Linda Eigner et al.

Patent Trials and Appeals Board

Aug 13, 2019

14061740 - (D) (P.T.A.B. Aug. 13, 2019)

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.
14/061,740 10/23/2013 Linda Eigner 120117-001UT4 7980
27189 7590 08/13/2019
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
EXAMINER
CAMPBELL, JR., WARREN
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
08/13/2019 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):
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docketing@procopio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LINDA EIGNER, WILLIAM EIGNER, ERIC TOBIAS,
CHARLES KAHLE, and ANTHONY F. IASI
____________

Appeal 2018-008454
Application 14/061,740
Technology Center 2100
____________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
BETH Z. SHAW, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–6, 8, 9, 11–16, 18, 19, 32, and 34. Claims 7, 10,
17, 20–31, and 33 are canceled. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention populates user information onto an electronic
form, such as a word processing document, application-specific form, or
web page. Fields are identified on the form and matched with fields stored

1 Appellants identify the real party in interest as FHOOSH, Inc. App. Br. 3.
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in a user profile that is continuously updated. The form can be stored in a
central forms library and selected by the user for completion. See generally
Abstract. Claim 1 is illustrative:
1. A system for populating an electronic form with user
information, comprising:
at least one hardware processor;
at least one executable software module that, when
executed by the at least one hardware processor, is configured
to:
create a user profile including a plurality of fields;
classify the plurality of fields and determine one or more values
from information associated with the plurality of fields for each
of the plurality of fields;
disassociate the user profile from other information
associated with a file;
disassemble the user profile into values associated with
each of the plurality of fields;
individually encrypt the values from each of the plurality
of fields comprising the user profile;
store the disassembled and encrypted values in separate
storage locations in a separate data storage device from the
other information in the file, with no logical connections to the
other information in the file;
identify a field included in the electronic form;
determine a value associated with the identified field by
retrieving a value from the dissociated user profile, associate
the retrieved value with the other information
in the file; and
populate the identified field included in the electronic
form with the determined value.

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THE REJECTIONS
The Examiner rejected claims 1, 4–6, 11, and 14–162 under 35 U.S.C.
§ 103 as unpatentable over Kennedy (US 6,651,217 B1; issued Nov. 18,
2003) (“Kennedy”) and Amihai Motro & Francesco Parisi-Presicce, BLIND
CUSTODIANS: A DATABASE SERVICE ARCHITECTURE THAT SUPPORTS
PRIVACY WITHOUT ENCRYPTION, DATA & APPLICATIONS SECURITY 2005,
LNCS 3654, 338–52 (2005) (“Motro”). Ans. 4–8.3
The Examiner rejected claims 2, 3, 12, and 13 under 35 U.S.C. § 103
as unpatentable over Kennedy, Motro, and Yaksich (US 5,563,998; issued
Oct. 8, 1996). Ans. 8–10.
The Examiner rejected claims 8 and 18 under 35 U.S.C. § 103 as
unpatentable over Kennedy, Motro, and Hopkinson (US 2007/0033118 Al;
published Feb. 8, 2007). Ans. 10–11.
The Examiner rejected claims 9 and 19 under 35 U.S.C. § 103 as
unpatentable over Kennedy, Motro, and Kelley (US 6,247,029 B1; issued
June 12, 2001). Ans. 11–13.

2 Although the Examiner omits claim 16 from the statement of the rejection,
the Examiner nonetheless includes this claim in the associated discussion.
Compare Ans. 4 with Ans. 8. Therefore, we presume that the Examiner
intended to include claim 16 in this rejection, and present the correct claim
listing here for clarity. Accordingly, we treat the Examiner’s error in this
regard as harmless.
3 Throughout this opinion, we refer to (1) the Appeal Brief filed April 16,
2018 (supplemented May 17, 2018) (“App. Br.”); (2) the Examiner’s
Answer mailed June 27, 2018 (“Ans.”); and (3) the Reply Brief filed August
23, 2018 (“Reply Br.”).
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The Examiner rejected claims 32 and 34 under 35 U.S.C. § 103 as
unpatentable over Kennedy, Motro, and Desai (US 6,820,204 B1; issued
Nov. 16, 2004). Ans. 13–14.

