NETSWEEPER (BARBADOS) INC.

Patent Trials and Appeals Board

Dec 2, 2020

2019004099 (P.T.A.B. Dec. 2, 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.
15/024,499 03/24/2016 Perry ROACH P4214US00 9051
54640 7590 12/02/2020
PERRY + CURRIER INC.
1300 YONGE STREET
SUITE 500
TORONTO, ONTARIO M4T-1X3
CANADA
EXAMINER
PEARSON, DAVID J
ART UNIT PAPER NUMBER
2438
NOTIFICATION DATE DELIVERY MODE
12/02/2020 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):
docketing@pckip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PERRY ROACH
________________

Appeal 2019-004099
Application 15/024,499
Technology Center 2400
____________

Before ROBERT E. NAPPI, MARC S. HOFF, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1‒4, 6‒14, and 16‒20, which are all the claims pending
in this application.1 Claims 5 and 15 have been canceled. See Appeal Br. 14,
16. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Netsweeper (Barbados) Inc. as the real
party in interest. Appeal Br. 3.
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Application 15/024,499

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STATEMENT OF THE CASE
Introduction
Appellant’s application relates to network policies that can be used to
prevent undesirable webpages from being retrieved by a computer. Spec.
¶ 2. Claim 1 is illustrative of the appealed subject matter and reads as
follows:
1. A method of processing network requests, the method
comprising:
receiving a request via a network for a target media
element at a requested location, the request identifying a media
repository that stores the target media element;
determining whether the request is subject to a restrictive
policy;
where the request is subject to a restrictive policy,
processing the request to determine a substitute media element
that has content approximately equivalent to content of the
target media element, the processing including querying a
policy database that stores associations between target media
elements and locations of substitute media elements, the
substitute media element stored on a sub-network connected to
the network, a location of the substitute media element stored
on the policy database;
where the requested target media element is associated
with a substitute media element in the policy database,
generating a selection page having a target link to the requested
location of the target media element and a substitute link to the
location of the substitute media element on the sub-network, the
target link juxtaposed to the substitute link on the selection
page; and
responding to the request with the selection page.

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Application 15/024,499

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The Examiner’s Rejections
Claims 1, 2, 6, 7, 11, 12, 16, 17 stand rejected under 35 U.S.C. § 103
as unpatentable over Gnagy (US 7,058,633 B1; June 6, 2006) and Dixon
(US 2008/0109473 A1; May 8, 2008). See Final Act. 3‒5.
Claims 3, 8‒10, 13, and 18‒20 stand rejected under 35 U.S.C. § 103
as unpatentable over Gnagy, Dixon, and Choque (US 2014/0280272 A1;
Sept. 18, 2014). See Final Act. 6‒7.
Claims 4 and 14 stand rejected under 35 U.S.C. § 103 as unpatentable
over Gnagy, Dixon, and Torgerson (US 2014/0283108 A1; Spet. 18, 2014).
See Final Act. 7‒8.
Claims 1‒4, 6‒14, and 16‒20 stand provisionally rejected on the
ground of non-statutory double patenting as being unpatentable over claims
1‒41 of co-pending Application No. 14/418,358 in view of Gnagy, Dixon,
Choque, and Torgerson. See Final Act. 9‒10.

