Ex Parte Barber

Patent Trial and Appeal Board

Feb 5, 2015

12030057 (P.T.A.B. Feb. 5, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TIMOTHY P. BARBER
____________________

Appeal 2012-010238
Application 12/030,057
Technology Center 2400
____________________

Before ELENI MANTIS MERCADER, MICHAEL J. STRAUSS, and
JOHN F. HORVATH, Administrative Patent Judges.

HORVATH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-010238
Application 12/030,057

2
STATEMENT OF THE CASE
Appellant seeks review of the Examiner’s rejection of claims 32–67
under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

SUMMARY OF THE INVENTION
The invention is directed to identity detection techniques and a
process for collecting and utilizing machine-identifying data of computers
used in online transactions. Spec. ¶ 2.
Claim 32, reproduced below, is illustrative of the claimed subject
matter:
32. A method for online fraud detection, the method
comprising:
receiving one or more communications from a user
device, the communications related to an online transaction;
determining device identification information from one
or more of the received communications, wherein the device
identification information identifies the user device;
storing the device identification information in
association with the online transaction; and
monitoring for possible fraudulent transactions, wherein
the monitoring is based at least in part on comparing the stored
device identification information for the online transaction with
information about one or more other online transactions.

PRIOR ART
Yacobi
Mi
Lee
US 5,872,844
US 6,418,472 B1
US 7,263,506 B2
Feb. 16, 1999
July 9, 2002
Aug. 28, 2007
Appeal 2012-010238
Application 12/030,057

3
REJECTIONS
Claims 32, 36, 40–47, 55–62, and 65–67 stand rejected under
35 U.S.C § 103(a) as unpatentable over Lee and Yacobi. Ans. 4.
Claims 33–35, 37–39, 48–54, 63, and 64 stand rejected under
35 U.S.C § 103(a) as unpatentable over Lee, Yacobi, and Mi. Ans. 8.

ISSUES AND ANALYSIS
I. Whether an IP address constitutes device identification
information that identifies a user device as recited in claim 32.

The Examiner finds “[i]t is well-known in the art that an IP address is
an address related to a particular device and therefore qualifies as ‘device
identification information.’” Ans. 11. For example, the Examiner finds Lee
teaches “a profile based on IP address will capture transactions from a
specific computer.” Id. (citing Lee 10:7–9). Appellant argues the Examiner
erred in equating an IP address with “device identification information [that]
identifies the user device” as recited in claim 32. App. Br. 4.
We are not persuaded by Appellant’s argument. Our reviewing Court
has stated that the specification is always highly relevant to the claim
construction analysis. Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed.
Cir. 2005). “Usually, it is dispositive; it is the single best guide to the
meaning of a disputed term.” Id. In other words, Appellants’ own
Specification is the best guide to understanding the meaning of disputed
claim terms, and is often dispositive. Turning to Appellant’s Specification,
Appellant has not identified, nor do we find, an explicit definition for the
term “device identification information.” We do, however, find the
Specification teaches that “[b]asic machine identity is essential to the
Appeal 2012-010238
Application 12/030,057

4
manner in which the internet operates,” and that to receive a web page from
a web server, a requesting computer must include “return ‘directions’ in the
form of the basic identity of the requesting computer, including its IP
address.” Spec. ¶ 4 (emphasis added). The Specification also discloses a
process for collecting a customer’s transaction data in which “[a] merchant
system captures customer computer data . . . such as an IP address of the
customer computer and an HTTP header.” Id. ¶ 11 (emphasis added). Thus,
consistent with Appellant’s Specification the Examiner interpreted “device
identification information” to include a device’s IP address. We agree with
the Examiner’s interpretation, and accordingly sustain the Examiner’s
rejection of claim 32.
Appellant does not separately argue for the patentability of claims 36,
40–47, 55–62, and 65–67. We therefore sustain the Examiner’s rejection of
these claims for the same reason as claim 32.

II. Whether it would have been obvious to combine Mi’s
verification agent with Lee and Yacobi’s fraud detection
system.

Appellant argues “the examiner has failed to provide any explanation
for why it would have been obvious” to incorporate Mi’s verification agent
into Lee and Yacobi’s fraud detection system. App. Br. 8–9. Appellant
contends the combination would not have been obvious because “Lee simply
uses the buyer’s email address and/or IP address” to detect fraud, both of
which are provided by the customer, so there would be no need to send Mi’s
verification agent to a customer’s device to obtain information about the
device. App. Br. 9–10.
Appeal 2012-010238
Application 12/030,057

5
We are not persuaded by Appellant’s argument. The Examiner finds,
and we agree, the combination of Lee, Yacobi and Mi would have been
obvious because “retrieving device information from a client’s device for
verification and monitoring of online transactions that occur using the device
. . . is a well-known technique . . . for keeping track of the online activities
and operational status related to a device.” Ans. 8.
Lee and Mi teach different techniques to detect and prevent online
fraud that were well-known to persons of ordinary skill in the art at the time
of Appellant’s invention. When a claim “‘simply arranges old elements with
each performing the same function it had been known to perform’ and yields
no more than one would expect from such arrangement, the combination is
obvious.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
As to Appellant’s argument that Lee would not look to incorporate Mi
because Lee “simply uses the buyer’s email address and/or IP address,” we
are not persuaded. App. Br. 9.
Mi teaches obtaining “device attributes and information by accessing
and receiving the information from a processor on the client’s device,” and
using these to prevent fraudulent access to online objects. Ans. 8 (citing Mi
2:5–25). A person of ordinary skill in the art would have been motivated to
combine Mi’s use of remotely retrieved device attributes as fraud detection
keys with Lee and Yi’s multi-key based fraud detection system in order to,
as the Examiner found, “improve[] upon the teachings offered by the
collective inventions of the cited prior arts.” Ans. 11–12 (e.g., by comparing
an IP address Mi obtained from a user device’s TCP/IP protocol stack (a
Appeal 2012-010238
Application 12/030,057

6
remote device attribute) with an IP address Lee obtained from a transaction
packet received from the user).
In view of the above, we sustain the Examiner’s rejection of claim 33.
Appellant does not separately argue for the patentability of claims 34, 35,
37–39, 48–54, 63, and 64. We therefore sustain the Examiner’s rejection of
these claims for the same reason as claim 33.

DECISION
For the reasons indicated above, the Examiner’s rejection of claims
32–67 is affirmed.
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

msc