Ex Parte Gupta et al

Patent Trial and Appeal Board

Dec 19, 2013

11963165 (P.T.A.B. Dec. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ARVIND GUPTA, ASHUTOSH TIWARI,
GOPALAKRISHNAN VENKATRAMAN, DOMINIC CHEUNG,
STACY R. BENNETT, and DOUGLAS B. KOEN
___________

Appeal 2011-012816
Application 11/963,165
Technology Center 3600
____________

Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and
HYUN J. JUNG, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Arvind Gupta et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-16. We have jurisdiction under 35
U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE. 1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for preventing click fraud in a
mobile environment, the method comprising:
receiving a request including request source
information, the request source information
including an internet protocol (IP) address and
hidden information comprising at least one of
cookie data, a mobile identification parameter
provided by a mobile carrier, or a service
provider-generated identifier;
identifying a source of the request from the
request source information as being either web
traffic or mobile traffic;
handling the request as web traffic when the
source of the request is not associated with a
mobile carrier as determined in accordance with

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Feb. 28, 2011) and Reply Brief (“Reply Br.,” filed Aug. 1, 2011),
and the Examiner’s Answer (“Ans.,” mailed Jun. 7, 2011).

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the identifying;
handling the request as mobile traffic when
the source of the request is associated with a
mobile carrier as determined in accordance with
the identifying, wherein handling the request as
mobile traffic comprises:
determining whether the IP address in the
request source information is invalid, wherein
the determining comprises comparing the IP
address with IP addresses in a list; and
flagging the request when the IP address is
invalid; and
sending a response to the request, wherein
the sending comprises:
requesting a result responsive to the
request and the hidden information;
receiving the result, wherein the result
includes a uniform resource locator (URL); and
sending the result to the source of the
request.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Ramer
Granville
Hamoui
US 2007/0061211 A1
US 2007/0192190 A1
US 2008/0059300 A1
Mar. 15, 2007
Aug. 16, 2007
Mar. 6, 2008

The following rejection is before us for review:
Claims 1-16 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Ramer, Hamoui, and Granville.
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ISSUE
The issue is whether the Examiner has established a prima facie
showing that the combination of Ramer, Hamoui, and Granville teaches
claim 1’s steps of:
identifying a source of the request from the
request source information as being either web
traffic or mobile traffic;
handling the request as web traffic when the
source of the request is not associated with a
mobile carrier as determined in accordance with
the identifying;
handling the request as mobile traffic when
the source of the request is associated with a
mobile carrier as determined in accordance with
the identifying.

FINDINGS OF FACT
We find that the findings of fact, which appear in the Analysis below,
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

ANALYSIS
We are persuaded by Appellants’ arguments (App. Br. 5-6; Reply Br.
2-3) that the Examiner errs in rejecting claim 1 under 35 U.S.C. § 103(a) as
being unpatentable over Ramer, Hamoui, and Granville.
The Examiner reasons that the steps at issue are obvious because: 1) a
source request in Hamoui would include a IMEI number of a mobile device
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(i.e., mobile traffic); 2) a source request in Ramer would include an IP
address (i.e., web traffic); and 3) Granville’s internet click fraud system
“would function in both Ramer et al. (211) and Hamoui (300) because they
both ultimately provide internet service to cellular, PDAs, and computer
device over a network.” Ans. 8. We agree with the Appellants (App. Br.
5-6; Reply Br. 2-3) that the Examiner improperly applies hindsight
reconstruction in finding that the combination of the prior art teaches
identifying a source of a request as being either from web traffic or mobile
traffic and then handling the traffic differently based upon the source.
While the prior art establishes that some elements of claim 1 (e.g.,
identifying the source of a request from a mobile phone using an IP address
or an IMEI number (see Hamoui ¶ [0027])) were known, the Examiner
provides no evidence to establish that it was known to use these elements as
required by the steps at issue. The Examiner provides no evidence that it
was known to identify between mobile traffic and web traffic for the purpose
of handling the traffic was known or obvious. To fill this gap in the prima
facie showing, the Examiner resorts to hindsight reconstruction using the
Appellants’ own disclosure.
Rejections based on § 103 must rest on a factual basis with these facts
being interpreted without hindsight reconstruction of the invention from the
prior art. The examiner may not, because of doubt that the invention is
patentable, resort to speculation, unfounded assumption or hindsight
reconstruction to supply deficiencies in the factual basis for the rejection.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968). Our reviewing court has repeatedly cautioned against
employing hindsight by using the appellant's disclosure as a blueprint to
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reconstruct the claimed invention from the isolated teachings of the prior art.
See, e.g., Grain Processing Corp. v. American Maize-Products Co., 840
F.2d 902, 907 (Fed. Cir. 1988).
Therefore, we find that the Examiner fails to establish a prima facie
showing of obviousness.
Independent claims 9 and 10 recite similar limitations and are rejected
similarly (see Ans. 4). Accordingly, the rejection of claims 1-16 under 35
U.S.C. § 103(a) as being unpatentable over Ramer, Hamoui, and Granville is
reversed.

DECISION
The decision of the Examiner to reject claims 1-16 is reversed.

REVERSED

pgc