THE OBVIOUSNESS REJECTION OVER KENNEDY AND MOTRO
Regarding independent claim 1, the Examiner finds that Kennedy’s
system populates an electronic form with user information that, among other
things, (1) disassembles a created user profile into values associated with
each of the profile’s fields; (2) individually encrypts the values from each
field; and (3) identifies and populates a field in the form with a determined
value. Ans. 4–5. The Examiner finds that Kennedy does not (1)
disassociate the user profile from other information associated with a file;
(2) store the disassembled and encrypted values in separate storage locations
in a separate data storage device from other information in the file; (3)
determine a value associated with the identified field by retrieving a value
from the dissociated user profile; and (4) associate the retrieved value with
the other file information, but cites Motro as teaching these features in
concluding that the claim would have been obvious. Ans. 5–7.
Appellants argue that the cited prior art does not disassemble the
recited user profile into values associated with each of the profile’s fields, let
alone individually encrypt those values. App. Br. 12–16; Reply Br. 2–5.
According to Appellants, Kennedy’s using values from an autofill profile to
fill another form does not disassemble the autofill profile or data structure
206. Id. Appellants further contend that the cited prior art does not teach or
suggest dissociating the user profile from other information associated with
a file as claimed, but rather Motro disassociates values from other values
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within a profile. App. Br. 17–19. Appellants add that because Motro does
not teach or suggest a dissociated user profile, Motro also does not retrieve a
value from that profile, let alone associate that value with other information
in the file as claimed. Id. 19–20.
ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Kennedy and Motro collectively would have taught or suggested: (1)
disassembling a created user profile into values associated with each of the
profile’s fields; (2) individually encrypting the values from each field; (3)
determining a value associated with the identified field by retrieving a value
from the dissociated user profile; and (4) associating the retrieved value with
the other information in the file?

