RADWARE, LTD.

Patent Trials and Appeals Board

Aug 11, 2021

2020003375 (P.T.A.B. Aug. 11, 2021)

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.
15/857,169 12/28/2017 Kent Douglas ALSTAD RADW P0080C1 9045
122066 7590 08/11/2021
M&B IP Analysts, LLC
150 Morristown Road
Suite 205
Bernardsville, NJ 07924-2626
EXAMINER
JAKOVAC, RYAN J
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
08/11/2021 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):
eofficeaction@appcoll.com
pair@mb-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENT DOUGLAS ALSTAD
Appeal 2020-003375
Application 15/857,169
Technology Center 2400
Before RICHARD M. LEBOVITZ, JOHNNY A. KUMAR, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–18 and 20, which are all the pending
claims in the application. Appellant has canceled claim 19. See Appeal Br.
22 et seq. (Claims App.). 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 RADWARE, LTD.
Appeal Br. 3.
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STATEMENT OF THE CASE2
The claimed subject matter is directed to extensible, asynchronous,
centralized analysis and optimization of server responses to client requests.
See Spec. (Title). In particular, Appellant’s disclosed embodiments and
claimed invention “relate[] to optimizing messaging systems, and, more
specifically, to techniques for asynchronous, centralized analysis and
optimization of server responses to client requests in a client/server
architecture.” Spec. ¶ 2.
Exemplary Claim
Claim 1, reproduced below, is illustrative of the subject matter on
Appeal (emphases added to contested prior-art limitations):
1. A method for generating an optimization
instruction set based on communication between at least one
server and at least one client, comprising:
aggregating a plurality of messages while the messages
are external to the at least one server, the messages having been
transmitted from the at least one server toward the at least one
client;
analyzing the plurality of messages to determine a
plurality of resources to be consolidated; and
generating an optimization instruction set for
consolidating the determined plurality of resources, wherein
the generated optimization instruction set comprises
instructions for replacing the plurality of resources with the
consolidated resources.

