Pavan Kumar. Vitthaladevuni et al.Download PDFPatent Trials and Appeals BoardNov 4, 201914446821 - (D) (P.T.A.B. Nov. 4, 2019) 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. 14/446,821 07/30/2014 Pavan Kumar Vitthaladevuni QLXX.P1029US/1000195750 2280 15757 7590 11/04/2019 Qualcomm /Norton Rose Fulbright US LLP 2200 Ross Avenue Suite 3600 Dallas, TX 75201-7932 EXAMINER PATEL, HITESHKUMAR R ART UNIT PAPER NUMBER 2441 NOTIFICATION DATE DELIVERY MODE 11/04/2019 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): doipdocket@nortonrosefulbright.com ocpat_uspto@qualcomm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte PAVAN KUMAR VITTHALADEVUNI, YINIAN MAO, PUNYASLOK PURKAYASTHA, and FATIH ULUPINAR1 ________________ Appeal 2018-003254 Application 14/446,821 Technology Center 2400 ________________ Before BRADLEY W. BAUMEISTER, ERIC B. CHEN, and KARA L. SZPONDOWSKI, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–8, 10–24, and 26–42. Appeal Br. 7–27.2 These claims stand rejected under various combinations of 35 U.S.C. §§ 112(b), 101, and 103. Final Act. 2–43. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as QUALCOMM Incorporated. Appeal Brief filed November 8, 2017 (“Appeal Br.”), 2. 2 The Examiner indicates that claims 11–13, 27, 28, 36, 37, and 41 are allowable. Final Action mailed July 31, 2017 (“Final Act.”), 2. Appeal 2018-003254 Application 14/446,821 2 CLAIMED SUBJECT MATTER A data transport accelerator is a computer component that accelerates the delivery of content, such as audio, video, or image data, over communication networks. Spec ¶ 1. Appellant describes the state of the transport-accelerator art as follows: Various techniques have been developed for providing acceleration with respect to the delivery of content using an implementation of a transport accelerator. Such transport accelerator implementations may, for example, operate to provide caching of data, processing of data requests and/or responses to data requests, etc. in an effort to facilitate expedited delivery of data to a client device. Although providing expedited delivery of data to client devices in some or even many situations, many transport accelerator implementations nevertheless result in undesirable operation in some situations. For example, operation of a transport accelerator can result in increased network congestion, incompatibilities with communication protocols or portions thereof, etc. Id. ¶ 6. Appellant describes the present invention as follows: Systems and methods [that] are adapted to provide selective transport accelerator operation are disclosed. In operation according to embodiments, one or more functions of transport accelerator operation is selectively bypassed or not based upon particular criteria. Transport accelerator control logic may obtain one or more acceleration selection attributes and, based on the one or more acceleration selection attributes, selectively invoke first functionality of transport accelerator logic of a client device to obtain the content from the content server or bypassing the first functionality of the transport accelerator logic of the client device to obtain the content from the content server. The first functionality may comprise subdividing the user agent’s request for content into a plurality of chunk requests for requesting chunks of the content from the Appeal 2018-003254 Application 14/446,821 3 content server to provide accelerated delivery of the content to the client device. Abstract. STANDARD OF REVIEW We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). THE SECTION 101 REJECTION Claims 1–8, 10–24, and 26–42 stand rejected under 35 U.S.C. § 101 as being directed to a judicial exception to patent-eligible subject matter without significantly more. Final Act. 6–9. Claim 1, reproduced below with formatting modified for clarity and emphasis added to indicate the language that is directed to an abstract idea, illustrates the claimed invention: 1. A method comprising: [i] obtaining, by transport accelerator (TA) control logic of a client device, one or more acceleration selection attributes comprising: an attribute of a content server, wherein the attribute of the content server comprises at least one of: byte range request support by the content server; request forbidden by the content server; request range not-satisfiable by the content server; or a response code provided by the content server determined to be indicative of whether the content server supports transport acceleration operation; Appeal 2018-003254 Application 14/446,821 4 [ii] determining, based on the one or more acceleration selection attributes obtained by the TA control logic of the client device, whether to bypass first functionality of transport accelerator (TA) logic of the client device to obtain content from the content server, the first functionality of the TA logic of the client device comprising subdividing