eBay Inc.

Patent Trials and Appeals Board

Jan 14, 2022

2021000154 (P.T.A.B. Jan. 14, 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. 14/471,953 08/28/2014 Kent Andrew Edmonds P061 (105845.0163) 3758 165655 7590 01/14/2022 Holland & Hart LLP/eBay P.O. Box 11583 Salt Lake City, UT 84147 EXAMINER HASTY, NICHOLAS ART UNIT PAPER NUMBER 2178 NOTIFICATION DATE DELIVERY MODE 01/14/2022 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): eBayPatent@hollandhart.com patentdocket@hollandhart.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KENT ANDREW EDMONDS, JOHN LAGO, and NIKET TRIVEDI _____________ Appeal 2021-000154 Application 14/471,953 Technology Center 2100 ____________ Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1, 3-9, 11-17, 19, and 20. See Final Act. 2. Claims 2, 10, and 18 are canceled. See Appeal Br. 15, 18, 20. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We Affirm. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). According to Appellant, the real party in interest in this appeal is eBay Inc. See Appeal Br. 2. Appeal 2021-000154 Application 14/471,953 2 STATEMENT OF THE CASE2 Introduction Embodiments of Appellant’s claimed subject matter relate to “the technical field of data linking, and, in various embodiments, to systems and methods of providing complimentary content on one or more secondary machines that have been linked to a primary machine.” Spec. ¶ 1. Representative Claim 1 1. A computer-implemented method comprising: receiving, from a first machine, first authentication credentials including a user identifier used to authenticate a user, the first authentication credentials being provided during a first session of use of a website through the first machine; [L1] determining, by one or more processors, whether second authentication credentials received from a second machine match the first authentication credentials, wherein the second machine is different from the first machine, and the second authentication credentials are provided during a second session of use of the website through the second machine; [L2] causing, by one or more processors, a display of a prompt for a linking instruction at the first machine, the prompt being displayed in response to determining that the second authentication credentials matches the first authentication credentials; based on a response to the prompt, sending, by one or more processors, a linking instruction to the second machine to link a display of second content of the website on the second machine to a selection of a portion of first content of the 2 We herein refer to the Final Office Action, mailed August 10, 2018 (“Final Act.”); Appeal Brief, filed February 11, 2019 (“Appeal Br.”); the Examiner’s Answer, mailed August 6, 2020 (“Ans.”); and the Reply Brief (“Reply Br.”), filed October 5, 2020. Appeal 2021-000154 Application 14/471,953 3 website by a first machine, the second content being complementary to the first content; causing, by one or more processors, a display of the first content on the first machine; receiving, by one or more processors, the selection of the portion of the first content displayed on the first machine; and based on the portion of the first content being selected, causing, by one or more processors, of the display of the second content on the second machine based on the linking instruction, wherein the first machine and the second machine are each in communication with each other using a same real-time communication protocol. Appeal Br. 15, Claims App. (disputed claim limitations bracketed, lettered, and emphasized). Prior Art Evidence Relied Upon by the Examiner Name Reference Date Kalman US 8,225,191 B1 July 17, 2012 Kucharz et al. (“Kucharz”) US 2014/0068432 A1 Mar. 6, 2014 Glasgow US 2014/0108482 A1 Apr. 17, 2014 Viles et al. (“Viles”) US 2014/0282650 A1 Sept. 18, 2014 Rejection Claims Rejected 35 U.S.C. § Reference(s)/Basis 1, 3-9, 11-17, 19, 20 103 Viles, Kucharz, Glasgow, Kalman Appeal 2021-000154 Application 14/471,953 4 ISSUES AND ANALYSIS We have considered all of Appellant’s arguments and any evidence presented. We review appealed rejections for reversible error based upon the arguments and evidence Appellant provides for each issue identified by Appellant. See 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). “[A]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of [35 U.S.C.] § 132.” Jung, 637 F.3d at 1363. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are forfeited or waived.3 See, e.g., 37 C.F.R. § 41.37(c)(1)(iv). Throughout this opinion, we give the claim limitations the broadest reasonable interpretation (“BRI”) 3 See In re Google Tech. Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020) (some internal citations omitted): It is well established that “[w]aiver is different from forfeiture.” United States v. Olano, 507 U.S. 725, 733 (1993). “Whereas forfeiture is the failure to make the timely assertion of a right, waiver is the ‘intentional relinquishment or abandonment of a known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464 (1938)) (additional citations omitted). The two scenarios can have different consequences for challenges raised on appeal, id. at 733-34, and for that reason, it is worth attending to which label is the right one in a particular case. Appeal 2021-000154 Application 14/471,953 5 consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We highlight and address specific findings and arguments for emphasis in our analysis below. Claim Grouping Based upon Appellant’s claim grouping (Appeal Br. 13, last paragraph), we decide the appeal of the sole obviousness rejection of claims 1, 3-9, 11-17, 19, and 20 on the basis of representative independent claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner’s Mapping of Limitations L1 and L2 of Claim 1 In the Final Action, the Examiner reads the “determining” limitation L1 of claim 1 on Kalman, at column 5, line 48 through column 6, line 9. See Final Act. 5. The Examiner reads the “causing” limitation L2 of claim 1 on Glasgow, at paragraphs 56-57. See Final Act. 4.4 Appellant’s Rebuttal Regarding Limitations L1 and L2 Regarding limitation L1 of claim 1, Appellant submits that, contrary to the Examiner’s findings, “Kalman is silent with respect to ‘determining . . . whether second authentication credentials received from a second machine [(client device 124)] match[] the first authentication credentials ... [received from a first machine client device 102)],’ as recited by independent claim 1.” Appeal Br. 12 (see Kalman Fig. 1) (emphasis added). 4 See the mapping rule, 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.”). Appeal 2021-000154 Application 14/471,953 6 Appellant also contends: “Merely providing credentials as taught by Kalman does not disclose, teach or even suggest any kind of match between first and second authentication credentials received from first and second machines.” Appeal Br. 12-13. Regarding limitation L2 of claim 1, Appellant contends: neither Viles, Kucharz, nor Glasgow teaches or suggests “causing ... a display of a prompt for a linking instruction at the first machine, the prompt being displayed in response to determining that the second authentication credentials matches the first authentication credentials,” as none of those cited references (Viles, Kucharz, and Glasgow) discuss matching first authentication credentials of a first machine with second authentication credentials of a second machine. Appeal Br. 13 (emphasis added). Appellant’s arguments present the following issues: Issues: Under 35 U.S.C. § 103, did the Examiner err by finding that the combination of Viles, Kucharz, Glasgow, and Kalman teaches or suggests the following disputed limitations L1 and L2 of independent claim 1? [L1] determining, by one or more processors, whether second authentication credentials received from a second machine match the first authentication credentials, wherein the second machine is different from the first machine, and the second authentication credentials are provided during a second session of use of the website through the second machine; [L2] causing, by one or more processors, a display of a prompt for a linking instruction at the first machine, the prompt being displayed in response to determining that the second authentication credentials matches the first authentication credentials; Claim 1 (emphasis added). Appeal 2021-000154 Application 14/471,953 7 The Examiner’s Responses in the Answer The Examiner makes additional findings and clarifications in the Answer. The Examiner finds that in addition to the description found in Kalman, at column 5, line 48 through column 6, line 9 (Final Act. 5), Kalman also teaches, or at least suggests, the disputed L1 “determining” limitation of claim 1, at column 8, line 63 through column 9, line 10. See Ans. 3. Based upon our review of the record, we are not persuaded by Appellant’s arguments, because we find a preponderance of the evidence supports the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness. In particular, we find Kalman’s description of a requirement for the “user to provide the same credentials from the first device” to the synchronization server for use on the second device at least suggests, and thus renders obvious, the disputed L1 “determining” limitation of claim 1. Kalman, col. 9, ll. 9-12. Buttressing the Examiner’s findings, we note that process 300 in Kalman provides the “synchronization data to the second device (block 308),” and “[t]he synchronization data may be provided to the second device either directly or indirectly by the first device, according to various implementations.” Kalman col. 9, ll. 11-14; see also Fig. 3. Moreover, we find the claimed determination of whether the first and second authentication credentials “match” would have merely been a “predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Thus, claiming a determination of whether two authentication credentials