Ex Parte Kirsch

Board of Patent Appeals and Interferences

Nov 17, 2011

09970772 (B.P.A.I. Nov. 17, 2011)

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.
09/970,772 10/04/2001 Steven T. Kirsch 0260263R1 1959
63649 7590 11/17/2011
DISNEY ENTERPRISES
C/O FARJAMI & FARJAMI LLP
26522 LA ALAMEDA AVENUE, SUITE 360
MISSION VIEJO, CA 92691
EXAMINER
FADOK, MARK A
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
11/17/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN T. KIRSCH
___________

Appeal 2011-011736
Application 09/970,772
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-011736
Application 09/970,772

2
STATEMENT OF THE CASE
Steven T. Kirsch (Appellant) seeks our review under 35 U.S.C. § 134
(2002) of the final rejection of claims 1-22, 90-119, 123-130, 132-143, and
145-146. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
This invention is “a system and method of conveniently and
efficiently performing advertising responsive secure commercial purchase
transactions over the Internet utilizing the World Wide Web.” Kirsch, col.
1, ll. 26-29. Claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. A method for use by a merchant server for performing a
purchase transaction between a client browser and said
merchant server over a general purpose computer network, the
method comprising:
establishing a client-side stored cookie including a
persistent predetermined coded identifier on a client browser
corresponding to an account record stored by said merchant
server;
providing for the serving of a Web page including a
predetermined URL identifying a purchasable product or
service to said client browser, said predetermined URL
including a reference to said persistent predetermined coded
identifier;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed May 10, 2011) and Reply Brief (“Reply Br.,” filed Jul. 18, 2011),
and the Examiner’s Answer (“Answer,” mailed Jun. 17, 2011).
Appeal 2011-011736
Application 09/970,772
3
receiving an HTTP message having said predetermined
URL by said merchant server;
receiving said persistent predetermined coded identifier
as part of said HTTP message by said merchant server, said
persistent predetermined coded identifier corresponding to and
passed with said predetermined URL, said persistent
predetermined coded identifier not being located within said
URL, and said persistent predetermined coded identifier
identifying said account record;
validating said predetermined coded identifier against
said account record; and
recording the identity of said purchasable product or
service as derived from said predetermined URL by said
merchant server.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Levergood
Blumer
Wiecha
Bernard
Tarr
Kirsch2
Katz
US 5,7808,780
US 5,732,219
US 5,870,717
US 5,918,213
US 5,935,004
US 5,963,915
US 2003/0068022 A1
Jan. 13, 1998
Mar. 24, 1998
Feb. 9, 1999
Jun. 29, 1999
Aug. 10, 1999
Oct. 5, 1999
Apr. 10, 2003
Posting of Vaughn Clarkson to Google Groups,
http://groups.google.com/group/fj.mail-lists.x-windowlbr. .. 076697857
d34c1c/ade2flc39c5330c3 ?q=magic+cookie+password (June 25, 1992, 4:38
GMT). [Hereinafter, Google Groups 1.]
Posting of Marianne Mueller to Google Groups,
http://groups.google.com/group/comp.lang.java/browse_th ...

2 The Kirsch reference is the present application on appeal and is referred to
as Admitted Prior Art or APA in the Answer (see Answer 5), Appeal Brief,
and Reply Brief.
Appeal 2011-011736
Application 09/970,772
4
dd2cfc868dcfc3el7 dOb3514d9acc38 ?q=magic+cookie+password (Nov. 12,
1995, 4:00 AM). [Hereinafter, Google Groups 2.]

The following rejections are before us for review:
1. Claims 1-8, 10-13, and 16 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Levergood, Kirsch, and Blumer.
2. Claims 90-93, 95-100, 102-119, 123-125, and 136-138 are
rejected under 35 U.S.C. §103(a) as being unpatentable over Levergood,
Kirsch, Blumer, and Bernard.
3. Claims 9 and 14 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Levergood, Kirsch, Blumer, Bernard, and Katz.
4. Claim 15 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Levergood, Kirsch, Blumer, Bernard, Katz, and Wiecha.
5. Claims 17-22, 94, 101, 114, 126-130, 132-134, and 139 are
rejected under 35 U.S.C. §103(a) as being unpatentable over Levergood,
Kirsch, Blumer, Bernard, and established case law.
6. Claim 135 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Levergood, Kirsch, Bernard, and Tarr.
7. Claims 140-143, 145, and 146 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Levergood, Kirsch, Blumer, Bernard,
established case law, and Google Group 1 and Google Group 2.

