Shekhar Deo et al.

Patent Trials and Appeals Board

Oct 2, 2019

13566690 - (D) (P.T.A.B. Oct. 2, 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.
13/566,690 08/03/2012 Shekhar Deo 110524-8801.US01 7615
22862 7590 10/02/2019
GLENN PATENT GROUP
c/o Perkins Coie LLP
P.O. Box 1247
Seattle, WA 98111-1247
EXAMINER
CHEN, YAHAO
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHEKHAR DEO and MANOJ RAJSHEKAR1
____________

Appeal 2018-008546
Application 13/566,690
Technology Center 2100
____________

Before GREGG I. ANDERSON, JON M. JURGOVAN and
MICHAEL M. BARRY, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1 through 21.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

1 Appellant and the real party in interest is 24/7 CUSTOMER, INC. App.
Br. 1.
2 In this Decision, we refer to the Final Office Action (“Final Act.,” mailed
December 14, 2017), the Appeal Brief (“App. Br.,” filed March 23, 2018),
the Corrected Appeal Brief (“Cor. App. Br.,” filed May 11, 2018),
Examiner’s Answer (“Ans.,” mailed June 28, 2018), the original
Specification (“Spec.,” filed August 3, 2012).

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I. STATEMENT OF THE CASE
A. The Invention
The Specification describes techniques for generating and serving a
multimedia object “which may be used in online advertising, brand
engagement, online promotions, surveys, security, and user-defined
security.” Spec., Abstract. Specifically, “Human Interactive Proof (HIP)
technology . . . can be presented via software to a user to help insure that a
human being, as opposed to an automated system, is interacting with the
software.” Id. at 2:23–25; see also id. at 3:15–23.
A website first determines whether a user is a human or a bot. Spec.
10:1–2. Upon receipt of a request for the multimedia object, a further
determination is made as to whether the website 104 is a legitimate website
or publisher. Id. at 10:16–17. In determining whether a website is
legitimate, a matching algorithm compares various parameters with
parameters of stored multimedia objects to determine a matching multimedia
object. Spec. 10:20–22. The parameters compared include “data about a
device that is sending the request; temporal information of the request;
spatial information of the request; Internet Protocol (IP) address associated
with the request and the device sending the request; software information of
the software that is sending the request; and webpage related information
comprising any of information context, language of the webpage, industry
category of the webpage, global positioning system location (GPS) for GPS
enabled devices, and a theme of the multimedia object.” Id. at 28:16–22; see
also id. at 34:14–30, 38:21–39:14, 40:18–44:14.
Once the match is found, the matched multimedia object is returned
along with a challenge. Spec. 10:24–25. The user “sees the multimedia
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object and interacts with the multimedia object via the challenge” and
responds to the challenge. Id. at 10:25–11:2. The server then compares the
received response against validated responses and, if valid, a success
notification is returned to the website. Id. at 11:4–7. From that point on,
website continues with its flow, based on having received a success
indication. Spec. 11:4–7. When it is determined that “there is no match for
the received response,” a failure notification is sent, but the website
continues with its flow based on having received a failure indication. Id. at
11:9–11.
The Specification describes the use of “[s]uspicion engines [to] detect
suspicious activities by monitoring active and passive transactions of the
MMOs [multimedia objects].” Id. at 26:28–29. “The suspicion engine uses
historical data from the databases where all the MMO transactions are
stored, to interpret such transactions of the MMOs.” Id. at 27:1–3. An AI
component of the suspicion engine “uses machine learning algorithms to
develop a classification and recognition model to detect the incoming traffic
and classify them into various levels of suspicion buckets, such as very
suspicious, low suspicious, fatal, etc.” Id. at 27:12–16.
Independent claim 1, reproduced below, is illustrative:
1. An apparatus for generating and serving a multimedia
object with human interaction proof capabilities on a webpage,
comprising:

a multimedia object server having at least a processor
and at least a memory, said multimedia object server
configured to:

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receive a request for the multimedia object,
wherein the request includes parameters, said
parameters comprise:

device data, wherein the device data includes
data about a device that is sending the request;
temporal information of the request;

spatial information of the request;

