Ex Parte Daniels et al

Patent Trial and Appeal Board

May 25, 2016

13425274 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/425,274 03/20/2012
46320 7590 05/27/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Fonda J. Daniels
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RSW920050132US2
(214DIV)
6361
EXAMINER
LASTRA, DANIEL
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FONDA J. DANIELS, POOJA KOHLI, PAUL F. MCMAHAN,
and ROBERT T. UTHE
Appeal2014-004609
Application 13/425,274
Technology Center 3600
Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
LEE L. STEPINA, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Fonda J. Daniels et al. ("Appellants") 1 appeal under 35 U.S.C. § 134
from the Examiner's final decision rejecting claims 1-7 and 9-15 in this
application. The Board has jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 The Appeal Brief identifies International Business Machines Corporation
as the real party in interest. Br. 2.
Appeal2014-004609
Application 13/425,274
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal, and it recites:
1. A pay-per-click data processing system comprising:
a pay-per-click engine configured for coupling to a host
site and a marketed site; and,
a link randomizer comprising link randomization logic
coupled to said pay-per-click engine, said logic comprising
program code enabled to modify a link address for a link
disposed in said host site and referencing said marketed site,
said pay-per-click engine comprising program code
enabled to:
receive a click through for a link in the host site
which references the marketed site;
identify a link address for said link in said click
through;
compare said identified link address to a modified
link address recorded for an actual link address for said
marketed site; and,
quash said click through if said identified link
address is not said modified link address.
Br. 12 (Claims App.).
REJECTIONS ON APPEAL
Claims 1-3, 7, 9-11, and 15 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Linden (US 2006/0136294 Al, pub. June 22, 2006) and
Hui Hsu (US 7,673,329 B2, iss. Mar. 2, 2010).
Claims 4---6 and 12-14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Linden, Hui Hsu, and Ginter (US 8, 191, 158 B2, iss.
May 29, 2012).
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Appeal2014-004609
Application 13/425,274
ANALYSIS
A. Unpatentability based on Linden and Hui Hsu
Claim 1
In rejecting claim 1, the Examiner finds Linden fails to disclose the
recited "compar[ing] said identified link address to a modified link address."
Final Act. 3. Appellants argue the Examiner errs in relying on Hui Hsu as
disclosing that subject matter. Br. 4, 7-10. For the following reasons, we
agree with Appellants' argument.
The Examiner pertinently finds the claimed "modified link address"
corresponds to Hui Hsu's disclosure of altering web page addresses "to
make it appear as if the web pages come from the secure server [ 14] rather
than from the web sites [17, 19]." Final Act. 4 (citing Hui Hsu, Abstract,
5:65---6: 17); see Hui Hsu, Fig. 1. In particular, Hui Hsu discloses the use of
encrypted communications between secure server 14 and terminal 16 to
prevent monitoring by proxy server 38. Hui Hsu; Fig. 1; 4: 19-33. In the
method of Hui Hsu, terminal 16 first connects to secure server 14 to
establish secure link 18. Id. at Fig. 1, 5:1-7. Thereafter, terminal 16
accesses other web sites 17, 19 on the Internet 12 by concatenating the URL
addresses of sites 1 7, 19 to the URL address of secure server 14, and
encrypting the concatenated portion so that proxy server 38 can detect only
the URL address of secure server 14. Id. at Fig. 1, 5:65---6:17. Proxy
server 3 8 can detect the number and length of communications between
terminal 16 and secure server 14, but not the content of such
communications. Id. at 10:31-35. The Examiner equates Hui Hsu's
concatenated URL address encryption to the modified link address of
claim 1. Final Act. 4.
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Appeal2014-004609
Application 13/425,274
The Examiner finds communications between terminal 16 and secure
server 14 are "detected (compared)" by proxy server 38. Final Act. 4. The
Examiner also states:
[A ]ll communication from the terminal [ 16] is directed to the
secure server [ 14] and not to other URL or IP addresses
(Examiner interprets this security procedure as exactly analogous
to filtering out fraudulent transmissions from unauthorized
sources by modification of the URL, and performing a
comparison of the modified link address; Examiner interprets
