International Business Machines Corporation

Patent Trials and Appeals Board

Jan 18, 2022

2020006590 (P.T.A.B. Jan. 18, 2022)

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. 15/214,849 07/20/2016 Joseph W. Ligman YOR920160041US1 1094 98841 7590 01/18/2022 Otterstedt, Wallace & Kammer, LLP P.O. Box 381 Cos Cob, CT 06807-0381 EXAMINER LE, CANH ART UNIT PAPER NUMBER 2439 NOTIFICATION DATE DELIVERY MODE 01/18/2022 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): CTOFFICE@OEKLAW.COM admin1@oeklaw.com docket@oeklaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JOSEPH W. LIGMAN, MARCO PISTOIA, GEGI THOMAS, and STEPHEN P. WOOD ____________________ Appeal 2020-006590 Application 15/214,849 Technology Center 2400 ____________________ Before MARC S. HOFF, ERIC S. FRAHM, and CATHERINE SHIANG, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-15. Claim 16 has been canceled (see Appeal Br. 15, Claims App.). 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. “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as International Business Machines Corporation (Appeal Br. 3). Appeal 2020-006590 Application 15/214,849 2 STATEMENT OF THE CASE Disclosed Invention and Exemplary Claim Appellant’s disclosed invention, entitled Privacy-Preserving User- Experience Monitoring (see Title), “relates to the preservation of privacy in mobile applications, and more particularly, to the preservation of privacy in monitored applications” (Spec. ¶ 1). Appellant recognizes that “[c]ollecting actual behavior of [an] application following its deployment is important to the application’s overall success with customers” (Spec. ¶ 2), and “customer analytics platforms exist for providing digital customer experience management and customer behavior analysis solutions” such as helping companies “meet online conversion and customer retention objectives” in order “to determine how users or customers are interacting with a given product” (Spec. ¶ 3). According to Appellant, the disclosed invention is: A method of operating a mobile device includes displaying a user interface as an image, the user interface being composed of a plurality of widgets, storing a privacy policy identifying at least one of the widgets, capturing a screenshot image corresponding to the screenshot image, excluding the at least one of the widgets from the screenshot image to create a modified screenshot image, and transmitting the modified screenshot image over a network to a monitoring server (Abstract). Exemplary claim 1, under appeal, with emphasis added to a key portion of the claim at issue, reads as follows: 1. A method of operating a computing device comprising: displaying a user interface on a display of said computing device, said user interface being composed of a plurality of widgets; Appeal 2020-006590 Application 15/214,849 3 [A] storing a privacy policy identifying at least one of said widgets; [B] detecting that a screen capture has been triggered; [C] changing said user interface displayed by excluding said at least one of said widgets from said user interface in response to detecting that said screen capture has been triggered and according to said privacy policy; [D] capturing a screenshot image of a changed user interface in which said at least one of said widgets is excluded from being displayed on said display of said computing device; and [E] transmitting said screenshot image over a network to a monitoring server (Appeal Br. 13, Claims App. (formatting, bracketed lettering, and emphasis added)). Remaining independent claim 7 (non-transitory computer program product having instructions to perform the method of claim 1) recites limitations commensurate in scope with the limitations of claim 1. The Examiner’s Rejection Claims 1-15 stand rejected under 35 U.S.C. § 103 as being unpatentable over Danis et al. (US 2011/0225200 A1; published Sept. 15, 2011) (hereinafter, “Danis”) and Amichai et al. (US 9,992,379 B2; issued June 5, 2018, and effectively filed April 10, 2014) (hereinafter, “Amichai”). Final Act. 5-12. Appellant’s Contentions Appellant primarily contends that the Examiner erred in rejecting claims 1 and 7 under 35 U.S.C. § 103 based on the failure of Danis to teach or suggest “capturing a screenshot image” in which a widget is excluded, as recited, for example, in limitation D of claim 1 (see Appeal Br. 8-11; Reply Br. 8-13). Appellant also presents various arguments as to limitations A through D, and to the resultant combination of Danis and Amichai (see Appeal 2020-006590 Application 15/214,849 4 Appeal Br. 8-11). However, as the issue regarding