Internet Protocol (IP) address associated with
the request and the device sending the request;

software information of the software that is
sending the request; and

webpage related information comprising any of
information context, language of the webpage,
industry category of the webpage, global
positioning system location (GPS) for GPS
enabled devices, and a theme of the multimedia
object;

determine a level of suspicion using the parameters
of the request including the IP address, spatial
information, temporal information, the software
information, and the webpage related information,
and wherein the determination of the level of
suspicion includes analyzing historical data to
interpret the IP address;

classify the request into suspicion buckets based
on the level of suspicion, wherein each distinct
suspicion bucket is a buffer associated with a
degree of suspiciousness and a level of difficulty
of a challenge associated with the multimedia
object, and wherein the suspicion buckets include a
very suspicious suspicion bucket, low suspicious
suspicion bucket, and a fatal suspicion bucket;
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determine a device capability of the device
associated with the request, wherein the device
capability includes an interaction type of click,
draw or type;

determine a matched multimedia object and
associated challenge using the level of difficulty of
one of the suspicion buckets associated with the
request and the interaction type associated the
device, wherein the matched multimedia object is a
video comprising any of a bundled advertisement,
personal images, corporate internal branding
images/texts, house advertisement, and promotion
information, and wherein the associated challenge
involves any part of said matched multimedia
object;

send the matched multimedia object and the
associated challenge to the webpage;

receive a response to the challenge associated with
the matched multimedia object including the
video, and response-related informational data,
said response-related informational data
comprising any of what was clicked on, how long
the multimedia object was on active screen, how
many times an interaction was performed, how the
multimedia object was interacted with, question of
the challenge, current time, the IP address from
where the response and informational data arrived,
the device and software from where the response
and informational data arrived, and duration of any
interaction;

when human interactive proof is enabled in the
response, compare the received response
against validated responses and send a success
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notification or a failure notification to said
webpage based on the comparison;

when human interactive proof is not enabled,
validation is performed but validation
notification is not sent;

store the response related information data and the
validation response as historical data; and

generate analytics about the matched multimedia
object, the associated challenge, and the webpage
using said response-related informational data,
wherein the analytics include the updated level of
difficulty associated with the matched multimedia
object and the associated challenge.

App. Br. 12.
B. The Rejections
1. Claims 1–4, 6, 8, and 13–21 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Hu et al. (US 2012/0254971
A1, published October 4, 2012 “Hu”), Clark et al. (US 2011/0029781 A1,
published February 3, 2011 “Clark”), Sobel et al. (US 7,366,919 Bl, issued
April 29, 2008 “Sobel”), Gargi (US 8,510,795 Bl, issued August 13, 2013
“Gargi”), Brown et al. (US 2010/0302255 Al, issued December 2, 2010
“Brown”), Pennock et al. (US 2008/0133321 Al, published June 5, 2008
“Pennock”), Roy (US 8,613,064 Bl, issued December 17, 2013 “Roy”), and
Fisk et al. (US 2013/0031640 Al, published January 31, 2013 “Fisk”).3 Id.
at 4–16.

