Ex Parte Bravery et al

Patent Trial and Appeal Board

Apr 25, 2013

10555433 (P.T.A.B. Apr. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW JAMES FREDERICK BRAVERY,
ALAN WILLIAM KNOX, AND SIMON LAWS

Appeal 2010-010791
Application 10/555,4331
Technology Center 2400
____________

Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed Nov. 3, 2005, claiming benefit from PCT/GB03/04891
filed Nov. 12, 2003. The real party in interest is International Business
Machines Corporation. (App. Br. 2.)
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 5-15, 18, 19, 21, and 23-25 in Appeal Brief dated December 22,
2009 – claims 3, 4, 16, 17, 20, and 22 have been canceled (App. Br. 4.).
Appellants, however, indicate “[t]he claims on appeal are: 1, 2, 5, 10 and
12,” even though they also indicate “[c]laims pending [and rejected]: 1, 2, 5-
15, 18, 19, 21, and 23-25” and “[c]laims withdrawn from consideration but
not cancelled: 6-9, 11, 13-15, 18, 19, 21, and 23-25.” (Id.) Accordingly, we
find Appellants do not appeal claims 6-9, 11, 13-15, 18, 19, 21, and 23-25
but note claims 6-9, 11, 13-15, 18, 19, 21, and 23-25 are pending and
rejected. The Board has no jurisdiction as to non-appealed claims, and we
deem claims 6-9, 11, 13-15, 18, 19, 21, and 23-25 canceled and not before
us for review. The Examiner has the authority to cancel the non-appealed
claims 6-9, 11, 13-15, 18, 19, 21, and 23-25. See Ex parte Ghuman, 88
USPQ2d 1478, 1480 (BPAI 2008) (precedential). We have jurisdiction as to
claims 1, 2, 5, 10, and 12 under 35 U.S.C. § 6(b).
We affirm.
Invention
Appellants’ invention is directed to peer-to-peer computing. (Spec. 1,
ll. 5-6.)2

2 We refer to Appellants’ Specification (“Spec.”); Reply Brief (“Reply Br.”)
filed May 18, 2010; and Appeal Brief (“App. Br.”) filed Dec. 22, 2009. We
also refer to the Examiner’s Answer (“Ans.”) mailed Mar. 18, 2010.
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Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A first peer computer system operable in a decentralized peer
to peer network that does not include a central host controlling device,
comprising:
means for accessing a first piece of information;
means for creating a first entity;
means for associating the first entity with the first piece of
information;
means for sending the first piece of information to a second
peer computer system in the decentralized peer to peer network;
means for requesting an updated version of the first piece of
information from the second peer computer system using the first
entity;
a first storage device having the first entity, the first piece of
information and the updated version of the first piece of information
stored therein; and
wherein the first entity is associated with a topic of the first
piece of information.
Rejections on Appeal
1. The Examiner rejects claims 1, 2, 5, 10, and 12 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
2. The Examiner rejects claims 1, 2, 5, 10, and 12 under 35 U.S.C.
§ 103(a) as being unpatentable over Gupta (U.S. Patent No. 7,222,156 B2,
issued May 22, 2007 (filed Jan. 25, 2001)) and Yeager (U.S. Patent No.
7,328,243 B2, issued Feb. 5, 2008 (filed Oct. 31, 2002)).

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Grouping of Claims
Based on Appellants’ arguments in the Briefs, we will decide the
appeal on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).

ISSUES
1. Under § 101, did the Examiner err in finding that independent
claims 1, 2, 5, 10, and 12 are directed to non-statutory subject matter?
2. Under § 103, did the Examiner err in finding that the cited
combination of Gupta and Yeager, collectively, would have taught or
suggested “a first storage device having a first entity, the first piece of
information and the updated version of the first piece of information,” and
“means for requesting an updated version of the first piece of information
from the second peer computer system using the first entity” (claim 1
(emphasis added)), within the meaning of independent claim 1?
3. Under § 103, did the Examiner err in finding that the cited
combination of Gupta and Yeager, collectively, would have taught or
suggested a first entity comprising “a unique identifier for the first peer
computer system, a date on which the first entity was created, and the first
piece of information” (emphasis added), as recited in claim 2?
3. Under § 103, is the Examiner’s cited combination of Gupta and
Yeager a result of impermissible hindsight?
4. Under § 103, did the Examiner err by not providing proper
motivation to combine Gupta and Yeager (claim 5)?
5. Under § 103, did the Examiner err in finding that the cited
combination of Gupta and Yeager, collectively, would have taught or
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suggested “means for defining the first entity, wherein the means for
defining is configurable using an extensible markup language (XML),”
within the meaning of claim 12?

ANALYSIS
The § 101 Rejection
The Examiner rejected claims 1, 2, 5, 10, and 12 under 35 U.S.C.
§ 101. (Final Office Action 5; Ans. 3.) Appellants have not responded to
the § 101 rejection in either the Principal Brief or the Reply Brief.
Consequently, we deem Appellants to have waived this issue. Accordingly,
we summarily affirm the Examiner’s § 101 rejection.3

The § 103 Rejection
Claim 1 – Storage Device and Means for Requesting
Appellants contend that the cited references fail to teach or suggest a
first storage device having updated version information of the first piece of
information stored therein. (App. Br. 9.) Appellants further argue that the
cited references fail to teach or suggest a means for requesting an updated
version of the first piece of information from the second peer computer

3 With respect to all claims before us on appeal, arguments which Appellants
could have made but chose not to make have not been considered and are
deemed to be waived. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (informative). See 37 C.F.R. § 41.37(c)(1)(iv). See also In re Watts,
354 F.3d 1362, 1368 (Fed. Cir. 2004).

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system using the first entity. (Claim 1; App. Br. 9-10.) We agree with and
adopt the Examiner’s findings. (Ans. 4-5, 18-19.)
We observe that claim 1 is an apparatus (first peer computer system)
claim. We construe the “first storage device” at issue as storing data (first
entity, first piece of information and updated version of the first piece of
information), and the storage of the data is not positively recited. We also
construe the “means for requesting an updated version” as a means for
requesting data “updated version of the first piece of information.”
We find that the limitations at issue consist essentially of non-
functional descriptive material, i.e., data (first piece of information, updated
piece of information, first entity) and functional language, i.e., statements of
intended use (“for requesting an updated version of the first piece of
information” (claim1)). We do not ascribe these features any patentable
weight. “An[ ]intended use or purpose usually will not limit the scope of the
claim because such statements usually do no more than define a context in
which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although
“[s]uch statements often . . . appear in the claim’s preamble,” a statement of
intended use or purpose can appear elsewhere in a claim. In re Stencel, 828
F.2d 751, 754 (Fed.Cir. 1987). The stored “data” also does not further limit
the claim either functionally or structurally. See Ex parte Nehls, 88 USPQ2d
1883, 1889 (BPAI 2008) (precedential). Further, we agree with and adopt
the Examiner’s reasoning that an email request from a first peer system to a
second peer system for an updated version of a piece of information is
merely data. (Ans. 19.)
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Even if we, arguendo, were to ascribe some weight to the disputed
claim limitations, we find Appellants’ arguments unavailing. Regarding the
claimed first storage device limitation, we agree with the Examiner that the
cited references would have taught or suggested storing copies of all of the
messages including the updated version information. (Ans. 18-19.) Yeager
teaches a version update request may be added to the payload (Yeager, col. 2
ll. 15-18) and indications of version may be stored in a mobile agent (id. at
col 2, ll. 26-30). Therefore, we conclude that the cited references would
have taught or suggested storing the recited first entity, first piece of
information, and updated piece of information.
Appellants further contend that the Examiner’s assertion that the
references describe “updated version information” is unsubstantiated.
(Reply Br. 2.) However, we find that the cited references, as discussed
above, support the Examiner’s findings and would have taught or at least
suggested this limitation.
We further agree with the Examiner that the cited references would
have taught or suggested a means for requesting an updated version of the
first piece of information and the updated version of the first piece of
information from the second peer computer system using the first entity. As
discussed above, Yeager discloses that version update request may be added
to the request and be included in the mobile agent. (Yeager, col. 2, ll. 30-
32.)
Based on this record, we conclude that Appellants have not
shown the Examiner erred in finding that the cited references would
have taught or suggested the limitations at issue.

