Ex Parte Magarshak

Patent Trials and Appeals Board

Mar 27, 2019

13284901 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/284,901 10/29/2011
36088 7590 03/27/2019
KANG LIM
3494 Camino Tassajara #444
Danville, CA 94506
FIRST NAMED INVENTOR
Gregory Magarshak
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.
QB-1101 1525
EXAMINER
CHAUDHURI, ANITA
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
03/27/2019 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 GREGORY MAGARSHAK 1
Appeal2018-007301
Application 13/284,901
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 24--37, all the pending claims in the
present application (see Claims Appendix). 2 We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant names Gregory Magarshak as the real party in interest (App.
Br. 3).
2 Claims 1-11 and 15-23 are cancelled and claims 12-14 have been
withdrawn. Therefore, these claims are not part of this appeal. App. Br. 11-
12.
Appeal2018-007301
Application 13/284,901
STATEMENT OF THE CASE
Appellant's invention generally relates to systems and methods for
"anonymously personalizing web content to a particular user." See Abstract.
Claim 24, reproduced below, is illustrative of the claimed subject matter:
24. A method for anonymously personalizing web content to
a particular user across different domains, useful in association
with a personalization system, the method comprising:
requesting an external user ID of a user from a publishing
server, wherein the external user IDs are unique to a requesting
domain and associated with real user ID on the publishing server
domain, and wherein the association is not revealed to the
requesting domain;
receiving from the publishing server the external user ID;
sending instructions, using the external user ID, to the
publishing server, to render content containing the user's
personal information within an anonymized personalization
element; and
displaying the anonymized personalization element within
the requesting domain's website to the user.
App. Br. 12-13 (Claims Appendix).
Appellant appeals the following rejection:
Claims 24--37 are rejected under pre-AIA 35 U.S.C. § I03(a) 3 as
being unpatentable over Srivastava et al. (US 2007/0106627 Al, pub. May
10, 2007) and Beck et al. (US 2004/0088349 Al, pub. May 6, 2004). Final
Act. 2.
3 Because Appellant filed the application prior to March 16, 2013, the
version of 35 U.S.C. § 103 we apply here is the one preceding the changes
made by the America Invents Act. See Leahy-Smith America Invents Act,
Pub. L. No. 112-29, 125 Stat. 284,293, § 3(n) (2011).
2
Appeal2018-007301
Application 13/284,901
We review the appealed rejections 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, 1075 (BPAI 2010) (precedential).
ANALYSIS
Appellant initially contends that Srivastava fails to teach or suggest
"sending instructions, using the external user ID, to the publishing server, to
render content containing the user's personal information within an
anonymized personalization element," as recited in claim 24. App. Br. 8.
Specifically, Appellant argues that Srivastava's "[s]yndication allows a third
party to gain access to information without knowledge of the source. This is
the exact opposite of what the claims recite: the purpose of having the
publishing server generate the anonymized personalization element is so that
the content is not shared with the third party." Id.
The Examiner finds, and we agree, that Appellant's contention is not
commensurate with the scope of the claim. See Ans. 3. Claim 24 recites
"sending instructions, using the external user ID, to the publishing server, to
render content containing the user's personal information within an
anonymized personalization element," not "the publishing server generate[ s]
the anonymized personalization element ... so that the content is not shared
with the third party." In any event, Appellant does not persuasively
distinguish the claimed anonymized personalization element from an iframe,
as taught by Srivastava. See Srivastava ,r 152. Specifically, the Examiner
finds, and we agree, that Appellant's specification discloses "[t]he
anonymized personalization element[] may be an iframe" (Spec. ,r 12) and
that Srivastava likewise discloses an iframe (Srivastava ,r 152 ( e.g.,
3
Appeal2018-007301
Application 13/284,901
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