Wei-Yeh Lee

Patent Trials and Appeals Board

Feb 12, 2020

13135240 - (D) (P.T.A.B. Feb. 12, 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.
13/135,240 06/29/2011 Wei-Yeh LEE 10171-11001A
(NC58235US)
7701
101535 7590 02/12/2020
Lempia Summerfield Katz LLC/HERE
20 South Clark Street
Suite 600
Chicago, IL 60603
EXAMINER
SIGMOND, BENNETT M
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
02/12/2020 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):
docket-us@lsk-iplaw.com
hereipr@here.com
pair_lsk@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WEI-YEH LEE and FRANK J. KOZAK
____________

Appeal 2018-004425
Application 13/135,240
Technology Center 3600
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU,
and SHARON FENICK, Administrative Patent Judges.

FENICK, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1–21, 23, and 25, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b)(1).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Here Global B.V. as the real party in interest. App.
Br. 2.
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BACKGROUND
Appellant’s invention relates to implementing an intermediary between
clients and servers, through which communications between the clients and servers
must pass, as part of a “trust architecture” to allow a user at a client to control
unsolicited server operations without loss of functionality. Spec. ¶¶ 24, 38. For
example, an intermediate server may be used to implement “a privacy service on
the World Wide Web that acts as an intermediary for all of the data traffic to and
from the user’s client device, thereby allowing the privacy service to filter the
user’s data traffic and to perform certain privacy-enhancing functions on the user’s
data traffic.” Id. ¶ 9; see id. ¶¶ 32, 36, 37.
Claims
Claims 1, 11, and 20 are independent. Claim 1 is exemplary and reproduced
below with italicization added for emphasis:
1. An intermediary for use in a client-server architecture, the
client-server architecture comprising at least one client in
communication, via a network, with at least one server, each of the at
least one server being operative to perform at least one unsolicited
function with respect to each of the at least one client upon which one
or more of the at least one server is at least partially dependent to
facilitate stateful operation thereof with respect to the respective at
least one client, each of the at least one unsolicited function
comprising a passive function with respect to the respective client, the
passive function comprising obtaining of client originated data
therefrom independently of providing server originated data thereto,
the intermediary comprising:
an interface in communication, via the network, with at least a
first client of the at least one client and at least a first server of the at
least one server and operative to, according to a direction of a user
associated with the first client and derived at least in part from data
indicative of previous interaction between the user and at least one of
the at least one server, cause the first server to perform the at least one
unsolicited function with respect to the intermediary on behalf of the
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first client such that the first server is unaware that it is not performing
the at least one unsolicited function with respect to the first client, the
unsolicited function comprising augmenting content requested by the
at least one client with advertising, the stateful operation of the one or
more of the at least one server at least partially dependent on the at
least one unsolicited function and subject to the direction of the user,
wherein the interface is further operative to receive an instruction
from the user with respect to profile information stored by the
intermediary on behalf of the user, the profile information comprising
a set of location related information items, each having a different
level of specificity, the instruction comprising an instruction from the
user to provide information of a particular level of specificity from the
set based on the location related thereto to at least one of the at least
one server, the profile information comprising stateful data configured
to be used by at least one of the at least one server to facilitate stateful
functionality with respect to the user's network activity and the
provided information.
Rejection
The Examiner rejects claims 1–21, 23, and 25 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Ashley et al. (US 2005/0015429 A1; Jan. 20,
2005) (“Ashley”) in view of Stolfo et al. (US 7,536,360 B2; May 19, 2009)
(“Stolfo”), Ko et al. (US 2008/0243593 A1; Oct. 2, 2008) (“Ko”), and Paretti et al.
(US 2010/0077484 A1; Mar. 25, 2010) (“Paretti”). Final Act. 2–30.
ANALYSIS
The Examiner determines that claims 1–21, 23, and 25 would have been
obvious over Ashley in view of Stolfo, Ko, and Paretti. Final Act. 2–30. The
Examiner relies on Ko for the limitation that the “unsolicited function” that the
server is operative to perform comprises “augmenting content requested by the at
least one client with advertising” as recited in independent claims 1, 11, and 20.
Id. at 7–8, 14, 19. Specifically, the Examiner finds that “Ko teaches server
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provision of advertising to augment online content requested by a client device
based on a user profile associated with the IP address of the client device and/or
cookie information, in either case, gathered by the server from the client device in
the process of client/server communications over the web.” Id. at 8 (citing Ko
¶¶ 29–30, 47–50). According to the Examiner, it would have been obvious to one
of ordinary skill in the art at the time of the invention to combine Ashley and
Stolfo’s teaching of a server performing unsolicited functions2 with Ko’s teaching
of supplementing requested content with advertising “in order to improve the
targeting of advertising according to advertiser specifications . . . while affording
users a degree of control over the dissemination and use of their information.”
Final Act. 8 (citations omitted); see also Ans. 8.
Appellant argues that Ko fails to teach or suggest that the function (i.e.,
augmenting content with advertisements) is “unsolicited” as claimed. App. Br. 8.
According to Appellant, “the functions provided by Ko are solicited by the user”
because “they must log in at least once to identify themselves to the system of Ko.”
Id. (citing Ko ¶ 50). In other words, Appellant argues that Ko requires the user to
log in at least once to provide the user profile information by which targeted
advertisements are tailored to the user and that, by logging in and providing user

