DEVNET, INC.

Patent Trials and Appeals Board

May 19, 2020

2019006633 (P.T.A.B. May. 19, 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.
15/067,336 03/11/2016 Ian Weston 745145/09000 4249
148433 7590 05/19/2020
Burr Forman LLP
dba Burr Forman McNair
Bank of America Plaza
101 South Tryon Street, Suite 2610
Charlotte, NC 28280
EXAMINER
RETTA, YEHDEGA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
05/19/2020 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):
mcnairip@mcnair.net
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IAN WESTON and TIMOTHY JOHN OCOCK

Appeal 2019-006633
Application 15/067,336
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, TAWEN CHANG, and
JAMIE T. WISZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 102 as
anticipated and under 35 U.S.C. § 103 as obvious. Pursuant to 35 U.S.C.
§ 134(a), Appellant1 appeals from the Examiner’s decision to reject the
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as DevNet, Inc.
Appeal Br. 1.
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STATEMENT OF THE CASE
This appeal is related to Appeal No. 2019-006634 in Application No.
15/138,918, which is being decided concurrently.
The claims stand finally rejected by the Examiner as follows:
Claims 1, 2, 7, 9–12, 17, 19, and 202 under 35 U.S.C. § 102(a)(l) as
anticipated by Leigh (US 2007/0180147 A1, published Aug. 2, 2007)
(“Leigh”). Final Act. 2.
Claims 3–6 and 13–16 under 35 U.S.C. § 103 as obvious in view of
Leigh and Jain et al. (US 2010/0293014 A1, published Nov. 18, 2010)
(“Jain”). Final Act. 4.
Claims 8 and 18 under 35 U.S.C. § 103 as obvious in view of Leigh
and Official Notice. Final Act. 4.
There are two independent claims on appeal, claims 1 and 11. Claim
1 is an apparatus claim that is configured to carry out a method. Claim 11 is
a method claim which recites substantially the same method steps recited in
claim 1. Claim 1, annotated with bracket numbering, is reproduced below:
1. An apparatus provided at an edge of a network providing
communication between an end user device and one or more
servers capable of responding to requests from the end user
device, the apparatus comprising processing circuitry
configured to, when executed:
[1] intercept a request from the end user device and
transmitted via the network;
[2] determine whether a response to the request will
include advertizing content based on a destination of the
request;
[3] intercept the response based on the determination;

2 The Examiner’s statement of the rejected claims is incomplete, and omitted
rejected claims; it is corrected here.
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[4] modify the response to extract the advertizing content
to replace the advertizing content with replacement content in a
modified response; and
[5] enable the modified response to be provided to the
end user device,
[6] wherein the replacement content is selected based on:
[6a] comparison of technical properties of the
advertizing content with technical properties of the replacement
content, and
[6b] a correlation of affinity criteria associated
with the replacement content to a user associated with the end
user device.
CLAIM INTERPRETATION
We begin with claim interpretation because before a claim can be
compared to the prior art, it must be properly interpreted.
During patent examination proceedings, claim terms are given their
“broadest reasonable meaning . . . in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant’s specification.” In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
The first step of claim 1 recites “intercept a request from the end user
device and transmitted via the network.” The “intercept” is accomplished by
the “apparatus provided at an edge of a network providing communication
between an end user device and one or more servers capable of responding
to requests from the end user device.”
The Specification does not define the term “intercept.” We thus adopt
its ordinary dictionary definition to mean “to stop, seize, or interrupt in
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progress or course or before arrival.”3 Therefore, we interpret “intercept” in
the claim to indicate that the request (step [1]) and response (step [3]) are
interrupted and seized before being transmitted to their destinations –
namely, the server in step [1] and the end user device in step [3],
respectively.
A determination is made in step [2] by the apparatus whether the
intercepted request (step [2]) will include advertising content. This
determination is made based on its destination. The Specification explains
that the destination may be a known or blacklisted “ad server.” Spec. ¶ 49.
If the destination is an ad server, the Specification further discloses that
“then the response may be awaited for interception.” Id. Step [3] of the claim
consistently recites “intercept the response” from the server “based on the
determination.” Thus, the response from the server to the request is only
intercepted if the determination is made that the response will contain
advertising.
Step [4] of the claim recites “modify the response to extract the
advertizing content to replace the advertizing content with replacement
content in a modified response.” The Examiner stated that the claim “does
not include the step of extracting advertisng [advertising] content and
replacing the advertising content” and did not give it patentable weight
because it “does not include a step to be performed.” Ans. 4–5. We do not
agree with this interpretation. The step expressly states “modify the
response” and describes the modification as “to extract the advertizing
content to replace the advertizing content with replacement content.” We

3 https://www.merriam-webster.com/dictionary/intercept (last accessed May
6, 2020).
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therefore interpret the claim to require a step in which the response is
modified by extracting advertising content and replacing it with replacement
content, where the replacement content is selected based on step [6].
The apparatus enables the modified response to be provided to the end
user in step [5]. The Appeal Brief identifies operation 240 of Fig. 3, and
lines 18–19 of paragraph 49 as support for this limitation. Appeal Br. 2.
However, none of this cited disclosure defines or explains how the “enable”
step is accomplished. Thus, in the context of the claim and Specification, we
interpret “enable” to mean that the recited “apparatus comprising processing
circuitry” is “configured to” provide the modified response back to the end-
user after it has been modified in step [4.]

REJECTIONS
The Examiner found that Leigh describes all the steps of the claimed
method. Final Act. 2–3. Specifically, the Examiner found that the proxy
server 111 of Leigh receives requests from a web client 101, meeting the
limitation of step [1] of claim 1 of “intercept a request from the end user
device and transmitted via the network.” Final Act. 2; Leigh § 19. The
Examiner further found that Leigh describes transmitting the request to
target web server 120. Final Act. 2; Leigh § 19. The Examiner also found
that Leigh at § 19 describes [2] “determine whether a response to the request
will include advertizing content based on a destination of the request” and
[3] “intercept the response based on the determination.” Final Act. 2.
The Examiner cited Leigh’s disclosure of an Ad Insertion Module 125
which “takes as input an HTML page (typically provided from a target web
server 120) and modifies it so that the web client (browser) is instructed to
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request advertising content from an Ad Content Server 112 . . . by inserting a
code fragment into the HTML page” (Leigh § 21) as meeting the ad
replacement step [4] of claim 1. Final Act. 2 (see also Leigh § 22 which
describes the actual replacement of the advertising material).
With respect to the step [5] of “enable the modified response to be
provided to the end user device,” the Examiner cited Leigh ¶ 22. Final Act.
2. The Examiner also found Leigh describes replacing ad content according
to the criteria recited in step [6] of claim 1. Final Act 3; Leigh ¶¶ 24–27.
Appellant argues that Leigh’s description of a proxy server that
receives an HTTP request from a web client is “nothing more than a well-
known and conventional response to an HTTP request by a proxy server”
and does not meet the claim limitation of an “intercept” as recited in steps
[1] and [3] of claim 1. Appeal Br. 5. Appellant further argues that the
“proxy server is the intended recipient of each HTTP request and does no
interception of any kind.” Id.
This argument is not persuasive. Appellant has not provided a
definition of “intercept” which would distinguish it from the disclosure in
Leigh of “Proxy server 111” as “an HTTP proxy server, which is a software
agent responsible for accepting TCP/IP connections from a web client 101,
receiving a HTTP request on behalf of the client, and then re-transmitting
that request to a target web server 120.” Leigh ¶ 19. We interpreted
“intercept” to mean that the request (step [1]) and response (step [3]) are
interrupted and seized before being transmitted to the server in step [1] and
the end user device in step [3], respectively. See supra at 3–4. The HTTP
proxy server receives the request and then re-transmits it, indicating that the
request is interrupted and seized by the server before re-transmitting it.
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Appellant did not provide evidence that the claimed “intercept” step requires
that the proxy server is not the “intended” recipient of the request. Appeal
Br. 5. Furthermore, Leigh expressly teaches that requests are intercepted: “In
one embodiment, a request from the web client for the web page is
intercepted and used to retrieve the web page from the target web site.”
Leigh ¶ 4; see also Leigh ¶ 52. Thus, we find Appellant’s argument to be
unavailing.
Appellant also argues that Leigh does not describes the steps of [2]
“determine whether a response to the request will include advertizing
content based on a destination of the request” and “[3] intercept the response
based on the determination.” Appeal Br. 5.
We agree with Appellant that the Examiner did not provide adequate
evidence that steps [2] and [3] of claim 1 are described by Leigh. We
interpreted these steps to require that the response to the request from the
server is only intercepted if the determination is made that the response will
contain advertising. See supra at 4. The Examiner cited Leigh ¶ 19 for
disclosing these steps. Ans. 4 (citing ¶¶ 19–27).
Paragraph 19 of Leigh discloses “[w]hen the target web server returns
a response to the proxy server 111, that response is then in turn delivered to
the requesting web client/browser 101.” This disclosure does not indicate
that the response is intercepted only when it is determined that it has ad
content as required by steps [2] and [3] of the rejected claim; rather, it is
intercepted in all cases and without any determination having been made of
ad content. Similarly, in paragraph 20, Leigh teaches “Proxy server 111
passes HTML content that has been returned by the target web server to an
Ad Insertion Module 125 (described below) before returning the HTML
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content to the user,” but makes no mention that the interception is only
accomplished when an ad content determination is made.
In the following paragraphs, Leigh describes how ad content is
inserted. Leigh ¶¶ 21, 22. While this disclosure meets the requirement of
steps [4] and [5] of claim 1, it does not disclose that a determination is first
made by the proxy server before intercepting the HTML page.
Leigh further explains “a request from web client/browser 101 is
received by proxy server 111 and sent to target web server 120.” Leigh ¶ 27.
Next, “HTML web page 200(1) is then sent from target web server 120 to
proxy server 111, in response to the web client request for the web page.” Id.
The web page is then “returned to the requesting web client 101.” Id. This
disclosure makes it clear that no determination is made on whether a
response to the request will include advertizing content based on a
destination of the request as required by all the rejected claims. Instead, the
proxy server indiscriminately intercepts requests from the client and from
the target web server without making a determination on whether the initial
request will include advertising content.
The additionally cited publication by Jain or the Official Notice were
not found by the Examiner to describe or suggest steps [2] and [3] of claim
1.
Accordingly, for the foregoing reasons, the anticipation rejection of
claim 1 and dependent claims 2, 7, 9, and 10 is reversed. Claim 11 has
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substantially the same limitations as claim 1,4 and therefore the anticipation
rejection of claim 11, and dependent claims 12, 17, 19, and 20, is reversed.
The obviousness rejection of claims 3–6 and 13–16 based on Leigh
and Jain is also reversed because the Examiner did not find that Jain makes
up for the deficiencies in Leigh.
The obviousness rejection of claims 8 and 18 based on Leigh and the
Official Notice is also reversed because the Examiner did not find that the
Official Notice makes up for the deficiencies in Leigh.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 7, 9–
12, 17, 19,
20
102(a)(1) Leigh 1, 2, 7, 9–
12, 17, 19,
20
3–6, 13–16 103 Leigh, Jain 3–6, 13–16
8, 18 103 Leigh, Official
Notice
8, 18
Overall
Outcome
1–20

REVERSED

4 “determining whether a response to the request will include advertizing
content based on a destination of the request; intercepting the response based
on the determination.”