LUMINATI NETWORKS LTD.

Patent Trials and Appeals Board

Dec 18, 2020

2021000646 (P.T.A.B. Dec. 18, 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.
16/292,374 03/05/2019 Derry Shribman HOLA-003-US11 2521
131926 7590 12/18/2020
May Patents Ltd. c/o Dorit Shem-Tov
P.O.B 7230
Ramat-Gan, 5217102
ISRAEL
EXAMINER
SCOTT, RANDY A
ART UNIT PAPER NUMBER
2439
MAIL DATE DELIVERY MODE
12/18/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DERRY SHRIBMAN and OFER VILENSKI
Appeal 2021-000646
Application 16/292,374
Technology Center 2400
Before CAROLYN D. THOMAS, DAVID J. CUTITTA II, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–14 and 16–28, which are all of the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Luminati Networks Ltd. as the real
party in interest. Appeal Br. 2.
Appeal 2021-000646
Application 16/292,374

2
TECHNOLOGY
The application relates to “improving communication over the
Internet by using intermediate nodes.” Spec. 1. The intermediate nodes
“may be selected based on physical geographical location.” Id. at 70.
REPRESENTATIVE CLAIM
Claim 1 is representative and reproduced below with certain
limitations at issue emphasized:
1. A method for anonymously fetching over the Internet, by a
first device identified in the Internet by a first identifier, a
publicly-accessed first content identified by a first content
identifier and stored in a web server, using a first server that
stores a group of IP addresses, each IP address in the group is in
IPv4 or IPv6 form, the method by the first server comprising:
associating a physical geographical location with each of
the IP addresses in the group using geolocation;
receiving the first content identifier from the first device;
selecting an IP address from the group, based on, or using,
the respective associated physical geographical location, in
response to the receiving of the first content identifier;
sending the first content identifier to the web server using
the selected IP address;
receiving the first content; and
sending the first content to the first device,
so that the web server is prevented from being aware of
the first device,
wherein the first content consists of, or comprises, a part
of, or a whole of, a publicly-accessed web-site page, and
wherein the first content identifier consists of, or
comprises, a Universal Resource Locator (URL).
Appeal 2021-000646
Application 16/292,374

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REFERENCES
The Examiner relies on the following prior art references:
Name Number Date
Binder2 US 2012/0166582 A1 June 28, 2012
Brandwine US 9,374,244 B1 June 21, 2016
Feng US 2013/0326607 A1 Dec. 5, 2013
Talwar US 2013/0157699 A1 June 20, 2013
Wiczkowski US 2003/0163413 A1 Aug. 28, 2003
REJECTIONS
The Examiner makes the following rejections under 35 U.S.C. § 103:
Claims References Non-Final Act.
1–8, 10–14, 17, 18,
21, 23, 24, 27, 28
Binder, Brandwine,
Wiczkowski
4
16, 19, 20 Binder, Brandwine,
Wiczkowski, Feng
11
9, 22, 25, 26 Binder, Brandwine,
Wiczkowski, Talwar
13
ANALYSIS
Claim 1 is the sole independent claim pending in this application. The
claim involves a “first device” requesting a URL from a “web server” but
using a “first server” as an intermediary to send the request and receive the
result. In particular, the “first device” sends to the “first server” a “first
content identifier” (which the claim says comprises a URL), and the “first
server” sends the content identifier to the “web server.” The “first server”
receives the underlying “first content” (e.g., a website “identified by” the
URL) and the “first server” sends the content to the “first device.” To help
the first device communicate with the web server “anonymously,” the first

2 Binder’s sole named inventor is “Yehuda Binder,” the same name as the
patent agent signing the briefs in this case. Appeal Br. 47; Reply Br. 33.
Appeal 2021-000646
Application 16/292,374

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server “select[s] an IP address . . . based on, or using, . . . [a] physical
geographical location” and “send[s] the first content identifier to the web
server using the selected IP address.”
Appellant argues that the Examiner is conflating the “web server” and
“first server” in the “sending” limitation. Reply Br. 15; Appeal Br. 20.
We agree with Appellant. The Examiner finds that Binder teaches the
intermediate servers can be web servers. Ans. 25 (citing Binder ¶ 68).
Although the Examiner is correct that Binder discloses the intermediate
server may each be a web server (Binder ¶ 68), claim 1 requires sending the
URL to “the” web server, which means the same web server referred to
elsewhere in the claim. In particular, the claim requires the web server
(1) stores the “first content identified by a first content identifier”; (2) is the
recipient of the first content identifier that the first server sends “using the
selected IP address”; and (3) “is prevented from being aware of the first
device,” as recited in claim 1. If the “first server” were “the web server,”
then the Examiner has not sufficiently explained whether or why (A) the
first server would “send[] the first content identifier to the web server using
the selected IP address” (e.g., because the first server wouldn’t need an IP
address to send data to itself) or (B) “the web server is prevented from being
aware of the first device” (e.g., because claim 1 also requires the first server
“receiving the first content identifier from the first device” and the first
server “sending the first content to the first device”).
Accordingly, we do not sustain the Examiner’s rejections of claim 1
and its dependent claims 2–14 and 16–28.
Appeal 2021-000646
Application 16/292,374

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REJECTION UNDER 37 C.F.R. § 41.50(b)
We make the following new ground of rejection using our authority
under 37 C.F.R. § 41.50(b).
Claim 8
Claim 8 is rejected under 35 U.S.C. § 112(b) as indefinite. Claim 8
recites “establishing a connection . . . in response [to] the communicating”
and “the communicating . . . is over the established connection.” In addition
to missing the word “to” in the phrase “in response the communicating,” the
first half of the claim requires “establishing a connection” after “the
communicating” but the second half requires “the communicating” after the
“connection” is “established.” This appears to create a paradox where both
events are required but neither event can occur until after the other has
already completed. Thus, claim 8 is indefinite.
OUTCOME
The following table summarizes the outcome of each rejection:
Claims
Rejected
35
U.S.C. §
Reference(s)
/ Basis Affirmed Reversed
New
Ground
1–8, 10–14,
17, 18, 21,
23, 24, 27, 28
103 Binder,
Brandwine,
Wiczkowski
1–8, 10–14,
17, 18, 21,
23, 24, 27, 28

16, 19, 20 103 Binder,
Brandwine,
Wiczkowski,
Feng
16, 19, 20
9, 22, 25, 26 103 Binder,
Brandwine,
Wiczkowski,
Talwar
9, 22, 25, 26
8 112(b) Indefiniteness 8
Overall
Outcome
1–14, 16–28 8
Appeal 2021-000646
Application 16/292,374

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TIME TO RESPOND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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Application 16/292,374

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.36(a)(1)(iv).
REVERSED;
37 C.F.R. § 41.50(b)