Gangming Luo et al.

Patent Trials and Appeals Board

Jan 9, 2020

14252243 - (D) (P.T.A.B. Jan. 9, 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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/252,243 04/14/2014 Gangming Luo 8386.3012.001 2174
23399 7590 01/09/2020
REISING ETHINGTON P.C.
755 W. Big Beaver Road
Suite 1850
TROY, MI 48084
EXAMINER
JOSHI, SURAJ M
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
01/09/2020 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GANGMING LUO and JONATHAN J. KAUFMAN
Appeal 2018-004465
Application 14/252,243
Technology Center 2400
Before CAROLYN D. THOMAS, NABEEL U. KHAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–18, 21, and 22, all of the pending
claims.2 We have jurisdiction 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). Appellant identifies the real party in interest as Gangming Luo
and Jonathan J. Kaufman. Appeal Br. 3.
2 Claims 19 and 20 are cancelled. Appeal Br. 34.
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CLAIMED SUBJECT MATTER
Appellant’s claimed “invention relates to a system that provides the
current internet protocol address for [a] remote computing device to
facilitate connection to, and control of, the remote computing device” by a
local computing device. Spec. ¶ 3.3
Claims 1, 17, and 18 are independent. Claims 1, 5, 6, and 22,
reproduced below with limitations at issue emphasized, are exemplary of the
claimed subject matter:
1. A device for providing a current internet protocol
address associated with a remote computing device,
comprising:
a server configured for connection to said remote
computing device over a first network and a local computing
device over a second network, said server having a
microprocessor having a computer program encoded thereon
including code for:
receiving a request from a web browser on said
remote computing device for a resource from said server;
obtaining said current internet protocol address
from said request; and,
providing said current internet protocol address to
the local computing device in a format such that said
current internet protocol address is displayed to a user of
the local computing device; and,
a memory accessible by the microprocessor.

3 Throughout this Decision we refer to: (1) Appellant’s Specification filed
April 14, 2014 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed
May 4, 2017; (3) the Appeal Brief filed October 4, 2017 (“Appeal Br.”); and
(4) the Examiner’s Answer (“Ans.”) mailed January 25, 2018.
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5. The device of claim 1 wherein said computer
program includes code for comparing said current internet
protocol address to a prior internet protocol address for said
remote computing device.
6. The device of claim 5 wherein said computer
program includes code for writing said current internet protocol
address to said memory when said current internet protocol
address differs from said prior internet protocol address.
22. The device of claim 1 wherein said local
computing device does not include a server.
Appeal Br. 31, 32, 35 (Claims Appendix).

REFERENCES
The references4 relied upon by the Examiner are:
Name Reference Date
Mattaway et al. US 6,185,184 B1 Feb. 6, 2001
Meyer et al. (Meyer ’195) US 2002/0174195 A1 Nov. 21, 2002
Meyer et al. (Meyer ’479) US 6,928,479 B1 Aug. 9, 2005
Carroll et al. US 7,418,596 B1 Aug. 26, 2008
Burch et al. US 2011/0296486 A1 Dec. 1, 2011
Mousseau et al. US 2012/0113933 A1 May 10, 2012
Burgess et al. US 2012/0151553 A1 June 14, 2012
Hershko et al. US 2013/0067085 A1 Mar. 14, 2013
Reed et al. US 2013/0273853 A1 Oct. 17, 2013

REJECTIONS
The Examiner rejects claims 1, 13–18, and 22 under 35 U.S.C. § 103
as unpatentable over Hershko, Carroll, and Reed. Final Act. 2–7.

4 All citations to the references use the first-named inventor only.
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The Examiner rejects claims 2, 3, 5–7, and 21 under 35 U.S.C. § 103
as unpatentable over Hershko, Carroll, Reed, and Burgess. Id. at 7–11.
The Examiner rejects claim 4 under 35 U.S.C. § 103 as unpatentable
over Hershko, Carroll, Reed, and Meyer ’479. Id. at 12.
The Examiner rejects claim 8 under 35 U.S.C. § 103 as unpatentable
over Hershko, Carroll, Reed, and Mattaway. Id. at 12–13.
The Examiner rejects claims 9 and 10 under 35 U.S.C. § 103 as
unpatentable over Hershko, Carroll, Reed, and Meyer ’195. Id. at 13–14.
The Examiner rejects claim 11 under 35 U.S.C. § 103 as unpatentable
over Hershko, Carroll, Reed, and Mousseau. Id. at 14–15.
The Examiner rejects claim 12 under 35 U.S.C. § 103 as unpatentable
over Hershko, Carroll, Reed, and Burch. Id. at 15–16.

ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). We adopt
as our own the findings and reasons set forth by the Examiner (1) in the
Final Rejection (Final Act. 2–16) and (2) in the Examiner’s Answer (Ans. 2–
20) and concur with the conclusions reached by the Examiner. We highlight
the following for emphasis.

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Claim 1
The Examiner finds that Hershko teaches most of the limitations of
claim 1, with several exceptions. Final Act. 2–4 (citing Hershko ¶¶ 45, 61,
Fig. 3). Specifically, the Examiner finds Hershko teaches a server having a
microprocessor and configured for connection to said remote computing
device over a first network and a local computing device over a second
network, but “does not explicitly disclose receiving a request from a web
browser on said remote computing device for a resource from said server
and obtaining said current internet protocol from said request.” Final Act. 3.
The Examiner relies on Carroll to teach this limitation. Id. (citing Carroll
1:64–2:9). The Examiner determines that “it would have been obvious to
one having ordinary skill in the art, to utilize the teachings of Carroll with
the system of Hershko in order to obtain the currently assigned IP address.”
Id.
The Examiner further finds that “Hershko and Carroll do not
explicitly disclose providing said current internet protocol address to the
local computing device in a format such that said current internet protocol
address is displayed to a user of the local computing device” but “Reed does
teach disclose [sic] providing said current internet protocol address to the
local computing device in a format such that said current internet protocol
address is displayed to a user of the local computing device.” Final Act. 4
(citing Reed ¶¶ 37, 43, Fig. 2A). The Examiner determines that “it would
have been obvious to one having ordinary skill in the art, to utilize the
teachings of Reed with the system of Hershko and Carroll in order to
provide automated or interactive monitoring of wireless communication
based mobile device.” Id.
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Appellant argues “[t]he Examiner offers no rationale for why one
would combine the teachings of Reed et al. with those of Hershko et al. to
‘provide automated or interactive monitoring of wireless communication
based mobile device.’” Appeal Br. 7.
This argument is not persuasive of error because the Examiner
articulates a reason to combine the teachings of Reed with Hershko and
Carroll that is rational on its face and supported by evidence and Appellant
does not address the reason identified by the Examiner. Final Act. 4;
Ans. 16–17.
Next, Appellant argues Hershko “is not intended for use as a
‘monitoring’ system for the mobile content delivery device 28 and one of
ordinary skill in the art would have no reason to modify the web client 40,
41 in Hershko et al. for a ‘monitoring’ purpose that the system was not
intended to be used for.” Appeal Br. 7.
Appellant’s argument that Hershko is not intended for monitoring is
not supported by evidence found in the record and is, instead, supported only
by attorney argument which “cannot take the place of evidence.” In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Accordingly, this argument is
unpersuasive of error.
Appellant next argues “one of ordinary skill in the art would not
modify the system in Hershko et al. in the manner suggested by the
Examiner because the system in Hershko et al. has no need to display the
internet protocol address of device 28 to the user.” Appeal Br. 8.
The Examiner responds
Reed is used to teach the provision of the current IP address of
the remote device to a local computing device [in] a format such
that the current IP address is displayed to the user of the local
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computing device. Thus, Reed improves upon the system of
Hershko and Carroll by providing means where the local user can
directly observe the current IP address of the remote device on a
display (Figure 2A, Paragraphs 37, 43, Reed). In Hershko, the
web client (local computing device) will want to be able to
reliably access the mobile computing device, by having access to
the most current IP address of the mobile computing device
(Paragraph 11). In essence, the Hershko art provides a way of
monitoring the remote computing device’s current IP address.
Ans. 17. Appellant, in turn, has not presented a Reply Brief, and, therefore,
has not disputed the Examiner’s additional reasoning and findings
articulated at page 17 of the Answer. Consequently, Appellant has not
shown error in these additional factual findings or in the Examiner’s
conclusion of obviousness.
We, therefore, sustain the 35 U.S.C. § 103 rejection of independent
claim 1. We also sustain the Examiner’s § 103 rejection of independent
claims 17 and 18, which are only nominally argued separately. Appeal
Br. 9–18.
Claim 22
The Examiner finds “Hershko and Carroll do not explicitly disclose
wherein said local computing device does not include a server” but Reed
teaches “wherein said local computing device does not include a server,” as
recited in claim 22. Final Act. 6. Specifically, the Examiner finds Reed
teaches the computing device does not include a server because “GUI
interface 200 includes particular display portions and user-selectable
controls that may be presented to an authorized user to enable the user to
select and define various manners by which the CIC interacts with a
monitored mobile device” and “[i]n some embodiments, the GUI interface
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200 may be provided to the authorized user via one or more client
computing devices associated with the authorized user.” Final Act. 6 (citing
Reed Fig. 2A, ¶ 37) (“In some embodiments, the GUI interface 200 may be
provided to the authorized user via one or more client computing devices
associated with the authorized user, such as one of client computing systems
360 of FIG. 3 and/or client devices 190 of FIG. 1.”). The Examiner
determines it would have been obvious “to utilize the teachings of Reed with
the system of Hershko and Carroll in order to provide automated or
interactive monitoring of wireless communication based mobile device.”
Final Act. 6–7.
Appellant argues that “for the reasons already set forth above in
Section IV.Al relating to independent claim 1 . . . the Examiner’s proposed
combination destroys the basic functionality of the system in Hershko.”
Appeal Br. 19. We find this argument unpersuasive for the reasons
indicated above for independent claim 1. We, therefore, sustain the 35
U.S.C. § 103 rejection of independent claim 22.5

