INTERDIGITAL VC HOLDINGS, INC.

Patent Trials and Appeals Board

Dec 16, 2020

2019004352 (P.T.A.B. Dec. 16, 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.
14/901,049 12/27/2015 Charline TAIBI 2013P00023WOUS 5819
24374 7590 12/16/2020
VOLPE KOENIG
DEPT. ICC
30 SOUTH 17TH STREET -18TH FLOOR
PHILADELPHIA, PA 19103
EXAMINER
HUANG, KAYLEE J
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
12/16/2020 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
following e-mail address(es):
eoffice@volpe-koenig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLINE TAIBI, REMI HOUDAILLE, and
STEPHANE GOUACHE
Appeal 2019-004352
Application 14/901,049
Technology Center 2400
Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
JUSTIN BUSCH, Administrative Patent Judges.
BUSCH, 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 12–25. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as InterDigital VC
Holdings, Inc. Appeal Br. 3.
Appeal 2019-004352
Application 14/901,049
2
CLAIMED SUBJECT MATTER
The claimed subject matter generally relates to adaptive streaming
(i.e., “according to its available bandwidth, a client terminal chooses the best
representation at a given point in time to optimize the tradeoff between the
quality (e.g. video quality) and the robustness to network variations”)
technology for a client receiving multimedia content from a server based on
recognizing that certain content was retrieved from a cache located along the
transmission path between the client and the server. Spec. 1:4–8, 2:12–14,
4:14–26. Claim 12, reproduced below, is illustrative of the claimed subject
matter:
12. A method for adapting downloading behavior of a client
terminal configured to receive a multimedia content from at least
one server, at least one representation of said multimedia content
being available, said method comprising, at said client terminal:
– requesting a first part of said multimedia content with a
given representation;
– detecting if a cache is located along a transmission path
between the client terminal and a server, from the request of said
first part;
– when a cache is detected, requesting a second part of said
multimedia content with a representation depending on at least
one performance criterion.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Wolff US 6,067,545 May 23, 2000
Denecheau US 2007/0081461 A1 Apr. 12, 2007
Sood US 2010/0235472 A1 Sept. 16, 2010

Appeal 2019-004352
Application 14/901,049
3
REJECTIONS2
Claims 12–16 and 21–25 stand rejected under 35 U.S.C. § 102(a)(1)
as being anticipated by Sood. Final Act. 4–7.
Claims 17–19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Sood and Wolff. Final Act. 8–10.
Claim 20 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Sood, Wolff, and Denecheau. Final Act. 10–12.
ANALYSIS
The Examiner finds Sood discloses every limitation recited in
independent claims 12 and 21. Final Act. 5, 7 (“Regarding claims 21-25, the
limitations of claims 21-25 are rejected in the analysis of claim 12-16
respectively, and these claims are rejected on that basis.”). Of particular
relevance to this Appeal, the Examiner finds Sood discloses “detecting if a
cache is located along a transmission path between the client terminal and a
server, from the request of said first part,” as recited in claim 12, because
Sood describes that client terminal 290 first passes a request for content to
edge server 280, which functions as a cache and may provide the requested
content instead of passing the request on to server 260. Final Act. 5 (citing
Sood ¶ 17, Fig. 2 (elements 260, 280)); see also Ans. 3 (“Examiner is clear
in pointing out the ‘fingerprint’ is taught by Burges (see page 2 paragraph
(0015)) not by Ham.”). The Examiner finds edge server 280 functioning as
an Internet “cache has to be detected before the system would transmit the

