Adobe Inc.

Patent Trials and Appeals Board

May 27, 2021

2020005753 (P.T.A.B. May. 27, 2021)

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.
14/959,890 12/04/2015 Eunyee Koh AD01.P5677US 4791
111003 7590 05/27/2021
Adobe / Finch & Maloney PLLC
50 Commercial Street
Manchester, NH 03101
EXAMINER
DIVELBISS, MATTHEW H
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
05/27/2021 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@finchmaloney.com
nmaloney@finchmaloney.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUNYEE KOH and NEDIM LIPKA
Appeal 2020-005753
Application 14/959,890
Technology Center 3600

Before BRADLEY W. BAUMEISTER, ERIC B. CHEN, and
DAVID J. CUTITTA II, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge CUTITTA.

Opinion Concurring filed by Administrative Patent Judge BAUMEISTER.

CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–14 and 17–22.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies Adobe Inc. as the real party in interest. Appeal Brief
filed March 26, 2020 (“Appeal Br.”) 3.
2 Appellant cancelled claims 15 and 16. Appeal Br. 29.
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Application 14/959,890

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CLAIMED SUBJECT MATTER
Summary
Appellant’s claimed subject matter relates to “characterizing
consumer interactions that are observed by a cross-section of data providers,
which may include, for example, website administrators, campaign
managers, application developers, and the like.” Spec., Abstract.3 The
observed consumer interaction data “includes device and login identifiers for
a particular interaction.” Id. A statistical “model allows inferences to be
drawn with respect to whether a given device is a private device, a shared
device, or a public device. This, in turn, allows private devices which are
‘owned’ by a single consumer to be identified” and associated with that
consumer. Id.
Illustrative Claim
Claims 1, 11, and 17 are independent. Claim 17, reproduced below
with certain dispositive limitations at issue italicized, illustrates the claimed
subject matter:
17. A device modeling system that comprises a memory
device and a processor that is operatively coupled to the memory
device, wherein the processor is configured to execute
instructions stored in the memory device that, when executed
cause the processor to carry out a device modeling process that
comprises:

3 In addition to the above-noted Appeal Brief, throughout this Decision we
refer to: (1) Appellant’s Specification filed December 4, 2017 (“Spec.”);
(2) the Final Office Action (“Final Act.”) mailed October 21, 2019; (3) the
Examiner’s Answer (“Ans.”) mailed July 31, 2019; and (4) the Reply Brief
filed August 6, 2020 (“Reply Br.”).
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Application 14/959,890

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receiving, by the device modeling system, observational
data from a plurality of data providers, wherein:
the observational data characterizes a plurality of
consumer authentication interactions between a plurality
of consumers and the plurality of data providers,
each of the consumer authentication interactions is
characterized by a device identifier, a digital certificate,
and a login identifier that are provided from one of the
consumers to one of the data providers so that the
consumer may access a resource provided by the data
provider, the device identifier being associated with a
corresponding device that the consumer uses to provide
the login identifier to the data provider, and
the observational data includes a plurality of device
identifiers that are associated with a corresponding
plurality of devices, each of the plurality of devices being
associated with one or more of the plurality of consumer
authentication interactions;
generating, by a device modeling software module
executable on the processor, a distribution of login identifiers
observed as having been provided by the plurality of devices
associated with the plurality of device identifiers included in the
observational data received by the device modeling system;
determining, by the device modeling software module, a
first quantity of unique login identifiers observed by a first data
provider as having been provided by the first device, wherein the
first quantity is extracted from the generated distribution of login
identifiers;
defining a first node that corresponds to the first device;
setting, by the device modeling software module, a Device-
Type parameter for the first node based on the first quantity; and
recording, in a data structure stored in the memory device,
metadata characterizing the Device-Type parameter for the first
device.
Appeal Br. 30 (Claims Appendix).
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Application 14/959,890

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REFERENCES AND REJECTIONS
The Examiner rejects claims 1, 2, 4–7, 9–12, 14, 17, 18, and 20–22
under 35 U.S.C. § 103 as obvious over the combined teachings of Rathod
(US 2011/0208822 A1, published Aug. 25, 2011), Mahaffey et al. (US
2015/0163121 A1, published June 11, 2015) (“Mahaffey”), and Faith et al.
(US 2017/0235786 A9, published Aug. 17, 2017) (“Faith”). Final Act. 2–
34.
The Examiner rejects claims 3, 8, 13, and 19 under 35 U.S.C. § 103 as
obvious over the combined teachings of Rathod, Mahaffey, Faith, and
Muddu et al. (US 9,516,053 B1, issued Dec. 6, 2016) (“Muddu”). Id. at 34–
40.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
The Examiner finds that Rathod teaches or suggests “setting, by the
device modeling software module, a Device-Type parameter for the first
node based on the first quantity,” as recited in claim 17. Final Act. 4 (citing
Rathod ¶ 251). In particular, the Examiner finds Rathod “teaches an
initialization action is performed” and “this action is performed by a
responder and a central server in communication with each other.” Id. The
Examiner further finds the initialization “may include . . . specification of
data for identifying or locating the responder, type or capabilities of the
responder’s client device, and the like).” Id.
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Application 14/959,890