a user agent’s request for the content into a plurality of chunk requests for requesting chunks of the content from the content server to provide accelerated delivery of the content to the client device; and [iii] in response to the determining, based on the one or more acceleration selection attributes obtained by the TA control logic of the client device[,] whether to bypass the first functionality of the TA logic of the client device to obtain the content from the content server: bypassing the first functionality of the TA logic of the client device to obtain the content from the content server; or invoking, the first functionality of the TA logic of the client device to obtain the content from the content server. The Basis of Rejection The Examiner finds that claim 1 is directed to the abstract idea of performing mental processes and that the additional claim elements, considered both individually and as an ordered combination, do not add significantly more to the abstract idea. Final Act. 9. Principles of Law A. SECTION 101: An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and Appeal 2018-003254 Application 14/446,821 5 abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-step framework, described in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75– 77). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Court held that “a claim drawn to subject matter otherwise statutory does not Appeal 2018-003254 Application 14/446,821 6 become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. at 191 (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. B. USPTO SECTION 101 GUIDANCE: In January 2019, the United States Patent and Trademark Office (“USPTO”) published revised guidance on the application of 35 U.S.C. § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) updated by USPTO, October 2019 Update: Subject Appeal 2018-003254 Application 14/446,821 7 Matter Eligibility (available at https://www.uspto.gov/sites/default/files/ documents/peg_oct_2019_update.pdf) (jointly referred to as “the 2019 Guidance”); see also October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the availability of the October update). Under the 2019 Guidance, we first look to whether the claim recites the following: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)). 2019 Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Guidance, 84 Fed. Reg. at 56. Appeal 2018-003254 Application 14/446,821 8 Contentions and Analysis STEP 2A, PRONG 1: Under step 2A, prong 1, of the 2019 Guidance, we first look to whether the claim recites any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes). 2019 Guidance, 84 Fed. Reg. at 52–54. The Examiner concludes that the limitations of claim 1 are analogous to the patent-ineligible steps of collecting information, analyzing it, and displaying certain results. Final Act. 6–8 (citing, inter alia, Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). We agree with the Examiner that claim 1 recites patent-ineligible subject matter. Limitation [ii] of claim 1, for example, recites the following language: determining . . . whether to bypass first functionality of transport accelerator (TA) logic of the client device to obtain content from the content server, the first functionality of the TA logic of the client device comprising subdividing a user agent’s request for the content into a plurality of chunk requests for requesting chunks of the content from the content server to provide accelerated delivery of the content to the client device. A person can determine, in her mind, whether to invoke or bypass an optional functionality provided by a machine (e.g., a computer). As such, the recited act of determining whether to invoke or bypass computer functionality—as opposed to the claim’s later-recited acts of actually invoking or bypassing the functionality—reasonably can be characterized as involving mental processes including evaluation and judgment. The 2019 Guidance expressly recognizes mental processes as constituting a patent-ineligible abstract idea. 2019 Guidance, 84 Fed. Reg. Appeal 2018-003254 Application 14/446,821 9 at 52. Accordingly, limitation [ii] reasonably can be characterized as reciting a patent-ineligible abstract idea. Thus, this language of limitation [ii] reasonably can be characterized as reciting a judicial exception to patent-eligible subject matter under step 2A, prong 1, of the 2019 Guidance. STEP 2A, PRONG 2: Under step 2A, prong 2, of the 2019 Guidance, we next analyze whether claim 1 recites additional elements that integrate the judicial exception into a practical application. 