Ex Parte Dorso et alDownload PDFPatent Trial and Appeal BoardFeb 15, 201712876154 (P.T.A.B. Feb. 15, 2017) Copy Citation 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. 12/876,154 09/05/2010 Gregory DORSO TNGO-006 1699 101698 7590 02/17/2017 TANGO C/O WAGNER BLECHER LLP 123 WESTRIDGE DRIVE WATSONVTT.T.E, CA 95076 EXAMINER LIN, SHERMAN L ART UNIT PAPER NUMBER 2447 NOTIFICATION DATE DELIVERY MODE 02/17/2017 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): patents @ wagnerblecher.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREGORY DORSO, URI RAZ, and ERIC SETTON Appeal 2014-006616 Application 12/876,1541 Technology Center 2400 Before JEFFREY S. SMITH, KEVIN C. TROCK, and MICHAEL M. BARRY, Administrative Patent Judges. TROCK, Administrative Patent Judge. DECISION ON APPEAL Introduction Appellants seek review under 35 U.S.C. § 134(a) from the Examiner’ Final Rejection of claims 1—15. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants indicate the Real Party in Interest is TangoMe, Inc. App. Br. 2 Appeal 2014-006616 Application 12/876,154 Invention The claimed invention relates to communicating with a user device in a computer environment. Title. Exemplary Claim Exemplary claim 1 is reproduced below: 1. A method for communicating, said method comprising: contacting a tracker peer and obtaining a list of peer nodes at a user device; selecting a subset of peer nodes from said list of peer nodes to act as relay nodes for a communication; transmitting a first form of communication to at least one relay node for said at least one relay node to forward to at least one other user device, wherein said relay node is one of said subset of said peer nodes; receiving said first form of communication at said user device from said at least one relay node forwarded from said at least one other user; and transmitting a second form of communication to said at least one relay node for said at least one relay node to forward to said at least one other user device, wherein said relay node is one of said subset of said peer nodes. Rejections Claims 8—14 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 1—3, 5, 8—10, and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rao et al. (US 2006/0242227 Al; publ. Oct. 26, 2006) and Tsang et al. (US 2007/0280255 Al; publ. Dec. 6, 2007). 2 Appeal 2014-006616 Application 12/876,154 Claims 4 and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rao, Tsang, and Park et al. (US 2005/0047390 Al; publ. Mar. 3, 2005). Claims 6, 7, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rao, Tsang, and Burkman et al. (US 5,717,857; Feb. 10, 1998). Claim 15 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Rao, Tsang, Burkman, Skarbo et al. (US 5,544,300; Aug. 6, 1996), and Qui et al. (US 2008/0115185 Al; May 15, 2008). ANALYSIS We have reviewed the Examiner’s rejections and the evidence of record in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ arguments and conclusions. We adopt as our own, (1) the findings and reasons set forth by the Examiner in the Office Action from which this appeal is taken and (2) the findings and reasons set forth in the Examiner’s Answer. We concur with the conclusions reached by the Examiner and further highlight specific findings and argument for emphasis as follows. Section 101— Claims 8—14 Independent claim 8 recites, among other things, “[a] computer-usable storage medium having instructions embodied therein for causing a computer system to perform the steps of communicating.” Appellants contend the Examiner erred in rejecting claims 8—14 under Section 101 because the claims are directed to statutory subject matter. App. Br. 7—8. Appellants argue that the examples of computer usable storage medium 3 Appeal 2014-006616 Application 12/876,154 provided in the Specification are not directed to propagating signals, and that the Specification is silent with respect to any non-statutory embodiments of a computer useable storage medium. App. Br. 8 (citing Spec. 148). Claims directed to machine readable media can encompass non- statutory transitory forms of signal transmission, such as a propagating electrical or electromagnetic signal, per se. Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential). Here, claim 8 recites “[a] computer usable storage medium” and does not expressly exclude non- statutory forms of signal transmission. Moreover, the Examiner notes that the Specification states that computer useable and computer executable instructions may reside in “any” type of computer useable storage medium. Ans. 13—14 (see Spec. 148). We, therefore, agree with the Examiner that under the broadest reasonable interpretation, the recited computer-usable storage medium encompasses non-statutory forms of signal transmission. Accordingly, we are not persuaded the Examiner erred in finding claims 8—14 are directed to non-statutory subject matter. We, therefore, sustain the Examiner’s rejection of claims 8—14 under 35 U.S.C. § 101. Section 103 — Independent Claim 1 Appellants contend the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 103(a), because the combination of Rao and Tsang fails to teach or suggest transmitting a first and a second form of communication to a relay node. App. Br. 9-14; Reply Br. 2—3. Appellants argue that Rao’s different or multiple communications are merely a plurality of communications and not a first and a second form of communications as claimed. App. Br. 11 (citing Rao 128). Appellants also argue Rao teaches 4 Appeal 2014-006616 Application 12/876,154 away from the claimed invention because Rao’s promoter 210 does not provide a list of peer nodes to clients 220 and 230, but instead selects the community relay node 240. App. Br. 12—13 (citing Rao 140). The Examiner reasons, however, and we agree, the recited limitations “first form of communication” and “second form of communication” may be broadly interpreted as a first and second instance of a form of communication rather than limited to a first form of communication and a second different form of communication. Ans. 16. The Examiner finds, and we agree, Rao teaches network based communications to collaborate, share files, chat, multicast audio and video and engage in multi-player gaming. Ans. 15 (citing Rao 11). The Examiner finds, and we agree, that each type of network activity inherently requires different types of communication (e.g., audio and video presentations). Id. The Examiner therefore concludes, and we agree, that Rao teaches or suggests the claimed transmitting first and second forms of communication. Id. With respect to Appellants’ “teaching away” argument, we disagree. A reference does not teach away if it merely expresses a general preference for an alternative invention from amongst options available to the ordinarily skilled artisan, and the reference does not discredit or discourage investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Rao does not discredit or discourage investigation into the claimed invention. In addition, the Examiner reasonably interprets the limitation “selecting a subset of peer nodes from said list of peer nodes” as a selection process for determining the best nodes to become relay nodes. Ans. 17 (citing Rao 173). The Examiner finds, and we agree, Rao teaches selecting a community relay node that is closest to the requesting client from 5 Appeal 2014-006616 Application 12/876,154 a list of community relay nodes. Id. Moreover, the Examiner finds Tsang teaches contacting a peer tracker and obtaining a list of peer nodes at a user device. Ans. 17—18 (citing Tsang 143). Accordingly, we are not persuaded the Examiner erred in finding that the combination of Rao and Tsang teaches or suggests the disputed limitations of independent claim 1. We, therefore, sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103(a). Section 103 — Remaining Claims 2—15 Appellants have not presented separate, persuasive arguments with respect to remaining claims 2—15. Appellants, instead, repeat the same arguments made with respect to claim 1 and assert, for example, that Claim 8 has features similar to Claim 1. Claims 2, 3 and 5 depend from Claim 1. Claims 9, 10 and 12 depend from Claim 8. Therefore, by demonstrating th[at] Claim 1 is patentable over Rao in view of Tsang, it is also demonstrated that Claims 2, 3, 5, 8-10 and 12 are patentable over Rao in view of Tsang. App. Br. 9. Appellants make similar assertions with respect to claims 4, 6, 7, 11, and 13—15. See App. Br. 14—21. Merely repeating, however, the same arguments made with respect to one claim and generally asserting that other claims have “similar features,” or are dependent therefrom, are not separate, persuasive arguments for the patentability of each claim. See In re Lovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011) (“We conclude that the Board has reasonably interpreted Rule 41.37 to require applicants to articulate more substantive arguments if they wish for individual claims to be treated separately.”). We have, nonetheless, considered the Examiner’s findings and the basis for the rejection of claims 2—15 as well as Appellants’ assertions with respect to those claims. For the reasons set forth above with 6 Appeal 2014-006616 Application 12/876,154 respect to claim 1, we are not persuaded the Examiner erred in rejecting these claims. Accordingly, we sustain the Examiner’s rejection of claims 2— 15 under 35 U.S.C. § 103(a). DECISION We AFFIRM the Examiner’s rejection of claims 8—14 under 35 U.S.C. § 101. We AFFIRM the Examiner’s rejection of claims 1—15 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation