Ex Parte Wang et al

Patent Trial and Appeal Board

Mar 31, 2016

12955697 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/955,697 11/29/2010
28960 7590 04/01/2016
HAVERSTOCK & OWENS LLP
162 N WOLFE ROAD
SUNNYVALE, CA 94086
FIRST NAMED INVENTOR
Wenyu Wang
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.
KW-00500 7997
EXAMINER
CHEN, PETER
ART UNIT PAPER NUMBER
2462
MAILDATE DELIVERY MODE
04/01/2016 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 WENYU WANG, YIFEI WANG, and WEI ZHU
Appeal2014-008369
Application 12/955,697
Technology Center 2400
Before JENNIFER L. McKEOWN, JEFFREY A. STEPHENS, and
CARLL. SILVERMAN, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-32 and 34. Claim 33 has been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants' invention is directed to network telecommunication
technology, and particularly to the P2P (peer-to-peer) technology. Spec. 1,
11. 5---6.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method in a first user node for downloading files,
compnsmg:
Appeal2014-008369
Application 12/955,697
A. intercepting, by a second application functional entity in the
first user node, a request message generated by a first application
functional entity in the first user node, for downloading a file
based on a first protocol, wherein the request message comprises
location information of said file in a first server;
Bl. querying, by the second application functional entity, the first
server to determine identity information of said file according to
said location information of said file;
B2. downloading, by the second application functional entity,
said file according to said identity information of said file from
a network based on a second protocol; and
C. providing, by the second application functional entity, said file
to the first application functional entity.
THE REJECTIONS
The Examiner rejected claims 1-11, 16-27, 32, and 34 under 35
U.S.C. § 103(a) as unpatentable over Matsubara (US 2004/0148434 Al; July
29, 2004) and Young (US 6,477,522 Bl; Nov. 5, 2002). Non-Final Act. 10-
33.1
The Examiner rejected claims 12-15 and 28-31 under 35 U.S.C.
§ 103(a) as unpatentable over Matsubara, Young, and Alessandri (US
2009/0037583 Al; Feb. 5, 2009). Non-Final Act. 33--42.
The Examiner rejected claim 34 under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Non-Final Act. 8-9.
1 Throughout this opinion, we also refer to (1) the Examiner's Non-Final
Action, mailed December 19, 2013 (Non-Final Act."); (2) the Appeal Brief,
filed May 12, 2014 ("App. Br."); (3) the Examiner's Answer, mailed June 4,
2014 ("Ans."); and (4) the Reply Brief, filed July 28, 2014 ("Reply Br.").
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Application 12/955,697
THE OBVIOUSNESS REJECTION BASED ON
MATSUBARA AND YOUNG
Claims 1-11, 16-27, 32, and 34
Appellants contend that Matsubara fails to teach the claimed
intercepting, querying, downloading and providing by a second application
functional entity because Matsubara only teaches a single application
functional entity. App. Br. 6; Reply Br. 4--5. Specifically,
Matsubara cannot teach any of the claimed intercepting,
querying, downloading or providing, because those functions are
performed by the claimed second application functional entity in
the first user node, not the first application functional entity. The
single application functional entity of Matsubara cannot be
interpreted as teaching functions that have been explicitly limited
to being performed by two different application functional
entities.
App. Br. 6; see also Reply Br. 5.
Appellants' argument fails to address Matsubara's teaching that a
node can be executing both a P2P program as well as a web browser. See
Ans. 3 (citing Matsubara i-f 46); see also Matsubara i-f 48. Moreover, as the
Examiner explains, the rejection is based on the combination of Matsubara
together with Young. Young expressly teaches one application intercepting
a file request from another application. Ans. 2-3; Young, col. 4, 11. 16-30.
As such, we find Appellants' argument unpersuasive.
Appellants also argue that Matsubara's request message fails to
include location information of said file in a first server. App. Br. 6-7; see
also Reply Br. 6. According to Appellants, Matsubara's request message
merely includes data requesting availability information, andavailability
information is not location information. App. Br. 6-7.
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Application 12/955,697
We disagree. A skilled artisan would understand that Matsubara's
request message, using HTTP networking communication protocol, includes
a universal resource locator (URL) to locate the desired file. See Ans. 4--5;
Matsubara i-fi-132, 35. As Matsubara also teaches, information from the
message request is used in conjunction with a management index server to
identify the requested file location. Matsubara i-fi-18, 37, 39. In other words,
