MATUTE, Diego

Patent Trials and Appeals Board

Dec 8, 2020

2019003577 (P.T.A.B. Dec. 8, 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.
14/295,904 06/04/2014 Diego MATUTE 20455P0001US02 1089
25319 7590 12/08/2020
Aventum IP Law LLP
P.O. Box 13002
Kanata, ONTARIO K2K 0E2
CANADA
EXAMINER
MIAN, MOHAMMAD YOU A
ART UNIT PAPER NUMBER
2448
MAIL DATE DELIVERY MODE
12/08/2020 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 DIEGO MATUTE
Appeal 2019-003577
Application 14/295,904
Technology Center 2400

Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
DAVID J. CUTITTA II, Administrative Patent Judges.

CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20, all the claims under
consideration. 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
CYPHERCOR INC. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Invention
Appellant’s claimed subject matter relates to sharing content via a
URL (“uniform record locator”) and authenticating the recipient of the URL.
Spec. ¶ 15.2 In particular, Appellant explains that “[u]pon receipt of a
message comprising the URL or an indication thereof, recipient 406 tries to
access the URL resource. When the attempt to access the URL resource is
made, server 407 sends an electronic message in the form of a push
notification to smartphone 405.” Id. at ¶ 16. When the recipient
successfully replies to the push notification, the recipient “is provided access
to the resource.” Id.
Exemplary Claim
Claim 1, reproduced below with limitations at issue italicized,
exemplifies the claimed subject matter:
1. A method comprising:
associating a URL and a resource, the URL for accessing
the resource;
associating a smartphone with a recipient;
providing from a first user to a recipient the URL;
receiving a request for access to the resource relying
upon the URL, the request received via a communication
network;

2 We refer to: (1) the originally filed Specification filed June 4, 2014
(“Spec.”); (2) the Final Office Action mailed November 29, 2017 (“Final
Act.”); (3) the Appeal Brief filed October 29, 2018 (“Appeal Br.”); (4) the
Examiner’s Answer mailed January 22, 2019 (“Ans.”); and (5) the Reply
Brief filed March 22, 2019 (“Reply Br.”).
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upon receiving the request for access to the resource,
transmitting from a server to the smartphone a push
notification via another channel, a destination of the push
notification unique to the smartphone;
receiving a reply based on the push notification
transmitted to the smartphone; and
in dependence upon the reply, allowing access to the
resource via the communications network.
Appeal Br. 18 (Listing of Claims).
REFERENCES
The Examiner relies on the following prior art references:3
Name Reference Date
Soman US 2009/0013063 A1 Jan. 8, 2009
Keith US 2012/0030774 A1 Feb. 2, 2012
Taugbol US 2012/0066749 A1 Mar. 15, 2012
Ferdowsi US 9,049,176 B2 June 2, 2015
Barker US 9,058,490 B1 June 16, 2015

REJECTIONS
The Examiner makes the following rejections:
Claims
Rejected 35 U.S.C. § References
Final Act.
1–7, 9, 11, 12,
16, 18–20
103 Soman, Taugbol 3
8, 10 103 Soman, Taugbol,
Keith
13
13, 14 103 Soman, Taugbol,
Barker
15
15, 17 103 Soman, Taugbol,
Ferdowsi
16

3 All citations to the references use the first-named inventor or author only.
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OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
We disagree with Appellant that the Examiner errs and adopt as our own the
findings and reasons set forth by the Examiner to the extent consistent with
our analysis herein. Final Act. 3–6; Ans. 3–8. We add the following
primarily for emphasis.
Motivation to Combine
The Examiner relies on the combined teachings of Soman and
Taugbol to teach or suggest all of the limitations of claim 1. Final Act. 3–6.
The Examiner determines that sufficient motivation existed to combine the
teachings of the references. Id. at 6. In particular, the Examiner determines:
It would have been obvious to a person of ordinary skilled in
the art, before the effective filing date of the claimed invention,
to combine Soman’s teaching of access to information with
Taugbol’s push notification to authenticate the user in order to
transmit a push notification from the server to user smartphone
via another channel to authenticate the user and receive a reply
based on the push notification. Reasons to do so would have
been to secure the user access of the content.
Id.
Appellant argues that “the Examiner has failed to present any
‘articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness’” because “the Examiner has merely stated: ‘[It
would have been obvious . . . reasons to do so would have been to [sic]
sharing a link of a resource to one or more recipients.’” Appeal Br. 7.
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Appellant further argues that the Examiner’s stated rationale for combining
the references “is conclusory in nature, unsupported by any evidence that is
currently of record, and does not amount to a clear articulation of the
reason(s) as to why the claimed invention would have been obvious.” Id.
The Examiner responds that a “‘motivation to combine was
articulated and placed on the record’ because “the Examiner found that
‘reason to [do] so would have been to secure the user access of the content.’”
Ans. 3 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); Final Act. 6.
Appellant’s argument is unpersuasive because Appellant fails to
provide evidence or persuasive reasoning that specifically addresses the
Examiner’s stated motivation. See Final Act. 6 (Indicating that the reason to
combine the teachings of Soman and Taugbol “would have been to secure
the user access of the content.”). Indeed, as the Examiner points out “Soman
teaches that a sender wishing to share a file and an intended recipient enters
a URL of the file to access the file,” and Taugbol “teaches that when user
attempts to get service from a service provider, the service provider through
a authentication server sends a challenge using push message to the user
mobile via another channel.” Ans. 4–6. The Examiner concludes that
Taugbol’s authentication via push message “would have been an
advantageous addition to the method disclosed by Soman since it would
have allowed to securely authenticate the user by using a challenge in a push
message via another channel as taught by Taugbol” and “[d]oing so would
have been a predictable variation of securely authenticating a user, as
explicitly taught by Taugbol.” Id. at 6. Thus, the Examiner’s reasoning that
the combination would have improved Soman’s system by extending its
functionality “to secure the user access of the content” (Final Act. 6; Ans. 4)
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using a push notification sent via another channel, as described in Taugbol,
is supported by rational underpinning. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417–418 (2007) (“[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond that person’s skill.”).

