Ex Parte Aaron

Patent Trial and Appeal Board

Feb 19, 2014

10969824 (P.T.A.B. Feb. 19, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/969,824 10/21/2004 Jeffrey A. Aaron 040314 (9400-134) 4383
39072 7590 02/20/2014
AT&T Legal Department - MB
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
BROMELL, ALEXANDRIA Y
ART UNIT PAPER NUMBER
2167
MAIL DATE DELIVERY MODE
02/20/2014 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 JEFFREY A. AARON
____________

Appeal 2011-007079
Application 10/969,824
Technology Center 2100
____________

Before JAMES T. MOORE, JOHN A. JEFFERY, and DENISE M.
POTHIER, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1-3, 5-16, and 18-20. Claims 4 and 17 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

STATEMENT OF THE CASE
Appellant’s invention monitors a communications network for
“sensitive information” about a subscriber (e.g., name, social security
number, etc.) by repeatedly searching the network for that information. The
network is also intermittently searched for “obscuring information” during
the repeated searching to disguise the sensitive information that is the target
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of the repeated searching. To this end, the obscuring information can be
randomly generated, and may include information about non-existent or
“phantom” subscribers. See generally Abstract; Spec. ¶¶ 42-45. Claim 1 is
illustrative with certain disputed limitations emphasized:
1. A method for monitoring a computer network for information,
comprising:

obtaining sensitive information about a subscriber;

repeatedly providing search requests to a search engine to search the
network for the sensitive information about the subscriber;

intermittently providing search requests to the search engine to search
the network for obscuring information in-between the repeated search
requests to disguise the sensitive information, the obscuring information
comprising information different from the sensitive information about the
subscriber that is a subject of the repeated search requests;

identifying search results containing the sensitive information from
results of the repeated and intermittent search requests; and

reporting the identified search results to the subscriber.

THE REJECTIONS
The Examiner rejected claims 1, 11, and 15 under 35 U.S.C. § 103(a)
as unpatentable over O’Flaherty (US 6,275,824 B1; issued Aug. 14, 2001)
and Gailey (US 2009/0083290 A1; published Mar. 26, 2009; eff. filed Oct.
3, 2002). Ans. 4-9.1

1 Throughout this opinion, we refer to (1) the Appeal Brief filed August 30,
2010 (“App. Br.”); (2) the Examiner’s Answer mailed November 9, 2010
(“Ans.”); and (3) the Reply Brief filed January 7, 2011 (“Reply Br.”).
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Application 10/969,824

3
The Examiner rejected claims 2 and 7 under 35 U.S.C. § 103(a) as
unpatentable over O’Flaherty, Gailey, and Thune (US 2004/0181670 A1;
published Sept. 16, 2004). Ans. 9-11.
The Examiner rejected claims 3, 6, 8, 13, 16, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over O’Flaherty, Gailey, Thune, and Berson (US
6,532,459 B1; issued Mar. 11, 2003). Ans. 11-16.
The Examiner rejected claims 5, 9, 10, 12, 14, 18, and 20 under
35 U.S.C. § 103(a) as unpatentable over O’Flaherty, Gailey, and Berson.
Ans. 16-21.

THE OBVIOUSNESS REJECTION OVER O’FLAHERTY AND GAILEY
The Examiner finds that O’Flaherty teaches many of the recited
features of independent claim 1 including repeatedly providing search
requests to a search engine to search a network for sensitive information
about a subscriber and reporting search results containing the sensitive
information to the subscriber as claimed. Ans. 4-5. Although the Examiner
acknowledges that O’Flaherty does not intermittently search the network for
“obscuring information” during the repeated searching to disguise the
sensitive information, the Examiner nonetheless cites Gailey’s push service
and associated data scrubbing function as teaching this limitation in
concluding that the claim would have been obvious, particularly in view of
O’Flaherty’s providing pseudonyms to clients. Ans. 5, 22-28.
Appellant argues that the cited prior art fails to teach or suggest (1)
intermittently providing search requests for obscuring information in-
between the repeated search requests to disguise the sensitive information,
and (2) reporting identified search results containing the sensitive
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Application 10/969,824

4
information to the subscriber as claimed. App. Br. 7-10. Appellant adds
that the Examiner failed to articulate why or how to implement Gailey’s
virtual customer database (VCDB) in O’Flaherty’s system to arrive at the
claimed invention apart from conclusory assertions. Reply Br. 1-2.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that O’Flaherty and Gailey collectively would have taught or suggested (1)
repeatedly providing search requests to a search engine to search a network
for sensitive information about a subscriber; (2) intermittently providing
search requests to the search engine to search the network for obscuring
information in-between repeated search requests to disguise the sensitive
information, where the obscuring information is different from the sensitive
information, and (3) reporting identified search results containing the
sensitive information to the subscriber?

ANALYSIS
On this record, we find error in the Examiner’s obviousness rejection
of independent claim 1 for the reasons indicated by Appellant in the Appeal
Brief. App. Br. 7-10. Claim 1 recites a key temporal relationship between
the two recited types of search requests, namely that the intermittent search
requests for obscuring information are in-between the repeated search
requests for sensitive information about the subscriber. This temporal
relationship is a fundamental aspect of Appellant’s invention, for it makes it
more difficult for unauthorized third parties to ascertain information about
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5
the subscriber from the search requests or associated responses by
eavesdropping or other means. Spec. ¶ 44.
The Examiner’s reliance on Gailey is unavailing in this regard. As
shown in Figure 1, Gailey’s VCDB system 10 includes an administrator 16
that acts as an interface to deliver personalized services to a consumer,
including push and pull services. Gailey ¶¶ 0035-38. Notably, Gailey’s
administrator includes a load and scrub processing module 40 that separates
(or “scrubs”) sensitive information from non-sensitive information. Gailey
¶ 0042; Fig. 2.
Even assuming, without deciding, that Gailey’s push services that are
initiated by external events or predetermined customer preferences involve
intermittent search requests for “obscuring” or scrubbed information as the
Examiner asserts (Ans. 26 (citing Gailey ¶ 0038)), we still cannot say—nor
has the Examiner shown—that these intermittent search requests are in-
between the repeated search requests for sensitive information to disguise
the sensitive information as claimed. The Examiner’s assertion that “‘the
repeated search’ was not previously established” in claim 1 (Ans. 27) is
puzzling, for claim 1 unambiguously requires repeatedly providing search
requests for sensitive information, and intermittently providing search
requests for obscuring information in-between the repeated search requests.
The Examiner’s giving the recited intermittent search request
limitation its “broadest interpretation possible” (Ans. 27) is likewise
problematic, for the proper claim construction standard is not the broadest
possible interpretation, but rather the broadest reasonable interpretation in
light of the Specification as it would be interpreted by ordinarily skilled
artisans. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005)
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Application 10/969,824

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(en banc). In any event, to the extent that the Examiner’s position is based
on the combined O’Flaherty/Gailey system performing these intermittent
obscuring-information searches between users’ repeated searches for
sensitive information (e.g., the system performs intermittent obscuring-
information searches responsive to users’ sensitive-information search
requests),2 we find such a position untenable on this record.
Nevertheless, even if we were to accept the Examiner’s position
regarding the intermittent search limitation (which we do not for the above-
noted reasons), we still fail to see how O’Flaherty’s providing pseudonyms
to a client teaches reporting identified search results to a subscriber where
the search results contain the sensitive information as claimed. Leaving
aside the Examiner’s dubious construction of this limitation “in the broadest
possible manner” (Ans. 27; emphasis added), we still find the Examiner’s
position problematic. Because O’Flaherty’s pseudonyms are intended to
keep the client’s identification data anonymous, providing them to a client
tends to suggest that they lack sensitive information about the client as
Appellant indicates. App. Br. 9-10 (citing O’Flaherty, col. 14, ll. 45-65).
That the Examiner’s rejection also maps these pseudonyms to obscuring
information (Ans. 5)—not sensitive information—only further undermines
the Examiner’s position regarding these “search results” containing sensitive
information as claimed. Appellant’s point in this regard is well taken. App.
Br. 10.

2 Compare Ans. 5 (noting that a user may search O’Flaherty’s system for
sensitive information about a subscriber) with id. (noting that Gailey’s
system intermittently searches a network for obscuring information to
disguise or scrub the data).
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So even if the cited references are combinable as the Examiner
proposes (Ans. 5-16, 22-23), they still do not teach or suggest the disputed
limitations of claim 1. Therefore, we are constrained to find that the
Examiner erred in rejecting (1) independent claim 1, and (2) independent
claims 11 and 15 that recite commensurate limitations.3
Although independent 11 does not recite performing the intermittent
obscuring-information search between the repeated search requests as in
claims 1 and 15, claim 11 nonetheless requires a search engine that is
configured to intermittently search a network for randomly-generated
obscuring information during the repeated searching—a temporal aspect that
is likewise lacking in the cited prior art, as is the commensurate reporting
limitation for the above-noted reasons.

3 We leave it to the Examiner to determine whether the computer readable
storage medium recited in claim 15 recites patent-eligible subject matter
under § 101 in view of (1) the lack of the term “non-transitory” in the claim,
and (2) paragraph 28 of the Specification indicating that the computer-
readable medium could be paper. See Ex parte Mewherter, 107 USPQ2d
1857 (PTAB 2013) (precedential) (recited machine-readable storage medium
held ineligible under § 101 because it included transitory signals); see also
Ex parte Shealy, No. 2006-1601, 2007 WL 1196758 (BPAI 2007) (expanded
panel) (informative), available at
http://www.uspto.gov/ip/boards/bpai/decisions/inform/fd061601.pdf, at 36-
39 (holding that paper-based computer-readable media is the “classic
‘printed matter’ situation” because at least three separate steps (scanning,
compiling, and interpreting) are required before the non-functional
descriptive material can be employed as a computer component in computer
memory to become functional descriptive material).
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Application 10/969,824

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THE REMAINING OBVIOUSNESS REJECTIONS
Because the Examiner has not shown that the cited prior art cures the
deficiencies noted above regarding the independent claims, we do not
sustain the obviousness rejections of dependent claims 2, 3, 5-10, 12-14, 16,
and 18-20 (Ans. 9-21) for similar reasons. Accordingly, we need not
address Appellant’s other arguments regarding these claims.

CONCLUSION
The Examiner erred in rejecting claims 1-3, 5-16, and 18-20 under
§ 103.

ORDER
The Examiner’s decision rejecting claims 1-3, 5-16, and 18-20 is
reversed.

REVERSED

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