Ex Parte Sobel et al

Board of Patent Appeals and Interferences

Sep 2, 2011

11049478 (B.P.A.I. Sep. 2, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM E. SOBEL and BRUCE MCCORKENDALE
____________

Appeal 2009-012204
Application 11/049,478
Technology Center 2100
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Before GREGORY J. GONSALVES, KALYAN K. DESHPANDE, and
JASON V. MORGAN, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

Opinion dissenting-in-part filed by DESHPANDE, Administrative Patent
Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-3, 5-9, 11-13, 15-19, 21-23, 25-29, and 32-37. (App. Br. 2.)
Claims 4, 10, 14, 20, 24, and 30 have been cancelled. (Id.) Claims 1-3, 5-9,
11-13, 15-19, 21-23, 25-29, and 31-37 are pending. (Id.) We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The Disclosed Invention1
The disclosed invention “…pertains to the field of preventing
phishing scams that plague personal and other computers, and, in particular,
to the deployment of site-associated cues for antiphishing purposes.” (Spec.
¶ [0001].) In one embodiment, the method “…initially stores a list of
network addresses (step 200).” (Spec. ¶ [0018]; FIG. 2.) The method
“…then associates a unique cue with each network address (step 210).” (Id.)
When a user launches a URL, the method “…determines whether the URL
matches one of the network addresses in the list (step 230).” (Id.) Upon
finding a match, the method “…retrieves the cue associated with the
network address (step 240), and deploys the associated cue (step 250).” (Id.)
Upon seeing the cue, a user can then feel confident that “he or she is at the
correct site.” (Spec. ¶ [0018].)
Exemplary claim 1 follows:
1. A method for recognizing legitimate websites, comprising the
steps of:
storing a plurality of network addresses;

1 The ensuing description constitutes findings of fact designated as FF 0.
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associating a unique cue with each of the plurality of network
addresses;
determining whether a user launches a URL; and
when it is determined that the user launches the URL,
determining whether the URL matches one of the plurality of
network addresses; and
when it is determined that the URL matches one of the plurality
of network addresses,
retrieving the unique cue associated with the one of the
plurality of network addresses; and
deploying the associated unique cue.

The Examiner rejected claims1-3, 5-9, 11-13, 15-19, 21-23, 25-29,
and 31-37 as obvious under 35 U.S.C. § 103(a) based on Gasparini (US
2004/0168083 Aug. 26, 2004) and Diedrich (US 2002/0199018 Dec. 26,
2002). (Ans. 4-10.)
ISSUES
Appellants’ responses to the Examiner’s positions present the
following issues:
1. Did the Examiner establish that Gasparini teaches that the cue
associated with each of the plurality of network addresses is unique, as
required by claims 1, 11 and 21?
2. Did the Examiner establish that Gasparini teaches that “the plurality
of cues and the plurality of network addresses are stored on a machine on
which the user launches the URL,” as recited in claim 32 and as similarly
recited in claim 33?
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FINDINGS OF FACT (FF)
Gasparini
1. Gasparini discloses a system and method that “allows a user to
authenticate a web site, a web site to authenticate a user, or both.”
(Abstract.)
2. “In one embodiment, a registration process is performed to identify
customization information for each user to allow the user to perceptively
authenticate the web site as described in more detail below.” (¶ [0024].)
3. “The registration process associates an identifier of the user with the
customization information that will be provided to the user to allow the user
to authenticate the web site as will now be described. In one embodiment,
the user provides or selects the customization information, although in
another embodiment a system administrator performs this function and then
informs the user of the customization information.” (¶ [0024].)
4. “Registration manager 224 also initiates the storage of a signed,
encrypted cookie on the user’s computer system.” (¶ [0036].) “To build and
store the cookie, registration manager 224 provides to cookie builder 230 the
identifier of the user stored in the user’s record in database 224 as described
above. Cookie builder 230 includes the user identifier into the cookie and
may add other status information to the cookie and provides the identifier
and the other information to cookie signer 232, which signed the cookie
using conventional cryptographic techniques….” (¶ [0037].)

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ANALYSIS
Issue 1 - Claims 1-3, 5-9, 11-13, 15-19, 21-23, 25-29, and 34-37
Appellants assert that neither Gasparini nor Diedrich “discloses a
unique cue as in the claimed invention.” (App. Br. 8.) The Examiner found
that paragraphs [0023-24] of Gasparini teach a unique cue. (Ans. 12-13.)
The Examiner also concluded that “[i]t is clear from this citation that the cue
associated with a webpage is meant to be unique, so that the user can
‘perceptively authenticate’ this particular website.” (Ans. 13.)
Contrary to the Examiner’s finding, however, the cited portions of
paragraphs [0023-24] of Gasparini make no mention or teaching of a unique
cue. (FF 2-3.) Moreover, the Examiner provides no explanation for the
conclusion that the cue associated with a webpage is meant to be unique.
(See Ans. 13.) For example, a user can perceptively authenticate a website
with a cue even if the same cue is associated with another website.
Therefore, we will not sustain the Examiner’s rejection of independent
claims 1, 11, and 21, or the rejections of the claims dependent therefrom
(i.e., claims 2-3, 5-9, 12-13, 15-19, 22-23, 25-29, and 34-37.)

