T-Mobile USA, Inc.

Patent Trials and Appeals Board

Sep 14, 2021

2020003165 (P.T.A.B. Sep. 14, 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.
14/091,533 11/27/2013 Ruchir SINHA TM2 - 0275US 1302
132935 7590 09/14/2021
Lee & Hayes, P.C./ T-Mobile
601 W. Riverside Avenue
Suite 1400
Spokane, WA 99201
EXAMINER
BOUSTANY, JIHAD KAMAL
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
09/14/2021 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):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RUCHIR SINHA
_____________

Appeal 2020-003165
Application 14/091,533
Technology Center 2400
____________

Before MAHSHID D. SAADAT, ST. JOHN COURTENAY III, and
JOHNNY A. KUMAR, 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, 4, 5, 16, 17, 20, 24, 25, and 27–38. Claims 2, 3, 6–15, 18, 19,
21–23, and 26 are canceled. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2019). According to Appellant, the real party in interest
is “T-Mobile USA, Inc., of Bellevue, Washington, US.” Appeal Br. 3.
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STATEMENT OF THE CASE2
Introduction
Appellant’s claimed subject matter relates generally to “ascertaining
tethering of a device in a communication network.” Spec. ¶ 8. As
described by Appellant, “[w]ireless devices that are configured to
communicate with a wireless network may also be configured to allow other
devices to communicate with the wireless network via the wireless device.
This is often called ‘tethering.’” Spec. ¶ 1.
Representative Independent Claim 1
1. A computer implemented method, comprising:
receiving, by a network server of a network, one or more
communications via a wireless device connected to the
network, wherein the one or more communications
indicate first screen resolution information about a
computing device that browsed a webpage;
deriving, by the network server, the first screen resolution
information from the one or more communications;
identifying, by the network server, a specification
associated with the wireless device that is stored in a
database that includes information about wireless devices
registered with the network, wherein the specification
indicates second screen resolution information associated
with the wireless device;
[L1] determining, by the network server, that the first
screen resolution information about the computing device
derived from the one or more communications does not
match the second screen resolution information

2 We herein refer to the Final Office Action, mailed September 19, 2019
(“Final Act.”); Appeal Brief, filed December 11, 2020 (“Appeal Br.”); the
Examiner’s Answer, mailed January 29, 2020 (“Ans.”), and the Reply Brief,
filed March 23, 2020 (“Reply Br.”).
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associated with the wireless device indicated in the
specification, based on cross referencing the first screen
resolution information derived from the one or more
communications against the second screen resolution
information indicated by the specification identified in the
database;
[L2] ascertaining, by the network server, a tethering
arrangement under which the wireless device is providing
access to the network to the computing device via
tethering, based on determining that the first screen
resolution information about the computing device does
not match the second screen resolution information
associated with the wireless device; and
[L3] sending, by the network server, a notification to the
wireless device indicating that the tethering arrangement
has been detected.

Appeal Br. 28–29 (disputed limitations L1, L2, and L3 emphasized).
Prior Art Evidence
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Nowak US 2004/0203854 A1 Oct. 14, 2004
Panidepu et al.
(“Panidepu”)
US 2012/0254402 A1 Oct. 4, 2012
Schmidt et al.
(“Schmidt”)
US 2013/0007192 A1 Jan. 3, 2013
Kersch et al.
(“Kersch”)
US 2014/0317278 A1 Oct. 23, 2014
Tran et al.
(“Tran”)
US 8,943,554 B2 Jan. 27, 2015

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Table of Rejections
The rejections before us on appeal are:
Rej. Claims
Rejected
35 U.S.C. § Reference(s)/Basis
A 1, 4, 5, 24,
27, 31, 34,
35
103

Kersch, Nowak, Tran
B 16, 17, 20,
32, 33, 36,
37, 38
103

Kersch, Panidepu, Tran
C 25, 28 103

Kersch, Nowak, Tran, Panidepu
D 29, 30 103 Kersch, Nowak, Tran, Schmidt

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,
we give the claim limitations the broadest reasonable interpretation (BRI)

