Ex Parte Newton et al

Patent Trial and Appeal Board

Aug 8, 2017

12773086 (P.T.A.B. Aug. 8, 2017)

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.
12/773,086 05/04/2010 Christopher Newton 0374-US-01 5227
83579 7590 08/10/2017
LEVEL 3 COMMUNICATIONS, LLC
Attn: Patent Docketing
1025 Eldorado Blvd.
Broomfield, CO 80021
EXAMINER
CELANI, NICHOLAS P
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
08/10/2017 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 @ leve!3. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER NEWTON and DAVID FULLAGAR
Appeal 2015-007655
Application 12/773,086
Technology Center 2400
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and MELISSA
A. HAAPALA, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—17. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 An oral hearing for this appeal was held on June 15, 2017.
2 According to Appellants, the real party in interest is Level 3
Communications, LLC. (App. Br. 2).
Appeal 2015-007655
Application 12/773,086
STATEMENT OF THE CASE
Appellants’ invention relates to dynamically determining server
capacity to be allocated to a customer of a content distribution network
(CDN) (Spec. 1 8). Exemplary claim 1 under appeal reads as follows:
1. A method comprising:
mapping a content provider to a first set of content
servers in a content distribution network;
receiving content from the content provider, the content
to be distributed by the first set of content servers in the content
distribution network;
monitoring network traffic associated with the content
from the content provider;
determining at least one metric associated with the
network traffic, wherein the at least one metric includes content
popularity;
remapping the content provider to a second set of content
servers in the content distribution network based on the at least
one metric.
REFERENCES and REJECTIONS
Claims 1—17 stand rejected under 35U.S.C. § 101 as not being
directed to patent eligible subject matter (see Final Act. 3—4).
Claims 1—6, 8—15, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Swildens et al. (US 2009/0132648 Al; May 21, 2009),
Berstis et al. (US 2008/0270605 Al; Oct. 30, 2008), and Lobo (US
2006/0161604 Al; July 20, 2006) (see Final Act. 4-12).
Claims 7 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Swildens, Berstis, Lobo, and Brown et al.
(US 2006/0235991 Al; Oct. 19, 2006) (see Final Act. 12-13).
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner errs. We are persuaded the Examiner erred in
rejecting the claims under 35 U.S.C. § 101 for not being directed to patent
eligible subject matter. We, however, are not persuaded the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a) as obvious in view of the
cited references, and we adopt as our own the findings and reasons set forth
by the Examiner thereof. See Final Act. 4—13; Ans. 11—18. We highlight
and address specific findings and arguments for emphasis as follows.
Section 101 Rejection
Independent claim 1 recites a method and is, therefore, directed to one
of the four statutory categories of patentability enumerated by 35 U.S.C.
§101 (process, machine, manufacture, or composition of matter). The
Examiner finds the claims are “drawn toward the abstract idea of product
placement” based on “the popularity of an item as a factor when determining
where to place it” (Final Act. 3).
Appellants contend the Examiner erred in finding claim 1 is not
directed to patent eligible subject matter. See App. Br. 6—13. Appellants
argue that, contrary to the Examiner’s assertion, none of the claims
“attempts to tie up the broad category of ‘product placement’” {id. at 8).
Appellants’ further argue the claims are similar to DDR Holdings case that
are tailored toward computer network technology (Reply Br. 6—7 (citing
DDR Holdings, LLCv. Hotels.Com, LP, 773 F.3d 1245, 1257 (Fed. Cir.
2014)). With respect to whether the claims are drawn to “product
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placement,” Appellants argue the Examiner has not presented evidence that
such concept is indeed an abstract idea {id. at 7).
We are persuaded by Appellants’ arguments. The Supreme Court has
set forth “a framework for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134
S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Services v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). According to this framework, a
determination is made to consider whether the claims at issue are directed to
one of those concepts (i.e., laws of nature, natural phenomena, and abstract
ideas). See id. If so, a further determination must be made to consider the
elements of each claim both individually and “as an ordered combination” to
determine whether the additional elements “transform the nature of the
claim” into a patent-eligible application. Id.
