AirWatch LLC

Patent Trials and Appeals Board

Jul 28, 2021

2019006269 (P.T.A.B. Jul. 28, 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.
15/426,926 02/07/2017 John Marshall W025.C1 (500102.1022) 9707
152577 7590 07/28/2021
Thomas | Horstemeyer, LLP (VMW)
3200 Windy Hill Road, SE
Suite 1600E
Atlanta, GA 30339
EXAMINER
SALAD, ABDULLAHI ELMI
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
07/28/2021 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):
docketing@thomashorstemeyer.com
ipadmin@vmware.com
uspatents@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte JOHN MARSHALL and WILLIAM DEWEESE
_______________

Appeal 2019-006269
Application 15/426,926
Technology Center 2400
_______________

Before JOHN A. JEFFERY, ELENI MANTIS MERCADER, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant1 filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (“Request”) on June 30, 2021, for reconsideration of our
Decision mailed on April 30, 2021 (“Dec”). The Decision affirmed the
Examiner’s rejections of claims 21–40. Dec. 14. We reconsider our
Decision in light of Appellant’s Request for Rehearing, but we decline to
modify the Decision.

In the Request, Appellant contends:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, AirWatch, LLC, is the real party
in interest. Appeal Br. 2.
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(1) The Panel overlooks the correct interpretation of “dynamic
descriptive data” as claimed. See Req. Reh’g 3–8. In particular,
Appellant argues that the Panel improperly construes the term
“dynamic descriptive data” as “user identifiers, source identifiers
or timestamps.” See id. at 8.
(2) The Panel improperly equates Shapiro’s “user identifier, addresses
and timestamp to the claimed “dynamic descriptive data.” Id. at 8–
9. In particular, Appellant argues that the identifiers, addresses,
and timestamp of Shapiro are not dynamically determined based
on an access request and whether a device profile complies with a
compliance Rule. Id. at 8.
(3) The final Office Action does not set forth a prima facie
combination of Levy, Shapiro, Patel, and Peracha in which
descriptive data is dynamically determined. Id. at 10–12.

ANALYSIS
Initially, we disagree with Appellant that the Decision overlooked the
arguments in the Reply Brief (See Req. Reh’g 11–12). Although the opinion
does not repeatedly cite the Reply Brief in the Decision, the Panel
considered Appellant’s arguments in both the Appeal Brief and the Reply
Brief in their entirety in arriving at its decision. See Dec. 9–11.
First Contention
As to Appellant’s first contention, Appellant argues that the Panel
overlooks the correct interpretation of “dynamic descriptive data” as
claimed. See Req. Reh’g 3–8. In particular, Appellant contends although
the Decision finds that the “dynamic descriptive data” can be “user
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identifiers, source identifiers or timestamps,” but the Board does not
indicate that those identifiers or timestamps are determined based on an
access request and compliance with a compliance rule, as claimed. See
Req. Reh’g 4. In addition, Appellant contends:
It is not enough for one of Levy, Shapiro, Patel, or Peracha
to show or suggest some data of a digital watermark, for
another one to show or suggest an “access request from the
client device,” and for another one to show or suggest
“whether the device profile ... complies with a compliance
rule,” separately or generally. Instead, based on a proper
construction of the claimed invention, the final Office
Action must present a prima facie combination of Levy,
Shapiro, Patel, and Peracha in which the determination of
descriptive data is dynamically based on L2 and L3.
Req. Reh’g 4 (emphasis added).
Regarding Appellant’s first contention, this argument does not show
any error in our original decision. The Board did not misapprehend or
overlook Appellant’s argument. Appellant’s arguments were addressed in
our Decision (See Dec. 9–11 (citing Shapiro 15, 37, 57; Patel 10, 24–25, 89–
90; Peracha 2:41–48). As the Examiner found and we set forth in our
Decision, the combination of Shapiro, Patel and Peracha collectively teaches
the limitation “determining dynamic descriptive data of the digital
watermark based on the access request from the client device and whether
the device profile received from the client device complies with a compliance
rule.” (See Dec. 11 (citing Final Act. 4–5).
In addition, we disagree with Appellant’s argument that the Board’s
interpretation of “dynamic descriptive data” is overly broad. Req. Reh’g 8.
Claim 21 broadly refers to “dynamic descriptive data of the digital
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watermark.” The claim determines dynamic descriptive data of the digital
watermark based on the access request from the client device and whether
the device profile received from the client device complies with a compliance
rule. Appellant’s argument that the term “dynamic descriptive data” should
be constructed as “identifiers or timestamps determined based on an access
request and compliance with a compliance rule” improperly duplicates other
claim language that is already in the claim. The result of Appellant’s argued
claim construction of “dynamic descriptive data” can be easily seen below
when inserted in bold at the appropriate location of claim 21:
determining dynamic descriptive data of the digital
watermark that determined based on the access request
from the client device and whether the device profile
complies with a compliance rule based on the access
request from the client device and whether the device profile
received from the client device complies with a compliance
rule.