3 See In re Google Technology Holdings LLC, 980 F.3d 858, 862 (Fed. Cir.
2020) (some internal citation omitted) (alteration in original):
It is well established that “[w]aiver is different from forfeiture.”
United States v. Olano, 507 U.S. 725, 733 (1993). “Whereas
forfeiture is the failure to make the timely assertion of a right,
waiver is the ‘intentional relinquishment or abandonment of a
known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464
(1938)) (additional citations omitted). The two scenarios can
have different consequences for challenges raised on appeal, id.
at 733–34, and for that reason, it is worth attending to which label
is the right one in a particular case.
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consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). We highlight and address specific findings and arguments
for emphasis in our analysis below.

Rejection A under 35 U.S.C. § 103 of Representative Claim 1
Appellant’s arguments present the following issues on appeal:
Issues: Under § 103, has the Examiner erred by finding that Kersch,
Nowak, and Tran would have collectively taught or suggested the disputed
limitations L1 (“determining”), L2 (“ascertaining”), and L3 (“sending”) of
representative claim 1?

[L1] determining, by the network server, that the first
screen resolution information about the computing device
derived from the one or more communications does not
match the second screen resolution information associated
with the wireless device indicated in the specification,
based on cross referencing the first screen resolution
information derived from the one or more communications
against the second screen resolution information
indicated by the specification identified in the database;
[L2] ascertaining, by the network server, a tethering
arrangement under which the wireless device is providing
access to the network to the computing device via
tethering, based on determining that the first screen
resolution information about the computing device does
not match the second screen resolution information
associated with the wireless device; and
[L3] sending, by the network server, a notification to the
wireless device indicating that the tethering arrangement
has been detected.
Claim 1 (bracketing and emphasis added).
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The Examiner maps claim 1 limitation L1 (“determining”) to Kersch
at paragraphs 19, 42, and 43. The Examiner similarly maps claim 1
limitation L2 (“ascertaining”) to Kersch at paragraphs 42 and 43. The
Examiner maps claim 1 limitation L3 (“sending”) to Tran at column 7, lines
7–22. See Final Act. 7–9.
The Examiner finds an artisan would have been motivated to
take the teachings of Nowak related to including screen
dimension information as identifying device information in an
HTTP request and apply them to the teachings of Kersch for the
purpose of including identifying information within web traffic .
. . [such that] identifying information may further be used to
categorize devices based upon the web page formats they visit
(mobile or desktop).
See Final Act. 8–9.
Appellant contends:
Kersch ultimately detects tethering if a device category mapped
to a flow is a device category that is not allowed to connect to a
network, or if a device category mapped to one flow is different
than a device category mapped to a second flow. (Kersch,
paragraphs [0037] and [0043]). Neither of these situations
involve determining that screen resolution information indicated
in communications received via a wireless device “does not
match” screen resolution information in a database specification
of the wireless device, as claim 1 recites.
Appeal Br. 15.
Appellant further argues:
As an example, Kersch describes a situation in which tethering
can be detected when a PC (element 60-1) is tethered to a
wireless device (element 50-1), and a flow received by the
network via the wireless device is mapped to a PC device
category that is not allowed to connect to the network. (Kersch,
paragraph [0043] and FIG. 3). In this example, even if screen
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resolution information within the flow (as allegedly taught by
Nowak) helps Kersch to map the flow to the PC device category,
the system's detection of the tethering would be based “directly
from the indicated device category” because the PC device
category is a disallowed device category. (Id., emphasis added).

