Ex Parte Satagopan et al

Board of Patent Appeals and Interferences

May 11, 2012

10693516 (B.P.A.I. May. 11, 2012)

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.
10/693,516 10/23/2003 Murli Satagopan 40062.0217US01 2199
27488 7590 05/11/2012
MERCHANT & GOULD (MICROSOFT)
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
PHAN, TUANKHANH D
ART UNIT PAPER NUMBER
2163
MAIL DATE DELIVERY MODE
05/11/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MURLI SATAGOPAN and KIM CAMERON
____________

Appeal 2010-002904
Application 10/693,516
Technology Center 2100
____________

Before FRED E. MCKELVEY, KEVIN TURNER, and
THOMAS L. GIANNETTI, Administrative Patent Judges.

GIANNETTI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Claims 1-42 are pending in this application. All claims stand finally
rejected under 35 U.S.C. § 103(a).
Initially, Appellants appealed all pending rejections. See Notice of
Appeal. Appellants have indicated in their Brief, however, that they are
appealing only as to claims 1, 7, 16, 18, 23, and 35. See App. Br 5.
We reverse the final rejection as to the claims on appeal (1, 7, 16, 18,
23, and 35) and dismiss the appeal as to claims 2-6, 8-15, 17, 19-22, 24-34,
and 36-42.

The Invention
The application is directed to accessing and publishing
documents and other information stored on various computing machines, or
nodes, in a distributed communications network. Spec. 1:5-8.
As an example, a publisher’s documents may be accessed by a user
(referred to as a “principal”) through use of a “user-friendly handle” and a
machine location for the publisher’s computer (sometimes referred to as the
“publishing node” or “first computer system”) provided by the publisher to
the user. Spec. 5:3-8. An email address is an example of a user-friendly
handle, and an IP address is an example of a machine location. Id. at 4:14-
15.
The user-friendly handle provided by the publisher is stored at the
user’s computer (sometimes referred to as the “accessing node” or “second
computer system”). Spec. 5:8-9. When an initial request for access to
documents is made from the accessing node to the publishing node, the user-
friendly handle is “resolved” at that computer into the machine location for
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the publisher’s computer. See Fig. 1, resolution module 160. The amended
request for access to documents is then sent from the accessing node to the
machine location of the publishing node. Spec. 5:9-12.

Exemplary Claim
Exemplary claim 1 on appeal reads as follows:
1. A method of accessing documents stored on a first computer
system through a second computer system, the first and second
computer systems connected in a network environment, said method
comprising:

storing at the second computer system an identity information
document from the first computer system, the identity
information document comprising a user-friendly handle
identifying a principal and a machine location of the first
computer system;

receiving at a user interface implemented on the second
computer system a request for access to documents stored on
the first computer system, the request including the user-
friendly handle and being directed to the first computer system;

intercepting at the second computer system the request for
access to documents from the user of the second computer
system when the request includes the user-friendly handle;

replacing at the second computer system the user-friendly
handle of the request with the machine location; and

sending the request for access to documents to the machine
location of the first computer system.

(Emphasis added)

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Application 10/693,516

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Rejections on Appeal
All independent claims on appeal (claims 1, 7, 23 and 35) are rejected
under 35 U.S.C § 103(a) based upon Lui, “Interoperability of Peer-to-Peer
File Sharing Protocols” (Aug. 2002), in view of Low US Patent 7,206,304
B1 (Apr. 17, 2007).
The dependent claims (claims 16 and 18) are rejected under 35 U.S.C
§ 103 (a) over Lui and Low, further in light of Huitema US Patent 7,065,587
B1 (June 20, 2006) (for claim 16) or Boyle US Patent 5,872,847 (Feb. 16,
1999) (for claim 18).

Prior Art
The Lui article describes a peer-to peer system for file exchange (e.g.
Gnutella, Napster). The Examiner cites a portion of the article describing the
message flow in requesting files from another peer. See Lui at 29. The
Examiner concludes all elements of the independent claims on appeal are
found in Lui, except for “replacing at the second computer system the user-
friendly handle of the request with the machine address.” Ans. 4 (emphasis
added).
The Examiner relies on Low for the teachings that are missing from
Lui. Low describes a system for placing telephone calls over the Internet.
Figure 6 of Low, showing an arrangement for the provision of services in a
public-switched telephone network, is reproduced below:

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The system of Low includes a block 47 for determining the URLs of
necessary service resources (contained in “phone pages”) stored on database
server 49 to access those resources over the Internet. Various schemes for
accessing this service resource information are described in Low, but the
Examiner focuses on a description of using telephone numbers to arrive at
the URL for locating the desired resource on the Internet. See Ans. 4 (citing
Low 14: 20-55). As is standard, this URL is then resolved into an IP address
for the requested site by the Domain Name System (DNS) on the Internet.
See Low Fig. 11.

ANALYSIS
Rejection of Independent Claims 1, 7, 23, and 35
Appellants’ determinative contention on appeal is that their invention
is specifically intended, for security reasons, to avoid the use of the standard
DNS for providing an IP address for the publishing computer. See App Br.
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18. For this reason, in all independent claims on appeal, the “replacement”
of the user-friendly handle by a machine address (also referred to in the
claims as “resolving” or “amending”) takes place on the second (requesting)
computer system, and not on a remote DNS server. Appellants contend that
in Low, standard DNS technology operating on separate servers is used to
resolve the URLs produced by the system. Id. at 17. From this they contend
that Low does not teach resolving user-friendly handles on the second
(user’s) computer system, a teaching that - according to the Examiner - is
missing from Lui. Id. at 18.
The Examiner responds to this contention by focusing on the
receiving step of claim 1, instead of the resolving step. See Ans. 9-11. The
Examiner repeats the finding that Low supplies the user-friendly handle
missing from Lui, and points to the description in Low of standard DNS
resolution of domain names into IP addresses. See Ans. 9-10. The
Examiner’s response, therefore, does not address the issue raised by the
Appellants that such use of a separate DNS server is contrary to their
Specification and their claims.
We agree with Appellants that the Lui/Low combination does not
meet all the elements of the independent claims on appeal. We conclude,
therefore, that there is insufficient support in the record to sustain the
Examiner's rejection of those claims. We reach this conclusion because
even if those references were combined, they still fail to meet the
requirement of all claims that the resolution of the user-friendly handle into
a machine location takes place at the second computer system.

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Rejection of Dependent Claims16 and 18
Claims 16 and 18 depend indirectly from claim 7. They
therefore each contain the claim 7 limitation of “resolving at the accessing
node the user-friendly handle . . . wherein the request is made to the
publishing node from a user of the accessing node.” (Emphasis added.)
Accordingly, for the reasons discussed above, we conclude that there is
insufficient support in the record for the Examiner’s rejection of these claims
over the combination of Lui and Low. The references Boyle and Huitema
are additionally applied against these claims for specific teachings not
related to the issue of where the resolution of the user-friendly handle into a
machine location takes place. Thus they do not provide the element missing
from the Lui/Low combination that is present in the claims.

DECISION
The Examiner’s rejection of claims 1, 7, 16, 18, 23, and 35 is
REVERSED.

The appeal is DISMISSED as to all remaining claims: 2-6, 8-15, 17,
19-22, 24-34, and 36-42.

REVERSED IN PART
DISMISSED IN PART

KMF