Ex Parte Smith et al

Patent Trial and Appeal Board

Mar 29, 2018

13867630 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/867,630 04/22/2013 Francis Smith
132897 7590 04/02/2018
Maschoff Brennan/ PayPal
1389 Center Drive, Ste 300
Park City, UT 84098
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.
P2395.10266US03 1014
EXAMINER
AGWUMEZIE, CHINEDU CHARLES
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
docket@mabr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCIS SMITH and SAJI JOSEPH
Appeal2017-001353
Application 13/867,630
Technology Center 3600
Before MICHAEL J. STRAUSS, ADAM J. PYONIN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 21--40. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real party of interest as Pay Pal, Inc. App. Br. 2.
Appeal2017-001353
Application 13/867,630
THE INVENTION
The claims are directed to secure expandable advertisements using an
API and cross-domain communications. Spec., Title. Claim 21, reproduced
below with argued elements of a dispositive limitation emphasized in bold
italics (see App. Br. 12), is illustrative of the claimed subject matter:
21. A method comprising:
presenting to a client machine, by one or more computer
processors of a content publishing system, a webpage with an
inline frame comprising an expandable advertisement that
references advertising content hosted on a third party media
vendor server, and a security token, wherein the domains of the
third party media vendor server and the content publishing
system are different;
receiving from the third party media vendor server an
expandable advertisement API call to expand or collapse the
expandable advertisement, the API call comprising expansion
parameters and the security token;
authenticating the API call by at least one of comparing
the expansion parameters to predetermined values indicating
inline frame expansion, or verifying the security token; and
issuing an instruction to a client machine to expand the
inline frame.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fan ("Fan '862") US 2009/0299862 Al Dec. 3, 2009
Fan ("Fan '869") US 2009/0327869 Al Dec. 31, 2009
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Application 13/867,630
REJECTION
The Examiner rejected claims 21--40 under 35 U.S.C. § 103(a) as
being unpatentable over Fan '862 (Final Act. 4--8) and, in the alternative,
Fan '862 in combination with Fan '869 (Final Act 4--7).
APPELLANTS' CONTENTION2
Appellants contend that Fan '862 only discloses a secret token is
contained in an !frame, not that the token came from the host publishing
system as required in the disputed language of the independent claims. App.
Br. 12-14.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner has erred in rejecting independent claims 21-
40 under 35 U.S.C. § 103(a). We agree with Appellants' conclusions as to
this rejection of the claims.
Appellants contend Fan '862 does not indicate the origin of the
disclosed secret token. App. Br. 12-14. Appellants argue there is no
disclosure by the reference of whether the token is provided by the host
publishing system as required by claim 1 or otherwise, such as having been
originated by the Ad Owner (i.e., the third party media vendor of claim 1) or
generated by the client machine. App. Br. 14, Reply Br. 5. Appellants
argue the Examiner's finding that '"the secret token must have been
2 We note Appellants raise additional contentions of error but we do not
reach them as our resolution of this contention is dispositive of the appealed
rejection under 35 U.S.C. § 103(a).
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Appeal2017-001353
Application 13/867,630
presented to the client user'" (App. Br. 14 quoting Final Act. 3) is not based
on sufficient fact or technical reasoning. App. Br. 14.
The Examiner responds, finding the functionality provided by Fan
'862's secret token would be compromised "[i]f the client generated the
secret token as argued by the Appellant[ s]." Ans. 9. The Examiner
concludes, "[ t ]here fore [the] secret token is contained in the !frame and
dynamically generated within the !frame being served to the user 412." Id.
Appellants reply, arguing
Appellant[ s] do[] not deny that !frame 408, which is included
within webpage 406, includes a secret token. However, it is clear
that Fan lacks any teaching or suggestion that the secret token is
presented to a client machine from host 402. By failing to
identify any description of the secret token being presented to a
client machine from host 402, it appears that the Examiner agrees
that Fan is silent with respect to how the secret token gets to the
client machine.
Reply Br. 4. Appellants further argue the token need not be presented to the
client machine by host 402 to provide a security function. For example,
according to Appellants, "the secret token [could be] generated via the
!frame, which is used to enhance security for host webpage 406." Reply Br.
5 (citing to Fan '862 i-fi-122, 23).
Appellants' argument is persuasive of reversible Examiner error.
Although the Examiner provides an explanation of why Fan '862's host 402
might send the webpage accompanied by the secret token, the Examiner fails
to direct attention to evidence that one skilled in the art would have
understood Fan '862 to teach or suggest doing so. Thus, the explanation
constitutes the teachings of the Examiner, not the teachings of Fan '862.
Therefore, we agree with Appellants that Fan '862 fails to teach or suggest
the disputed limitation. Accordingly, we do not sustain the rejection of
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Application 13/867,630
independent claim 21 or the rejection of independent claims 28 and 34
which include corresponding limitations or the rejection of dependent claims
22-27, 29-33, and 35--40 which stand with their respective base claims.
DECISION
We reverse the Examiner's decision to reject claims 21--40 under 35
U.S.C. § 103(a).
REVERSED
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