ISSUE
The issue is whether claims 1-8, 10-13, and 16 are unpatentable under
35 U.S.C. §103(a) over Levergood, Kirsch, and Blumer. Specifically, the
major issues are whether Levergood teaches away from the Examiner’s
proposed combination of Levergood, Kirsch, and Blumer.
Appeal 2011-011736
Application 09/970,772
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FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) 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).
1. Levergood states: “In another embodiment, a server access control
may be maintained by programming the client browser to store an
SID or a similar tag for use in each URL call to that particular
server. This embodiment, however, requires a special browser
which can handle such communications and is generally not
suitable for the standard browser format common to the Web.”
Col. 4, ll. 25-31.
2. Kirsch states: “A facility known as a persistent client-side cookies
has been introduced to provide a way for server systems to store
selected information on client systems. . . . Part of the server
response is a cookie consisting of a particularly formatted string of
text including, a cookie identifier, a cookie path, a server domain
name and optionally, an expiration date, and a secure marker. . . .
Cookies with matching paths and domain names are passed with
the client URL request to the server system.” Col. 3, ll. 13-28.

ANALYSIS
The rejection of claims 1-8, 10-13, and 16 under 35 U.S.C. § 103(a) as
being unpatentable over Levergood, Kirsch, and Blumer

The Appellant argues claims 1-8, 10-13, and 16 as a group. App.
Br. 15-23. We select claim 1 as the representative claim for this group, and
Appeal 2011-011736
Application 09/970,772
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the remaining claims 2-8, 10-13, and 16 stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(vii) (2010).
To traverse the rejection of claim 1, the Appellant argues that: 1)
Levergood teaches away from the Examiner’s proposed combination of
Levergood and Blumer (App. Br. 15-20 and Reply Br. 1-4); 2) that
Levergood teaches way from the Examiner’s proposed combination with
Kirsch (Reply Br. 4-5); and 3) that none of Levergood, Kirsch, or Blumer
contain a teaching or suggestion of the Examiner’s proposed combination
(App. Br. 20-23).
First, we turn to the Appellant’s argument that Levergood teaches
away from the Examiner’s proposed combination of Levergood and Blumer
(App. Br. 15-20 and Reply Br. 1-4).
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference's disclosure is unlikely to be
productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007) (explaining that when the prior art
teaches away from a combination, that combination is more likely to be
nonobvious).
Appellant argues that “Levergood even teaches that by inserting [SID]
inside the URL string, standard client browser would not be able to handle
such communications, and special browsers must be employed to
accommodate such communications.” App. Br. 19-20. However, the
Appeal 2011-011736
Application 09/970,772
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Appellant’s argument mischaracterizes Levergood’s statement in column 4,
lines 24-31. Here, Levergood discusses an embodiment where a client
browser is programmed to store the SID and states that this embodiment
would require a special browser to store the SID. FF 1. We see nothing in
this portion of Levergood that would discourage following the Examiner’s
proposed combination of Levergood and Blumer.
Next, we turn to the Appellant’s argument that Kirsch teaches away
from the Examiner’s proposed combination with Levergood (Reply Br. 4-5).
Again citing column 4, lines 25-31, the Appellant argues that “Levergood
clearly warns one skilled in the art that storing of the SID and reusing it for
another session requires a special browser, and one of ordinary skill in the
art would be discouraged from taking this path, since typical web users use
standard browsers.” Reply Br. 3.
However, the Appellant’s argument does not take into account the
teachings of all of the references. While column 4, lines 25-31 of Levergood
states that storing an SID on a client browser would require a special
browser (FF 1), Kirsch teaches that “[a] facility known as a persistent client-
side cookies has been introduced to provide a way for server systems to store
selected information on client systems” (FF 2). We fail to see how
Levergood’s column 4, lines 42-31 teaches away from the Examiner’s
proposed combination of Levergood with Kirsch. The Examiner uses the
cookies in Kirsch, which have “been introduced to provide a way for server
systems to store selected information on client systems” (FF 2), to solve the
problem of needing a special browser to store information on a client
browser, as mentioned in Levergood.
Finally, we turn to the Appellant’s last argument that none of
Levergood, Kirsch, or Blumer, themselves, contains a teaching, suggestion
Appeal 2011-011736
Application 09/970,772
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or motivation for the Examiner’s proposed combination (App. Br. 20-23).
The Appellant’s position is not in accord with the law on obviousness. “The
motivation need not be found in references sought to be combined, but may
be found in any number of sources, including common knowledge, the prior
art as a whole, or the nature of the problem itself.” Dystar Textlifarben
GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361
(Fed. Cir. 2006) (citation omitted). “[T]here is no requirement that the prior
art contain an express suggestion to combine known elements to achieve the
claimed invention.” Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d
1461, 1472 (Fed. Cir. 1997). Moreover, the Examiner has set forth several
rationales for combining Levergood, Kirsch, and Blumer on pages 6 and 8-9
of the Examiner’s Answer.
As discussed above, we find the Appellant’s argument unpersuasive,
and, accordingly, we sustain the rejection of claims 1-8, 10-13, and 16 as
unpatentable under 35 U.S.C. § 103(a) over Levergood, Kirsch, and Blumer.

