Ex Parte Jaye

Board of Patent Appeals and Interferences

Sep 29, 2010

10151794 (B.P.A.I. Sep. 29, 2010)

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.
10/151,794 05/21/2002 Daniel J. Jaye ENGA-P02-001 6793
7590 09/30/2010
BEH INVESTMENTS LLC
1652 48TH STREET
BROOKLYN, NY 11204
EXAMINER
DINH, KHANH Q
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
09/30/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL J. JAYE
____________

Appeal 2009-005715
Application 10/151,794
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and MARC S. HOFF, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 or for filing a request for rehearing as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005715
Application 10/151,794

2
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 62-85, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellant’s invention relates to establishing a global interest profile of
a user of a computer network such as the internet. At least one local server
and an enterprise server communicate with the user via a communication
channel. The local server assigns a local identification (ID) to the user and
compiles a local user profile. The enterprise server assigns a global ID to
the user and links the local ID and the local user profile, which is transmitted
to the enterprise server by the local server, with the global ID to form a
global interest profile of the user (Abstract). Claim 62, which is illustrative
of the invention, reads as follows:
62. In a computer network comprising a local server and
an enterprise server in communication with the local server, a
method for associating at the enterprise server a client of a user
with information of a local user profile of the user, the method
comprising:
[a] identifying at the local server the client during one
or more interactions by the client with the local server using
persistent state information transmitted to the client by the local
server;
[b] establishing at the local server the local user
profile of the user based on the one or more interactions with
the local server;
[c] identifying at the enterprise server the client using
persistent state information transmitted to the client by the
enterprise server;
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[d] transmitting by the local server to the enterprise
server information of the local user profile; and
[e] associating at the enterprise server the client with
the information of the local user profile established at the local
server,
[f] wherein the persistent state information
transmitted to the client by the enterprise server and the
persistent state information transmitted to the client by the local
server are associated.
(Element letter designations added for reference infra.)

The Examiner relies on the following prior art in rejecting the claims:
Davis US 5,796,952 Aug, 18, 1998
LISA DONALD WITH JAMES CHELLIS, MCSE: NT SERVER 4 IN THE
ENTERPRISE STUDY GUIDE, 79-102 (Sybex Inc. 1997).

Claims 62-85 stand rejected under 35 U.S.C. § 103(a) as obvious over
Donald in view of Davis.
Rather than repeat the arguments here, we make reference to the
Briefs (App. Br. filed Dec. 13, 2007; Reply Br. filed Jan. 31, 2008) and the
Answer (mailed Jan. 25, 2008) for the respective positions of Appellant and
the Examiner. Only those arguments actually made by Appellant have been
considered in this decision. Arguments that Appellant did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
Claims 62, 70, and 78 are independent claims and have substantially
parallel limitations. All other claims depend, directly or indirectly, on one of
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the three independent claims. Appellant argues that the Donald and Davis
references, taken together or separately, do not disclose or suggest the
elements of claim 62, and, therefore, do not make out a prima facie case of
obviousness (App. Br. 5).
The issue to be decided is:
Does the combination of the Donald and Davis references disclose or
suggest all of the elements of claim 62 to a person of ordinary skill in the art
so as to render claim 62 obvious under 35 U.S.C. § 103(a)?

FINDINGS OF FACT
Donald
1. Donald discloses an NT network consisting of NT domain
controllers, NT member servers, and NT workstations (p. 79) and further
discloses that NT domain controllers and NT member servers are
configurations of servers (p. 80).
2. Donald discloses system user accounts (p. 82, Table 3.3; p. 85,
Fig. 3.5; p. 86, Fig. 3.6) created by network account operators and network
administrators (pp. 82-83, Table 3.4).
3. Donald discloses local groups and global groups (p. 82, Fig.
3.3) that include multiple user accounts and which permit managing users as
groups rather than individually (p. 79).
4. Donald discloses granting access permission to resources or to
allow users to perform specific tasks based on their inclusion in local groups
and global groups (pp. 80-84).
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Davis
5. Davis discloses tracking a client computer’s interactions with a
Server A by installing a tracking program on the client computer that
transmits interaction information to a Server B and creating a client user
profile and resource database (col. 9, ll. 16-45; col. 11, ll. 13-33) as shown in
Figure 3 reproduced below.

Figure 3 is a block diagram showing a Server A, a client including
steps of the tracking process, and a Server B.
6. Davis discloses that when a client issues a request (S301) for a
Web page located on Server A, an embedded URL in the Web page
references a tracking program on Server B and causes the client to request
(S302) and obtain the tracking program from Server A and to install (S305)
it on the client (col. 9, ll. 16-23).
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7. Davis discloses that once the tracking program is installed it
initializes and begins monitoring (S306) the amount of time the Web page is
displayed. When the client leaves the Web page the tracking program
calculates (S307) the amount of time the user has interacted with and
displayed the Web page and sends (S308) this information to the Server B
(col. 9, ll. 33-38).
8. Davis discloses that the tracking program may monitor other
indicia such as mouse events, keyboard events, and the amount of data
downloaded by the client (col. 4, ll. 46-53).
9. Davis discloses that a server may set an ID field, known as a
“client ID” or “cookie” on a client computer during an interaction between
the server and the client to allow the server to identify the client and
assemble a user specific Web page (col. 2, ll. 12-22).
10. Davis discloses that Server B uses a “cookie” included in the
information transmitted (S308) from the client to Server B to identify the
client to server B (col. 9, ll. 38-41).
11. Davis discloses setting up a database on a server to store client
identifying indicia, such as client IDs (cookies) and associated tracking
information (col. 11, ll. 13-16).