2 Claims 16, 20, and 21–25 were rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor regards as the invention. Final
Act. 3–4. The Examiner withdrew this rejection in the Answer. Ans. 9.
Accordingly, this rejection is not before us.
Appeal 2019-004352
Application 14/901,049
4
request to the cache.” Final Act. 5; see also Ans. 9–10 (noting that, “in
order for the edge server/cache to service the request, the edge server must
be detected/identified”).
Appellant argues the rejection is improper because, among other
reasons, Sood does not disclose “at said client terminal . . . detecting if a
cache is located along a transmission path between the client terminal and a
server, from the request of said first part,” as recited in amended claim 12.
More specifically, Appellant disagrees with Appellant’s characterization that
a cache has to be detected before the system could transmit a request to the
cache. Appeal Br. 8. Appellant argues Sood merely describes implementing
known Internet caches and such caches are intended to be completely
transparent to the client such that the client is never aware that a cache
processed its content request instead of the targeted content server. Appeal
Br. 8. Thus, Appellant argues that, contrary to the Examiner’s findings,
Sood’s clients do not know whether they receive the requested data from the
cache/edge server or the content server. Appeal Br. 7. Appellant argues this
understanding is supported by Sood’s cited portions, which describe the
edge/cache server intercepting a request from the client to the server and
providing the requested content if cached at the edge/cache server. Appeal
Br. 7–8. Thus, Appellant argues that a client does not detect the cache
before sending requests because, although requests may pass through servers
including caches, the client directs all requests for individual chunks to the
content server even if the cache intercepts such requests. Appeal Br. 8.
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a ‘rational connection
between the facts found and the choice made.”’ Motor Vehicle Mfrs. Ass’n
v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal
Appeal 2019-004352
Application 14/901,049
5
quotation marks and citation omitted); see Synopsys, Inc. v. Mentor
Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an
administrative agency, the PTAB “must articulate logical and rational
reasons for [its] decisions” (internal quotation marks and citation omitted)).
This is done by presenting, for anticipation, a prima facie case.
The Examiner has the initial burden to set forth the basis for any
rejection so as to put the patent applicant on notice of the reasons why the
applicant is not entitled to a patent on the claim scope that he seeks — the
so-called “prima facie case.” In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial
“burden of proof [is] on the [USPTO] to produce the factual basis for its
rejection of an application under sections 102 and 103”) (quoting In re
Warner, 379 F.2d 1011, 1016 (CCPA 1967)); see also Ex Parte Frye, 94
USPQ2d 1072 (BPAI 2010) (precedential) (Examiner has initial burden to
set forth basis for any rejection so as to put Appellant on notice of reasons
why Appellant is not entitled to patent on claim scope sought, i.e., a prima
facie case).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987); see In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004)
(for anticipation, “the Board must compare the construed claim to a prior art
reference and make factual findings that ‘each and every limitation is found
either expressly or inherently in [that] single prior art reference’” (citation
omitted)). In case of doubt as to whether claims of an application are
anticipated, the scales should be inclined toward the applicant. See In re
Appeal 2019-004352
Application 14/901,049
6
Coley, 40 F.2d 982, 986 (CCPA 1930) (“Where there is such doubt, the
scales should be inclined toward the applicant.”).
In finding a claim anticipated under 35 U.S.C. § 102, the Board
cannot “fill in missing limitations” simply because a skilled artisan would
immediately envision them from the prior art. Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1274 (Fed. Cir. 2017)
(citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376,
1381 (Fed. Cir. 2015)); accord Topliff v. Topliff, 145 U.S. 156, 161 (1892)
(“It is not sufficient to constitute an anticipation that the device relied upon
might, by modification, be made to accomplish the function performed by
the patent in question, if it were not designed by its maker, nor adapted, nor
actually used, for the performance of such functions.”) (emphasis added).
“[D]ifferences between the prior art reference and a claimed invention,