As such, Appellant’s argued claim construction amounts to a
double recitation of “determined based on the access request from the
client device and whether the device profile complies with a
compliance rule.” Therefore, Appellant’s arguments have not
persuaded us that our Decision misapprehended points raised in the
Briefs relating to the claim construction of “dynamic descriptive
data.”
Second Contention
As to the second contention, Appellant argues that the Panel
improperly equates Shapiro’s “user identifier, addresses and timestamp to
the claimed “dynamic descriptive data.” Req. Reh’g 8–9. In particular,
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Appellant argues that the identifiers, addresses, and timestamp of Shapiro
are not dynamically determined based on an access request and whether a
device profile complies with a compliance Rule. Id. (citing Shapiro ¶¶ 9,
15)
As discussed in the first contention, Appellant’s argued claim
construction amounts to a double recitation of “determined based on the
access request from the client device and whether the device profile
complies with a compliance rule” in the claim. Our claim construction of
“dynamic descriptive data” is articulated in our Decision at pages 5 and 6.
We also disagree with Appellant’s assertion that Shapiro does not
describe or suggest that any of the identifiers, addresses, or the time stamp
are determined based on an “access request from the client device” and
“whether the device profile ... complies with a compliance rule. Req. Reh’g
9. Shapiro teaches identifier, address, or the time stamp is determined based
on “access request from the client device.” Final Act. 4; Dec. 9 (citing
Shapiro 15, 37, 51). The Examiner maps, and we agree, Shapiro’s user
request to access to a file and a user identifier, an Internet Protocol (IP)
address associated with the user, a hardware address or identifier associated
with the user and a timestamp in the watermarks, to determine dynamic
descriptive data based on access request from the client device. Id.
In addition, as set forth in our Decision:
Appellant’s arguments that Shapiro does not describe device
profiles or compliance rules, are arguments that Shapiro does
not teach L3. But the Examiner finds that Patel, rather than
Shapiro, teaches L3. See Final Act. 4–5. Therefore, Appellant’s
arguments amount to an attack on Shapiro, where the Examiner
relies upon the combination of references to teach L1 and L3.
One cannot show nonobviousness by attacking references
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individually where the rejections are based on combinations of
references. In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

Dec. 10 (citing Final Act. 4-5).

Therefore, Appellant’s arguments have not persuaded us that
our Decision misapprehended points raised in the Briefs relating to the
Panel improperly equates Shapiro’s “user identifier, addresses and
timestamp to the claimed “dynamic descriptive data.”

Third Contention

As to Appellant’s third contention, Appellant argues that the
Final Office Action does not set forth a prima facie combination of
Levy, Shapiro, Patel, and Peracha in which descriptive data is
dynamically determined. Req. Reh’g 10–12.
Appellant first argues that nothing in the Examiner’s Answer or in the
Office Action suggests that the combination of Levy and Shapiro would
result in the determination of dynamic descriptive data of a digital
watermark based on whether a device profile complies with a compliance
rule. Req. Reh’g 10.
Appellant then argues that Patel describes the use of “client profiles”
to enable granular access to certain resources for certain users and not for
“determining dynamic descriptive data.” Req. Reh’g 10 (citing Ans. 5; Patel
10, 24–25, 89–90).
Appellant finally argues that the Final Office Action did not suggest
any reasons how one of ordinary skill in the art would rely upon the granular
rules of Patel to dynamically determine descriptive data in the identifiers,
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addresses or timestamp of Shapiro. Req. Reh’g 10 (citing Final Act. 4; Ans.
5).
We are not persuaded by Appellant’s arguments. A prima facie case
of obviousness is established when the teachings in the prior art suggest the
subject matter of the claims to a person of ordinary skill in the art. The
prima facie case is a procedural tool and requires the examiner initially to
produce evidence sufficient to support a conclusion of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Once a prima facie case is
established, the burden shifts to the applicant to provide rebuttal evidence or
argument. Id. An appellant may rebut a prima facie case of obviousness by
showing the prior art combination is deficient, that no motivation exists to
modify the prior art as suggested by the examiner, the presence of
unexpected results achieved by the claimed subject matter relative to the
prior art, or other objective evidence of nonobviousness. In re Mayne, 104
F.3d 1339, 1342 (Fed. Cir. 1997); In re Geisler, 116, F.3d 1465, 1469–70
(Fed. Cir. 1997); In re Dillon, 919 F.2d 692–93 (Fed. Cir. 1990).
As the Examiner found and we set forth in our Decision, the
combination of Shapiro, Patel and Peracha collectively teaches the
limitation. Based on the facts identified in the Examiner’s rejection (Final
Act. 4–6), we conclude a prima facie case of obviousness has been shown,
as set forth in our Decision:
Appellant’s arguments above ignore the combined
teachings of Shapiro, Patel, and Peracha. Specifically, we find
no error with the Examiner’s proffered findings and
conclusions that an ordinarily skilled artisan would have had
motivation to apply the teachings of Shapiro— determining
dynamic descriptive data of the digital watermark based on the
access request from the client device (see Final Act. 4)— the
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teachings of Patel—resource authorization based on the access
request from the client device and whether the device profile
received from the client device complies with a compliance rule
(id. at 4–5)—and the teachings of Peracha— the device profile
comprising at least one attribute associated with an operating
state of the client device (id. at 5) — collectively to arrive at the
claimed L1, L2, and L3.

Dec. 11 (citing Final Act. 4–5 (emphases added).

Appellant did not provide a substantive argument regarding the
Examiner’s rationale as to the existence of a prima facie case of
obviousness. See Req. Reh’g 10–12. In particular, we find no reversible
error with the Examiner’s findings that an ordinarily skilled artisan would
have had motivation to combine Shapiro, Patel, and Peracha to arrive at the
claimed “determining dynamic descriptive data of the digital watermark
based on the access request from the client device and whether the device
profile received from the client device complies with a compliance rule.”
Dec. 11 (citing Final Act. 4–5).
Thus, Appellant’s arguments have not persuaded that we
misapprehended or overlooked arguments raised by Appellant in the
Briefs, and we do not change our decision. Accordingly, we deny
Appellant’s rehearing request.

CONCLUSION
For the aforementioned reasons, Appellant’s contentions have
not persuaded us to change our Decision with respect to the rejections
under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection
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with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

Outcome of Decision on Rehearing:

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Denied Granted
21–40 103 Levy, Shapiro, Patel,
Peracha
21–40

Final Outcome of Appeal after Rehearing:

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21–40 103 Levy, Shapiro, Patel,
Peracha
21–40

REQUEST FOR REHEARING DENIED