Ex Parte Hesketh et al

Patent Trials and Appeals Board

Apr 26, 2019

13348348 - (D) (P.T.A.B. Apr. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/348,348 01/11/2012
83579 7590 04/30/2019
LEVEL 3 COMMUNICATIONS, LLC
Attn: Patent Docketing
1025 Eldorado Blvd.
Broomfield, CO 80021
FIRST NAMED INVENTOR
Gifford Neal Hesketh
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0382-US-Ul 6001
EXAMINER
BLAIR, DOUGLAS B
ART UNIT PAPER NUMBER
2442
NOTIFICATION DATE DELIVERY MODE
04/30/2019 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):
patent.docketing@level3.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GIFFORD NEAL HESKETH,
CHRISTOPHER NEWTON, MARK BRADY,
and DAVID FULLAGAR 1
Appeal2017-005668
Application 13/348,348
Technology Center 2400
Before JOHN P. PINKERTON, JON M. JURGOVAN, and
NABEEL U. KHAN, Administrative Patent Judges.
JURGOV AN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-3, 5-7, 9, 10, 16-21 and 23-29. 2 In support of
their appeal, Appellants requested a telephonic hearing, which we held on
April 9, 2019. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm. 3
1 The Appeal Brief indicates the real party in interest is Level 3
Communications, LLC. App. Br. 2.
2 Claims 4, 8, 11-15, and 22 were canceled during prosecution.
Claims Appendix 2--4 ("Claims App.").
3 Our Decision refers to the Specification ("Spec.") filed January 11, 2012,
the Final Office Action ("Final Act.") mailed May 9, 2016, the Appeal Brief
Appeal2017-005668
Application 13/348,348
CLAIMED INVENTION
The invention relates to determining the best or optimal server in a
content delivery network (CDN) to deliver a network resource (e.g., an
audio or movie file) to a client. Spec. ,r,r 30, 36-38, 80. A client requests a
resource on the network, and a server ( or other device) extracts information
from the request and incorporates it into a modified domain name that a
Domain Name System (DNS) uses to make a better selection of the cache
server to provide the resource. Spec. ,r,r 77, 79. The additional information
in the modified domain name may include a value such as the client's IP
address, or a classification such as the type of content requested, or what
kind of device the client is ( e.g., phone, television, computer, etc.). Spec.
Of the appealed claims, claims 1, 16, 19, and 23 are independent.
Claim 1, reproduced below, is illustrative of the claimed invention:
1. A computer-implemented method, operable in a
content delivery network (CDN) comprising a plurality of cache
servers, the method comprising:
(A) at a cache server in the CDN, obtaining a first domain
name, said first domain name being a fully qualified domain
name and being part of a client request for a resource from said
cache server;
(B) determining one or more values forming part of the
client request;
( C) in response to determining that said cache server has
said requested resource, generating a second domain name, said
second domain name including first information from said first
domain name and second information determined from said one
or more values forming part of the client request; and
("App. Br.") filed October 10, 2016, and the Examiner's Answer ("Ans.")
mailed December 19, 2016.
2
Appeal2017-005668
Application 13/348,348
(D) providing the second domain name to the client.
App. Br. (Claims App. 18).
REJECTIONS
Claims 1-3, 16-18, and 19 stand rejected under 35 U.S.C. § I03(a)
based on Liskov (US 8,224,986 Bl, July 17, 2012) and Tewari (US
7,363,361 B2, Apr. 22, 2008). Final Act. 2-5.
Claim 5 stands rejected under 35 U.S.C. § I03(a) based on Liskov,
Tewari, and Frutiger (US 8,127,018 B2, Feb. 28, 2012). Final Act. 6.
Claim 6 stands rejected under 35 U.S.C. § I03(a) based on Liskov,
Tewari, Frutiger, and Carlson (US 8,065,383 B2, Nov. 22, 2011). Final Act.
6-7.
Claim 7 stands rejected under 35 U.S.C. § I03(a) based on Liskov,
Tewari, Frutiger, and Martin (US 5,867,706, Feb. 2, 1999). Final Act. 7-8.
Claims 9, 10, 20, 21, and 23-29 stand rejected under 35 U.S.C.
§ I03(a) based on Liskov, Tewari, and Gagliardi (US 2010/0306368 Al,
Dec. 2, 2010). Final Act. 8-10.
ANALYSIS
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains."' KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) ("KSR"). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
3
Appeal2017-005668
Application 13/348,348
prior art, (3) the level of skill in the art, and ( 4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966).
A. Independent Claims 1, 16, 19 and 23
Claim 1 recites "in response to determining that the cache server has
said requested resource, generating a second domain name, said second
domain name including first information from said first domain name and
second information determined from said one or more values forming part of
the client request." Independent claims 16, 19, and 23 recite similar
limitations. The Examiner finds these limitations disclosed by Liskov.
Final Act. 3-5 and 9 (citing Liskov 9:22-25, 7:46-49, 10:1-7).
Appellants dispute the Examiner's findings. App. Br. 7-10, 13.
Appellants argue that "Liskov discloses only two possible responses to a
client request-that a content engine will provide the requested content to a
client or the content engine will redirect to another content engine." App.
Br. 8 ( citing Liskov 9: 15-18). Particularly, Appellants argue "[ t ]here is no
disclosure in Liskov of a step of 'generating a second domain name' to
redirect a client 'in response to determining that said cache server has said
requested resource, ( emphasis added)' as recited by claim 1, rather than
serving the requested content to the requesting client." Id. at 9.
During the hearing, in response to the Board's question whether the
argued limitation includes only one step of "generating a second domain
name" or two steps of "determining that said cache server has said requested
resource" and "generating a second domain name," Appellants' counsel
responded that the argued limitation is only one step of "generating"
responsive to the "determining." Hearing Transcript 17-20.
4
Appeal2017-005668
Application 13/348,348
In Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d
1249 (Fed. Cir. 2010) ("Becton"), the Court of Appeals for the Federal
Circuit ("Federal Circuit") held that"[ w ]here a claim lists elements
separately, 'the clear implication of the claim language' is that those
elements are 'distinct component[s]' of the patented invention." Id. at 1254
(quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)).
Here, we face the opposite situation in which the claimed "determining" and
"generating" are recited as parts of the same claim element labeled as the
letter "C" in the claims. Following Beeton's logic, if elements listed
separately are implied to be separate elements, then the opposite should hold
true, namely, that the recitation of the "determining" and "generating" in the
same claim element implies they are part of a single element. This is
consistent with Appellants' counsel's view of how to construe the claim
language.
Appellants' argument for patentability rests upon the same cache
server (1) determining it has the requested resource and (2) in response,
generating a second domain name incorporating additional information to
cause a client to redirect to a cache server determined as best to provide the
requested resource. See App. Br. 7-10, 13. However, since the
"determining" is not recited as a separate step in the claims, and the
"determining" and "generating" steps are not recited as performed by the
same cache server, Appellants' argument is not commensurate in scope with
the claims as presented on appeal.
Appellants' argument also fails for another reason. "[ A ]n indefinite
article 'a' or 'an' in patent parlance carries the meaning of 'one or more' in
open-ended claims containing the transitional phrase 'comprising'."
5
Appeal2017-005668
Application 13/348,348
Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1342--43
(Fed. Cir. 2008)(quoting KJC Corp. v. Kinetic Concepts, Inc., 223 F.3d
1351, 1356 (Fed. Cir. 2000)). The claims recite "a cache server," which thus
could be interpreted as multiple cache servers. Thus, the claims encompass
one cache server determining another cache server in the CDN has the
requested resource and generating a modified domain name to direct the
client to the other cache server. Liskov discloses this feature. See Final Act.
3-5 and 9 (citing Liskov 10: 1-7; see also 7:34--49; 8: 1---6, 8:61-9:3).
In sum, because the "determining" is not recited as an element of the
claimed invention, and the "determining" and "generating" are not recited as
performed by the same cache server, and the claims may be interpreted as
reading on steps or functions performed by multiple cache servers,
Appellant's argument for patentability does not persuade us the Examiner
errs in the§ 103 rejections. Accordingly, we decline to reverse the
Examiner's rejections.
B. Remaining Claims
Appellants present no separate arguments for the remaining dependent
claims, which fall with their respective independent claims for the reasons
stated. See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the rejection of claims 1-3, 5-7, 9, 10, 16-21 and 23-29
under 35 U.S.C. § 103(a).
6
Appeal2017-005668
Application 13/348,348
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
7