APPLE INC.

Patent Trials and Appeals Board

Oct 5, 2021

2020002306 (P.T.A.B. Oct. 5, 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.
14/921,511 10/23/2015 Paul V. Flynn 090911-
P25331US1-0941834
6740
65656 7590 10/05/2021
Apple / Kilpatrick Townsend & Stockton LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
FAYED, RASHA K
ART UNIT PAPER NUMBER
2413
NOTIFICATION DATE DELIVERY MODE
10/05/2021 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL V. FLYNN, AJOY K. SINGH,
WEN ZHAO, DENNIS MATHEWS, SYED AON MUJTABA,
SRIRAM HARIHARAN, and MATTHEW L. SEMERSKY
Appeal 2020-002306
Application 14/921,511
Technology Center 2400
Before ROBERT E. NAPPI, JASON J. CHUNG, and
BETH Z. SHAW, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–17 and 21–24. We have jurisdiction
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). Appellant identifies the real party in interest as Apple, Inc. Appeal
Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to cloud support for discovery and data
transfer for mobile client devices. Claims 1 and 5, reproduced below, are
illustrative of the claimed subject matter, with disputed limitations italicized:
1. A method of using a host device to
communicate with a client device, the method
comprising:
at the host device comprising at least one wireless
interface for communications, a memory, and a processor
coupled to the memory and to the at least one wireless
interface:
receiving, by the host device, via the at least one
wireless interface, an
advertisement message from the client device, the
advertisement message including an identifier associated
with the client device and a request for communication of
data from a cloud-based server;
responsive to the received advertisement message,
sending, from the host device to the cloud-based server,
the identifier associated with the client device, wherein
sending the identifier to the cloud-based server causes the
cloud-based server to determine whether data associated
with the client device is available at the cloud-based
server;
receiving, by the host device from the cloud-based
server, a proxy indication that the cloud-based server has
available data associated with the client device;
responsive to the received proxy indication,
providing, via the at least one wireless interface, a
connection request from the host device to the client
device, the connection request including a client
indication of the available data at the cloud-based
server, wherein the connection request provided from the
host device initiates establishing a connection between
the host device and the client device;
receiving, by the host device, the available data
from the cloud-based server; and
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sending, by the host device, the available data to
the client device utilizing the connection established
between the host device and the client device in response
to the received proxy indication.

5. The method of claim 1, wherein the client indication of
the available data includes one or more properties of the
available data, the method further comprising, at the host
device:
receiving a response to the connection request wherein
the response is sent responsive to determining that a property
of the available data corresponds to a property of data desired
by the client device; and
after receiving the response to the connection request,
sending the available data to the client device.
REFERENCES
The prior art relied upon by the Examiner is:

REJECTIONS
Claims 1–3, 7, 11, 13–17, 21, and 22 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Li, Kunito, and Natarajan. Final Act. 4.
Claims 4–6, 8, 23, and 24 are rejected under 35 U.S.C. § 103 as being
unpatentable over Li, Kunito, Natarajan, and Lamont. Final Act. 12.
Name Reference Date
Natarajan US 2007/0294380 A1 Dec. 20, 2007
Kunito US 2009/0144400 A1 June 4, 2009
Li US 2013/0190032 A1 July 25, 2013
Kim US 2014/0086146 A1 Mar. 27, 2014
Lamont US 2014/0344062 A1 Nov. 20, 2014
V. Srinivasa Rao and Rambabu Gajula, Protocol Signaling Procedures in
LTE, Radisys White Paper 1–11, September 2011 (“Rao”)
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Claims 9 and 10 are rejected under 35 U.S.C. § 103 as being
unpatentable over Li, Kunito, Natrajan, and Kim. Final Act. 16.
Claim 12 is rejected under 35 U.S.C. § 103 as being unpatentable over
Li, Kunito, Natarajan, and Rao. Final Act. 17.
OPINION
Claim 1
We see no error in the Examiner’s conclusion that claim 1 is obvious
over of Li, Kunito, and Natarajan. To the extent consistent with our analysis
below, we refer to, rely on, and adopt the Examiner’s findings and
conclusions set forth in the Final Rejection and Answer. See Final Act. 4–8;
Ans. 3–6.
Figure 10 of Li is reproduced below.
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Figure 10 of Li illustrates a proxy that proxies service connections
between a client and a server. Li ¶ 94. Li illustrates, in Figure 10, sending a
sign in request from client 1002 to proxy 1004. Ans. 4. The sign in request
includes the client identification and client’s IP address. Id. When the server
1006 receives the notification service connection message (NSCM 1010A)
from the proxy 1004, the server detects whether there is available data
associated with the particular client. Id. If there is data associated with the
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client, a NSCM response 1010F is sent to the proxy 1004 to indicate the
availability of data for this particular client. Id. (citing Li, Fig. 10, ¶¶ 95–99).
In the Reply Brief, Appellant asserts, generally and for the first time
in the briefing, that Li does not teach transmitting a connection request.
Compare Reply Br. 4 with Appeal Br. 9–14. Yet, “[a]ny bases for asserting
error, whether factual or legal, that are not raised in the principal brief are
waived.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative). See also Optivus Tech., Inc. v. Ion Beam Appl’ns. S.A., 469
F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its
opening brief . . . is waived.”) (citations and quotation marks omitted);
In re Google Technology Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020)
(arguments not timely made are forfeited). Here, the Examiner’s findings
regarding Li in the Examiner’s Answer are the same as those in the Final
Rejection, from which the instant appeal was taken. See Final Act. 4–8; Ans.
3–5. Because the findings are the same, we find nothing that would have
prompted this new argument in the Reply Brief, nor does Appellant point to
any good cause for this new argument in the Reply Brief. Appellant could
have made an argument regarding Li in the Appeal Brief, but did not. The
term “Reply Brief” is exactly that, a brief in reply to new rejections or new
arguments set forth in an Examiner’s Answer. Appellant may not present
arguments in a piecemeal fashion, holding back arguments until an examiner
answers the original brief. We therefore will not consider this basis for
asserting error for purposes of the present appeal. See 37 C.F.R.
§ 41.41(b)(2).
Appellant also argues that Kunito’s booster server 103 cannot
correspond to the claimed host device because the booster server 103 does
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not receive “from the cloud-based server, a proxy indication that the cloud-
based server has available data associated with the client device.” Appeal Br.
12 (emphasis omitted). We are not persuaded by this argument because, as
discussed above, the Examiner relies on Li, not Kunito alone, as teaching a
host device receiving an indication of available data associated with an
identified client. See Final Act. 2–6; Ans. 5.
Moreover, we agree with the Examiner’s findings that Kunito, in
Figure 5, teaches client terminal 105a that sends and invite message to the
SIP proxy 104 to check the availability of data, and the invite message is
passed from the proxy 104 to the camera server 102. Ans. 4. If data is
available at the server, another invite is sent from the camera server 102 to
the SIP Proxy 104 (Kunito Fig. 5; Step 3), and another invite message (i.e., a
connection request) is passed to the client terminal 105 from the proxy 104
to request establishing a connection with the client to pass the available data
at the server (Kunito Fig. 5; Step 4). Id. at 5. Data is passed from the camera
server 102 to the SIP proxy 104 and from proxy 104 to the client terminal
105a (i.e., a connection is established between the SIP proxy 104 and client
terminal 105a). Id. (citing Kunito ¶¶ 55–58, Fig. 5).
Appellant also argues that Natarajan does not teach “wherein sending
the identifier [from the host device to the cloud-based server] causes the
cloud-based server to determine whether data associated with the client
device is available at the cloud-based server,” as recited in claim 1. Appeal
Br. 13, 14; Reply Br. 5. In particular, Appellant argues there is no host
device between Natarajan’s server and workstation and thus no host device
to send the identifier. Id. Appellant argues that the “architecture” of
Natarajan therefore “differs” from the claims. Id. We are not persuaded by
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this argument because the Examiner relies on Li and Kunito, not Natarajan
alone, to teach the limitations of claim 1. And, as the Examiner finds, and
we agree, Natarajan teaches a server-to-client data delivery system, with a
server that receives a heartbeat signal from multiple workstations/clients. Id.
The heartbeat signal received includes identifying information for each
workstation/client. Id. Based on the received identification information, the
server 102 determines whether delivery data (i.e., content) is available for
the identified client. See Natarajan; ¶¶ 39, 40, and Fig. 4.
Accordingly, we sustain the rejection of independent claim 1. We also
sustain the Examiner’s obviousness rejections of claims 2–4, 6–17, and 21–
24, which are not argued separately.

Dependent Claim 5
Appellant argues Lamont fails to teach “receiving a response to the
connection request wherein the response is sent responsive to determining
that a property of the available data corresponds to a property of data
desired by the client device,” as recited in dependent claim 5. Appeal Br. 14.
In particular, Appellant argues “the request to open a communication
channel of Lamont cannot correspond to the claimed connection because the
claimed connection request is explicitly recited as being sent ‘from the host
device to the client device’ in claim 1.” Id. at 15. “In contrast, the request to
open a communication channel (alleged to correspond to the claimed
connection request) is provided by the user communication device (alleged
to correspond to the client device).” Id. “Additionally, the request to open a
communication channel transmitted by the user communication device is
provided in a separate example than the example cited by the Examiner for
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the remaining subject matter of claim 5.” Id. “Additionally, because the
connection request of claim 1 is provided ‘from the host device to the client
device’ a ‘response to the connection request’ cannot be provided from the
data provider of Lamont because the data provider of Lamont is not a client
device.” Id.
We are not persuaded by these arguments for the following reasons.
We agree with the Examiner that:
The combination of Li, Kunito, Natarajan and Lamont, specifically
Lamont discloses, as illustrated in Fig. 3B, a structure of a client 102
that communicated with a satellite or a cellular tower 112 and a server
109. Lamont teaches that the satellite or the cellular tower can be
replaced with any network device (Therefore, the device 112 of
Lamont is interpreted to be the claimed host).

Ans. 6.
Figure 3b of Lamont is reproduced below.

Figure 3b of Lamont illustrates data availability requests. See Lamont ¶ 55.
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Figure 3b of Lamont illustrates that at 305, a client 102 sends a
request to a device 112 to check data availability associated with it at server
109. See Ans. 6. At 306, the server 109 checks data availability. Id. At 307,
the server 109 verifies the types/options of data available. Id. At 308, the
system transmits an indication for data options available to the device 112.
Id. At 309, client 102 passes its selection for desired types/options of data
through device 112 to the server 109. Id. At 310 and 311, the server retrieves
the desired data by the client and transmits it to the client 102 through device
112. Id. (citing Lamont ¶ 55, Fig. 3b).
Therefore, we agree that Lamont teaches that the delivery of data is
based on determining that available data matches the desired data by the
client. When the available data matches a determined property or
characteristics specified by the client, the data is delivered to the client
device.
Although Appellant generally argues that Lamont does not teach
“receiving a response to the connection request,” Appellant does not explain
why Lamont’s teachings, for example in Figure 3b and paragraph 55 as
discussed above, do not encompass receiving a response to the connection
request. In other words, Appellant provides insufficient evidence that the
Specification or claims limit “response to the connection request” in a way
that, under a broad but reasonable interpretation, is not encompassed by
Lamont’s teachings or the collective prior art teachings as explained in the
Final Rejection and Answer.
Accordingly, we sustain the rejection of dependent claim 5.

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CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 7, 11,
13–17, 21,
22
103 Li, Kunito,
Natarajan
1–3, 7, 11,
13–17, 21,
22

4–6, 8, 23,
24
103 Li, Kunito,
Natarajan, Lamont
4–6, 8, 23,
24

9, 10 103 Li, Kunito,
Natrajan, Kim
9, 10
12 103 Li, Kunito,
Natarajan, Rao
12
Overall
Outcome
1–17, 21–24

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