Google Inc.

Patent Trials and Appeals Board

Dec 17, 2020

2020005224 (P.T.A.B. Dec. 17, 2020)

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.
15/666,378 08/01/2017 Abhinay Sharma 16113-0155002 8293
26192 7590 12/17/2020
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
BROWN, ALVIN L
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
12/17/2020 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ABHINAY SHARMA and KAI CHEN
____________

Appeal 2020-005224
Application 15/666,378
Technology Center 3600
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and BARBARA A. PARVIS,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s
decision to reject claims 2–21.1 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Google LLC, as the real party in interest
as Google LLC. Appeal Br. 1.
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Application 15/666,378

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STATEMENT OF THE CASE
Appellant’s invention pertains to online advertising. In one
implementation, when a user completes a “conversion action” at an
advertiser’s website, such as making a purchase, creating an account, or
providing information, the website generates and stores a unique identifier
that is accessible to a payment system. In one aspect, the unique identifier is
used as a filename, and if the payment system determines that the file was
not crawled previously, the conversion is deemed valid. See ¶¶ 4–8, 31, 34.
Claim 2 is illustrative:

2. A secure conversion tracking method that does not
require a secret key, comprising: detecting, by one or more
processors, a conversion action;
responsive to detecting a conversion action:

automatically generating, by the one or more processors,
a unique identifier corresponding to the conversion action;

generating and storing a file having the automatically
generated unique identifier as a filename in a web server
directory of a website, the stored file being accessible to a
verification process by the filename;

generating, by one or more processors, a conversion
notification that includes the automatically generated unique
identifier; and

providing, by one or more processors, the automatically
generated unique identifier and conversion notification to a
second device:

performing a verification process that classifies the
conversion action as valid when the automatically generated
unique identifier was previously generated and stored, but not
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previously submitted with prior conversion notifications and
classifies the conversion action as invalid when the
automatically generated unique identifier was previously
submitted with the prior conversion notifications.

THE REJECTIONS
The Examiner rejected claims 2–6, 9–13, and 16–20 under 35 U.S.C.
§ 103 as unpatentable over Pitroda (US 2014/0067690 A1; published Mar. 6,
2014) and Dake (US 2002/0138501 Al; published Sept. 26, 2002). Final
Act. 2–4.2
The Examiner rejected claims 7, 8, 14, 15, and 21 under 35 U.S.C.
§ 103 as unpatentable over Pitroda, Dake, and Broman (US 2012/0134478
Al; published May 31, 2012). Final Act. 5–6.

THE OBVIOUSNESS REJECTION OVER PITRODA AND DAKE
Regarding independent claim 2, the Examiner finds that Pitroda
discloses, among other things: (1) automatically generating a unique
identifier corresponding to a detected conversion action; (2) generating a
conversion notification including the identifier; and (3) providing the
identifier and notification to a second device, where these three steps are
said to be performed responsive to detecting a conversion action, namely a
transaction. See Final Act. 2–3; Ans. 4–5. The Examiner also finds that
Pitroda performs the recited verification that classifies the conversion action

2 Throughout this opinion, we refer to: (1) the Final Rejection mailed
September 23, 2019 (“Final Act.”); (2) the Appeal Brief filed March 10,
2020 (“Appeal Br.”); (3) the Examiner’s Answer mailed May 12, 2020
(“Ans.”); and (4) the Reply Brief filed July 6, 2020 (“Reply Br.”).
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as: (1) valid when the identifier was previously generated and stored, but not
previously submitted with prior conversion notifications; and (2) invalid
when the identifier was previously submitted with those notifications. Final
Act. 3. According to the Examiner, the recited verification is well known
because it simply verifies whether a code was submitted previously and, if
so, invalidates a transaction. Ans. 5.
Although the Examiner acknowledges that Pitroda does not generate
and store a file with the unique identifier as a filename, where the stored file
is accessible to a verification process by the filename, the Examiner cites
Dake as teaching this feature in concluding that the claim would have been
obvious. Final Act. 3–4.
Appellant argues that Pitroda fails to suggest performing any claim
features responsive to a conversion action as claimed because Pitroda’s
relied-upon functionality—including determining whether a one-time code is
valid—occurs before a transaction occurs and is not, therefore, responsive to
that conversion action. See Appeal Br. 3–7; Reply Br. 2. Appellant further
argues that (1) Pitroda also does not teach or suggest the recited verification
process, and (2) Dake does not suggest using a unique identifier of a
conversion as a filename. Appeal Br. 6–9; Reply Br. 2–3.