PRINCIPLES OF LAW
Section 103 forbids issuance of a patent when “the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
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ANALYSIS
The Examiner states that Donald discloses all of the elements of claim
62 except identifying the user upon each of one or more subsequent
interactions using persistent state information (Ans. 3-4). The Examiner
further states that:
Davis discloses identifying the user upon each of one or more
subsequent interactions using persistent state information (using
cookies, see abstract, figs.2, 3, [col.]9 line 16 to col.10 line 57,
col.11 lines 12-33 and . . . col.15 lines 6-57). It would have
been obvious to one of the ordinary [skill] in the art at the time
the invention was made to implement Davis’s teachings into the
computer system of Donald to create user profiles because it
would have created and tracked a database of user profiles for
use by advertisers and marketers for determining the
effectiveness of network advertisements and marketing
resources (see Davis’s col.16 lines 5-62).
(Ans. 4).
Appellant contends, inter alia, that “Claim 62 includes the step of
‘transmitting by the local server to the enterprise server information of the
local user profile’” (Reply Br. 5 (emphasis omitted)) (elem. [d]) and that the
Examiner does not cite any disclosure in Donald that discloses this step.
Appellant further contends that Donald does not disclose the claimed step of
“associating at the enterprise server the client with the information of the
local user profile established at the local server” (id. (emphasis omitted))
(elem. [e]).
The Examiner contends that Donald’s disclosures of servers and NT
workstations together with user IDs and the grouping of these IDs into local
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groups and global groups meet these limitations of claim 62 (Ans. 3-4, 6-7).
The Examiner draws a parallel between the claimed user profiles and
Donald’s user IDs (Ans. 7).
We agree with Appellant. Claim 62 requires that the “local user
profile” is “based on the one or more interactions with the local server”
(elem. [b]). The Examiner has not pointed to any specific example in
Donald of a local user profile that is based on interactions with a local
server. Rather, the Examiner has pointed to user groups and network
permissions established by a network account operator or administrator
(Ans. 3-4) (see, e.g., Donald, Table 3.4 “Account Operators -- Members can
. . . create, delete, and manage users . . . .”) (FF 1-4). Since the Examiner
has not pointed to any disclosure in Donald of a “local user profile of the
user based on the one or more interactions with the local server” as recited in
claim 62 (elem. [b]), Donald does not disclose any of the steps in claim 62
which refer to actions taken on the local user profile, and in particular, the
“transmitting” and “associating” steps (elem. [d], [e]) referred to supra. As
alluded to by the Examiner (Ans. 4), Davis does disclose user profiles based
on one or more user interactions with a server A (analogous to claim 62’s
local server) (FF 5-8, 11) but Davis’s profile is created directly at a server B
(analogous to claim 62’s enterprise server) (FF 7). However, the Davis user
profile is not established at the local server as required by claim 62 (elem.
[b]), so Davis similarly fails to disclose the “transmitting” and “associating”
steps of claim 62.
Davis also discloses identifying the client at server B using a cookie
(FF 9-10). However, Davis does not disclose using a cookie to identify the
client at Server A, so Davis also fails to disclose the step of “identifying at
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the local server the client . . . using persistent state information transmitted
to the client by the local server” (elem. [a]). We find that the Examiner does
not point out how a person having ordinary skill in the art at the time the
invention was made would use that ordinary skill to fill the gaps left by the
combination of Donald and Davis.
Accordingly, we find that the Examiner fails to make out a prima
facie case of obviousness as Donald and Davis, separately or together, do
not disclose or suggest all of the elements of claim 62.

CONCLUSION
On the record before us, we conclude that the combination of the
Donald and Davis references does not disclose or suggest all of the elements
of claim 62 to a person of ordinary skill in the art so as to render claim 62
obvious. Independent claims 70 and 78, similar to claim 62, include
limitations related to transmitting information of the local user profile by the
local server to the enterprise server and associating the client with the
information of the local user profile. For the same reasons discussed above
with respect to claim 62, the combination of Donald and Davis does not
disclose or suggest the subject matter of claims 70 and 78. Therefore, the
35 U.S.C. § 103 rejection of claims 62, 70, and 78, as well as claims 63-69,
71-77, and 79-85 dependent thereon, cannot be sustained.

ORDER
The decision of the Examiner to reject claims 62-85 is reversed.

REVERSED
Appeal 2009-005715
Application 10/151,794

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BEH INVESTMENTS LLC
1652 48TH STREET
BROOKLYN, NY 11204