Ex Parte Boss et al

Patent Trial and Appeal Board

Jan 23, 2014

10942418 (P.T.A.B. Jan. 23, 2014)

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.
10/942,418 09/16/2004 Gregory Jenson Boss AUS920040598US1 1860
87639 7590 01/23/2014
Robert H. Frantz
P.O. Box 23324
Oklahoma City, OK 73123
EXAMINER
KEATON, SHERROD L
ART UNIT PAPER NUMBER
2142
MAIL DATE DELIVERY MODE
01/23/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte GREGORY JENSON BOSS, YEN-FU CHEN,
RICK ALLEN HAMILTON II, and TIMOTHY MOFFETT WATERS
__________

Appeal 2011-004639
Application 10/942,418
Technology Center 2100
__________

Before TONI R. SCHEINER, ERIC GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
computer-implemented method for automatically completing fields in online
forms. The Examiner rejected the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.

1 Appellants identify the Real Party in Interest as International Business
Machines Corporation (see App. Br. 1).
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Statement of the Case
Background
“This invention relates to technologies for managing registered
information for users of online accounts, and especially to technologies for
filling and completing fields in electronic forms” (Spec. 3 ¶ 0001).
The Claims
Claims 21-25, 60, and 62-73 are on appeal. Claim 21 is representative
and reads as follows:
21. A computer-implemented method for automatically
completing fields in online forms, comprising:
disposing in a computer readable storage memory at least
one set of records in a Master File, each record set being associated
with a user and a specific web site, and one or more recorded
registered values associated with form tags;
displaying on a computer display to a user a fillable online
form from a specific web site and having one or more form tags
associated with fillable fields in the form;
responsive to displaying the online form, extracting by a
processor from the Master File any recorded values associated with
the specific web site and the form tags in the displayed form from
the Master File, or responsive to failing to extract a recorded value
associated with the specific web site and with form tags in the
displayed form;
generating by a processor a new form input value by
appending or pre-pending a previously recorded user challenge
question answer string value to at least one additional previously-
recorded value, and providing the user a visual prompt for the
generated value, wherein the generated value is a reasonable
logical value suitable for memorization by the user;
providing by a processor to the user on a computer display a
visual prompt for the extracted recorded values or the generated
value; and
responsive to user selection of one or more of the values in
the visual prompt, automatically entering by a processor the
selected values into one or more fields of the displayed form.
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The Issues
A. The Examiner rejected claims 21-23, 60, 62-64, 67-70, and 73 under
35 U.S.C. § 103(a) as obvious over Snapper,2 Fung,3 Gennaro,4 and Murase5
(Ans. 4-8).
B. The Examiner rejected claims 24, 25, 65, 66, 71, and 72 under
35 U.S.C. § 103(a) as obvious over Snapper, Fung, Gennaro, Murase, and
Johnson6 (Ans. 8-10).
Because both rejections turn on the same issues, and in particular the
issue of whether Gennaro and Murase may be combined with Snapper and
Fung to render the claims obvious, we will consider these rejections
together.
The Examiner finds that Snapper teaches the “disposing,”
“displaying,” and “responsive” steps of claim 21 (Ans. 5). The Examiner
relies upon Fung for the use of specific web sites and generating alternative
values required by claim 21. The Examiner finds it obvious over Snapper
and Fung to “associate specific web sites to provide improved user
management and provide the alternate values for efficiency and security this
allows user to know which values are available and keeps duplicate values
from being used” (Ans. 5-6).
The Examiner relies upon Murase to teach appending previous values
(Ans. 6) while relying upon Gennaro to disclose “generating a value using
user challenge question answer string in combination” (Ans. 6). The

2 Snapper et al., US 7,216,292 B1, issued May 8, 2007.
3 Fung et al., US 2005/0131815 A1, published Jun. 16, 2005.
4 Gennaro et al., US 6,317,834 B1, issued Nov. 13, 2001.
5 Murase et al., US 2003/0179913 A1, published Sept. 25, 2003.
6 Johnson et al., US 2002/0052792 A1, published May 2, 2002. 
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Examiner finds it obvious to “use the values for appending in combination
with Murase to a desired value in the modified Snapper as taught by
Gennaro. One would have been motivated to combine with the challenge
question to provide improved possibility of unused values and improved
security” (Ans. 6).
The issue with respect to both rejections is: Does the evidence of
record support the Examiner’s conclusion that Snapper, Fung, Gennaro, and
Murase render claim 21 obvious?
Findings of Fact
1. Snapper teaches
[S]oftware in a web browser associates field names across
different Universal Resource Locators (URLs), so that when
a user enters a value into a field (e.g., username) at a first
web site, that same value can be automatically suggested
when the user displays a different form on a different web
site that uses the same field name. The more web sites that
are visited by the user, the more the software learns field
values and is able to suggest likely choices for field values.
For security reasons, field values are preferably not stored in
the application program or on the target web site, but are
instead stored locally on the client computer or at a trusted
web site known to the browser.

