Ex Parte Etchegoyen

Patent Trial and Appeal Board

Sep 15, 2016

14094637 (P.T.A.B. Sep. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/094,637
96051 7590
Uniloc USA Inc.
Legacy Town Center
7160 Dallas Parkway
Suite 380
Plano, TX 75024
12/02/2013
09/19/2016
FIRST NAMED INVENTOR
Craig S. Etchegoyen
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.
UN-NP-DF-095 9952
EXAMINER
NGUYEN, PHONG H
ART UNIT PAPER NUMBER
2162
NOTIFICATION DATE DELIVERY MODE
09/19/2016 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):
sean. burdick@unilocusa.com
tkiatkulpiboone@unilocusa.com
kris.pangan@unilocusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG S. ETCHEGOYEN
Appeal2015-003717
Application 14/094,637
Technology Center 2100
Before CARLA M. KRIVAK, JON M. JURGOV AN, and
ADAM J. PYONIN, Administrative Patent Judges.
JURGOVAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 2, and 16-18.2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm. 3
1 Appellants identify Uniloc Luxembourg S.A. and Uniloc USA, Inc., as the
real parties in interest. (App. Br. 3.)
2 Claims 3-15 and 19-24 are canceled.
3 Our Decision refers to the Specification filed Dec. 2, 2013 ("Spec."), the
Final Office Action mailed Aug. 15, 2014 ("Final Act."), the Appeal Brief
filed Oct. 13, 2014 ("App. Br.") the Examiner's Answer mailed Dec. 3, 2014
("Ans."), and the Reply Brief filed Feb. 3, 2015 ("Reply Br.").
Appeal2015-003717
Application 14/094,637
CLAHvfED SUBJECT ~vfATTER
The claims are directed to a method of using digital fingerprints to
identify a remotely located device such as a smart phone or computer.
(Spec. Abstract, i-fi-f 12, 29.) Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method for identifying a remotely located device, the
method comprising:
sending characteristic extraction logic to the remotely
located device, wherein the characteristic extraction logic causes
the remotely located device to retrieve characteristics of the
device and at least one characteristic of a user of the device from
a publicly available profile of the user of the device;
receiving a digital fingerprint of the device from the
device, wherein the digital fingerprint includes data representing
the characteristics of the device and at least the characteristic of
the user of the device; and
comparing the digital fingerprint of the device to a
reference digital fingerprint to determine whether the digital
fingerprint of the device and the reference digital fingerprint
identify one and the same device.
(App. Br. 21- Claims App'x.)
REJECTIONS
Claims 1, 2, and 16 stand rejected under 35 U.S.C. § 103(a) based on
Park (US 2006/0274753 Al, Dec. 7, 2006) and Rabinovich (US 8,584,114
B2, Nov. 12, 2013). (Final Act. 3-5.)
Claim 17 stands rejected under 35 U.S.C. § 103(a) based on Park,
Rabinovich, and Dietl (US 2004/0143627 Al, July 22, 2004). (Final Act. 5-
6.)
Claim 18 stands rejected under 35 U.S.C. § 103(a) based on Park,
Rabinovich, Dietl, and Eckersley (Peter Eckersley, How Unique is Your Web
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Browser, Electronic Frontier Foundation, PETS '10 Proceedings of the I01h
International Conference on Privacy Enhancing Technologies, pp. 1-18,
Springer-Verlag Berlin, Heidelberg (2010)). (Final Act. 6-7.)
ANALYSIS
The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art; (3)
the level of skill in the art; and ( 4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). A
claim is unpatentable under 35 U.S.C. § 103(a) if the differences between
the claimed subject matter and the prior art are such that the subject matter,
as a whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) ("KSR").
With this background in mind, we proceed to analysis of Appellant's
arguments and the Examiner's findings and conclusions of obviousness.
