Ex Parte Fransen

Patent Trials and Appeals Board

Mar 6, 2019

13975625 - (D) (P.T.A.B. Mar. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/975,625 08/26/2013
121363 7590 03/08/2019
Shook, Hardy & Bacon L.L.P.
(Adobe Inc.)
Intellectual Property Department
2555 Grand Blvd
Kansas City, MO 64108
FIRST NAMED INVENTOR
Peter Raymond Fransen
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.
3355US01/39913.209281 3889
EXAMINER
WONG,HUEN
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
03/08/2019 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
nhensley@shb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER RAYMOND FRANSEN 1
Appeal2018-007039
Application 13/975,625
Technology Center 2100
Before CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1, 2, 4, 5, 9, 10, 12, 17, 18, 21-24, 26,
27, and 30-34, all the pending claims in the present application (see Claims
Appendix). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant names Adobe Systems Inc. as the real party in interest (App.
Br. 3).
Appeal2018-007039
Application 13/975,625
STATEMENT OF THE CASE
Appellant's invention generally relates to tracking user interactions
with a software component in an efficient manner. See Abstract. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computerized method for tracking, on a client device,
one or more user interactions with a software component at least
partially operating on the client device, the method comprising:
receiving, from a remote server device, an analytics
tracking request triggered by at least a first user interaction
tracked by the client device, wherein the analytics tracking
request is assigned a threshold value that is based on at least the
first user interaction;
incrementing on the client device, based on at least the first
user interaction, a user value associated with the user, the user
value being locally-stored in a file system of the client device and
maintaining a sum of interaction values associated with each of
at least a second user interaction tracked by the client device;
determining that the locally-stored user value exceeds the
threshold value that is based on at least the first user interaction;
and
launching, on the client device, an analytics tracking
function associated with the analytics tracking request based on
a determination that the locally-stored user value exceeds the
threshold value that is based on at least the first user interaction.
App. Br. 16 (Claims Appendix).
REJECTION
The Examiner made the following rejection:
Claims 1, 2, 4, 5, 9, 10, 12, 17, 18, 21-24, 26, 27, and 30-34 are
rejected under 35 U.S.C. § I02(a)(l) as being anticipated by
Florez-Larrahondo et al. (US 2012/0116590 Al, pub. May 10, 2012). Final
Act. 3.
2
Appeal2018-007039
Application 13/975,625
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential).
ANALYSIS
Appellant contends that Florez-Larrahondo fails to disclose claim 1 's
"receiving, from a remote server device, an analytics tracking request
triggered by at least a first user interaction tracked by the client device."
App. Br. 8-11 (emphasis added). Specifically, Appellant contends that
"[ w ]hile the system of Florez-Larrahondo may require some interaction to
set a threshold value to compare against the received sensor data, it does not
make any mention of 'a user interaction' that is 'tracked by the client
device."' Id.
In the Answer, the Examiner relies on Florez-Larrahondo' s disclosure
of "monitoring a system characteristic of interest ( e.g. temperature, power
consumption, voltage, current, etc.)" for the "user interaction tracked"
limitation. Ans. 7 (quoting Florez-Larrahondo ,r 52). Specifically, the
Examiner finds that "[m]onitoring of [a] characteristic such as power
consumption tracks user's usage (interactions) of a computing system (e.g.
power consumption would be higher when a user uses a computing system
more heavily)." Id. Appellant responds, "[i]n order to force a finding that
this claimed feature is disclosed by the reference, the Examiner incorrectly
asserts that monitoring a characteristic ( such as power consumption of a
server) is tracking a user's usage of a computing system (which is clearly
not the server)." Reply Br. 4.
3
Appeal2018-007039
Application 13/975,625
We agree with Appellant that monitoring a characteristic such as
power consumption on a server does not disclose "a first user interaction
tracked by the client device," as recited by claim 1. In particular, we note
that the preamble of claim 1 clarifies that "a first user interaction tracked by
the client device" involves "tracking ... one or more user interactions with a
software component."2 (Emphasis added.) We find that
Florez-Larrahondo' s monitoring a characteristic such as power consumption
does not disclose tracking one or more user interactions with a software
component. Accordingly, we do not sustain the Examiner's rejection of
claim 1 and corresponding dependent claims 2, 4, 5, 9, 10, 30, and 32-34.
Similarly, claim 12 recites "at least one tracked user interaction with a
software component executing on a client device," and claim 18 recites both
"tracking ... one or more user interactions with a software component"
(preamble) and "a first user interaction that is tracked on the client device"
(claim body). 3 Accordingly, we also do not sustain the Examiner's
rejections of claims 12, 18, and corresponding dependent claims 17, 21-24,
26, 27, and 31.
2 We find the preamble of claim 1 to be limiting because the body of claim 1
relies on the preamble for antecedent basis (e.g., the preamble recites "a
client device" and the claim body then recites "the client device"). See
Catalina Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.
Cir. 2002) ("[D]ependence on a particular disputed preamble phrase for
antecedent basis may limit claim scope because it indicates a reliance on
both the preamble and claim body to define the claimed invention.").
3 We also find claim 18' s preamble limiting for similar reasons noted supra,
n. 2.
4
Appeal2018-007039
Application 13/975,625
We do not reach Appellant's further allegations of error because we
find the issue discussed above to be dispositive of the rejection of all the
pending claims.
DECISION
We reverse the Examiner's rejection of claims 1, 2, 4, 5, 9, 10, 12, 17,
18, 21-24, 26, 27, and 30-34 under 35 U.S.C. § 102(a)(l).
REVERSED
5