Ex Parte Shepler et al

Patent Trial and Appeal Board

Aug 19, 2016

13052701 (P.T.A.B. Aug. 19, 2016)

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.
13/052,701 03/21/2011 Brian E. Shepler 1004.00010 6947
97510 7590 08/19/2016
The Law Office of James Baudino, PLLC
2313 ROOSEVELT DRIVE
SUITE A
ARLINGTON, TX 76016
EXAMINER
KORSAK, OLEG
ART UNIT PAPER NUMBER
2492
MAIL DATE DELIVERY MODE
08/19/2016 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN E. SHEPLER, CHARLES J. HOLLOWAY, and
NAGARAJ V. RAO1
____________

Appeal 2015-004847
Application 13/052,701
Technology Center 2400
____________

Before ALLEN R. MacDONALD, DANIEL N. FISHMAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.

CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–20. Claims 1, 8, and 15 are independent. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.2

1 According to Appellants, the real party in interest is Webcetera, L.P. See
Appeal Brief 2.
2 Throughout this Opinion, we refer to: (1) Appellants’ Specification filed
Mar. 21, 2011 (Spec.); (2) the Non-Final Office Action (Non-Final Act.)
mailed June 4, 2014; (3) the Appeal Brief (Appeal Br.) filed Nov. 3, 2014;
(4) the Examiner’s Answer (Ans.) mailed Jan. 28, 2015; and (5) the Reply
Brief (Reply Br.) filed Mar. 30, 2015.
Appeal 2015-004847
Application 13/052,701

2
BACKGROUND
According to Appellants, the application relates to a system, method,
and computer program product for access authentication of centrally stored
content. Spec. 1. Claim 1 is illustrative and is reproduced below with
disputed limitations emphasized:
1. A method comprising:
responsive to receiving an access request from a user for
a secure resource in a first access session, logging an Internet
Protocol (IP) address of the access request and transmitting a
uniform resource locator (URL) to the user via an electronic mail
message;
responsive to receiving a request for the URL in a second
access session, logging an IP address corresponding to the URL
request;
comparing the IP address logged from the first access
session with the IP address logged from the second access
session; and
responsive to verifying that the IP address corresponding
to the first access session matches the IP address of the second
access session, providing access to the secure resource.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Serbinis et al.
(“Serbinis”)
US 6,314,425 B1 Nov. 6, 2001
Michael McLaughlin, Database-Based Authentication for PHP Apps,
Part 1, Oracle Technology Network,
http://www.oracle.com/techne\\A.ork/articles/dsl/mclaug hi i n-phpid 1-
091467.html, (2007) (“McLaughlin”).
Appeal 2015-004847
Application 13/052,701

3
REJECTION
Claims 1–20 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Serbinis and McLaughlin. Non-Final Act. 3.
Our review in this appeal is limited only to the above rejection and
issues raised by Appellants. We have not considered other possible issues
that have not been raised by Appellants and which are, therefore, not before
us. See 37 C.F.R. § 41.37(c)(1)(iv) (2013).

ISSUE
Did the Examiner err in finding that Serbinis teaches or suggests
“responsive to receiving an access request from a user for a secure resource
in a first access session, logging an Internet Protocol (IP) address of the
access request and transmitting a uniform resource locator (URL) to the user
via an electronic mail message; responsive to receiving a request for the
URL in a second access session, logging an IP address corresponding to the
URL request,” as recited in claim 1?

DISCUSSION
The Examiner relies upon Serbinis’ description of a user registering
with and obtaining authorization to retrieve a document from Document
Management Services (“DMS”) System 17 to suggest “responsive to
receiving a request for the URL in a second access session, logging an IP
address corresponding to the URL request,” as recited in claim 1. Non-Final
Act. 3. More specifically, the Examiner relies upon Serbinis’ registrant
using a web browser to access the DMS system’s registration interface
URL. Id. (citing Serbinis col. 18, ll. 3–6).
Appeal 2015-004847
Application 13/052,701

4
In response, Appellants argue that “Serbinis does not disclose logging
an IP address corresponding to a second access session to access a URL
purportedly emailed to the user.” Appeal Br. 7.
We agree with Appellants’ contention that the Examiner fails to
demonstrate that Serbinis suggests receiving a request for a URL
transmitted to the user via an electronic mail message and logging an IP
address corresponding to the URL request, responsive to receiving the
request. Instead, the portion of Serbinis relied upon in the rejection simply
describes the registrant accessing the DMS system registration interface
using a web browser to access the DMS system’s registration interface
URL. Serbinis col. 18, ll. 3–6. That is, the cited portion of Serbinis
provides no suggestion that the URL requested by the registrant using the
browser was transmitted to the registrant via electronic mail.
The background of Serbinis does describe the Smith patent disclosing
“an Internet electronic document delivery system wherein an e-mail
message includes a URL reference to a document stored in a server.”
Serbinis col. 2, ll. 2–4 (describing U.S. Patent No. 5,790,793 to Smith).
Nevertheless, the Examiner does not explain how Serbinis specifically
teaches logging an IP address corresponding to a URL request made using a
URL transmitted to the user via an electronic mail message.
We, therefore, agree that the Examiner fails to demonstrate that
Serbinis suggests all of the disputed limitations. Because we agree with at
least one of the dispositive arguments advanced by Appellants, we need not
reach the merits of Appellants’ other contentions.
Accordingly, we cannot sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claim 1.
Appeal 2015-004847
Application 13/052,701

5
We also cannot sustain the rejection of independent claims 8 and 15,
which each recite commensurate limitations, and of dependent claims 2–7,
7–14, and 16–20, which stand with their respective independent claims.

DECISION
We reverse the Examiner’s decision rejecting claims 1–20 under
35 U.S.C. § 103(a).

REVERSED