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Oct. 21, 2019); Reply Brief (“Reply Br.,” filed Apr. 2, 2020); Examiner’s
Answer (“Ans.,” mailed Feb. 3, 2020); Non-Final Office Action (“Non-Final
Act.,” mailed Mar. 26, 2019); and the original Specification (“Spec.,” filed
Dec. 28, 2017) (claiming benefit of US 61/050,581, filed May 5, 2008).
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REFERENCES
The Examiner relies upon the following prior art as evidence:
Name Reference Date
Kloba et al. (“Kloba”) US 6,341,316 B1 Jan. 22, 2002
Shimura US 6,370,687 B1 Apr. 9, 2002
Jiang et al. (“Jiang”) US 6,385,641 B1 May 7, 2002
Talkington US 2007/0260748 A1 Nov. 8, 2007
Kim et al. (“Kim”) US 2008/0208961 A1 Aug. 28, 2008
Sebastian US 2009/0019153 A1 Jan. 15, 2009
Betancourt et al. (“Betancourt”) US 8,001,175 B2 Aug. 16, 2011
Colton et al. (“Colton”) US 8,819,539 B1 Aug. 26, 2014
REJECTIONS
R1. Claims 1–18 and 20 stand rejected under pre-AIA 35 U.S.C.
§ 112, second paragraph, as being indefinite. Non-Final Act. 5.
R2. Claims 1, 2, 8, 10, 16–18, and 20 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over the combination of Sebastian
and Betancourt. Non-Final Act. 6.
R3. Claims 3 and 6 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Sebastian,
Betancourt, and Kloba. Non-Final Act. 9.
R4. Claims 4, 5, 7, and 9 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Sebastian,
Betancourt, Kloba, and Colton. Non-Final Act. 10.
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R5. Claims 11 and 12 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Sebastian,
Betancourt, and Kim. Non-Final Act. 12.
R6. Claim 13 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Sebastian, Betancourt, and
Jiang. Non-Final Act. 13.
R7. Claim 14 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Sebastian, Betancourt, and
Talkington. Non-Final Act. 14.
R8. Claim 15 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Sebastian, Betancourt, and
Shimura. Non-Final Act. 15.
ISSUES AND ANALYSIS
Based upon our review of the record and particular arguments
advanced by Appellants with respect to indefiniteness Rejection R1 of
claims 1–18 and 20, and obviousness Rejection R2 of claims 1, 2, 8, 10, 16–
18, and 20, we determine these rejections are not supported by a
preponderance of the evidence for the specific reasons discussed below. We
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
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1. § 112, ¶ 2, Indefiniteness Rejection R1 of Claims 1–18 and 20
Issue 1
Appellant argues (Appeal Br. 8–9; Reply Br. 2) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 112, second paragraph, as being
indefinite is in error. These contentions present us with the following issue:
Did the Examiner err in finding the recitation of “‘aggregating a
plurality of messages while the messages are external to the at least one
server, the messages having been transmitted from the at least one server to
the at least one client’ would have been unclear to one of ordinary skill in
the art as one of ordinary skill in the art would not know from the claim
terms what structure or steps are encompassed by the claim,” as determined
by the Examiner (Final Act. 5), in the context of claim 1?
Principles of Law
We apply the indefiniteness test approved by In re Packard, 751 F.3d
1307 (Fed. Cir. 2014) (per curiam): “A claim is indefinite when it contains
words or phrases whose meaning is unclear,” and “claims are required to be
cast in clear–as opposed to ambiguous, vague, indefinite–terms.” See
Packard, 751 F.3d at 1310, 1313; Ex parte McAward, Appeal No. 2015-
006416 (PTAB Aug. 25, 2017) (precedential) at *8–11 (explaining because
of different approaches to indefiniteness before the PTAB and the courts, the
PTAB continues to follow Packard after the Supreme Court’s Nautilus, Inc.
v. Biosig Instruments, Inc., 572 U.S. 898 (2014) decision).
[W]hen the USPTO has initially issued a well-grounded
rejection that identifies ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention, and thereafter
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the applicant fails to provide a satisfactory response, the
USPTO can properly reject the claim as failing to meet the
statutory requirements of § 112(b).
Packard, 751 F.3d at 1311.
Analysis
With respect to claim 1, the Examiner concludes, “applicant’s
recitation of ‘aggregating a plurality of messages while the messages are
external to the at least one server, the messages having been transmitted
from the at least one server to the at least one client’ would have been
unclear to one of ordinary skill in the art as one of ordinary skill in the art
would not know from the claim terms what structure or steps are
encompassed by the claim.” Non-Final Act. 5. “Therefore it is unclear
whether the method requires the implied transmitting step or whether the
language is merely descriptive of the messages or of a transmitting action
outside the metes and bounds of the method.” Id.
Appellant responds:
It is clear from the plain language of the claim that the
claim does not itself require a specific transmitting step since
none is included therein. However, the messages that are
aggregated, per the claim language, must have been
transmitted by a server. In other words, the messages of the
claim must correspond to the condition that they were
transmitted as recited in the claim prior to being processed per
the claim. One or ordinary skill in the art would readily
recognize this directly from the claim language itself and
moreover from the claim language in view of the specification,
e.g., paragraph 43 which states, in relevant part:
Server 110 generates 418 its untreated response. In
one embodiment, the system of the present
invention intercepts all responses. . . .
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Appeal Br. 8–9 (emphasis added).
We are persuaded that Appellant’s response to the Examiner’s
rejection is well-grounded and explains, based on the express language in
the claim, why the claim is not indefinite, meeting the requirements of
Packard, cited above.
Accordingly, we disagree with the Examiner because we conclude the
disputed limitation would be understood by a person of skill in the art to not
require an active transmitting step, but instead, a person with skill in the art
would understand, as claimed, the disputed limitation describes the source
of the messages, as argued by Appellant.
Accordingly, for essentially the same reasons argued by Appellant
(id.), we reverse the Examiner’s rejection of independent claim 1, and also
the rejection of independent claims 17 and 20, which recite the disputed
limitation in commensurate form. For the same reasons, we also reverse the
rejections of all claims that depend therefrom.
2. § 103(a) Rejection R2 of Claims 1, 2, 8, 10, 16–18, and 20
Issue 2
Appellant argues (Appeal Br. 9–18; Reply Br. 2–9) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Sebastian and Betancourt is in error. These contentions
present us with the following dispositive issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] method for generating an optimization instruction set based
on communication between at least one server and at least one client” that
includes, inter alia, the dispositive limitations of “analyzing the plurality of
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messages to determine a plurality of resources to be consolidated; and
generating an optimization instruction set for consolidating the determined
plurality of resources, wherein the generated optimization instruction set
comprises instructions for replacing the plurality of resources with the
consolidated resources,” as recited in claim 1 (emphasis added)?3
Principles of Law
Our reviewing court guides, “‘[a] prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have
suggested the claimed subject matter to a person of ordinary skill in the
art.’” In re Bell, 991 F.2d 781, 783 (Fed. Cir. 1993) (quoting In re Rinehart,
531 F.2d 1048, 1051 (CCPA 1976)).
The ultimate issue of obviousness is a matter of law that turns on four
underlying factual determinations: (1) the scope and content of the prior art,
(2) the level of ordinary skill in the art, (3) the differences between the
claimed invention and the prior art, and (4) objective indicia of
nonobviousness (secondary considerations). See Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966), as reaffirmed by KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 406 (2007).

3 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).
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Analysis
The Examiner finds Betancourt teaches the dispositive “analyzing”
and “generating” steps relating to consolidating resources, as recited in
claim 1, and as quoted above. Non-Final Act. 7; see also Ans. 7–9.
In particular, the Examiner elaborates on the rejection by finding:
The contents of Betancourt’s cached response
information contains resources such as the characters within the
response information. Various rules govern whether
Betancourt’s optimization function is able to remove non-
essential instances of optimizable characters from the cached
response information to produce optimized response
information. . . . . The cached response information is analyzed,
the nonessential characters are removed, and the remaining
characters are put back together to form optimized response
information. . . . The forming of optimized response
information by combining the remaining resources into an
optimized response is an example of the claimed consolidating
since it combines the remaining resources into a more effective
whole. The optimized response information is more effective
than the non-optimized response as it is of a smaller size thus
reducing bandwidth when it is transmitted and the memory
footprint of the cache while it is stored.
Ans. 8 (citations to Betancourt omitted).
In response to the rejection, Appellant argues:
In addition, Betancourt does not teach or suggest
determining a plurality of resources to be consolidated.
Rather, Betancourt discloses removing one or more instances of
an optimizable character from the current cached response
information entry in accordance with the existing character
omission rule. After removing the one or more instances of the
optimizable character from the cached response information,
the method of Betancourt includes designating the current
cached response information entry as being optimized and
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caching the optimized response information. In other words,
Betancourt merely eliminates from the response information
unneeded for correct interpretation by the receiving element.
Removing characters from a response is clearly not the same
thing, nor is it in any way similar to, determining a plurality
of resources to be consolidated, as required by the claim.
Appeal Br. 11–12. Appellant further contends:
Consolidation is a very different concept from removal.
Furthermore, the resources referred to in the claim need not be
actually within the plurality of messages that are aggregated
and analyzed per the claim but may merely be referred to by
them. Again, keep in mind that consolidate means to bring
together into a single whole. Thus, the claim requires that the
resources be consolidated somehow together, while Betancourt
is processing what the Examiner is calling resources, which
Appellant does not admit is a proper characterization thereof,
individually.
Appeal Br. 12.
In agreement with Appellant’s argument above, we conclude the
Examiner (see Ans. 8) conflates the character optimization of Betancourt,
i.e., omitting non-essential instances of characters using rules, with resource
optimization, as claimed. We further find that neither essential nor non-
essential characters in a response message teach or suggest a resource, as
that word is used in the claims as they would be understood in the context of
the Specification. See, e.g., Spec. ¶ 4 (“[M]any HTML pages contain links
to multiple external resources including, for example JavaScript code,
Cascading Style Sheets (CSS), and images in various formats.”); Spec. ¶ 5
(“Each resource must often be requested separately, which increases
download times and reduces efficiency.”).
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Based upon the findings above, on this record, we are persuaded of at
least one error in the Examiner’s reliance on the cited prior art combination
to teach or suggest the dispositive limitations of claim 1, such that we find
error in the Examiner’s resulting legal conclusion of obviousness.
Therefore, we reverse the Examiner’s obviousness rejection of
independent claim 1, and independent claims 17 and 20, which recite the
dispositive limitations in commensurate form. For the same reasons, we also
reverse the Examiner’s Rejection R2 of dependent claims 2, 8, 10, 16, and
18 that depend from independent claims 1 and 17.4
3. § 103(a) Rejections R3–R8 of Claims 3–7, 9, and 11–15
In light of our reversal of the rejections of independent claim 1, supra,
we also reverse obviousness Rejection R3 through R8 under § 103(a) of
claims 3–7, 9, and 11–15, which ultimately depend from claims 1. On this
record, the Examiner has not shown how the additionally cited Kloba,
Colton, Kim, Jiang, Talkington, and Shimura references overcome the
aforementioned deficiencies with Sebastian and Betancourt, as discussed
above regarding claim 1.

4 The Examiner relies upon a prior Board Decision in a related application
12/426,909 (Non-Final Act. 3; and see Appeal Br. 14–15) as being
dispositive with respect to Betancourt’s purported teaching of an
optimization instruction set. We note this prior Decision is non-precedential
and was issued in response to claims of different scope than those before us
on Appeal in this case. Finally, we observe that the related application, after
the Examiner’s rejections were initially affirmed, ultimately issued as a
patent.
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CONCLUSIONS
We REVERSE the Examiner’s rejections. More specifically:
(1) Appellant has persuasively argued the Examiner erred with
respect to indefiniteness Rejection R1 of claims 1–18 and 20 under 35
U.S.C. § 112, second paragraph, and we do not sustain the rejection.
(2) Appellant has persuasively argued that the Examiner erred with
respect to obviousness Rejections R2 through R8 of claims 1–18 and 20
under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and
we do not sustain the rejections.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
References/
Basis Affirmed Reversed
1–18, 20 112, ¶ 2 Indefiniteness 1–18, 20
1, 2, 8, 10,
16–18, 20 103(a)
Sebastian,
Betancourt
1, 2, 8, 10,
16–18, 20
3, 6 103(a)
Sebastian,
Betancourt,
Kloba
3, 6
4, 5, 7, 9 103(a)
Sebastian,
Betancourt,
Colton
4, 5, 7, 9
11, 12 103(a)
Sebastian,
Betancourt, Kim 11, 12
13 103(a)
Sebastian,
Betancourt, Jiang 13
14 103(a)
Sebastian,
Betancourt,
Talkington
14
15 103(a)
Sebastian,
Betancourt,
Shimura
15
Overall
Outcome 1–18, 20
REVERSED