Tong, Linda et al.

Patent Trials and Appeals Board

May 27, 2020

13198809 - (D) (P.T.A.B. May. 27, 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.
13/198,809 08/05/2011 Linda Tong 60291-0019 8524
29989 7590 05/27/2020
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
EXAMINER
SITTNER, MICHAEL J
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
05/27/2020 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LINDA TONG, AMIR MANJI, RYAN JOHNS,
STEPHEN MCCARTHY, HWAN-JOON CHOI, STEVE TAN,
and JOHNNY CHAN
____________________

Appeal 2019-003271
Application 13/198,809
Technology Center 3600
____________________

Before ERIC B. CHEN, JEREMY J. CURCURI, and IFTIKHAR AHMED,
Administrative Patent Judges.

AHMED, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 5–7, 9, 18, 21–23, 25, and 26, all of the pending claims. Claims
2, 4, 8, 10–17, 19, 20, 24, and 27–34 have been cancelled. Appeal Br. 13–
18. 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). According to Appellant, the real party-in-interest is Tapjoy, Inc.
Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claimed subject matter relates to rewarding application actions,
“and more specifically, to techniques for detecting actions performed in
applications.” Title, Spec. ¶ 2.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative and reproduced below with certain disputed
limitations emphasized:
1. A computer-implemented method, comprising:
a server computer separate from a client computing
device storing a click table which identifies, for each
indication received by a client computing device, a unique
device identifier of the client computing device and a
unique action identifier of a client computing device;
receiving a request from an application publisher
computer to register a target action in a particular named
application;
in response to receiving the request from the
application publisher computer, the server computer
separate from the client computing device generating a
particular unique action identifier for the target action, the
particular unique action identifier registered to only the
target action in the particular named application, and
executable software code for insertion into the particular
named application which, when executed by the client
computing device, causes the client computing device to
send a first notification with the particular unique action
identifier and a particular unique device identifier for the
particular client computing device to the server computer
in response to detecting initiation of the target action and
a second notification with the particular unique action
identifier and the particular unique device identifier to the
server computer in response to detecting completion of the
target action;
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the server computer separate from the client
computing device mapping the particular unique action
identifier for the target action to only the target action in
the particular named application in memory of the server
computer;
the server computer separate from the client
computing device sending, to the application publisher
computer, the particular unique action identifier and the
generated executable software code to be inserted into the
particular named application;
the server computer separate from the client
computing device transmitting, to a particular client
computing device, using electronically transmitted
messages, an offer of a reward for a particular user
performing the target action in the particular named
application to incentivize use of that application;
detecting, at the server computer separate from the
particular client computing device, by at least one
processor, a performance of the target action in the
particular named application by the particular client
computing device;
wherein the detecting of the performance of the
target action comprises:
receiving a first notification from the particular
client computing device with the particular unique device
identifier for the particular client computing device and
the particular unique action identifier for the target action
wherein the generated executable software code, when
executed by the particular client computing device, causes
the particular client computing device to send the first
notification to the server computer separate from the
particular client computing device in response to detecting
initiation of the target action;
in response to receiving the first notification, storing
the particular unique device identifier for the particular
client computing device and the particular unique action
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identifier in the click table;
receiving a second notification from the particular
client computing device with the particular unique device
identifier and the unique action identifier for the target
action wherein the generated executable software code,
when executed by the particular client computing device,
causes the particular client computing device to send the
second notification to the server computer separate from
the particular client computing device in response to
detecting completion of the target action; and
in response to receiving the second notification,
identifying the particular unique device identifier for the
particular client computing device and the particular
unique action identifier in the click table and, in response
to the second notification containing the particular unique
device identifier and the unique action identifier and
identification of the particular unique device identifier and
particular unique action identifier in the click table,
determining performance of the target action to which the
particular unique action identifier is registered; and
responsive to detecting the performance of the
target action in the particular named application, the server
computer separate from the client computing device
associating reward data with the particular user of the
particular client computing device.
REFERENCES
The Examiner relies upon the following prior art references:
Bradley US 8,135,615 B2 Mar. 13, 2012
Willhoit US 9,317,343 B1 Apr. 19, 2016
Mehta US 2002/0128984 A1 Sept. 12, 2002
Barabas US 2004/0254836 A1 Dec. 16, 2004
Olson US 2005/0055398 A1 Mar. 10, 2005
Barhydt US 2006/0259361 A1 Nov. 16, 2006
Patterson US 2007/0255576 A1 Nov. 1, 2007
Gluck US 2008/0275786 A1 Nov. 6, 2008
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REJECTIONS
Claims 1, 6, 7, 9, 18, 22, 23, and 25 stand rejected under 35 U.S.C.
§ 103(a) as obvious over the combined teachings of Barabas, Barhydt,
Mehta, Bradley, and Willhoit.2 Final Act. 2.
Claims 9 and 25 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combined teachings of Barabas, Barhydt, Mehta, Bradley, Willhoit,
and Olson. Final Act. 14.
Claims 3 and 26 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combined teachings of Barabas, Barhydt, Mehta, Bradley, Willhoit,
and Patterson. Final Act. 16.
Claims 5 and 21 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combined teachings of Barabas, Barhydt, Mehta, Bradley, Willhoit,
and Gluck. Final Act. 17.
ISSUES
Did the Examiner err in finding that the combination of Barabas and
Barhydt teaches or suggests generating
software code for insertion into the particular named application
which, when executed by the client computing device, causes
the client computing device to send a first notification with the
particular unique action identifier and a particular unique device
identifier for the particular client computing device to the server
computer in response to detecting initiation of the target action
and a second notification with the particular unique action
identifier and the particular unique device identifier to the
server computer in response to detecting completion of the
target action,

2 The Examiner incorrectly lists claims 9 and 25 as part of this rejection, but
rejects those claims separately as obvious over a different combination.
Final Act. 2, 14.
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as recited in claim 1?
Did the Examiner err in finding that Willhoit teaches or suggests “in
response to the second notification containing the particular unique device
identifier and the unique action identifier and identification of the particular
unique device identifier and particular unique action identifier in the click
table, determining performance of the target action to which the particular
unique action identifier is registered,” as recited in claim 1?
ANALYSIS
Independent claim 1 recites a method including the step of

generating . . . software code for insertion into the particular
named application which, when executed by the client
computing device, causes the client computing device to send a
first notification with the particular unique action identifier and
a particular unique device identifier for the particular client
computing device to the server computer in response to
detecting initiation of the target action and a second notification
with the particular unique action identifier and the particular
unique device identifier to the server computer in response to
detecting completion of the target action.

Appeal Br. 12 (emphasis added). Independent claim 18 recites an identical
limitation.3 Id. at 15.
The Examiner finds that the combination of Barabas and Barhydt
teaches or suggests this limitation. Final Act. 3–6. According to the
Examiner, Barabas discloses that “the server preloads the selected carrier
application with promotion codes and embeds into the particular Carrier

3 Claim 18 recites a non-transitory machine-readable medium storing a set
of instructions that, when executed by at least one processor, cause the
processor to perform the operations. Appeal Br. 15 (Claims App.).
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Application a program module . . . called ‘Program Code Generator,’ that
handles the generation, display, and storage of promotion codes.” Id. (citing
Barabas ¶¶ 71–76, Fig. 5). The Examiner determines that “[e]ach promotion
code is generated when the user operates the game application and achieves
a specified ‘difficulty level’/‘play level,’” corresponding to a specified
target action. Id. (citing Barabas ¶¶ 25, 29, 46).
The Examiner further determines that Barhydt teaches the claimed
notifications because it discloses a game application that publishes two
separate events, along with game and user information, “when the user
initiates playing the game,” which corresponds to the initiation of the target
action and when the “user finishes game application,” which corresponds to
the completion of the target action. Id. at 5–6 (citing Barhydt ¶¶ 223–229,
492–499, 526–532).
Appellant argues that Barhydt fails to “describe sending the same
unique action identifier twice where the unique action identifier is mapped to
only the target action,” and “does not show generating instructions which,
when executed, cause a same unique identifier mapped to only a target
action to be sent twice.” Appeal Br. 9 (citing Barhydt ¶¶ 212–229, 476–499,
526–532); see also Reply Br. 4. According to Appellant “[t]he fact that the
unique action identifier is mapped to only the target action adds value to the
sending of the identifier at both the initiation of the action and completion of
the action as it allows the server computer to track the actual performance of
the action from start to finish.” Id. Appellant further argues that Barabas
fails to cure the deficiencies of Barhydt because it teaches mapping an
identifier to a single action but does not teach the identifier “sent twice to
indicate performance of the action.” Even if “Barabas shows mapping a
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unique identifier only to a target action,” Appellant argues, Barhydt does not
disclose using such an identifier to be sent twice and “cannot use the ability
to distinguish between actions to identify both the starting and finishing of
an action.” Id.
The Examiner responds that Appellant’s “arguments are directed at
each reference individually,” whereas “the rejection of the actual limitations
as recited in the claims [is] based on a combination of references.” Ans. 5.
The Examiner finds that “[a]t the beginning of level 1 and the completion of
level 1 the same identifier ‘Tetris’ is published as part of the Event” in
Barhydt. Id. at 6 (citing Barhydt ¶¶ 212–229, 236–248, 492–591). The
Examiner determines that
the feature in question (i.e., sending the same unique action
identifier twice where the unique action identifier is mapped to
only the target action) is merely applying a known technique of
Barhydt (who teaches sending the same identifier at initiation of
event and at end of event, where an event may be achieving a
new game level) which is applicable to a known base
device/method of Barabas (directed towards generating [a]
‘unique promotion code’ for completing promoted actions
[targeted action] such as for achieved game level) to yield
predictable results.
Id. (emphasis added). The Examiner further determines that Barabas teaches
“generating instructions” because it discloses embedding a program module
“called a ‘Program code generator,’ into a carrier application,” which when
executed, “causes a unique promotion code to be generated upon user
performing a promoted action.” Id. at 7 (citing Barabas ¶¶ 71–76, Fig. 5).
In its Reply Brief, Appellant argues that that Barabas’s “unique code
is generated for multiple performances of the same action,” and does not
allow “for tracking across multiple devices by generating the unique action
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code which is mapped to the target action.” Reply Br. 3 (emphasis added).
That, according to Appellant “fails to allow efficient tracking across
instances of the application as the server computer must parse each unique
action identifier.” Id.
We are not persuaded that the Examiner has erred. Appellant alleges
Barhydt does not teach the claimed generation of a unique action identifier,
mapped to a target action, and sent twice, but Appellant does not address the
rejection as articulated, in which the Examiner relies on certain combined
teachings of the prior art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(“[T]he test [for obviousness] is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”); see
also In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.”).
The Examiner instead determines Barhydt teaches communicating in-
game events both at initiation and end of an event while Barabas teaches a
particular unique action identifier for the target action. Ans. 5–6. The
Examiner then finds that a person of ordinary skill in the art would have
found it obvious to “apply[] the techniques of Barhydt such that Barabas’
‘unique promotion code’ . . . may be sent twice per the reasons provided by
Barhydt (e.g., at the initiation of an event and completion of an event) for
example to determine whether a promoted action occurred (i.e., was
initiated and completed).” Ans. 6–7.
Appellant agrees that “Barabas’s method involves generating a unique
code each time an action is performed” (Reply Br. 3), but fails to sufficiently
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explain why a person of ordinary skill in the art implementing Barabas’s
code with Barhydt’s notification system would not have been motivated to
map Barabas’s code to Barhydt’s event so as to allow determining whether a
promoted action occurred, in the manner stated by the Examiner. Ans. 6–7.
As Appellant concedes, Barhydt already teaches using the “same identifier”
in form of the name of the application across those multiple messages. Id.
Under the Examiner’s determination, the combination of the two references
would simply replace the name of application with Barabas’s unique code
specific to a target action. See Barabas ¶¶ 73 (“Each promotion code is
generated when the user operates the game application and achieves a
specified play level, conclusion, score, etc.” emphasis added).
Contrary to Appellant’s assertion, there is no requirement in claim 1
that the identifier allow “for tracking across multiple devices by generating
the unique action code which is mapped to the target action.” Reply Br. 3.
We also find no error with the Examiner’s finding that Barabas
teaches the “generating instructions” limitation of claim 1. Barabas teaches
program code generator that is embedded into a carrier application by a
server. Barabas ¶¶ 72–73, Fig. 3. Barabas further discloses that the carrier
application may be downloaded over the internet. Id. ¶ 21.
Claim 1 further recites “in response to the second notification
containing the particular unique device identifier and the unique action
identifier and identification of the particular unique device identifier and
particular unique action identifier in the click table, determining
performance of the target action to which the particular unique action
identifier is registered.” Appeal Br. 13. Independent claim 18 recites an
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identical limitation. Id. at 15. The Examiner finds that Willhoit teaches this
limitation. Final Act. 11–12 (citing Willhoit, 7:1–61, Fig. 1); Ans. 9–11.
Appellant argues that “in claim 1, the system determines performance