(Snapper, col. 3, ll. 42-53.)
2. Snapper teaches that
[A]ssuming that the user has displayed form 205 on client
computer 204 containing a field identified as “name,” the
user begins by typing “J” to start his name, Joe Smith.
Immediately after the letter “J” is received in the form field,
web browser 206 displays pop-down list 205b suggesting
previously used values for fields having the same or a
similar name. The user can move an up/down arrow key or
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mouse to select from the various choices, and can press a
key such as the return key to consummate the selection.

(Snapper, col. 7, ll. 27-35.) 
3. Snapper teaches that
[M]odified web browser 206 stores in data area 207 a record
of the value used, the field identifier, and the URL of the
web site on which it was entered. Consequently, when the
user again displays a form with the field identified as
“name,” modified web browser 206 recognizes the matching
field identifier from previously visited web sites and
suggests to the user the previously used values.

(Snapper, col. 7, ll. 45-51.)
4. Snapper teaches that “field matching function 206a searches
through data store 207 when a field is selected to locate matching (identical
or closely related) field identifiers, corresponding URLs, and previously
used field values” (Snapper, col. 7, ll. 60-64).
5. Fung teaches that a user joins a “central Web site, for example,
by: (1) filling out a membership or registration form and (2) picking a user
name and password for the central Web site location. The central Web site
suggests available user names should a requested user name prove to have
been taken” (Fung 2 ¶ 0041).
6. Murase teaches that
[I]t is determined whether or not a user ID which matches
the generated user ID is already stored in the signature
dictionary information unit 18 in step S305-3. If a duplicate
user ID exists, a subnumber is added to the generated user
ID, and the operation (step S305-5), namely, the process of
step S305 of FIG. 4A is terminated. The flow then proceeds
to step S306. Then, the user ID is corresponded to the input
kanji character signature 27“ ”, and registered to
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the signature dictionary information unit 18 as signature data
for registration.

(Murase 7 ¶ 0095.)
7. Gennaro’s Figure 10a is reproduced below:

FIG. 10a depicts “process steps associated with enrollment and
authorization” (Gennaro, col. 4, ll. 26-27). 
8. Gennaro teaches that
Each member of the challenge list is an index to one of the
challenge questions posed to the user at block 1100. The
challenge list is both stored in unencrypted form as part of
the biometric record at block 1200, and further supplied to
block 1180 to select answers those challenge answers from
block 1260 whose index corresponds to the elements of the
challenge list. For example, if the user answered ten
challenge questions, and assuming that the random number
generator generated m=3 values {3,5,6}, then challenge
answers {3,5,6} would be combined at block 1180.

(Gennaro, col. 12, ll. 36-46.)
Appeal 2011-004639
Application 10/942,418

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Principles of Law
“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”’ KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Analysis
Appellants contend that “the proposed modification - substituting
Genarro’s [sic Gennaro’s] XOR operation with an append operation - would
render Genarro [sic] unsuitable for creating a cryptographic key, as is clearly
is indicated by the extrinsic evidence provided by Appellant in response to
the fourth Office Action” (App. Br. 11). Appellants contend that “a
cryptographic key is not the same thing as a password, and they are not
suitable for interchangeable use” (App. Br. 11).
The Examiner finds that
[W]hen Murase discloses that it combines values but does
not explicitly say that values include challenge questions
answers, Gennaro provides values which are combined for
access purposes and those values include challenge question
answers. As a result the functionality of collecting a
challenge question answer would now be provided in
Murase

(Ans. 11).
We find that Appellants have the better position because it is not
sufficient to simply identify separate teachings of claimed elements. The
Examiner has provided no reason or explanation as to why the person of
ordinary skill would append an answer to a challenge question as in Gennaro
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to a user ID as in Murase and incorporate the combined elements into the
web browser software of Snapper. The Examiner does not rely upon any of
the seven rationales supporting obviousness found in MPEP § 2141 (III),
which find legal basis in the KSR Supreme Court decision.
As the Federal Circuit has explained, “[c]are must be taken to avoid
hindsight reconstruction by using ‘the patent in suit as a guide through the
maze of prior art references, combining the right references in the right way
so as to achieve the result of the claims in suit.”’ In re NTP, Inc., 654 F.3d
1279, 1299 (Fed. Cir. 2011) (quoting Grain Processing Corp. v. Am.-Maize
Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988)). Accordingly, we find the
record does not support the Examiner’s finding that a person of ordinary
skill in the art would have had a reason to combine Murase and Gennaro in
combination with Snapper and Fung. Therefore, we agree with Appellants
that the Examiner has not shown that the claims would have been obvious in
view of those references.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Snapper, Fung, Gennaro, and Murase render claim 21 obvious.
SUMMARY
In summary, we reverse the rejection of claims 21-23, 60, 62-64, 67-
70, and 73 under 35 U.S.C. § 103(a) as obvious over Snapper, Fung,
Gennaro, and Murase.
Appeal 2011-004639
Application 10/942,418

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We reverse the rejection of claims 24, 25, 65, 66, 71, and 72 under
35 U.S.C. § 103(a) as obvious over Snapper, Fung, Gennaro, Murase, and
Johnson.

REVERSED

cdc