Ex Parte Fransen

Patent Trial and Appeal BoardMar 6, 2019

13975625 (P.T.A.B. Mar. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/975,625 08/26/2013 121363 7590 03/08/2019 Shook, Hardy & Bacon L.L.P. (Adobe Inc.) Intellectual Property Department 2555 Grand Blvd Kansas City, MO 64108 FIRST NAMED INVENTOR Peter Raymond Fransen 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 3355US01/39913.209281 3889 EXAMINER WONG,HUEN ART UNIT PAPER NUMBER 2168 NOTIFICATION DATE DELIVERY MODE 03/08/2019 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): IPDOCKET@SHB.COM IPRCDKT@SHB.COM nhensley@shb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER RAYMOND FRANSEN 1 Appeal2018-007039 Application 13/975,625 Technology Center 2100 Before CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and SCOTT RAEVSKY, Administrative Patent Judges. RAEVSKY, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's Final Rejection of claims 1, 2, 4, 5, 9, 10, 12, 17, 18, 21-24, 26, 27, and 30-34, all the pending claims in the present application (see Claims Appendix). We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Appellant names Adobe Systems Inc. as the real party in interest (App. Br. 3). Appeal2018-007039 Application 13/975,625 STATEMENT OF THE CASE Appellant's invention generally relates to tracking user interactions with a software component in an efficient manner. See Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computerized method for tracking, on a client device, one or more user interactions with a software component at least partially operating on the client device, the method comprising: receiving, from a remote server device, an analytics tracking request triggered by at least a first user interaction tracked by the client device, wherein the analytics tracking request is assigned a threshold value that is based on at least the first user interaction; incrementing on the client device, based on at least the first user interaction, a user value associated with the user, the user value being locally-stored in a file system of the client device and maintaining a sum of interaction values associated with each of at least a second user interaction tracked by the client device; determining that the locally-stored user value exceeds the threshold value that is based on at least the first user interaction; and launching, on the client device, an analytics tracking function associated with the analytics tracking request based on a determination that the locally-stored user value exceeds the threshold value that is based on at least the first user interaction. App. Br. 16 (Claims Appendix). REJECTION The Examiner made the following rejection: Claims 1, 2, 4, 5, 9, 10, 12, 17, 18, 21-24, 26, 27, and 30-34 are rejected under 35 U.S.C. Â§ I02(a)(l) as being anticipated by Florez-Larrahondo et al. (US 2012/0116590 Al, pub. May 10, 2012). Final Act. 3. 2 Appeal2018-007039 Application 13/975,625 We review the appealed rejection for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential). ANALYSIS Appellant contends that Florez-Larrahondo fails to disclose claim 1 's "receiving, from a remote server device, an analytics tracking request triggered by at least a first user interaction tracked by the client device." App. Br. 8-11 (emphasis added). Specifically, Appellant contends that "[ w ]hile the system of Florez-Larrahondo may require some interaction to set a threshold value to compare against the received sensor data, it does not make any mention of 'a user interaction' that is 'tracked by the client device."' Id. In the Answer, the Examiner relies on Florez-Larrahondo' s disclosure of "monitoring a system characteristic of interest ( e.g. temperature, power consumption, voltage, current, etc.)" for the "user interaction tracked" limitation. Ans. 7 (quoting Florez-Larrahondo ,r 52). Specifically, the Examiner finds that "[m]onitoring of [a] characteristic such as power consumption tracks user's usage (interactions) of a computing system (e.g. power consumption would be higher when a user uses a computing system more heavily)." Id. Appellant responds, "[i]n order to force a finding that this claimed feature is disclosed by the reference, the Examiner incorrectly asserts that monitoring a characteristic ( such as power consumption of a server) is tracking a user's usage of a computing system (which is clearly not the server)." Reply Br. 4. 3 Appeal2018-007039 Application 13/975,625 We agree with Appellant that monitoring a characteristic such as power consumption on a server does not disclose "a first user interaction tracked by the client device," as recited by claim 1. In particular, we note that the preamble of claim 1 clarifies that "a first user interaction tracked by the client device" involves "tracking ... one or more user interactions with a software component."2 (Emphasis added.) We find that Florez-Larrahondo' s monitoring a characteristic such as power consumption does not disclose tracking one or more user interactions with a software component. Accordingly, we do not sustain the Examiner's rejection of claim 1 and corresponding dependent claims 2, 4, 5, 9, 10, 30, and 32-34. Similarly, claim 12 recites "at least one tracked user interaction with a software component executing on a client device," and claim 18 recites both "tracking ... one or more user interactions with a software component" (preamble) and "a first user interaction that is tracked on the client device" (claim body). 3 Accordingly, we also do not sustain the Examiner's rejections of claims 12, 18, and corresponding dependent claims 17, 21-24, 26, 27, and 31. 2 We find the preamble of claim 1 to be limiting because the body of claim 1 relies on the preamble for antecedent basis (e.g., the preamble recites "a client device" and the claim body then recites "the client device"). See Catalina Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) ("[D]ependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention."). 3 We also find claim 18' s preamble limiting for similar reasons noted supra, n. 2. 4 Appeal2018-007039 Application 13/975,625 We do not reach Appellant's further allegations of error because we find the issue discussed above to be dispositive of the rejection of all the pending claims. DECISION We reverse the Examiner's rejection of claims 1, 2, 4, 5, 9, 10, 12, 17, 18, 21-24, 26, 27, and 30-34 under 35 U.S.C. Â§ 102(a)(l). REVERSED 5