2019 Guidance, 84 Fed. Reg. at 53– 55. The Examiner determines that claim 1 merely recites steps that entail (1) collecting information and (2) analyzing or comparing this information. The Examiner reasons that claim 1, then, is similar to claims that the courts have found to be directed to patent-ineligible subject matter. See Final Act. 8 (citing, e.g., Elec. Power Grp., 830 F.3d 1350 (Fed. Cir. 2016) for the proposition that collecting information, analyzing it, and displaying certain results of the collection and analysis constitute patent-ineligible subject matter); see also Elec. Power Grp., 830 F.3d at 1351 (explaining that the patents at issue in that case merely “describe[d] and claim[ed] systems and methods for performing real-time performance monitoring of an electric power grid by collecting data from multiple data sources, analyzing the data, and displaying the results”); id. at 1355 (“The claims at issue do not require any nonconventional computer, network, or display components, or even a ‘non-conventional and non-generic arrangement of known, conventional pieces,’ but merely call for performance of the claimed information Appeal 2018-003254 Application 14/446,821 10 collection, analysis, and display functions ‘on a set of generic computer components’ and display devices.”). As noted above in our discussion of step 2A, prong 1, of the 2019 Guidance, much of claim 1’s limitation [ii] reasonably can be characterized as reciting the abstract idea of performing mental processes. However, limitation [ii] additionally recites that the determining step is “based on the one or more acceleration selection attributes obtained by the TA control logic of the client device.” Reading claim 1 as a whole, the fact that limitation [i] recites that the acceleration selection attributes are obtained by the transport accelerator control logic of the client device, coupled with the fact that limitation [iii] requires that the TA control logic is what either bypasses or invokes the first functionality of the TA logic, it is reasonably clear that claim 1 requires, more particularly, that the TA control logic is what performs step [ii]’s determination of whether to bypass or invoke the TA logic’s first functionality. That is, we construe limitation [ii] under the broadest reasonable interpretation as setting forth an additional element beyond the abstract idea: the TA control logic of the client device that performs the determining step. We next consider the issue, then, of whether the steps of the TA control logic obtaining acceleration selection attributes and determining whether to bypass or invoke the TA logic’s first functionality integrate the judicial exception into a practical application. Appellant asserts that “retrieval of content over a network is a problem that does not exist outside of the realm of networks and the Internet” and that “the claims of the present application provide a solution Appeal 2018-003254 Application 14/446,821 11 rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” Appeal Br. 17. In support of this assertion, Appellant points out that technical problems existed with known transport acceleration technology for delivering data over computer networks. Id. at 17–18 (citing, e.g., Spec. ¶ 6), and Appellant argues that the present invention, as claimed, provides improvements to transport- acceleration technology: To overcome the above-identified problems, the present application provides a technical solution where a client device is provided with TA control logic that is configured to selectively invoke a first functionality of TA logic of a client device, or bypass the first functionality of the TA logic of the client device such that the first functionality of the TA logic is bypassed when it would result in one or more of the above-identified problem situations. Id. at 18 (citing Spec. ¶¶ 43–52). As noted in the preceding analysis under step 2A, prong 1, the Examiner, in contrast, determines that the steps of claim 1 are analogous to the patent-ineligible steps of collecting information, analyzing, it, and displaying certain results. Final Act. 6–8 (citing, inter alia, Elec. Power Grp.). With respect to the additional-elements inquiry of step 2A, prong 2, the Examiner further asserts that the final step of either bypassing or invoking the first functionality of the TA logic merely constitutes a generic computer function that was a well-understood, routine, and conventional activity previously known to the pertinent industry. Id. at 8. We disagree with the Examiner’s determinations at least because the holding of Electric Power Group is narrower than the Examiner interprets it to be. Electric Power Group addressed a situation in which the techniques for gathering and analyzing the particular data already were conventional: Appeal 2018-003254 Application 14/446,821 12 The claims in this case do not even require a new source or type of information, or new techniques for analyzing it. As a result, they do not require an arguably inventive set of components or methods, such as measurement devices or techniques, that would generate new data. They do not invoke any assertedly inventive programming. Elec. Power Grp., 830 F.3d