Ex Parte Sahai et al

Board of Patent Appeals and Interferences

Oct 13, 2006

09614867 (B.P.A.I. Oct. 13, 2006)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SHANKAR SAHAI, and DANIEL DANTE LORENZO
__________

Appeal No. 2006-2506
Application No. 09/614,867
___________

ON BRIEF
___________

Before KRASS, BARRY, and HOMERE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
final rejection of claims 1 through 18, all of which are pending
in this application.
We reverse.

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Invention
Appellants’ invention relates generally to a method, a system
and a computer program product for redirecting a user from a
second website to a first website. The disclosed website
redirection is accomplished through the use of client and server
side programs that share access and management of cookies in
user’s computer. Initially, the second website displays on the
user’s browser a URL that offers a product or a service to the
user. Upon the user activating the URL, a program that underlies
the URL reads a cookie located in the user’s computer to
determine whether the user’s computer already possesses the
offered product or service. If the program determines that the
user’s computer already possesses the offered product or service,
then the user is redirected to the first website. If, however,
the program determines that the user’s computer does not possess
the offered product or service, then the second website offers to
supply said product or service to the user.

Claim 1 is representative of the claimed invention and is
reproduced as follows:
1. A method for redirecting a user from a second Web site
to a first Web site, comprising the steps of:

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(1) providing, by the second Web site, a URL offering a
product or service to the user, said URL specifying a program on
the second Web site;

(2) reading, by said program, a cookie located in the
user’s computer in response to the user activating said URL;

(3) providing a positive determination when an inquiry
by said program, from said cookie as to whether the user already
possesses said product or service is true;

(4) redirecting, by said program, the user to the first
Web site when the determination of step (3) is positive
determination, wherein the first Web site is specified by said
cookie; and

(5) offering, by the second Web site, to supply said
product or service to the user when the determination of step (3)
is negative;

whereby the user who already possesses said product or
service will not receive duplicate offers to supply said product
or service from multiple Web sites.

REFERENCES
The Examiner relies on the following references:
1. Persistent Client State HTTP Cookies- Preliminary
Specification
http://wp.setscape.com/newsref/std/cookie_spec
2. AOL Webmaster.Info-About Cookies
http://webmaster.info.aol.com/aboutcookies

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Rejections At Issue
A. Claims 1 through 18 stand rejected under 35 U.S.C. § 112,
first paragraph as failing to comply with the enablement
requirement.

B. Claim 1 stands rejected under 35 U.S.C. § 112, second
paragraph as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the applicant
regards as the invention.

Rather than reiterate the arguments of Appellants and the
Examiner, the opinion refers to respective details in the Briefs1
and the Examiner’s Answer2. Only those arguments actually made
by Appellants have been considered in this decision. Arguments
that Appellants could have made but chose not to make in the
Briefs have not been taken into consideration. See 37 CFR
41.37(c)(1) (vii)(eff. Sept. 13, 2004).

1 Appellants filed an Appeal Brief on June 6, 2005. Appellants filed a Reply
Brief on Nov. 25, 2005.
2 The Examiner mailed an Examiner’s Answer on Sep. 21, 2005. The Examiner
mailed an office communication on Mar. 27, 2006 stating that the Reply Brief
has been entered and considered.
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OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the Examiner’s
rejections, the arguments in support of the rejections and the
evidence of lack of enablement and indefiniteness relied upon by
the Examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration Appellants’ arguments set
forth in the Briefs along with the Examiner’s rationale in
support of the rejections and arguments in the rebuttal set forth
in the Examiner’s Answer.
After full consideration of the record before us, we do not
agree with the Examiner that claims 1 through 18 are properly
rejected under 35 U.S.C. § 112, first paragraph as failing to
comply with the enablement requirement. We also do not agree
with the Examiner that claim 1 is properly rejected under 35
U.S.C. § 112, second paragraph as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which Appellants regard as the invention. Accordingly, we
reverse the Examiner’s rejections of claims 1 through 18 for the
reasons set forth infra.

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I. Under 35 U.S.C. § 112, First Paragraph, is the Rejection of
Claims 1 through 18 as Failing to Comply with the Enablement
Requirement Proper?

With respect to representative claim 1, Appellants argue
that the Examiner has not properly established a prima facie case
showing that the claims do not comply with the enablement
requirement. Particularly, Appellants argue that the Examiner
has failed to establish a reasonable basis to question whether
Appellants’ disclosure, taken as a whole, is adequately enabling
of the claim limitation whereby a first and second web sites can
share access of cookies in a user’s computer through client and
server side programs.
As a matter of Patent and Trademark Office practice, the
Examiner bears the initial burden of establishing a prima facie
case for showing that the claimed subject matter is not enabled.
A disclosure which contains a teaching of the manner and process
of making the invention, and which contains a scope commensurate
with those used to describe and define the subject matter sought
to be patented must be taken as in compliance with the enabling
requirement of the first paragraph under 35 U.S.C. § 112 unless
there is reason to doubt the objective truth of the statements
contained therein which must be relied on for enabling support.

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Assuming that sufficient reason for such doubt does exist, a
rejection for failure to teach how to make and/or use will be
proper on that basis. Such a rejection can be overcome by
suitable proofs indicating that the teaching contained in the
specification is truly enabling, In re Marzocchi, 439 F.2d, 220,
223, 169 USPQ 367, 369 (CCPA 1971); In re Sichert, 566 F.2d 1154,
1162, 196 USPQ 209, 216 (CCPA 1977).
In this case, the Examiner has taken the position that
Appellants’ specification fails to detail the specific steps that
the second website’s program must take in order to read the
cookie stored in the user’s computer and to determine the content
of the cookie. Further, the Examiner relies on a number of
articles to support the position that “‘[a] cookie can only be
read and modified by an object in the valid domain and path
defined in the cookie when it was created’”. Additionally, the
Examiner presented other references as evidence that the notion
of inter-domain cookie access and the sharing of cookies between
websites are not recommended as such implementations would
jeopardize user’s privacy, and would lead to various security
breaches.

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With the above discussion in mind, we find that the Examiner
has not provided sufficient evidence to show that the claimed
invention is not enabling. Particularly, as rightfully noted by
Appellants, the Examiner’s position is predicated upon the fact
that traditional web browsers do not allow inter-domain cookie
access and the sharing of cookies between the websites. The
evidence of record merely indicates that such sharing of access to
user’s computer by another website, which is not in the creation
path of the cookie is not supported by traditional browsers, and
that such shared access of cookies, if implemented could render the
user’s computer vulnerable to security threats. However, none of
the evidence of record actually shows that the implementation of
inter-domain cookie access and the sharing of cookies between
websites cannot be, in fact, accomplished through the use of client
and server side programs. Further, our review of Appellants’
specification reveals no such lack of details pertaining to the
accomplishment of the claimed inter-domain access of a cookie in
the user’s computer and the redirection of the user from a website
to another. See page 7, lines 8 through 28, page 11, lines 14
through 27 and page 12, lines 1 through 19 of Appellants’
specification. Additionally, in assessing enablement of a claim or
the lack thereof, Office policy requires that the Examiner apply
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the factors set forth in In re Wands, 858 F.2d 731, 737, 8 USPQ2d
1400, 1404 (Fed. Cir. 1998). See also MPEP § 2164.01(a) and
2164.04. We find no such application of the factors in the
Examiner’s rejection. Thus, we agree with Appellants that the
Examiner has not properly established a prima facie case for lack
of enablement. Consequently, we find error in the Examiner’s
stated position, which concludes that claims 1 through 18 do not
comply with the enablement requirement. It is therefore our view,
after consideration of the record before us, that the evidence
relied upon and the level of skill in the particular art would not
have suggested to the ordinarily skilled artisan that the invention
as set forth in claims 1 through 18 is not enabled. Accordingly,
we will reverse the Examiner’s rejection of claims 1 through 18
under 35 U.S.C. § 112, first paragraph.

II. Under 35 U.S.C. § 112, Second Paragraph, is the Rejection of
Claim 1 as being Indefinite for Failing to Particularly Point out
and Distinctly Claim the Subject Matter which Appellants Regard
as the Invention Proper?

With regard to claim 1, Appellants argue that the limitation
of a positive or a negative determination from a cookie
indicating whether or not the user possesses a product or service
is not indefinite.

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Under current Office policy, the Examiner bears the initial
burden of making a prima facie case for indefiniteness under 35
U.S.C. § 112, second paragraph. In doing so, the Examiner must
inquire whether the claims do, in fact, set out and circumscribe
a particular area with a reasonable degree of precision and
particularity. The definiteness of the language in the claims
must be analyzed, not in a vacuum, rather in light of the
teachings of the prior art and of the particular application
disclosure as it would interpreted by one of ordinary skill in
the pertinent art. In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971). The Examiner must thus determine whether
Appellants’ claims, interpreted in light of the disclosure,
reasonably apprise the ordinarily skilled artisan of the
invention.
In this case, the Examiner’s assertion that the terms
“positive” and “negative” are murky is untenable. One of ordinary
skill would readily recognize that the terms in question must be
given their ordinary meaning. In addition, the ordinarily skilled
artisan, having read Appellants’ disclosure, would be readily
apprised that the limitation of a positive determination from a
cookie indicating whether the user possesses a product or service

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means that if the program determines that the cookie on the
user’s computer does already possess the offered product or
service, then the program will automatically redirect the user to
the first web site. Similarly, the ordinarily skilled artisan
would be readily apprised of the fact that the limitation of a
negative determination from a cookie indicating whether the user
possesses a product or service means that if the program
determines that the cookie on the user’s computer does not
already possess the offered product or service, then the program
will ask whether the user wants to sign up for such product or
services. Consequently, we find error in the Examiner’s stated
position, which concludes that claim 1 is indefinite for failing
to particularly point out and distinctly claim the subject
matter, which Appellants regard as the invention. It is
therefore our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to the ordinarily skilled
artisan that the invention as set forth in claims 1 is
indefinite. Accordingly, we will reverse the Examiner’s
rejection of claim 1 under 35 U.S.C. § 112, second paragraph.

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CONCLUSION
In view of the foregoing discussion, we have not sustained
the Examiner’s decision rejecting claims 1 through 18 under 35
U.S.C. § 112, first paragraph. We have also not sustained the
Examiner’s rejection of claim 1 under U.S.C. § 112, second
paragraph. Therefore, we reverse.

REVERSED

ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEAN R. HOMERE )
Administrative Patent Judge )

JRH/kis
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