Ex Parte Herley

Board of Patent Appeals and Interferences

Sep 6, 2007

10161428 (B.P.A.I. Sep. 6, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CORMAC E. HERLEY
____________________

Appeal 2007-1051
Application 10/161,4281
Technology Center 2100
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Decided: September 6, 2007
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Before LANCE LEONARD BARRY, ALLEN R. MACDONALD,
and JAY P. LUCAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals from a final rejection of claims 1-10, 13-22, 24-34,
36 and 37 under authority of 35 U.S.C. § 134. The Board of Patent Appeals
and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

1 Application filed June 3, 2002. The real party in interest is Microsoft
Corporation.

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Appellant’s invention relates to distributing data on a peer to peer
(P2P) network using a bulletin board to maintain a list of requests for data
from various peers in the system. (Specification 3).
Claim 1 is exemplary:
1. A data distribution system comprising:

a bulletin board that receives requests, the bulletin board comprising;

a list storing received requests, the requests being in a
predefined machine readable format and respectively aged, the
aging of requests is a function of demand of an item associated
with respective requests; and

an access layer that regulates access by a plurality of nodes to
the list.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Teng 4,642,758 Feb. 10, 1987

Traversat US 2002/0184357 A1 Dec. 5, 2002

Claims 1-10, 13-22, 24-34, 36 and 37stand rejected under 35 U.S.C.
103(a) for being obvious over Traversat in view of Teng.
Appellant contends that the claimed subject matter is not rendered
obvious by Traversat in combination with Teng for failure of the references
to teach significant limitations of the claims. The Examiner contends that
the claims are properly rejected.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
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this decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).2
We reverse the rejection.
ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
the Traversat and Teng references teach the claimed bulletin board
comprising lists of received requests and other claim limitations.
FINDINGS OF FACT
1. Appellant has invented a P2P network arrangement in which a
central computer contains not the usual list of files available on
various nodes of the network, as, for example, in the Napster model,
but instead contains a list of requests for files (music, documents,
computer programs, etc.) that users of one node wish to have sent to
themselves from other nodes on the network. (Specification 1-2).
According to the invention, this list is available to be downloaded
periodically to member nodes of the network, which may scan the

2 Appellant have not presented any substantive arguments directed separately
to the patentability of the dependent claims or related claims in each group,
except as will be noted in this opinion. In the absence of a separate
argument with respect to those claims, they stand or fall with the
representative independent claim. See In re Young, 927 F.2d 588, 590, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991).

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list and, if able and willing, send the requested file directly to the
requesting node on a P2P basis. (Specification 5-6).
2. If a request remains unfulfilled after a specified time period, the
system may assume that there is a low likelihood of it ever being
filled and may remove the request from the list of requests. In the
Specification, this process is called the aging of requests.
(Specification 7, l. 10 ff).
3. The Traversat Patent Application Publication provides a system and
method for a P2P network in which special rendezvous nodes
contain information, called advertisements, about network resources
to help other nodes locate those resources long range on the network.
(¶ 0026). Requests from one node are sent to other nodes in search
of responses or of advertisements. (¶ 0029). Query requests may
include a time-to-live indicator, which defines the expiration of the
request and signals that the request may be deleted or invalidated, as
they are unlikely to be filled. (¶ 0028).
4. The Teng Patent teaches a system in a network for requesting a
future time to transfer a file across the network from one node to
another. The requests may be sorted, prioritize and timed to
efficiently transfer files. A request to transfer a file which is ignored
results in the file not being transferred to the node that received the
request. (Col. 2, ll. 1-21).
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PRINCIPLES OF LAW
On appeal, Appellant bears the burden of showing that the Examiner
has not established a legally sufficient basis for the rejection of the claims.
“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Both anticipation under 35 U.S.C. §102 and obviousness under §103
are two-step inquiries, in which the first step is a proper construction of the
claims and the second step requires a comparison of the properly construed
claim to the prior art. Medichem S.A. v. Rolabo S.L., 353 F.3d 928, 933, 69
USPQ2d 1283, 1286 (Fed. Cir. 2003).
To serve as an anticipation when the reference is silent about the
asserted inherent characteristic, such gap in the reference may be filled with
recourse to extrinsic evidence. Such evidence must make clear that the
missing descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.
Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268, 20
USPQ2d 1746, 1749 (Fed. Cir. 1991)
ANALYSIS
Appellant contends that Examiner erred in rejecting claims 1-10, 13-
22, 24-34, 36 and 37 under 35 U.S.C. 103(a). Reviewing the findings of
facts cited above, and the documents of record, we note that Examiner has
presented a prima facie case for the rejection of all claims. (Answer 3-14).
Against this case the Appellant has presented two major objections
embodied in the following two quotes from the Brief: 1) that “Traversat et
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al. is silent with regard to a bulletin board that receives requests, … and
comprises a list storing received requests,…; and an access layer that
regulates access by a plurality of nodes to the list.” (Br. 6) and 2) “…but
nowhere does the [Teng] reference show that the aging of requests is a
function of demand of an item associated with a request”. (Br. 7).
We find that Traversat does teach that the nodes of a P2P network
receive requests for information and, using the rendezvous nodes and other
devices, satisfy that request with resources across the network. (¶ 0014 ff).
However, we do not find in Traversat that the requests are stored in the
manner claimed. The stored information, defined as “advertisements” in
Traversat (¶ 0026), contains information on resources available across the
network “including … peers, peer groups, services, content, pipes and pipe
endpoints”. We find that request for this information may be reviewed (¶
0091) (¶ 0114), may be aged, as defined by the Specification (¶ 0028 and
0296), and may be passed through a security layer (¶ 0029 and 0328).
However, we do not find in Traversat the storage of the queries on lists, as
claimed by the Appellant. We have considered Examiner’s arguments
concerning the persistence of the caching of the requests, and though this
may create the ability in the structure of the reference to create a list of the
requests, we are not persuaded that the reference teaches actually doing so.
Indeed, as the reference teaches a system of storing advertisements that is
significantly similar to that disclosed as “prior art” in Appellant’s
Specification, we are not persuaded that it would have been obvious over the
teachings of Traversat to create the requests-based system that he claims.
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The Teng reference has been noted, and its teaching of prioritization
of requests has been considered. We find this teaching supplemental to the
Traversat teachings of time-to-live (TTL), such as in ¶ 0028 of Traversat,
but not sufficient to address the weaknesses of the rejection as described
above.
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in rejecting claims 1-10, 13-22, 24-34, 36 and 37.
DECISION
The Examiner's rejection of claims 1-10, 13-22, 24-34, 36 and 37 is
reversed.

REVERSED

KIS

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