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Hindsight
Appellants contend that the Examiner’s cited combination is the result
of impermissible hindsight. (App. Br. 10.) Appellants assert that one skilled
in the art would not have combined Gupta’s “push system” with Yeager’s
“update provide” functionality. (App. Br. 10-11.)
The Supreme Court has determined that the conclusion of obviousness
can be based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art and that an obviousness “analysis 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) (emphasis added). See also DyStar Textilfarben
GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368
(Fed. Cir. 2006).
Here, it is our view that an artisan possessing common sense and
creativity at the time of the invention would have been familiar with a
variety of methods for distributing messages in a de-centralized network,
such as those methods taught or suggested by the collective teachings of
Gupta and Yeager. While we are fully aware that hindsight bias often
plagues determinations of obviousness, Graham v. John Deere Co., 383 U.S.
1, 36 (1966), we are also mindful that the Supreme Court has clearly stated
that the “combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results,”
KSR, 550 U.S. at 401.
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This reasoning is applicable here. Thus, we find unavailing
Appellants’ contention that the Examiner has relied on impermissible
hindsight reconstruction. Given the breadth of Appellants’ claims, we are
not persuaded that combining the respective familiar elements of the cited
references in the manner proffered by the Examiner was “uniquely
challenging or difficult for one of ordinary skill in the art.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418). Therefore, we find the Examiner’s proffered
combination of familiar prior art elements according to their established
functions would have conveyed a reasonable expectation of success to a
person of ordinary skill having common sense at the time of the invention.
Claims 2 and 10
Appellants contend that the cited references fail to teach or suggest a
first entity that includes a unique identifier for the first peer system, a date
on which the first entity was created, and a first piece of information, as
recited in claim 2. (App. Br. 11.) We agree.
The Examiner contends that “[t]he prior art only has to disclose at
least one of these claim limitations and not all three limitations.” (Ans. 21.)
We find that the claim language requires all three features (unique identifier,
date of creation, and piece of information) be included because, as admitted
by the Examiner (Ans. 21), the “at least one of” language was deleted from
the claim by amendment. The Examiner has not shown that the cited
references teach or suggest a first entity that includes a unique identifier for
the first peer system.
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Based on this record, we conclude that the Examiner erred in rejecting
claim 2. Claim 10 depends from claim 2. Accordingly, we reverse the
Examiners’ rejection of claims 2 and 10 for the reasons stated above.
Claim 5 – Motivation to Combine
Appellants contend that a person of ordinary skill in the art would not
have been motivated to modify the teachings of Gupta to include “a trawling
agent that trawls storage areas of the peer devices of the individual to
determine a most current version of the first piece of information.” (App.
Br. 13.) Appellants argue that Gupta uses a completely different technique
for collaborative communications using an underlying email system
architecture. (Id.)
We agree with Appellants that in order to present a prima facie case of
obviousness, the Examiner must articulate reasoning with some rational
underpinning to support the legal conclusion of obviousness. “[R]ejections
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 Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)). “‘[A]ny need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.’” In re ICON
Health and Fitness Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007) (quoting KSR,
550 U.S. at 402).
As mentioned by Appellants, the Examiner presented a rationale for
the combination. (App. Br. 13.) Although Appellants contend that the
teachings of Gupta and Yeager appear disparate, we find that the Examiner
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provided an articulated reasoning with some rational underpinning for
combining the cited references.
Based on this record, we conclude that the Examiner provided proper
motivation to combine Gupta and Yeager. Accordingly, we affirm the
Examiners’ rejection of claim 5.
Claim 12 – Configurable Using XML Language
Appellants contend that cited references fail to teach or suggest all of
the limitations recited in clam 12. (App. Br. 15.) Appellants argue that the
portions of Gupta cited by the Examiner describe different aspects of the
overall Gupta operating environment. (App. Br. 16.) We agree.
We find that the portions of Gupta cited by the Examiner do not
discuss or describe configuring an entity using XML as recited in claim 12.
While portions of Gupta describe writing pages in XML (Gupta, col. 4, ll. 9-
13), the Examiner has not shown that Gupta would have taught or suggested
a defining means configurable using XML language.
Based on this record, we conclude that the Examiner erred in rejecting
dependent claim 12. Accordingly, we reverse the Examiner’s rejection of
claim 12 for the reasons discussed supra.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1, 2, 5, 10, and 12 under 35 U.S.C. § 101.
Appellants have not shown that the Examiner erred in rejecting claims
1 and 5 under 35 U.S.C. § 103(a).
Appellants have shown that the Examiner erred in rejecting claims 2,
10, and 12 under 35 U.S.C. § 103(a).
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DECISION
We affirm the Examiner’s rejection of claims 1, 2, 5, 10, and 12 under
35 U.S.C. § 101.
We affirm the Examiner’s rejection of claims 1 and 5 under 35 U.S.C.
§ 103(a).
We reverse the Examiner’s rejection of claims 2, 10, and 12 under 35
U.S.C. § 103(a).
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).

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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