Claim 1
A. Retrieving a User Characteristic from a Publicly Available Profile
Appellant notes that claim 1 recites "the characteristic extraction logic
causes the remotely located device to retrieve ... at least one characteristic
of a user of the device from a publicly available profile of the user of the
device." (App. Br. 6.) Appellant argues the Examiner, in determining claim
1 to be obvious, relied on teachings of Rabinovich concerning a user agent,
user agent profile, and user agent URL, and a teaching that, in method step
192, a user repository 142 inside of a data center 40 is consulted to obtain a
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user configuration. (App. Br. 6.) Appellant contends the Examiner failed to
show that the user agent, user agent profile, user agent URL or user
configuration of Rabinovich are retrieved "from a publicly available profile
of the user" as claimed. (App. Br. 7-8, Reply Br. 3-5.) Appellant further
argues Rabinovich's repository is used locally within the data center and is
not taught to be made available outside the data center. (App. Br. 7 citing
Rabinovich 13:30-32.)
We disagree with Appellant's arguments for several reasons.
Rabinovich teaches that a game of a producer is made available for sale to
the public. (Rabinovich 7:5-6.) As the Examiner notes, a mobile telephone
of a consumer transmits a game request to the data center that responds with
a game application customized to the user's device and preferences as
identified by the stored user and device configurations. (Ans. 2-3 citing
Rabinovich 7:23-35, Fig. 1.) The Examiner thus concludes the user
preferences embodied in customizing the game are publicly available to the
mobile telephone outside of the data center. (Id.) We agree with the
Examiner.
Moreover, there are additional teachings in Rabinovich supporting the
claim limitation of publicly available user characteristics. Specifically,
Rabinovich's user repository stores user configurations for groups, and the
personal information of a user groups' configuration is "publicly available"
at least as concerns the individuals within the group. (See Rabinovich
13:30-37.)
Furthermore, there are only two options for the "characterizing
information": it may be public or non-public. Under this circumstance, the
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Supreme Court states that such a feature may be "obvious to try." KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("KSR").
Thus, for all of the foregoing reasons, we are not persuaded the
Examiner errs in this rejection.
B. Argument concerning a digital fingerprint of a device, the digital
fingerprint including data representing a user characteristic
Claim 1 recites "receiving a digital fingerprint of the device from the
device, wherein the digital fingerprint includes data representing ... at least
the characteristic of the user of the device." (See claim 1, supra.) Appellant
argues Park and Rabinovich do not teach or suggest any characteristic of a
user of a device being included in a digital fingerprint or other identifier of
the device. (App. Br. 8-15, Reply Br. 5-7.) We are not persuaded that the
Examiner errs in this rejection.
As the Examiner notes, Rabinovich teaches
[t]he device fingerprinting subsystem 138 identifies at least the
following characteristics of a remote client device: the browser's
user agent; the user agent profile; and the user agent profile URL.
The device fingerprinting subsystem 138 attempts to map these
elements one-by-one to a device configuration stored on the
device database 136.
(Ans. 3 citing Rabinovich 12:25-30.) The Examiner interprets Rabinovich's
"user agent" as encompassed by "a user." (Id.) The Examiner then reasons
that Rabinovich's digital fingerprint of the remote device includes the user
agent profile, and is therefore similar to the claimed fingerprint. We agree
with the Examiner's findings that Rabinovich suggests the claimed feature.
Appellant contends a software user agent is not a human user. (App.
Br. 9-14.) However, as the Examiner notes, the claim does not require a
human user. (Ans. 4.) Moreover, a "user agent" is defined as software that
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is acting on behalf of a user. (https://en.wikipedia.org/wiki/ User_agent last
viewed 9/6/2016.) Thus, we find characteristics of a user agent are also
characteristics of the associated user. Further, Appellant's argument
assumes express disclosure of a feature is required in the obviousness
analysis when the mere suggestion that a user characteristic may be included
in the fingerprint is sufficient to render the claimed feature obvious. "[A]
reference must be considered not only for what it expressly teaches, but also
for what it fairly suggests." In re Bell, 991 F. 2d 781, 785(Fed. Cir. 1993)
quoting In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979).
