15/2004 Daniel J. Jaye ENK-001.01 5589
7590 02/03/2014
BEH Investments LLC
1652 48th Street
Brooklyn, NY 11204
EXAMINER
DINH, KHANH Q
ART UNIT PAPER NUMBER
2458
MAIL DATE DELIVERY MODE
02/03/2014 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 DANIEL J. JAYE
____________

Appeal 2011-007074
Application 10/919,506
Technology Center 2400
____________

Before JOHN A. JEFFERY, DAVID M. KOHUT, and
BRETT C. MARTIN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 36-67. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

STATEMENT OF THE CASE
Appellant’s invention establishes a global interest profile of a user.
To this end, at least one local server and enterprise server communicate with
the user via a communication channel. The local server assigns a local ID to
the user, and the enterprise server assigns a global ID and links the local ID
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and local user information with the global ID. See generally Abstract.
Claim 36 is illustrative:
36. A method for sharing information between servers about
a user utilizing a client, the method comprising:
identifying the user at a first server using a first ID
transmitted by the client to the first server;
storing information about the user at the first server;
identifying the user at a second server using a second ID
transmitted by the client to the second server;
linking the first ID and the second ID; and
associating the information about the user with the
second ID.

THE REJECTIONS
1. The Examiner rejected claims 36, 39, 42, 43, 50, and 51 under 35
U.S.C. § 102(e)1 as anticipated by Lisa Donald & James Chellis, MCSE: NT
SERVER 4 IN THE ENTERPRISE STUDY GUIDE 79-102 (1997) (“Donald”). Ans.
4-5.2,3
2. The Examiner rejected claims 37, 38, 40, 41, 44-49, and 52-67
under 35 U.S.C. § 103(a) as unpatentable over Donald and Davis (US
5,796,952; issued Aug. 18, 1998). Ans. 5-10.

1 Although this reference actually qualifies as prior art under § 102(a) and
not § 102(e), we nevertheless deem this error harmless as it does not affect
our decision regarding the merits of the anticipation rejection.
2 The Examiner indicates that claim 45 is rejected solely under § 103 and not
§ 102. Ans. 3. This clarification is undisputed.
3 Throughout this opinion, we refer to (1) the Appeal Brief filed July 22,
2010 (“App. Br.”); (2) the Examiner’s Answer mailed November 4, 2010
(“Ans.”); and (3) the Reply Brief filed January 3, 2011 (“Reply Br.”).
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RELATED APPEAL
This appeal is related to an appeal filed in connection with this
application’s parent application (No. 10/151,794), where another panel of
this Board reversed the Examiner’s decision to reject the claims of that
application as obvious over the same prior art at issue in this appeal, namely
Donald and Davis. See Ex parte Jaye, No. 2009-005715 (BPAI Sept. 30,
2009) (“Bd. Dec’n”).

THE ANTICIPATION REJECTION
Regarding independent claim 36, the Examiner finds that Donald (1)
identifies a user at a first server (i.e., a server at a local group) using a first
ID transmitted by a client to that server, and (2) stores information about the
user at that server. Ans. 4, 11. The Examiner also finds that Donald (1)
identifies the user at a second server (i.e., a server at a global group) using a
second ID transmitted by the client to the second server; (2) links the first
and second IDs; and (3) associates the user information with the second ID
as claimed. Id. According to the Examiner, the recited steps are fully met
by Donald’s implementing a server system to create global groups to work
with local groups based on user accounts on respective local and global
group servers. Id.
Appellant argues that not only is the Examiner’s mapping various
recited elements to corresponding elements in Donald unclear, but Donald
does not disclose any ID being transmitted by a client to any server, let alone
two IDs of one user transmitted by one client to two separate servers as
claimed. App. Br. 7-11

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ISSUE
Under § 102, has the Examiner erred in rejecting claim 36 by finding
that Donald (1) identifies a user at a first server using a first ID transmitted
by a client to that server; (2) stores information about the user at that server;
(3) identifies the user at a second server using a second ID transmitted by the
client to the second server; (4) links the first and second IDs; and (5)
associates the user information with the second ID?

ANALYSIS
We begin by noting that the panel’s earlier findings regarding Donald
in the related appeal apply here as well. Accordingly, we incorporate those
findings by reference. Bd. Dec’n, at 4 (Findings of Fact 1-4).
Turning to the rejection, the Examiner does not map various recited
elements to corresponding elements in Donald, but rather the Examiner’s
findings are based on general and conclusory statements from the relied-
upon passages in that reference as Appellant indicates. App. Br. 8-11.
Consequently, our task of discerning where exactly the particular limitations
in claim 36 are necessarily present in Donald under the Examiner’s
anticipation position is made all the more difficult.
Notably, the Examiner does not squarely identify the particular
servers in Donald that correspond to the recited first and second servers
apart from generally indicating that they are “at” local and global groups,
respectively. Ans. 11. Nevertheless, even assuming that the Examiner
intends that the recited first and second servers correspond respectively to
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servers in Donald on which local and global groups can be created,4 we still
fail to see where Donald necessarily identifies a user at these servers using
first and second IDs that are transmitted by a client to these respective
servers as claimed. Leaving aside the fact that the Examiner does not
identify a particular “client”5 in Donald, the Examiner has not shown that
such a client necessarily transmits any ID to any server, let alone two IDs of
one user to two separate servers and linking those IDs as claimed as
Appellant indicates. App. Br. 10-11.
To be sure, members of Donald’s “ACCOUNT OPERATORS” local
group can create, delete, and manage users, local groups, and global groups.
Donald, at 82 (Table 3.4). But even if the Examiner’s position is based on
using a “client” associated with this group management function to manage
the groups in Figure 3.6, we still cannot say that such a “client” necessarily
transmits IDs to a server, let alone two IDs of one user to two separate
servers and linking those IDs as claimed. We reach the same conclusion
even if the Examiner’s position is based on Donald’s exemplary users
“Marcia, Cindy, and Jan” as corresponding to the recited clients—a point
that is disputed in any event. App. Br. 9. Even assuming, without deciding,
that these users can be considered to be associated with clients (despite the
Examiner’s not identifying them), such “clients” do not necessarily transmit

4 See Donald, at 80 (“Local groups can be created on NT Workstations and
NT Servers configured as member servers or domain controllers.”); see also
id. at 81 (“Global groups can only be created on NT Server domain
controllers.”).
5 According to Appellant’s Specification, a client “may be any one of a
variety of conventional, commercially available, hardware and software
combinations configured to access Internet servers by any one of a variety of
suitable means.” Spec. ¶ 00025.
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the recited IDs to the respective servers, let alone that these IDs are linked as
claimed.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 36, and (2) dependent claims 39, 42, 43, 50, and 51 for
similar reasons. Because this issue is dispositive regarding our reversing the
rejection of these claims, we need not address Appellant’s other arguments
(App. Br. 11-14).6

THE OBVIOUSNESS REJECTION
Claims 37, 38, 40, 41, 44, 52-54, 56, and 57
Because the Examiner has not shown that Davis cures Donald’s
deficiencies noted above regarding independent claim 36, we will not sustain
the obviousness rejection of dependent claims 37, 38, 40, 41, 44, 52-54, 56,
and 57 (Ans. 5-7, 9, 12-18) for similar reasons.

Claims 45-49, 55, 62, and 63
We also do not sustain the Examiner’s obviousness rejection of
independent claim 45 that recites, in pertinent part, (1) establishing an ID for

6 We note in passing, however, that because claim 43 depends from claim
41, which was rejected as obvious under § 103 (Ans. 5, 7), the anticipation
rejection of claim 43 is erroneous for that additional reason as Appellant
indicates. App. Br. 13. We further note that while Appellant incorrectly
states that claim 51 depends from claim 40 (App. Br. 14) (it actually depends
from claim 39), we nonetheless deem this error harmless for claim 51
depends indirectly from claim 36, the rejection of which we find erroneous
for the reasons indicated in the decision.
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the user at a first server7 by utilizing a cookie transmitted to the client by the
first server, and (2) transmitting to the client by the first server a URL,
where the URL includes the ID and information identifying the first server,
and is addressed to a second server.
First, the panel’s earlier findings regarding Davis in the related appeal
apply here as well. Accordingly, we incorporate those findings by reference.
Bd. Dec’n, at 5-6 (Findings of Fact 5-11).
Turning to the rejection, the Examiner cites Davis for teaching
transferring client IDs in the form of a cookie and URL information to a
server, and concludes that the claim would have been obvious over Donald’s
and Davis’ collective teachings. Ans. 8, 13 (citing Davis, Abstract; col. 7, l.
1 – col. 8, l. 52; col. 9, l. 16 – col. 10, l. 38; Fig. 3).
We find this position problematic. First, the Examiner’s reliance on
Donald is unavailing for the reasons noted above and by Appellant. App.
Br. 18-19. Turning to Davis, Server A in Figure 3 sends a document with an
embedded URL to a client, where the URL references a tracking program
located at Server B. Davis, col. 9, ll. 15-23; Fig. 3 (step S301). The client,
in turn, sends a TCP/IP request to Server B to obtain the tracking program.
Davis, col. 9, ll. 20-23 (step S302). After the client leaves a particular web
page, the tracking program sends data that includes the client’s ID (cookie)
to Server B in step S308. Davis, col. 9, ll. 35-41.
To be sure, transmitting a URL to a client from a first server (Server
A) that references a tracking program located on a second server (Server B)
arguably suggests that the URL is addressed to the second server via the

