Takaya Kato

Patent Trials and Appeals Board

Jan 3, 2020

14510427 - (D) (P.T.A.B. Jan. 3, 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.
14/510,427 10/09/2014 Takaya KATO 134011.03 5726
25944 7590 01/03/2020
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
WANG, HARRIS C
ART UNIT PAPER NUMBER
2439
NOTIFICATION DATE DELIVERY MODE
01/03/2020 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte TAKAYA KATO

Appeal 2018-001239
Application 14/510,427
Technology Center 2400

Before ST. JOHN COURTENAY, III, DAVID M. KOHUT, and
JOHN D. HAMANN, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Appellant identifies the real party in interest as The Bank of Tokyo-
Mitsubishi UFJ, LTD. Appeal Br. 1.
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Application 14/510,427

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CLAIMED SUBJECT MATTER
The claims are directed to an apparatus for validating a user.
Spec. ¶ 1. Claim 1, reproduced below with bracketed matter added, is
illustrative of the claimed subject matter:
1. A user validation apparatus comprising:
a memory; and
a processor programmed to:
[a] extract user-agent information and an access source
internet protocol (IP) address in an HTTP header of a packet
received from a terminal device operated by an individual user
by applying HTTP as a protocol of an application layer;
[b] store the extracted user-agent information and the
extracted access source IP address in the memory as usage
history information that corresponds to user identification
information of the individual user;
[c] determine that a user operating a given terminal
device is a conditionally valid user, when: (a) the extracted
user-agent information corresponds to the user-agent
information stored as usage history information in the memory,
but the extracted IP address does not correspond to the IP
address stored as usage history information in the memory, or
(b) the extracted IP address corresponds to the IP address stored
as usage history information in the memory, but the extracted
user-agent information does not correspond to user-agent
information stored as usage history information in the memory;
and
[d] request re-authentication through a web page to the
given terminal device, when the user operating the given
terminal device is determined to be the conditionally valid user.
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REJECTIONS2
Claims 1–13 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Watkins (US 2004/0268145 A1, published Dec. 30, 2004)
in view of Fagundo (US 7,624,437 B1, issued Nov. 24, 2009).
Claims 1–13 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claim 1 of U.S. Patent No. 9,021,555
B2, issued Apr. 28, 2015.
OPINION
Rejection under 35 U.S.C. § 103(a)
For this rejection, Appellant argues independent claims 1, 2, and 4 as
a group and dependent claims 8–10 as a group. Appeal Br. 6–10. We select
claims 1 and 8 as representative.
Independent Claims 1, 2, and 4
Claim 1 limitations [a] and [b] extract and store
Claim 1 recites the limitations of [a] “extract user-agent information
and an access source internet protocol (IP) address . . .” and [b] “store the
extracted user-agent information and the extracted access source IP address
. . . .” The Examiner finds these limitations are taught by Watkins’
BROWSER_USER_AGENT and CLIENT_IP Variables that are extracted

2 Throughout this Decision we have considered the Specification filed Oct.
9, 2014 (“Spec.”), the Final Rejection mailed Dec. 9, 2016 (“Final Act.”),
the Appeal Brief filed May 16, 2017 (“Appeal Br.”), the Examiner’s Answer
mailed Sept. 21, 2017 (“Ans.”), and the Reply Brief filed Nov. 16, 2017
(“Reply Br.”).
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and stored by a gateway when a user client requests access. Final Act. 7;
Watkins ¶¶ 31, 36–45.
Appellant presents two main arguments regarding the obviousness
rejection of claim 1, limitations [a] and [b]. We address these arguments
below.
A.
Appellant argues Watkins does not teach the extraction of both user-
agent (browser) information and an IP address as required by claim 1
limitations [a] and [b] because Watkins’ teaches that only one variable
(BROWSER_USER_AGENT or CLIENT_IP) is extracted. Appeal Br. 6–7;
Reply Br. 2. Appellant asserts this because in Watkins’ first match
algorithm, only one action is picked and “only one of Client IP address or
BROWSER_USER_AGENT match—not both match.” Reply Br. 2.
We are not persuaded. The Examiner finds and we agree that
Watkins’ first match algorithm can evaluate two or more rules that include
the CLIENT_IP and BROWSER_USER_AGENT in reaching the rule that
matches (e.g., IF condition met). Ans. 4; Final Act. 7; Watkins ¶¶ 42–45.
Watkins describes rules and first match algorithm as follows:
[0042] Some example scan rules are as follows:
[0043] OMIT SCAN IF (CLIENT_IP=“l0.0.1.2”)
[0044] SCAN: some_script IF (USER_AGENT=
“*MSIE*”)
[0045] The rules of the sign-on rules page are evaluated in a
“first match” algorithm. Thus, there is only one action that is
picked from the list when a user requests to sign-on to the
gateway 1.
Watkins ¶¶ 42–45. Specifically, Watkins’ “first match algorithm” evaluates
the rules in the rule list in sequence so that when the condition of a rule is
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satisfied, then only the action for that rule is performed and no subsequent
rules are evaluated. Ans. 4. For example, as Watkins “‘first match’
algorithm” evaluates the two scan rules in paragraphs 43 and 44, when the
extracted Client_IP variable does not match the first condition in the top rule
(paragraph 43), then Watkins’ “‘first match’ algorithm” evaluates the
extracted User_Agent variable in second rule (paragraph 44). Thus, both
rules (paragraph 43 and 44), including both variables
(BROWSER_USER_AGENT and CLIENT_IP) are evaluated. Therefore,
Watkins teaches extracting and storing the BROWSER_USER_AGENT and
CLIENT_IP as required by claim 1, limitations [a] and [b]. Ans. 4.
B.
Appellant also argues that Fagundo does not teach the claim 1
limitations [a] and [b] extracting and “HTTP.” Appeal Br. 8. We are not
persuaded because the Examiner relied upon Watkins, not Fagundo, to teach
claim 1 limitations [a] and [b]. Final Act. 7.
Claim 1, limitation [c]
Claim 1, limitation [c] recites:
determine that a user . . . is a conditionally valid user, when: (a)
the extracted user-agent information corresponds to the user-
agent information . . ., but the extracted IP address does not
correspond to the IP address . . ., or (b) the extracted IP address
corresponds to the IP address . . ., but the extracted user-agent
information does not correspond to user-agent information . . . .
The Examiner relies on the combination of Fagundo and Watkins to
teach limitation [c]. Final Act. 8–9. The Examiner finds Fagundo teaches
the claimed XOR logic using a MAC address and an IP address. Final Act.
8–9; Ans. 5; Fagundo 6:17–29. The Examiner further finds that it would be
obvious to substitute for Fagundo’s MAC address with Watkins’
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Browser_User_Agent. Final Act. 8–9; Ans. 5–6. The Examiner reasons that
it would have been obvious to substitute Watkins’ Browser_User_Agent for
Fagundo’s MAC address because Fagundo teaches that combinations of
computer information are used to identify client devices and Watkins’
Browser_User_Agent info is computer information. Final Act. 3, 8–9; Ans.
5–6; Fagundo 6:20–22.
A.
Appellant argues Fagundo teaches away from and that there is no
motivation for substituting Fagundo’s MAC address with Watkins’
Browser_User_Agent because MAC addresses are fixed and Watkins’
Browser_User_Agent changes. Reply Br. 5. Appellant asserts this is
supported by Fagundo’s statement that “only the source MAC and IP
addresses present in the packet which prompted the authentication are
accepted.” Reply Br. 5 (citing Fagundo 6:17–29) (emphasis omitted);
Appeal Br. 8.
We are not persuaded because Appellant’s quote from Fagundo is
taken out of context as the beginning of the sentence recites “[i]n that
implementation.” Fagundo 6:22–29. The sentence only applies to the one
specific embodiment that includes IP and MAC addresses, not to all
embodiments. Specifically, Fagundo discusses the one embodiment with the
MAC and IP addresses as follows:
The MAC address and the IP address in combination could also
be used in the authentication table 75. In that implementation,
only the source MAC and IP addresses present in the packet
which prompted the authentication are accepted. If either is
received in combination with a different address (e.g., MAC
address paired with a new IP address), the user must re-
authenticate.
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Fagundo 6:22–29 (emphasis added). Thus, Appellant’s quote from Fagundo
only applies to the one specific embodiment that includes IP and MAC
addresses, not to all embodiments. Therefore, Fagundo does not teach that
only MAC and IP addresses can be used.
In addition, Fagundo states that MAC addresses are not required and
other combinations of computer information can be used. Fagundo 6:20–22;
Ans. 6. Specifically, Fagundo states that in alternative embodiments (i.e.,
other than the MAC address embodiment), “other client computer
information or combinations of information could be stored.” Fagundo
6:20–22; Ans. 6. Thus, Fagundo’s alternative embodiments can use
combinations of other client computer information, such as IP addresses and
Watkins’ Browser_User_Agent. Ans. 6. Moreover, “[t]he prior art’s mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed . . . .” In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Fagundo’s alternative
embodiments using computer information do not discourage the substitution.
Appellant also asserts Fagundo intends for “computer information” to
be related to one or both of: a MAC address and an IP address. Reply Br. 5.
We are not persuaded of this intention because Fagundo does not state that
“computer information” must include at least one of MAC address and IP
address.
We further agree with the Examiner’s reasoning that the substitution
would have been obvious. Specifically, the Examiner finds Fagundo teaches
that identifying and authenticating client devices use MAC and/or IP
addresses and other combinations of computer information and finds that
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Watkins teaches computer information, including IP addresses and
Browser_User_Agent information, are used in an authenticating method.
Ans. 5. The Examiner reasons that it would have been obvious to substitute
Watkins’ Browser_User_Agent for Fagundo’s MAC address because
Fagundo teaches the combinations of computer information are used to
identify client devices and Watkins’ Browser_User_Agent info is computer
information. Final Act. 3; Ans. 5–6; Fagundo 6:20–22. The Examiner
further finds the substitution of Watkins’ Browser_User_Agent information
for Fagundo’s Mac address yields the predictable result of determining
changes in client computers and conditionally validating. Final Act. 3, 9;
Ans. 5. Therefore, we agree with the Examiner that it would have been
obvious to substitute for Fagundo’s MAC address with Watkins’
Browser_User_Agent because it is a simple substitution of known elements
according to known methods that yields predictable results. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
B.
Appellant also argues that it is improper to substitute Watkins’
Browser user agent for Fagundo MAC address because Fagundo’s primary
purpose of a dedicated client computer requires a fixed MAC address.
Reply Br. 5; Appeal Br. 8. If a proposed modification would render the
prior art unsatisfactory for its intended purpose, then there is no suggestion
or motivation to make the proposed modification. See In re Gordon, 733
F.2d 900, 902 (Fed. Cir. 1984).
We are not persuaded that Fagundo’s intended purpose requires a
MAC address because Fagundo states that in alternative embodiments,
distinct from the MAC address embodiment, “other client computer
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information or combinations of information could be stored.” Fagundo
6:20–22; Ans. 6. Furthermore, Fagundo teaches an alternative embodiment
using only an IP address. Fagundo 6:22–23. Thus, Fagundo intended
purpose does not require a MAC address and Fagundo’s alternative
embodiments can use combinations of other client computer information,
such as IP addresses and Watkins’ Browser_User_Agent. Ans. 6.
Therefore, the substitution of Watkins’ Browser_User_Agent for Fagundo’s
MAC address does not render Fagundo unsatisfactory for its intended
purpose.
***
For these reasons we sustain the Examiner’s rejection under 35 U.S.C.
§ 103(a) of independent claim 1 and of independent claims 2 and 4 that are
grouped with and fall with claim 1, and of dependent claims 3, 5–7, and 11–
13 which were not separately argued.
Dependent Claims 8–10
Claim 8 recites “wherein the memory is configured to store a latest
user-agent information and a previous user-agent information.” Appellant
essentially argues that Watkins does not suggest storing two instances of
(browser) user-agent information because Watkins is only interested if the
current browser is susceptible to a virus. Appeal Br. 10.
We are not persuaded. Our analysis begins by interpreting the claim
limitations. Cf. Teleflex, Inc. v. Ficosa North Am. Corp., 299 F.3d 1313,
1323–24 (Fed. Cir. 2002). Claim interpretation is an issue of law that we
review de novo. Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319
(Fed. Cir. 2009). We conclude that the functional language of claim 8
(“configured to store . . .”) requires a memory capable of or designed to store
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two instances of user-agent information.3,4 We also note that the latest and
the previous user-agent information are stored but are not recited in any
claim as altering or changing any computer function. Based on this claim
interpretation, we agree with the Examiner that the combination of Watkins
and Fagundo suggests storing user-agent information (e.g., computer
information) in Fagundo’s authentication table and Fagundo’s authentication
table is capable of and designed to store more than one instance of computer
information (“other client computer information or combinations of
information”). Fagundo 6:20–22 (emphasis added); Ans. 6; Final Act. 9, 13.
For these reasons we sustain the Examiner’s rejection under 35 U.S.C.
§ 103(a) of claim 8 and of claims 9 and 10 that were argued and grouped
with claim 8.