2 See Final Act. 3–4 (finding Ashley teaches a server performing an unsolicited
function of exchanging cookie data) (citing Ashley ¶¶ 31, 34–35); id. at 6–7
(finding Stolfo teaches servers performing unsolicited functions of gathering client
IP addresses or proxy server-generated IP addresses) (citing, inter alia, Stolfo 3:6–
16, 16:48–65); Ans. 8 (finding “the combination of Ashley and Stolfo teaches or
suggests that their respective privacy proxies intervene in unsolicited functions
performed by a server to help the server deliver targeted content to clients”).
Appellant does not dispute these findings.

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profile information, the user solicits the advertisements. See Reply Br. 4–5 (citing
Ko ¶¶ 47–48).
The Examiner disagrees that Ko requires user login, finding instead that
Ko’s system “can and does obtain a user profile based on IP address information
alone.” Ans. 9–10 (emphasis omitted) (citing Ko ¶¶ 29, 44, 46, 50). Further, the
Examiner responds that, based on the phrase “advertising and other unsolicited
functionality” in the Specification, the term “unsolicited function,” under its
broadest reasonable interpretation, “must be read as including all advertising.” Id.
at 9 (emphasis omitted) (citing Spec. ¶ 104).
We agree with Appellant that, in Ko, the user logs in at least once, making it
possible for advertising content to be tailored to the user based on user profile
information. See Ko ¶ 47 (“In order to provide the personal services, the
system 200 should receive a user identification (ID) and a password from the
user.”); see also id. ¶ 50 (explaining that, when a search service user logs in at least
once, cookie or IP address information is stored in association with the user profile
information so that advertising content may still be tailored to the user when the
user subsequently performs a search without logging in). And we do not agree
with the Examiner that the Specification’s use of the phrase “advertising and other
unsolicited functionality” means that the term “unsolicited function” must be
construed to encompass all advertising. In our view, the phrase “advertising and
other unsolicited functionality” in the Specification indicates that unsolicited (i.e.,
not requested) functionality may include advertising, but does not preclude the
possibility of solicited (i.e., requested) advertising. See Spec. ¶¶ 31, 32 (describing
“unsolicited” functions as unauthorized by, without direction from, or without
knowledge of the user and “solicited” operations as user-desired or requested); see
also id. ¶¶ 54 (discussing a “user selected” advertisement), 102 (describing a user
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earning rewards by viewing advertisements), 224 (describing “enabling a user to
control or customize” received advertisements); Reply Br. 9 (Appellant stating that
the definition of “unsolicited” is “not asked for or requested”).
However, we are unpersuaded by Appellant that the user, by logging in at
least once “to identify themselves to the system of Ko,” solicits, i.e., requests, the
advertising function. See App. Br. 8. As the Examiner points out:
Appellant’s reading [of Ko] requires that in a session where the user did
not log in and the system provides tailored advertising to the user based
on the IP address of the user’s device, the advertising is nevertheless
“solicited” by the user because at some indefinite point in the past, the
user did log into the system. Extending that logic, regardless of any
disclosure provided or not provided at login, once the user logs into
Ko’s system, the user has forever “solicited” all advertising that might
be provided to the user’s device. . . . even where the user never logs in
again.