7 We presume that the term “sever” in line 3 of claim 45 is a typographical
error and is intended to be “server.”
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protocol associated with the URL. But we fail to see—nor has the Examiner
shown—that this URL also includes the ID established for the user at the
first server by using a cookie transmitted to the client by the first server as
claimed. As the panel noted in the related appeal, Davis uses a cookie to
identify the client at Server B, but does not use a cookie to identify the user
at Server A. Bd. Dec’n, at 8-9. In short, Server A does not transmit a cookie
to the client in the relied-upon passages of Davis. To the extent that the
Examiner takes the position that including such a cookie-based ID for Server
A in the embedded URL addressed to Server B would have been obvious,
such a position has not been persuasively articulated on this record.
Accordingly, the weight of the evidence on this record favors Appellant’s
position. App. Br. 18-20.
We reach a similar conclusion regarding independent claim 62 that
recites, in pertinent part, a server with logic that transmits to the client a
URL that includes a user ID received from a client. Although this ID is not
necessarily established using a cookie as in claim 45 and dependent claim
63, the Examiner has still not persuasively shown that including such a user
ID in a URL addressed to a second server in claim 62 would have been
obvious over Donald and Davis. Ans. 9-10, 19-20.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claims 45 and 62, and (2) dependent claims 46-49, 55, and 63
for similar reasons. Because this issue is dispositive regarding our reversing
the rejection of these claims, we need not address Appellant’s other
arguments (App. Br. 20-22, 25-26; Reply Br. 2-4).8

8 To the extent that claim 62 improperly recites active method steps as part
of an apparatus claim (i.e., the server computer’s logic identifies a user . . .
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the rejection of these claims, we need not address Appellant’s other
arguments (App. Br. 20-22, 25-26; Reply Br. 2-4).

Claims 58-61 and 64-67
We also do not sustain the Examiner’s rejection of independent claim
58 reciting a server computer with logic that (1) identifies a user using a first
ID received from a client utilized by a user; (2) receives a URL from the
client, the URL including a second ID used by a second server to identify the
user; (3) receives information about the user associated with the second ID
at the second server; and (4) associates the information about the user with
the first ID.
First, we find the Examiner’s reliance on Donald (Ans. 9-10, 18)
problematic for a server that that (1) identifies a user using a first ID
received from a client used by the user, and (2) receiving a second ID from
the client used by a second server for the reasons noted above and by
Appellant (App. Br. 22-24). The Examiner’s reliance on Davis for teaching
receiving a URL (Ans. 10) is likewise unavailing. Although Davis generally
teaches that a client receives a URL from a server as noted above, it does not

and transmits to the client a URL . . .”) to render the claim indefinite under
§ 112(b) is a question that is not before us. See In re Katz Interactive Call
Proc. Pat. Litig., 639 F.3d 1303, 1318 (Fed. Cir. 2011) (citing IPXL
Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir.
2005)); see also Rembrandt Data Technologies, LP v. AOL, LLC, 641 F.3d
1331, 1339 (Fed. Cir. 2011) (data transmitting device held indefinite for
reciting transmitting method step). Nevertheless, we leave this question to
the Examiner, as well as the definiteness of independent claim 58 that also
recites a server computer whose logic performs affirmative method steps in
the body of the claim.
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teach a server receiving a URL from a client, let alone that the URL includes
a second ID used by a second server to identify the user as claimed.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 58; (2) independent claim 64 that recites commensurate
limitations; and (3) dependent claims 59-61 and 65-67 for similar reasons.
Because this issue is dispositive regarding our reversing the rejection of
these claims, we need not address Appellants’ other arguments (App. Br. 24-
25).

CONCLUSION
The Examiner erred in rejecting (1) claims 36, 39, 42, 43, 50, and 51
under § 102, and (2) claims 37, 38, 40, 41, 44-49, and 52-67 under § 103.

ORDER
The Examiner’s decision rejecting claims 36-67 is reversed.

REVERSED

ELD