Ex Parte HopkinsDownload PDFPatent Trial and Appeal BoardFeb 28, 201411103818 (P.T.A.B. Feb. 28, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SAMUEL P. HOPKINS ____________ Appeal 2011-005992 Application 11/103,818 Technology Center 2100 ____________ Before STEPHEN C. SIU, DENISE M. POTHIER, and JEREMY J. CURCURI, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 13, 16-20,1 and 23-26. Claims 1-12, 14, 15, 21, and 22 have been canceled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellant excludes claim 20, when indicating what claims are being appealed. App. Br. 2. On the other hand, the Notice of Appeal, other portions of the Appeal Brief (see App. Br. 3, 8), and the Reply Brief (Reply Br. 2) indicate that claim 20 is being appealed. For purposes of this opinion, we presume claim 20 is appealed. Appeal 2011-005992 Application 11/103,818 2 Invention Appellant’s invention relates to a technique for detecting whether a computer can participate in a peer-to-peer network. See Abstract. Claim 13 is reproduced below: 13. A system for detecting peer-to-peer network software, said system comprising: a. a storage medium for storing instructions; b. a user input device for receiving user input; and c. a processor unit operable to process said user input and to use said instructions to execute a scanning program to: i. review a first feature of a target computer indicative of installation of peer-to- peer client software on the target computer, wherein said first feature is selected from a group consisting of said target computer’s registry keys, registry values, installed executable files, disk directories and network communications; ii. compare said first feature of said target computer to first known information indicative of installation of peer-to-peer client software on the target computer; iii. review a second feature of said target computer indicative of past participation in peer-to-peer network communication by the peer- to-peer client software on said target computer, said second feature consisting of determining if multimedia files are stored locally on said target computer; iv. compare said second feature of said target computer to second known information including at least a predetermined threshold count of multimedia files stored locally on said target computer, the predetermined threshold count being indicative of past participation by said peer-to-peer client software in peer-to-peer network communication; v. determine that peer-to-peer client software has been installed on said target computer and that files are being shared by the target computer in peer-to-peer network communication based on a result of both the compare of said first feature and the compare of said second feature; vi. notify a network administrator of the result of determining that peer-peer client software has been installed on said target Appeal 2011-005992 Application 11/103,818 3 computer as a result of both the compare of said first feature and the compare of said second feature; and vii. disable the peer-to-peer network software. The Examiner relies on the following as evidence of unpatentability: Roberts US 2005/0091397 A1 Apr. 28, 2005 (filed Nov. 12, 2004) Labio US 7,089,301 B1 Aug. 8, 2006 (filed Aug. 11, 2000) Tanzella US 7,277,404 B2 Oct. 2, 2007 (filed Feb. 6, 2003) Sutler US 7,318,092 B2 Jan. 8, 2008 (filed Jan. 23, 2003) The Rejections Claims 13, 16-19, and 23-26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Sutler, Tanzella, and Labio. Ans. 3-15. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over Sutler, Tanzella, Labio, and Roberts. Ans. 16-17. OBVIOUSNESS REJECTION OVER SUTLER, TANZELLA, AND LABIO Regarding independent claim 13, the Examiner finds that Sutler and Tanzella teach all its limitations, except for the recited reviewing and comparing steps of the second feature. Ans. 3-9. Labio in combination with Sutler and Tanzella has been cited to teach the missing steps. Ans. 9-11 (citing Labio 5:34-6:17, 8:14-30, Table 1), 20-22. Among other things, Appellant asserts Labio teaches determining which hosts are good at file sharing and that, absent impermissible hindsight, Appeal 2011-005992 Application 11/103,818 4 Labio’s teaching would not be used in a system that detects peer-to-peer network software. See App. Br. 7; Reply Br. 4-5. ISSUE Is the Examiner’s reason to combine the teachings of Sutler, Tanzella, and Labio supported by articulated reasoning with adequate rational underpinning to justify the Examiner’s obviousness conclusion of claim 13? ANALYSIS Based on the record before us, we find error in the Examiner’s rejection of claim 13. At the outset, we agree with the Examiner that Labio’s teaching of measuring the number of files shared by a particular host (e.g., nf) involves determining if multimedia files are stored locally on the target computer. See Ans. 10-11(citing Labio 6:15-17), 21 (citing Labio 3:33-36). Appellant admits the files being shared are stored (App. Br. 7), and Labio suggests that the files shared by the host are also stored on the host (see Labio 3:34-35, 6:15-17). Thus, although Labio may not count the precise number of files or all the files stored on a target computer (App. Br. 5-7; Reply Br. 6), detecting a given number of files shared by the target computer (e.g., a nf value greater than zero) also determines if multimedia files are stored by the target computer as claim 13 requires. Additionally, we agree that Labio teaches or suggests some form of comparing a threshold (e.g., nt = 250 files shared) to the number of files shared (e.g., nf), which as stated above, determines if files are stored locally on the target computer. Labio 8:17-36. Even so, based on the record, we do not agree that the Examiner has provided a reason with an adequate rational Appeal 2011-005992 Application 11/103,818 5 underpinning to support that an ordinarily skilled artisan would have looked to Labio’s teaching, given Sutler’s discussion of discovering software applications based on the presence of software artifacts or relics. Specifically, the Examiner relies on Sutler to teach a system for detecting software on a target computer by detecting software side effects, relics, or other attributes. Ans. 4, 21-22 (citing Sutler 3:32-52, 4:18-28). The Examiner then turns to Labio to teach one such side effect, relic, or attribute. Ans. 10-11, 21-22. Yet, Labio has no discussion or suggestion that determining the files shared by a host (i.e., nf) is a known side effect, relic, or attribute to an ordinarily skilled artisan for detecting any type of software within a host. Rather, as Appellant notes (App. Br. 5-6; Reply Br. 5), Labio detects the number of files being shared to decide whether a particular host has the desired characteristics of a good host. Labio 8:17-38. Labio does not teach or suggest that the number of files shared would have been understood as a known side effect, relic, or attribute for detecting software to one skilled in the art. The Examiner has also not provided adequate evidence that one skilled in the art would have recognized Labio’s number of shared files or multimedia files stored on a target is a known side effect, relic, or attribute of detecting software within a computer. On the record, Tanzella does not bridge or cure this problem, for Tanzella is being relied upon to teach peer-to-peer client software is known and would have been recognized as being used with Sutler to prevent security risks posed by peer-to-peer software. Ans. 8-9, 20, and 22 (citing Tanzella 4:36-39, 23:55-24:11). However, Tanzella’s general teaching of peer-to-peer software and security risks does not teach or suggest to an ordinarily skilled artisan using any particular feature, such as determining Appeal 2011-005992 Application 11/103,818 6 multimedia files stored on a target computer, to detect software on a system. We, therefore, find inadequate suggestion in the cited reference to turn Labio’s teaching of using a number of shared files as a side effect, relic, or attribute for detecting software on a target computer. In summary, without the benefit of Appellant’s disclosure, we fail to find an adequate rational underpinning for combining Labio’s teachings with the Sutler/Tanzella system. See Reply Br. 5. We, therefore, are constrained to conclude the Examiner’s reason to combine the teachings of Sutler, Tanzella, and Labio is not supported by a reason with adequate rational underpinning to justify the Examiner’s obviousness conclusion of claim 13. For the foregoing reasons, Appellant has persuaded us of error in the rejection of independent claim 13 and dependent claims 16-19 and 23-26 for similar reasons. OBVIOUSNESS REJECTION OVER SUTLER, TANZELLA, LABIO, AND ROBERTS Appellant asserts that Roberts does not cure the above-noted deficiencies. App. Br. 8. We agree. Accordingly, we will not sustain the rejection of claim 20. CONCLUSION The Examiner erred in rejecting claims 13, 16-20, and 23-26 under § 103. Appeal 2011-005992 Application 11/103,818 7 DECISION The Examiner’s decision rejecting claims 13, 16-20, and 23-26 is reversed. REVERSED rwk Copy with citationCopy as parenthetical citation