Ex Parte Sullivan et al

Patent Trial and Appeal Board

Jan 20, 2015

11598113 (P.T.A.B. Jan. 20, 2015)

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.
11/598,113 11/08/2006 John Sullivan 806114 8882
46304 7590 01/21/2015
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
EXAMINER
MURPHY, CHARLES C
ART UNIT PAPER NUMBER
2455
MAIL DATE DELIVERY MODE
01/21/2015 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 JOHN SULLIVAN,
DAVID SINCLAIR FERGUSON, and JARROD LOWE
____________________

Appeal 2012-006497
Application 11/598,113
Technology Center 2400
____________________

Before BRUCE R. WINSOR, JOHN A. EVANS, and
JOHN F. HORVATH, Administrative Patent Judges.

HORVATH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-006497
Application 11/598,113
2
STATEMENT OF THE CASE
Appellants seek review of the Examiner’s rejection of claims 1–20
under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

SUMMARY OF THE INVENTION
The invention is directed to a method for optimizing access to digital
objects stored on a network node. Spec. 1:5–7.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A network having a plurality of nodes comprising:
at least a first node for storing pieces of a digital object
and having a storage;
a plurality of connections between the first node and the
plurality of nodes, wherein the first node comprises:
a requester for requesting one or more pieces of
the digital object;
a transmitter for transferring one or more pieces of
the digital object to at least one further node among the
plurality of nodes;
a receiver for receiving content availability
messages from at least some of the plurality of nodes;
and
a sender for sending at least one limited content
availability message to at least one further node among
the plurality of nodes, whereby the at least one limited
content availability message indicates a subset but not all
of the pieces of the digital object available through the
first node, and whereby at least a portion of the subset of
the pieces of the digital object that are indicated in the
limited content availability message are selected so as to
decrease time required for the first node to access the at
least a portion of the subset of the pieces of the digital
object.
Appeal 2012-006497
Application 11/598,113
3

PRIOR ART
Chung
Twiss
US 2004/0143586 A1
US 2006/0168318 A1
July 22, 2004
July 27, 2006

Daniel Stutzbach et al., SWARMING SCALABLE CONTENT DELIVERY FOR
THE MASSES, University of Oregon Computer and Information Science
Technical Report, Jan. 2004 (hereafter, “Stutzbach”).

Arun Chokkalingam & Firasath Riyaz, BitTorrent Protocol
Specification v 1.0, Dec. 12, 2004 (hereafter, “BitTorrent”).

REJECTIONS
Claims 1, 2, 6, 7, 13, 14, and 19 stand rejected under 35 U.S.C
§ 103(a) as unpatentable over Stutzback and BitTorrent. Ans. 4.
Claims 3–5, 8–12, 15, 16, and 20 stand rejected under 35 U.S.C
§ 103(a) as unpatentable over Stutzback, BitTorrent, and Twiss. Ans. 12.
Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Stutzback, BitTorrent, and Chung. Ans. 19.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner has erred. We agree with Appellants that the
Examiner has failed to establish a prima facie case that the claims are not
patentable for the reasons that follow.

Claims 1–20
The Examiner finds BitTorrent discloses a superseeding algorithm in
which a seed node masquerades as a normal node, and sends a content
Appeal 2012-006497
Application 11/598,113
4
availability message to other network nodes indicating it has access to only
limited or rare pieces of a digital object. Ans. 7 (citing BitTorrent 20). The
Examiner finds this disclosure teaches or suggests a first node comprising “a
sender for sending at least one limited content availability message to at
least one further node among the plurality of nodes.” Id. The Examiner
further finds this disclosure, when combined with BitTorrent’s disclosure of
rarest first and end game algorithms, teaches or suggests sending a limited
content delivery message to “decrease [the] time required for the first node
to access the at least a portion of the subset of pieces of the digital
object . . . .” Ans. 7–8 (citing BitTorrent §§ 4.1.1–4.1.3).
Appellants argue BitTorrent fails to teach or suggest the seed node
selects the rare or limited pieces of the digital object it identifies in its
(limited) content availability message to decrease the time required for the
seed node to access the selected pieces. App. Br. 6. Appellants further
argue that because BitTorrent’s rarest first and end game strategies are
downloading strategies, used to determine which pieces of a digital object a
network node should request for download, they are inapposite to the
limitations recited in claim 1, which pertain to selecting a subset of digital
objects that are already stored at the first node and available for download to
other network nodes. Id. We find Appellants arguments persuasive.
Claim 1 recites a network, including a first node that comprises “a
sender for sending at least one limited content availability message . . .
[that] indicates a subset but not all of the pieces of [a] digital object
available through the first node, and whereby at least a portion of the subset
of the pieces of the digital object . . . are selected so as to decrease time
required for the first node to access the at least a portion of the subset of the
Appeal 2012-006497
Application 11/598,113
5
pieces of the digital object.” Claims App’x. (emphases added). In other
words, claim 1 recites the first node sends a limited content availability
message. That message identifies some but not all of the pieces of the
digital object stored on and available through the first node. Moreover, at
least some of the identified pieces are identified because they decrease the
time required for the first node to access them, e.g., because they are stored
in the first node’s cache memory.
The Examiner finds BitTorrent’s superseeding, rarest first, and end
game algorithms “increase[s] seeding efficiency in a peer to peer sharing
system,” and this increased seeding efficiency “decrease[s] the time a client
needs to access a shared segment of a file because it is more readily
available within the system.” Ans. 24. In particular, the Examiner finds
these algorithms “allow a seeding client and receiving client to communicate
what the rarest pieces of a file are available and transfer those pieces to a
receiving client.” Id. While we do not disagree with these findings, we
agree with Appellants they are inapposite to the invention recited in claim 1.
Claim 1 requires the first node to select a subset of the pieces of a
digital object stored on the first node that decrease the time required for the
first node to access them, and to send a limited content availability message
identifying the selected subset to other network nodes. The pieces of the
digital object in the selected subset are therefore already stored on the first
node. They decrease the time required for the first node to access them
because they are stored in cache memory on the first node. See Spec. 9:26–
10:2. The identification of a rare piece of a digital object by a first (seed)
node, as articulated by the Examiner (see Ans. 7), does not relate to the
Appeal 2012-006497
Application 11/598,113
6
amount of time required for the first node to access that data. Consequently,
we do not sustain the Examiner’s rejection of claim 1 for this reason.
Appellants argue for the patentability of claim 14, which recites
limitations similar to those discussed above with respect to claim 1, for the
same reasons as claim 1. App. Br. 4–5. Moreover, claims 2–13 depend
from claim 1; while claims 15–20 depend from claim 14. We therefore do
not sustain the Examiner’s rejection of claims 2–20 for the same reasons as
claim 1.
Claims 3–5, 9, 13, 15 and 16
Appellants separately argue for the patentability of dependent claims
3–5, 9, 13, 15, and 16. App. Br. 7–12. Because we do not sustain the
Examiner’s rejection of independent claims 1 and 14, from which these
claims depend, we do not address Appellants’ separate arguments for the
patentability of claims 3–5, 9, 13, 15, and 16. See Beloit Corp. v. Valmet
Oy, 742 F.2d 1421,1423 (Fed. Cir. 1984) (finding an administrative agency
is at liberty to reach a decision based on a single dispositive issue).

DECISION
For the reasons indicated above, the Examiner’s rejection of claims 1–
20 is reversed.
REVERSED

ELD