First, we review claim 1 to determine whether it is directed to a patent
ineligible concept, such as the “abstract idea” exception found by the
Examiner. See Mayo, 132 S. Ct. at 1297; see also Final Act. 3. The claim
recites steps of “determining at least one metric associated with the network
traffic” and “remapping the content provider to a second set of content
servers in the content distribution network based on the at least one metric.”
We find the recited steps are not directed to an abstract idea, but merely
recite certain steps used to assess and determine at least one metric
associated with the network traffic and remapping the content provider to a
second set of servers based on the determined metric.
Particularly, we are persuaded by Appellants’ argument that the
Examiner’s generic, conclusory statement that “Appellants choses to engage
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Application 12/773,086
the use of broad language to cover any ‘remapping [] based on the at least
one metric’” and “[b]ecause remapping within a content delivery network is
a form of product placement, the claim encompasses product placement”
(Ans. 4) does not address the actual claim limitations (Reply Br. 5—6). The
recited limitations of mapping and remapping the content provider in claim
1, for example, does not simply recite the general concept of “product
placement,” as the Examiner stated. Furthermore, we disagree with the
Examiner that the claims are patent-ineligible “[b]ecause CDNs
conventionally consider popularity, the scope Appellants] would be getting
would largely be ‘remapping the content provider to a second set of servers’
as the CDN industry will conventionally meet all the other steps” (Ans. 6).
As explained in Appellants’ Specification (see e.g., Spec. H 21, 25—28), a
binding map controls mapping and remapping the content providers based
on server capacity.
Moreover, we are persuaded by Appellants assertion that
[T]he claims at issue in this appeal are like the example of DDR
holdings from the USPTO’s published examples of claims that
are patent eligible under 35 U.S.C. §101. See, e.g.,
http://ww w.uspto.gov/patents/law/exam/abstract idea example
s.pdf. Appellant’s claimed system causes a computer system to
work more efficiently. Through the use of at least one metric,
the functionality of the computer system is improved. Thus, the
claims are not simply saying use a computer to apply an
abstract idea. Instead, the claims improve the operation of a
computer system.
(App. Br. 11). We agree with Appellants comparison between the claims on
appeal and those in DDR holding and observe that the recited “mapping a
content provider to a first set of content servers in a content distribution
network” and “remapping the content provider to a second set of content
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servers in the content distribution network” is not reciting merely a
functionality for arranging content providers. In fact, similar to DDR
holding, the appealed claims are “necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks,” and that the claimed invention did not simply use computers to
serve a conventional business purpose (see DDR Holdings, LLC v.
Hotels.com, 773 F.3d 1245, 1257 (Fed. Cir. 2014)).
Therefore, we are persuaded the Examiner erred in finding claims 1—
17 recite patent-ineligible subject matter. Accordingly, we do not sustain the
rejection of claims 1—17 under 35U.S.C. § 101.
Section 103 Rejections
Claims 1—5
First, Appellants contend paragraphs 42 and 49 of Swildens do not
teach or suggest the recited step of “monitoring network traffic associated
with the content from the content provider” (App. Br. 14—15). More
specifically, Appellants contend the cited portions of Swildens make no
mention of “traffic associated with content from the content provider” or
“monitoring” such traffic (App. Br. 15—16).
These arguments are not persuasive because, as explained by the
Examiner (Ans. 11—12), Swildens’ disclosure relates to content delivery and
domain name servers (DNS) in a content delivery system. The Examiner
finds the DNS monitors resource availability such as latency in order to
determine the best-suited server for assigning services (Ans. 12 (citing
Swildens Tflf 47, 49)). We agree with these findings.
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Second, Appellants contend the disclosure of Swildens, in paragraph
46, fails to teach or suggest the recited step of “determining at least one
metric associated with the network traffic, wherein the at least one metric
includes content popularity” (App. Br. 16). More specifically, Appellants
contend the cited portion of Swildens makes “no mention of a ‘metric
associated with the network traffic’ wherein ‘the network traffic’ refers to
‘network traffic associated with the content from the content provider’” (id.).
The Examiner finds the cited portion of Swildens in paragraph 46
discusses using a metric for testing latency in terms of the round trip time
between servers, whereas paragraph 40 discloses determining the best suited
server based on the network performance and server loads (Ans. 13). With
respect to the recited “content popularity,” the Examiner explains that Lobo
was relied on for teaching an alternate factor, such as the usage or popularity
of digital content, may be considered for determining the server location for
storing the content (id. (citing Lobo 172)). Additionally, the Examiner finds
Swildens provides a similar factor, such as whether a content is cached or a
measure of popularity, as a metric threshold for determining how to remap to
a different set of servers (Ans. 14 (citing Swildens 1 53)). We also agree
with these findings.
Lastly, Appellants contend the combination of references and
replacing the load metric of Berstis would “interfere with the operation of
Berstis” (App. Br. 18). Appellants assert the proposed modification would
render Berstis unsatisfactory for its intended purpose and change the
principle of operation of Berstis (id.).
In response, the Examiner explains that the combination is based on
modifying Swildens with the teachings of Berstis and Lobo (Ans. 14).
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Furthermore, the Examiner characterizes Appellants’ argument an attempt to
bodily incorporate the teachings of the secondary reference into the primary
reference, whereas the combination is based on “what the combined
teachings of the references would have suggested to those of ordinary skill
in the art” (Ans. 15 (citing In re Keller, 642 F.2d 413 (CCPA 1981)); see
also In reMouttet, 686 F.3d 1322, 1332—33 (Fed. Cir. 2012) (citing Keller,
642 F.2d at 425) (“[T]he test for obviousness is what the combined teachings
of the references would have suggested to those having ordinary skill in the
art.”). We agree with the Examiner’s characterization.
Further, the Examiner finds, and we agree, that Appellants’ arguments
regarding rendering Berstis unsatisfactory for its intended purpose and
changing the principle of operation of Berstis are not supported by sufficient
evidence (Ans. 16). In fact, the Examiner correctly asserts ‘“replacing the
load metric with a popularity metric’ is mere [sic] simple substitution” {id.),
which was found in KSR to be nothing “more than the predictable use of
prior art elements according to their established functions, and thus would
have been obvious to one of ordinary skill in the art.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007).
In view of these findings, Appellants’ arguments are also
unpersuasive because they do not address the actual reasoning of the
Examiner’s rejection based on the combination of the applied prior art.
They fail to acknowledge the knowledge, creativity, and common sense that
one of ordinary skill in the art would have used when considering
combinations or modifications. See KSR, 550 U.S. at 415—22; see also
Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013).
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Thus, we agree with the Examiner that the cited combination of
references teaches or suggest all of the claim elements of independent claim
1. Accordingly, we sustain the Examiner’s rejection of claim 1, as well as
claims 2—5 which are not argued separately, under 35 U.S.C. § 103(a) as
unpatentable over Swildens, Berstis, and Lobo.
Claim 6
Appellants argue the patentability of claim 6 based on arguments
similar to those presented for claim 1 (App. Br. 19—23). The Examiner
provides a comprehensive response citing to the relevant passages in the
applied references. Based on the Examiner’s findings and analysis, which
we adopt as our own, we sustain the Examiner’s rejection of claim 6, under
35 U.S.C. § 103(a) as unpatentable over Swildens, Berstis, and Lobo.
Claims 12—15 and 17
Appellants contend the rejection of claims 12—15 and 17 lacks “an
element-by-element analysis of the claim language in each claim and by not
noting where each element is purportedly taught by the cited references.”
(App. Br. 23). Similar to our discussion above, we agree with the
Examiner’s findings and analysis of the prior art teachings and adopt them
as our own (see Final Act. 10-12, Ans. 21—31). Accordingly, we sustain the
Examiner’s rejection of claims 12—15 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Swildens, Berstis, and Lobo.
Remaining Claims
Appellants provide no substantive and separate arguments for
dependent claims 7 and 16 or the remaining dependent claims (see App.
Br. 26). We therefore sustain their rejections for the reasons stated with
respect to independent claim 1.
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DECISION
We affirm the Examiner’s decision to reject claims 1—17.
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
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