Paula Buzzard

Patent Trials and Appeals Board

Dec 27, 2019

14319162 - (D) (P.T.A.B. Dec. 27, 2019)

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.
14/319,162 06/30/2014 Paula Buzzard 328-OMR-04-2008 4719
86548 7590 12/27/2019
Garlick & Markison (IH)
100 Congress Avenue, Suite 2000
Austin, TX 78701
EXAMINER
WOLDEMARIAM, NEGA
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
12/27/2019 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):
MMurdock@TEXASPATENTS.COM
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAULA BUZZARD
____________________

Appeal 2018-003092
Application 14/319,162
Technology Center 2400
____________________

BEFORE JAMES R. HUGHES, JENNIFER S. BISK, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2016). Appellant identifies
iHeartMedia Management Services, Inc. as the real party in interest. Appeal
Br. 2.
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Application 14/319,162

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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to
“providing access to a user-specific homepage.” Claim 1. The Specification
describes a system wherein a server computer system may provide a first
interface to the user, at the user’s computer, the first interface having a field
for entering a telephone number of the mobile device to receive the ringtone.
Spec. ¶ 5. After the mobile telephone number has been received by the
server computer system, a password is generated and sent to the mobile
device. Spec. ¶ 5. The user is instructed to enter the password into a second
interface presented at the user’s computer. Spec. ¶ 5. In a disclosed
embodiment, if the user does not enter the password at the user’s computer
within a predetermined period of time after the password was sent to the
mobile device, a follow-up message is sent to the user’s mobile device from
the server. Spec. ¶ 14. Alternatively, if the user had previously registered
with the website, a cookie included on the user’s computer may serve as a
login with login information of the user. Spec. ¶ 36.
Claim 1 is exemplary of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A computer-based method of providing access to a user-
specific homepage, comprising:
transmitting a phone number interface to a user computer
in response to receiving an indication that a download selector
has been activated;
receiving, from the phone number interface, an identifier
associated with a mobile device;
transmitting a password to the mobile device associated
with the identifier in response to the identifier associated with
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the mobile device being received from the phone number
interface;
determining whether the password transmitted to the
mobile device has been used to complete registration of a user
within a predetermined amount of time from transmission of the
password to the mobile device;
if the password has been used to complete registration of
the user within the predetermined amount of time, providing the
user access to the user-specific homepage; and
if the predetermined amount of time has expired prior to
the password being used to complete registration of the user,
transmitting a follow-up message to the mobile device.

The Examiner’s Rejections
1. Claims 1, 8, and 15 stand rejected under the doctrine of
nonstatutory obviousness-type double patenting over the claims of U.S.
Patent No. 8,769,652 B2 (issued July 1, 2014).2 Ans. 3–6.

2 In the Final Office Action, the Examiner provides a response to
Appellant’s arguments regarding the double patenting rejection and finds the
arguments “not persuasive.” Final Act. 2. However, no other formal
statement of rejection under the doctrine of obviousness-type double
patenting appears in the Final Office Action. We note that independent
claims 1, 8, and 15 were rejected under the doctrine of obviousness-type
double patenting in a Non-Final Office Action, mailed November 19, 2015
(see pages 4–7). It appears that the Examiner has maintained this rejection,
finding Appellant’s arguments not persuasive. See Final Office Action,
mailed May 20, 2016 (see pages 2–3) and Non-Final Office Action, mailed
September 9, 2016 (see page 2). Appellant provides arguments regarding
the rejection under the doctrine of obviousness-type double patenting of
claims 1, 8, and 15 and does not otherwise state being prejudiced as a result
of the Examiner not including a formal statement of rejection under the
doctrine of obviousness-type double patenting in the Final Office Action.
See Appeal Br. 6–10. Accordingly, we consider the rejection of claims 1, 8,
and 15 to stand rejected under the doctrine of nonstatutory obviousness-type
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2. Claims 1–20 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Yohai-Giochais (US 2008/0307317 A1; Dec. 11,
2008) and Kefford et al. (US 2003/0204726 A1; Oct. 30, 2003) (“Kefford”).
Final Act. 4–9.

ANALYSIS3
Obviousness-type Double Patenting Rejection
Appellant disputes the Examiner’s conclusion that pending claims 1,
8, and 15 are not patentably distinct from the claims of U.S. Patent No.
8,769,652 (“the ’652 Patent”). Appeal Br. 6–10. In particular, Appellant
asserts that claim 1 of the ’652 Patent recites transmitting a second interface
from the computer server, whereas claim 1 of the instant application does
not include a commensurate limitation. Appeal Br. 9. Further, Appellant
argues claim 1 of the instant application recites “if the predetermined
amount of time has expired prior to the password being used to complete
registration of the user, transmit a follow-up message to the mobile device,”
whereas claim 1 of the ’652 Patent does not. Appeal Br. 9. Appellant

double patenting over the claims of U.S. Patent No. 8,769,652. We remind
the Examiner, however, of the requirements for a Final Rejection to “repeat
or state all grounds of rejection then considered applicable to the claims in
the application, clearly stating the reasons in support thereof.” 37 C.F.R.
§ 1.113(b).
3 Throughout this Decision, we have considered the Appeal Brief, filed
July 6, 2017 (“Appeal Br.”); the Supplemental Appeal Brief, filed August 3,
2017 (“Supp. Appeal Br.”); the Reply Brief, filed January 30, 2018 (“Reply
Br.”); the Examiner’s Answer, mailed November 30, 2017 (“Ans.”); and the
Final Office Action, mailed February 27, 2017 (“Final Act.”), from which
this Appeal is taken.
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advances similar arguments regarding claims 8 and 15 of the instant
application. See Appeal Br. 9–10.
“[D]ouble patenting is determined by analysis of the claims as a
whole.” Carman Indus., Inc. v. Wahl, 724 F.2d 932, 940 (Fed. Cir. 1983)
(internal quotation and citations omitted). In particular, “it is important to
bear in mind that comparison can be made only with what invention is
claimed in the earlier patent, paying careful attention to the rules of claim
interpretation to determine what invention a claim defines and not looking to
the claim for anything that happens to be mentioned in it as though it were a
prior art reference.” Gen. Foods Corp. v. Studiengesellschaft Kohle mbH,
972 F.2d 1272, 1280 (Fed. Cir. 1992).
Here, we find that the claims of the ’652 patent define a method for
registering a user at a server (i.e., providing access to a register-user web
site). This is similar to the pending claims, which define a method for
providing access to a user-specific homepage. We conclude that the claims
of the ’652 patent and those of the pending application are not patentably
distinct. As compared to independent claim 1 of the pending application, we
note that the method of claim 1 of the ’652 patent also requires
(i) transmitting a phone number interface to a user; (ii) receiving an
identifier (e.g., phone number) associated with a mobile device, as supplied
in the first interface); (iii) transmitting a password to the mobile device;
(iv) determining that the user has used the password to complete registering
access within a predetermined period of time; and (v) providing access to the
registered-user web site. Moreover, claim 7 of the ’652 patent, which
depends from claim 1, recites “receiving the password from the mobile
device is performed after transmitting a follow-up message from the server
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computer system to the mobile device if the password is not received within
the predetermined period of time.”
Thus, we do not find Appellant’s arguments persuasive of Examiner
error. That the claims of a reference patent are narrower (i.e., the claims
recite an additional limitation, such as transmitting a second interface) than
the pending application is of no moment in an obviousness-type double
patenting analysis. See In re Berg, 140 F.3d 1428, 1432 (Fed. Cir. 1998)
(describing the so-called “one-way” test in determining obviousness-type
double patenting as “if the scope of the application and the patent claims is
not identical, the court must ask whether the former defines merely an
obvious variation of the latter”). Further, as described above, the invention
defined by the claims of the ’652 patent include, inter alia, the transmission
of a follow-up message to the mobile device if a predetermined amount of
time has expired prior to the password being used to complete registration of
the user. See 35 U.S.C. § 112(d) (“A claim in dependent form shall be
construed to incorporate by reference all the limitations of the claim to
which it refers.”).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 1 under the doctrine of obviousness-type double patenting. For
similar reasons, we also sustain the Examiner’s rejection of independent
claims 8 and 15 under the doctrine of obviousness-type double patenting.

Rejection under pre-AIA 35 U.S.C. § 103(a)
Appellant disputes the Examiner’s finding that Kefford teaches, inter
alia, “determining whether the password transmitted to the mobile device
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has been used to complete registration of a user within a predetermined
amount of time from transmission of the password to the mobile device,” as
recited in claim 1. Appeal Br. 12–16; Reply Br. 4–5. In particular,
Appellant asserts Kefford’s disclosure of regenerating authentication replies
that could have been generated within the past 60 seconds does not teach
whether a password transmitted to a mobile device has been used within a
predefined time period (e.g., 60 seconds) to complete registration of a user.
Appeal Br. 14 (citing Kefford ¶ 47); Reply Br. 4–5.
We begin our analysis with a brief review of the relevant example
described in Kefford. Kefford generally relates to the “secure transmission
of information” by employing multi-level authentication techniques.
Kefford ¶¶ 2, 7, 11–13, 17–18. Figure 4 of Kefford is illustrative and is
reproduced below:

Figure 4 of Kefford shows a block diagram of the disclosed system for
providing a secure transmission of information. Kefford ¶¶ 23, 38. As
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shown, the system comprises a client (402) (e.g., a user’s computer), an
information server (404), an authentication server (408), and the user’s
mobile device (406). Kefford ¶ 38. In a disclosed scenario, client (402)
may send a request (502) to information server (404). Kefford ¶ 40.
Kefford describes the request (502) may be a request for information (e.g., a
one-time password (OTP) or request for access to a web site). Kefford ¶ 29.
The request (502) may include the request, a unique ID (e.g., to identify a
mobile device), and an encryption key. Kefford ¶¶ 12, 40. In addition to the
information request (502) to information server (404), client (402) sends an
authentication request (504) to authentication server (408). Kefford ¶ 41.
Authentication request (504) contains an authentication request, unique ID,
and an encryption key. Kefford ¶ 41. Authentication server (408) generates
an encrypted authentication reply. Kefford ¶ 43. Authentication server
(408) sends the encrypted authentication reply (512) to the user’s mobile
device (406). Kefford ¶ 43. The mobile device (406) may then transmit the
received encrypted authentication reply (514) to the client (402). Kefford
¶ 44. Client (402) is able to decrypt the encrypted authentication reply using
the encryption key. Kefford ¶ 45. After the authentication reply has been
decrypted, client (402) may send the decrypted authentication reply (518)
(along with a unique ID) to information server (404). Kefford ¶ 45. Kefford
discloses that information server (404) “checks to make sure that the end
user is who he says he is.” Kefford ¶ 45. To perform this verification,
information server (404) sends the received decrypted authentication reply
(520) (with a unique ID) to authentication server (408). Kefford teaches that
authentication server (408) can verify the authentication reply sent from
information server (404) (which was sent to the information server (404) by
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client (402)) by comparing the authentication reply with either a saved copy
of the authentication reply (that was previously generated by authentication
server (408)) or by regenerating the authentication reply. Kefford ¶¶ 45–47.
In the scenario where authentication server (408) regenerates the
authentication reply, Kefford teaches authentication server (406) can
regenerate all authentication replies it could have produced within a defined
time period (i.e., the previous 60 seconds). Kefford ¶ 47. Authentication
server (406) sends a response (524) to information server (404) indicating
whether the authentication reply sent from information server (404) was
valid. Kefford ¶ 48. If the authentication reply is valid, information server
(404) will provide (message 528) client (402) with the information originally
requested in information request (502). Kefford ¶ 52.
Thus, Kefford teaches the requested information (e.g., request for
access to a website) is provided after the user has been authenticated.
Kefford’s description of regenerating an authentication reply within 60
seconds of the originally generated authentication reply is not based on
whether a password sent to a user’s mobile device was used to complete
registration of a user within a predetermined amount of time as claimed.
Rather, as described above, Kefford teaches sending an encrypted user
authentication reply to the mobile device. The mobile device provides the
encrypted authentication reply to the client, where it is decrypted. The
decrypted authentication reply is sent from the client to the information
server, which additionally sends the decrypted authentication reply to the
authentication server for verification. Kefford teaches if the decrypted
authentication reply is received from the information server by the
authentication within a predetermined amount of time (e.g., 60 seconds), the
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authentication server may be able to regenerate the authentication reply for
verification purposes. We agree with Appellant that decrypting an encrypted
authentication reply at the client does not teach that completion of the
registration process by a user within a predetermined period of time. As
described by Kefford, a user would be able to complete the registration
process (i.e., the original request for access to a web site) only after the user
has been authenticated.
Because we find it dispositive that the Examiner has not shown by a
preponderance of evidence that Kefford teaches or reasonably suggests the
claimed determination that a password sent to a mobile device has been used
to complete registration of a user within a predetermined period of time, we
do not address other issues raised by Appellant’s arguments related to these
claims. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984) (finding an administrative agency is at liberty to reach a decision
based on “a single dispositive issue”).
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner’s rejection under pre-AIA
35 U.S.C. § 103(a) of independent claim 1. For similar reasons, we do not
sustain the Examiner’s rejection under pre-AIA 35 U.S.C. § 103(a) of
independent claims 8 and 15, which recite commensurate limitations. In
addition, we do not sustain the Examiner’s rejection under pre-AIA
35 U.S.C. § 103(a) of claims 2–7, 9–14, and 16–20, which depend directly
or indirectly therefrom.

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CONCLUSION
We affirm the Examiner’s decision rejecting claims 1, 8, and 15 under
the doctrine of obviousness-type double patenting.
We reverse the Examiner’s decision rejecting claims 1–20 under pre-
AIA 35 U.S.C. § 103(a).

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 8, 15 Obviousness-type
Double Patenting
1, 8, 15
1–20 103(a) Yohai-Giochais,
Kefford
1–20
Overall
Outcome
1, 8, 15 2–7, 9–
14, 16–20

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.
§ 41.50(f).

AFFIRMED IN PART