HICKS, Kimberly et al.

Patent Trials and Appeals BoardJun 19, 2020

2019000452 (P.T.A.B. Jun. 19, 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. 14/149,367 01/07/2014 Kimberly HICKS 40205/05201(MTV-052) 5515 30636 7590 06/19/2020 FAY KAPLUN & MARCIN, LLP 150 BROADWAY, SUITE 702 NEW YORK, NY 10038 EXAMINER ALATA, YASSIN ART UNIT PAPER NUMBER 2426 NOTIFICATION DATE DELIVERY MODE 06/19/2020 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): mmarcin@fkmiplaw.com okaplun@fkmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KIMBERLY HICKS and DIANA GERMAN Appeal 2019-000452 Application 14/149,367 Technology Center 2400 Before ROBERT E. NAPPI, ERIC S. FRAHM, and JASON M. REPKO, Administrative Patent Judges. REPKO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. 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). Appellant identifies the real party in interest as Viacom International Inc. Appeal Br. 2. Appeal 2019-000452 Application 14/149,367 2 CLAIMED SUBJECT MATTER The application generally relates to authenticating a user to access multimedia content. See Spec. ¶ 3. Claims 1, 9, and 16 are independent. Claim 1 is reproduced below with our emphasis: 1. A method, comprising: receiving a user request for a multimedia content service from a first user device over a first application; receiving an identifier of the first user device; identifying a service provider of a user associated with the first user device and a second user device; generating an activation code associating the identifier with the service provider; transmitting the activation code to the first application on the first user device; receiving the activation code from the user over a second application on the second user device; generating an authorization indication based on the received activation code from the second application, the authorization indication allowing the first user device to be provided content from the multimedia content service; transmitting the authorization indication to the first user device; activating the multimedia content service for the first user device based on the authorization indication; and Appeal 2019-000452 Application 14/149,367 3 providing the content from the multimedia content service to the first user device over the first application. Appeal Br. 11.2 REFERENCES The Examiner relies on the references in the table below. Name Reference Date Naggar US 2013/0332838 A1 Dec. 12, 2013 Wood US 2014/0372464 A1 Dec. 18, 2014 Nesic US 2015/0180849 A1 June 25, 2015 REJECTIONS The Examiner rejects claims 1–4, 8–12, and 16–19 under 35 U.S.C. § 103 as unpatentable over Naggar and Nesic. Final 3–15. The Examiner rejects claims 5–7, 13–15, and 20 under 35 U.S.C. § 103 as unpatentable over Naggar, Nesic, and Wood. Final 16–21. OPINION I. Obviousness over Naggar and Nesic A. The Rejection In rejecting claim 1, the Examiner finds that Naggar’s service- provider network 210 transmits a code to device-registration client 510. Final 5. The Examiner finds that Naggar’s client 510 is a component of 2 Throughout this opinion, we refer to the Final Office Action (“Final”), mailed November 9, 2017; the Advisory Action (“Advisory”), mailed January 29, 2018; the Appeal Brief (“Appeal Br.”), filed March 28, 2018; the Examiner’s Answer (“Ans.”), mailed August 30, 2018; and Reply Brief (“Reply Br.”), filed October 24, 2018. Appeal 2019-000452 Application 14/149,367 4 application 405 (“first application”) on the first user device 260 (“first user device”). Id. According to the Examiner, Naggar lacks a second application and device, as recited. Id. For the limitations to the second device and code, the Examiner cites Nesic’s process for provisioning a token for an online application. Id. at 6 (citing Nesic ¶¶ 95–96, 98); see also Advisory 2 (citing Nesic ¶ 88). B. Appellant’s Arguments According to Appellant, claim 1 recites an interaction between two user devices, but Naggar’s and Nesic’s processes involve only one. Appeal Br. 4–9. Appellant argues that Nesic’s provisioning procedure uses three components, but only one is a user device. Id. at 7–8. In Appellant’s view, Nesic’s account setup is different from provisioning, and whether the setup process involves multiple user devices provides no insight about the provisioning process. Id. at 8; Reply Br. 3. Appellant argues that only Nesic’s provisioning process is “arguably relevant” to the claims. Reply Br. 3. Appellant argues that Nesic uses hardware-specific information to ensure that only one device may be used. Appeal Br. 8. Independent claims 9 and 16 recite substantially similar limitations. Id. at 9. Appellant argues the independent claims as a group. See id. (“Naggar and Nesic, taken alone or in combination, do not disclose or suggest the recitations of claims 9 and 16 for at least the reasons discussed above with regard to claim 1.”). We select claim 1 as representative of this group. See 37 C.F.R. § 41.37(c)(1)(iv). C. Analysis According to claim 1, the activation code must be (1) transmitted to a first application on a first device and (2) received from the user over a Appeal 2019-000452 Application 14/149,367 5 second application on a second device. Likewise, Nesic’s code is transmitted to a user’s mobile device 2 (“first device”) via mobile token application 2' (“first application”) and received from bank online application 3 (“second application”) by the user’s computer 2" (“second device”). Nesic ¶¶ 88, 92– 98. Figure 1, below, shows the components involved in Nesic’s process. Id. ¶ 87. Figure 1, above, shows a provisioning server 1 and mobile device 2 with mobile token application 2'. Id. ¶ 88. We agree with the Examiner that Nesic’s first use case involves two devices: personal computer 2" and mobile device 2 in Figure 1. See Final 6 (citing Nesic ¶¶ 95–96, 98); see also Advisory 2 (citing Nesic ¶ 88). As for the first device and application, Nesic teaches transmitting the activation Appeal 2019-000452 Application 14/149,367 6 code to the first application (mobile application 2') on the first user device (mobile device 2), as recited in claim 1. Nesic ¶ 95. As for the second device and application, user 4 types the activation code on an appropriate page in bank online application 3 using personal computer 2". Id. ¶¶ 88, 96. In this way, Nesic teaches receiving the activation code from the user over a second application (online application 3) on the second user device (personal computer 2"), as recited in claim 1. Appellant argues that Nesic’s provisioning involves provisioning server 1 and banking online application 3 (id. Fig. 2) or mobile-application server 1 and banking online application 3 (id. Fig. 6). Appeal Br. 7. In Appellant’s view, none are user devices. Id.; see also Reply Br. 4 (discussing Nesic Figs. 2 and 6). To the contrary, Nesic’s user 4 accesses banking online application 3 through personal computer 2". Nesic ¶ 88. Specifically, Nesic teaches that user 4 types the code on a page from bank online application 3 using their personal computer 2". Id. ¶ 96. That is, user 4 views and interacts with at least a part of bank online application 3 on personal computer 2". Id. In this way, banking online application 3 is “on” computer 2", like the recited second application on the second user device. Id. As for Nesic’s setup process, Appellant argues, With regard to setting up an account which may involve two user devices (as interpreted by the Examiner), it is respectfully submitted that the use of two user devices is immaterial to the provisioning procedure which relates only to accessing the account and which always involves only one user device. Appeal Br. 7. In Appellant’s view, Nesic’s setup process is “a preliminary step” before the provisioning feature can be implemented. Id. at 8. Appellant Appeal 2019-000452 Application 14/149,367 7 further argues that Nesic’s setup “is not pertinent to the subject matter and objective of the claims.” Id. But Appellant does not persuasively explain which limitations specifically exclude Nesic’s setup process. See id. at 7–9; Reply Br. 3. Nor does Appellant fully address the objectives of the Naggar-Nesic combination. See Appeal Br. 7–9; Reply Br. 3. Here, the Examiner modifies Naggar’s method for providing access to content from multiple providers with Nesic’s provisioning process, which is described in paragraphs 92 through 98. Final 6 (citing Nesic ¶¶ 95–96, 98); see also Advisory 2 (citing Nesic ¶ 88). Thus, Appellant’s arguments about the teaching’s materiality to the invention’s objectives (Appeal Br. 7) are unpersuasive for the additional reason that they discuss Nesic’s teachings alone without considering the objectives of Naggar and Nesic in combination. Appellant further argues that Nesic is configured to prevent a user from receiving an activation code on the mobile device and using a second token application on a desktop terminal. Appeal Br. 8. According to Appellant, Nesic ensures “that only this one device may be used is a token seed generated and encrypted based on ‘hardware specific information’ of the device on which the token application 2' was installed.” Id. (citing Nesic ¶¶ 120, 127). Appellant then concludes that “only the single user device on which the token application 2' was installed (the device that was used to request the activation code) may be used in a provisioning procedure.” Id. at 9. Nesic, though, does not state that generating the token in this way is contrary to using two devices in the process described in paragraphs 95 through 98. See Nesic ¶¶ 120, 127. Rather, Nesic explains that provisioning Appeal 2019-000452 Application 14/149,367 8 server 1 uses hardware security module 5 “to assure good randomness of the token seed.” Id. ¶ 120. In particular, Nesic encrypts the token seed in two different ways. Id. ¶ 121. The first way encrypts the token seed using a transport key derived from the hardware-specific information. Id. ¶ 122. This is used to “safely send” the token seed to the mobile token application. Id. ¶ 123. In the embodiment cited by the Examiner, Nesic sends an activation code to mobile application 2' on mobile phone 2, and user 4 sends the activation code using the computer 2". Id. ¶¶ 95–96, cited in Final 6. On this record, we are unconvinced that Nesic’s token-encryption embodiment (id. ¶ 120) undermines the Examiner’s findings about the process described in paragraphs 95 and 96. See Final 6. Thus, we sustain the Examiner’s rejection of independent claims 1, 9, and 16. We also sustain the Examiner’s rejection of dependent claims 2–4, 8, 10–12, and 17–19, which are not argued separately with particularity. See Appeal Br. 9 (“Because claims 10–12 and 17–19 depend from and include the limitations of one of these claims, it is submitted that these claims are also allowable.”). II. Obviousness over Naggar, Nesic, and Wood The Examiner rejects claims 5–7, 13–15, and 20 over Naggar, Nesic, and Wood. Final 16–21. Appellant does not separately discuss the limitations found in these claims. See Appeal Br. 9–10; Reply Br. 6. Rather, Appellant argues that Wood does not cure the deficiencies of Naggar and Nesic as to claim 1’s limitations. Appeal Br. 10; Reply Br. 5. Because Appellant has not shown any deficiencies in the rejection based on Naggar and Nesic, as discussed above, we sustain the rejections of claims 5–7, 13– 15, and 20. Supra § II. Appeal 2019-000452 Application 14/149,367 9 CONCLUSION The Examiner’s decision to reject claims 1–20 is affirmed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 8–12, 16–19 103 Naggar, Nesic 1–4, 8–12, 16–19 5–7, 13– 15, 20 103 Naggar, Nesic, Wood 5–7, 13–15, 20 Overall Outcome 1–20 TIME PERIOD FOR RESPONSE 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. § 1.136(a)(1)(iv). AFFIRMED