however slight, invoke the question of obviousness, not anticipation.” Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
(emphasis added).
In the case before us, the Office’s burden has not been met. It is
undisputed that Sood clearly discloses edge server 280 acts as an Internet
cache and, further, that edge server 280 “is located along a transmission path
between client terminal [(Sood’s clients 290)] and a server” (Sood’s origin
servers 260). See Sood, Fig. 2. However, we see no finding by the
Examiner that Sood’s clients 290 detect if edge server 280 is located along
the transmission path. In fact, we see nothing in Sood to indicate that
Sood’s client 290 is aware of edge server 280, let alone any disclosure of
client 290 “detecting if a cache is located along a transmission path between
the client terminal and a server, from the request of said first part,” as
recited. Appellant’s arguments sufficiently identify the deficiency in the
Appeal 2019-004352
Application 14/901,049
7
Examiner’s anticipation rejection. See Appeal Br. 7–8 (arguing Sood
discloses Internet caching architecture and Sood’s caching is transparent to
the client, such that the client is unaware that some content is received from
a cache).
We further note that, although the Examiner entered Appellant’s
amendment filed on May 15, 2018, see Advisory Action (mailed October 19,
2018), the Examiner’s Answer does not reference this amendment, let alone
explicitly find that Sood’s cited portions disclose performing the detecting
step “at said client terminal,” as recited in amended claim 12. Thus, even
assuming that some element within Sood’s system detects or identifies edge
server 280, which functions as a cache, we see nothing in Sood, cited by the
Examiner or elsewhere, to indicate that Sood’s client 290 detects edge server
280. To the contrary, consistent with Appellant’s arguments that Sood’s
client does not know where the requested data comes from, Appeal Br. 7,
Sood discloses that, “[w]hen a client makes a request for a media chunk, the
client addresses the request to the origin servers 260.” Sood ¶ 31. “Because
of the design of network caching, if one of the edge servers 280 contains the
data, then that edge server may respond to the client without passing along
the request.” Sood ¶ 31. Merely receiving information from a cache—even
from a cache that is along the transmission path between the client and the
server—does not teach or suggest detecting that cache, as recited in claim
12.
Thus, whether a person of ordinary skill in the art could envision
Sood’s client using various transit times and/or IP addresses from the
response to a prior request to determine whether the prior request was
intercepted by a cache between the client and the server is not relevant to an
anticipation rejection and cannot cure the deficiencies in the Examiner’s fact
Appeal 2019-004352
Application 14/901,049
8
finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967); Coley, 40
F.2d at 986. “In the context of anticipation, the question is not whether a
prior art reference ‘suggests’ the claimed subject matter[;] . . . [r]ather, the
dispositive question regarding anticipation is whether one skilled in the art
would reasonably understand or infer from a prior art reference that every
claim element is disclosed in that reference.” AstraZeneca LP v. Apotex,
Inc., 633 F.3d 1042, 1055 (Fed. Cir. 2010) (internal brackets and quotation
marks omitted). Here, a person of ordinary skill in the art would not
understand Sood to disclose client 260 detecting if a cache is located along
the transmission path.
Because the Examiner has not sufficiently explained how Sood
discloses a client terminal detecting if a cache is located along the
transmission path between the client and the server, as recited in claim 12
and commensurately recited in claim 21, we are constrained by this record to
reverse the rejection of independent claims 12 and 21 as anticipated under
35 U.S.C. § 102(a)(1) by Sood. Each of the dependent claims include the
same limitation via their ultimate dependency from one of claims 12 and 21,
and the Examiner does not find that either Wolff or Denecheau cures this
deficiency. Accordingly, we also reverse the rejection of dependent claims
13–20 and 21–25 under 35 U.S.C. § 102 as anticipated by Sood or 35 U.S.C.
§ 103 as obvious under over Sood in view of Wolff or in view of Wolff and
Denecheau for the same reasons.
CONCLUSION
The Examiner’s rejections are REVERSED.
Appeal 2019-004352
Application 14/901,049
9
DECISION SUMMARY
Claim(s) Rejected 35 U.S.C. § Reference(s) Affirmed Reversed
12–16, 21–25 102(a)(1) Sood 12–16, 21–25
17–19 103 Sood, Wolff 17–19
20 103 Sood, Wolff,
Denecheau
20
Overall Outcome 12–25

REVERSED