at 1355 (citations omitted). The Federal Circuit found the claims at issue there to be patent ineligible because those claims merely recited data handling steps that were performable by mental processes: Information as such is an intangible. Accordingly, we have treated collecting information, including when limited to a particular content (which does not change its character as information), as within the realm of abstract ideas. In a similar vein, we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category. And we have recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis. Id. at 1353–54 (citations omitted). “[M]erely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas.” Id. at 1355. As such, the relevant question on appeal is not whether the Examiner is correct in finding that the use of data transport accelerators was conventional. Appellant acknowledges that their use was conventional. Spec. ¶ 6. The question before us is, instead, whether the particularly claimed computer functionality for gathering information about the content Appeal 2018-003254 Application 14/446,821 13 server’s acceleration selection attributes and the claimed functionality for making determinations of whether to invoke or bypass known accelerators (“the gathering and bypass-determination functionalities”) also were conventional, or, alternatively, whether these claimed functionalities constitute an improvement in computer functionality. The Examiner provides insufficient reasoning or evidence to support the determination that adding the gathering and bypass-determination functionalities to the conventional TA logic still merely amounts to conventional computer technology. See Elec. Power Grp., 830 F.3d at 1354 (instructing that we must distinguish between claims in which the focus is on improvements in computers as tools and claims that focus on using existing computers as tools in aid of processes that focus on abstract ideas). Instead, Appellant’s Specification provides evidence that claim 1 is directed to an improvement in the functioning of a computer or the technical field of data transport acceleration. 2019 Guidance, 84 Fed. Reg. at 53–54; MPEP § 2106.05(a). More specifically, Appellant’s Specification provides evidence that the claimed computer contains new capabilities for gathering information about the content server’s acceleration selection attributes and for making determinations of whether to invoke or bypass transport- accelerator functionality. See, e.g., Spec. ¶¶ 43–57. As Appellant explains in the Specification, such selective bypassing of transport accelerator operation functionality avoids undesirable operations, such as increased network congestion, incompatibilities with communication protocols or portions thereof, and failure to result in expedited delivery of data to the client device. Spec. ¶¶ 6, 40. Appeal 2018-003254 Application 14/446,821 14 Accordingly, the Examiner has not established that claim 1 fails to integrate the recited abstract ideas into a practical application within the meaning of the 2019 Guidance. 2019 Guidance, 84 Fed. Reg. at 53–55. This determination is dispositive of the patent-eligibility analysis, so we need not perform any further analysis under step 2B of the 2019 Guidance or step 2 of the Alice framework. For these reasons, we do not sustain the rejection under 35 U.S.C. § 101 of claim 1 for being directed to patent-ineligible subject matter, the rejection of independent claims 17, 31, and 39, which recite similar limitations, or the rejection of claims 1–8, 10–16, 18–24, 26–30, 32–38, and 40–42, which depend from these claims.3 THE SECTION 112(b) REJECTION Claims 2–7, 10, 18–23, 26, 32–36, and 40 stand rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out 3 We wish to underscore that our decision reversing the rejection under § 101 does not hinge merely on the fact that claim 1 recites that a computer performs the determining step. We could foresee hypothetical situations in which a claim recites a method that entails using a computer to determine whether to invoke or bypass the first functionality, but in which the claim is drafted in more general terms that omit, for example, any specifics regarding (1) the functionality by which the computer gathers the requisite data or (2) how the computer ultimately determines whether to invoke or bypass the TA logic. In such hypothetical scenarios, it well could be that the recitation of the computer is so generic as to be insufficient either to integrate the abstract idea into a practical application or to constitute significantly more than an abstract idea. Appeal 2018-003254 Application 14/446,821 15 and distinctly claim the subject matter that the inventor regards as the invention. Final Act. 3–5.4 Claims 2–4, 18–20, and 32 THE REJECTION AND CONTENTIONS: Dependent claim 2 recites “[t]he method of claim 1, wherein the method further comprises: invoking second functionality of the TA logic of the client device when bypassing the first functionality of the TA logic.” The Examiner determines that “[it is] unclear if the body of [the] claim limitation would [meet] this condition of bypassing if [the E]xaminer elects in claim 1 invoking the first functionality of the TA logic rather th[a]n bypasses.” Final Act. 3 (emphasis omitted). The Examiner further finds that claims 3, 4, 18–20, and 32 recite similar limitations and rejects these claims under the same rationale. Id. Appellant argues in response, in claims 2, 18, and 32[,] it is clear that the second functionality of the TA logic is invoked when bypassing the first functionality of the TA logic. With regard to a condition in which the bypassing is not implemented, claim 1 from which claim 2 depends recites “bypassing the first functionality of the TA logic of the client device to obtain the content from the content server” or “invoking, the first functionality of the TA logic of the content device to obtain the content from the content server.” . . . It can readily be appreciated from the language of the claims that both embodiments which do (see e.g., paragraph 0041 and Figure 1A) and do not (see e.g., paragraphs 0041 and 0045 and Figure 1B) 4 The heading of the indefiniteness rejection does not include claim 40 within the listing of the rejected claims. Final Act. 3. However, the Examiner includes claim 40 along with the substantive discussion of the rejection in relation to claims 10 and 26. Id. at 5. Accordingly, we understand the omission of claim 40 from the heading’s listing of claims to be a harmless clerical error. Appeal 2018-003254 Application 14/446,821 16 invoke the second functionality when the first functionality is bypassed are encompassed. Appeal Br. 7–8. ANALYSIS: We understand the Examiner’s position to be that it is not reasonably clear whether the metes and bounds of claim 2 include invoking the second functionality of the TA logic of the client device in the event that the first functionality of the TA logic is invoked rather than bypassed. We disagree with the Examiner’s determination. We, instead, agree with Appellant that the metes and bounds of claim 2 are not unclear. See In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (explaining that language in a claim is unclear if it is “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention”). Claim 2 conditions the invoking of the second functionality to “when bypassing the first functionality.” Reading claims 1 and 2 in combination, it is reasonably clear that claim 2 effectively recites in response to the determining . . . whether to bypass the first functionality of the TA logic of the client device to obtain the content from the content server: [a] bypassing the first functionality of the TA logic of the client device to obtain the content from the content server [and invoking second functionality of the TA logic of the client device]; or [b] invoking, the first functionality of the TA logic of the client device to obtain the content from the content server. We see no reason why claim 2, in further limiting claim 1’s scope by additionally reciting a second step that must occur when the first functionality is bypassed, somehow produces an ambiguity in claim 1’s Appeal 2018-003254 Application 14/446,821 17 alternative step of invoking the first functionality, which claim 2 does not address or limit at all. We, therefore, do not sustain the indefiniteness rejection of claims 2– 4, 18–20, and 32. Claims 5, 21, and 33 THE REJECTION AND CONTENTIONS: Claim 5 recites “[t]he method of claim 1, wherein bypassing the first functionality of the TA logic comprises: routing data to bypass a functional block of the TA logic providing the first functionality of the TA logic.” The Examiner determines that “[i]t’s unclear if the body of [the] claim limitation would [meet] this condition of bypassing if [E]xaminer elects in claim 1 invoking the first functionality of the TA logic rather th[a]n bypasses.” Final Act. 3–4 (emphasis omitted). The Examiner rejects claims 21 and 33 as indefinite under the same rationale. Appellant argues that [i]t can readily be appreciated from the language of the claims that the first functionality of the TA logic would be invoked if not bypassed and thus “routing data to bypass” the first functional block would not be implemented under [the alternative condition of invoking the first functionality] (see e.g., paragraph 0045). Appeal Br. 9. ANALYSIS: Appellant’s arguments are persuasive. Accordingly, we do not sustain the indefiniteness rejection of claims 5, 21, and 33. Appeal 2018-003254 Application 14/446,821 18 Claims 6, 22, and 34 THE REJECTION AND CONTENTIONS: Claim 6 recites “[t]he method of claim 1, wherein bypassing the first functionality of the TA logic comprises: controlling a functional block of the TA logic providing the first functionality