Ans. 10. We agree with the Examiner that Appellant reads Ko too narrowly. See
id. Ko describes a user entering a query word or search keyword to obtain
information from the Internet, which is provided along with advertisement data,
and Ko further describes a system which provides “personal services for each user”
such as “search services, email functions, communities, [and] blogs.” Ko ¶¶ 3, 5–
8, 47. We are unpersuaded that Ko’s login equates to soliciting, desiring, or
requesting targeted advertisements during the use of Ko’s system, even if the user
provides user profile information at login and receives advertisements during the
use of the system. See App. Br. 8. Therefore we disagree with Appellant that in
Ko the user solicits advertisements by merely logging in.
Thus, we are unpersuaded that the Examiner erred in finding that Ko, in
combination with Ashley and Stolfo, would have taught or suggested to one of
ordinary skill in the art the limitation of “the unsolicited function comprising
augmenting content requested by the at least one client with advertising.”
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Appellant argues that the Examiner uses improper hindsight reasoning and
that “if Appellant’s claimed combination was so well known or ubiquitous, the
Examiner should have had no problem locating a reference teaching these
limitations.” Reply Br. 8 (responding to Examiner’s statement that it “would have
required nothing more than common sense” to apply Ko’s teaching of
supplementing requested content with advertising to Ashley and Stolfo because
“supplementation of requested internet/web content with advertising was
ubiquitous” at the time of the invention (see Ans. 8)). Appellant’s argument that
all the limitations are not described in a single reference is unpersuasive because
the Examiner has rejected the claims under 35 U.S.C. § 103, not § 102.
Furthermore, Appellant’s bald statement that the combination of the references is
based on improper hindsight reasoning does not present a specific argument
regarding any error in the Examiner’s determinations relating to what the
combination of disclosures taken a whole would have suggested to one of ordinary
skill in the art at the time of the invention. See In re McLaughlin, 443 F.2d 1392,
1395 (CCPA 1971).
Appellant argues that “one of ordinary skill in the art would not be
motivated to combine the teachings of Ko with those of Ashley, Stolfo and
Paretti.” App. Br. 7–8. However, beyond this statement, no argument relating to a
lack of motivation for the combination is supplied. Id. at 8. In the Reply Brief,
Appellant argues for the first time that combining Ko with Ashley and Stolfo
“would undermine the operation and stated goals of both Ashley and Stolfo to
prevent identification of the user” (Reply Br. 5–6), that the Examiner fails to
adequately explain how the combination would result in improved targeted
advertising (id. at 11), that “neither the system of Ashley/Stolfo nor the system of
Ko would be improved via the combination” (id. at 7), and that the function in Ko
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is not a passive function (id. at 9–10). We do not consider those assertions because
they are improper new arguments. See 37 C.F.R. 41.41(b)(2).
For the foregoing reasons, we sustain the Examiner’s rejection under
35 U.S.C. § 103(a) of independent claims 1, 11, and 20 and dependent claims 2–
10, 12–19, 21, 23, and 25, which are not argued separately.
CONCLUSION
The Examiner’s rejection of claims 1–21, 23, and 25 under 35 U.S.C.
§ 103(a) is affirmed.
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–21, 23, 25 § 103(a) Ashley, Stolfo, Ko, Paretti 1–21, 23, 25

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).

AFFIRMED