Id.
Appellant urges:
Here, the proposed combination's tethering detection would not
be based on determining that screen resolution information from
the flow “does not match” screen resolution information
associated with the wireless device, as claim 1 recites. In this
example, a specification or device category of a wireless device
(providing tethering to the PC) is never even considered, and the
tethering detection is based solely on determining that a flow
originated from a device in the disallowed PC device category.
Id.
The Examiner responds by summarizing the basis for the rejection,
finding that: “Kersch clearly teaches of ascertaining tethering based upon
this cross-referencing with the database, and Nowak serves to teach of
identifying information being specifically screen resolution information.”
Ans. 7. The Examiner also finds Appellant is arguing “against the
references individually.” Id.
We have considered all of Appellant’s arguments, but find them
unavailing, because we find there are only a few ways of detecting tethering
by an unauthorized device of a different type than the authorized wireless
device that is being used by a subscriber to provide network access.
Turning to the evidence, Kersch at paragraph 19 describes that
“enhanced knowledge about end devices connected to the communication
network may be obtained from a database which includes a mapping of one
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or more HTTP User Agent identifiers to corresponding device categories.”
Kersch teaches that collected data records are “analyzed to determine the
mapping which relates a certain HTTP User Agent identifier to a
corresponding typical device category.” Kersch ¶ 19. Kersch explains a few
exemplary ways of doing this: “The device category may for example be
defined in terms of a device type, a device model, a device manufacturer,
and/or a device operating software, in particular operating system (OS).” Id.
Kersch further describes using a database that contains “a mapping of
various HTTP User Agent identifiers to different device categories” to
analyze “data traffic in the communication network” to “efficiently detect
tethering activity of subscribers.” Id.
A predictable way of detecting tethering would be to compare the
respective screen resolutions of multiple devices connected to a network, as
claimed by Appellant, because desktop, laptop, and PDA devices typically
have different screen resolutions than the wireless device (e.g., mobile
phone) that is being used to provide network access to a secondary device
(e.g., a laptop) via tethering. Nowak specifically teaches detecting screen
resolution using a “mobile unit specification database 112 [that] may include
specification files indexed to particular mobile units, e.g., indexed to the
mobile unit’s MIN/ESN. Such files may include information identifying the
display size and resolution of the output device.” Nowak ¶ 39 (emphasis
added).
Although Nowak teaches detecting the display size and resolution
(id.) for a different purpose than Appellant, it is sufficient that the references
suggest doing what Appellant did, although the Appellant’s particular
purpose was different from that of the references. In re Heck, 699 F.2d
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1331, 1333 (Fed. Cir. 1983) (citing In re Gershon, 372 F.2d 535, 539
(CCPA 1967)). Thus, for a prima facie case of obviousness to be
established, the reference(s) need not recognize the same problem solved by
the Appellant. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). The
Supreme Court provides more recent controlling authority: “In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 419 (2007) (emphasis added).
This controlling legal reasoning is applicable here. Moreover, where
“the problem is known, the possible approaches to solving the problem are
known and finite, and the solution is predictable through use of a known
option,” a solution that is obvious to try may indeed be obvious. Abbott
Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008) (citing KSR, 550
U.S. at 421) (emphasis added).
Given that there are only a few commonly known ways of detecting
tethering by an unauthorized device of a different type than the authorized