Hui Hsu as repeatedly modifying since there are a plurality of
user[s], see Figure 2, item 56, item (4) encrypt and send, in other
words the URL modifications/encryptions are generated and
compared to determine the authorized user/ click through in this
case)[.]
Id. (emphases added). The Examiner further finds Hui Hsu "must implicitly
compare any detected URL' s in order to perform any function on said
URL ... to use the detected information," and Hui Hsu "must compare"
URLs to determine user security. Id. at 5 (citing Hui Hsu, 3:21-30).
According to the Examiner, "the identification of a URL address can only be
performed if there is a comparison, simply detecting a URL address has no
value in of itself, it must be compared to something to be identifiable." Id.
at 5---6 (citing Hui Hsu, 10:31--45).
The Examiner's finding that Hui Hsu discloses comparing an
identified link address to a modified link address is not supported by a
preponderance of evidence. We agree with Appellants' argument that
Hui Hsu discloses terminal 16 and secure server 14 merely detecting and
forwarding encrypted URL addresses of web sites 17 and 19 (i.e., the alleged
"modified link addresses" of claim 1 ). See Br. 7-10. We find no disclosure
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Appeal2014-004609
Application 13/425,274
in Hui Hsu that either terminal 16 or secure server 14 compares the
encrypted URL addresses of web sites 17 and 19 to some other link address.
As to proxy server 38, it is true that proxy server 38 must compare the
unencrypted portion of communications between terminal 16 and secure
server 14 with the address of server 14 in order to "block" such
communications. See Final Act. 5---6; Hui Hsu, 10:31--45. However, the
Examiner does not explain sufficiently how that process corresponds to
comparing, as claimed, an identified link address in a click though to a
modified link address, as recited in claim 1, or how Hui Hsu' s comparison
would fit into the Linden process in the Examiner's proposed modification.
See Final Act. 5---6.
Thus, the Examiner errs in finding Hui Hsu discloses comparing an
identified link address to a modified link address. As noted above, the Final
Office Action states Linden fails to disclose that subject matter. Final
Act. 3. However, the Answer states "Linden clearly discloses the features of
click verification (comparison)" as part of click verification server 60 in
Figure 3. Ans. 13-14. The Answer further cites claim 1 in Linden as
explicitly "address[ing] the 'comparison' feature" in reciting "said
verification web site [60] comparing said verification data and identifier to
said stored verification data and identifier." Id. at 15 (quoting Linden,
claim 1, lines 24--26).
A preponderance of evidence does not support the Examiner's
finding, newly made in the Answer, that Linden discloses comparing an
identified link address to a modified link address. Rather, Linden's click
verification sever 60 generates a verification ID for each advertisement that
advertiser 64 wants to display to user 52. Linden, Fig. 3, i-f 39. Then, when
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Appeal2014-004609
Application 13/425,274
user 52 clicks on a displayed advertisement, a request 76 is made to click
verification server 60 to send user 52 to advertiser site 64. Id. i-f 45. Click
verification server 60 honors click-through request 76 only if the verification
ID for the click through is valid. Id. i-f 48. Thus, Linden discloses the
comparison of verification IDs, not link addresses.
For the foregoing reasons, the combination of Linden with Hui Hsu
fails to disclose comparing an identified link address to a modified link
address, and we therefore do not sustain the rejection of claim 1 as
unpatentable over Linden and Hui Hsu.
Claims 2, 3, 7, 9-11, and 15
The Examiner's additional consideration of Linden and Hui Hsu in
connection with dependent claims 2, 3, 7, 9-11, and 15 does not cure the
noted deficiencies as to claim 1. Final Act. 3-7. We, therefore, do not
sustain the rejection of these dependent claims as unpatentable over Linden
and Hui Hsu.
B. Unpatentability based on Linden, Hui Hsu, and Ginter
The Examiner's additional consideration of Ginter in connection with
dependent claims 4---6 and 12-14 does not cure the noted deficiencies of
Linden and Hui Hsu as to claim 1. Final Act. 7-8. We, therefore, do not
sustain the rejection of these dependent claims as unpatentable over Linden,
Hui Hsu, and Ginter.
DECISION
The Examiner's decision to reject claims 1-7 and 9-15 is reversed.
REVERSED
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