Ex Parte Dolganow et al

Patent Trial and Appeal Board

Jan 29, 2015

12371197 (P.T.A.B. Jan. 29, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW DOLGANOW, JASON RUSMISEL, and
STEVE MORIN
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Appeal 2012-011913
Application 12/371,197
Technology Center 2400
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Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–20, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Invention
The claimed invention on appeal relates to “management of traffic in
a telecommunications network and, more particularly, to managing
transmission of peer-to-peer content over such a network.” (Spec. ¶ 1).
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Representative Claim
Independent claim 1 is representative of the claims rejected on appeal:

1. A method for managing transmission of peer-to-peer
(P2P) content over a telecommunications network, the
method comprising:

receiving a plurality of packets belonging to an Internet
Protocol (IP) flow between a source peer and a
destination peer in a network element in the
telecommunications network;

performing deep packet inspection (DPI) to identify an
application protocol associated with the IP flow;

[a] when the application protocol is a P2P protocol,
[a1] performing DPI to extract a key from one or more of
the packets in the flow, the extracted key uniquely
identifying a P2P content item associated with the IP
flow;

[b] populating a P2P content database with extracted
keys;

[c] querying the populated P2P content database using
the extracted key, the P2P content database maintaining
a mapping between keys and corresponding traffic
management actions; and

[d] when the extracted key is located in the P2P content
database, [d1] performing the traffic management action
associated with the key in the P2P content database.

(Contested limitations emphasized).

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Rejections
Claims 1, 3–9, 11– 20 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of Twiss (US
2008/0049619 A1), Ray (US 2009/0238071), and Oberlander (US
5,509,000).
Claims 2 and 10 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Twiss, Ray,
Oberlander, and Cohen (US 2007/029417 A1).
Grouping of Claims
Based on Appellants’ arguments, we decide the appeal of
claims 1, 3–6, 8, 9, 11–17, 19, and 20 on the basis of representative claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv)(2012).1 We address claims 2, 7, 10, and 18
separately infra.
ANALYSIS
Representative Claim 1
Appellants principally contend:
A. While Oberlander may disclose a database on line 64 of
col. 7, this database is not a P2P content database and is
not populated with extracted keys as recited. (App. Br. 6,
referring to limitation [b] of claim 1).

1 Appellants filed a Notice of Appeal on June 12, 2012. The date of filing
the Notice of Appeal determines which set of rules applies to an ex parte
appeal. If a Notice of Appeal is filed on or after January 23, 2012, then the
2012 version of the Board Rules (Title 37 of the Code of Federal
Regulations (37 C.F.R. § 41.1 et seq.)) published on November 22, 2011 in
the Federal Register notice applies to the appeal.
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B. Oberlander teaches away from maintaining a mapping
between keys and corresponding traffic management
actions. (Id.)

C. [T]he Examiner alleges that Oberlander's subscriber ID is
a key. However, the subscriber ID "identifies the
individual to whom a message is intended," as disclosed
in lines 23–24 of col. 4 rather than identifying any traffic
management action. (Id.; referring to limitation [d1] of
claim 1).

D. Twiss does not map different traffic management actions
to different keys. In paragraph [0062], Twiss discloses
that "gateway node 408 may also store contents (files)
indexed based upon a key or checksum." Appellants
respectfully submits that these files are not traffic
management actions. (App. Br. 7).

Issues: Under § 103, did the Examiner err by finding the cited prior
art would have collectively taught or suggested the contested limitations of
[a], [b], [c], and [d], within the meaning of claim 1 (reproduced above)?
As an initial matter of claim construction, we focus our analysis on
the scope of the contested conditional temporal claim limitations [a] and [d]
of claim 1: “[a] when the application protocol is a P2P protocol [then
perform recited act [a1]]” and “[d] when the extracted key is located in the
P2P content database” [then perform recited act d1]].”
Thus, the intended recited acts [a1] and [d1] of claim 1 are to be
performed at the time when the predicate conditions [a] and [d] are satisfied.
We particularly note the language of claim 1 does not expressly preclude
performing the intended recited acts [a1] and [d1] at other times when the
predicate condition is not satisfied. For example, claim 1 does not positively
recite performing the intended acts [a1] and [d1] only when the respective
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predicate conditions [a] and [d] are satisfied, respectively. Thus, we
conclude the scope of the claim is unclear if the recited predicate conditions
are never met.
Because both potential outcomes of each predicate condition [a] and
[d] are not expressly covered by the plain language of claim 1, a question
arises as to how much patentable weight, if any, should be accorded to the
contested conditional limitations. Cf. with In re Johnston, 435 F.3d 1381,
1384 (Fed. Cir. 2006) (“[O]ptional elements do not narrow the claim
because they can always be omitted.”). Based on such guidance, we are of
the view the Examiner’s rejection of representative claim 1 is proper
whether or not the optional acts [a1] and [d1] are found in the prior art.2, 3
Assuming, arguendo, the conditional steps or acts of method claim 1
may be given full patentable weight by our reviewing court, we fully
consider infra the Examiner’s findings as contested by Appellants.

2 In the event of further prosecution, we leave it to the Examiner to consider
whether “with extracted keys” has proper antecedent basis, because claim 1
recites extracting “a key” (i.e., a single key, not plural keys).
3 In the event of further prosecution, we leave it to the Examiner to consider
the holding of Miyazaki as applied to at least claim 1: “[I]f a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim . . . indefinite.” Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). See
also In re Packard, 2013-1204, WL 1775996 at *15 (Fed. Cir. May 6, 2014),
(J. Plager concurring) (“ In my view (and that of the per curiam court), it is
within the authority of the USPTO to so interpret the applicable standard”).
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Contention A, regarding contested limitation [b]
Regarding contention A which is directed to contested limitation [b]
(“populating a P2P content database with extracted keys”), Appellants
appear to concede “Oberlander may disclose a database on line 64 of col. 7.”
However, Appellants urge “this database is not a P2P content database and is
not populated with extracted keys as recited.” (App. Br. 6).
The Examiner explains the broadest reasonable interpretation of the
contested key: “[the] claimed key is interpreted by the examiner as a marker
or indicator and not a cryptographic key for encryption and decryption.”
(Ans. 23). We further observe the Examiner relies primarily on Twiss, not
Oberlander, for teaching or suggesting the claimed key: “The gateway node
408 stores contents that include files that are indexed based upon a key or
checksum. The checksum or key is used to query access to the database for a
subsequent P2P download.” (Ans. 23; see also Twiss ¶ 62).
The Examiner relies upon Oberlander merely for teaching or
suggesting populating a database with extracted keys, since Oberlander is
silent regarding P2P content, as pointed out by Appellants: “Appellant
respectfully submits that Oberlander fails to disclose population of a P2P
content database.” (App. Br. 6). As found by the Examiner (Ans. 6),
Oberlander extracts a key from received message 300 where the extracted
key is used by DMM 113 to index database 400 of Figure 4 in order to
retrieve a record from a “database whose subscriber ID field 402 matches
the extracted key.” (Oberlander, col. 7, ll. 59–65).
Regarding contention A and contested limitation [b], we find
Appellants are attacking the teachings of the references relied on by the
Examiner in isolation, and do not specifically rebut the Examiner's ultimate
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legal conclusion of obviousness which is based on the combined teachings
and suggestions of Twiss, Ray, and Oberlander. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). (One cannot show nonobviousness
by attacking references individually where the rejections are based on
combinations of references.) Therefore, we find the preponderance of
evidence supports the Examiner’s underlying factual findings and ultimate
legal conclusion of obviousness regarding contested limitation [b].
Contention B, regarding Oberlander (“teaches away”)
Regarding Appellants’ contention B, “Oberlander teaches away from
maintaining a mapping between keys and corresponding traffic management
actions” (App. Br. 6). However, the Examiner primarily relies on Twiss for
teaching or suggesting the claimed key, as discussed above. (See Ans. 23).
Moreover, our reviewing court guides that a reference does not teach away if
it merely expresses a general preference for an alternative invention from
amongst options available to the ordinarily skilled artisan, and the reference
does not discredit or discourage investigation into the invention claimed. In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Here, Appellants have not persuaded us that a person of ordinary skill,
upon reading the Twiss, Ray, and Oberlander references, would have been
discouraged from following the path set out in the references, or would have
been led in a direction divergent from the path that was taken by the
Appellants. In particular, Appellants have not persuaded us that Oberlander
“discredit[s] or discourage[s] investigation into the invention claimed.”
Fulton, 391 F.3d at 1201. Therefore, we find unpersuasive Appellants’
contention B that Oberlander “teaches away” from the claimed mapping.
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Contention C, Contested Limitation [d1]
Regarding to contention C (App. Br. 6), which is directed to contested
limitation [d1] (“performing the traffic management action associated with
the key in the P2P content database”), we note the Examiner does not rely on
Oberlander for teaching traffic management actions. The Examiner finds the
claimed “traffic management actions” are taught or suggested by Twiss.
(See Ans. 4–5). See e.g., Twiss, ¶¶ 62, 75:
The gateway node 408 monitors and routes P2P traffic
transparently . . . The gateway node 408 may also store contents
(files) indexed based upon a key or checksum. A file checksum
from a query hit packet may be used to access the database for a
subsequent P2P download.
(¶ 62).
A determination of whether payload data comprises P2P typical
data may be made by, in effect, masking out variable portions
of data in a protocol and then comparing the data to one or
more known allowed message formats which (preferably) serve
as a signature for the P2P protocol (or protocols) it is desired to
control.
(¶ 75).4
We again find Appellants are attacking the teachings of the references
relied on by the Examiner in isolation, and do not specifically rebut the

4 The Examiner additionally finds paragraph 75 and Figure 7 of Twiss
would have taught or suggested claim 1 limitation [a1]: “the extracted key
uniquely identifying a P2P content item associated with the IP flow; . . . .”
Appellants do not contest the unique identifier feature of the claimed key
regarding claim 1, limitation [a1]. Arguments not made are considered
waived. See 37 C.F.R. § 41.37(c)(1)(iv)(2012).
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Examiner's ultimate legal conclusion of obviousness which is based on the
combined teachings and suggestions of Twiss, Ray, and Oberlander. See
Merck, 800 F.2d at 1097. Therefore, Appellants have not persuaded us the
Examiner erred regarding contested limitation [d1].
Contention D, Contested Limitations [c] and [d1]
Regarding to contention D, Appellants urge that “Twiss does not map
different traffic management actions to different keys.” (App. Br. 7).
However, claim 1 is silent regarding the argued mapping of different
management actions to different keys. We conclude a broad but reasonable
interpretation of claim 1 does not preclude mapping many keys to a plurality
of corresponding traffic management actions of the same type. We decline
Appellants’ invitation to read limitations from the Specification into the
claims. Therefore, we find Appellants’ contention D unavailing regarding
limitations [c] and [d1]. 5
For these reasons, on this record we are not persuaded the Examiner
erred. Therefore, we sustain the Examiner’s rejection of representative
claim 1, for the same reasons articulated by the Examiner, as discussed
further above. The associated grouped claims fall therewith. See claim
grouping supra.

5 Our reviewing court guides: “claims may embrace ‘different subject matter
than is illustrated in the specific embodiments in the specification.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc)
(citations omitted). Because “applicants may amend claims to narrow their
scope, a broad construction during prosecution creates no unfairness to the
applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007) (citation omitted).
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Dependent Claim 7
Dependent claim 7 recites: “notifying a network management entity
that a transfer involving the P2P content item has occurred.” (emphasis
added). Appellants contend the recited “notifying” is not taught by the cited
references. (App. Br. 8).
However, we agree with the Examiner’s findings and responsive
clarification regarding the teachings of Ray (Fig. 2), when combined with
Twiss and Oberlander:
The results 215, 225, 235 are provided to the signature
generator module 240 where a DPI signature is generated (i.e.
this meets appellants claim limitation of notifying a network
management entity that a transfer involving the P2P
content item has occurred).

(Ans. 29).

In the Reply Brief (3) Appellants respond:
generator module 240 is not equivalent to the claimed
network management entity because it does not actually
perform network management. Instead, as defined in paragraph
[0020] of Ray, signature generator module 240 only generates a
DPI signature 245.

However, we note Appellants have not defined a network
management entity either in the claims or in the Specification. See n. 5
supra. Therefore, we are not persuaded the Examiner’s reading is overly
broad or unreasonable.
Accordingly, we sustain the rejection of dependent claim 7.
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Dependent Claim 18
Dependent claim 18 recites:
The system for managing transmission of P2P content
according to claim 16, wherein the first DPI device is located in
the network element and the second DPI device is a standalone
device connected to the network element. (emphasis added).

Appellants contend the recited “standalone device” is not taught
by the cited references. (App. Br. 8).
The Examiner finds paragraph 0012, lines 21 – 38 of Ray teaches that
the network buffer 160 (i.e. appellants second DPI device) is a standalone
device. (Ans. 30).
We find adding “a second DPI device” would have been a
“predictable use of prior art elements according to their established
functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Thus,
claiming a mere plurality of prior art elements is not an unobvious
distinction over the prior art of record, because using plural elements would
have produced a predictable result under § 103. “A mere duplication of
parts is not invention.” In re Marcum, 47 F.2d 377, 378 (CCPA 1931)
(citing Topliff v. Topliff, 145 U.S. 156, 163 (1892)). “It is well settled that
the mere duplication of parts has no patentable significance unless a new and
unexpected result is produced.” In re Harza, 274 F.2d 669, 671 (CCPA
1960). Further, Appellants have not shown how the standalone location of
the DPI device changes either its structure or its function. For these reasons,
we sustain the rejection of dependent claim 18.
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Rejection of claims 2 and 10
Regarding the second-stated rejection of claims 2 and 10, Appellants
urge:
Cohen fails to remedy the deficiencies of Twiss in view of Ray,
and further in view of Oberlander for independent claims 1 and
9. Claim 2 depends upon claim 1 and claim 10 depends upon
claim 9. Thus, claims 2 and 10 are allowable at least due to
their respective dependencies from allowable base claims.

(App. Br. 11).
However, as discussed above, we do not find Appellants’ arguments
regarding the independent claims 1 and 9 persuasive. Therefore, we are not
persuaded that the Examiner erred in rejecting claims 2 and 10.

DECISION
We affirm the Examiner’s decision rejecting claims 1–20 under § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED

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