HICKS, Kimberly et al.

Patent Trials and Appeals Board

Jun 19, 2020

14149367 - (D) (P.T.A.B. Jun. 19, 2020)

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.
14/149,367 01/07/2014 Kimberly HICKS 40205/05201(MTV-052) 5515
30636 7590 06/19/2020
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
ALATA, YASSIN
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
06/19/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mmarcin@fkmiplaw.com
okaplun@fkmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIMBERLY HICKS and DIANA GERMAN
Appeal 2019-000452
Application 14/149,367
Technology Center 2400
Before ROBERT E. NAPPI, ERIC S. FRAHM, and JASON M. REPKO,
Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to applicant as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Viacom
International Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The application generally relates to authenticating a user to access
multimedia content. See Spec. ¶ 3.
Claims 1, 9, and 16 are independent. Claim 1 is reproduced below
with our emphasis:
1. A method, comprising:
receiving a user request for a multimedia content service
from a first user device over a first application;
receiving an identifier of the first user device;
identifying a service provider of a user associated with
the first user device and a second user device;
generating an activation code associating the identifier
with the service provider;
transmitting the activation code to the first application
on the first user device;
receiving the activation code from the user over a second
application on the second user device;
generating an authorization indication based on the
received activation code from the second application, the
authorization indication allowing the first user device to be
provided content from the multimedia content service;
transmitting the authorization indication to the first user
device;
activating the multimedia content service for the first
user device based on the authorization indication; and
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providing the content from the multimedia content
service to the first user device over the first application.
Appeal Br. 11.2
REFERENCES
The Examiner relies on the references in the table below.
Name Reference Date
Naggar US 2013/0332838 A1 Dec. 12, 2013
Wood US 2014/0372464 A1 Dec. 18, 2014
Nesic US 2015/0180849 A1 June 25, 2015

REJECTIONS
The Examiner rejects claims 1–4, 8–12, and 16–19 under 35 U.S.C.
§ 103 as unpatentable over Naggar and Nesic. Final 3–15.
The Examiner rejects claims 5–7, 13–15, and 20 under 35 U.S.C.
§ 103 as unpatentable over Naggar, Nesic, and Wood. Final 16–21.
OPINION
I. Obviousness over Naggar and Nesic
A. The Rejection
In rejecting claim 1, the Examiner finds that Naggar’s service-
provider network 210 transmits a code to device-registration client 510.
Final 5. The Examiner finds that Naggar’s client 510 is a component of

2 Throughout this opinion, we refer to the Final Office Action (“Final”),
mailed November 9, 2017; the Advisory Action (“Advisory”), mailed
January 29, 2018; the Appeal Brief (“Appeal Br.”), filed March 28, 2018;
the Examiner’s Answer (“Ans.”), mailed August 30, 2018; and Reply Brief
(“Reply Br.”), filed October 24, 2018.
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application 405 (“first application”) on the first user device 260 (“first user
device”). Id. According to the Examiner, Naggar lacks a second application
and device, as recited. Id. For the limitations to the second device and code,
the Examiner cites Nesic’s process for provisioning a token for an online
application. Id. at 6 (citing Nesic ¶¶ 95–96, 98); see also Advisory 2 (citing
Nesic ¶ 88).
B. Appellant’s Arguments
According to Appellant, claim 1 recites an interaction between two
user devices, but Naggar’s and Nesic’s processes involve only one.
Appeal Br. 4–9. Appellant argues that Nesic’s provisioning procedure uses
three components, but only one is a user device. Id. at 7–8. In Appellant’s
view, Nesic’s account setup is different from provisioning, and whether the
setup process involves multiple user devices provides no insight about the
provisioning process. Id. at 8; Reply Br. 3. Appellant argues that only
Nesic’s provisioning process is “arguably relevant” to the claims. Reply Br.
3. Appellant argues that Nesic uses hardware-specific information to ensure
that only one device may be used. Appeal Br. 8.
Independent claims 9 and 16 recite substantially similar limitations.
Id. at 9. Appellant argues the independent claims as a group. See id.
(“Naggar and Nesic, taken alone or in combination, do not disclose or
suggest the recitations of claims 9 and 16 for at least the reasons discussed
above with regard to claim 1.”). We select claim 1 as representative of this
group. See 37 C.F.R. § 41.37(c)(1)(iv).
C. Analysis
According to claim 1, the activation code must be (1) transmitted to a
first application on a first device and (2) received from the user over a
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second application on a second device. Likewise, Nesic’s code is transmitted
to a user’s mobile device 2 (“first device”) via mobile token application 2'
(“first application”) and received from bank online application 3 (“second
application”) by the user’s computer 2" (“second device”). Nesic ¶¶ 88, 92–
98. Figure 1, below, shows the components involved in Nesic’s process.
Id. ¶ 87.