of a target action based on two factors: 1) a received notification includes a
unique device identifier and unique action identifier, and 2) the unique
device identifier and unique action identifier are stored in the click table,”
and that Willhoit fails to teach such a determination. Appeal Br. 10; Reply
Br. 1, 2. Appellant asserts that “an action is deemed to have been completed
when [Willhoit’s] system receives an ‘end’ event.” Appeal Br. 10.
According to Appellant, “Willhoit’s determination is thus based on the
receipt of an ‘end’ event and not on a unique action and device identifier
being received when both are currently stored in a click table.” Id.; Reply
Br. 2.
The Examiner finds that Willhoit teaches storing events in a persistent
data store, indexed so that other applications and components can easily
access such events 123 for various purposes. Ans. 10 (citing Willhoit, 6:60–
67). Examiner further finds that Willhoit discloses “determin[ing] the time
elapsed between a ‘start’ event 123 relating to the start of a process by one
of the services 106 and an ‘end’ event 123 associated with the process,” and
that determination teaches determining the performance of an action as
claimed. Id. at 10–11 (citing Willhoit, 7:1–61, Fig. 1). Specifically, the
Examiner finds that in Willhoit, “once an ‘end’ event 123 associated with
respective identifiers is received from a service 106, then the persistent data
store 129a is examined to find a corresponding ‘start’ event 123 associated
with the same identifier(s) as the ‘end’ event 123.” Id. at 11 (citing Willhoit,
10:10–12).
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We are not persuaded of Examiner error. Appellant’s argument is
undermined by the statement in Willhoit: “once an ‘end’ event 123
associated with respective identifiers is received from a service 106, then the
persistent data store 129a is examined to find a corresponding ‘start’ event
123 associated with the same identifier(s) as the ‘end’ event 123.” Willhoit,
7:27–32 (emphasis added). Willhoit further discloses that the events 123 are
stored in the persistent database and are “indexed according to the identifiers
associated with the events 123, the timestamps associated with the events
123, or other information.” Id., 6:60–67. Willhoit therefore teaches making
a determination of the time duration (and therefore the completion) of an
event in response to receiving an end notification which includes an
identifier that is the same as a stored identifier from a start notification in a
click table.
Contrary to Appellant’s contention that “for an event to be determined
to be completed in Willhoit, the only requirement is the receipt of the end
event, not the previous existence of the start event” (Reply Br. 2), Willhoit
expressly discloses how its system matches up end events with start events
under the various possible scenarios. Id., 7:36–8:28. For example, it
discloses tracking start events for which no end event has been received and
taking appropriate action. Id.; 7:45–49 (e.g., incrementing a count or “some
other action may be taken”). Moreover, the fact that Willhoit discloses
contingencies to accommodate notifications lost due to system malfunction
is irrelevant given its teaching of the claim limitation as discussed above.
Thus, we agree with the Examiner that Willhoit teaches or suggests
“in response to the second notification containing the particular unique
device identifier and the unique action identifier and identification of the
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particular unique device identifier and particular unique action identifier in
the click table, determining performance of the target action to which the
particular unique action identifier is registered,” as recited in claims 1.
Accordingly, we are not persuaded of error in the Examiner’s
obviousness determination as to claim 1. Because Appellant does not
separately argue the Examiner’s rejections of independent claim 18, or of
dependent claims 3, 5–7, 9, 21–23, 25, and 26 (see Appeal Br. 11), we
sustain the Examiner’s obviousness rejections of those claims as well.
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1, 3, 5–7, 9, 18, 21–23, 25, and 26.
Claims
Rejected
Statute References Affirmed Reversed
1, 6, 7,
18, 22, 23
§ 103 (a) Barabas, Barhydt, Mehta,
Bradley, Willhoit
1, 6, 7,
18, 22, 23

9, 25 § 103 (a) Barabas, Barhydt, Mehta,
Bradley, Willhoit, Olson
9, 25
3, 26 § 103 (a) Barabas, Barhydt, Mehta,
Bradley, Willhoit, Patterson
3, 26
5, 21 § 103 (a) Barabas, Barhydt, Mehta,
Bradley, Willhoit, Gluck
5, 21
Overall
Outcome
1, 3, 5–7,
9, 18, 21–
23, 25, 26

AFFIRMED
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TIME TO RESPOND
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.
§ 1.36(a)(1)(iv).