5 In the event of further prosecution, the Examiner should consider whether
to reject claim 22 for lack of written description under 35 U.S.C. § 112(a).
Claim 22 was added as a new claim during prosecution and is not expressly
disclosed in Appellant’s original disclosure. Amendment filed December
21, 2016. Appellant indicates support is found for claim 22 at Figure 1 and
paragraph 17 of the Specification. Id. Appellant’s cited disclosure indicates
that local computing device 14 may be a server, among other potential
devices, but does not provide a reason to exclude a server from the list of
potential devices that may embody local computing device 14. Spec. ¶ 17.
It is well settled, however, that “[n]egative claim limitations are adequately
supported [only] when the specification describes a reason to exclude the
relevant limitation.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344,
1351 (Fed. Cir. 2012). Accordingly, Appellant has not established the
original Specification provides written support for the newly added claim.
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Claim 5
The Examiner finds “Hershko, Carroll and Reed do not explicitly
disclose comparing said current internet protocol address to a prior internet
protocol address for said remote computing device,” but Burgess teaches
comparing said current internet protocol address to a prior internet protocol
address for said remote computing device, as recited in claim 5. Final
Act. 8–9. Specifically, the Examiner finds Burgess’ discussion of
comparing “Environment current IP address/network identification data” to
“Environment past IP addresses/network identification data” in an adaptive
reasoning system teaches the disputed limitation. Id. at 9 (citing Burgess
¶¶ 210, 288–292). The Examiner determines “it would have been obvious at
the time of filing to one having ordinary skill in the art, to utilize the
teachings of Burgess with the system of Hershko, Carroll and Reed in order
to perform a security check.” Final Act. 9.
Appellant argues that in contrast with the Examiner’s cited
combination of teachings, “claim 5 requires that the same device (i.e., the
same microprocessor in the same server) perform each of the actions recited
in claims 1 and 5.” Appeal Br. 21.
The Examiner responds
as seen in Carroll (Col. 2, Lines 3–9) the server can receive the
current IP address of the mobile device, and thus be stored on the
server (Col. 2, Lines 10–24, Carroll). Thus, as seen in Carroll, if
the database of IP address is stored on the server, the comparison
and overwriting, (of which functionality is more explicitly taught
by Burgess) will be done on the server, and thus the same device.
Ans. 19. We are unpersuaded because Appellant does not respond to the
Examiner’s additional findings and analysis articulated in the Answer.
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Next, Appellant argues:
To the extent that one of ordinary skill in the art would
consider modifying the system in Hershko et al. to “compar[e]
said current internet protocol address to a prior internet protocol
address for said remote computing device stored,” one of
ordinary skill in the art would clearly elect to do so in the proxy
server 32 as opposed to the firewall server 31. The entire purpose
of the proxy server 32 in Hershko et al. is to maintain and update
the dynamic IP address of the mobile device 28. One of ordinary
skill in the art would not modify the firewall server 31--identified
by the Examiner as the “server” for purposes of meeting the
limitations in claim 1--in this manner. Otherwise, the proxy
server 32 (which, again, is the crux of the invention in Hershko
et al.) would arguably be rendered useless.
Appeal Br. 22. This argument is premised on the allegation that one of
ordinary skill in the art would clearly elect to modify Hershko’s proxy server
32 as opposed to firewall server 31 because “[t]he entire purpose of the
proxy server 32 in Hershko et al. is to maintain and update the dynamic IP
address of the mobile device 28.” Id. This allegation regarding the purpose
of proxy server 32 in Hershko is not supported by evidence found in the
record. Mere attorney argument and conclusory statements unsupported by
factual evidence are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997). We, therefore, sustain the Examiner’s 35
U.S.C. § 103 rejection of claim 5 and of claim 21, which is not separately
argued with particularity. Appeal Br. 24–26.
Claim 6
The Examiner finds “Hershko, Carroll and Reed do not explicitly
disclose writing said current internet protocol address to a memory when
said current internet protocol address differs from said prior internet protocol
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address,” as recited in claim 6, but finds Burgess teaches the limitation.
Final Act. 9 (citing Burgess).
Appellant argues that in contrast with the Examiner’s cited
combination, “claim 6 requires that the same device (i.e., the same
microprocessor in the same server) perform each of the actions recited in
claims 1, 5” and 6. Appeal Br. 23.
The Examiner responds “as mentioned above in the remarks regarding
Claim 5, Carrols [sic] teaches the use of the same device. Therefore,
appellant’s arguments are not persuasive.” Ans. 20. Appellant, as noted
above for claim 5, does not respond to the Examiner’s additional findings
and analysis articulated in the Answer and therefore this argument is
unpersuasive.
Appellant further argues:
Again, to the extent that one of ordinary skill in the art
would consider modifying the system in Hershko et al. to
“writ[e] said current internet protocol address to said memory
when said current internet protocol address differs from said
prior internet protocol address,” one of ordinary skill in the art
would clearly elect to do so in the proxy server 32 as opposed to
the firewall server 31. The entire purpose of the proxy server 32
in Hershko et al. is to maintain and update the dynamic IP
address of the mobile device 28. One of ordinary skill in the art
would not modify the firewall server 31--identified by the
Examiner as the “server” for purposes of meeting the limitations
in claim 1--in this manner. Otherwise, the proxy server 32
(which, again, is the crux of the invention in Hershko et al.)
would arguably be rendered useless.
Appeal Br. 24. Appellant’s argument is premised on the allegation that one
of ordinary skill in the art would clearly elect to modify Hershko’s proxy
server 32 as opposed to firewall server 31 because “[t]he entire purpose of
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the proxy server 32 in Hershko et al. is to maintain and update the dynamic
IP address of the mobile device 28.” Id. This allegation regarding the
purpose of proxy server 32 in Hershko is not supported by evidence found in
the record. Mere attorney argument and conclusory statements unsupported
by factual evidence are entitled to little probative value. Geisler, 116 F.3d at
1470. We, therefore, sustain the Examiner’s 35 U.S.C. § 103 rejection of
claim 6.
CONCLUSION
We affirm the Examiner’s rejections of claims 1–18, 21, and 22 under
35 U.S.C. § 103.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 13–18,
22
103 Hershko, Carroll, Reed 1, 13–18,
22

2, 3, 5–7,
21
103 Hershko, Carroll, Reed,
Burgess
2, 3, 5–7,
21

4 103 Hershko, Carroll, Reed,
Meyer ’479
4
8 103 Hershko, Carroll, Reed,
Mattaway
8
9, 10 103 Hershko, Carroll, Reed,
Meyer ’195
9, 10
11 103 Hershko, Carroll, Reed,
Mousseau
11
12 103 Hershko, Carroll, Reed,
Burch
12
Overall
Outcome
1–18, 21,
22

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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