match is not an unobvious distinction over the prior art of record. Appeal 2021-000154 Application 14/471,953 8 Turning to limitation L2 of claim 1, the Examiner finds (at Final Action page 4) that Glasgow’s description, at paragraphs 56-57, teaches or at least suggests the disputed “causing” limitation L2: “causing, by one or more processors, a display of a prompt for a linking instruction at the first machine, the prompt being displayed in response to determining that the second authentication credentials match[] the first authentication credentials.” Claim 1 (emphasis added). We are not persuaded by Appellant’s argument that Glasgow does not teach or suggest the disputed “causing” limitation L2 of claim 1. See Appeal Br. 13. Glasgow at paragraph 56 describes prompting a user for a username and password or other credentials. We find Glasgow’s additional description of a notification that is received from first user device 702 (paragraphs 56-57) which causes server 706 to send a secondary process (e.g., embodied by web page 802) to web browser 700 on the second user device 710 teaches, or at least suggests, disputed limitation L2. See Glasgow ¶ 57, Fig. 7 (in which a notification from a first user device 702 that a trigger point has been reached sends, via server 706, the results of a secondary process to the second user device 710). The Examiner findings are further buttressed by Kalman’s description of electronic device 102 providing “synchronization data directly to electronic device 124 over network 106,” and “prompt[ing] a user to identify one or more devices that are to be synchronized with electronic device 102, such as electronic device 124.” Kalman, col. 6, ll. 12-19; Fig. 1. Regarding all rejected claims 1, 3-9, 11-17, 19, and 20, to the extent that the scope of any claims on appeal is being construed broader by the Examiner or the Board than the interpretation imputed by Appellant’s Appeal 2021-000154 Application 14/471,953 9 arguments in the Briefs, we emphasize that, because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). With respect to the obviousness of all claims 1, 3-9, 11-17, 19, and 20 before us on appeal, we additionally emphasize that “the question under 35 USC 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (emphasis added) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). See also MPEP § 2123 (9th ed. Rev. 10.2019, rev. June 2020). Accordingly, on this record, and based upon a preponderance of the evidence, we are not persuaded of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness regarding the rejection of representative independent claim 1. Grouped claims 3-9, 11-17, 19, and 20 are not argued separately, and thus fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Reply Brief In the Reply Brief, Appellant “submits that the new portions of Kalman cited in the Examiner's Answer constitute[] a new ground of rejection, and is improper to be raised on appeal.” Reply Br. 2. To the extent that the Examiner’s reliance upon additional portions of Kalman in the Answer might change the thrust of the rejection and be considered a new ground of rejection, our review of the record indicates that Appellant did not file a petition under 37 C.F.R. § 1.181(a) within two Appeal 2021-000154 Application 14/471,953 10 months from the mailing of the Examiner’s Answer requesting that a ground of rejection set forth in the Answer be designated as a new ground of rejection: 37 CFR 41.40 sets forth the exclusive procedure for an appellant to request review of the primary examiner’s failure to designate a rejection as a new ground of rejection via a petition to the Director under 37 CFR 1.181. The petition requesting designation as a new ground of rejection must be filed within two months from the entry of the examiner’s answer and prior to the filing of any reply brief. This procedure should be used if an appellant feels an answer includes a new ground of rejection that has not been designated as such and wishes to reopen prosecution so that new amendments or evidence may be submitted in response to the rejection. MPEP §1207.03(b) (9th ed. Rev. 10.2019, rev. June 2020). Therefore, on this record, we find Appellant has forfeited any argument that the Examiner’s Answer contains a new ground of rejection, because Appellant did not file a petition under 37 C.F.R. § 1.181(a) within two months from the August 6, 2020 mailing date of the Examiner’s Answer. Instead of a petition, Appellant filed a Reply Brief on October 5, 2020. CONCLUSION Appellant has not shown that the Examiner erred in rejecting claims 1, 3-9, 11-17, 19, and 20 as being obvious under 35 U.S.C. § 103 over the cited combination of references. Appeal 2021-000154 Application 14/471,953 11 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-9, 11-17, 19, 20 103 Viles, Kucharz, Glasgow, Kalman 1, 3-9, 11-17, 19, 20 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)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED