2019003215 (P.T.A.B. Nov. 23, 2020)

A10 Networks, Incorporated

Patent Trials and Appeals BoardNov 23, 2020

2019003215 (P.T.A.B. Nov. 23, 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. 14/706,963 05/08/2015 Micheal THOMPSON ATEN-0006.01.01US 1444 136187 7590 11/23/2020 A10 NETWORKS c/o Murabito, Hao & Barnes 111 North Market Street Suite san Jose, CA 95113 EXAMINER SHAIFER HARRIMAN, DANT B ART UNIT PAPER NUMBER 2434 NOTIFICATION DATE DELIVERY MODE 11/23/2020 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): misaac@mhbpatents.com officeaction@mhbpatents.com terimurabito@mhbpatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHEAL THOMPSON Appeal 2019-003215 Application 14/706,963 Technology Center 2400 Before CAROLYN D. THOMAS, NABEEL U. KHAN, and SCOTT RAEVSKY, Administrative Patent Judges. RAEVSKY, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 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 A10 Networks, Incorporated. Appeal Br. 1. Appeal 2019-003215 Application 14/706,963 2 CLAIMED SUBJECT MATTER The claims are directed to integrated bot and captcha techniques. See Spec., Title. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: receiving, by a service gateway, a service request from a client device; extracting, by the service gateway, client information from the received service request; determining, by the service gateway, if the client device has been identified as a known computer bot based upon the client information and a bot database; selecting, by the service gateway, a CAPTCHA in response to the service request, if the client device is not a known computer bot; generating, by the service gateway, CAPTCHA instructions for the selected CAPTCHA; generating, by the service gateway, an expected CAPTCHA response for the determined CAPTCHA; sending, by the service gateway, the CAPTCHA instructions to the client device; receiving, by the service gateway, a CAPTCHA response from the client device in response to the CAPTCHA instructions; comparing, by the service gateway, the CAPTCHA response to the expected CAPTCHA response to determine based on the service policy if the client device is operating under control of a human user or operating autonomously; and sending, by the service gateway, the service request to an appropriate server device if the client device: is a known authorized computer bot; or is operating under control of a human user and the client device is not a known unauthorized computer bot. Appeal 2019-003215 Application 14/706,963 3 REFERENCES The prior art relied upon by the Examiner is: Emigh US 8,112,483 B1 Feb. 7, 2012 Hu Kim Baliga US 2012/0254971 A1 US 2014/0020067 A1 US 2016/0065596 A1 Oct. 4, 2012 Jan. 16, 2014 Mar. 3, 2016 REJECTIONS2 Claims 1–5, 8, 9, 12–16, 18, 19 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–11 and 13 of copending Application No. 14/706,968. Final Act. 14. Claims 1, 4, 7–9, 12, 15–19 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 8, 9, 11, 14, and 16–20 of copending Application No. 14/706,972. Id. at 20. Claims 1 and 9 stand rejected under 35 U.S.C. § 103 as unpatentable over Baliga and Hu. Id. at 29. Claims 2–7, 10–15, and 17–19 stand rejected under 35 U.S.C. § 103 as unpatentable over Baliga, Hu, and Kim. Id. at 34. Claims 8 and 16 stand rejected under 35 U.S.C. § 103 as unpatentable over Baliga, Hu, and Emigh. Id. at 37–38. ANALYSIS Rejection under § 103 Appellant contends that the combination of Baliga and Hu fails to teach or suggest claim 1’s “extracting, by the service gateway, client 2 The Examiner withdrew a rejection of claims 1–19 under 35 U.S.C. § 101. Ans. 17–18. Appeal 2019-003215 Application 14/706,963 4 information from the received service request.” Appeal Br. 67–68; Reply Br. 22–23. The Examiner relies on Hu for this claim limitation, finding that Hu’s CAPTCHA system teaches the claimed “service gateway,” that Hu’s “token” teaches the claimed “client information,” and that Hu’s client “web page request” teaches the claimed “service request.” Final Act. 31–32 (citing Hu ¶¶ 48, 49, 59); Ans. 25. Appellant contends Hu teaches that “[t]he token is a unique identifier generated by the CAPTCHA system.” Appeal Br. 68 (citing Hu ¶¶ 17, 48) (some emphasis