Comcast Cable Communications, LLC

Patent Trials and Appeals Board

Dec 2, 2021

2020005220 (P.T.A.B. Dec. 2, 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.
14/610,534 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.
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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.”).
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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,
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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).
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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
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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
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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
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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
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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.
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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”).

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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
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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).
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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