Furthermore, Rabinovich teaches a device fingerprinting subsystem
138 and a user fingerprinting subsystem 146 in data center 40. (Rabinovich
2:60-65, 10:64--11 :4, 12:25-30, Fig. 5.) The device fingerprint subsystem
138 generates digital fingerprints for devices for comparison with device
configurations stored in device repository 134. (Id.) Similarly, the user
fingerprint subsystem 146 generates digital fingerprints for users for
comparison with user configurations stored in user repository 142. (Id.) As
the Examiner notes, Rabinovich teaches establishing a compilation
configuration including both device and user configurations. (Ans. 3-5
citing Rabinovich 12:25-30, 14:4--22, Fig. 5.) Rabinovich's compilation
configuration, thus, contains characteristics of both the device and user, and
is indistinguishable from the claimed feature. Accordingly, we are not
persuaded of Examiner error.
C. Argument concerning improper combination of Park and Rabinovich
The Examiner stated the following rationale for combining Park and
Rabinovich in the obviousness rejections:
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It would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the method of Park
with the teaching of Rabinovich because it would be convenient
for downloading [a] compiled application [that] includes
customized content to the remote client device [(Rabinovich,
abstract)].
(App. Br. 16 quoting Final Act. 4.) Appellant contends Park and Rabinovich
are not properly combined because the stated rationale is not a motivation to
use characteristics of a user in the process of identifying a device, but rather
is a motivation to separately implement both Park for device identification
and Rabinovich for content customization, which does not, according to
Appellant, result in the claimed invention. (App. Br. 16-19, Reply Br. 7-9.)
Appellant also argues the combination of Park and Rabinovich is not a
simple substitution or a known and obvious solution to a known problem
under KSR. (App. Br. 15-17.)
We do not agree with Appellant's arguments. Instead, we agree with
the Examiner that there were; at the time of Appellant's invention; apparent
reasons to combine Park and Rabinovich. See KSR at 418. ("Often, it will
be necessary for a court [and the Board] to look to interrelated teachings of
multiple patents; the effects of demands known to the design community or
present in the marketplace; and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue.")
Specifically, Park teaches generating a fingerprint from a device
description to identify a device on a network. (Park i-fi-18, 35, 36.)
Rabinovich teaches identifying a device and user according to fingerprints
generated from respective device and user configurations stored in the data
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center. (Rabinovich 7:5--46, 14:4--22.) These device and user
configurations are used to identify and retrieve information from device and
user repositories to customize content such as a game application for
download to a requesting user's device via the Internet. (Id.) Rabinovich
also teaches a compilation management module that constructs a
compilation configuration from the user and device configurations for use in
customizing the game application for both the device and user. (Rabinovich
14:20-22.)
In view of these teachings, we agree with the Examiner a person of
ordinary skill would have seen the benefit of using not just device
fingerprints per Park, but device and user fingerprints per Rabinovich, in
order to customize content such as a game for download to a user device.
This would indeed be more convenient for the user as the downloaded
content is already customized not only for the device, but also for the user.
This would likely also increase the commercial appeal of game applications
for sale, satisfying a market demand. Accordingly, the person of ordinary
skill would have appreciated the benefits that result by combining the
references.
Another basis supporting the combination of Park and Rabinovich is
that their teachings are in the same field and are interrelated. For example,
Park and Rabinovich both teach using digital fingerprints to identify devices
on a network, and the person of ordinary skill in the art, appreciating this
connection between the references, would have been led to combine them.
Thus, we agree there were apparent reasons for the person of ordinary skill
to combine the Park and Rabinovich as done in the Examiner's obviousness
rejection.
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Appellant's contention that the Examiner's stated rationale to combine
Park and Rabinovich is not a motivation to use characteristics of a user in
the process of identifying a device assumes that this feature is recited in the
claim. (See App. Br. 16-17.) However, this feature is not recited in the
claim, as previously explained. A limitation not appearing in a claim cannot
be relied upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982).
Furthermore, we are not persuaded by Appellant's arguments
concerning motivation, simple substitution, and known solution for a known
problem under KSR, for the reasons explained.4 Specifically, the Examiner
demonstrated adequate motivation to combine the references, so we need not
reach the arguments concerning simple substitution and known solution for
known problem.
D. Remaining Claims
Appellant presents the same arguments for the remaining claims,
which are dependent from claim 1. (App. Br. 19-20.) For the reasons stated
with respect to claim 1, we are not persuaded of error in the rejection of the
remaining dependent claims. In re King, 801 F.2d 1324, 1325 (Fed. Cir.
1986); In re Sernaker, 702 F.2d 989, 991 (Fed. Cir. 1983); 37 C.F.R.
§ 41.37(c)(l)(iv).
4 MPEP § 2143 sets forth various rationales that may support a conclusion of
obviousness. We interpret the Examiner's findings to mean that the
Examiner uses the "teaching, suggestion, or motivation" ("TSM") rationale
to support the conclusion of obviousness under 35 U.S.C. § 103(a). Simple
substitution is a different rationale listed in the MPEP. Known solution for a
known problem is not listed as a rationale in the MPEP, although analysis
under some of the rationales set forth in the MPEP does address the problem
to be solved.
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E. Reply Brief Arguments
Appellants argue that the Examiner provided no showing that
Rabinovich's mobile telephone receives and executes "characteristic
extraction logic." (Reply Br. 4--5.) This argument was not raised with
particularity in the Appeal Brief, although Appellant quotes therein the claim
language including this feature. Arguments may not be raised for the first
time in a Reply Brief absent a showing of good cause. (37 C.F.R.
§ 41.41(b )(2).) As no showing of good cause is made, we do not consider
this argument.
Even if we were to consider this argument, we would not find it
persuasive. Rabinovich provides games produced by producers for sale to
the public via the Internet using a publication that is seen by a consumer.
(Rabinovich 7: 5-15.) The consumer transmits a request for a game
optionally with credit card information and characterizing information of the
consumer. (Id.) A person of ordinary skill would have understood that a
web page with fields filled out by the consumer would be used for these
purposes. Such web page is equivalent to Appellant's "characteristic
extraction logic."
Appellant further argues the Examiner's findings are in error because
Rabinovich's game program is derived from a configuration of the device,
and adding customized content to the configuration of the device in a digital
fingerprint of the device would be cumulative. (Reply Br. 7-9; Ans. 5-6.)
We disagree with Appellant's interpretation of the Examiner's findings as
meaning that a device configuration would be added twice to the customized
content. Regardless, this argument does not show error in the Examiner's
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stated motivation for combining the references, which we addressed
previously.
Appellant argues the record does not explain why a user's preferences
would be desirable in a digital fingerprint of a device despite the instability
of the user's preferences. (Reply Br. 8.) This argument does not appear to
have been raised in the Appeal Brief and, thus, we do not consider it absent a
showing of good cause. (37 C.F.R. § 41.41(b)(2).) Nonetheless, we find the
argument unpersuasive because Appellant has presented no evidence that
instability of user's preferences is undesirable for an identifier. Arguments
of counsel cannot take the place of factually supported objective evidence.
In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996); In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974). Furthermore, a person of ordinary skill
would have appreciated that unstable sources of data, for example,
timestamps, were used ubiquitously for identification purposes at the time of
the invention. (See, e.g., US 6,381,629 Bl, April 30, 2002.)
CONCLUSION
An obviousness rejection under§ 103(a) requires that "there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness." KSR at 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (internal quotations omitted)). On this
record, we find the Examiner's reasoning and underpinning adequate to
support the conclusion of obviousness.
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DECISION
We affirm the Examiner's decision to reject claims 1, 2, and 16-18
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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