Ex Parte Khan et al

Patent Trial and Appeal Board

Oct 27, 2016

11295820 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111295,820 12/06/2005 Shabbir Khan
35690 7590 10/31/2016
MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P,C
P.O. BOX 398
AUSTIN, TX 78767-0398
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
6057-55800 1459
EXAMINER
LEE, ANDREW CHUNG CHEUNG
ARTUNIT PAPER NUMBER
2411
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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):
patent_docketing@intprop.com
ptomhkkg@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHABBIR KHAN and ALEXANDER COHEN
Appeal2014-005334
Application 11/295,820
Technology Center 2400
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1---6, 17-20, 22, 33-38, 49-54 and 65-82. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
Claim 1 is illustrative:
1. A method, comprising:
A network device within a network receiving a digital
transmission form from a source node, wherein the digital
transmission form corresponds to a digital object to be forwarded
Appeal2014-005334
Application 11/295,820
from the source node to a destination node, wherein the digital
transmission form is wholly separate from the digital object,
wherein the digital transmission form specifies at least one
requested service to be performed in transmitting the digital
object from the network device to the destination node, and
wherein the at least one requested service specifies information
relating to a time of transmission of the digital object by the
network device;
the network device determining an availability of one or
more nodes within the network to provide the at least one
requested service;
the network device receiving at least one portion of the
digital object from the source node; and
the network device transmitting the at least one portion of
the digital object over the network to the one or more nodes based
at least in part on the availability of the one or more nodes to
provide the at least one requested service.
Appellants appeal the following rejection(s):
1. Claims 1---6, 17-20, 22, 33-38, 49-54, and 65-82 under 35 U.S.C.
§ 103(a) as unpatentable over Colby (US 2005/0193114 Al, pub. Sept. 1,
2005) in view of Menditto (US 6,981,029 B 1, iss. Dec. 27, 2005).
ISSUE
Did the Examiner err in rejecting the claims because Colby does not
disclose or suggest a network device receiving a digital transmission form
from a source node?
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Appeal2014-005334
Application 11/295,820
ANALYSIS
The Appellants argue that the Examiner erred because it is the client
that sends the transmission form in Colby and not the network as required by
claim 1. We agree.
The Examiner finds that the server depicted in Figures 1, 1 b, and 2 is
the source node and that this source node transmits a transmission form that
corresponds to a digital object (Fin. Act. 3). The Examiner also finds that
the client is the destination node (Fin. Act. 25). The Examiner relies on
paragraphs 63-64 of Colby for teaching that the transmission form specifies
at least one requested service. The Examiner finds that the teaching in
Colby that a flow setup request specifies a content-type and filename
extension is a teaching of a transmission form specifying a requested service
(Fin. Act. 3).
The problem with the Examiner's finding is that the flow setup
request that specifies a content-type and filename extension is a part of the
request from the client not the server. Claim 1 requires that the digital
transmission form be received by the network device from a source node.
The Examiner has found that the server is the source node. However, the
server of Colby does not transmit a flow setup request, but rather it is the
client, which the Examiner finds is the destination node, that sends the flow
setup request. Therefore, we will not sustain the Examiner's rejection of
claim 1 and claims 2---6 dependent therefrom. We will also not sustain this
rejection as it is directed to the remaining claims because each of these
claims requires that the transmission form be transmitted from the source
node.
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Appeal2014-005334
Application 11/295,820
DECISION
The decision of the Examiner is REVERSED
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