Ex Parte Burd et al

Patent Trial and Appeal Board

Jun 30, 2016

11173392 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111173,392 0613012005
98449 7590 07/05/2016
Shumaker & Sieffert, P.A.
1625 Radio Drive, Suite 100
Woodbury, MN 55125
FIRST NAMED INVENTOR
Gary S. Burd
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.
l 133-080US01 9247
EXAMINER
MAI,KEVINS
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY S. BURD, DAVID BAU, and
RODERICK ADONIS CHAVEZ
Appeal2015-000771
Application 11/173,392
Technology Center 2400
Before CAROLYN D. THOMAS, JEFFREYS. SMITH, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner
twice rejecting claims 1-6, 8, 9, 11, 12, and 14--23, all the claims pending in
the application. We have jurisdiction over the appeal under 35 U.S.C. §
6(b).
We AFFIRM.
The present invention relates generally to communication systems,
and "more particularly to proxy-based file sharing." Spec. i-f 1.
Appeal2015-000771
Application 11/173,392
Claim 1 is illustrative:
1. A method, comprising:
causing, by at least one server, a first connection for real-
time communication to be established between a first remote
client device executing a file sharing application and a second
remote client device that does not include the file sharing
application;
determining, by the at least one server, that the second
remote client device does not include the file sharing application
having file-sharing functionality to receive a file from the first
remote client device;
when the first remote client device requests to send the file
to the second remote client device, causing, by the at least one
server, a second connection to be established between the at least
one server and the first remote client device;
receiving, by the at least one server using the second
connection, the file from the first remote client device;
in response to receiving the file, posting, by the at least one
server, at least one of the file or a document that includes content
of the file, wherein the file or the document is associated with a
network address;
sending, by the at least one server, a message addressed to
the second remote client device, wherein the message comprises
the network address usable by the second remote client device to
access the file or the document; and
in response to receiving a request that indicates the
network address, sending, by the at least one server, the file or
the document to the second remote client device;
wherein the at least one server acts as a proxy for the
second remote client device to access the file or the document.
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Appellants appeal the following rejection:
Claims 1---6, 8, 9, 11, 12, and 14--23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Flowers, JR. (US 2003/0105812 Al,
June 5, 2003) and Coulombe (US 2005/0060411 Al, Mar. 17, 2005).
Claim Groupings
Based on Appellants' arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1, as set forth below. See 37 C.F.R. §
41.37(c)(l)(iv).
ANALYSIS
Rejection under§ 103(a) over Flowers and Coulombe
Issue 1: Did the Examiner err in finding that the combined teachings
of Flowers and Coulombe teach or suggest "determining, by the at least one
server, that the second remote client device does not include the file sharing
application having file-sharing functionality to receive a file from the first
remote client device," as recited in claim 1?
Appellants contend Coulombe' s "means for determining an
incompatibility between the first and second terminals" does not teach or
suggest the claimed "determining ... that the second remote client device
does not include the file sharing application ... to receive a file from the
first remote client device" (App. Br. 10-11). Appellants further argue there
is no mention of a file sharing application in Coulombe, and Coulombe' s
codecs do not represent the file sharing application (App. Br. 11-12; Reply
Br. 6).
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Application 11/173,392
Appellants' argument against Coulombe separately from Flowers does
not persuasively rebut the combination made by the Examiner. One cannot
show non-obviousness by attacking references individually, where the
rejections are based on combinations of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Specifically, we agree with the Examiner's finding that Flowers
teaches peers sharing files and folders on a peer network and that Coulombe
teaches comparing capabilities for terminals (see Final Act. 4---6). For
example, Flowers discloses a "web server may also provide access via
standard browsers, for users having devices lacking the peer client software"
(Flowers Abstract), and "Sharing Local PC Files" (Flowers i-f 113).
Coulombe discloses "means for comparing the capability descriptions of the
first and second terminals, and means for determining an incompatibility
between the first and second terminal" (Coulombe i-f 13). In other words,
Flowers teaches a system for peer file sharing, including providing access
when devices do not have the file sharing capabilities, while Coulombe
teaches determining capabilities and incompatibilities between devices.
Appellants do not provide persuasive evidence or arguments that the
combination of Flowers and Coulombe do not describe file sharing
applications and the determination that a client does not include a file
sharing application. Implicitly suggested by Flower's teaching of providing
access for a client lacking peer client software is first determining the client
lacks the peer client software. Coulombe' s teaching of determining
incompatibilities between devices makes explicit what is implicitly
suggested by Flowers. Thus, we agree with the Examiner's finding that
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Flowers' shared local PC files and provision of access for users whose
devices lack the peer client software teaches the file sharing application, as
required by claim 1; and Coulombe' s determination of capabilities and
incompatibilities teaches determining, by the at least one server, that the
second remote client device lacks functionalities, as required by claim 1.
For at least these reasons, we are unpersuaded the Examiner erred.
Issue 2: Did the Examiner err in finding that the combined teachings
of Flowers and Coulombe teach or suggest "when the first remote client
device requests to send the file to the second remote client device, causing,
by the at least one server, a second connection to be established between the
at least one server and the first remote client device," as recited in claim 1?
Appellants contend Coulombe does not teach or suggest "causing, by
the at least one server, a second connection to be established between the at
least one server and the first remote client device" "when the first remote
client device requests to send the file to the second remote client device"
(App. Br. 13). In response, the Examiner finds that Coulombe's modified
SDP definitions and OK messages sent between the user agents adaptation
server teaches providing the user agent "a new IP address and port number
to be used during its media session in response to a request to send a file"
and "a second connection is established when the first remote client device
requests to send the file" (Ans. 4). We agree with the Examiner.
For example, Coulombe discloses:
In message 302, user agent A, e.g. mobile terminal 202 . . .
transmits a SIP INVITE message to S-CSCF # 1. S-CSCF # 1
checks the media capabilities of user agent A as defined by the
SDP definition for user agent A, i.e. SDPl .... The INVITE
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message with SDP 1 is proxied to S-CSCF #2, which is the home
proxy for user agent B ....
The adaptation server then compares the SDP definitions for
user agent A and user agent B, determines the resources that are
required to translate the media streams between user agent A
and B, and then reserves those resources to support the media
session . . . . The adaptation server then modifies the SDP 1
definition for user agent A to form the modified SDP
definition ... the adaptation server modifies the SDP2 definition
for user agent B to form the modified SDP definition ...
adaptation server then transmits the modified SDP definitions .
. . to S-CSCF#2 within acknowledgment message ....
S-CSCF #2 then transmits an INVITE message containing the
modified session definitionfor user agent A . .. to user agent B
in message . . . . User agent B then responds with 200 OK
message 318 that contains its SDP session definition ....
S-CSCF #2 sends the modified session definition SDPTl and
newly received session definition SDP2 to the adaptation server
in message . ... Acknowledgment message 324 containing the
modified SDP2 session definition, SDPT2, is then transmitted to
S-CSCF #2, vvhich is proxied to S-CSCF # 1 in 200 OK message
326. S-CSCF # 1 then proxies 200 OK message 328 containing
the modified session definition SDPT2 to user agent A ... to be
used by user agent A when transmitting its media stream during
the media session.
Coulombe iii! 51-53 (emphasis added). In other words, Coulombe teaches
user agent A at a mobile terminal sending an SIP INVITE message to
transmit media streams, and then subsequently the adaptation server setting
up adaptation requirements and modified definitions between user agent A
and user agent B thereby establishing communication with user agent A
through acknowledgment messages containing these modified definitions.
Appellants do not provide persuasive evidence that the claimed
second connection to be established between the at least one server and the
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first remote client device excludes Coulombe' s establishment of a
connection between the adaptation server and user agent A through proxies
and providing newly modified session definitions. Thus, we agree with the
Examiner's finding that Coulombe's user agent A sending an SIP INVITE
message teaches when the first remote client device requests to send the file
to the second remote client device, as required by claim 1; and Coulombe' s
adaptation server providing adaptation requirements and modified
definitions to user agent A in an acknowledgment message teaches causing,
by the at least one server, a second connection to be established between the
at least one server and the first remote client device, as required by claim 1.