ISSUE
Under 35 U.S.C. § 103, has the Examiner erred in rejecting claim 2 by
finding that Pitroda and Dake collectively would have taught or suggested
that the recited verification that classifies the conversion action as (1) valid
when the identifier was previously generated and stored, but not previously
submitted with prior conversion notifications, and (2) invalid when the
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identifier was previously submitted with those notifications (“the
verification limitation”)?

ANALYSIS
We begin by construing a key term in claim 2, namely a “conversion
action.” According to the Specification, “[a] conversion action can be any
action taken by the user of the user device 204, including but not limited to
making a purchase, creating an account, registering a product, etc.” Spec.
¶ 42 (emphasis added). Our emphasis underscores this broad, exemplary,
and non-limiting disclosure, namely that a conversion action can be any
action taken by the user.
The Specification’s paragraphs 4 and 31 use similar broad and open-
ended language in connection with conversion actions. For example,
paragraph 31 indicates that “[a] ‘conversion’ is said to occur when the user
performs a conversion action at the advertiser’s website, such as purchase a
product, create a new account, provide information, etc.” (emphasis added).
Our emphasis underscores not only this exemplary and non-limiting
language, but also an additional example of a conversion action that merely
involves providing information.
Given this broad and open-ended disclosure, a conversion action is
not limited to purchases or transactions, but encompasses much more,
namely any action by the user—including merely providing information.
See Spec. ¶¶ 4, 31, 42.
Despite this breadth, the Examiner’s rejection nonetheless focuses on
purchase-based conversion actions. See Ans. 3 (noting the rejection’s focus
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is based on purchases). Accord Ans. 5 (referring to a
“transaction/conversion.”).
Although purchases are conversion actions as noted above, we
nonetheless find the Examiner’s rejection problematic on this record. First,
as Appellant indicates (Appeal Br. 3–4), claim 2 recites four steps that are
each performed responsive to detecting a conversion action, namely
(1) automatically generating a unique identifier corresponding to the
conversion action; (2) generating and storing a file with the unique identifier
as a filename, where the stored file is accessible to a verification process by
the filename; (3) generating a conversion notification including the
identifier; and (4) providing the identifier and notification to a second
device.
As noted above, the Examiner finds that Pitroda performs steps (1),
(3), and (4) responsive to detecting a conversion action, and Dake performs
step (2). See Final Act. 3–4. Leaving aside the Examiner’s failure to
squarely address claim 2’s requirement that step (2)—like the other three
steps—must be performed responsive to detecting a conversion action, we
nonetheless find the Examiner’s reliance on Pitroda problematic for teaching
that steps (1), (3), and (4) are performed responsive to detecting a purchase-
or transaction-based conversion action consistent with the Examiner’s
presumed mapping. See Final Act. 4; Ans. 3–6.
As Pitroda explains in paragraph 18, Pitroda’s system conducts a
transaction by (1) receiving a transaction request from a second facility;
(2) sending a request for a code to a first facility; (3) verifying the code’s
validity; (4) receiving confirmation of the transaction from a third facility;
and (5) sending a transaction authorization to the second facility.
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As shown in Pitroda’s Figure 12, a purchase-based transaction can
involve four facilities, where, after receiving a transaction request from the
second facility (F2), the fourth facility (F4) sends a request for a code to the
first facility (F1). Pitroda ¶ 422. After receiving the code, the fourth facility
(F4) determines its validity. Id. Then, after receiving a transaction
confirmation from the third facility (F3), the fourth facility sends a
transaction authorization to the second facility (F2). Id.
The import of this functionality is that it occurs before the transaction.
Therefore, to the extent that the Examiner finds that these functions are
performed responsive to detecting a purchase- or transaction-based
conversion action (see Ans. 3–5), such findings are problematic on this
