Comcast Cable Communications, LLC

Patent Trials and Appeals Board

Sep 1, 2021

2020004011 (P.T.A.B. Sep. 1, 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.
14/046,166 10/04/2013 David Urban 26141.0119U1 1001
16000 7590 09/01/2021
Comcast
c/o Ballard Spahr LLP
999 Peachtree Street, Suite 1600
Atlanta, GA 30309-4421
EXAMINER
MCBETH, WILLIAM C
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
09/01/2021 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):
USpatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID URBAN and CHRISTOPHER R. ALBANO
_____________

Appeal 2020-004011
Application 14/046,166
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
CARL L. SILVERMAN, 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, 3, 5, 15, 17, 18, 23–29, 31, and 33–37, which constitute all the
claims pending in this application. Claims 2, 4, 6–14, 16, 19–22, 30, and 32
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). According to Appellant, the real party in interest in this
appeal is Comcast Cable Communications, LLC. See Appeal Br. 1.

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STATEMENT OF THE CASE 2
Introduction
Embodiments of Appellant’s claimed subject matter relate generally
to:
Methods and systems for providing network services to one or
more user devices or clients . . . [that] can minimize the effects
of ping time performance differences between wired and
wireless devices that interact with a computing device such as
an application server, for example, by leveraging spare wireless
capacity between gateways and devices (e.g., clients).
Spec. ¶ 2.

Representative Claim 1
1. A method comprising:
receiving, by an artificial application client of a gateway
device, first data of a communications service associated with
an application server, wherein the artificial application client is
configured to emulate an application client of a user device;
sending, by an artificial application server associated
with the gateway device, the first data to the application client
of the user device, wherein the artificial application server is
configured to emulate the application server;
[L1] determining that a quality parameter representative
of the sending of the first data by the artificial application
server to the application client of the user device does not
satisfy a threshold; and

2 We herein refer to the Final Office Action, mailed May 16, 2019 (“Final
Act.”); the Appeal Brief, filed December 27, 2019 (“Appeal Br.”); the
Examiner’s Answer, mailed March 6, 2020, and the Reply Brief, filed May
6, 2020 (“Reply Br.”).
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[L2] sending, by the artificial application server based
on the quality parameter not satisfying the threshold, a
plurality of copies of the first data to the application client of
the user device to satisfy the threshold,
[L3] wherein sending the plurality of copies of the first
data indicates to the application server that the threshold is
satisfied.
Appeal Br. 12. Claims App. (disputed claim limitations bracketed as
L1, L2 and L3 are emphasized).

Prior Art Evidence Relied Upon by the Examiner
Name Reference Date
Bugenhagen US 2008/0095173 A1 Apr. 24, 2008
Theilman et al.
(“Theilman”) US 2008/0267069 A1 Oct. 30, 2008
Shinozaki US 2010/0097979 A1 Apr. 22, 2010
May, Anthony et al.
(“May”) GB 2,423,219 A Aug. 16, 2006

Table of Rejections
Rejections Claims
Rejected 35 U.S.C. § Reference(s)/Basis
A 15, 17, 18,
26–28, 31,
34

112(a)
Written
Description

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B 1, 3, 15, 17,
23, 28, 29,
31, 33–37
103 May, Shinozaki
C 5, 18 103 May, Shinozaki, Bugenhagen
D 24–27 103 May, Shinozaki, Theilman

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)
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.

3 See In re Google Technology Holdings LLC, 980 F.3d 858, 862 (Fed. Cir.
2020) (some internal citation omitted):
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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Rejection A under 35 U.S.C. § 112(a) (Written Description)
Appellant does not address the written description rejection in the
Appeal Brief, but indicates in the Reply Brief that this rejection will be
addressed by claim amendment. See Reply Br. 2. In particular, Appellant
asserts that the 35 U.S.C. § 112 rejection of claims 15, 17–18, 26–28, 31,
and 34 will be addressed “when claim amendments may be entered.” Id.
Accordingly, because Rejection A under 35 U.S.C. § 112(a) was not
argued in the Appeal Brief or the Reply Brief, we sustain pro forma the
Examiner’s Rejection A of claims 15, 17, 18, 26–28, 31, and 34. 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).

Rejection B of Independent Claim 1
In the Appeal Brief, Appellant advances arguments regarding
limitations L1, L2, and L3 of claim 1.
Regarding the Examiner’s mapping of the disputed limitations, the
Examiner reads limitation L1 of claim 1 on Shinozaki at Figures 1–3 and
paragraphs 33–36, 52–57, and 68. See Final Act. 8. The Examiner finds
that relay device 1 in Shinozaki “determines that the transmission quality of
data sent by the relay device 1 to receiving device 2 over a wireless link
deteriorates below a predetermined transmission quality, i.e., a threshold.”
Final Act. 8.
The Examiner reads limitations L2 and L3 of claim 1 on the same
portions of Shinozaki, at Figures 1–3 and paragraphs 33–36, 52–57, and 68.
See Final Act. 8. The Examiner finds that “in response to the determination,
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relay device 1 performs packet retransmission, i.e., sending copies of the
first data, of packets to receiving device 2 to maintain the predetermined
transmission quality over the wireless link, i.e., the threshold is satisfied, and
unmodified feedback information provided to transmitting device 3 indicates
that the predetermined transmission quality is maintained.” Final Act. 8.

In the Reply Brief, Appellant restates:
Shinozai’s relay device retransmitting packets
to cause the predetermined transmission quality to be
maintained is not equivalent to “sending the plurality of copies
of the first data indicates to the application server that the
threshold is satisfied” in which the sending is “based on the
quality parameter not satisfying the threshold” as claimed in
claim 1. The quality assurance control performed by
Shinozaki’s relay device includes retransmitting error
correcting codes to control an error rate equal to or below a
predetermined value, not to “send a plurality of copies of the
first data” to “indicate that” the quality parameter “threshold” is
satisfied, as recited in claim 1. See Shinozaki at ¶ [0036]. In
other words, in contrast to claim 1, Shinozaki's retransmission
of error codes is merely an operation that maintains
predetermined transmission quality, not a sending of “copies of
the first data” that “indicates to the application server that the
threshold is satisfied.” See id. at ¶ [0055].
Reply Br. 5 (emphasis added); see also Appeal Br. 5–9.

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Appellant’s arguments present the following issues:
Issues: Under § 103, has the Examiner erred by finding that May and
Shinozaki would have collectively taught or suggested the disputed
limitations L1, L2, and L3 of claim 1?
[L1] determining that a quality parameter representative
of the sending of the first data by the artificial application
server to the application client of the user device does not
satisfy a threshold; and
[L2] sending, by the artificial application server based
on the quality parameter not satisfying the threshold, a
plurality of copies of the first data to the application client of
the user device to satisfy the threshold,
[L3] wherein sending the plurality of copies of the first
data indicates to the application server that the threshold is
satisfied.
Claim 1 (bracketing and emphasis added).

We find Shinozaki’s paragraph 35 explicitly teaches a threshold as
claimed, and we further find Shinozaki’s description of Figure 3 teaches or
suggests the remaining language of limitation L1 of claim 1:
when a packet transmitted from the transmitting
device 3 is relayed by the relay device 1 and received
by the receiving device 2 (step Tl), the relay device 1 relays
the feedback information for constantly reporting the
transmission quality from the receiving device or transfers it to
the transmitting device 3 (step T2).
Shinozaki ¶ 36.

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We also find Shinozaki’s description of Figure 3 teaches or suggest
limitation L2 (“sending . . . a plurality of copies”) by retransmitting the
packet data which previously contained errors:
With a quality variation, e.g.[,] a quality deterioration of the
transmission path in this section A, the relay device 1 performs
retransmitting the packet, providing redundancy
(enhancement) of error correcting codes or increasing a power
level if the transmission section A is a wireless section, as
necessary, whereby the relay device 1 performs a quality
assurance control (step T3) (for example, control of the error
rate equal to or below a predetermined value) maintained as
much as possible between the relay device 1 and the receiving
device 2.
Shinozaki ¶ 36 (emphasis added).
However, based upon our review of the evidence cited by the
Examiner, we find Appellant’s argument is supported by a preponderance of
the evidence regarding “wherein” clause limitation L3:
wherein sending the plurality of copies of the first data
indicates to the application server that the threshold is
satisfied.
Claim 1 (emphasis added).
As noted above, the Examiner generally maps claim 1 limitation L3 to
Shinozaki at Figures 1–3 and paragraphs 33–36, 52–57, and 68.
But in reviewing the portions of Shinozaki cited by the Examiner, we
find the Examiner has not fully developed the record4 to clearly show how

4 The mapping rule specifically requires: “When a reference is complex or
shows or describes inventions other than that claimed by the applicant, the
particular part relied on must be designated as nearly as practicable. The
pertinence of each reference, if not apparent, must be clearly explained and
each rejected claim specified.” 37 C.F.R. §1.104(c)(2) (emphasis added).
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Shinozaki teaches or suggest that the indication “to the application server
that the threshold is satisfied” is performed by the application server via
“sending of the plurality of copies of the first data.” Claim 1 (emphasis
added).
In contrast to the “wherein” clause language of claim 1, we find
Shinozaki uses dedicated “feedback information” to perform similar
functions:
In such a network environment, upon handling a
real-time type transmission, particularly a video stream
transmission with feedback information, when an error
correction processing in the transmission path such as a
retransmission processing is performed more than a fixed
number of times as the transmission environment varies, the
transmission quality reported in the feedback information
(packet discard rate or discarded packet number etc.) is reported
as a transmission quality lower (worse) than a transmission
quality maintained to a transmission source of the video stream.
Shinozaki ¶ 34 (emphasis added).
Nevertheless, we conclude that the disputed limitations L2 and L3 of
claim 1 are conditional limitations that may never be reached within the
scope of method claim 1 in the alternative case in which it is determined that
the claimed “threshold” is satisfied, i.e., when “a quality parameter
representative of the sending of the first data by the artificial application
server to the application client of the user device” does satisfy a threshold.
See Claim 1, cf. with “determining” limitation L1 (“determining that
a quality parameter representative of the sending of the first data by the

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artificial application server to the application client of the user device does
not satisfy a threshold.” (emphasis added).
Applying the precedential authority of Schulhauser 5 to independent
method claim 1, the Examiner need not present evidence of the obviousness
of the disputed conditional method steps L2 and L3, because these steps are
not required to be performed under the broadest reasonable interpretation of
the claim.6
Therefore, on this record, and based upon a preponderance of the
evidence, we find unavailing Appellant’s arguments regarding the disputed
conditional limitations L2 and L3 of method claim 1.
Nor do we find Appellant’s additional arguments persuasive regarding
“determining” limitation L1, because we find limitation L1 is taught or
suggested by the Examiner’s citations to Shinozaki, at Figure 3 and
paragraphs 34–35, for the reasons discussed above. We again emphasize

5 See Ex parte Schulhauser et al., Appeal No. 2013-007847, 2016 WL
6277792, at *9 (PTAB, Apr. 28, 2016) (precedential) (holding “The
Examiner did not need to present evidence of the obviousness of the
remaining method steps of claim 1 that are not required to be performed
under a broadest reasonable interpretation of the claim”); see also Ex parte
Katz, Appeal No. 2010-006083, 2011 WL 514314, at *4–5 (BPAI Jan. 27,
2011).

6 See, also e.g., Applera Corp. v. Illumina, Inc., 375 Fed. App’x. 12, 21 (Fed.
Cir. 2010) (unpublished) (affirming a district court’s interpretation of a
method claim as including a step that need not be practiced if the condition
for practicing the step is not met); Cybersettle, Inc. v. Nat’l Arbitration
Forum, Inc., 243 Fed. App’x. 603, 607 (Fed. Cir. 2007) (unpublished) (“It is
of course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed.”).
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that for method claim 1, the conditional “sending” step L2, and the
conditional “wherein” clause limitation L3, will not be performed if the
condition precedent step L1 determines that a quality parameter satisfies a
threshold.
In light of the binding authority of Schulhauser, we sustain the
Examiner’s 35 U.S.C. § 103 Rejection B of independent method claim 1
over the cited collective teachings and suggestions of May and Shinozaki.
Claims 3, 23, 29, and 33 variously and ultimately depend from claim
1, and were also rejected under Rejection B as being obvious over May and
Shinozaki. Claim 5 was rejected under Rejection C, and claims 24 and 25
were rejected under Rejection D. However, these dependent claims were not
argued separately by Appellant. 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).
Accordingly, we also sustain the Examiner’s 35 U.S.C. § 103
Rejection B of dependent method claims 3, 23, 29, and 33, over the
collective teachings of May and Shinozaki, in light of Schulhauser. For the
same reasons, we sustain Rejection C of dependent claim 5, and Rejection D
of dependent claims 24 and 25.

In contrast to our discussion above, we particularly note that
independent claims 15 and 35 are not “method” claims that fall under
Schulhauser’s controlling precedent. But each of independent claims 15 and
35 recite the disputed limitations L1, L2, and L3 of claim 1 using similar
language having commensurate scope.
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Rejection B of Independent System Claim 15
We note that the “wherein” clause limitation L3 of claim 1 is also
recited in claim 15 using identical language. Because Schulhauser is
inapplicable to independent system claim 15, and because we have found
supra that the Examiner has not fully developed the record to show how the
argued L3 “wherein” clause of claim 1 is being read on the corresponding
features found in Shinozaki (or May), for essentially the same reasons
argued by Appellant in the Briefs regarding the “wherein” clause limitation
L3 of claim 1 (as recited in claim 15 using identical language), we are
constrained on this record to reverse the Examiner’s Rejection B of
independent claim 15, and the associated Rejections B, C, and D of all
claims 17, 18, 26–28, 31, and 34 that depend thereon.
On this record, the Examiner has not shown how the additional
Bugenhagen reference for Rejection C of claim 18, or the tertiary Thielman
reference for Rejection D of claims 26 and 27, overcomes the
aforementioned deficiencies of May and Shinozaki, regarding “wherein”
clause limitation L3 as not being taught nor suggested by the base
combination of May and Shinozaki, as discussed above regarding Rejection
A of independent claim 1 (that we have sustained for other reasons based
upon the controlling precedent of Schulhauser).

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Rejection B of Independent Apparatus Claim 35
Regarding “wherein” clauses in particular, and as applicable to the
identically recited “wherein” clause of “apparatus” independent claim 35,
the Manual of Patent Examining Procedure (MPEP) § 2111.04 guides:
Claim scope is not limited by claim language that suggests or
makes optional but does not require steps to be performed [for
method claims], or by claim language that does not limit a
claim to a particular structure [for apparatus claims]. However,
examples of claim language, although not exhaustive, that may
raise a question as to the limiting effect of the language in a
claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
MPEP § 2111.04 (9th ed. rev. 10.2019 June 2020) (emphasis added).
Our reviewing court has held that an apparatus claim “depends on the
claimed structure, not on the use or purpose of that structure.” Catalina
Marketing Int'l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002). Accord Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d
1464, 1468 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not
what a device does.”). Moreover, “[i]t is well settled that the recitation of a
new intended use for an old product does not make a claim to that old
product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)
(citations omitted).
This controlling authority is applicable here, because the recited
functional language of claim 35 does not further limit or alter the structure of
the claimed apparatus:
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wherein sending the plurality of copies of the first data
indicates to the application server that the threshold is
satisfied.
Claim 35 (emphasis added).
For these reasons, we find Appellant’s contentions unavailing
regarding the aforementioned “wherein” clause recited in independent claim
35 that does not further limit the structure of the claimed apparatus.
Accordingly, we sustain the Examiner’s Rejection B of independent
claim 35. Associated dependent claims 36 and 37 were also rejected by the
Examiner under Rejection B; however, these dependent claims were not
argued separately by Appellant. 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). Claims 36 and 37 fall with independent claim 35.

CONCLUSIONS
The Examiner erred in rejecting claims 15, 17, 28, 31, and 34 under
Rejection B, claim 18 under Rejection C, and claims 26 and 27 under
Rejection D.
The Examiner did not err regarding the Rejections A, B, C, and D of
the specific claims listed as being affirmed in the “DECISION SUMMARY”
table below:

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
15, 17, 18,
26–28,
31, 34

112(a)
15, 17,
18,
26–28,
31, 34

1, 3, 15, 17,
23, 28, 29,
31, 33–37
103 May, Shinozaki
1, 3, 23,
29, 33,
35–37
15, 17, 28,
31, 34
5, 18 103 May, Shinozaki, Bugenhagen
5 18
24–27 103 May, Shinozaki, Theilman
24, 25 26, 27
Overall
Outcome
1, 3, 5,
15, 17,
18,
23–29,
31, 33–37

FINALITY AND RESPONSE
Because we have sustained at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision to reject
all claims on appeal. See 37 C.F.R. § 41.50(a)(1).

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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