ANALYSIS
Obviousness
Appellant argues the Examiner errs in rejecting claim 1 because an
ordinarily skilled artisan would not have been motivated to combine the
teachings of Gnagy and Dixon. See Appeal Br. 9‒12; Reply Br. 2‒4. In
particular, Appellant argues Gnagy and Dixon teach incompatible
technologies, and the combination would change the principle of operation
of Gnagy and render Gnagy unsatisfactory for its intended purpose. Appeal
Br. 9. Appellant also argues the references teach away from the proposed
combination. Id.
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Appellant argues the references are incompatible because Gnagy
teaches forcibly rewriting URLs without an option for a user to select
whether to follow the original URL or the rewritten URL. Id. at 10 (citing
Gnagy, Figs. 1, 3, and 5). Appellant argues Dixon, on the other hand, is a
permissive system that allows for alerts to warn users navigating to a site
that may include malicious content or has a poor reputation. Id. at 11 (citing
Dixon, Figs. 13‒15). Appellant argues a system cannot both forcibly rewrite
URLs, as taught by Gnagy, and provide the user with the option of whether
to follow a substitute link, as taught by Dixon. Id. at 11.
Appellant has not persuaded us of Examiner error. The Examiner
finds, and we agree, Gnagy teaches a system that monitors client requests for
URLs that match database entries and substitutes the matching URLs with
alternative URLs. Ans. 4 (citing Gnagy 5:48‒63). The Examiner finds, and
we agree, Dixon teaches a system that monitors URLs and presents alerts to
a user, giving the user the option to proceed to the original URL or an
alternate URL. Id. (citing Dixon ¶¶ 143, 185, Figs. 8, and 13‒15,). The
Examiner finds an ordinarily skilled artisan would have combined these
teachings to inspect and modify a webpage’s embedded URLs, and
substitute alternative URLs along with a warning and an option to follow the
original URL. Id. at 5.
Appellant argues that the Examiner’s proposed combination would
change the principle of operation of Gnagy and render Gnagy unsatisfactory
for its intended purpose because the principle of operation and intended
purpose of Gnagy are to rewrite URLs to defeat a web content filtering
system. See Appeal Br. 11. However, this is only one potential use of
Gnagy’s substitute URLs. Gnagy teaches that its system “can be used for
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Application 15/024,499

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multiple purposes.” Gnagy 2:46‒49. As examples, Gnagy teaches substitute
URLs can be used for efficient content routing, disseminating emergency
information, and defeating content filtering systems. Id. at 2:49‒58. Dixon
teaches a system that in some instances uses substitute URLs in a manner
similar to Gnagy’s teachings, but the system also may provide alerts to
users, giving users the option of selecting the original URL in certain
circumstances. See, e.g., Dixon ¶ 143. An ordinarily skilled artisan would
have recognized the advantages and disadvantages of these various options.
“A given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to combine.”
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).
Notably, Appellant has not persuasively identified, nor have we found, any
teachings in Gnagy that require substitute URLs to be provided without the
user’s knowledge or without giving the user the option to follow the original
URL.
For these reasons, we sustain the obviousness rejection of claim 1. We
also sustain the obviousness rejection of independent claim 11, which
Appellant argues is patentable for the same reasons. See Appeal Br. 12. We
also sustain the obviousness rejection of dependent claims 2, 6, 7, 12, 16,
and 17, for which Appellant relies on the same arguments. See id. Claims 3,
4, 8‒10, 13, 14, and 18‒20 stand rejected as unpatentable over Gnagy,
Dixon, and either Choque or Torgerson. Appellant argues these claims are
patentable for the same reasons as claim 1. See id. Accordingly, we also
sustain the obviousness rejections of claims 3, 4, 8‒10, 13, 14, and 18‒20 for
the same reasons.
Appeal 2019-004099
Application 15/024,499

6

Double Patenting
Claims 1‒4, 6‒14, and 16‒20 stand provisionally rejected on the
ground of nonstatutory double patenting. See Final Act. 9‒10. Appellant
does not separately argue this rejection, stating that Appellant has deferred
filing a terminal disclaimer in view of the arguments above. We summarily
affirm the nonstatutory double patenting rejection.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 6, 7,
11, 12, 16,
17
103 Gnagy, Dixon 1, 2, 6, 7,
11, 12, 16,
17

3, 8‒10, 13,
18‒20
103 Gnagy, Dixon,
Choque
3, 8‒10, 13,
18‒20

4, 14 103 Gnagy, Dixon,
Torgerson
4, 14
1‒4, 6‒14,
16‒20
Nonstatutory double
patenting
1‒4, 6‒14,
16‒20

Overall
Outcome
1‒4, 6‒14,
16‒20

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.
§ 1.136(a)(1)(iv).

AFFIRMED