Ex Parte Gannon et al

Patent Trial and Appeal Board

Sep 23, 2016

12649748 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/649,748 12/30/2009 Mark A. Gannon
22917 7590 09/27/2016
MOTOROLA SOLUTIONS, INC.
IP Law Docketing
500 W. Monroe
43rd Floor
Chicago, IL 60661
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.
CML07528 6100
EXAMINER
MADAMBA, GLENFORD J
ART UNIT PAPER NUMBER
2451
NOTIFICATION DATE DELIVERY MODE
09/27/2016 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):
USAdocketing@motorolasolutions.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK A. GANNON, JOSHUA B. HURWITZ, JOHN RICHARD
KANE, DAVID W. KRAVITZ, and DOUGLAS A. KUHLMAN
Appeal2015-007306 1
Application No. 12/649,7482
Technology Center 2400
Before MARC S. HOFF, JAMES R. HUGHES, and LINZY T.
McCARTNEY, Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants' invention is a method for extracting and using
information about an entity who has a presence (i.e., separate identifiers) in
each of several information domains. A stimulus is created in association
1 This appeal is related to Appeal No. 2015-003496, U.S. Application No.
12/649,728.
2 The real party in interest is Motorola Solutions, Inc.
Appeal2015-007306
Application No. 12/649,748
with a first identifier in a first domain. A response to the stimulus is noted in
association with a second identifier in a second domain. Because the
response is known to be associated with the stimulus, the first and second
identifiers are now known to refer to the same entity, and can be bound
together. A cross-domain identifier is produced that can be provided to an
interested party. The entity's confidentiality can be preserved by denying an
interested party the ability to tie a transaction to the entity; in other
embodiments, the cross-domain identifier is constructed so as to provide
only higher-level intelligence. Spec. i-fi-19, 10, Abstract.
Claim 1 is exemplary of the claims on appeal:
1. A method for binding an entity's identifiers in a
multi-domain environment, the method comprising:
providing a first presence identifier in a first domain and
a second presence identifier in a second domain of the entity,
providing a binder server under processor control to bind
together the first and second presence identifiers, at the binder
server having a binding process for:
sending a stimulus in association with the first presence
identifier;
receiving, by the binding process, information associated
with a response to the stimulus, the response associated with the
second presence identifier, the first domain being distinct from
the second domain;
analyzing, by the binding process, the stimulus and the
received response information to associate the first presence
identifier with the second presence identifier;
creating, by the binding process, a cross-domain
identifier that logically binds together the first and second
presence identifiers, the cross-domain identifier providing
access to some non-identity information associated with the
first presence identifier, the cross-domain identifier providing
access to some non-identity information associated with the
second presence identifier; and
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Application No. 12/649,748
providing, by the binding process, the cross-domain
identifier to a process distinct from the binding process.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Gross
Butler et al.
Peeters et al.
Stefik
Izrailevsky et al.
Wilson et al.
Zhang et al.
US 2005/0246391 Al
US 2006/0265495 Al
US 2008/0313035 Al
US 2009/0069911 Al
US 7 ,606,897 B2
US 2009/0293018 Al
US 2010/0198911 Al
Nov. 3, 2005
Nov. 23, 2006
Dec. 18, 2008
Mar. 12, 2009
Oct. 20, 2009
Nov. 26, 2009
Aug. 5, 2010
Claims 1, 3---6, 14, and 17-22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Izrailevsky, Peeters, Zhang, and Butler.
Claims 2, 7, 9-13, 23, and 24 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Izrailevsky, Peeters, Zhang, Butler, and Stefik.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Izrailevsky, Peeters, Zhang, Butler, and Wilson.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Izrailevsky, Peeters, Zhang, Butler, and Gross.
Throughout this decision, we make reference to the Appeal Brief
("App. Br.," filed Dec. 23, 2014) the Examiner's Answer ("Ans.," mailed
May 27, 2015) and the Final Office Action ("Final Act." mailed July 31,
2014 for their respective details.
ISSUE
Appellants' arguments present us with the following issue:
Does the combination of Izrailevsky, Peeters, Zhang, and Butler
disclose or fairly suggest sending a stimulus in association with the first
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Application No. 12/649,748
presence identifier; receiving, by the binding process, information associated
with a response to the stimulus, the response associated with the second
presence identifier, the first domain being distinct from the second domain;
and analyzing, by the binding process, the stimulus and the received
response information to associate the first presence identifier with the
second presence identifier?
ANALYSIS
CLAIMS 1, 3---6, 14, AND 17-22
Independent claim 1 recites, in pertinent part:
sending a stimulus in association with the first presence
identifier; receiving, by the binding process, information
associated with a response to the stimulus, the response
associated with the second presence identifier, the first domain
being distinct from the second domain; analyzing, by the
binding process, the stimulus and the received response