For at least these reasons, we are unpersuaded the Examiner erred.
Issue 3: Does Coulombe teach away from peer sharing as taught in
Flowers?
Appellants contend combining Coulombe' s use of an adaptation
server to perform transcoding functions with Flowers' shares among peers
"would change the principle operation of Flowers and render it
unsatisfactory for its intended purpose" (App. Br. 14).
An argument that the system is rendered "unsuitable for its intended
purpose" is a "teach away" argument. In re Gordon, 733 F .2d 900, 902
(Fed. Cir. 1984) (The court concluded that in effect, "French teaches away
from the board's proposed modification" because "if the French apparatus
were turned upside down, it would be rendered inoperable for its intended
purpose"). The Federal Circuit has held "[a] reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
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in a direction divergent from the path that was taken by the applicant." In re
Kahn, 441F.3d977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994)).
The Examiner finds, in Flowers, "when the shared files are being
requested, the file transfer would be vulnerable to incompatibilities of the
two terminal devices as discussed by Coulombe," and the combination "does
not render Flowers unsatisfactory for its intended purposes, as it is still able
to provide the shares" (Ans. 5). We agree with the Examiner.
Specifically, the Examiner finds one skilled in the art would "have
been motivated to combine a known technique to improve similar devices in
the same way" (Ans. 5). The Examiner further finds "Flowers is concerned
with the idea that a terminal would be incapable of participating in a transfer
due to lacking the proper software" (Id.) and it would have been obvious to
combine "with determining a recipient is incompatible with a sender as
disclosed by Coulombe" (Final Act. 6). Accordingly, we find the Examiner
had provided sufficient motivation for combining the teachings of Coulombe
and Flowers.
Secondly, Appellants have not shown that Coulombe teaches away
from the claimed "determining, by the at least one server, that the second
remote client device does not include the file sharing application having file-
sharing functionality to receive a file from the first remote client device"
because Appellants have not shown that Coulombe criticizes, discredits, or
otherwise discourages such a determination. "The prior art's mere disclosure
of more than one altenmtive does not constitute a teaching away from any of
these altenmtive because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed .... '' In re Fulton, 391 F.3d
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Application 11/173,392
1195, 1201 (Fed. Cir. 2004). Here, Coulombe discusses checking
capabilities and incompatibilities between user agents in order to provide for
adaptation. For at least these reasons, we do not find, and Appellants have
not established, that Coulombe' s adaptation between user agents teaches
away from using Flowers' peer shares.
Issue 4: Did the Examiner err in finding that the combined teachings
of Flowers and Coulombe teach or suggest
sending, by the at least one server, a message addressed to
the second remote client device, wherein the message comprises
the network address usable by the second remote client device to
access the file or the document; and in response to receiving a
request that indicates the network address, sending, by the at least
one server, the file or the document to the second remote client
device,
as recited in claim 1?
Appellants contend Flowers' PBNotify transaction and AddShare do
not teach a message comprising "the network address usable by the second
remote client device to access the file or the document" (App. Br. 15).
Appellants further contend that Flowers' failure to teach a message
comprising the network address results in Flowers' failure to teach sending a
file "in response to receiving a request that indicates the network address"
(App. Br. 16, emphasis omitted).
In response, the Examiner finds Flowers teaches a displayed webpage
"updated with new shares and these shares are presented as clickable links"
and thereby "the shares are added by providing a network address usable by
a client to access the files and the files are accessed by requesting that
respective network address" (Ans. 6). We agree with the Examiner.