limitation D of claim 1 (and as commensurately recited in claim 7) is dispositive of the appeal, we will not address Appellant’s remaining arguments further. Principal Issue on Appeal Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 7- 12) and Reply Brief (Reply Br. 7-15), the following dispositive issue is presented on appeal: Has Appellant shown that the Examiner erred in rejecting claims 1-15 under 35 U.S.C. § 103 because Danis, and thus the combination of Danis and Amichai, fail to teach or suggest “capturing a screenshot image” in which a widget is excluded, as recited in independent claims 1 and 7? ANALYSIS We have reviewed Appellant’s arguments in the Briefs (Appeal Br. 7- 11; Reply Br. 7-13), the Examiner’s rejection (Final Act. 5-12), and the Examiner’s response (Ans. 3-11) to Appellant’s arguments in the Appeal Brief. We are persuaded by Appellant’s contentions (see Appeal Br. 8-11; Reply Br. 8-13) that the Examiner has not sufficiently shown that Danis, and thus the combination of applied references, teach or suggest “capturing a screenshot image,” as recited in claims 1 and 7. Our reasoning follows. The USPTO “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n of U.S., Inc. v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal quotation marks omitted); see Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an Appeal 2020-006590 Application 15/214,849 5 administrative agency, the PTAB “must articulate logical and rational reasons for [its] decisions” (internal quotation marks omitted)). We will not resort to speculation or assumptions to cure the deficiencies in the Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). In this light, and in view of the Examiner’s findings of fact for the rejection of claims 1 and 7 (see Final Act. 5-7 (as to claim 1), 9 (relying on the rejection of claim 1 as to the unpatentability of claim 7), we are persuaded that the Examiner erred in rejecting claims 1 and 7 over Danis and Amichai. In the Final Rejection, the Examiner cites to paragraph 18 and Figure 2 of Danis as teaching the “capturing a screenshot image” limitation recited in claims 1 and 7 (see Final Act. 6; Ans. 4-5). However, the Examiner fails to adequately and reasonably articulate within the rejection why these portions of Danis are considered to teach or suggest capturing a screenshot image as claimed. Although we agree with the Examiner (see Final Act. 4) that Danis describes determining whether certain collaboration data is allowable to be harvested using a filtering process (see Danis Fig. 1, step 114; ¶ 27), the cited portions of Danis are silent as to how or why harvesting collaboration data is the same as, or equivalent to, the recited capture of a screenshot. Our review of Danis reveals that Danis discloses harvesting data (see Danis Fig. 1, step 114), and then “storing the harvested collaboration data in a database” (Danis Abstract). And, although Danis’ Figure 2 indicates types/lists of data that may be (i) captured once transformed, or (ii) not captured (see Danis Fig. 2, display sections 206 and 209), Figure 2 merely shows “[a]n example screenshot of the GUI [graphical user interface] in Appeal 2020-006590 Application 15/214,849 6 ‘Edit This Policy’ mode” (Danis ¶ 18). Finally, the Examiner has not shown that a screenshot of an editing GUI, as shown by Danis in Figure 2, is the same as, or equivalent to, the recited “screenshot image of a changed user in which said at least one of said widgets is excluded from being displayed on said display of said computing device” (claim 1, limitation D), as recited in claim 1. As a result, we find the Examiner’s assertion that Danis teaches capturing a screenshot image to be unsupported, conclusory, and speculative at best.2 In light of our careful review of Danis, Appellant’s contentions (Appeal Br. 8-11; Reply Br. 8-13) that the cited portions of Danis fail to disclose, teach, or suggest capturing a screenshot image, as set forth in claims 1 and 7, are persuasive. As a result, based on the record before us, Appellant has shown the Examiner erred in rejecting independent claims 1 and 7, and thus claims 2-6 and 8-15 depending respectively therefrom, under 35 U.S.C. § 103; and we cannot sustain the Examiner’s obviousness rejection of claims 1-15 over the combination of Danis and Amichai. CONCLUSION For all of the reasons above, we hold as follows: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-15 103 Danis, Amichai 1-15 REVERSED 2 We will not resort to speculation or assumptions to cure the deficiencies in the Examiner’s fact finding. See In re Warner, 379 F.2d at 1017.