the request message includes location information so as to identify the
location of the requested file upon querying the management index server.
We, therefore, are not persuaded that the Examiner erred in finding that
Matsubara at least teaches or suggests this limitation.
Appellants' arguments with respect to Young are likewise unavailing.
Specifically, Appellants contend that Young does not (1) query the server to
which the request message is directed, (2) download the file based upon a
second protocol, or (3) provide the file to the first application functional
entity. App. Br. 7-8; see also Reply Br. 6-7. The Examiner, however,
relies on the combination of Matsubara with Young as teaching these
limitations. See Ans. 5---6. One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Finally, Appellants contend that the combination of Matsubara and
Young is improper. App. Br. 9-10; Reply Br. 8-9. Appellants, in
particular, assert that:
If Matsubara were modified by Young to add the intercepting
applet, the P2P gateway server would have to be removed
because the Young applet requires a direct connection to each of
the servers in order to determine the "fastest" server to download
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Application 12/955,697
the file from. Such a removal of the P2P gateway completely
changes the mode of operation of Matsubara.
App. Br. 9; Reply Br. 8; see also App. Br. 10 (noting that removal of the
P2P gateway server would render Matsubara unsatisfactory for its intended
purpose).
We find this argument unpersuasive. Namely, "[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,
425 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
1983) ("[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review."); In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the teachings of
references does not involve an ability to combine their specific structures.").
Rather, "if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill." KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
Moreover, we disagree that the combination of Matsubara and Young
would require the removal ofMatsubara's P2P gateway server. See Ans. 7-
8. Instead, as the Examiner explains, "the gateway function can be running
[] behind under the web browser application in the same node as suggested
by Matsubara which means that the gateway server would not have to be
removed." Ans. 8. In other words, a skilled artisan would understand that
Young's applet would be running on Matsubara's gateway server. As such,
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while we do not agree that the cited combination must necessarily perform
Young's process of determining the fastest server, assuming for argument's
sake that it did, we fail to see why Matsubara's gateway server would be
precluded from performing these operations.
Accordingly, for the reasons discussed above and by the Examiner,
claim 1, as well as claims 2-11, 16-27, 32, and 34, not argued with
particularity (App. Br. 11-13; Reply Br. 10-11), are unpatentable over
Matsubara and Young.
THE OBVIOUSNESS REJECTION BASED ON MATSUBARA,
YOUNG, AND ALESSANDRI
Claims 12-15 and 28-31
Appellants present no separate arguments for patentability with
respect claims 12-15 and 28-31 and, instead, rely on the arguments
presented for claims 1 and 17. See App. Br. 13; Reply Br. 12. As discussed
above, we find these arguments unpersuasive. Accordingly, for the reasons
discussed above and by the Examiner, claims 12-15 and 28-31 are
unpatentable over the cited combination of prior art.
THE REJECTION UNDER 35 U.S.C. § 101
Claim 34
The Examiner rejects claim 34 under 35 U.S.C. § 101 as directed to
non-statutory subject matter. As the Examiner points out, the Specification
describes that the invention may be implemented through hardware or
software. See, e.g., Ans. 9-10; Spec. 24, 11. 21-22 ("The functions of the
plurality of the components in the claims can be realized by a single
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hardware or software module."). As such, we are not persuaded of error in
the Examiner's rejection. See Ex parte Mewherter, 107 USPQ2d 1857
(PTAB 2013)(precedential); In re Nuijten, 500 F.3d 1346, 1356-57 (Fed.
Cir. 2007) ("A transitory, propagating signal like Nuitjen's is not a 'process,
machine, manufacture, or composition of matter.' ... [T]hus, such a signal
cannot be patentable subject matter."); MPEP § 2106(I) ("Non-limiting
examples of claims that are not directed to one of the statutory categories ...
[include] transitory forms of signal transmission (for example, a propagating
electrical or electromagnetic signal per se.")).
CONCLUSION
The Examiner did not err in rejecting claims 1-32 and 34 under§ 103
and did not err in rejecting claim 34 under § 101.
DECISION
We affirm the Examiner's decision to reject claims 1-32 and 34.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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