Rejection under Nonstatutory Double patenting
Claims 1–13 were rejected on the ground of nonstatutory
obviousness-type double patenting (OTDP) as being unpatentable over claim

3 Although “[a] patent applicant is free to recite features of an apparatus
either structurally or functionally . . ., choosing to define an element
functionally . . . carries with it a risk.” In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997). This risk is that Appellant bears the burden to prove that
the prior art does not possess the functional characteristic, once the
Examiner has shown a sound basis for believing the claimed structure to be
the same as the prior art structure. See In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990).
4 Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed.
Cir. 2012) (Holding that “adapted to” in the claim at issue had the narrower
“configured to” meaning, which required elements to be “designed or
configured to accomplish the specified objective, not simply that they can be
made to serve that purpose”).
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1 of U.S. Patent No. 9,021,555. Final Act. 4–6. The Final Office action
states:
A timely filed terminal disclaimer in compliance with
37 [C.F.R. §§] 1.321 (c) or 1.321 (d) may be used to overcome
an actual or provisional rejection based on a nonstatutory
double patenting ground . . . .
Final Act. 5.
On May 8, 2017, Appellant filed an electronic Terminal Disclaimer
(e-Terminal Disclaimer) that was approved. Appeal Brief 11; Terminal
disclaimer filed May 8, 2017; Electronic Terminal Disclaimer -Approved
May 8, 2017. Therefore, we dismiss the nonstatutory OTDP Rejection as
moot.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–13 103 Watkins and
Fagundo
1–13
1–13 Nonstatutory
Double Patenting5

Overall
Outcome
1–13

5 As explained above, we do not reach this rejection because the rejection is
not before us.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED