Josue Negron et al.

Patent Trials and Appeals Board

Nov 27, 2019

14723838 - (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.
14/723,838 05/28/2015 Josue Negron W185 (500102-1830) 9444
152577 7590 11/27/2019
Thomas | Horstemeyer, LLP (VMW)
3200 Windy Hill Road, SE
Atlanta, GA 30339
EXAMINER
LAI, MICHAEL C
ART UNIT PAPER NUMBER
2457
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):
docketing@thomashorstemeyer.com
ipadmin@vmware.com
uspatents@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSUE NEGRON, JONATHAN BLAKE BRANNON, and
VARUN MURTHY
____________

Appeal 2019-0001491
Application 14/723,838
Technology Center 2400
____________

Before CARL W. WHITEHEAD JR., JASON V. MORGAN, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant2 appeals under 35 U.S.C. § 134(a), the rejections of claims
1–20, all of the pending claims. Final Act. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 In this Decision, we refer to Appellant’s Appeal Brief (“App. Br.,” filed
July 3, 2018) and Reply Brief (“Reply Br.,” filed October 8, 2018); the Final
Office Action (“Final Act.,” mailed January 12, 2018); the Examiner’s
Answer (“Ans.,” mailed August 8, 2018); and the originally filed
Specification (“Spec.,” filed May 28, 2015). Rather than repeat the
Examiner’s findings and determinations and Appellant’s contentions in their
entirety, we refer to these documents.
2 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 AirWatch
LLC. App. Br. 2.
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STATEMENT OF THE CASE
Appellants’ recited computer-readable media, methods, and systems
“relate[] to a remotely-hosted auto-discovery service.” Spec. ¶ 10. As noted
above, claims 1–20 are pending. Claims 1, 8, and 15 are independent. App.
Br. 22, 24, 26 (Claims App’x). Claims 2–7 depend directly or indirectly
from claim 1, claims 9–14 depend directly or indirectly from claim 12, and
claims 16–20 depend directly or indirectly from claim 15. Id. at 22–27.
Claim 1 recites “[a] non-transitory computer-readable medium
embodying a program executable in at least one computing device
comprising at least one hardware processor, the program, when executed by
the at least one computing device, being configured to cause the at least one
computing device to” perform methods recited in claim 8. Id. at 22, 24.
Claim 15 recites “[a] system, comprising: at least one computing device in
data communication with a client device over a network; and program code
that, when executed by the at least one computing device, causes the at least
one computing device to:” perform methods recited in claim 8. Id. at 24, 26.
The Examiner relies on the same rejection and substantially the same
arguments in challenging claims 1, 8, and 15. Therefore, we focus our
analysis on the disputed and overlapping limitations of these independent
claims. See Accenture Global Servs. GmbH v. Guidewire Software, Inc.,
728 F.3d 1336, 1341 (Fed. Cir. 2013) (“Although CLS Bank issued as a
plurality opinion, in that case a majority of the court held that system claims
that closely track method claims and are grounded by the same meaningful
limitations will generally rise and fall together.” (citation omitted)); Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 226–227 (2014) (“Put another way,
the system claims are no different from the method claims in substance.”).
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Claim 8, reproduced below with disputed limitations emphasized, is
illustrative.
8. A computer-implemented method, comprising:
accessing an auto-discovery request received from a client
device over a network to identify a domain associated with the
auto-discovery request;
identifying a digital certificate from a data store
corresponding to the domain;
accessing a configuration file for a web server application
that creates at least one virtual host for a uniform resource
locator (URL) identified in the auto-discovery request, the digital
certificate being bound to the at least one virtual host to operate
a secure connection with the client device; and
generating an enrollment response for communication to
the client device over the network.
Id. at 24 (emphases added).
REJECTIONS
Claims 1–20 stand rejected as unpatentable under 35 U.S.C. § 112(a)
as failing to comply with the enablement requirement. Namely, the claims
allegedly contain subject matter not described in the Specification in such a
way as to enable one skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the invention. Final Act. 3–4.
Claims 1–20 also stand rejected as unpatentable under 35 U.S.C. § 112(b) as
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor regards as the invention. Id. at
4–7. Finally, claims 1–20 stand rejected as unpatentable under 35 U.S.C.
§ 101 as lacking patentable utility. Id. at 7–8.
Because we determine that the reversal of the rejections of the
independent claims is dispositive with respect to the dependent claims,
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except for our ultimate decision, we do not discuss the merits of the
rejections of claims 2–7, 9–14, and 16–20 further herein. We review the
appealed rejections to the independent claims for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We address each rejection below.
ANALYSIS
1. Enabling Disclosure
35 U.S.C. § 112(a) provides that “[t]he specification shall contain a
written description of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and exact terms as to enable
any person skilled in the art to which it pertains, or with which it is most
nearly connected, to make and use the same.” (Emphasis added.) The
Examiner determines that the Specification fails to provide such an enabling
disclosure with respect to claim 8. Final Act. 3; Ans. 3. In particular, the
Examiner finds:
Claim 13 recites the limitation “access a configuration file
for a web server application that creates at least one virtual host
for a uniform resource locator (URL) identified in the auto-
discovery request” in lines 8-9. Paragraph [0057] of the
specification describes “The one or more virtual hosts 155 can
be created by dynamically generating a configuration file 300
for a web server application (e.g., Apache.RTM.), or by
accessing a configuration file and/or add new entries to the
configuration file”. However, a configuration file must be

3 Although the Examiner refers to claim 1, the Examiner’s arguments apply
equally to claim 8. Final Act. 4 (“Claims 8 and 15 are rejected for the same
reason as for claim 1. All associated dependent claims are rejected too as
having the same deficiencies as the claims they depend from.”).
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generated or obtained before the configuration file can be
accessed. Besides, the abstract clearly indicates that a
configuration file is generated for a web server application that
creates at least one virtual host for a uniform resource locator
(URL) identified in the auto-discovery request. Therefore, the
limitation is not enabled.
Final Act. 3 (italics added). Further, the Examiner finds that
the enrollment response is not connected to other limitations (i.e.,
the enrollment response has nothing to do with other subject
matters in the claim (e.g., auto-discovery request, domain, digital
certificate, or virtual host)) and appears being generated out of
nothing. As a result, claims 1, 8, and 15 are not enabled.
Ans. 3.4 We disagree.
Appellant contends that the claim need not recite that the
“configuration file” is created before it recites that the configuration file is
accessed. App. Br. 10. Initially, Appellant contends, “‘configuration files’
for ‘web server applications,’ and how to program ‘configuration files,’ are
known in the art. As but one example, an ‘httpd.conf’ file is known in the
art as a configuration file for Apache® web server applications.” Reply
Br. 5; see App. Br. 10. In addition, the Specification’s Figure 3 depicts an
example of a suitable configuration file (see Spec. ¶ 7), and the Specification
further includes a written description of a how to generate the configuration
file of Figure 3 (see id. ¶¶ 43–45). App. Br. 11–12; Reply Br. 4–5; see Spec.
¶ 27 (“The auto-discovery request 121 can be generated to obtain e-mail
settings data 124, enrollment data, or other data from the remote auto-
discovery service 133 with which the client device 106 can be automatically
configured.”). Appellant concludes that a person of ordinary skill in the

4 The Examiner did not raise this alleged deficiency as part of the
enablement rejection in the Final Action. See Final Act. 2–4.
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relevant art would understand how to create a configuration file or access a
known configuration file from the claim language in view of the disclosure
in the Specification. See App. Br. 10; see also MPEP5 § 2164.01 (“Any
analysis of whether a particular claim is supported by the disclosure in an
application requires a determination of whether that disclosure, when filed,
contained sufficient information regarding the subject matter of the claims as
to enable one skilled in the pertinent art to make and use the claimed
invention.”). Consequently, Appellant asserts that the disputed claim
recitation is adequately enabled. We agree.
With respect to the Examiner’s finding that the enrollment response is
not connected to other recited limitations and, in particular, that the
enrollment response “has nothing to do with” the auto-discovery request, we
are persuaded that the Examiner erred. Ans. 3. The Specification states:
Generally, the remote auto-discovery service 133 can provide e-
mail settings data 124, enrollment data, or other data to a client
device 106 in response to receiving an auto-discovery request
121 from the client device 106. Further, the remote auto-
discovery service 133 can present multiple digital certificates
118 on the same IP address and port number, which allows
multiple secure connections (e.g., HTTPS) to be served using the
same IP address. The enrollment endpoint 136 can validate
digital certificates 118 provided by enterprise administrators or
other suitable users. Additionally, the enrollment endpoints can
return certificate policies, device root certificates, email settings
data 124, enrollment data, client configuration data, or other data
to the client device 106 in response to an appropriate request.
Spec. ¶ 21 (emphasis added). Thus, Appellant asserts it is clear from the
language of the independent claims and from the disclosure of the

5 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
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Specification that the “enrollment response” is provided to “the client
device” using “a domain associated with the auto-discovery request.” See
App. Br. 13–14 (responding to the indefiniteness rejection). Again, we
agree with Appellant.
For the reasons given above, we agree with Appellant that the
Examiner erred, and we do not sustain the enablement rejection of the
independent claims or of the claims depending therefrom. See App. Br. 12.
2. Definiteness
The Examiner also rejects claims 1–20 as allegedly indefinite. For the
reasons given below, we disagree.
First, the Examiner finds that claim 8’s recitation of “accessing a
configuration file for a web server application that creates at least one virtual
host for a uniform resource locator (URL) identified in the auto-discovery
request, the digital certificate being bound to the at least one virtual host to
operate a secure connection with the client device” is “wordy and
grammatically incorrect (e.g., access...to), thus unclear exactly what the
purpose for accessing the configuration file is, or what action is performed
after accessing the configuration file (i.e., access the configuration file to do
what).” Final Act. 4–5 (omission in original). The Examiner explains that
claim 8 recites that the “configuration file” causes a “web server
application” to “create at least one virtual host for a URL identified in the
auto-discovery request.” Ans. 4 (omissions in original). Thus, the
limitation’s use of “access...for,” rather than “access...to,” is grammatically
incorrect. Id. (omissions in original).
Appellant contends the Specification makes clear that the
configuration file, not the web server application, creates the virtual host.
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App. Br. 13 (citing Spec. ¶¶ 43–45); see Spec. ¶ 30 (describing virtual
host 155 created by remote computing environment 127, including client
configuration data 148), Fig. 1B. Although the Examiner is correct that we
do not read limitations from the Specification into the claims (see Ans. 4),
we understand the claims as construed in light of the Specification. Phillips
v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (‘“[I]t is
fundamental that claims are to be construed in light of the specifications and
both are to be read with a view towards ascertaining the invention.”’;
quoting United States v. Adams, 383 U.S. 39, 49 (1966)). Here, we
understand the disputed limitation to recite clearly that a configuration file
for the web server application is accessed, and the accessed configuration
file creates at least one virtual host. Reply Br. 6–7; see MPEP § 2173.
Second, the Examiner finds that although claim 8 recites, “generating
an enrollment response for communication to the client device over the
network,” “there is no enrollment request recited in the claim[, and it] is
unclear to what the enrollment response is responding.” Final Act. 5
(emphases added); Ans. 5. Appellant disagrees and asserts that the
enrollment response is clearly responding to the auto-discovery request.
App. Br. 14. We agree with Appellant that the claim language is not unclear
and the Specification makes the correspondence between the auto-discovery
request and the enrollment response abundantly clear. See, e.g., Spec. 1, 10,
11, 21.
Further, the Examiner alleges that it is unclear how the disputed
limitation responds to the auto-discovery request or does anything with it.
Final Act. 5. The Examiner also suggests that some steps may be missing
from the claim. Id. (citing Spec., Fig. 5 (step 521 describing parsing the
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enrollment URL to identify domains and subdomains)). Nevertheless, the
Specification describes the generation of the enrollment response in detail,
including the parsing of domains and subdomains. See Spec. ¶¶ 23, 26–29.
Moreover, the dependent claims provide additional detail regarding the
content to the auto-discovery request, including how it is associated with
domains. See, e.g., App. Br. 22–23 (Claims App’x) (claims 2–7); Spec.,
Claims 2–7. The Examiner appears to conflate breadth with indefiniteness.
See, e.g., In re Miller, 441 F.2d 689, 693 (CCPA 1971). We agree with
Appellant that, read in view of the Specification, both the meaning and
scope of this limitation are clear. See App. Br. 14–15; Reply Br. 9.
For the reasons given above, we are not persuaded that the Examiner
has shown the independent claims to be indefinite, and we do not sustain this
rejection.
3. Utility
Finally, the Examiner finds that claims 1–20 lack utility. In particular,
with respect to independent claim 8, the Examiner finds:
The enrollment response is not connected to other limitations
(i.e., the enrollment response has nothing to do with other subject
matters in the claim (e.g., auto-discovery request, domain, digital
certificate, or virtual host)) and appears being generated out of
nothing. It is not apparent why the invention is “useful” because
applicant has failed to identify any specific and substantial utility
and there is no well-established utility.
Final Act. 7; see Ans. 7–8. Thus, the Examiner finds that the limitations of
independent claim 8, and, in particular, the “generating” limitation are not
connected to each other.
As discussed above, the enrollment response may include elements
created by the configuration file and is generated in response to the auto-
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discovery request. Further, as Appellant explains, each limitation of claim 8
is connected to the next. App. Br. 18–20 (citing Spec. ¶¶ 10–13); Reply
Br. 11–14. In particular, Appellant notes that the first “accessing” limitation
recites, “identify[ing] a domain associated with the auto-discovery request.”
App. Br. 18. The subsequent step, the “identifying” limitation, recites,
“identifying a digital certificate from a data store corresponding to the
domain.” Id. at 19 (italics added). The second “accessing” limitation
recites “accessing a configuration file . . . that creates at least one virtual host
for a uniform resource locator (URL) identified in the auto-discovery
request, the digital certificate being bound to the at least one virtual host to
operate a secure connection with the client device.” Id. (italics added).
Finally, the “generating” limitation recites that the “enrollment response,”
which is responsive to the auto-discovery request, allows “for
communication to the client device over the network.” Id. at 22 (Claims
App’x). The relationships between the “at least one virtual host for a
uniform resource locator (URL) identified in the auto-discovery request” and
the domains and subdomains and the digital certificates are explained in
detail in the Specification (see Spec. ¶¶ 10–13) and recited in further detail
in the dependent claims. Thus, we are persuaded that the claims adequately
recite appropriate connections between the various limitations.
As noted above, although we do not read limitations from the
Specification into the claims (see Ans. 7), we understand the claims in light
of the Specification. Here, the Specification describes a specific and
substantial utility for the computer-readable media, methods, and systems, as
recited in the claims. E.g., Spec. ¶¶ 1, 10–14; see MPEP § 2107(II) (“Office
personnel are reminded that they must treat as true a statement of fact made
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by an applicant in relation to an asserted utility, unless countervailing
evidence can be provided that shows that one of ordinary skill in the art
would have a legitimate basis to doubt the credibility of such a statement.”).
We conclude the nature of these connections and the utility of the methods
recited in claim 8 (and similarly recited in claims 1 and 15) would be
understood by a person of ordinary skill in the relevant art in view of the
disclosure in the Specification.
As noted above, the limitations of independent claims 1 and 15 are
substantially similar to those of independent claim 8. Further, the Examiner
relies on the rejection of these independent claims to justify the rejection of
the dependent claims. Final Act. 8. Because the Examiner erred in rejecting
independent claim 8, as well as independent claims 1 and 15, for lack of
utility, we do not sustain the utility rejection of the independent claims. For
that reason alone, we also do not sustain the utility rejections of claims 2–7,
9–14, and 16–20.
CONCLUSION
We reverse the rejections of claims 1–20.
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
1–20 112(a) Lack of enabling
disclosure
1–20
1–20 112(b) Indefiniteness 1–20
1–20 101 Lack of utility 1–20
Overall Outcome 1–20

REVERSED