Ex Parte Chen et al

Board of Patent Appeals and Interferences

Jan 4, 2012

10613994 (B.P.A.I. Jan. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TSU-WEI CHEN, PING-FAI YANG, ROGER LENG,
CHUNG-YIH WANG, RADU TEODORESCU, YENNUN HUANG,
and DAVID S. ROSENBLUM
____________

Appeal 2009-015172
Application 10/613,994
Technology Center 2400
____________

Before ERIC S. FRAHM, GREGORY J. GONSALVES, and
JEFFREY S. SMITH, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-015172
Application 10/613,994

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-16 and 18-24. (Response to Notice of Non-Compliant Appeal
Brief, June 2, 1008, p. 2.) Claim 17 was cancelled. (Id.) We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary independent claim 1 follows:
1. A network for distributing digital content to subscribers,
comprising:
a plurality of user machines;
a central distributor that regularly distributes digital content;
a plurality of cache servers that receive and cache the
distributed digital content, wherein the cache servers periodically
receive user requests from user machines for certain of the cached
digital content and forward the requested digital content to the user
machines; and,
a routing box that receives the distributed digital content as files
from the central distributor and transfers the digital content files to the
plurality of cache servers using a publish-subscribe content-based
routing, wherein the digital content files are publications and the user
requests are subscriptions and wherein the routing box receives a filter
and uses the filter to selectively transfer the digital content files to one
or more of the plurality of cache servers.

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The Examiner rejected claims 1-16 and 18-24 under 35 U.S.C.
§ 103(a) as being unpatentable based on Challenger (U.S. 6,567,893 B1) and
Speakman (U.S. 6,055,364). (Ans. 2-7.)

ISSUES
Appellants’ responses to the Examiner’s positions present the
following issues:
1. Did the Examiner establish that the combination of Challenger and
Speakman teaches or suggests “a routing box that receives the distributed
digital content as files from the central distributor and transfers the digital
content files to the plurality of cache servers using a publish-subscribe
content-based routing,” and “wherein the routing box receives a filter and
uses the filter to selectively transfer the digital content files to one or more
of the plurality of cache servers,” as recited in claim 1?
2. Did the Examiner establish that the combination of Challenger and
Speakman teaches or suggests “propagating a filter to a routing box in the
network,” and “content based routing … using the filter to selectively route
the digital content,” as recited in claim 13?

ANALYSIS
Issue – Obviousness Rejections of Claims 1-16 and 18-24
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants’ conclusion regarding the obviousness of claims 1-
16 and 18-24. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken and (2) the
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reasons set forth by the Examiner in the Examiner’s Answer (Ans. 3-9) in
response to the Appellants’ Appeal Brief. We concur with the conclusion
reached by the Examiner. But we highlight and address specific findings
and arguments regarding certain claimed limitations such as the “a routing
box that receives the distributed digital content as files from the central
distributor and transfers the digital content files to the plurality of cache
servers using a publish-subscribe content-based routing,” “propagating a
filter to a routing box in the network,” and “content based routing … using
the filter to selectively route the digital content.”
Appellants contend that claim 1 is not obvious because the
combination of Challenger and Speakman does not teach or suggest
“selectively transferring digital content to cache servers using publish-
subscribe based routing and a filter.” (App. Br. 10.) As explained by the
Examiner, however, Speakman teaches transferring information using a
publish-subscribe model in which “recipients [120] subscribe/request
information (i.e., digital content) from source servers S [110].” (Ans. 8
(citing Speakman 4:38-42, 63-33).) As also explained by the Examiner,
Speakman teaches “utilizing content descriptors as filters in order to filter
the information.” (Id. at 8-9.) In other words, Speakman teaches that
information that matches the content descriptors of a recipient’s subscription
is transferred to that recipient.
Appellants also contend that claim 1 is not obvious for the additional
reason that the combination of Challenger and Speakman does not teach “a
routing box that receives distributed digital content and transfer the content
to cache servers.” (App. Br. 10.) Appellants similarly argue that claim 13 is
not obvious because “Speakman does not teach or suggest that the content
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descriptors are filters, so transmitting a content descriptor is not propagating
a filter.” (App. Br. 10.) But it is inherent that the network of Challenger
must have a device to route information through the network to the proper
recipient. (Ans. 8.) Moreover, one of ordinary skill in the art would have
modified the devices in Challenger’s network to receive content descriptors
and to transfer information based on those descriptors, as taught by
Speakman. (Id.) Accordingly, we find that the Examiner, giving the claim
its broadest reasonable meaning consistent with the Specification, In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), properly reasons that the
content descriptors of Speakman are filters because information is
selectively transferred based on the content descriptors.
For these reasons and the reasons expressed in the Examiner’s
Answer, we sustain the Examiner’s obviousness rejection of independent
claims 1 and 13as well as the claims that depend from claims 1 and 13 (i.e.,
claims 2-12, 14-16, and 18-24) because Appellants did not set forth any
separate patentability arguments for those claims. (See App. Br. 9-10.)
Appellants also present arguments for the first time in the Reply Brief
that “a person of ordinary skill in the art would have no motivation to
combine Challenger with Speakman.” (Reply Br. 7-8.) Because Appellants
could have raised these arguments in the Appeal Brief to rebut the rejections
made in the Final Office Action and did not do so, they waived these
arguments, and therefore, we will not consider them. Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative decision) (“[T]he reply brief
[is not] an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner's rejections, but were not.”).

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DECISION
We affirm the Examiner’s decision rejecting claims 1-16 and 18-24 as
obvious.
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

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