Damola, Ayodele et al.

Patent Trials and Appeals Board

Apr 14, 2020

14356926 - (R) (P.T.A.B. Apr. 14, 2020)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/356,926 05/08/2014 Ayodele Damola 0111-100/P36183 US2 4978
113648 7590 04/14/2020
Patent Portfolio Builders, PLLC
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Fredericksburg, VA 22404-7999
EXAMINER
VANG, MENG
ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
04/14/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AYODELE DAMOLA and KRISTER SVANBRO
Appeal 2019-001709
Application 14/356,926
Technology Center 2400
Before BRYAN F. MOORE, BETH Z. SHAW, and
CARL L. SILVERMAN, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING

Appellant requests a rehearing under 37 C.F.R. § 41.52(a)(1)
(“Request”) for reconsideration of our Decision on Appeal mailed January
24, 2020 (“Decision”).
We reconsider our decision in light of Appellant’s Request for
Rehearing, but we do not change the decision.
Appellant contends we misapprehended or overlooked certain points
when we affirmed the Examiner’s rejections under 35 U.S.C. § 103.
Request 1–14.
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CONTENTIONS AND ANALYSIS
By regulation, “[t]he request for rehearing must state with
particularity the points believed to have been misapprehended or overlooked
by the Board.” 37 C.F.R. § 41.52(a)(1). We are not persuaded that we
overlooked or misapprehended any arguments in the Appeal Brief or Reply
Brief. Rather, the Decision specifically addressed the arguments in
Appellant’s Appeal Brief and Reply Brief. Decision 2–10.
Only those arguments actually made by Appellant were considered in
the Decision. Accordingly, we could not have misapprehended
or overlooked an argument that was not presented or not presented
adequately in the briefing.
We remind Appellant that a request for rehearing is not an opportunity
to reiterate arguments presented previously in earlier pleadings that were
fully addressed in an earlier Decision. 37 C.F.R. § 41.52.
As a preliminary matter, in the Request, Appellant argues we failed to
consider the entire Appeal Brief. Request 2. We considered all of
Appellant’s arguments and were not persuaded by those arguments in the
briefs.

Argument 1: Claims as a Whole
Appellant argues we failed to consider the claims as a whole, and in
particular, the combination of the two sending steps. Request. 3. Appellant
argues,
• Brooks discloses sending messages that do not include IP
addresses
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• Forbes discloses sending a message with an IP address that does
not correspond to the domain name in the content delivery
request.
As noted in the Appeal Brief, these combined disclosures do not
disclose the two sending steps of claim 26 (and the corresponding
elements of claim 1) because these claims require that the IP
address that is or is not included in the first and second messages
corresponds to the domain name in the content delivery
request.

Request 4 (citing Appeal Br. 30–31). Appellant also reiterates the argument
that the IP address provided in Forbes is an IP address of a “different sever.”
Request 4, 5. However, we considered, and were not persuaded by, these
arguments.
In particular, we noted:
Appellant acknowledges that Forbes discusses that an IP
address can be provided identifying the server. Appeal Br. 28.
Appellant argues that Forbes does not teach providing or not
providing an IP address “depending upon network load as
claimed.” Id. at 29, 30. We are not persuaded by this argument
because the Examiner relies on Forbes to teach “the first message
includes an IP address corresponding to the domain name.” The
Examiner finds that Brookes teaches “sending, by the network
device when it is determined that the request is not deferred, a
first message to the user equipment to enable the content
delivery.” Final Act. 13–14 (citing Brooks, Figs. 3–3c, ¶ 163);
Ans. 5–6. We agree that Brooks teaches “sending, by the network
device when it is determined that the request is not deferred, a
first message [content] to the user equipment to enable the
content delivery.” Ans. 6 (citing Brooks, Figs. 3–Fig. 3c; ¶ 163).

Decision 4, 5.
We agree with the Examiner, who finds that
Forbes teaches that a message 90 include[s] a URL or IP
address identifying server 80/external server 88 as the server
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from where the song currently being rendered to the user can be
purchased. Forbes further teaches that the bits in text segment
include character data that identifies a URL [domain name] that
specifies a server from where a particular song may be
downloaded or purchased, which indicates that the IP address
and URL [domain name] are used to identify the server and
therefore, are corresponded. Therefore, Forbes teaches “wherein
the first message includes an IP address corresponding to the
domain name” (Forbes, see paragraphs 0028 and 0044).

Ans. 6. Appellant repeatedly argues that Forbes’ IP address is of a “different
server.” Request 4.
Regardless of the general contentions articulated by Appellant in the
Appeal Brief, “[i]t is the claims that measure the invention.” See SRI Int’l v.
Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en
banc) (citations omitted). Because Appellant “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) (citing In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004)).
Even assuming without deciding that Forbes’ IP address discussed in
the cited portions of Forbes relates to a “different server,” we were not
persuaded that this argument overcomes the Examiner’s prima facie case of
obviousness, because the claims are drafted broadly enough to encompass
Forbes’ teachings, as explained by the Examiner. See Ans. 6. In other words,
the claims do not even require the “first message” to specify an IP address of
a specific server, as Appellant appears to argue. Rather, the broadest
reasonable construction of “the first message includes an IP address
corresponding to the domain name” as recited in claim 1 does not preclude
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character data that identifies an IP address that specifies a server from where
a particular song may be downloaded or purchased.
Thus, we did not misapprehend or overlook arguments regarding
Brooks and Forbes in the briefs, but rather, considered and rejected
Appellant’s arguments in the briefs regarding Brooks and Forbes as
unavailing.

Argument 2: Obviousness
Appellant argues we misapplied the teachings of KSR by not
supporting the conclusion of obviousness with the necessary articulation of
factual findings. See Request 5. Appellant argues “the combined disclosures
of Brooks and Forbes does not disclose or suggest that the IP address in the
first message corresponds to the domain name in the content delivery
request. Thus, the Examiner’s rejection and the Board’s decision has not
provided evidence to satisfy element (1) of the exemplary rationale
introduced in the Board’s Decision.” Request 6.
“[T]he [obviousness] analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). “If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417.
We explained in the Decision:
the Examiner’s proposed combination of the cited teachings of
Brooks, Forbes, and Spatscheck is no more than a simple
arrangement of old elements with each performing the same
function it had been known to perform, yielding no more than
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one would expect from such an arrangement. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007). The ordinarily skilled
artisan, being “a person of ordinary creativity, not an
automaton,” would be able to fit the teachings of the cited
references together like pieces of a puzzle to predictably result in
the claimed method and network device. Id. at 420–21. Because
Appellant has not demonstrated that the Examiner’s proffered
combination would have been “uniquely challenging or difficult
for one of ordinary skill in the art,” we agree with the Examiner
that the proposed modification would have been within the
purview of the ordinarily skilled artisan. Leapfrog Enters., Inc.
v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418).

Decision 6. We reiterate that regardless of the general contentions articulated
by Appellant, “[i]t is the claims that measure the invention.” See SRI Int’l,
775 F.2d at 1121. Appellant repeats the argument that “the combined
disclosures of Brooks and Forbes does not disclose or suggest that the IP
address in the first message corresponds to the domain name in the content
delivery request.” Request 6. We addressed this argument, and therefore did
not misapprehend or overlook an argument in the Appeal Brief.

Argument 3: Burden of Production
Appellant argues the “Decision improperly shifts the burden to the
Appellant to prove nonobviousness despite the fact that the Board’s
Decision, as well as the Examiner’s rejection, fail to articulate the necessary
factual findings and analysis to establish a prima facie case of obviousness
that would shift the burden.” Request 7. Yet, a Request for Rehearing is not
an opportunity to merely express disagreement with a Decision without
setting forth points believed to have been misapprehended or overlooked.
The proper course for an Appellant dissatisfied with a Board decision is to
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seek judicial review, not to file a Request for Rehearing to reargue issues
that have already been decided. See 35 U.S.C. §§ 141, 145.

Argument 4: Content Delivery
In the Decision, we stated,

Appellant also argues that “[b]ecause the mobile device
already has an IP address in this disclosure, it would not be
possible to control content delivery by not providing the IP
address to the mobile device, whereas claims 1 and 26 recite that
when content delivery is deferred, an IP address is not included
in the message sent to the user equipment.” Appeal Br. 27. This
general allegation is unsupported by the record.

Decision 5. Appellant argues we misapprehended the record by stating that
Appellant’s general allegation was unsupported by the record. Request 8, 9.
Appellant then argues that the record supports this general allegation, citing
to various paragraphs of Brooks as well as to additional paragraphs of the
Specification to support this allegation.
Only those arguments actually made by Appellant in the briefs were
considered in the Decision. We could not have misapprehended
or overlooked an argument that was not presented or not presented
adequately in the briefing. The request for rehearing is not an opportunity to
present new or supplemental arguments not presented adequately in the
briefing. See 37 C.F.R. § 41.52.

Argument 5: Mobile Edge Server
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
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interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech.
Cir., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048,
1053–54 (Fed. Cir. 1997).
Appellant argues our findings and conclusions regarding the
references teaching the claimed “mobile edge server” are in error. Request
11–13. Appellant argues:
The Board’s Decision adopts the Examiner’s assertion that
the [S]pecification merely discloses that the mobile edge server
may store content received from a content provider and a client
device could be a mobile edge server configured to temporarily
store content. The Examiner and the Board did not address the
fact that the [F]igures consistently illustrate the mobile edge
server as being part of a mobile network. For example, Figure 2
illustrates that in a conventional system the mobile edge server
122 is located in a mobile network 110. Figures 12, 15, and 18,
which illustrate various aspects of the invention, similarly
illustrate the mobile edge server being located in a mobile
network. Thus, by adopting a definition of the claimed “mobile
edge server” that does not require it to be part of a mobile
network, the Board’s Decision only selectively relies upon the
Appellant’s disclosure by focusing only on those portions that
support the desired definition that would support the obviousness
rejection.

Request 12.
In the Decision, we stated:
We are not persuaded that the claim is so limited because
Appellant provides insufficient evidence proving that the
Specification or claims limit “mobile edge server operating as a
cache server” in a way that, under a broad but reasonable
interpretation, is not encompassed by Spatscheck’s teaching of a
cache server. As the Examiner explains, and we agree, paragraph
4 of the Specification “merely discloses that a Mobile Edge
Server (MES) 122 may store content received from a content
provider (CP) 140 and paragraph 0058 merely discloses that a
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client device may be a mobile edge server (MES) configured to
store temporarily the content. Based on the descriptions provided
in paragraphs 0004 and 0058, a mobile edge server is a device
that stores content. Ans. 10–11.”

Decision 7. Thus, we disagreed with Appellant’s arguments because “mobile
edge server” is broad enough to encompass Spatscheck’s teachings, as
explained in the Decision. Accordingly, we did not misapprehend or
overlook Appellant’s arguments regarding the mobile edge server in the
Appeal Brief, but rather, considered and rejected Appellant’s arguments
regarding the mobile edge server as unavailing.
Accordingly, Appellant does not persuade us of error in our Decision.

CONCLUSION
We have reconsidered our Decision in light of Appellant’s arguments
in the Request, and we have granted Appellant’s Request for Rehearing to
the extent that we have reviewed our Decision and considered the arguments
made in the Request. We are not persuaded of error in our previous
Decision. Therefore, we deny the Request for Rehearing in that we decline
to make any changes in the Decision.

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In summary:
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
1, 8–13, 26

103 Brooks, Spatscheck,
Forbes
1, 8–13, 26
3, 4, 17, 19,
21, 23, 25
103 Brooks, Spatscheck,
Engbersen

3, 4, 17,
19, 21, 23,
25

16, 27, 28 103 Brooks, Spatscheck,
Forbes, Engbersen

16, 27, 28
7 103 Brooks, Spatscheck,
Forbes, Venugopal
7
14, 22, 24 103 Brooks, Spatscheck,
Engbersen, Venugopal
14, 22, 24
Overall
Outcome:
1, 3, 4, 7–
14, 16, 17,
19, 21–28

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 8–13, 26

103 Brooks, Spatscheck,
Forbes
1, 8–13, 26
3, 4, 17, 19,
21, 23, 25
103 Brooks, Spatscheck,
Engbersen

3, 4, 17,
19, 21, 23,
25

16, 27, 28 103 Brooks, Spatscheck,
Forbes, Engbersen

16, 27, 28
7 103 Brooks, Spatscheck,
Forbes, Venugopal
7
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
14, 22, 24 103 Brooks, Spatscheck,
Engbersen, Venugopal
14, 22, 24
Overall
Outcome:
1, 3, 4, 7–
14, 16, 17,
19, 21–28

DECISION
Appellant’s request for rehearing is denied.

DENIED