Ex Parte Frieder et al

Patent Trial and Appeal Board

Nov 26, 2014

11450739 (P.T.A.B. Nov. 26, 2014)

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.
11/450,739 06/09/2006 Ophir Frieder IIT-225 8982
7590 11/26/2014
Pauley Petersen & Erickson
Suite 365
2800 West Higgins Road
Hoffman Estates, IL 60195
EXAMINER
LIANG, VEI CHUNG
ART UNIT PAPER NUMBER
2800
MAIL DATE DELIVERY MODE
11/26/2014 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 OPHIR FRIEDER and WAI GEN YEE
____________________

Appeal 2012-006752
Application 11/450,7391
Technology Center 2800
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1–4, 6–14, and 16–21. Appellants have previously
canceled claims 5 and 15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Illinois Institute of
Technology. App. Br. 2.
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STATEMENT OF THE CASE2
The Invention
Appellants' invention relates to a peer-to-peer file sharing system
having selective return of query results. Abstract.
Exemplary Claims
Claims 1 and 11, reproduced below, are representative of the subject
matter on appeal (formatting and emphases added to disputed limitations):
1. In a method for implementing a search in a
network system including routing a query inputted into a client
computer to server computers, identifying matching server files
that are responsive to the query in each of a plurality of the
server computers, and returning server file information for all
the matching server files in the each of the plurality of the
server files to the client computer as search results, the
improvement comprising:
each of the plurality of server computers determining a
plurality of matching server files stored therein that are
responsive to the query and for returning to the client computer;
the each of a plurality of the server computers returning
to the client computer only a subset of the determined plurality
of matching server files,
wherein the subset is less than all of the determined
plurality of matching server files that are responsive to the
query and the subset is less than all of a number of matching
server files allowed or requested to be returned by the client
computer, and

2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Dec. 27, 2011); Reply Brief ("Reply Br.," filed Mar. 19, 2012); Examiner's
Answer ("Ans.," mailed Feb. 1, 2012); Final Office Action ("Final Act.,"
mailed July 27, 2011); and the original Specification ("Spec.," filed
June 9, 2006).
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the each of a plurality of the server computers selects the
subset of the matching server files from the determined
plurality of matching server files according to a given
probability applied to each of the matching server files or the
each of a plurality of the server computers selects as the
matching server files of the subset up to a predetermined
number of the matching server files of the determined plurality
of matching server files that are at least one of:
most similar to the query based upon a content based
similarity metric, or most or least frequently returned in
response to other client computer searches.