The rejection of claims 90-93, 95-100, 102-119, 123-125, and 136-138
under 35 U.S.C. § 103(a) as being unpatentable over Levergood, Kirsch,
Blumer, and Bernard; claims 9 and 14 under 35 U.S.C. §103(a) as being
unpatentable over Levergood, Kirsch, Blumer, Bernard, and Katz; claim 15
under 35 U.S.C. §103(a) as being unpatentable over Levergood, Kirsch,
Blumer, Bernard, Katz, and Wiecha; claims 17-22, 94, 101, 114, 126-130,
132-134, and 139 under 35 U.S.C. §103(a) as being unpatentable over
Levergood, Kirsch, Blumer, Bernard, and established case law

The Appellant argues against the rejections of claims 9, 14, 15, 17-22,
90-119, 123-130, 132-134, and 136-139 for the same reasons used to argue
against the rejection of claim 1. See App. Br. 24-25. Because we found
them unpersuasive as to that rejection, we find them equally unpersuasive as
to error in the rejections of claims 9, 14, 15, 17-22, 90-119, 123-130, 132-
Appeal 2011-011736
Application 09/970,772
9
134, and 136-139. Accordingly, we shall sustain the rejection of claims 90-
93, 95-100, 102-119, 123-125, and 136-138 under 35 U.S.C. §103(a) as
being unpatentable over Levergood, Kirsch, Blumer, and Bernard; claims 9
and 14 under 35 U.S.C. §103(a) as being unpatentable over Levergood,
Kirsch, Blumer, Bernard, and Katz; claim 15 under 35 U.S.C. §103(a) as
being unpatentable over Levergood, Kirsch, Blumer, Bernard, Katz, and
Wiecha; and claims 17-22, 94, 101, 114, 126-130, 132-134, and 139 under
35 U.S.C. §103(a) as being unpatentable over Levergood, Kirsch, Blumer,
Bernard, and established case law.

The rejection of claim 135 under 35 U.S.C. §103(a) as being unpatentable
over Levergood, Kirsch, Bernard, and Tarr and claims 140-143, 145, and
146 under 35 U.S.C. §103(a) as being unpatentable over Levergood, Kirsch,
Blumer, Bernard, established case law, and Google Group 1 and Google
Group 2

While the Appellant lists claims 135, 140-143, 145, and 146 as being
appealed (App. Br. 2), the Appellant makes no arguments directed to the
rejections of these claims under 35 U.S.C. § 130(a) (see App. Br. 15-25) and
does not list these rejections in the grounds in the Grounds of Rejection to be
Reviewed on Appeal section of the Appeal Brief (App. Br. 14). Therefore,
we will sustain the rejection of claim 135 under 35 U.S.C. §103(a) as being
unpatentable over Levergood, Kirsch, Bernard, and Tarr and claims 140-
143, 145, and 146 under 35 U.S.C. §103(a) as being unpatentable over
Levergood, Kirsch, Blumer, Bernard, established case law, and Google
Group 1 and Google Group 2.

Appeal 2011-011736
Application 09/970,772
10
DECISION
The decision of the Examiner to reject claims 1-22, 90-119, 123-130,
132-143, and 145-146 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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