Figure 1, above, shows a provisioning server 1 and mobile device 2 with
mobile token application 2'. Id. ¶ 88.
We agree with the Examiner that Nesic’s first use case involves two
devices: personal computer 2" and mobile device 2 in Figure 1. See Final 6
(citing Nesic ¶¶ 95–96, 98); see also Advisory 2 (citing Nesic ¶ 88). As for
the first device and application, Nesic teaches transmitting the activation
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code to the first application (mobile application 2') on the first user device
(mobile device 2), as recited in claim 1. Nesic ¶ 95. As for the second device
and application, user 4 types the activation code on an appropriate page in
bank online application 3 using personal computer 2". Id. ¶¶ 88, 96. In this
way, Nesic teaches receiving the activation code from the user over a second
application (online application 3) on the second user device (personal
computer 2"), as recited in claim 1.
Appellant argues that Nesic’s provisioning involves provisioning
server 1 and banking online application 3 (id. Fig. 2) or mobile-application
server 1 and banking online application 3 (id. Fig. 6). Appeal Br. 7. In
Appellant’s view, none are user devices. Id.; see also Reply Br. 4
(discussing Nesic Figs. 2 and 6).
To the contrary, Nesic’s user 4 accesses banking online application 3
through personal computer 2". Nesic ¶ 88. Specifically, Nesic teaches that
user 4 types the code on a page from bank online application 3 using their
personal computer 2". Id. ¶ 96. That is, user 4 views and interacts with at
least a part of bank online application 3 on personal computer 2". Id. In this
way, banking online application 3 is “on” computer 2", like the recited
second application on the second user device. Id.
As for Nesic’s setup process, Appellant argues,
With regard to setting up an account which may involve
two user devices (as interpreted by the Examiner), it is
respectfully submitted that the use of two user devices is
immaterial to the provisioning procedure which relates only to
accessing the account and which always involves only one user
device.
Appeal Br. 7. In Appellant’s view, Nesic’s setup process is “a preliminary
step” before the provisioning feature can be implemented. Id. at 8. Appellant
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further argues that Nesic’s setup “is not pertinent to the subject matter and
objective of the claims.” Id.
But Appellant does not persuasively explain which limitations
specifically exclude Nesic’s setup process. See id. at 7–9; Reply Br. 3. Nor
does Appellant fully address the objectives of the Naggar-Nesic
combination. See Appeal Br. 7–9; Reply Br. 3. Here, the Examiner modifies
Naggar’s method for providing access to content from multiple providers
with Nesic’s provisioning process, which is described in paragraphs 92
through 98. Final 6 (citing Nesic ¶¶ 95–96, 98); see also Advisory 2 (citing
Nesic ¶ 88). Thus, Appellant’s arguments about the teaching’s materiality to
the invention’s objectives (Appeal Br. 7) are unpersuasive for the additional
reason that they discuss Nesic’s teachings alone without considering the
objectives of Naggar and Nesic in combination.
Appellant further argues that Nesic is configured to prevent a user
from receiving an activation code on the mobile device and using a second
token application on a desktop terminal. Appeal Br. 8. According to
Appellant, Nesic ensures “that only this one device may be used is a token
seed generated and encrypted based on ‘hardware specific information’ of
the device on which the token application 2' was installed.” Id. (citing
Nesic ¶¶ 120, 127). Appellant then concludes that “only the single user
device on which the token application 2' was installed (the device that was
used to request the activation code) may be used in a provisioning
procedure.” Id. at 9.
Nesic, though, does not state that generating the token in this way is
contrary to using two devices in the process described in paragraphs 95
through 98. See Nesic ¶¶ 120, 127. Rather, Nesic explains that provisioning
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server 1 uses hardware security module 5 “to assure good randomness of the
token seed.” Id. ¶ 120. In particular, Nesic encrypts the token seed in two
different ways. Id. ¶ 121. The first way encrypts the token seed using a
transport key derived from the hardware-specific information. Id. ¶ 122.
This is used to “safely send” the token seed to the mobile token application.
Id. ¶ 123. In the embodiment cited by the Examiner, Nesic sends an
activation code to mobile application 2' on mobile phone 2, and user 4 sends
the activation code using the computer 2". Id. ¶¶ 95–96, cited in Final 6. On
this record, we are unconvinced that Nesic’s token-encryption embodiment
(id. ¶ 120) undermines the Examiner’s findings about the process described
in paragraphs 95 and 96. See Final 6.
Thus, we sustain the Examiner’s rejection of independent claims 1, 9,
and 16. We also sustain the Examiner’s rejection of dependent claims 2–4, 8,
10–12, and 17–19, which are not argued separately with particularity. See
Appeal Br. 9 (“Because claims 10–12 and 17–19 depend from and include
the limitations of one of these claims, it is submitted that these claims are
also allowable.”).
II. Obviousness over Naggar, Nesic, and Wood
The Examiner rejects claims 5–7, 13–15, and 20 over Naggar, Nesic,
and Wood. Final 16–21. Appellant does not separately discuss the
limitations found in these claims. See Appeal Br. 9–10; Reply Br. 6. Rather,
Appellant argues that Wood does not cure the deficiencies of Naggar and
Nesic as to claim 1’s limitations. Appeal Br. 10; Reply Br. 5. Because
Appellant has not shown any deficiencies in the rejection based on Naggar
and Nesic, as discussed above, we sustain the rejections of claims 5–7, 13–
15, and 20. Supra § II.
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CONCLUSION
The Examiner’s decision to reject claims 1–20 is affirmed.
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 8–12,
16–19
103 Naggar, Nesic 1–4, 8–12,
16–19

5–7, 13–
15, 20
103 Naggar, Nesic,
Wood
5–7, 13–15,
20

Overall
Outcome
1–20
TIME PERIOD FOR RESPONSE
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).

AFFIRMED