Airbnb, Inc.

Patent Trials and Appeals BoardAug 23, 2021

2020003159 (P.T.A.B. Aug. 23, 2021)

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. 14/108,128 12/16/2013 Sriakhil Gogineni 26887-25162/US 2439 146250 7590 08/23/2021 AIRBNB/FENWICK SILICON VALLEY CENTER 801 CALIFORNIA STREET MOUNTAIN VIEW, CA 94041 EXAMINER NGUYEN, MAIKHANH ART UNIT PAPER NUMBER 2176 NOTIFICATION DATE DELIVERY MODE 08/23/2021 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): FWAIRBNBPATENTS@FENWICK.COM PTOC@Fenwick.com patents@airbnb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SRIAKHIL GOGINENI _____________ Appeal 2020-003159 Application 14/108,128 Technology Center 2100 ____________ Before ST. JOHN COURTENAY III, JASON J. CHUNG, and SCOTT E. BAIN, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1–3, 6–9, 16–23, 25–27, and 31–36. Claims 4, 5, 10–15, 24, and 28–30 are canceled. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm in part. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2019). According to Appellant, the real party in interest is “Airbnb, Inc.” See Appeal Br. 2. Appeal 2020-003159 Application 14/108,128 2 STATEMENT OF THE CASE2 Introduction Appellant’s claimed subject matter relates generally to “online systems and in particular to providing third party online system assets to users.” Spec. ¶ 2. Independent Claim 1 1. A computer implemented method comprising: storing, by a first party system, a plurality of third party web page assets received from one or more third parties located at one or more third party web addresses, the plurality of third party web page assets configured to provide functionality to a web page operated by the first party system distinct from the one or more third parties; periodically sending, by a first party system, requests for the plurality of third party web page assets to the one or more third parties located at the one or more third party web addresses, the requests for the plurality of third party web page assets sent at predetermined intervals of time; receiving, by the first party system, one or more of the requested plurality of third party web page assets; responsive to receiving one or more of the requested plurality of third party web page assets, determining, by the first party system, a hash value for each of the received third party web page assets; determining, by the first party system, whether one or more of the received third party assets differs from a stored version of that third party web page asset by comparing 2 We herein refer to the Final Office Action, mailed August 29, 2019 (“Final Act.”); Appeal Brief, filed January 2, 2020 (“Appeal Br.”); the Examiner’s Answer, mailed February 5, 2020 (“Ans.”), and the Reply Brief, filed March 24, 2020 (“Reply Br.”). Appeal 2020-003159 Application 14/108,128 3 the determined hash value of an asset to a hash value of a stored version of the asset; and responsive to determining that one or more of the received third party assets differ from a stored version of that third party web page asset: [L1] determining, relative to a last request of the periodically sent requests, whether a requested third party web page asset of the last request is not received after a first threshold amount of time, and [L2] responsive to determining that the requested third party web page asset of the last request is not received after the first threshold amount of time: [L3] merging the received third party web page assets of the last request and a stored version of the third party web page asset that was not received into a merge file, and [L4] storing, at a web address other than the third parties web addresses and other than a web address of the first party system, the second merge file, the web address accessible to clients requesting the web page operated by the first party system. Appeal Br. 13–14 (disputed limitations L1, L2, L3, and L4 emphasized). Appeal 2020-003159 Application 14/108,128 4 Prior Art Evidence The prior art relied upon by the Examiner as evidence is: Name Reference Date Malcolm et al. US 6,128,701 Oct. 3, 2000 Crow et al. US 6,442,651 B2 Aug. 27, 2002 Zheng et al. NFS (Network File System) flow control method of UDP (User Datagram Protocol) protocol Jun. 16, 2010 Hall, III et al. US 7,870,089 B1 Jan. 11, 2011 Wei US 2011/0044354 A1 Feb. 24, 2011 Joel et al. US 2013/0041946 A1 Feb. 14, 2013 Seshadri et al. (“Seshadri”) US 2013/0318208 A1 Nov. 28, 2013 Singh et al. US 8,880,635 B1 Nov. 4, 2014 Appeal 2020-003159 Application 14/108,128 5 Table of Rejections The rejections before us on appeal are: Rej. Claims Rejected 35 U.S.C. § Reference(s)/Basis A 1–3, 6, 7, 16–18, 21–23, 25, 26 103 Seshadri, Hall, Singh, Joel B 31, 33, 35 103 Seshadri, Hall, Singh, Joel, Crow C 8, 27 103 Seshadri, Hall, Singh, Joel, Zheng D 9, 19, 20 103 Seshadri, Hall, Singh, Joel, Wei E 32, 34, 36 103 Seshadri, Hall, Singh, Joel, Malcolm ISSUES AND ANALYSIS We have considered all of Appellant’s arguments and any evidence presented. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are forfeited or waived.3 See, e.g., 37 C.F.R. § 41.37(c)(1)(iv). Throughout this opinion, 3 See In re Google Technology Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020) (some internal citation omitted): It is well established that “[w]aiver is different from forfeiture.” United States v. Olano, 507 U.S. 725, 733 (1993). “Whereas forfeiture is the failure to make the timely assertion of a right, waiver is the ‘intentional relinquishment or abandonment of a known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464 (1938)) (additional citations omitted). The two scenarios can have different consequences for challenges raised on appeal, id. at 733–34, and for that reason, it is worth attending to which label is the right one in a particular case. Appeal 2020-003159 Application 14/108,128 6 we give the claim limitations the broadest reasonable interpretation (BRI) consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We highlight and address specific findings and arguments for emphasis in our analysis below. Rejection A under 35 U.S.C. § 103 of Representative Claim 1 In the Appeal Brief, Appellant argues, inter alia: “There is no disclosure in the cited references to merge third party web page assets in this manner.” Appeal Br. 11, last paragraph, lines 5–6. Appellant’s arguments present the following issues: Issues: Under § 103, has the Examiner erred by finding that Seshadri, Hall, Singh, and Joel would have collectively taught or suggested the disputed dispositive limitations L3 (“merging . . . a merge file”) and L4 (“the second merge file”) of claim 1? [L1] determining, relative to a last request of the periodically sent requests, whether a requested third party web page asset of the last request is not received after a first threshold amount of time, and [L2] responsive to determining that the requested third party web page asset of the last request is not received after the first threshold amount of time: [L3] merging the received third party web page assets of the last request and a stored version of the third party web page asset that was not received into a merge file, and [L4] storing, at a web address other than the third parties web addresses and other than a web address of the first party system, the second merge file, the web address Appeal 2020-003159 Application 14/108,128 7 accessible to clients requesting the web page operated by the first party system. Claim 1 (bracketing and emphasis added). Based upon our review of the evidence cited by the Examiner, we find Appellant’s argument is supported by a preponderance of the evidence regarding the claim 1 “merging . . . a merge file” and “second merge file” limitations L3 and L4, respectively. See Claim 1: “merging the received third party web page assets of the last request and a stored version of the third party web page asset that was not received into a merge file, and “storing . . . the second merge file . . . .” The Examiner generally maps claim 1 limitation L3 (“merging the received third party web page assets of the last request and a stored version of the third party web page asset that was not received into a merge file”) to Joel, Figure 5 and paragraph 83. The Examiner generally maps claim 1 limitation L4 (“storing . . . the second merge file . . . .”) to Seshadri at paragraph 57, lines 7–10, which describes: “The web crawling based on the crawl seed data identifies at 508 other web pages (and resources) for which manifests may be created or updated, and stored by the proxy device 104,” as cited by the Examiner on page 4 of the Final Action. The Examiner also cumulatively maps limitation L4 to Joel, at Figures 1 and 5 and paragraph 84, lines 5–7. See Final Act. 7. However, in reviewing the portions of Seshadri and Joel cited by the Examiner, we find the Examiner has not fully developed the record to clearly show how the argued claim 1 “merging . . . a merge file” and “the Appeal 2020-003159 Application 14/108,128 8 second merge file” limitations L3 and L4, respectively are being read on the corresponding features found in Seshadri and/or Joel. 4 Nevertheless, we agree with the Examiner (Ans. 7–8) that the disputed limitations L3 and L4 of claim 1 are conditional limitations that may never be reached within the scope of method claim 1 in the alternative case in which it is determined that relative to a last request of the periodically sent requests, a requested third party web page asset of the last request IS received BEFORE a first threshold amount of time. See Claim 1, cf. with “determining” limitation L1 (“is not received after a first threshold amount of time”).5 Applying the precedential guidance of Schulhauser to method claim 1, the Examiner need not present evidence of the obviousness of the disputed conditional method steps L3 and L4 because they are not required to be 4 The mapping rule specifically requires: “When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.” 37 C.F.R. §1.104(c)(2) (emphasis added). 5 See Ex parte Schulhauser et al., Appeal No. 2013-007847, 2016 WL 6277792, at *9 (PTAB, Apr. 28, 2016) (precedential) (holding “The Examiner did not need to present evidence of the obviousness of the remaining method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim”); see also Ex parte Katz, Appeal No. 2010-006083, 2011 WL 514314, at *4–5 (BPAI Jan. 27, 2011). Appeal 2020-003159 Application 14/108,128 9 performed under the broadest reasonable interpretation of independent method claim 1.6 Therefore, on this record, and based upon a preponderance of the evidence, we find unavailing Appellant’s arguments regarding the disputed conditional limitations L3 and L4 of method claim 1. Nor do we find Appellant’s additional arguments applicable to limitations L1 and L2 persuasive, because we find limitations L1 and L2 are at least suggested by the Examiner’s citation to Singh at column 8, lines 64–67: “If the requested resource is not available and/or a threshold period of time has passed and the resource has not been provided, the search engine may provide user device the cached version of the requested resource.” Moreover, for method claim 1, the “responsive to” limitation L2 will not be performed if the condition precedent “determining” limitation L1 is not satisfied. Accordingly, in light of the binding authority of Schulhauser, we sustain the Examiner’s 35 U.S.C. § 103 Rejection A of independent method claim 1 over the cited collective teachings of Seshadri, Hall, Singh, and Joel. Claims 2, 3, 6–9, 31, and 32 variously and ultimately depend from claim 1. The respective rejections of these dependent claims were not argued separately by Appellant. Arguments not timely made are forfeited. 6 See, also e.g., Applera Corp. v. Illumina, Inc., 375 Fed. App’x. 12, 21 (Fed. Cir. 2010) (unpublished) (affirming a district court’s interpretation of a method claim as including a step that need not be practiced if the condition for practicing the step is not met); Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc., 243 Fed. App’x. 603, 607 (Fed. Cir. 2007) (unpublished) (“It is of course true that method steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.”). Appeal 2020-003159 Application 14/108,128 10 See Google Technology, 980 F.3d at 862; see also 37 C.F.R. § 41.37(c)(1)(iv). Rejection A of Independent Claims 16 and 21 In contrast to our discussion above, we particularly note that independent claims 16 and 21 are not “method” claims that fall under Schulhauser’s controlling precedent. But each of independent claims 16 and 21 recite limitations L3 and L4 of claim 1 using similar language. Because Schulhauser is inapplicable to independent claims 16 and 21, and because we have found supra that the Examiner has not fully developed the record to show how the argued “merging . . . a merge file” and “second merge file” limitations L3 and L4 (of claim 1, respectively) are being read on the corresponding features found in Seshadri and/or Joel, we are constrained on this record to reverse the Examiner’s rejection A of independent claims 16 and 21, and the associated rejections of all claims that depend thereon. ADDITIONAL ISSUE In the Reply Brief, Appellant argues that the Examiner’s new reliance upon Schulhauser in the Answer (6–7) is a new ground of rejection. See Reply Brief 3–4. However, our review of the record indicates that Appellant did not file a petition under 37 C.F.R. § 1.181(a) within two months from the mailing of the Examiner’s Answer requesting that a ground of rejection set forth in the Answer be designated as a new ground of rejection: Appeal 2020-003159 Application 14/108,128 11 If appellant believes that an examiner’s answer contains a new ground of rejection not identified as such, appellant may file a petition under 37 CFR 1.181(a) within two months from the mailing of the examiner’s answer requesting that a ground of rejection set forth in the answer be designated as a new ground of rejection. Any such petition must set forth a detailed explanation as to why the ground of rejection set forth in the answer constitutes a new ground of rejection. Any allegation that an examiner’s answer contains a new ground of rejection not identified as such is waived if not timely raised (i.e., by filing the petition within two months of the answer) by way of a petition under 37 CFR 1.181(a). MPEP §1207.03(IV). Therefore, on this record, we find Appellant has forfeited any argument that the Examiner’s Answer contains a new ground of rejection, because Appellant did not file a petition under 37 C.F.R. § 1.181(a) within two months from the mailing date of the Examiner’s Answer. CONCLUSIONS Based upon our application of the controlling conditional limitation rule of Schulhauser to the method claims on appeal, the Examiner did not err in rejecting method claims 1–3, 6–9, 31, and 32 over the cited combinations of references. However, because Schulhauser is inapplicable to the remaining non- method claims on appeal, for essentially the same reasons argued by Appellant regarding limitations L3 and L4 of claim 1 (as similarly recited in independent claims 16 and 21), as further discussed above, we find the Examiner erred in rejecting claims 16–23, 25–27, and 33–36 over the cited combinations of references. Appeal 2020-003159 Application 14/108,128 12 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 6, 7, 16–18, 21–23, 25, 26 103 Seshadri, Hall, Singh, Joel 1–3, 6, 7, 16–18, 21–23, 25, 26 31, 33, 35 103 Seshadri, Hall, Singh, Joel, Crow 31 33, 35 8, 27 103 Seshadri, Hall, Singh, Joel, Zheng 8 27 9, 19, 20 103 Seshadri, Hall, Singh, Joel, Wei 9 19, 20 32, 34, 36 103 Seshadri, Hall, Singh, Joel, Malcolm 32 34, 36 Overall Outcome 1–3, 6–9, 31, 32 16–23, 25–27, 33–36 FINALITY AND 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)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED IN PART