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Appellant agrees with the Examiner’s finding that Rathod “discloses
an ‘initialization action.’” Appeal Br. 20. Appellant also does not dispute
that the action “‘is performed by a responder and a central server.’” Id.
Appellant argues, however, that the “Examiner has not explained how the
‘initialization action’ disclosed in Rathod ¶ [0251] is understood as being
based on ‘a first quantity of unique login identifiers observed by a first data
provider as having been provided by the first device,’” as required by
claim 17. Id. According to Appellant, “[t]o the contrary, Rathod ¶ [0251]
simply discloses that the initialization action may include ‘specification of
data for identifying . . . type or capabilities of the responder’s client
device.’” Id.
In the Examiner’s Answer, the Examiner subsequently expands upon
the factual findings underlying the rejection, by citing paragraph 129 of
Rathod for the first time. In particular, the Examiner finds the newly cited
paragraph of Rathod teaches that:
[T]he active note(s) provider(s) or active resources & actions
provider(s) to submit one or more public, private or shared
domain or subject or purpose or categories specific profile(s)
from the client device to the central server for storing, indexing
and updating of said submitted profile(s) for matchmaking of
active note(s) and/or active note(s) provider(s) with the active
resources & actions providers and/or active resources & actions
by the central server.
Ans. 7 (citing Rathod ¶ 129).
Appellant argues that Rathod’s “storing of information as private or
shared is wholly unrelated to setting a Device-Type parameter for a
particular node ‘that corresponds to [a] first device’” and therefore “none of
the disparate portions of Rathod cited by the Examiner can be understood as
Appeal 2020-005753
Application 14/959,890

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disclosing ‘setting . . . a Device-Type parameter for [a] first node [that
corresponds to the first device] based on the first quantity.’” Appeal Br. 18.
Appellant’s arguments are persuasive. The first paragraph from
Rathod relied on by the Examiner describes “an initialization . . . performed
by a responder and a central server.” Rathod ¶ 251. In one embodiment, the
action may include “specification of data for identifying or locating the
responder, type or capabilities of the responder's client device.” Id. In
finding Rathod’s initialization teaches setting a parameter, as claimed, we
agree with Appellant that the Examiner has not sufficiently explained how
the initialization action is based on “a first quantity of unique login
identifiers observed by a first data provider as having been provided by the
first device,” as required by claim 17. Appeal Br. 20.
The second paragraph from Rathod relied on by the Examiner
describes allowing providers to submit one or more public, private or shared
domain specific profile(s) from a client device to the central server for
matchmaking of active notes with active resources. Rathod ¶ 129.
Appellant’s Specification, on the other hand, discloses that setting “a
Device-Type parameter” for a node, as claimed, includes setting a parameter
for the node that indicates that the device is a private, shared, or public
device. Spec. ¶ 40. Here also, although the Examiner appears to find
Rathod’s domain specific profile teaches setting a parameter as claimed, we
agree with Appellant that the Examiner has not sufficiently explained how
the profile is based on “a first quantity of unique login identifiers observed
by a first data provider as having been provided by the first device,” as
required by claim 17.
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Even though the Examiner additionally finds that “[t]hese citations
teach that the system in Rathod teach[es] setting device parameters based
upon the user device in addition to identifying the particular user,” the
Examiner has not sufficiently explained how the cited paragraphs teach
identifying the particular user, nor has the Examiner shown how identifying
a user teaches that the device setting is based on “a first quantity of unique
login identifiers observed by a first data provider as having been provided by
the first device,” as required by claim 17. Ans. 7.
Nor does the Examiner demonstrate that Mahaffey and Faith, alone or
in combination, compensate for the argued deficiency of Rathod. Thus,
given the current record, the Examiner has not demonstrated that the
combination of Rathod, Mahaffey, and Faith teaches or suggests “setting, by
the device modeling software module, a Device-Type parameter for the first
node based on the first quantity,” as recited in claim 17. Because we agree
with at least one of the dispositive arguments advanced by Appellant, we
need not reach the merits of Appellant’s other arguments.
We do not sustain the Examiner’s rejection of independent claim 17
under 35 U.S.C. § 103. For similar reasons, we do not sustain the
Examiner’s rejection of independent claims 1 and 11, which recite
limitations similar to those at issue in claim 17. In addition, we do not
sustain the Examiner’s rejections of claims 2–6, 8–12, and 18–22, which
depend directly or indirectly from claims 1, 7, 13, and 14.

Appeal 2020-005753
Application 14/959,890

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DECISION SUMMARY
In summary:

REVERSED

Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–7,
9–12, 14,
17, 18,
20–22
103 Rathod, Mahaffey,
Faith
1, 2, 4–7,
9–12, 14,
17, 18,
20–22
3, 8, 13,
19
103 Rathod, Mahaffey,
Faith, Muddu
3, 8, 13,
19
Overall
Outcome
1–14, 17–
22
Appeal 2020-005753
Application 14/959,890

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BAUMEISTER, Administrative Patent Judge, concurring.
I agree with the Majority’s conclusions and reasoning in reversing the
obviousness rejections. I write separately because I would exercise the
Board’s discretionary authority under 37 C.F.R. § 41.50(b) and reinstate the
withdrawn rejection of the claims under 35 U.S.C. § 101 for being directed
to patent-ineligible subject matter without reciting significantly more. See
Non-Final Action 2–6, mailed June 12, 2019. The Examiner’s conclusion
regarding the lack of patent eligibility was correct at that time, and none of
Appellant’s subsequent amendments warrant the withdrawal of the rejection.
The Majority’s decision not to reinstate this rejection should not be
interpreted as the Majority agreeing that the claims are directed to patent-
eligible subject matter. Rather, the Majority merely chooses to limit its
review to the questions raised on appeal. See Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (setting forth that the Board’s
primary function is to review the appealed rejections for error based upon
the issues identified by Appellant and in light of Appellant’s arguments and
evidence).