Ex Parte Oberle et al

Patent Trial and Appeal Board

Oct 18, 2013

11168419 (P.T.A.B. Oct. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KARSTEN OBERLE, MARCUS KESSLER,
PETER DOMSCHITZ, and MARCO TOMSU
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Appeal 2011-004459
Application 11/168,419
Technology Center 2400
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Before ST. JOHN COURTENAY III, THU A. DANG, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-6. (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
This invention relates to "a method for performing services in a
telecommunication network with network elements." (Spec. 1). Claim 1,
reproduced below, is representative of the claimed subject matter:
1. A method [a] for performing a service or application in a
first network environment with at least two network nodes for
performing a service or an application, the nodes using a
common service support layer, the method comprising:
[b] receiving a request, by a first of the network nodes,
from a second network environment, the request is to perform
the service or application;
[c] determining if the first network node is equipped to
perform the service or application;
[d] determining if the first network node is capable of
downloading and installing programs;
[e] if the first network node is not equipped to perform
the service or the application, performing one of a first
procedure and a second procedure, the first procedure
including,
[f] checking, with the first network node and the
service support layer whether a second network node, of
the same hierarchical level as the first network node, is
equipped to perform the service or the application, and
[g] if the second network node is equipped to
perform the service or the application, performing the
service or the application with the other network node,
and not the first network node,
the second procedure including,
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[f1] checking if the first network node is capable of
downloading and installing programs,
[g] if the first network node is capable of downloading
and installing programs,
[g1] downloading, to the first network node, a program to
execute the service or the application from another network
element within the network environment, and
[g2] performing the service or the application with the
first network node; and
[g3] forwarding a result of the performing of the service
or the application to the second network environment.
(Disputed limitations emphasized and steps lettered).

REJECTIONS
R1. The Examiner rejected claims 1 and 2 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(Ans. 3-4).
R2. The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings and suggestions of Raz (U.S.
2002/0138640 A1), Narasimhan (U.S. 2003/0050968 A1), Lee (U.S.
2004/0266407 A1), Abdelaziz (U.S. 2004/0044727 A1), and Sim (U.S.
2002/008318 A1). (Ans. 4-8).
R3. The Examiner rejected claims 2-6 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings and suggestions of Raz and
Abdelaziz. (Ans. 8-14).

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ANALYSIS
R1. WRITTEN DESCRIPTION REJECTION
Regarding the claim 1 limitations of the first and second network
environments and the claim 2 limitation of "another network environment,"
Appellants contend the Specification (at page 9, lines 7-11, and Figure 1)
shows the Appellants were in possession of the claimed invention.1 (App.
Br. 9-11, 23). Specification page 9, lines 7-11, describes: "[t]he double
arrow between the telecommunication network NW2 and the network node
GW2 symbolises [Brit. Sp.] the request to the network node GW2 to perform
a video service VI." Appellants also contend:
Claim 1 does not define the "first network environment"
or the "second network environment" in terms of the make-up
(e.g., architecture or protocols) of the network. At most, claim
1 recites the first network includes "at least two network nodes
for performing a service or an application." Claim 1 includes
no further limitation of the "second network environment".
(App. Br. 22).
We are persuaded by Appellants’ contentions. We find Appellants'
Figure 1, which depicts computers connected via telecommunication
networks NW1, NW2 and NW3, evidences Appellants had possession of the
claimed first and second network environments. We note each computer in

1 While there is no in haec verba requirement, newly added claim limitations
must be supported in the Specification through express, implicit, or inherent
disclosure. The fundamental factual inquiry is whether the Specification
conveys with reasonable clarity to those skilled in the art that, as of the filing
date sought, Applicant was in possession of the invention as now claimed.
See, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991)).
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Appellants' Figure 1 has a different network environment because each
computer is connected to different computers (e.g., network environment).
For these reasons, on this record, we are persuaded of Examiner error. We
reverse the rejection R1 of claims 1 and 2 under §112, first paragraph
(written description).
R2. OBVIOUSNESS REJECTION OF CLAIM 1
A.
Regarding the limitation [b] "receiving a request, by a first of the
network nodes, from a second network environment," as recited in claim 1,
Appellants contend Abdelaziz would not have taught or suggested the
"second network environment" because "Abdelaziz teaches a peer which
always shares services within the [peer group] network for which the peer
belongs." (App. Br. 26; see also Reply Br. 7). Appellants contend all of
Abdelaziz 's peers providing services in a peer group are in a "first network
environment," and not in a "second network environment." (App. Br. 26).
Appellants' contentions are unpersuasive because Appellants'
contentions are not commensurate with the broader scope of the claims.
Specifically, we conclude the claims do not preclude the first and second
network environments from being in the same peer group or network
because the claims to not define a "network environment" as all peers in a
peer group that provide services. We conclude the broadest reasonable
interpretation consistent with the Specification of a "second network
environment" covers any second peer in Abdelaziz's peer group, not
including the first peer, because Abdelaziz's first and second peers have
different network environments. As discussed above regarding R1, the first
and second peers (nodes) have different network environments because each
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peer is connected to different peers. (See e.g., Abdelaziz, Figs. 19-26).
Moreover, Appellants fail to cite to a more narrow definition of "network
environment" and "network" in the Specification. We further agree with the
Examiner that Abdelaziz peers in a peer group are located in different
networks ("network environments") because Abdelaziz's networks are
separated by routers, firewalls, and proxies. (Ans. 18 citing Abdelaziz, Figs.
19-26).
B.
Regarding the claim 1 limitation [g3] "forwarding a result of the
performing of the service or the application to the second network
environment," Appellants contend Sim's distribution station can request a
file from another distribution station, not "forward a result . . . ." (Emphasis
added; Reply Br. 8-9).
We are not persuaded. The Examiner finds, and we agree, that Sim's
"get_ack" command results in a first Distribution Station acknowledging the
end of the "get" sequence and reporting the status to the second distribution
station. (Ans. 18-19 citing Sim, ¶[0102]). We also agree that Sim's
reporting the status of the "get_ack" command would have taught or
suggested "forwarding a result of the performing of the service or
application . . . " (Id.). Specifically, the "report status" is a result of the
service or application (get or get_ack). (Id.). For these reasons, on this
record, we are not persuaded of Examiner error.
C. COMBINATION OF REFERENCES UNDER § 103
Regarding claim 1, Appellants contend the combination of
"Raz/Narasimhan/Lee's method of searching and providing services to nodes
with Abdelaziz teachings of providing such services in a peer to peer
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network" is not obvious because the Examiner's reason to combine is not
explicitly disclosed in the combined references. (App. Br. 30-31).
Specifically, Appellants contend the motivation and benefit of distributing
the load across the Abdelaziz's peer to peer network is not disclosed in any
of the cited references. (Id.).
Appellants' contentions are unpersuasive. The Examiner finds, and
we agree, that one skilled in the art at the time of the invention would have
known or inferred that Peer-to-Peer networks distribute loads across a
network because peer-to-peer systems by design, do not rely on centralized
servers in a hierarchical network.2 (Ans. 20, App. Br. 30). Thus, we find
the Examiner's articulated reasoning for combining the references has a
rational underpinning to support the legal conclusion of obviousness.3
Moreover, contrary to Appellants’ contention that the Examiner gleaned the
motivation from Appellants’ Specification (i.e., alleging reliance on
impermissible hindsight), Appellants fail to cite to the Specification of any

2 “[A]nalysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
3 The Examiner's articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Supreme Court stated that
“‘rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.”’ KSR
550 U.S. at 418 (quoting Kahn, 441 F.3d at 988).

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description of the Examiner's proffered motivation of using a peer-to-peer
network to distribute loads. (App. Br. 30; Ans. 20).
For these reasons, on this record, we are not persuaded of Examiner
error. Accordingly, we sustain the § 103 rejection R2 of claim 1.
R3. OBVIOUSNESS REJECTION OF CLAIMS 2-6
Regarding the obviousness rejection R3 of claims 2-6, Appellants
contend claims 2-6 are patentable for the same reasons advanced for claim 1
in sections R2 (A and C above) that we did not find persuasive.
Accordingly, we also sustain the rejection R3 of claims 2-6.

DECISION
We reverse the Examiner's rejection R1 of claims 1 and 2 under § 112,
first paragraph (written description).
We affirm the Examiner's rejection R2 of claim 1 under § 103.
We affirm the Examiner's rejection R3 of claims 2-6 under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).

AFFIRMED

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