wireless device, and given the evidence cited by the Examiner (Final Act.6–
9), we find Appellant’s alternative claimed solution of cross referencing,
matching, or otherwise comparing respective screen resolutions (of the
subject tethered device against screen resolution specifications stored in a
database) would have been obvious to try. See KSR, 550 U.S. at 421.
Appellant does not point to any evidence of record that shows
combining the teachings of the cited references in the manner found by the
Examiner would have been “uniquely challenging or difficult for one of
ordinary skill in the art” or would have “represented an unobvious step over
the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
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1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Further, a finding of
obviousness under the “obvious to try” standard “does not require absolute
predictability of success . . . all that is required is a reasonable expectation of
success.” In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (quoting In re
O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988)) (internal quotation,
emphasis and bracketed alteration omitted).
Applying this controlling legal guidance here, we agree with and
adopt the Examiner’s factual findings and reasoning (Final Act. 6–9; Ans.
4–9), and conclude that claim limitations L1 and L2 which recite similar
“based on” cross reference or matching limitations would have been obvious
under an “obvious to try” rationale, as articulated by the Supreme Court in
KSR, 550 U.S. at 421. See Independent claims 1 and 5.
In KSR, the Supreme Court also concluded that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
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Here, we are of the view that the principal difference between the
claimed invention and the method of detecting tethering in Kersch (e.g., at
paragraph 43) is merely in the type of data detected. And we find Nowak
(paragraphs 9, 13) teaches detecting screen resolution information as an
alternative type of data, which we find could have been used by an artisan to
identify tethered devices with predictable results. Accordingly, we agree
with the Examiner that the scope of the disputed claim terms broadly
encompasses the collective teachings and suggestions of Kersch, Nowak,
and Tran.
Regarding the combinability of the Kersch, Nowak, and Tran
references, our review of the record indicates that the Examiner has set forth
sufficient “articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). See Final Act. 8–
9, regarding the motivation found by the Examiner for modifying Kersch
with the detection of screen resolution as taught by Nowak, and the
motivation for modifying Kersch and Nowak with the teachings and
suggestions of Tran: “sending a user to a captive portal that presents
information as to why the tethered connection was disable[d] or limited, for
example, if the device is authorized or unauthorized.” Final Act. 9 (citing
Tran col. 7, ll. 7–22).
Further regarding “sending” limitation L3 (“sending, by the network
server, a notification to the wireless device indicating that the tethering
arrangement has been detected”), we find a preponderance of the evidence
supports the Examiner’s finding that Tran’s description at column 7, lines 7–
22, renders obvious the claimed L3 sending of a notification. See Final Act.
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9; see also Ans. 9. We note that Tran specifically teaches that “if a
particular mobile device does not subscribe to a tethered data plan” (col. 6,
ll. 46–47), or if (authorized) tethered data transfers exceed a capped speed or
amount (col. 7, ll. 1–7), that a user is redirected to a captive portal “which
. . . display[s] one or more carrier-authorized tethering data plans to the
mobile device user.” Tran, col. 7, ll. 11–12.
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 regarding
Rejection A of representative independent claim 1.
Accordingly, we sustain the Examiner’s Rejection A of representative
independent claim 1, and also Rejection A of grouped independent claim 5,
which recites similar corresponding limitations to the claim 1 limitations L1,
L2, and L3.