Issue 2 - Claims 31-33
Appellants do not appeal the Examiner’s rejection of independent
claim 31. (App. Br. 2.) Accordingly, we will affirm the rejection of claim
31.
Appellants, assert, however, that claim 32 is not obvious because
neither Diedrich nor Gasparini “discloses the plurality of cues and the
plurality of network addresses being stored on a machine on which the user
launches the URL.” (App. Br. 9.) Appellants also assert that claim 33 is not
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obvious because neither Gasparini nor Diedrich “discloses the unique cue
associated with the one of the plurality of network addresses begin retrieved
from a machine on which the user launches the URL.” (App. Br. 10.)
The Examiner reasoned that the limitation of storing cues on the
user’s machine is taught by Gasparini because Gasparini teaches storage of
an encrypted signed cookie on the user’s computer. (Ans. 13.) But this
cookie does not contain any cues or customization information. (FF 4.)
Accordingly, the Examiner has not shown that the cues or customization
information of Gasparini are stored on a user’s computer or retrieved from a
user’s computer, as required by claims 32 and 33.
Therefore, we will not affirm the Examiner’s rejections of claims 32
and 33.

DECISION
We reverse the Examiner’s decision rejecting claims 1-3, 5-9, 11-13,
15-19, 21-23, 25-29, and 32-37. We affirm the Examiner’s decision
rejecting claim 31.

AFFIRMED-IN-PART

dw
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Dissenting Opinion
Deshpande, Administrative Patent Judge
I join the majority in affirming the Examiner’s rejection of claim 31
and reversing the rejection of claims 32-33 under 35 U.S.C. 103(a) as
unpatentable over Gasparini and Diedrich. However, I respectfully dissent
from the majority in reversing of the Examiner’s obviousness rejection of
claims 1-3, 5-9, 11-13, 15-19, 21-23, 25-29, and 34-37. Dependent claims
32-33 are distinguished from the independent claim 1 in that they
additionally require network addresses and a cue to be stored on a client
machine.
The majority finds that Gasparini and Diedrich fail to describe the
limitation “associating a unique cue with each of the plurality of network
addresses” and specifically finds that the cited prior art fails to describe a
“unique cue,” as argued by the Appellants. App. Br. 6-9.
The issue of whether the combination of Gasparini and Diedrich
describes “associating a unique cue with each of the plurality of network
addresses” requires that the scope of this limitation to be constructed. Claim
construction is a legal issue which is reviewed de novo. Cybor Corp. v. FAS
Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998). During examination of a
patent application, pending claims are given their broadest reasonable
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construction consistent with the specification. In re Prater, 415 F.2d 1393,
1404-05 (CCPA 1969); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1369, (Fed. Cir. 2004).
In constructing the scope of “associating a unique cue with each of the
plurality of network addresses,” the Specification is examined for guidance
as to what this limitation encompasses. Although the Specification does not
provide a specific definition for a unique “cue,” the Specification describes
that a “cue” includes audio signals and visual signals and may further consist
of a picture, animation, a sound, a dialog, or a change in the appearance of
the user interface. Specification ¶ 0015. For example, an associated cue for
the user’s bank is a picture of the user’s children. Specification ¶ 0018.
The Specification further describes that a user may use the same cue for all
of the sites on its list or the user may select a specific set of cues for each
site. Specification ¶ 0016.
As such, the limitation “associating a unique cue with each of the
plurality of network addresses” merely compasses a single unique cue and
the unique cue encompasses a picture of specific persons. That is, a cue that
includes a photo of a specific person or persons is considered unique. As
described in the Specification, this single unique cue may be used for all
network addresses. Specification ¶ 0016. The Appellants fail to provide any
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rationale or evidence that illustrates why such a claim construction is
unreasonable or inconsistent with the Specification. As such, the
Appellants’ argument that the claimed invention requires associating
“unique cues with multiple network addresses” (emphasis added) (App. Br.
8) is not persuasive because is it not commensurate with the scope of the
claims.
The Examiner found, and I agree, that Gasparini describes associating
customization information with network addresses that allows a user to
perceptively authenticate a web site. Ans. 11 and Gasparini ¶ 0023. The
registration process associates an identifier of the user with the
customization information to allow the user to authenticate a web site.
Gasparini ¶ 0024. The customized information includes a photo of the user.
Gasparini ¶ 0023.
While the Appellants agree that Gasparini describes a cue, the
Appellants argue that the cue in Gasparini is not unique. Ans. 7-9 and Reply
Br. 2. The Examiner found that Gasparini describes customized information
includes a photo of a user and such customized information is unique. Ans.
11. I agree with the Examiner’s conclusion. As discussed supra, the
Specification describes a unique cue to include a picture of children.
Gasparini’s description of customized information to include a photo of a
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user is unique in the exact same way that the Specification describes a
unique cue to include a photo of a user’s children. The Appellants have
failed to provide any rationale to distinguish the claimed invention from this
description in Gasparini and as such I find their argument to be
unpersuasive.
Because the scope of the claims, when constructed in light of the
specification, is described by the combination of Gasparini and Diedrich, I
respectfully dissent from the majority’s reversal of the Examiner’s rejection
of claims 1-3, 5-9, 11-13, 15-19, 21-23, 25-29, and 34-37 under 35 U.S.C. §
103(a) as unpatentable over Gasparini and Diedrich for failing to describe
the limitation of “associating a unique cue with each of the plurality of
network addresses.”