ANALYSIS
We begin by noting that claim 1 recites two key functions associated
with the created user profile, namely that the user profile is (1) disassociated
from other information associated with a file, and (2) disassembled into
values associated with each of the profile’s fields. According to the
Specification’s paragraph 58, disassociating a user’s identifiable information
from other information protects the user’s information from potential theft
and misuse by, for example, storing the user’s name, social security number,
employee identification, etc. in a database separate from the user’s other
information, such as credit card numbers, bank accounts, education, grades,
etc.
Unlike the recited user profile disassociation, however, the
Specification does not articulate the term “disassemble” explicitly, let alone
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explain what this term means in the context of the claimed invention.
Nevertheless, on page 6 of the Appeal Brief, Appellants refer to paragraphs
58 to 60 of the Specification in connection with the recited user profile
disassembly—the same paragraphs that describe the recited disassociation.
In short, these paragraphs do not squarely address the recited user profile
disassembly, but rather pertain to its disassociation. That these paragraphs
fall under the heading “Identity Disassociation” on the Specification’s page
20 only further underscores the ambiguity in this regard.
Given the Specification’s silence regarding what disassembling a user
profile means, we therefore construe the term “disassemble” with its plain
meaning, namely “[t]o take apart.” See THE AMERICAN HERITAGE
DICTIONARY OF THE ENGLISH LANGUAGE 514 (4th ed. 2006).
Under this interpretation, we see no error in the Examiner’s finding
that, upon selecting the “autofill” option 803 in Figure 8, Kennedy’s system
effectively disassembles, or takes apart, the user profile by extracting
individual values from that profile that are then used to populate a form’s
matching fields. See Ans. 5 (citing Kennedy, col. 9, ll. 5–8), 15–21. That is,
the very act of retrieving a previously-stored data value from Kennedy’s user
profile in steps 1005 and 1006 in Kennedy’s Figure 10 effectively extracts
that value from the user profile and, therefore, disassembles the user profile,
at least in that sense. See Kennedy, col. 11, ll. 10–13. Accord Ans. 21
(noting that the profile itself is not provided to the form as a single
contiguous data record, but is rather disassembled into values to populate the
form’s fields). Moreover, given Kennedy’s teaching of storing encrypted
values in column 7, lines 47 to 49, we see no error in the Examiner’s finding
that Kennedy at least suggests individually encrypting the values from each
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field comprising the profile. See Ans. 5, 23. Appellants’ arguments to the
contrary (App. Br. 12–16; Reply Br. 2–5) are, therefore, unavailing and not
commensurate with the scope of the claim.
Nor are we persuaded of error in the Examiner’s reliance on Motro for
at least suggesting the recited user profile disassociation and storing
disassembled and encrypted values in separate storage locations in a separate
data storage device from other information in a file as claimed. See Ans. 6
(citing Motro 343–44), 23–27. As Motro’s Abstract explains, Motro’s
system ensures confidentiality by using information dissociation where (1) a
server stores only information “fragments” that are considered safe and do
not violate privacy, and (2) a client stores the associations between the
fragments that are necessary to reconstruct the information. For example, a
table of employees can have fields that (1) concern employment, such as
name, employee id, position, etc., and (2) contain a home address, such as
street, number, city, state, etc. Motro 343. Although it may be acceptable to
disclose each of these groups of fields separately, it may be unacceptable to
disclose complete records because they associate employees with their
addresses. Id.
Given this information dissociation functionality, we see no error in
the Examiner’s conclusion that in light of Motro, disassociating the recited
user profile from other information associated with a file and storing the
disassembled and encrypted values in separate storage locations as the
Examiner proposes would have been at least an obvious variation to enhance
security by segregating the stored values from other information. As the
Examiner indicates (Ans. 24–25), Motro’s information dissociation
functionality is not limited to the exemplary employee table application
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noted above, but could be applied to any data whose segregated storage
would enhance security—including disassembled and encrypted values
under the Examiner’s proposed combination. Appellants’ contention that
Motro does not disassociate the user profile from other information
associated with a file, but rather disassociates information associated with a
profile from other information associated with a profile (App. Br. 17) is
unavailing for the reasons noted above and those indicated by the Examiner.
See Ans. 23–27.
For similar reasons, and despite Appellants’ arguments to the contrary
(App. Br. 19–20), we also see no error in the Examiner reliance on Motro for
at least suggesting (1) determining a value associated with the identified
field by retrieving a value from the dissociated user profile, and (2)
associating the retrieved value with the other file information as claimed,
particularly in light of Motro’s functionality that re-associates information
that was previously dissociated. See Ans. 6–7 (citing Motro 344–45), 28–
30.
To be sure, when reading claim 1 as a whole, values that are extracted
from Kennedy’s user profile under the Examiner’s proposed combination
would be then encrypted and stored in separate storage locations in a
separate data storage device from other file information, and a retrieved
value from the dissociated user profile would then be associated with other
information in a file before populating the identified field in the form with
the determined value. Although these extra dissociation-based steps
arguably add a layer of complexity to Kennedy’s form populating
functionality by, among other things, re-storing extracted values from the
profile in separate locations before populating those extracted values in a
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form, we nevertheless see no reason why this additional functionality would
not enhance security as the Examiner proposes. Such an enhancement uses
prior art elements predictably according to their established functions—an
obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417
(2007). To the extent that Appellants contend otherwise (see Reply Br. 6–
7), there is no persuasive evidence on this record to substantiate such a
contention.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 4–6, 11, and 14–16 not argued separately with
particularity.

THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner’s obviousness rejections of claims 2, 3,
8, 9, 12, 13, 18, 19, 32, and 34. Ans. 8–14. Because these rejections are not
argued separately with particularity, we are not persuaded of error in these
rejections for the reasons previously discussed.

CONCLUSION
The Examiner did not err in rejecting claims 1–6, 8, 9, 11–16, 18, 19,
32, and 34 under § 103.

DECISION
We affirm the Examiner’s decision to reject claims 1–6, 8, 9, 11–16,
18, 19, 32, and 34.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED