Ex Parte Weerasinghe

Patent Trial and Appeal Board

Jan 30, 2018

13297015 (P.T.A.B. Jan. 30, 2018)

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.
13/297,015 11/15/2011 SRILAL WEERASINGHE 2011-0639 3518
83811 7590 01/31/2018
AT & T LEGAL DEPARTMENT - TRBK
PATENT DOCKETING
ROOM 2A-212, ONE AT& T WAY
BEDMINSTER, NJ 07921
EXAMINER
PATEL, HITESHKUMAR R
ART UNIT PAPER NUMBER
2441
MAIL DATE DELIVERY MODE
01/31/2018 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 SRILAL WEERASINGHE
____________________

Appeal 2017-001197
Application 13/297,0151
Technology Center 2400
____________________

Before JOSEPH L. DIXON, NORMAN H. BEAMER, and
SCOTT B. HOWARD, Administrative Patent Judges.

HOWARD, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1)
on December 5, 2017 (hereinafter “Request”), requesting that we reconsider
our Decision on Appeal of October 5, 2017 (hereinafter “Decision”), in
which we affirmed the rejections of: (1) claims 1, 2, 6–8, 10–14, 18, 19, and
23–26 under 35 U.S.C. § 103(a) as being unpatentable over D’Angelo (US
2009/0070412 A1; Mar. 12, 2009) in view of Lindsay (US 2012/0166520
Al; filed Dec. 22, 2010) and Mascarenhas (US 2002/0019764 Al; Feb. 14,
2002); (2) claims 9 and 20 under 35 U.S.C. § 103(a) as being unpatentable
over D’Angelo in view of Lindsay, Mascarenhas, and Douillet (US

1 Appellant identifies AT&T Intellectual Property I, L.P. as the real party in
interest. App. Br. 3.
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2013/0018948 Al; filed July 14, 2011); and claims 21 and 22 under 35
U.S.C. § 103(a) as being unpatentable over D’Angelo in view of Lindsay,
Mascarenhas, and Gill (US 2013/0080526 Al; PCT filed Jan. 10, 2011).

ISSUES AND ANALYSIS
Appellant argues our Decision “misconstrued . . . Appellant’s
arguments and therefore overlooked specific deficiencies of the cited
references that were pointed out in Appellant’s Appeal Brief and Reply Brief
in reaching its decision.” Request 2. Specifically, Appellant argues (1) that
Appellant does not improperly argue the references individually (id. at 2–5),
and (2) that Lindsay does not teach a user identifier provided to the user
device via a cookie as recited in claims 2, 12, and 24 (id. at 5–7).
With regard to the first point, Appellant argues the Board’s
characterization of the Appeal Brief as arguing the references individually is
improper. Id. at 3. According to Appellant, “nearly all rejections under 35
U.S.C. § 103 are predicated upon a combination of references” and that
“arguments responding to an Examiner’s assertion that a particular reference
teaches a particular claim feature is not ‘attacking a reference individually,’
it is responding to the Examiner’s alleged combination.” Id. Appellant
further reiterates its arguments directed to Lindsay and D’Angelo
individually. Id. at 3–5. Specifically, Appellant argues D’Angelo does not
teach a user identifier (id. at 3–4) and Lindsay does not teach a “user
identifier [that] is to be given to a third party for obtaining the user profile
from the social network” (id. at 5).
We are not persuaded by Appellant’s arguments. In the Final Action,
the Examiner relied on the combination of teachings of two references—
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D’Angelo and Lindsay—as teaching the recited providing step, including
various aspects of the user identifier. See Final Act. 11–13; see also Adv.
Act. 3–4; Ans. 4–7. We have reconsidered Appellant’s arguments and
determine, again, that Appellant improperly argued the references
individually and does not address the combined teachings as applied by the
Examiner. That argument is not persuasive. See In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA
1981).
Specifically, the Examiner finds Lindsay teaches a “user profile with a
social network.” Final Act. 12 (citing Lindsay ¶¶ 18, 20). It is thus a
combination of the teachings of Lindsay and D’Angleo, and not D’Angelo
alone, that is the basis for the Examiner’s finding that the recited user profile
is obvious. See id. at 10–12. However, Appellant’s argument focuses only
on whether D’Angelo teaches the recited user profile. See Request 3–4.
Similarly, although the Examiner finds D’Angelo teaches “receiving,
via the processor, a request from the third party, the request comprising the
user identifier” (Final Act. at 11 (citing D’Angelo ¶¶ 49–51, 62, 63)),
Appellant’s argument regarding that limitation is directed to Lindsay
(Request 4–5).
Accordingly, contrary to Appellant’s contentions, we did not
misapprehend Appellant’s arguments directed to D’Angelo and Lindsay.
With regard to the second point, Appellant argues because the
Examiner only relied on Lindsay for teaching the limitations of claims 2, 12,
and 24, Appellant “maintains that the combination of references is properly
addressed by pointing out where [Lindsay] is deficient with regard to the
features that it is alleged to teach.” Request 6. Specifically, Appellant
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argues the Examiner relies only on Lindsay for teaching “providing a user
identifier associated with the user profile to a user device, wherein the user
identifier is to be given to a third party for obtaining the user profile from the
social network.” Id. (emphasis omitted).
In rejecting claim 2, the Examiner explicitly relied on the findings of
claim 1 relating to combination of D’Angelo, Lindsay, and Mascarenhas.
Final Act. 14. The Examiner further found that a person of ordinary skill in
the art would have modified that combination in light of Lindsay’s teaching
of using cookies. Id.
The relevant section of Appellant’s Appeal Brief states as follows:
The patentability of dependent claims 2, 12, and 24 under
35 U.S.C. §103 over the combination D’Angelo, Lindsay, and
Mascarenhas is established above. (See supra). With regard to
the specific features of dependent claims 2, 12, and 24, it is
further noted that the Examiner alleges Lindsay paragraphs
[0042]-[0045] describe: “wherein the user identifier is provided
to the user device via a cookie.” (See Final Office Action p. 14,
19). However, the cited portions of Lindsay simply describe
placing a tracking cookie with an identifier on a user device, and
a tracking pixel reading the cookie and sending the user
identifier to the social networking system for purposes of
tracking that the user has viewed a particular advertisement.
(See Lindsay para. [0045]). Notably, the tracking cookie is not
useable by the tracking pixel to obtain an anonymous user
profile of a user from a social network, or any profile of the
user from the social networking system.
App. Br. 30 (emphasis added).
As Appellant conceded in the italicized text, Lindsay teaches placing
a cookie with an identifier in a user device. However, the elements in bold
that Appellant claims to be lacking from the Lindsay cookie are found in
other different prior art references. Specifically, the Examiner finds
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Mascarenhas, not Lindsay, teaches the anonymous user profile. See Final
Act. 13–14. The Examiner further finds the combination of D’Angelo and
Lindsay, not Lindsay alone, teaches the user profile. Id. at 10–12.
Because Appellant does not address the combination of the cookie
taught by Lindsay as applied to the combination of D’Angelo, Lindsay, and
Mascarenhas as applied in claim 1, we are not persuaded by Appellant’s
argument. Instead, as we did in the Decision, we determine that Appellant’s
argument is directed to the references individually and not the combined
teachings found by the Examiner. Therefore, contrary to Appellant’s
contentions, we did not misapprehend Appellant’s arguments

CONCLUSION
For the above reasons, Appellant’s contentions have not persuaded us
of error in our Decision.
Accordingly, although we have granted Appellant’s Request for
Rehearing to the extent that we have reconsidered our Decision, that request
is denied with respect to making any changes therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

DENIED