Transmitting a Push Notification
The Examiner relies on Taugbol to teach or suggest, “upon receiving
the request for access to the resource, transmitting from a server to the
smartphone a push notification via another channel, a destination of the push
notification unique to the smartphone,” as recited in claim 1. Final Act. 5
(citing Taugbol ¶¶ 89, 95, 96); Ans. 7–8.
Appellant argues that “Taugbol is silent to uniqueness and more
importantly discloses many examples that are not unique” and therefore
“[t]here is no reason to look to Taugbol as a teaching of a push notification
to a unique end point.” Appeal Br. 10.
Appellant’s argument is unpersuasive because Appellant provides no
evidence or persuasive reasoning that specifically addresses the Examiner’s
findings from Taugbol. Id. Mere attorney arguments and conclusory
statements unsupported by factual evidence are entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Moreover, we
agree that the portions of Taugbol cited by the Examiner describe sending a
push message to a unique mobile device, via an alternative communication
channel, to authenticate that device, upon receiving a request to access
content. Final Act. 5 (citing Taugbol ¶¶ 87, 89, 95, 96); Ans. 7–8.
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Of particular relevance, Taugbol discloses that an authentication
server may send an authentication challenge by sending a push message to a
mobile device and that the authentication challenge and content request can
be transmitted via two different channels. Taugbol ¶¶ 89, 90. Although
Appellant argues that “Taugbol teaches push messages . . . transmitted to
any of a number of destinations” and “discloses many examples that are not
unique” (Appeal Br. 10), we find Taugbol teaches at least one embodiment
in which a server transmits push messages uniquely to a smartphone. See
Taugbol Fig. 1 (discussed in Examiner-cited ¶ 89) showing authentication
server transmitting a push request exclusively to recipient’s mobile phone.
Furthermore, we agree with the Examiner’s finding that Taugbol describes
performing authentication “via the user’s mobile[,] which has installed
specific software from the Authentication authority” and we agree with the
Examiner’s determination that one skilled in the art would have understood
“that the push message transmitted to the Authentication Client [] is unique
to the mobile of the user,” in order to accomplish such authentication.
Ans. 8 (citing Taugbol ¶¶ 87, 97).
Accordingly, Appellant fails to show reversible error in the
Examiner’s finding that Taugbol’s authentication via push message teaches
“upon receiving the request for access to the resource, transmitting from a
server to the smartphone a push notification via another channel, a
destination of the push notification unique to the smartphone,” as recited in
claim 1.
For the reasons discussed, Appellant has not persuaded us of error in
the Examiner’s obviousness rejection of independent claim 1. We,
therefore, sustain the Examiner’s rejection of that claim, as well as the
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rejections of dependent claims 2–20, which Appellant does not argue
separately with particularity. See generally Appeal Br. 11–15 (nominally
arguing claims 2–20 without providing additional specific arguments).

CONCLUSION
We affirm the Examiner’s decision to reject claims 1–20 under
35 U.S.C. § 103.4

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 9, 11,
12, 16, 18–
20
103 Soman, Taugbol 1–7, 9, 11,
12, 16, 18–
20

8, 10 103 Soman, Taugbol,
Keith
8, 10
13, 14 103 Soman, Taugbol,
Barker
13, 14
15, 17 103 Soman, Taugbol,
Ferdowsi
15, 17
Overall
Outcome
1–20

4 In the event of further prosecution, the Examiner may wish to review the
claims for compliance with the definiteness requirement of 35 U.S.C.
§ 112(b). Claim 1 twice recites “a recipient.” Claim 2 also recites “a
recipient.” Claims 2 and 4 each recite “the recipient.” It is unclear to which
“recipient” in claims 1 and 2 that “the recipient” in claims 2 and 4 refers.
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Application 14/295,904

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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