Ex Parte Roth

Patent Trial and Appeal Board

Mar 18, 2013

11167452 (P.T.A.B. Mar. 18, 2013)

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.
11/167,452 06/27/2005 INV001Jason Todd Roth 555-01 7764
73325 7590 03/19/2013
Matthew G. McKinney
McKinney Law, PLLC
121 S. Orang Ave.
Suite 1500
Orlando, FL 32801
EXAMINER
GEBRESENBET, DINKU W
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
03/19/2013 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 JASON TODD ROTH
____________

Appeal 2010-007146
Application 11/167,452
Technology Center 2100
____________

Before JOHN A. JEFFERY, DANIEL N. FISHMAN, and GREGG I.
ANDERSON, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-6 and 13-18. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

STATEMENT OF THE CASE
Appellant’s invention tags and monitors consumer data submitted
through a company’s website to ensure that the data is not used for
unauthorized purposes. The data is routed only to pre-authorized users, and
a banner logo or seal identifies websites that comply with predetermined
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Application 11/167,452

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standards. See generally Abstract. Claim 1 is illustrative with disputed
limitations emphasized:
1. A method for preventing unauthorized dissemination of customer
website submissions, the method comprising:

establishing predetermined standards that identify when customer
website submissions are provided to third parties;

determining when a website is in compliance with the predetermined
standards;

tagging each entry of a customer website submission with a unique
code when the customer website submission is submitted to the website;

filtering customer website submissions only to a third party when the
third party is in compliance with the predetermined standards; and

identifying the website to a customer as complying with the
predetermined standards.

THE REJECTION
The Examiner rejected claims 1-6 and 13-18 under 35 U.S.C. § 103(a)
as unpatentable over Ginter (US 5,949,876; issued Sept. 7, 1999) and Kogler
(US 2003/0041020 A1; published Feb. 27, 2003). Ans. 3-7.1

CONTENTIONS
The Examiner finds that Ginter discloses every recited element of
independent claim 1 including tagging each entry of a customer website
submission with a unique code when the submission is submitted to a
website which is said to correspond to, among other things, Ginter’s tagging

1 Throughout this opinion, we refer to the Appeal Brief filed December 23,
2009 and the Examiner’s Answer mailed January 21, 2010.
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security techniques in column 21. Ans. 3-5, 8. Although the Examiner
acknowledges that Ginter lacks customer website submissions, the Examiner
cites Kogler as teaching this feature in concluding that the claim would have
been obvious. Ans. 5.
Appellant argues that the cited prior art does not teach or suggest,
among other things, tagging each entry of a customer website submission
with a unique code when the submission is submitted to a website as
claimed. Br. 3-5. Appellant adds that there is no evidence to modify
Ginter’s virtual distribution environment (VDE) to include Kogler’s
unrelated marketing system for customizing product offers to customers as
the Examiner proposes. Br. 5.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Ginter and Kogler collectively would have taught or suggested tagging
each entry of a customer website submission with a unique code when the
submission is submitted to a website?

ANALYSIS
On this record, we find error in the Examiner’s obviousness rejection
of independent claim 1. Even assuming, without deciding, that the cited
references are combinable as the Examiner proposes, we still fail to see that
they teach or suggest tagging each entry of a customer website submission
with a unique code when the submission is submitted to a website as
claimed.
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As Appellant’s Specification indicates, website submissions may
comprise multiple entries, such as a consumer’s name, address, and phone
number. Spec. 14:1-3. Uniquely tagging each entry of a customer’s website
submission when it is submitted is a key feature of Appellant’s invention
which ensures that each entry retains its unique tag for tracking and
monitoring purposes should the respective entries segregate. Spec. 4:11-20.
The Examiner’s reliance on Ginter falls short in this regard. To be
sure, Ginter’s VDE can (1) employ tagging related security techniques, and
(2) compartmentalize stored control information including tagging that
information to prevent substitution and tampering. Ginter, col. 21, ll. 57-64.
But even assuming that this tagged control information can include
customer-submitted information,2 we cannot say—nor has the Examiner
shown—that Ginter’s tagging noted above involves tagging each entry of a
customer website submission with a unique code, let alone upon submission
as claimed. The latter temporal requirement requires tagging at the time of
submission, thus precluding tagging at some later time. Ginter’s cited
reference to tagging noted above is simply too general to fairly suggest the
particular tagging scheme recited in claim 1.
That said, Ginter discusses tagging in some detail later in the
reference, and specifically refers to three classes of tags that can be included
in control structures of a preferred embodiment, namely (1) access tags; (2)
validation tags: and (3) correlation tags. Ginter col. 215, l. 7 – col. 216, l.

2 See Ginter, col. 10, ll. 65-67 (noting that VDE component objects contain
control information normally in the form of VDE objects containing one or
more methods, data, or load module VDE components); see also id. at col.
29, ll. 1-6 (noting that content users, such as end-user customers can define,
among other things, control information).
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32. To the extent that this tagging functionality teaches or suggests tagging
each entry of a customer website submission with a unique code when the
submission is submitted to a website as claimed, the Examiner has not made
such findings; nor will we speculate in that regard here in the first instance
on appeal. What we can say, however, is that the Examiner’s relied-upon
passages in Ginter fall short of teaching or suggesting the particular tagging
scheme recited in claim 1. Moreover, while Ginter may use content
encryption keys unique to specific users (Ginter, col. 21, ll. 64-67), we
cannot say that this teaches or suggests tagging each customer entry upon
submission to a website as claimed. The Examiner’s reliance on Ginter’s
column 4 in this regard (Ans. 8) is likewise unavailing. The cited passage
merely generally describes the VDE’s ability to protect rights of various
parties (e.g., content creators, product providers, etc.), but does not discuss
tagging at all, let alone tagging each entry of a customer website submission
when it is submitted as claimed. Nor does Kogler cure this deficiency.
Although Kogler’s system gathers customer information via websites
(Kogler ¶¶ 0039, 0050, 0054), the Examiner fails to show how this gathered
information is tagged with a unique code upon its submission to the website
even when combined with Ginter. See Ans. 5. Leaving aside the fact that
the Examiner failed to respond to Appellant’s combinability arguments in
the Answer (see Ans. 8-13), we still fail to see how the references teach or
suggest the recited entry tagging feature even if the references are
combinable as proposed.
We are therefore persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claim 13 which recites commensurate
limitations; and (3) the dependent claims for the same reasons. Since our
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decision is dispositive regarding our reversing the rejection of these claims,
we need not address Appellant’s other arguments regarding claims 2-6 and
13-18. Br. 5-12.

CONCLUSION
The Examiner erred in rejecting claims 1-6 and 13-18 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-6 and 13-18 is reversed.

REVERSED

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