Fastly, Inc.

Patent Trials and Appeals Board

Mar 1, 2022

2020006490 (P.T.A.B. Mar. 1, 2022)

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. 16/120,660 09/04/2018 Artur Bergman 683.0023c1 7686 76444 7590 03/01/2022 Setter Roche LLP 1860 Blake Street Suite 100 Denver, CO 80202 EXAMINER ZHU, ZHIMEI ART UNIT PAPER NUMBER 2495 NOTIFICATION DATE DELIVERY MODE 03/01/2022 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): uspto@setterroche.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ARTUR BERGMAN and TYLER B. McMULLEN ___________________ Appeal 2020-006490 Application 16/120,660 Technology Center 2400 ____________________ Before St. JOHN COURTENAY III, JOHNNY A. KUMAR, and JOHN A. EVANS, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 seeks our review under 35 U.S.C. § 134(a) from the final rejection of Claims 21-40. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Our Decision refers to Appellant’s Appeal Brief filed January 8, 2020 (“Appeal Br.”); Examiner’s Answer mailed April 2, 2020 (“Ans.”); the Final Action mailed November 8, 2019 (“Final Act.”), and the Specification filed September 4, 2018 (“Spec.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appeal Brief identifies FASTLY, INC., as the real party in interest. Appeal Br. 2. Appeal 2020-006490 Application 16/120,660 2 STATEMENT OF THE CASE INVENTION. The claims relate to methods and systems to handle verification information in a content node. See Abstr. Claims 21, 29, and 35 are independent. An understanding of the invention can be derived from a reading of Claim 21, which is reproduced below: 21. A method of operating a cache server in a content delivery network to support content paywalls, the method comprising: receiving a content request from an end point for content hosted by an origin server behind a paywall and stored by the cache server; determining a state of a cookie associated with the content request based at least on verification information stored on the cache server and associated with the end point and at least one previous request for different content; and in response to determining that the state of the cookie is valid, serving the content to the end point from the cache server. Appeal Br. 16 (Claims App.). Prior Art Name3 Reference Date Crick US 2007/0180048 A1 Aug. 2, 2007 Lapidous US 2009/0113532 A1 Apr. 30, 2009 Maloney US 2010/0122303 A1 May 13, 2010 Palmer US 7,882,538 B1 Feb. 1, 2011 Bergman US 10,068,014 B2 Sept. 4, 2018 3 All citations herein to the references are by reference to the first named inventor/author only. Appeal 2020-006490 Application 16/120,660 3 REJECTIONS4 AT ISSUE 1. Claims 21-31 and 33-40 stand rejected on the judicial ground of obviousness-type double patenting (“ODP”) over Claims 7 and 16 of Bergman and Lapidous. Final Act. 5-7. 2. Claims 21-40 stand rejected under 35 U.S.C. § 112(a) as failing the written description requirement. Final Act. 12-13. 3. Claim 27 stands rejected under 35 U.S.C. § 112(b) as indefinite. Final Act. 13. 4. Claims 21, 22, 25-30, 34-36, 39, and 40 stand rejected under 35 U.S.C. § 103 as obvious over Crick and Lapidous. Final Act. 14-35. 5. Claims 23, 24, 31-33, 37, and 38 stand rejected under 35 U.S.C. § 103 as obvious over Crick, Lapidous, and Palmer. Final Act. 35-39. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be forfeit. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). After considering the evidence presented in this Appeal and each of 4 The present application is being examined under the pre-AIA first to invent provisions. Final Act. 2. Appeal 2020-006490 Application 16/120,660 4 Appellant’s arguments, we are persuaded that Appellant identifies reversible error for only a subset of the claims. Thus, we affirm-in-part the Examiner’s rejections. We add the following primarily for emphasis. CLAIMS 21-31 AND 33-40: OBVIOUSNESS-TYPE DOUBLE PATENTING OVER BERGMAN AND LAPIDOUS. Appellant contends the Examiner errs because Lapidous is not commonly owned with the present application, nor was the present application derived from activities undertaken within the scope of a joint research agreement with Lapidous. Appeal Br. 5. The Examiner finds: “[a]n obvious-type nonstatutory double patenting rejection only requires the primary reference and the present Application to be commonly owned. It does not require the secondary reference used in the obvious-type double patenting rejection to be commonly owned with the primary reference or the present Application.” Ans. 8. The Examiner finds Bergman is commonly owned with the present application. Id. Appellant does not file a Reply Brief. We are not persuaded the Examiner errs. CLAIMS 21-40: WRITTEN DESCRIPTION. Different Content. The claims recite, inter alia, “determining a state of a cookie associated with the content request based at least . . . [a] request for different content.” The Examiner finds Appellant’s arguments over this ground to be persuasive, thus, withdraws this ground of rejection. Ans. 6. Appeal 2020-006490 Application 16/120,660 5 Invalid Cookie. The Examiner rejected Claims 23, 30, and 37 in view of the recitation: “in response to determining that the state of the cookie is invalid, sending a verification request to the origin server.” The Examiner finds the Appeal Brief fails to address this ground of rejection. Ans. 7. Appellant does not file a Reply Brief. We are not persuaded the Examiner errs. Subsequent Requests. The Examiner rejected Claim 32 in view of the recitation: “sending the updated security information to the end point for use with one or more subsequent requests.” The Examiner finds the Appeal Brief fails to address this ground of rejection. Ans. 7. Appellant contends: Appellant provides an example wherein if a user device transfers a second secure content request to the cache server, the cache server may use the predefined verification information to verify the device and provide the requested content to the user device. Appeal Br. 7 (citing Spec., ¶ 36; Fig. 4). We find “a second secure content request” at least addresses the ground of rejection. To the extent the Examiner is not satisfied with the sufficiency thereof, no finding has been made. We are persuaded of error. CLAIM 27: INDEFINITENESS. Claim 27 recites, inter alia, “the one or more previous content requests.” The Examiner finds there is insufficient antecedent basis for this recitation. Final Act. 13. Appeal 2020-006490 Application 16/120,660 6 Appellant “acknowledges the antecedent bases issue in claim 27 and respectfully requests the rejection be held in abeyance until a decision is made by the Board regarding the issues under appeal and/or the Application is otherwise in condition for allowance.” Appeal Br. 14. Because Appellant presents no arguments traversing these rejections, they are summarily affirmed. See 37 C.F.R. § 41.31(c) (“An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office.”); 37 C.F.R. § 41.37(c)(iv) (“[A]ny arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”); MPEP § 1205.02 (9th ed. March 2014) (“[T]he Board may summarily sustain any grounds of rejections not argued.”). CLAIMS 21, 22, 25-30, 34-36, 39, AND 40: OBVIOUS OVER CRICK AND LAPIDOUS. Claim 21 recites, inter alia, “receiving a content request from an end point for content . . . determining a state of a cookie associated with the content request based at least on verification information stored on the cache server and associated with the end point.” The Examiner finds this limitation is taught by Crick. Final Act. 14-15. Specifically, the Examiner finds: In step E, client 402 issues the same request again but now cookie 414 is present in the request and the set of data included in the response becomes accessible to client 402 if the cookie in the response and the cookie cached are identical. Appeal 2020-006490 Application 16/120,660 7 Final Act. 15 (quoting Crick, ¶ 59) (emphasis omitted). The Examiner interprets: “‘cookie 414’ ‘present in the request’ as a cookie associated with the content request.” Id. Appellant contends: Crick teaches storing cookies on a cache server associated with a “particular cached object or set of data,” which is inherently different from the content request of claim 21 because the content request of claim 21 is a request for content hosted by an origin server and includes a cookie associated with a previous request for different content. Fig. 5 of Crick further illustrates that Crick teaches generating a cookie for a specific cache entry (step C), wherein the cached verification information of the claim 21 may be used to access different content from the origin server. Appeal Br. 11 (citing Crick, ¶ 59). The Examiner finds: the fact that the cookie in Crick is associated with a particular content being currently requested does not stop Crick from teaching “determining a state of a cookie associated with the content request based at least on verification information stored on the cache server and associated with the end point” because the limitation “determining a state of a cookie associated with the content request based at least on verification information stored on the cache server and associated with the end point” does not require the cookie to be associated with a previous request for different content. Ans. 9. The Examiner finds: “‘determining a state of a cookie associated with the content request based at least on verification information stored on the cache server and associated with the end point’ does not require the cookie to be associated with a previous request for different content.” Ans. 9. However, Claim 21 specifically recites: “determining a state of a cookie Appeal 2020-006490 Application 16/120,660 8 associated with the content request based at least on verification information stored on the cache server and associated with the end point and at least one previous request for different content.” (Emphasis added). The claim specifically recites that the state of the cookie is associated with a previous request for different content. The Examiner’s finding is incompatible with the claim. Independent Claims 29 and 35 recite commensurate limitations. In view of the foregoing, we reverse the rejection of Claims 21, 22, 25-30, 34-36, 39, and 40 under 35 U.S.C. § 103 over Crick and Lapidous. CLAIMS 23, 24, 31-33, 37, AND 38: OBVIOUSNESS OVER CRICK, LAPIDOUS, AND PALMER. Appellant contends Claims 23, 24, 31-33, 37, and 38, are allowable in view of their dependence on otherwise allowable independent claims 21, 29, and 35. The Answer does not separately address the dependent claims. In view of the foregoing, we reverse the rejection of Claims 23, 24, 31-33, 37, and 38, and 36-40. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21-31, 33- 40 Nonstatutory Double Patenting Patent No. 10,068,014 and US 2009/0113532 21-31, 33- 40 23, 30, 32, 37 112(a) Written Description 23, 30, 37 32 27 112(b) Indefiniteness 27 21, 22, 25- 30, 34-36, 39, 40 103 Crick, Lapidous 21, 22, 25-30, Appeal 2020-006490 Application 16/120,660 9 34-36, 39, 40 23, 24, 31- 33, 37, 38 103 Crick, Lapidous, Palmer 23, 24, 31-33, 37, 38 Overall Outcome 21-31, 33- 40 32 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-IN-PART