2019003271 (P.T.A.B. May. 27, 2020)

Tong, Linda et al.

Patent Trials and Appeals BoardMay 27, 2020

2019003271 (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. Appeal 2019-003271 Application 13/198,809 2 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; Appeal 2019-003271 Application 13/198,809 3 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 Appeal 2019-003271 Application 13/198,809 4 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 Appeal 2019-003271 Application 13/198,809 5 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. Appeal 2019-003271 Application 13/198,809 6 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.). Appeal 2019-003271 Application 13/198,809 7 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 Appeal 2019-003271 Application 13/198,809 8 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 Appeal 2019-003271 Application 13/198,809 9 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 Appeal 2019-003271 Application 13/198,809 10 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 Appeal 2019-003271 Application 13/198,809 11 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). Appeal 2019-003271 Application 13/198,809 12 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 Appeal 2019-003271 Application 13/198,809 13 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 Appeal 2019-003271 Application 13/198,809 14 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).