omitted). As Hu’s token is generated by its CAPTCHA system, Appellant contends the token is not extracted from the received service request. Id. Figure 2 of Hu is reproduced below: Figure 2 depicts an application model of Hu’s CAPTCHA method. Hu ¶ 30. In Fig. 2, a user client 21 sends a web page request (1) to the application server (AS 22), which sends a CAPTCHA request (2) to the CAPTCHA system 20. Id. ¶ 59. In response, the CAPTCHA system obtains an ad (3) and sends the ad, a token (4), and a CAPTCHA image to the application Appeal 2019-003215 Application 14/706,963 5 server. Id. “The token is a unique identifier generated by the CAPTCHA system to identify a whole interaction session . . . established between the CAPTCHA system, Application Server, and user client.” Id. ¶ 48 (emphasis added). We agree with Appellant that Hu’s token is generated by the CAPTCHA system, not extracted from the client’s web page request. In the Answer, the Examiner further finds that Hu’s “token [i.e. applicant’s client information] is a unique identifier generated by the captcha system 20 that identifies the whole transaction session,” but this finding merely restates what Hu does—generate a token, not extract it from a received service request. See Ans. 25. The Examiner has not relied on any other reference to teach this element. Accordingly, we do not sustain the Examiner’s rejection of claim 1 and its corresponding dependent claims. As independent claim 9 recites identical language to the above-quoted limitation of claim 1, we also do not sustain the Examiner’s rejections of claim 9 and its dependent claims. We do not reach Appellant’s further allegations of error because we find the issue discussed above to be dispositive of the obviousness rejection of all the pending claims. Provisional Double Patenting Rejections Appellant does not appeal the Examiner’s provisional double patenting rejections. App. Br. 72. Provisional rejections, like all other rejections, are ripe for appeal when an Appellant’s claims have been twice rejected. See 37 C.F.R. § 41.31(a) (2019). A rejection not appealed will not be considered and is Appeal 2019-003215 Application 14/706,963 6 subject to summary affirmance. See 37 C.F.R. § 41.31(c) (“An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection . . . .”); Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (Board may affirm uncontested rejection without considering the merits). Based on our review of Patent Office records, it appears that Appellant filed a terminal disclaimer on May 13, 2019 in Application No. 14/706,968 (listing Application No. 14/706,963), also issued as Patent No. 10,360,365 on July 23, 2019. In light of the terminal disclaimer (which we do not review), we leave it to the Examiner to determine whether the terminal disclaimer is effective to overcome the double patenting rejection. However, we note that Application No. 14/706,972 issued as U.S. Patent No. 10,250,629 on April 2, 2019, but we do not see any terminal disclaimer filed in that case. Accordingly, we summarily affirm the Examiner’s provisional3 double patenting rejection over Application No. 14/706,792, now U.S. Patent No. 10,250,629. See Frye, 94 USPQ2d at 1075 (The Board “reviews . . . rejection[s] for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon,” and treats arguments not made as waived.). 3 Now that Application No. 14/706,792 has issued, the Examiner should determine whether this double patenting rejection is no longer provisional. Appeal 2019-003215 Application 14/706,963 7 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 8, 9, 12–16, 18, 194 103 Provisional double patenting over 14/706,968 1, 4, 7–9, 12, 15–19 103 Provisional double patenting over 14/706,972 1, 4, 7–9, 12, 15–19 1, 9 103 Baliga, Hu 1, 9 2–7, 10–15, 17–19 103 Baliga, Hu, Kim 2–7, 10– 15, 17–19 8, 16 103 Baliga, Hu, Emigh 8, 16 Overall Outcome 1, 4, 7–9, 12, 15–19 6, 10, 11 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 IN PART 4 Because we leave it to the Examiner to determine whether the terminal disclaimer is effective to overcome the double patenting rejection over Application No. 14/706,968, we do not make a determination as to claims 1– 5, 8, 9, 12–16, 18, and 19.