record, for these particular conversion actions occur later. We reach a
similar conclusion regarding the Examiner’s reliance on Pitroda’s paragraph
23 (Ans. 4) for, here again, the disclosed facility-based functionality that
transfers an authorization code likewise occurs before the transaction occurs,
namely withdrawing money from an account. The Examiner’s reliance on
Pitroda’s paragraphs 369, 658, and 662 (Final Act. 3) is similarly deficient
as Appellant indicates. See Appeal Br. 4–5.
The Examiner’s reliance on the language of Pitroda’s claims 4 and 15,
however, is a closer question. See Final Act. 3; Ans. 5. Pitroda’s claim 4
recites that (1) when a user opts to avail a service from the further service
facility, the further service facility issues a one-time activation code to the
user, and (2) when the user contacts the service facility for the first time, the
one-time-activation code is verified by the service facility for authentication.
Pitroda’s claim 15 recites commensurate limitations.
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Our emphasis underscores two particular actions by the user in
Pitroda’s claims 4 and 15, namely (1) opting to avail a service from a service
facility, and (2) contacting the service facility for the first time. Both actions
are “conversion actions” under the broad construction of the term noted
previously, for they are user actions that at least provide information
consistent with the term’s description in the Specification’s paragraph 31.
Therefore, this functionality at least suggests automatically generating
a unique identifier, namely a one-time activation code, responsive to
detecting a conversion action, namely the user’s opting to avail a service
from a service facility. This functionality also at least suggests verifying the
code responsive to detecting another “conversion action,” namely the user
initially contacting the service facility.
Nevertheless, even assuming, without deciding, that this functionality
considered with Pitroda’s and Dake’s other relied-upon disclosure somehow
teaches or suggests performing each of the four above-noted recited steps
responsive to detecting a conversion action as the Examiner seems to
suggest, we still fail to see—nor has the Examiner shown—how Pitroda
teaches or suggests the recited verification. Notably, the recited verification
classifies the conversion action as (1) valid when the identifier was
previously generated and stored, but not previously submitted with prior
conversion notifications; and (2) invalid when the identifier was previously
submitted with those notifications.
In the rejection, the Examiner cites Pitroda’s paragraphs 369 and 658
and claims 4 and 15 for teaching the verification limitation without further
explanation. See Final Act. 3. These findings are problematic for the
reasons noted above and those indicated by Appellant.
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On page 5 of the Answer, however, the Examiner adds that
Appellant’s verification is ostensibly “well known” because it simply
verifies whether a code was submitted previously and, if so, invalidates a
transaction. This finding is unsubstantiated on this record and is, therefore,
untenable. There is simply no evidence on this record to show the particular
conversion action identified by the Examiner, namely a purchase or
transaction, is classified as valid or invalid depending on whether a
corresponding unique identifier was submitted previously, let alone that the
identifier was submitted with prior conversion notifications as claimed.
Therefore, we are persuaded that the Examiner erred in rejecting
(1) independent claim 2; (2) independent claims 9 and 16 that recite
commensurate limitations; and (3) dependent claims 3–6, 10–13, and 17–20
for similar reasons. Because this issue is dispositive regarding our reversing
the Examiner’s rejection of these claims, we need not address Appellant’s
other associated arguments.

THE OTHER OBVIOUSNESS REJECTION
Because the Examiner has not shown that the cited prior art cures the
deficiencies noted above regarding the rejection of the independent claims,
we will not sustain the obviousness rejection of claims 7, 8, 14, 15, and 21
(Final Act. 5–6) for similar reasons.

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CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–6, 9–13,
16–20
103 Pitroda, Dake 2–6, 9–13,
16–20
7, 8, 14,
15, 21
103 Pitroda, Dake,
Broman
7, 8, 14,
15, 21
Overall
Outcome
2–21

REVERSED