information to associate the first presence identifier with the
second presence identifier.
Independent claim 20 recites nearly identical limitations.
The Examiner finds that Peeters discloses that incentives offered and
accepted by participating users or readers are tracked by advertising server
42, including their redemption, and thus that incentives are associated with a
presence identifier which allows for the tracking of the incentive across
different domains. See Ans. 8-9. This finding is pertinent to the claim
limitation "receiving, by the binding process, information associated with a
response to the stimulus, the response associated with the second presence
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Application No. 12/649,748
identifier, the first domain being distinct from the second domain", as recited
in claim 1 (emphasis added).
The Examiner cites to paragraphs 54--56 of Peeters, which describe an
advertising server associated with a computer lab or print shop, in which
consumers are offered an incentive such as free printer toner or paper in
exchange for agreeing to have advertising merged onto consumer
documents. See Ans. 8. "[T]he advertiser server 42 tracks incentives for
participating readers." Peeters i-f 56. We agree with Appellants that
redemption or acceptance of this incentive is not analyzed to associate two
presence identifiers in different domains. App. Br. 11.
The Examiner's further finding that Peeters discloses a variety of
"redemptions" that include coupons, URLs, hyperlinks, etc. also fails to
correspond to the claim limitation at issue. Ans. 9; Peeters i-f 93. This
section of Peeters describes ways in which advertisers may be charged for
advertising, including payment per "redemption." Peeters i-f 92. We agree
with Appellants that the "redemptions" in Peeters are not related to a second
presence identifier or a user, and there is no correlation or "binding" or two
presence identifiers. See App. Br. 12.
The Examiner then finds that:
Peeters expressly discloses an embodiment wherein 'presence
identifiers' of a user/reader {i.e., 'cookie'} may be associated
with the incentive offered to the user/reader {e.g.,
'credits/points', electronically-generated 'coupon',
'electronic catalog', etc.), and the 'redemption' of which can
be 'tracked' in the same domain or across different domains
using the 'alias' URL Hyperlink/Identifier of the user and/or
the user web 'cookie' expressly disclosed by Peeters.
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Ans. 10. The Examiner relies on Peeters' disclosure of "[t]argeted catalogs
tailored to individual profiles, which can use 'cookies,' Web browsing
history data mining, or voluntarily provided information." Peeters i-f 76; see
also Peeters i-fi-165-75. This section of Peeters teaches that a customized
printed catalog may be assembled for a user based on a user's personal
information. The "cookie" mentioned in this embodiment may fairly
correspond to a first presence identifier in Appellants' claims. We agree
with Appellants, though, that Peeters does not mention any stimulus such as
that claimed, and does not disclose analyzing a response to the catalog (with
or without stimulus), let alone any response associated with a second
presence identifier. App. Br. 12.
We agree with Appellants' conclusion that the Examiner attempts to
rely on different embodiments of Peeters that are not related to each other,
and that while Peeters mentions the concepts of incentives, redemptions, and
cookies, they are not employed in a manner corresponding to Appellants'
stimulus and response method. See App. Br. 12. We find that the
Examiner's combination of Izrailevsky, Peeters, Zhang, and Butler fails to
disclose or suggest all the elements of claims 1, 3---6, 14, and 17-22. We do
not sustain the Examiner's 35 U.S.C. § 103 rejection.
CLAIMS 2, 7, 9-13, 23, AND 24
The Examiner does not cite to disclosure in Stefik that remedies the
deficiencies of Izrailevsky, Peeters, Zhang, and Butler noted supra.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 103 rejection of
claims 2, 7, 9-13, 23, and 24, for the reasons expressed supra with respect to
independent claims 1 and 20.
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CLAIMS
The Examiner does not identify disclosure in Wilson that remedies the
deficiencies of Izrailevsky, Peeters, Zhang, and Butler noted supra.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 103 rejection of
claim 8, for the reasons expressed supra with respect to independent claim 1.
CLAIM 16
The Examiner does not identify disclosure in Gross that remedies the
deficiencies of Izrailevsky, Peeters, Zhang, and Butler noted supra.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 103 rejection of
claim 16, for the reasons expressed supra with respect to independent claim
1.
CONCLUSIONS
The combination of Izrailevsky, Peeters, Zhang, and Butler does not
disclose or fairly suggest sending a stimulus in association with the first
presence identifier; receiving, by the binding process, information associated
with a response to the stimulus, the response associated with the second
presence identifier, the first domain being distinct from the second domain;
and analyzing, by the binding process, the stimulus and the received
response information to associate the first presence identifier with the
second presence identifier.
DECISION
The Examiner's rejection of claims 1-24 is reversed.
REVERSED
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