Ex Parte Bravery et alDownload PDFPatent Trial and Appeal BoardApr 25, 201310555433 (P.T.A.B. Apr. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANDREW JAMES FREDERICK BRAVERY, ALAN WILLIAM KNOX, AND SIMON LAWS Appeal 2010-010791 Application 10/555,4331 Technology Center 2400 ____________ Before THU A. DANG, JAMES R. HUGHES, and GREGORY J. GONSALVES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL 1 Application filed Nov. 3, 2005, claiming benefit from PCT/GB03/04891 filed Nov. 12, 2003. The real party in interest is International Business Machines Corporation. (App. Br. 2.) Appeal 2010-010791 Application 10/555,433 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1, 2, 5-15, 18, 19, 21, and 23-25 in Appeal Brief dated December 22, 2009 – claims 3, 4, 16, 17, 20, and 22 have been canceled (App. Br. 4.). Appellants, however, indicate “[t]he claims on appeal are: 1, 2, 5, 10 and 12,” even though they also indicate “[c]laims pending [and rejected]: 1, 2, 5- 15, 18, 19, 21, and 23-25” and “[c]laims withdrawn from consideration but not cancelled: 6-9, 11, 13-15, 18, 19, 21, and 23-25.” (Id.) Accordingly, we find Appellants do not appeal claims 6-9, 11, 13-15, 18, 19, 21, and 23-25 but note claims 6-9, 11, 13-15, 18, 19, 21, and 23-25 are pending and rejected. The Board has no jurisdiction as to non-appealed claims, and we deem claims 6-9, 11, 13-15, 18, 19, 21, and 23-25 canceled and not before us for review. The Examiner has the authority to cancel the non-appealed claims 6-9, 11, 13-15, 18, 19, 21, and 23-25. See Ex parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008) (precedential). We have jurisdiction as to claims 1, 2, 5, 10, and 12 under 35 U.S.C. § 6(b). We affirm. Invention Appellants’ invention is directed to peer-to-peer computing. (Spec. 1, ll. 5-6.)2 2 We refer to Appellants’ Specification (“Spec.”); Reply Brief (“Reply Br.”) filed May 18, 2010; and Appeal Brief (“App. Br.”) filed Dec. 22, 2009. We also refer to the Examiner’s Answer (“Ans.”) mailed Mar. 18, 2010. Appeal 2010-010791 Application 10/555,433 3 Representative Claim Independent claim 1, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 1. A first peer computer system operable in a decentralized peer to peer network that does not include a central host controlling device, comprising: means for accessing a first piece of information; means for creating a first entity; means for associating the first entity with the first piece of information; means for sending the first piece of information to a second peer computer system in the decentralized peer to peer network; means for requesting an updated version of the first piece of information from the second peer computer system using the first entity; a first storage device having the first entity, the first piece of information and the updated version of the first piece of information stored therein; and wherein the first entity is associated with a topic of the first piece of information. Rejections on Appeal 1. The Examiner rejects claims 1, 2, 5, 10, and 12 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. The Examiner rejects claims 1, 2, 5, 10, and 12 under 35 U.S.C. § 103(a) as being unpatentable over Gupta (U.S. Patent No. 7,222,156 B2, issued May 22, 2007 (filed Jan. 25, 2001)) and Yeager (U.S. Patent No. 7,328,243 B2, issued Feb. 5, 2008 (filed Oct. 31, 2002)). Appeal 2010-010791 Application 10/555,433 4 Grouping of Claims Based on Appellants’ arguments in the Briefs, we will decide the appeal on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). ISSUES 1. Under § 101, did the Examiner err in finding that independent claims 1, 2, 5, 10, and 12 are directed to non-statutory subject matter? 2. Under § 103, did the Examiner err in finding that the cited combination of Gupta and Yeager, collectively, would have taught or suggested “a first storage device having a first entity, the first piece of information and the updated version of the first piece of information,” and “means for requesting an updated version of the first piece of information from the second peer computer system using the first entity” (claim 1 (emphasis added)), within the meaning of independent claim 1? 3. Under § 103, did the Examiner err in finding that the cited combination of Gupta and Yeager, collectively, would have taught or suggested a first entity comprising “a unique identifier for the first peer computer system, a date on which the first entity was created, and the first piece of information” (emphasis added), as recited in claim 2? 3. Under § 103, is the Examiner’s cited combination of Gupta and Yeager a result of impermissible hindsight? 4. Under § 103, did the Examiner err by not providing proper motivation to combine Gupta and Yeager (claim 5)? 5. Under § 103, did the Examiner err in finding that the cited combination of Gupta and Yeager, collectively, would have taught or Appeal 2010-010791 Application 10/555,433 5 suggested “means for defining the first entity, wherein the means for defining is configurable using an extensible markup language (XML),” within the meaning of claim 12? ANALYSIS The § 101 Rejection The Examiner rejected claims 1, 2, 5, 10, and 12 under 35 U.S.C. § 101. (Final Office Action 5; Ans. 3.) Appellants have not responded to the § 101 rejection in either the Principal Brief or the Reply Brief. Consequently, we deem Appellants to have waived this issue. Accordingly, we summarily affirm the Examiner’s § 101 rejection.3 The § 103 Rejection Claim 1 – Storage Device and Means for Requesting Appellants contend that the cited references fail to teach or suggest a first storage device having updated version information of the first piece of information stored therein. (App. Br. 9.) Appellants further argue that the cited references fail to teach or suggest a means for requesting an updated version of the first piece of information from the second peer computer 3 With respect to all claims before us on appeal, arguments which Appellants could have made but chose not to make have not been considered and are deemed to be waived. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). See 37 C.F.R. § 41.37(c)(1)(iv). See also In re Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004). Appeal 2010-010791 Application 10/555,433 6 system using the first entity. (Claim 1; App. Br. 9-10.) We agree with and adopt the Examiner’s findings. (Ans. 4-5, 18-19.) We observe that claim 1 is an apparatus (first peer computer system) claim. We construe the “first storage device” at issue as storing data (first entity, first piece of information and updated version of the first piece of information), and the storage of the data is not positively recited. We also construe the “means for requesting an updated version” as a means for requesting data “updated version of the first piece of information.” We find that the limitations at issue consist essentially of non- functional descriptive material, i.e., data (first piece of information, updated piece of information, first entity) and functional language, i.e., statements of intended use (“for requesting an updated version of the first piece of information” (claim1)). We do not ascribe these features any patentable weight. “An[ ]intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” a statement of intended use or purpose can appear elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed.Cir. 1987). The stored “data” also does not further limit the claim either functionally or structurally. See Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential). Further, we agree with and adopt the Examiner’s reasoning that an email request from a first peer system to a second peer system for an updated version of a piece of information is merely data. (Ans. 19.) Appeal 2010-010791 Application 10/555,433 7 Even if we, arguendo, were to ascribe some weight to the disputed claim limitations, we find Appellants’ arguments unavailing. Regarding the claimed first storage device limitation, we agree with the Examiner that the cited references would have taught or suggested storing copies of all of the messages including the updated version information. (Ans. 18-19.) Yeager teaches a version update request may be added to the payload (Yeager, col. 2 ll. 15-18) and indications of version may be stored in a mobile agent (id. at col 2, ll. 26-30). Therefore, we conclude that the cited references would have taught or suggested storing the recited first entity, first piece of information, and updated piece of information. Appellants further contend that the Examiner’s assertion that the references describe “updated version information” is unsubstantiated. (Reply Br. 2.) However, we find that the cited references, as discussed above, support the Examiner’s findings and would have taught or at least suggested this limitation. We further agree with the Examiner that the cited references would have taught or suggested a means for requesting an updated version of the first piece of information and the updated version of the first piece of information from the second peer computer system using the first entity. As discussed above, Yeager discloses that version update request may be added to the request and be included in the mobile agent. (Yeager, col. 2, ll. 30- 32.) Based on this record, we conclude that Appellants have not shown the Examiner erred in finding that the cited references would have taught or suggested the limitations at issue. Appeal 2010-010791 Application 10/555,433 8 Hindsight Appellants contend that the Examiner’s cited combination is the result of impermissible hindsight. (App. Br. 10.) Appellants assert that one skilled in the art would not have combined Gupta’s “push system” with Yeager’s “update provide” functionality. (App. Br. 10-11.) The Supreme Court has determined that the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art and that an obviousness “analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (emphasis added). See also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). Here, it is our view that an artisan possessing common sense and creativity at the time of the invention would have been familiar with a variety of methods for distributing messages in a de-centralized network, such as those methods taught or suggested by the collective teachings of Gupta and Yeager. While we are fully aware that hindsight bias often plagues determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36 (1966), we are also mindful that the Supreme Court has clearly stated that the “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results,” KSR, 550 U.S. at 401. Appeal 2010-010791 Application 10/555,433 9 This reasoning is applicable here. Thus, we find unavailing Appellants’ contention that the Examiner has relied on impermissible hindsight reconstruction. Given the breadth of Appellants’ claims, we are not persuaded that combining the respective familiar elements of the cited references in the manner proffered by the Examiner was “uniquely challenging or difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Therefore, we find the Examiner’s proffered combination of familiar prior art elements according to their established functions would have conveyed a reasonable expectation of success to a person of ordinary skill having common sense at the time of the invention. Claims 2 and 10 Appellants contend that the cited references fail to teach or suggest a first entity that includes a unique identifier for the first peer system, a date on which the first entity was created, and a first piece of information, as recited in claim 2. (App. Br. 11.) We agree. The Examiner contends that “[t]he prior art only has to disclose at least one of these claim limitations and not all three limitations.” (Ans. 21.) We find that the claim language requires all three features (unique identifier, date of creation, and piece of information) be included because, as admitted by the Examiner (Ans. 21), the “at least one of” language was deleted from the claim by amendment. The Examiner has not shown that the cited references teach or suggest a first entity that includes a unique identifier for the first peer system. Appeal 2010-010791 Application 10/555,433 10 Based on this record, we conclude that the Examiner erred in rejecting claim 2. Claim 10 depends from claim 2. Accordingly, we reverse the Examiners’ rejection of claims 2 and 10 for the reasons stated above. Claim 5 – Motivation to Combine Appellants contend that a person of ordinary skill in the art would not have been motivated to modify the teachings of Gupta to include “a trawling agent that trawls storage areas of the peer devices of the individual to determine a most current version of the first piece of information.” (App. Br. 13.) Appellants argue that Gupta uses a completely different technique for collaborative communications using an underlying email system architecture. (Id.) We agree with Appellants that in order to present a prima facie case of obviousness, the Examiner must articulate reasoning with some rational underpinning to support the legal conclusion of obviousness. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some 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) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “‘[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.’” In re ICON Health and Fitness Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007) (quoting KSR, 550 U.S. at 402). As mentioned by Appellants, the Examiner presented a rationale for the combination. (App. Br. 13.) Although Appellants contend that the teachings of Gupta and Yeager appear disparate, we find that the Examiner Appeal 2010-010791 Application 10/555,433 11 provided an articulated reasoning with some rational underpinning for combining the cited references. Based on this record, we conclude that the Examiner provided proper motivation to combine Gupta and Yeager. Accordingly, we affirm the Examiners’ rejection of claim 5. Claim 12 – Configurable Using XML Language Appellants contend that cited references fail to teach or suggest all of the limitations recited in clam 12. (App. Br. 15.) Appellants argue that the portions of Gupta cited by the Examiner describe different aspects of the overall Gupta operating environment. (App. Br. 16.) We agree. We find that the portions of Gupta cited by the Examiner do not discuss or describe configuring an entity using XML as recited in claim 12. While portions of Gupta describe writing pages in XML (Gupta, col. 4, ll. 9- 13), the Examiner has not shown that Gupta would have taught or suggested a defining means configurable using XML language. Based on this record, we conclude that the Examiner erred in rejecting dependent claim 12. Accordingly, we reverse the Examiner’s rejection of claim 12 for the reasons discussed supra. CONCLUSIONS OF LAW Appellants have not shown that the Examiner erred in rejecting claims 1, 2, 5, 10, and 12 under 35 U.S.C. § 101. Appellants have not shown that the Examiner erred in rejecting claims 1 and 5 under 35 U.S.C. § 103(a). Appellants have shown that the Examiner erred in rejecting claims 2, 10, and 12 under 35 U.S.C. § 103(a). Appeal 2010-010791 Application 10/555,433 12 DECISION We affirm the Examiner’s rejection of claims 1, 2, 5, 10, and 12 under 35 U.S.C. § 101. We affirm the Examiner’s rejection of claims 1 and 5 under 35 U.S.C. § 103(a). We reverse the Examiner’s rejection of claims 2, 10, and 12 under 35 U.S.C. § 103(a). Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). 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). AFFIRMED peb Copy with citationCopy as parenthetical citation