Rejection A of Representative Dependent Claim 34
On page 19 of the Appeal Brief, Appellant improperly groups together
dependent claims 4, 24, 25, 27–31, 34, and 35, by improperly combining
three different grounds of rejection (Rejections A, B, and C) in a single
claim grouping.4 We note that claims 4, 24, 25, 29, and 34 depend directly
from independent claim 1, and claims 27, 28, 30, 31, and 35 depend directly

4 See 37 C.F.R. § 41.37(c)(1)(iv), in pertinent part: “For each ground of
rejection applying to two or more claims, the claims may be argued
separately (claims are considered by appellant as separately patentable), as a
group (all claims subject to the ground of rejection stand or fall together), or
as a subgroup (a subset of the claims subject to the ground of rejection stand
or fall together).”
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from independent claim 5. However, dependent claims 25 and 28 were
rejected by the Examiner under Rejection C (over Kersch, Nowak, Tran, and
Panidepu), and dependent claims 29 and 30 were rejected under Rejection D,
over Kersch, Nowak, Tran, and Schmidt.
Remaining dependent claims 4, 24, 34, 27, 31, and 35 were rejected
under Rejection A. Because Appellant only advances separate, substantive
arguments for dependent claims 34 and 35 (Appeal Br. 19), we select claim
34 as the representative claim for the group consisting of claims 4, 24, 34,
27, 31, and 35, as rejected under Rejection A.
Claim 34 recites: “The computer implemented method of claim 1,
wherein the notification is an SMS message or an email.” We note claim 35
similarly recites: “The server device of claim 5, wherein the notification is
an SMS message or an email.”
Regarding representative claim 34, Appellant notes that the Examiner
finds that Tran’s description at column 8, lines 1–3 teaches “wherein the
notification is an SMS message or an email.” Appeal Br. 19. Appellant
argues:
the SMS message or email notification recited in claims 34 and
35 is specifically “a notification to the wireless device indicating
that the tethering arrangement has been detected,” as recited in
independent claims 1 and 5. Tran only mentions an “SMS
message providing a link to the hotspot management download
site” in situations in which a “mobile device 410 does not come
preloaded with the hotspot management application.” (Tran, Col.
7, Line 65 - Col. 8, Line 3). Tran’s SMS message providing a
link to download a hotspot management application is entirely
different than a notification “indicating that the tethering
arrangement has been detected,” as claims 1 and 5 recite, and
Tran’s SMS message therefore does not correspond to the
“notification indicating that the tethering arrangement has been
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detected” being “an SMS message or an email,” as recited in
dependent claims 34 and 35.
Appeal Br. 19.
Turning to the evidence relied upon by the Examiner (Final Act.
(citing Tran, col. 8, lines 1–3), Tran describes: “a user of mobile device 410
may call carrier customer support, for example, or receive a SMS message
providing a link to the hotspot management application download site.”
Tran, col. 8, ll. 1–3 (emphasis added). Based upon our review of the record,
we emphasize that claim 34 depends directly upon independent claim 1, and
Appellant had full notice of the Examiner’s previous reliance upon column
7, lines 7–22, in Tran, to support Rejection A of the “sending” L3 limitation
of claim 1. See Final Act. 9.
As noted above, Tran teaches that “if a particular mobile device does
not subscribe to a tethered data plan” (col. 6, ll. 46–47), or if (authorized)
tethered data transfers exceed a capped speed or amount (col. 7, ll. 1–7), that
a user is redirected to a captive portal “which . . . display[s] one or more
carrier-authorized tethering data plans to the mobile device user.” Tran, col.
7, ll. 11–12). The Examiner merely adds Tran, column 8, lines 1–3, as
evidence that an SME message could be used to provide the notification.
And “[c]ombining two embodiments disclosed adjacent to each other in a
prior art patent does not require a leap of inventiveness.” Boston Scientific
Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009).
Further, because of the use of the claim 34 term “or” the Examiner need
only show “an SMS message or an email.” Claim 34 (emphasis added).5

5 When a claim covers several alternatives, the claim may be unpatentable if
any of the alternatives within the scope of the claim are taught by the prior
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We also consider such SMS message notification as non-functional
descriptive material (NFDM) merely intended for human perception. The
Manual of Patent Examining Procedure (MPEP) guides: “where the claim as
a whole is directed to conveying a message or meaning to a human reader
independent of the intended computer system, and/or the computer-readable
medium merely serves as a support for information or data, no functional
relationship exists.” MPEP § 2111.05 (III). And our PTAB binding
precedent is controlling here: i.e., “the nature of the information being
manipulated does not lend patentability to an otherwise unpatentable
computer-implemented product or process.” Ex parte Nehls, 88 USPQ2d
1883, 1889 (BPAI 2008) (precedential).
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 regarding
Rejection A of representative dependent claim 34. Grouped dependent
claims 4, 24, 27, 31, and 35 (also rejected under Rejection A, and not argued
separately), fall with representative dependent claim 34. See 37 C.F.R.
§ 41.37(c)(1)(iv).

art. See Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001); see also
Schumer v. Lab. Comput. Sys., Inc., 308 F.3d 1304, 1311 (Fed. Cir. 2002)
(citing Brown, 265 F.3d at 1352).

