Jonathan A. Jenkins et al.

Patent Trials and Appeals Board

Nov 27, 2019

14571050 - (D) (P.T.A.B. Nov. 27, 2019)

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.
14/571,050 12/15/2014 Jonathan A. Jenkins SEAZN.588A2C1 9362
79502 7590 11/27/2019
Knobbe, Martens, Olson & Bear, LLP
AMAZON TECHNOLOGIES, INC.
2040 Main Street
Fourteenth Floor
Irvine, CA 92614
EXAMINER
SARKER, SANCHIT K
ART UNIT PAPER NUMBER
2495
NOTIFICATION DATE DELIVERY MODE
11/27/2019 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):
SEAZN.Admin@knobbe.com
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JONATHAN A. JENKINS and PETER F. HILL
________________

Appeal 2018-004577
Application 14/571,050
Technology Center 2400
________________

Before ST. JOHN COURTENAY III, JASON J. CHUNG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1–5, 7–16, and 18–22.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
INVENTION
The invention relates to providing network content to a client
computing device by one or more content providers in conjunction with a

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Amazon Technologies, Inc. is the
real party in interest. Appeal Br. 3.
2 Claims 6 and 17 are cancelled. Appeal Br. 21, 23.
Appeal 2018-004577
Application 14/571,050

2
network computing provider. Abstract. Claim 1 is illustrative of the
invention and is reproduced below:
1. A computer-implemented method comprising:
under control of a server system configured to act as an
intermediary between client computing devices and content
providers,
executing a server-side browser application in
communication with a separate client-side browser application
executing remotely from the server system;
receiving, from the client-side browser application, a
request for a network resource, wherein the network resource
comprises a markup file referencing one or more embedded
resources separate from the markup file;
providing, by the server-side browser application, the
markup file to the client-side browser application, the markup
file including references to the one or more embedded resources;
and
providing, by the server-side browser application, a first
embedded resource of the one or more embedded resources to
the client-side browser application without receiving a request
from the client-side browser application for the first embedded
resource.

REJECTIONS AT ISSUE
Claims 1–5, 7, 8, 10–16, and 18–22 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the combination of Cohen (US 7,082,476
B1; issued July 25, 2006) and Seed (US 2006/0015574 A1; published Jan.
19, 2006). Final Act. 6–17.
Claim 9 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Cohen, Seed, and Bar-Caspi (US 2012/0084433 A1;
filed Oct. 1, 2010). Final Act. 17.
Appeal 2018-004577
Application 14/571,050

3
ANALYSIS
The Examiner finds Cohen teaches client sessions involve requests for
a web page that has numerous embedded URLs that reference other web
pages or services, which the Examiner maps to the limitation “receiving,
from the client-side browser application, a request for a network resource,
wherein the network resource comprises a markup file referencing one or
more embedded resources separate from the markup file” recited in claim 1.
Final Act. 7, 11, 15 (citing Cohen, 1:60–64). The Examiner finds Seed
teaches objects are retrieved from origin servers and stored over one or more
parent servers before any end-users can access each such object as the object
is stored on the parent servers, which the Examiner maps to the limitation
“providing, by the server-side browser application, a first embedded
resource of the one or more embedded resources to the client-side browser
application without receiving a request from the client-side browser
application for the first embedded resource” recited in claim 1. Final Act. 8,
11, 15 (citing Seed ¶ 32); Ans. 4 (citing Seed ¶¶ 12, 21, 29, 32). The
Examiner finds it would have been obvious to a person having ordinary skill
in the art at the time of the invention (“PHOSITA”) to combine Cohen and
Seed to provide users with a means for reducing the time to retrieval of
network resources by replicating popular (most likely requested by users in
the future) content to proxy servers. Final Act. 8, 11, 15.
Appellant argues Seed fails to cure the deficiencies of Cohen because
Seed’s “server” does not teach the claimed “client-side browser application”
recited in claim 1. Appeal Br. 9–11, 15, 17 (citing Seed ¶¶ 10, 17, 21);
Reply Br. 2–4. Appellant argues Seed fails to teach: (1) providing an
embedded resource that is “separate from a markup file” of a requested
Appeal 2018-004577
Application 14/571,050

4
object; and (2) providing the embedded resource “without receiving a
request” from a client for the embedded resource. Appeal Br. 12, 15, 17.
Appellant argues a PHOSITA could not combine the teachings of Cohen and
Seed without using impermissible hindsight reconstruction. Id. at 12–13,
15–18 (citing Seed ¶¶ 20–21); Reply Br. 5–8. Appellant argues the
Examiner fails to establish a prima facie case of obviousness. Appeal Br.
13–14, 16, 18; Reply Br. 9. We disagree with Appellant.
We disagree with Appellant’s argument that Seed’s “server” does not
teach the claimed “client-side browser application.” Appeal Br. 9–11, 15,
17; Reply Br. 2–4. Seed teaches that objects are retrieved (i.e., providing)
from origin servers (server-side browser application) and stored over one or
more parent servers (i.e., this at least suggests client-side browser
application when combined with Cohen’s client/server system) before (i.e.,
without client’s request) any end-users can access each such object as the
object is stored on the parent servers, which teaches the limitation
“providing, by the server-side browser application, a first embedded
resource of the one or more embedded resources to the client-side browser
application without receiving a request from the client-side browser
application for the first embedded resource” recited in claim 1. Seed ¶¶ 12,
21, 29, 32 (cited at Ans. 4).
We disagree with Appellant’s argument that Seed fails to teach or
suggest: (1) providing an embedded resource that is “separate from a
markup file” of a requested object; and (2) providing the embedded resource
“without receiving a request” from a client for the embedded resource.
Appeal Br. 12, 15, 17. One cannot show nonobviousness “by attacking
references individually” where the rejections are based on combinations of
Appeal 2018-004577
Application 14/571,050

5
references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). In this case, the
Examiner relies on Cohen to teach client sessions involve requests for a web
page that has numerous embedded URLs that reference other web pages or
services, which teaches the limitation “receiving, from the client-side
browser application, a request for a network resource, wherein the network
resource comprises a markup file referencing one or more embedded
resources separate from the markup file” recited in claim 1. Cohen, 1:60–64
(cited at Final Act. 7). Moreover, Seed teaches providing the embedded
resource “without receiving a request” from a client for the embedded
resource as discussed in the preceding paragraph.
We disagree with Appellant’s argument that a PHOSITA could not
combine the teachings of Cohen and Seed without using impermissible
hindsight reconstruction. Appeal Br. 12–13, 15–18; Reply Br. 5–8.
Appellant has not provided persuasive evidence that combining the
respective teachings of the references (as proffered by the Examiner – Final
Act. 6–8; Ans. 4) would have been “uniquely challenging or difficult for one
of ordinary skill in the art,” or that such a combination would have
“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Nor has Appellant
provided any objective evidence of secondary considerations, which, as our
reviewing court explains, “operates as a beneficial check on hindsight.”
Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341,
1352 (Fed. Cir. 2013).
We disagree with Appellant’s argument the Examiner fails to
establish a prima facie case of obviousness. Appeal Br. 13–14, 16, 18;
Appeal 2018-004577
Application 14/571,050

6
Reply Br. 9. We find the Examiner has set forth sufficient “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In particular, we
agree with the Examiner’s finding that a person having ordinary skill in the
art at the time of the invention would have combined Cohen and Seed to
provide users with a means for reducing the time to retrieval of network
resources by replicating popular (most likely requested by users in the
future) content to proxy servers. Final Act. 8.
Appellant does not separately argue claims 2–5, 7–16, and 18–22 with
particularity, but assert the rejections of those claims should be withdrawn
for at least the same reasons as argued in independent claim 1. Appeal Br.
8–18. Accordingly, we sustain the Examiner’s rejection of: (1) independent
claims 1, 5, and 16; and (2) dependent claims 2–4, 7–15, and 18–22 under
35 U.S.C. § 103.3

3 Claim 1 recites the negative limitation: “without receiving a request from
the client-side browser application for the first embedded resource.” Claims
5 and 16 recite similar features. We note original claim 1 recites the
negative limitation in similar form: “without receiving a request from the
client-side browser application for the first referenced resource.” In the
event of further prosecution, we leave it to the Examiner to consider whether
a rejection under 35 U.S.C. § 112, first paragraph, should be applied.
Although “many original claims will satisfy the written description
requirement,” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349
(Fed. Cir. 2010) (en banc) (compare Appellant’s original claim 1 with
appealed claim 1), 37 C.F.R. §1.75(d)(1) requires: “the terms and phrases
used in the claims must find clear support or antecedent basis in the
description so that the meaning of the terms in the claims may be
ascertainable by reference to the description.” Emphases added. We have
reviewed Appellant’s proffered support in the Specification (¶¶ 29, 143, 152,
Appeal 2018-004577
Application 14/571,050

7
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7, 8,
10–16, 18–
22
103 Cohen, Seed 1–5, 7, 8,
10–16, 18–
22

9 103 Cohen, Seed, Bar-
Caspi
9
Overall
Outcome
1–5, 7–16,
18–22

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 1.136(a)(1)(iv).

and Fig. 14B; see Appeal Br. 6) for the negative limitation recited in original
claim 1, but we do not find a description of “a reason to exclude the relevant
limitation.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed.
Cir. 2012) (“Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation. Such
written description support need not rise to the level of disclaimer. In fact, it
is possible for the patentee to support both the inclusion and exclusion of the
same material”). See also MANUAL OF PATENTING EXAMINING
PROCEDURE § 2173.05(i) (9th ed. rev. 08.2017 (Jan. 2018)) (“Any
negative limitation or exclusionary proviso must have basis in the original
disclosure . . . . The mere absence of a positive recitation is not basis for an
exclusion”). Although the Board is authorized to reject claims under 37
C.F.R. 41.50(b), no inference should be drawn when the Board elects not to
do so. See MANUAL OF PATENTING EXAMINING PROCEDURE § 1213.02.
Appeal 2018-004577
Application 14/571,050

8

AFFIRMED