Pavan Kumar. Vitthaladevuni et al.

Patent Trials and Appeals Board

Nov 4, 2019

14446821 - (D) (P.T.A.B. Nov. 4, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/446,821 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.
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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
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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;
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[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
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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
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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
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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.
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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.
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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
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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
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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:
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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
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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.
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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.
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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.
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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
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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.
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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.
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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
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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
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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
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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
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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
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REVERSED