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Rejection C of claims 25 and 28 and Rejection D of claims 29 and 30
As noted above, dependent claims 25 and 28 were rejected by the
Examiner under Rejection C (over the collective teachings and suggestions
of Kersch, Nowak, Tran, and Panidepu), and dependent claims 29 and 30
were rejected under Rejection D (over Kersch, Nowak, Tran, and Schmidt).
Because Appellant has not advanced any separate, substantive arguments for
these claims, we sustain Rejection C of claims 25 and 28 and Rejection D of
claims 29 and 30 based upon the legal doctrine of forfeiture.6

Rejection B of Independent Claims 16 and 20
Both independent claims 16 and 20 were rejected by the Examiner on
the same ground of rejection (Rejection B over the collective teachings and
suggestions of Kersch, Panidepu, and Tran). See Final Act. 14–19. We
exercise our authority under 37 C.F.R. § 41.37(c)(1)(iv), and select claim 16
as the representative claim for the group of independent claims 16 and 20.
Appellant notes that
claim 16 does not recite the term “device identifier” that the
Office uses in its discussion of Kersch, and instead recites
finding “a universal resource locator (URL) embedded in at least
one data packet of the one or more communications” and
identifying “information stored in a database about URL formats
expected to be from a device type of the wireless device.”
Appeal Br. 21.

6 Arguments not timely made are forfeited. See Google Technology, 980
F.3d at 862; see also 37 C.F.R. § 41.37(c)(1)(iv).

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Whereas Nowak was relied upon by the Examiner in Rejection A to
teach or suggest the first and second screen resolution information (i.e., a
particular type of data) as recited in claims 1 and 5, we note that independent
claims 16 and 20 are silent regarding any mention of screen resolution
information.
For Rejection B, the Examiner instead relies upon Panidepu for
teaching or suggesting: “a device identifier is a URL format (HTTP headers
are modified for URL’s directed to mobile versions (mobile format) of a
website, indicating that the device requesting the website is a mobile device
(Panidepu Paragraph [0039])).” Final Act. 15 (emphasis omitted).
Based upon our review of the record, we find the Examiner provides
sufficient “articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” Kahn, 441 F.3d at 988. See Final Act.
16.
And Appellant appears to acknowledge:
The Office does specifically relate Panidepu’s teachings to
identifying “information stored in a database about URL formats
expected to be from a device type of the wireless device,” or
“cross referencing the URL embedded in the at least one data
packet of the one or more communications against the
information identified in the database about the URL formats
expected to be from the device type of the wireless device,” as
claim 16 recites.
Appeal Br. 22 (emphasis added).
To the extent that Appellant made a typographical error, and actually
intended “does not specifically relate” we agree with the Examiner that
Appellant is attacking Panidepu in isolation. One cannot show
nonobviousness by attacking references individually where the rejections are
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based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
With respect to the obviousness of all 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 MPEP
§ 2123.
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, 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 ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation
omitted).
Accordingly, for similar reasons discussed above regarding Rejection
A of claim 1 (as pertaining to Kersch and Tran), we agree with and adopt the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness for independent claims 16 and 20, and remaining dependent
claims 17, 32, 33, and 36–38 (not argued separately) that were also rejected
under Rejection B.7 We thus sustain the Examiner’s rejection of all claims
rejected under Rejection B.

7 See Icon Health and Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042 (Fed.
Cir. 2017) (“As an initial matter, the PTAB was authorized to incorporate
Appeal 2020-003165
Application 14/091,533

19
CONCLUSION
The Examiner did not err in rejecting claims 1, 4, 5, 16, 17, 20, 24, 25,
and 27–38 over the cited combinations of references.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4, 5,
24, 27,
31, 34, 35
103

Kersch, Nowak, Tran 1, 4, 5,
24, 27,
31, 34, 35

16, 17,
20, 32,
33, 36,
37, 38
103

Kersch, Panidepu, Tran 16, 17,
20, 32,
33, 36,
37, 38

25, 28 103

Kersch, Nowak, Tran,
Panidepu
25, 28
29, 30 103 Kersch, Nowak, Tran,
Schmidt

29, 30
Overall
Outcome
1, 4, 5, 16,
17, 20, 24,
25, 27–38

the Examiner’s findings.”); see also In re Brana, 51 F.3d 1560, 1564 n.13
(Fed. Cir. 1995) (upholding the PTAB’s findings, although it “did not
expressly make any independent factual determinations or legal
conclusions,” because it had expressly adopted the examiner’s findings).

Appeal 2020-003165
Application 14/091,533

20
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED