Comcast Cable Communications, LLCDownload PDFPatent Trials and Appeals BoardDec 2, 20212020005220 (P.T.A.B. Dec. 2, 2021) Copy Citation 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. 14/610,534 01/30/2015 Nirmal Mody 26141.0189U1 9107 16000 7590 12/02/2021 Comcast c/o Ballard Spahr LLP 999 Peachtree Street, Suite 1600 Atlanta, GA 30309-4421 EXAMINER DADA, BEEMNET W ART UNIT PAPER NUMBER 2435 NOTIFICATION DATE DELIVERY MODE 12/02/2021 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): USpatentmail@ballardspahr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NIRMAL MODY and RYAN VAN ANTWERP _____________ Appeal 2020-005220 Application 14/610,534 Technology Center 2400 ____________ Before ROBERT NAPPI, ST. JOHN COURTENAY III, and JUSTIN BUSCH, 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, 2 and 4–21. Claim 3 is canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is Comcast Cable Communications, LLC. See Appeal Br. 1. Appeal 2020-005220 Application 14/610,534 2 STATEMENT OF THE CASE2 Introduction Appellant’s claimed subject matter relates generally to “[m]ethods and systems . . . whereby a server can forward a request from a device behind a NAT router to a system to determine if the request is suspicious.” (Abstract). Representative Independent Claim 1 1. A method comprising: receiving, by a device, a message comprising a device identifier; [(a)]determining, based on the device identifier, that the message is associated with a network address translation device, wherein the message originates from at least one of a plurality of computing devices located downstream of the network address translation device; determining, based on the message, that at least one computing device of the plurality of computing devices is compromised; and sending, to the network address translation device, a signal, wherein the signal causes a first process to execute on each computing device of the plurality of computing devices, [(b)]wherein the first process comprises comparing information located in a local storage of a respective computing device of the plurality of computing devices with a stored list of domains. 2 We herein refer to the Final Office Action, mailed August 5, 2019 (“Final Act.”); Appeal Brief, filed February 3, 2020 (“Appeal Br.”); the Examiner’s Answer, mailed May 14, 2020 (“Ans.”), and the Reply Brief, filed July 2, 2020 (“Reply Br.”). Appeal 2020-005220 Application 14/610,534 3 Appeal Br. 12 (Claims App.) (disputed limitations (a) and (b) bracketed and emphasized). Prior Art Evidence The prior art relied upon by the Examiner as evidence is: Name Reference Date Carothers US 2013/0232574 A1 Sept. 5, 2013 Li et al. (“Li”) US 2015/0058469 A1 Feb. 26, 2015 Rejection Claims Rejected 35 U.S.C. § Reference(s)/Basis 1, 2, 4–21 103 Carothers, Li 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 Tech. 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, Appeal 2020-005220 Application 14/610,534 4 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 have reviewed the Examiner’s rejections in light of Appellant’s contentions that the Examiner has erred. See Appeal Br. 4–10. Further, we have reviewed the Examiner’s responses to the arguments presented by Appellant. See Ans. 3–7. We also have reviewed Appellant’s responses in the Reply Brief (pp. 2–7). We disagree with Appellant’s arguments. To the extent consistent with our analysis below, we adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief.4 See Ans. 3–7. For the specific reasons discussed below, on this record we are not persuaded of error regarding the Examiner’s underlying factual findings for claims 1, 2, and 4–21 and ultimate legal conclusion of obviousness over the collective teachings and suggestions of Carothers and Li. 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. 4 See Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042 (Fed. Cir. 2017) (“As an initial matter, the PTAB was authorized to incorporate the Examiner’s findings.”); see also In re Brana, 51 F.3d 1560, 1564 n.13 (Fed. Cir. 1995) (upholding the PTAB’s findings, although it “did not expressly make any independent factual determinations or legal conclusions,” because it had expressly adopted the examiner’s findings). Appeal 2020-005220 Application 14/610,534 5 Independent Claim 1 Issues: Under 35 U.S.C. § 103, did the Examiner err by finding that the combination of Carothers and Li teaches or suggests the disputed representative claim 1 limitations (a) and (b): 1. A method comprising: receiving, by a device, a message comprising a device identifier; [(a)] determining, based on the device identifier, that the message is associated with a network address translation device, wherein the message originates from at least one of a plurality of computing devices located downstream of the network address translation device; determining, based on the message, that at least one computing device of the plurality of computing devices is compromised; and sending, to the network address translation device, a signal, wherein the signal causes a first process to execute on each computing device of the plurality of computing devices, [(b)]wherein the first process comprises comparing information located in a local storage of a respective computing device of the plurality of computing devices with a stored list of domains. Claim 1 (emphasis added regarding disputed limitations (a) and (b)). Appellant asserts that limitations (a) and (b) are not taught by the cited Carothers and Li references. Regarding limitation (a), Appellant contends that “Carothers does not even mention a NAT device or the equivalent.” Appeal Br. 4. Appellant additionally contends that “Li does not teach or suggest determining a message associated with a NAT device in which the Appeal 2020-005220 Application 14/610,534 6 message comprises a device identifier and originates from a computing device located downstream of the NAT as claimed in claim 1.” Appeal Br. 5 (emphasis added). In particular, Appellant contends: The Office Action does not even specify what portion of Li’s disclosure is alleged to be equivalent to the claimed message in claim 1. A review of Li discloses that a NAT device performs a NAT process, that a webpage comprises a NAT module, and that a web browser comprises a NAT monitor module but Li fails to teach receiving a message comprising a device identifier that originates from a computing device located downstream of the NAT or determining that the message is associated with a NAT based on the device identifier. See Li at ¶¶ [0025]-[0026]. Appeal Br. 5 (emphasis added). Claim Construction We begin our analysis with claim construction. See Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“Both anticipation under § 102 and obviousness under § 103 are two-step inquiries. The first step in both analyses is a proper construction of the claims . . . The second step in the analyses requires a comparison of the properly construed claim to the prior art.” (internal citations omitted)) (emphasis added). We focus on the argued claim terms “device identifier,” “network address translation device,” and “downstream.” Device identifier Turning to the claim term “device identifier” as recited in disputed limitation (a) of claim 1, we turn to the Specification for context and find the following description of exemplary, non-limiting embodiments: In an aspect, the one or more network devices 116 can comprise an identifier 118. As an example, one or more Appeal 2020-005220 Application 14/610,534 7 identifiers can be or relate to an Internet Protocol (IP) Address (e.g., IPv4/IPv6) or a media access control address (MAC address) or the like. As a further example, one or more identifiers 118 can be a unique identifier for facilitating communications on the physical network segment. Spec. ¶ 28 (emphasis added). Given the support found in the Specification (id.), we are not persuaded of error regarding the Examiner’s finding that an IP address can identify a network device: Li teaches a message associated with a NAT device in which the message comprises a device identifier (i.e., a NAT discovery URI [(Uniform Resource Identifier)] dereference protocol in which an IP address and Port number information is embedded in a web resource request message, paragraph 0022). [The] Examiner would point out that Carothers teaches [a] message originating from a computing device located downstream of a NAT device (i.e., figure 2, back and forth communication (data flow upstream/downstream) between infected PC 210 and DNS server 220). Ans. 4. Network address translation device (NAT) Applying a broad but reasonable interpretation, we conclude the scope of the claimed “network address translation device” (NAT) encompasses a generic network router. Our claim interpretation is fully consistent with Appellant’s Specification, at paragraph 1: “The server is unable to inform the user of the issue because the identity of the remote client is hidden (for example, by a Network Address Translation (NAT) router).” We also agree with the Examiner that “Carothers teaches [a] Domain Name System (DNS) server [figure 1, unit 120], which translates domain names to IP addresses Appeal 2020-005220 Application 14/610,534 8 and therefore a DNS server is equivalent to a NAT device [see paragraph 0029].” Ans. 3. Given our claim construction, and on this record, we are not persuaded of error regarding the Examiner’s finding that Li, at paragraphs 25 and 26, teaches or suggests the first disputed portion of limitation (a) of claim 1: “determining, based on the device identifier, that the message is associated with a network address translation device.” See Final Act. 5. Downstream We next focus our analysis on the argued language: “wherein the message originates from a computing device located downstream of the NAT,” corresponding to (but not verbatim) the “wherein” clause of limitation (a) of claim 1: [(a)] determining, based on the device identifier, that the message is associated with a network address translation device, wherein the message originates from at least one of a plurality of computing devices located downstream of the network address translation device; Appeal Br. 12 (emphasis added). We observe that several structural elements are recited in claim 1 to establish the environment in which the steps or acts of the method are performed: i.e., comprising “a device,” “a network address translation device,” “at least one of a plurality of computing devices [that are] located downstream of the network address translation device” and “a local storage of a respective computing device of the plurality of computing devices.” Claim 1. Appellant’s arguments in the Briefs generally attempt to distinguish method claim 1 in terms of a claimed structural arrangement that is Appeal 2020-005220 Application 14/610,534 9 purportedly not taught or suggested by the combination of Carothers and Li, as found by the Examiner. However, we conclude the aforementioned structural claim terms recited in method claim 1 are broad in terms of arrangement. Even though the terms “client” and “server” are found in the Specification, claim 1 is silent regarding any language that would limit any of the aforementioned claimed structural elements to being located on the client side, or on the server side. And remaining independent method claims 10 and 14 recite similar language of even broader scope than the disputed limitations (a) and (b) of independent claim 1. We note that all claims 1, 2, and 4–21 on appeal are method claims. We construe the claim 1 language “downstream of the network address translation device” broadly, because as claimed, we conclude the “plurality of computing devices” could be a plurality of server devices, or a plurality of client devices, which are located “downstream” from a NAT device. It is a matter of perspective — “downstream” from what other device? Therefore, we construe the claim 1 term “downstream” under BRI as a term of degree. We emphasize that remaining independent method claims 10 and 14 are even broader than claim 1 in terms of a specific structural arrangement of the environment in which the method steps or acts are performed. Notably, remaining independent claims 10 and 14 are silent regarding any mention of “downstream.” Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention. See Interval Licensing LLC v. AOL Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014); see, e.g., Eibel Process Co. v. Appeal 2020-005220 Application 14/610,534 10 Minnesota & Ontario Paper Co., 261 U.S. 45, 65–66 (1923) (finding “substantial pitch” sufficiently definite because one skilled in the art “had no difficulty . . . in determining what was the substantial pitch needed” to practice the invention). But claim terms of degree “necessarily call for a comparison against some baseline.” Liberty Ammunition, Inc., v. U.S., 835 F.3d 1388, 1395 (Fed. Cir. 2016). The Supreme Court guides that a patent does not satisfy the definiteness requirement of § 112 merely because “a court can ascribe some meaning to a patent’s claims.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 911 (2014). Rather, the claims, when read in light of the Specification and the prosecution history, must provide objective boundaries for those of skill in the art. See id.; Interval Licensing, 766 F.3d at 1370–71. Although we do not conclude that the claim 1 term “downstream” is indefinite, we nevertheless conclude it is broad.5 Given our claim construction above, and the absence of any “client” and/or “server” terms recited in claim 1 (or in any other claims on appeal), on this record we are not persuaded of error regarding the Examiner’s findings pertaining to the disputed “wherein” clause portion of limitation (a) of claim 1: i.e., that “Carothers teaches [a] message originating from a computing device located downstream of a NAT device (i.e., figure 2, back and forth communication (data flow upstream/downstream) between infected PC 210 and DNS server 5 “Breadth is not indefiniteness.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005) (citing In re Gardner, 427 F.2d 786, 788 (CCPA 1970). The fact that a claim is broad does not mean that it is indefinite, that is, undue breadth is not indefiniteness. In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977); In re Miller, 441 F.2d 689, 693 (CCPA 1971); see MPEP § 2173.04 (“Breadth Is Not Indefiniteness”). Appeal 2020-005220 Application 14/610,534 11 220).” Ans. 3–4. We emphasize that Li is relied upon to teach the NAT at paragraphs 25 and 26. See Final Act. 5 (emphasis added). Therefore, on this record, we are not persuaded of error regarding the Examiner’s finding that Carothers in combination with Li (at paragraphs 25, 26, and 29–31) teaches or suggest the “wherein” clause portion of limitation (a) of claim 1: “wherein the message originates from at least one of a plurality of computing devices located downstream of the network address translation device;” (emphasis added). See Final Act. 5. Accordingly, on this record, we are not persuaded that the Examiner’s claim interpretation is overly broad, unreasonable, or inconsistent with the Specification. Given our claim construction above, on this record we are not persuaded the Examiner erred regarding disputed limitation (a) of claim 1. Similarly, because claim 1 is silent regarding any language that would limit any of the aforementioned claimed structural elements (including the “local storage” of “wherein” limitation (b)) to being arranged on the client side, or the server side, we are not persuaded of error regarding the Examiner’s finding that Carothers (in combination with Li) teaches or suggests “wherein” clause limitation (b) as claimed: “wherein the first process comprises comparing information located in a local storage of a respective computing device of the plurality of computing devices with a stored list of domains.” See Final Act. 5. Similar to our discussion above regarding the claim term “downstream” we also conclude that “local” storage is a term of degree — i.e., “local” to what other structural claim element? Moreover, Appellant does not provide evidence sufficient to demonstrate that combining the teachings of Carothers and Li, as found by Appeal 2020-005220 Application 14/610,534 12 the Examiner (Final Act. 5), would have been “uniquely challenging or difficult for one of ordinary skill in the art,” (Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)), nor has Appellant provided any objective evidence of secondary considerations, which our reviewing court guides “operates as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).6 For at least the aforementioned reasons, on this record, and based upon a preponderance of the evidence, we do not find persuasive Appellant’s arguments alleging that the Examiner has improperly combined the references under § 103. See Appeal Br. 9–11; see also Reply Br. 6–7. With respect to the obviousness of the claims before us on appeal, we emphasize that “the question under 35 USC 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (emphasis added) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also Manual of Patent Examining Procedure § 2123 (9th Ed., Rev 10.2019 (June 2020)). To the extent that the scope of any claims on appeal is being construed broader by the Examiner or the Board than the interpretation imputed by Appellant’s arguments in the Briefs, we emphasize that, because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re 6 See Evidence Appendix (Appeal Br. 16) (“Evidence by Appellant pursuant to 37 C.F.R. §§ 1.130, 1.131, or 1.132: None.”) (emphasis added). Appeal 2020-005220 Application 14/610,534 13 ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). Therefore, on this record, and based upon a preponderance of the evidence, we are not persuaded of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness for representative independent claim 1 over the collective teachings and suggestions of Carothers and Li. Grouped claims 2 and 4–21 (not argued separately) fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). CONCLUSION The Examiner did not err with respect to the obviousness rejection of claims 1, 2, and 4–21 over the collective teachings and suggestions of Carothers and Li, and we affirm the rejection. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–21 103 Carothers, Li 1, 2, 4–21 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)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation