Ex Parte Chavez et al

Patent Trial and Appeal Board

Jun 7, 2013

11761526 (P.T.A.B. Jun. 7, 2013)

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.
11/761,526 06/12/2007 Timothy R. Chavez AUS920060765US4 1152
50170 7590 06/07/2013
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
17330 PRESTON ROAD
SUITE 100B
DALLAS, TX 75252
EXAMINER
GORNEY, BORIS
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
06/07/2013 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 TIMOTHY R. CHAVEZ,
CHRISTINA K. LAURIDSEN, SUSHMA B. PATEL,
ROBERT R. PETERSON, LOULWA F. SALEM,
and LISA A. SEACAT
____________________

Appeal 2010-010972
Application 11/761,526
Technology Center 2400
____________________

Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and
BARBARA A. PARVIS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Introduction
The claims are directed to a peer-to-peer file sharing client with
background file sharing in a segmented peer-to-peer file sharing network
(Abstract).

STATEMENT OF THE CASE
Exemplary Claim
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method in a peer-to-peer file sharing client data processing
system for background file sharing in a peer-to-peer file sharing
network, the method comprising:

allocating background resources in the peer-to-peer file sharing
client data processing system for background file sharing
comprising a specified amount of bandwidth and a specified
amount of storage space to be used for background file sharing;

growing a background swarm by requesting, by the peer-to-peer
file sharing client data processing system, at least one file
fragment for a file from the background swarm for background
file sharing such that the at least one file fragment becomes
available to be distributed from the peer-to-peer file sharing
client data processing system to peer data processing systems in
the background swarm;

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receiving, by the peer-to-peer file sharing client data processing
system, the at least one file fragment from the background
swarm for background file sharing of a file using at least a
portion of the specified amount of bandwidth;

temporarily storing, by the peer-to-peer file sharing client data
processing system, the at least one file fragment in at least a
portion of the specified amount of storage space;

for a given file fragment within the at least one file fragment,
identifying a key value;

looking up file information for the given file fragment using the
key value, wherein the file information includes tags assigned
to the file; and

presenting the file information to a user,

wherein the at least one file fragment is part of a file that is not
being downloaded in the foreground.

REFERENCES
Miller
Edmond
US 2006/0190715 A1
US 2006/0265436 A1
Aug. 24, 2006
Nov. 23, 2006

Murasame, A few things to consider while configuring Limewire for optimal
performance ..., Gnutella forums (28 July 2004)
http://www.gnutellaforums.com/open-discussion-topics/27036-few-things-
consider-while-configuring-limewire-optimal-performance.html (hereinafter
Limewire).

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REJECTIONS
The Examiner made the following rejections:
(1) Claim 1-20 stands rejected under 35 U.S.C § 112 first
paragraph as failing to comply with the written description
requirement. Ans. 4-5.
(2) Claims 1-3, 10, 11, 16, and 17 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Edmond and Limewire.
Ans. 5-9.
(3) Claims 4-9, 12-15, and 18-20 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Edmond, Limewire, and
Miller. Ans. 9-12.
1

ISSUE 1
35 U.S.C. § 112, written description: Claims 1-20
Appellants argue the Examiner erred in determining claims 1-10 fail
to comply with the written description requirement (App. Br. 6-8).
According to Appellants, the disputed limitations, “growing a background
swarm by requesting at least one file fragment,” “using at least a portion of
the specified amount of bandwidth,” and “storing…in at least a portion of
the specified amount of storage space” are supported by the original

1
The Examiner objects to the Specification under 35 U.S.C §132(a) because
it introduces new matter into the disclosure (Ans. 3). These arguments are
directed to a petitionable issue and not an appealable issue. See In re
Schneider, 481 F.2d 1350, 1356-57, (CCPA 1973) and In re Mindick, 371
F.2d 892, 894, (CCPA 1967). See also Manual of Patent Examining
Procedure (MPEP) (8th Ed., August 2001) § 1002.02(c), item 3(g) and
§ 1201. Thus, we do not address this issue.

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disclosure (App. Br. 6). Appellants cite to specific portions within the
Specification as support for compliance with the written description
requirements (App. Br. 6-8).
Issue 1: Has the Examiner erred in rejecting claims 1-20 under 35
U.S.C § 112 first paragraph as failing to comply with the written description
requirement?

ANALYSIS
We agree with Appellants.
“To satisfy the written description requirement, ‘the
applicant does not have to utilize any particular form of
disclosure to describe the subject matter claimed, but the
description must clearly allow persons of ordinary skill in the
art to recognize that he or she invented what is claimed.’”… “In
other words, the applicant must ‘convey with reasonable clarity
to those skilled in the art that, as of the filing date sought, he or
she was in possession of the invention,’ and demonstrate that by
disclosure in the specification of the patent.” Such disclosure
need not recite the claimed invention in haec verba, but it must
do more than merely disclose that which would render the
claimed invention obvious.

Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 560 F.3d 1366, 1371-
72 (Fed. Cir. 2009) (en banc)(citations omitted).
Here we find the disclosure in the Specification is sufficient to convey
with reasonable clarity to a skilled artisan that he or she was in possession of
the invention. Specifically, we find the citations Appellants provided (App.
Br. 6-8), in light of the Specification provides written description for the
limitations “growing a background swarm by requesting at least one file
fragment,” “using at least a portion of the specified amount of bandwidth,”
and “storing…in at least a portion of the specified amount of storage space.”
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Accordingly, we are not persuaded claims 1-20 fail to comply with the
written description requirement of 35 U.S.C §112 first paragraph.

ISSUE 2
35 U.S.C. § 103(a): claims 1-3, 10, 11, 16, and 17
Appellants assert their invention is not obvious over Edmond and
Limewire (App. Br. 9-14). Specifically, Appellants contend Edmond
teaches as a client application downloads encrypted digital files, the client
application may share encrypted digital files with other computers
transparently in the background (App. Br. 9-10). According to Appellants,
Edmond distinguishes that uploading or sharing the downloaded file is done
transparently in the background (App. Br. 10). However, Appellants argue,
Edmond does not teach “receiving by the peer-to-peer file sharing client data
processing system, at least one file fragment from a background swarm for
background file sharing of a file” (App. Br. 10; Reply Br. 4). Appellants
assert Edmond does not disclose a background swarm or receiving at least
one file fragment from a background swarm for background file sharing of a
file (Reply Br. 4-5).
Further, Appellants argue Edmond does not teach allocating a
specified amount of bandwidth and a specified amount of storage to be used
for background file sharing (Reply Br. 5).
According to Appellants, Edmond does not teach or suggest looking
up information for a given file fragment using a key, wherein the file
information includes tags assigned to the file (App. Br. 11-14).

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Issue 2: Has the Examiner erred in finding the combination of
Edmond and Limewire teaches or suggests:
“receiving by the peer-to-peer file sharing client data processing
system, at least one file fragment from a background swarm for background
file sharing of a file;”
“allocating background resources in the peer-to-peer file sharing client
data processing system for background file sharing comprising a specified
amount of bandwidth and a specified amount of storage space to be used for
background file sharing;” and
“looking up file information for the given file fragment using the key
value, wherein the file information includes tags assigned to the file”
as recited in claim 1?

ANALYSIS
We find Edmond does teach “growing a background swarm by
requesting, by the peer-to-peer file sharing client data processing system, at
least one file fragment for a file from the background swarm for background
file sharing such that the at least one file fragment becomes available to be
distributed from the peer-to-peer file sharing client data processing system to
peer data processing systems in the background swarm” as set forth by the
Examiner (Ans. 5-8 and 9-11). Giving a broad, but reasonable interpretation
of the claim language, in light of the Specification, we agree with the
Examiner’s findings and adopt them as our own.
With respect to Appellants’ argument that Limewire does not teach
“allocating background resources in the peer-to-peer file sharing client data
processing system for background file sharing comprising a specified
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amount of bandwidth and a specified amount of storage space to be used for
background file sharing” (App. Br. 10-11; Reply Br. 5), we agree with
Appellants. Although Limewire teaches allocating a specified amount of
bandwidth (bottom page 1), we do not agree with the Examiner that this
allocation is for background resources for background file sharing. We are
not persuaded by the Examiner’s assertion that an ordinarily skilled artisan
would have found it obvious to modify the teachings of Limewire for
allocating bandwidth to allocate background resources for background file
sharing (Ans. 7, 17, and 18). The Examiner points to Edmond’s teaching of
setting aside a portion of the user’s hard disk storage as the basis (Ans. 7);
however, we find this function to be distinct from the allocation of
bandwidth.
In addition, the Examiner indicates the “header” described by Edmond
teaches the recited “tag” (Ans. 6). We agree with the Examiner that the
segment list teaches “file information for the given file fragment using the
key value” (Ans. 6). Appellants have not explicitly defined the term “key
value” in the Specification nor provided sufficient evidence or argument to
persuade us the Examiner erred in interpreting the hash of the segment
taught by Edmond to teach a “key value.” However, we agree with
Appellants that the segment list 1210 does not, when looked up provide the
additional information assigned to the file. The Examiner relies on the
disclosed header as teaching the tags; however, based on the cited disclosure
of Edmond before us, we are constrained to find the Examiner has not set
forth with sufficient specificity how Edmond teaches or suggests the
segment list looking up file information for the given file fragment using the
key value, wherein the file information includes tags assigned to the file.
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Accordingly, we are not persuaded the combination of Edmond and
Limewire teaches or suggests “allocating background resources in the peer-
to-peer file sharing client data processing system for background file sharing
comprising a specified amount of bandwidth and a specified amount of
storage space to be used for background file sharing;” and “looking up file
information for the given file fragment using the key value, wherein the file
information includes tags assigned to the file” as recited in claim 1 and
commensurately recited in independent claims 10 and 16. We need not
reach the merits of Appellants’ arguments with respect to the dependent
claims, claim 2, 3, 11, and 17. Dependent claims 2, 3, 11, and 17 stand with
their respective independent claims. Accordingly, we reverse the rejection
of claims 1-3, 10, 11, 16, and 17 under 35 U.S.C. § 103(a) for obviousness
over Edmond and Limewire.

35 U.S.C. § 103(a): claims 4-9, 12-15, and 18-20
The Examiner has not shown Miller cures the deficiencies of Edmond
and Limewire. Therefore, claims 4-9, 12-15, and 18-20also stand with their
respective independent claims and we need not reach the merits of
Appellants’ arguments with respect to these claims. Accordingly, we
reverse the rejection of claims 4-9, 12-15, and 18-204, 5, 12, and 18 under
35 U.S.C. § 103(a) for obviousness over Edmond, Limewire, and Miller.

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REJECTIONS OF CLAIMS 16-20 UNDER 37 C.F.R. § 41.50(b)
We make the following new grounds of rejection using our authority
under 37 C.F.R. § 41.50(b).
Rejection
Claims 16-20 are rejected under 35 U.S.C. § 101.
Analysis
Claims 16-20 recite “[a] computer program product comprising a
computer readable storage medium having a computer readable program
stored therein.” In the Specification, page 34, paragraphs [0141]-[0142],
Appellant states:
For the purposes of this description, a computer-usable or
computer-readable medium can be any apparatus that can contain,
store, communicate, propagate, or transport the program for use by or
in connection with the instruction execution system, apparatus, or
device.
The medium may be an electronic, magnetic, optical,
electromagnetic, infrared, or semiconductor system (or apparatus or
device) or a propagation medium.

(emphasis added). A claim that covers both statutory and non-statutory
embodiments embraces subject matter that is not eligible for patent
protection and therefore is directed to non-statutory subject matter. Here,
the broadest reasonable interpretation of “computer readable storage
medium” in light of the Specification includes both statutory and non-
statutory subject matter. Since the broadest reasonable interpretation of the
claim in light of the specification as it would be interpreted by one of
ordinary skill in the art encompasses transitory forms of signal transmission,
the claims cover a non-statutory embodiment, i.e., include transitory,
propagating signals. (See MPEP §2106(I); see also In re Nuijten, 500 F.3d
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1346, 1357 (Fed. Cir. 2007) “A transitory, propagating signal like Nuijten’s
is not a ‘process, machine, manufacture, or composition of matter.’ Those
four categories define the explicit scope and reach of subject matter
patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable
subject matter.”) Therefore, we reject the claims under 35 U.S.C. 101 as
being directed to non-statutory subject matter.

DECISION
The Examiner’s rejection of claims 1-20 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement is
reversed.
The Examiner’s rejection of claims 1-3, 10, 11, 16, and 17 under 35
U.S.C. § 103(a) as being unpatentable over Edmond and Limewire is
reversed.
The Examiner’s rejection of claims 4-9, 12-15, and 18-20 under 35
U.S.C. § 103(a) as being unpatentable over Edmond, Limewire, and Miller
is reversed.
In a new ground of rejection, we reject claims 16-20 under 35 U.S.C.
§ 101, as being directed to non-statutory subject matter.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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).

REVERSED
37 C.F.R. § 41.50(b)

ELD