11. A method for implementing a search in a peer-to-
peer (P2P) file sharing system, the method comprising:
masking at least one term in a query entered into a client
computer of the P2P system to obtain a masked query;
routing the masked query from the client computer to a
server computer of the P2P system;
comparing the masked query to file descriptors of server
files in the server computer and identifying a plurality of
matching server files that are returnable to the client in response
to the query,
each of the identified plurality of matching server files
having a file descriptor including each term of the masked
query;
the server computer selecting a subset of matching server
files from the identified plurality of matching server files,
wherein the subset is less than all of a number of matching
server files allowed or requested to be returned by the client
computer and
the server computer selects each matching server file of
the subset from the identified plurality of matching server files
according to a given probability or the server computer selects
as the matching server files of the subset, up to a predetermined
number, the matching server files that are at least one of: most
similar to the query based upon a content based similarity
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metric, or most or least frequently returned in response to client
computer searches;
the server computer returning to the client computer as
search results the file descriptor and a mathematical identifier
for the matching server files of the subset of the plurality of
matching server files.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Mao et al.
("Mao")
US 2003/0041054 Al Feb. 27, 2003
Plow et al.
("Plow")
US 2005/0278313 A1 Dec. 15, 2005
Gross et al.
("Gross")
US 2006/0064411 A1 Mar. 23, 2006
Frieder et al.
("Frieder")
US 7,860,876 B2 Dec. 28, 2010
Roizen et al.
("Roizen")
US 7,865,495 B1 Jan. 4, 2011
(effective filing date
Oct. 6, 2004)
Reynolds, P. and Vahdat, A., "Efficient Peer-to-Peer
Keyword Searching", Proceeding of the ACM/IFIP/USENIX
Middleware Conference, Rio de Janeiro, Brazil, June 2003
(hereinafter "Reynolds").
Rejections on Appeal
R1. Claims 11–13 stand rejected on the ground of nonstatutory
obviousness-type double patenting (OTDP) as being unpatentable over claim
13 of Frieder in view of Roizen. Ans. 6.
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R2. Claims 1, 2, and 8–10 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Roizen. Ans. 10.
R3 Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Roizen and Plow. Ans. 13.
R4. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Roizen and Reynolds. Ans. 14–15.
R5. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Roizen and Gross. Ans. 15.
R6. Claims 11–14, and 18–21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Roizen and Mao.
Ans. 17.
R7. Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Roizen, Mao, and Gross.
Ans. 24.
GROUPING OF CLAIMS
Based on Appellants' arguments (App. Br. 7–15), we decide the
appeal of Rejection R1 of claims 11–13 on the basis of representative claim
11; we decide the appeal of Rejection R2 of claims 1, 2, and 8-10 on the
basis of representative claim 1; and we decide the appeal of Rejection R6 of
claims 11–14, and 18–21 on the basis of representative claim 11.
We address remaining claims 3, 4, 6, 7, 16, and 17 in rejections R3,
R4, R5, and R7, not argued separately, infra.
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ISSUES AND ANALYSIS
We only considered those arguments actually made by Appellants in
reaching this decision, and we do not consider arguments which Appellants
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We have considered all of Appellants' arguments and any evidence
presented. We disagree with Appellants' arguments with respect to claims
1–4, 6–14, and 16–21. We incorporate herein and 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 reasons and rebuttals set forth by the Examiner in
the Examiner's Answer in response to Appellants' arguments, and we
incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted. However, we highlight and address specific findings and
arguments regarding claims 1 and 11 for emphasis as follows.
1. OTDP Rejection R1 of Claims 11–13
Issue 1
Appellants argue (App. Br. 14–15; Reply Br. 8) the Examiner's
rejection of claims 11–13 under the judicially created doctrine of
obviousness-type double patenting over claim 13 of Frieder in view of
Roizen is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests all the limitations of claim 11 because Roizen allegedly does not
teach or suggest that a server computer determines a subset of the matching
server results and returns them to the client computer, as generally recited in
claim 11?
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Analysis
Appellants contend Roizen is deficient in teaching that for which the
Examiner offers it, "[a]s discussed . . . [with respect to claims 1 and 11 in
Rejections R1 of claim 1 and R6 of claim 11]." App. Br. 15; Reply Br. 8.
For the same reasons discussed infra with respect to the teachings and
suggestions of Roizen in connection with Issue 3 and Rejection R6, we are
not persuaded the Examiner erred in rejecting claims 11–13 under the
doctrine of obviousness-type double patenting, and we therefore sustain the
rejection.
2. Anticipation Rejection R2 of Claims 1, 2, and 8-10
Issue 2
Appellants argue (App. Br. 7–10; Reply Br. 2–5) the Examiner's
rejection of claims 1, 2, and 8–10 under 35 U.S.C. § 102(e) as being
anticipated by Roizen is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art discloses an
improved method in which "each of a plurality of the server computers
return[s] to the client computer only a subset of the determined plurality of
matching server files," as recited in claim 1?
Analysis
Appellants contend their "invention includes each server computer
determining for itself the subset [of found matching server files] to be
returned, and this includes the number of matching server files of the subset
as well . . . [and Roizen] does not provide or suggest a server computer
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determining a subset." App. Br. 8. Instead, Appellants contend, in Roizen
the subset is determined by the querying computer, because the "lower
number [of files] is still 'specified' by the querying federator." Id. (citing
Roizen col. 23, ll. 35–40). Appellants further contend Roizen's federator is a
client, and not a server or a node being searched, and the federator
determines Roizen's disclosed "shuffling process" and subset size. App.
Br. 8–9. Appellants summarize their arguments by alleging:
Roizen . . . discloses a method that allows a client to lower the
number of results that it requires from each server node. Roizen
. . . does not provide or suggest Applicants' recited subset
determination that determined by each server computer
individually, and not the client. More particularly, Roizen . . .
does not disclose or suggest a server computer determining
and returning a subset of matching server files that is less than
all of the matching server files allowed, or requested, to be
returned by the client computer.
App. Br. 10.
In response, the Examiner finds Roizen's query federator 33 (see
Roizen Fig. 5 and col. 11, ll. 50–55) is a component that search engine 430
sends query 17 to one or more nodes 34. Ans. 28. From this disclosure, the
Examiner finds Roizen's query federator 33 "is actually a server in Roizen
. . . [that] discloses a server computer selecting a subset of the matching
server files." Id.
We note Appellants describe a server as a machine in a file sharing
system that acts as a data repository and provider; a client as a machine
running a software program seeking and receiving information; and a node
as one or more machines acting as one location in the network. See Spec. 1,
ll. 13–18.
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We further note Roizen's federator 33 has attributes of both a client
and a server. For example, as a client, "[t]he SLU 32, via federator 33, can
then submit the new query 17b to nodes 34 . . . ." Roizen col. 13, ll. 42–43.
In addition,
[S]earch engine 430 can include one or more computational
nodes 34a through 34n governed by a coordinating component
called a federator 33. Federator 33 comprises computer
hardware, software, and methods that manage and coordinate
multiple nodes 34a through 34n. Federator 33 broadcasts each
query 17 to a set of one or more nodes 34a-n, each comprising
hardware and software components . . . . Federator 33
aggregates subset results 56a-n from all nodes 34 to build a
composite result 48 . . . . For other . . . embodiments, federator
33 maintains node-specific mapping tables, so that federator
33 can translate between key sets to build a composite result
48.
Roizen col. 20, ll. 11–28 (emphasis added). Furthermore, "[f]ormatter 37
builds a formatted response 419 from a match list or composite result 48."
Roizen col. 10, ll. 45–46. Thus, we find federator 33 aggregates results to
provide a composite result in response to the original query, and includes
node-specific mapping tables, thus broadly but reasonably meeting
Appellants' description of a server cited above, i.e., "a file sharing system
that acts as a data repository and provider."
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's anticipation rejection of independent claim 1, and claims 2 and
8–10 which fall therewith. See "GROUPING OF CLAIMS," supra.
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§ 103(a) Rejections R3–R5 of Claims 3, 4, 6, and 7
In view of the lack of any substantive or separate arguments directed
to the various obviousness rejections R3–R5 of claims 3, 4, 6, and 7 under
§ 103, we sustain the Examiner's rejections of these claims, as they fall with
their respective independent claim 1. Arguments not made are considered
waived. 37 C.F.R. § 41.37(c)(1)(vii)).
3. § 103 Rejection R6 of Claims 11–14, and 18–21
Issue 3
Appellants argue (App. Br. 11–14; Reply Br. 5–7) the Examiner's
rejection of claims 11–14, and 18–21 under 35 U.S.C. § 103(a) as being
obvious over the cited prior art combination is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method in which "the server computer select[s] a subset of
matching server files from the identified plurality of matching server files,
wherein the subset is less than all of a number of matching server files
allowed or requested to be returned by the client computer," as recited in
claim 11?
Analysis
Appellants contend, "[s]imilar to Claim 1, discussed above, the server
computers in Claims 11 and 21 determine the subsets of the matching server
files. The subset in Roizen . . . is not determined by the individual server
computers, but instead is determined by the querying client federator." App.
Br. 12. Appellants further allege, "considering the deficiencies of Roizen
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. . . discussed above [with respect to claim 1], even if the combination of the
federated system Roizen . . . with the P2P system of Mao . . . was possible or
suggested by the references, the combination does not provide all claim
limitations." App. Br. 11.
Thus, we find Issue 2, discussed above with respect to Rejection R2 of
claim 1, is also dispositive in connection with Issue 3 and Rejection R6 of
claim 11.
Accordingly for the same reasons discussed above with respect to
Issue 2, we find Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art, or in the resulting legal
conclusion of obviousness. Therefore, we sustain the Examiner's
obviousness rejection of independent claim 11, and claims 12–14, and 18–21
which fall therewith. See "GROUPING OF CLAIMS," supra.
§ 103(a) Rejection R7 of Claims 16 and 17
In view of the lack of any substantive or separate arguments directed
to obviousness rejection R7 of claims 16 and 17 under § 103, we sustain the
Examiner's rejections of these claims, as they fall with their respective
independent claim 11. Arguments not made are considered waived.
37 C.F.R. § 41.37(c)(1)(vii)).
REPLY BRIEF
To the extent Appellants advance new arguments in the Reply Brief
(Reply Br. 2–8) not in response to a shift in the Examiner's position in the
Answer, we note that "[a]ny bases for asserting error, whether factual or
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legal, that are not raised in the principal brief are waived."3 Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with
Optivus Tech., Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir.
2006) ("[A]n issue not raised by an appellant in its opening brief . . . is
waived.").
CONCLUSIONS
(1) The Examiner did not err with respect to the obviousness-type
double patenting rejection of claims 11–13 over the cited prior art
combination of record, and we sustain the rejection.
(2) The Examiner did not err with respect to the anticipation
rejection of claims 1, 2, and 8–10 under 35 U.S.C. § 102(e) over the cited
prior art of record, and we sustain the rejection.
(3) The Examiner did not err with respect to the obviousness
rejection of claims 11–14, and 18–21 under 35 U.S.C. § 103(a) over the
cited prior art combinations of record, and we sustain the rejections.

3 We note Appellants raise such an untimely new argument in the Reply
Brief with respect to the contention "[t]he issue is whether one of ordinary
skill in the art would have considered it obvious to apply a method of a
closed, controlled federator system to the open, uncontrolled peer-to-peer
system [of Mao]." Reply Br. 5–6. We further note the Examiner's position
on the combinability of Roizen and Mao has not changed between the Final
Action and the Answer. See Final Act. 17; Ans. 20. Appellants did not
argue the combinability of the references in the Appeal Brief, therefore, we
find such new arguments are untimely. We also note, even if this argument
was timely, Appellants provide no substantive argument or evidence in
support of this contention.
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DECISION
We affirm the Examiner's decision rejecting claims 1–4, 6–14,
and 16–21.
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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