of the TA logic to forego providing the first functionality with respect to at least one request for content.” Similar to claim 5, the Examiner determines that it would be unclear if the bypassing condition of claim 6 is applicable to the condition of claim 1 wherein the first functionality is invoked. Final Act. 4. The Examiner bases the indefiniteness rejection of claims 22 and 34 on this same rationale. Id. Appellant argues that “[i]t can readily be appreciated from the language of the claims that the first functionality of the TA logic would be invoked if not bypassed and thus controlling the first functional block ‘to forego providing the first functionality’ would not be implemented under this condition (see e.g., paragraph 0045).” Appeal Br. 10. ANALYSIS: Appellant’s arguments are persuasive. Accordingly, we do not sustain the indefiniteness rejection of claims 6, 22, and 34. Claims 7, 23, and 35 THE REJECTION AND CONTENTIONS: Claim 7 depends from claim 6 and further recites wherein the controlling a functional block of the TA logic to forego the first functionality of the TA logic with respect to at least one request for content when the first functionality of the TA logic is bypassed comprises: providing by the TA control logic an advisory parameter not to chunk the at least one request for content. Appeal 2018-003254 Application 14/446,821 19 The Examiner determines that it is unclear if the bypassing condition of claim 7 is applicable to the condition of claim 1 in which the first functionality is invoked. Final Act. 4. The Examiner bases the indefiniteness rejection of claims 23 and 35 on this same rationale. Id. Appellant argues, as follows: There is nothing unclear in the language of claim 7 with regard to whether bypassing is or is not invoked in light of the features set forth in the body of claim 7 clearly and unequivocally referring to “the controlling a functional block of the TA logic to forego the first functionality . . . when the first functionality of the TA logic is bypassed.” Appeal Br. 10. ANALYSIS: Appellant’s arguments are persuasive. Accordingly, we do not sustain the indefiniteness rejection of claims 7, 23, and 35. Claims 10, 26, and 40 THE REJECTION AND CONTENTIONS: Claim 10 reads as follows: 10. The method of claim 1, wherein determining, based on the one or more acceleration selection attributes obtained by the TA control logic of the client device, whether to bypass the first functionality of the TA logic of the client device to obtain the content from the content server includes: determining whether the one or more acceleration selection attributes meet one or more criteria of an exclude list; and in response to determining that the one or more acceleration selection attributes meet the one or more criteria of the exclude list, bypassing the first functionality of the TA logic. The Examiner determines that it is unclear if the further restriction of the determining step of claim 10 is applicable to the condition of claim 1 in Appeal 2018-003254 Application 14/446,821 20 which the first functionality is invoked. Final Act. 5. The Examiner bases the indefiniteness rejection of claims 26 and 40 on this same rationale. Id. Appellant argues that [i]t can readily be appreciated from the language of the claims that “bypassing the first functionality of the TA logic” “in response to determining that the one or more acceleration selection attributes meet the one or more criteria of the exclude list” would not [cause the first functionality to be] invoked. Appeal Br. 11. ANALYSIS: Appellant’s arguments are persuasive. Accordingly, we do not sustain the indefiniteness rejection of claims 10, 26, and 40. THE SECTION 103 REJECTION Basis of the Rejections and Contentions Claims 1–8, 14–24, 29–35, 38, 39, and 42 stand rejected under 35 U.S.C. § 103(a) as obvious over Luby (US 2013/0227081 A1; published Aug. 29, 2013) and Walker (US 2014/0143375 A1; published May 22, 2014). Final Act. 10–21. Claims 10, 26, and 40 stand rejected under 35 U.S.C. § 103(a) as obvious over Luby, Walker, and Leary (US 2003/0009470 A1; published Jan. 9, 2003). Final Act. 21–23. With respect to the base rejection over Luby and Walker, the Examiner finds that Luby discloses all of the limitations of claim 1 except that Luby does not disclose any of the four recited content-server attributes of the client device’s TA control logic upon which the functionality-bypass determination is made. Final Act. 10–13. The Examiner finds that Walker Appeal 2018-003254 Application 14/446,821 21 teaches at least one of these attributes—the recited byte range request support by the content server. Id. at 13. Appellant’s Specification describes support for a byte range request as follows: In obtaining one or more acceleration selection attributes through operation to discover or probe for such acceleration selection attributes, logic of TA control 125 may operate to solicit information from which one or more acceleration selection attributes may be determined. For example, where support for transport acceleration operation by a content server is unknown, TA control logic may operate to issue a probing request whereby a response to the probing request may be analyzed to determine one or more acceleration selection attributes (e.g., suitability of the content server for transport acceleration operation). An exemplary implementation of the foregoing may comprise issuing a probing request in the form of a chunk request specifying a byte range of a sub-block of a fragment requested by a user agent. Where the content server does not support byte range requests, the response may include a block of data larger than the requested byte range (e.g., a complete file or fragment). TA control logic may analyze this response in light of the probing request to determine an acceleration selection attribute herein. Spec. ¶ 48, cited in the SUMMARY OF CLAIMED SUBJECT MATTER section of Appeal Br. 2. Returning to the Examiner’s position, the Examiner more specifically finds that Walker’s network traffic management apparatus 12 sends an HTTP head request to one of the server computing devices 16(1)–16(n) and recites the length of the content in response. Id. (citing Walker ¶¶ 31–36). In response, Appellant argues in Walker, the length of the content merely indicates a size of the content (e.g., as a number of bytes). Walker does not disclose or suggest that the length or size of the content is an attribute of a Appeal 2018-003254 Application 14/446,821 22 content server, nor does Walker disclose or suggest that the length or size of the content indicates “byte range request support by the content server,” as in claim 1. Appeal Br. 21. The Examiner determines Appellant’s argument to be unpersuasive based upon how the Examiner interprets Appellant’s Specification defines the claim term “byte range.” Examiner’s Answer mailed Dec. 27, 2017 (“Ans.”), 17 (citing Spec. ¶ 70). Analysis The portion of Appellant’s Specification that the Examiner finds to define the term “byte range” reads as follows: In operation according to the foregoing, where the content server does not support byte range requests, the first response may include information regarding conditions indicative of a failure to support transport acceleration. For example, the first response may include particular information indicating byte range requests are not supported, such as a particular status code (e.g., status code 200, not 206), a field with a particular value (e.g., accept ranges field is not set to “bytes”, content range field is present and not the same as the requested byte range, content length field is present and is larger than the byte range requested), etc. Similarly, the first response may not include particular information indicating byte range requests are not supported, such as a particular field (e.g., content range field, the server supports only HTTP1.0 and content length field is not present), etc. Thus, the response to the request may be analyzed by logic of TA control 126 to determine transport acceleration operation support by the content server. Spec. ¶ 70 (emphasis added). Contrary to the Examiner’s position, this passage does not redefine more broadly either the claim term “byte range” or “byte range request support.” Paragraph 70, instead, explains how the logic of the TA control Appeal 2018-003254 Application 14/446,821 23 determines whether the content server provides transport acceleration operation support. Id. Moreover, the Examiner does not sufficiently explain how the cited passages of Walker purportedly teach a content server that provides this claimed attribute or any of the other claimed attributes. Accordingly, the Examiner has not established a prima facie case of obviousness. We, therefore, do not sustain the obviousness rejection of independent claim 1, of independent claims 17, 31, and 39, which recite similar limitations, or of claims 2–8, 14–16, 18–24, 29, 30, 32–35, 38, and 42, which depend from these independent claims. With respect to the remaining rejection of claims 10, 26, and 40, the Examiner does not rely on the additionally cited reference, Leary, to cure the deficiency of the base rejection, noted above. Final Act. 21–23. We, therefore, do not sustain the obviousness rejection of these claims for the reasons set forth above in relation to independent claim 1. DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–8, 10–24, 26–42 101 Eligibility 1–8, 10–24, 26–42 2–7, 10, 18–23, 26, 32–36, 40 112(b) Indefiniteness 2–7, 10, 18–23, 26, 32–36, 40 1–8, 14–24, 29–35, 38, 39, 42 103(a) Luby, Walker 1–8, 14–24, 29–35, 38, 39, 42 10, 26, 40 103(a) Luby, Walker, Leary 10, 26, 40 Overall Outcome 1–8, 10–24, 26–42 Appeal 2018-003254 Application 14/446,821 24 REVERSED Copy with citationCopy as parenthetical citation