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For example, Flowers discloses the "web server program and the Peer
Switch Web routine provide a user interface based on web page
presentations and user selection of displayed links, via a standard browser
application running on the end user's device" (Flowers i-f 139), and when
"the user logins in through the web server ... [e]ach Peer Switch server 11
downloads the list of shares and other users that are available to the user
from that community, and the web server 17 provides a page or pages to the
user displaying that peer information ... and the client provides updated
web pages to the user's browser for display" (Flowers i-f 140). In other
words, Flowers teaches providing a web page specific for a user who logs in,
and the web page provides links acting as network addresses usable to
access the files, and clicking on the links provides access to those files.
Appellants do not provide persuasive evidence that the claimed
"message addressed to the second remote client device, wherein the message
comprises the network address usable by the second remote client device to
access the file or the document" excludes Flowers' webpage specific for a
user comprising links usable by the user to access shared files or document
(See Reply Br. 10, emphasis omitted). Thus, we agree with the Examiner's
finding that Flowers' user specific webpage teaches sending, by the at least
one server, a message addressed to the second remote client device, as
required by claim 1; Flowers' user specific webpage comprising links to
access shared files teaches the message comprises the network address
usable by the second remote client device to access the file or the document,
as required by claim 1; and Flowers' use of the displayed links to access the
files teaches in response to receiving a request that indicates the network
address, sending, by the at least one server, the file or the document to the
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second remote client device, as required by claim 1. For at least these
reasons, we are unpersuaded the Examiner erred.
In view of the above discussion, the Examiner's 35 U.S.C. § 103(a)
rejection of representative independent claim 1, as well as commensurate
independent claims 11 and 16, not separately argued (see App. Br. 16), as
well as dependent claims 2--4, 6, 8, 9, 12, 14, 15, and 17-23, not separately
argued (see App. Br. 16), is sustained.
Issue 5: Did the Examiner err in finding that the combined teachings
of Flowers and Coulombe teach or suggest "sending the document further
comprises sending a preview of the document," as recited in claim 5?
Appellants contend Flowers' user pages displaying peer information
do not teach sending a preview of a document (App. Br. 17). In response,
the Examiner finds the claimed preview includes "as little as the title of the
file" (Ans. 7, citing Spec. i-f 63). The Examiner further finds Flowers'
Shared Folders page lists file and/or e-mail folders are included in the
broadest reasonable definition of previews (Ans. 7). We agree with the
Examiner.
For example, Appellants' Specification describes "Client B 704 may
view thumbnails of JPEGs before and without having to download the entire
JPEG file" and "Client B 704 may here clips ofMP3s, or at least view
information regarding the MP3 file such as title, artist, and other metadata"
and "server 718 or Client A 702 may provide previews of the files to Client
B 704 in such a way that a browser 710 can display" (Spec. i-f 63). In other
words, a preview can include thumbnails, clips, file information, or some
other way that can be displayed on a browser.
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Flowers discloses the "PeerBook window ... showing the contents of
the selected Shared Folders page" which "lists file and/or e-mail folders to
which the user has access" (Flowers i-f 124). Flowers further discloses the
"web server program and the Peer Switch Web routine provide a user
interface based on web page presentations and user selection of displayed
links, via a standard browser application running on the end user's device"
(Flowers i-f 139), and when "the user logins in through the web server ...
[e]ach Peer Switch server 11 downloads the list of shares and other users
that are available to the user from that community, and the web server 17
provides a page or pages to the user displaying that peer information . . . and
the client provides updated web pages to the user's browser for display"
(Flowers i-f 140). In other words, Flowers teaches providing a PeerBook
window which lists file folders, as well as providing user-specific webpages
with displayed links for the files. Both of these provide displaying
information about the files in a manner that can be supported by the browser.
Appellants do not provide persuasive evidence that the claimed
"preview of the document" excludes Flowers' Peer Book window or
displayed links on a user-specific webpage. Thus, we agree with the
Examiner's finding that Flowers' PeerBook window and displayed links on
a user-specific webpage teaches sending a preview of the document, as
required by claim 5.
For at least these reasons, we are unpersuaded the Examiner erred.
Accordingly, the Examiner's 35 U.S.C. § 103(a) rejection of dependent
claim 5 is sustained.
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DECISION
We affirm the Examiner's§ 103(a) rejection RI.
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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