3 A rejection of claims 1–21 under 35 U.S.C. § 112(a) or pre-AIA
35 U.S.C. § 112, first paragraph, was withdrawn based on Appellant’s
argument in the Appeal Brief. Ans. 17 (citing App. Br. 9–11).
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2. Claim 5 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hu, Clark, Sobel, Gargi, Brown, Pennock, McCarthy (US
2005/0288954 A1, published December 29, 2005 “McCarthy”), Roy, Fisk,
and Inbar (US 2011/0166916 Al, published July 7, 2011 “Inbar”). Id. at 16–
17.
3. Claim 7 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hu, Clark, Sobel, Gargi, Brown, Pennock, Roy, Fisk, and
Baranov et al. (US 2012/0130801 Al, published May 24, 2012 “Baranov”).
Id. at 17–18.
4. Claim 9 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hu, Clark, Sobel, Gargi, Brown, Pennock, Roy, Fisk, and
Shen et al. (US 2012/0297190 Al, published November 22, 2012 “Shen”).
Id. at 18.
5. Claim 10 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hu, Clark, Sobel, Gargi, Brown, Pennock, Roy, Fisk, and
Veen et al. (US 2010/0201478 Al, published August 12, 2010 “Veen”). Id.
at 19.
6. Claims 11 and 12 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Hu, Clark, Sobel, Gargi, Brown,
Pennock, Roy, Fisk, and further in view of Sankaran et al. (US
2008/0005126 Al, published January 3, 2008 “Sankaran”).
C. Issue
Appellant’s arguments present the following dispositive issue:
Is the rejection based on the combination of Hu, Clark, Sobel, Gargi,
Brown, Pennock, Roy, and Fisk based on hindsight? App. Br. 8–9.
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II. ANALYSIS
The Examiner relies on the teachings of eight distinct pieces of
prior art to find claim 1 obvious. Final Act. 5–11. The Examiner
finds different motivations to make the necessary combinations. Id. at
6 (Hu and Clark; finding motivation of a “human friendly way to
defeat bots” (citing Clark ¶ 25)), 7 (Hu and Sobel; finding motivation
to “improve the accuracy of spambot tester” of Clark, as adapted into
Hu), 7 (Hu and Gargi; finding it would have been obvious to include
video based CAPTCHA4), 8 (Hu and Roy; finding motive based on
“more security”), 8 (Hu and Fisk; finding motive based on “more
security”), 9 (Hu and Brown; finding motivation “for rendering more
relevant advertisements”). Petitioner argues that the number of
references necessary to reject claim 1 is indicative of the use of use of
“impermissible hindsight reasoning to combine references.” App. Br.
8 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
In the Answer the Examiner also cites to KSR, arguing that
hindsight is not the basis for combining the references
because all of these references are in the same field for enhancing
the security of a computer system, thus one of ordinary skill in
the art would be motivated to combine all of these references to
enhance the security of a computer system, without taking any
hindsight motivation from the disclosure of the claimed
invention. Because such motivation can be found in the
knowledge generally available to one of ordinary skill in the art,
and need not be expressly found in the references themselves.

4 CAPTCHA/Captcha (Completely Automated Public Turing Test to Tell
Computers and Humans Apart). Hu ¶ 2.

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Ans. 18 (citations omitted). Appellant responds that the alleged
motivations are insufficient, in part because “the alleged field for
‘enhancing the security of a computer system’ is overly broad and
encompasses many distinct fields.” Reply Br. 5. By way of example,
Appellant argues “Hu relates to Turing techniques for distinguishing
humans and machines while Roy relates to login monitoring and
authentication” and that “a person skilled in Turing techniques may
not be familiar with authentication processes.” Id. (also contending
ordinarily skilled artisans would recognize that other cited references
are unrelated even to enhancing computer system security, such as
Sobel’s spam detection disclosure). Appellant’s argument is
persuasive.
We look to
interrelated teachings of multiple patents; the effects of demands
known to the design community or present in the marketplace;
and the background knowledge possessed by a person having
ordinary skill in the art, all in order to determine whether there
was an apparent reason to combine the known elements in the
fashion claimed by the patent at issue.

KSR, 550 U.S. at 418. The rejection “cannot be sustained by mere
conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441, F.3d 977, 988 (Fed. Cir.
2006). Further, “[i]t is not enough to say that there would have been a
reason to combine two references because to do so would ‘have been
obvious to one of ordinary skill.’ Such circular reasoning is not
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sufficient—more is needed to sustain an obviousness rejection.” In
re Chaganti, 554 F. App’x 917, 922 (Fed. Cir. 2014).
The combination argued by the Examiner requires hindsight.
Although the Examiner finds a motivation for combining each
reference with Hu, we are not persuaded that the articulated reasons
would have been considered by a person of ordinary skill in the art.
The overarching motive identified by the Examiner is more or
enhanced security (Ans. 18). We agree with Appellant that this is
overly broad (Reply Br. 5) and, absent hindsight reconstruction of the
claim limitations, would not have provided the necessary motive.
Combined with the number of references, we find there is an
insufficient articulated basis that would have led a person of ordinary
skill to combine the various teachings from the eight references.

III. CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–21 § 103 1–21
Overall Outcome X

IV. DECISION
The Examiner’s decision rejecting claims 1–21 is reversed.
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).

REVERSED