Ex Parte Hoefelmeyer et al

Patent Trial and Appeal Board

Sep 17, 2012

10699824 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RALPH S. HOEFELMEYER
and SHAWN E. WIEDERIN
____________________

Appeal 2009-015400
Application 10/699,824
Technology Center 2400
____________________

Before KALYAN K. DESHPANDE, JASON V. MORGAN, and RAMA G.
ELLURU, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-015400
Application 10/699,824

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STATEMENT OF CASE1
The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1, 3-16, and 18-31, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to 35
U.S.C. § 6(b)(1).
We AFFIRM.

The Appellants invented systems and methods for providing peer-to-
peer gaming in a communications network. Specification ¶ 0001.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added]:
1. A method for establishing a gaming session between a first
network device that includes an operating system and at least
one second network device in a communications network, the
method comprising:
[1] modifying the first network device for the gaming
session, the modifying including:
[a] loading a new operating system,
[b] booting the first network device up in the new
operating system,
[c] detecting a hardware configuration of the first
network device,
[d] generating a configuration file based on the
detecting,
[e] compiling network access software and peering
software using the configuration file, and

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Nov. 7, 2008) and Reply Brief (“Reply Br.,” filed Mar. 31, 2009),
and the Examiner’s Answer (“Ans.,” mailed Feb. 4, 2009), and Final
Rejection (“Final Rej.,” mailed Jul. 30, 2008).
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[f] installing the network access software and the
peering software using the configuration file,
[2] connecting the first network device to the
communications network; and
[3] establishing a peer-to-peer gaming session with the at
least one second network device.

REFERENCES
The Examiner relies on the following prior art:
Gordon
Kreller
Wies
US 6,671,729 B1
US 6,981,251 B1
US 7,159,008 B1
Dec. 30, 2003
Dec. 27, 2005
Jan. 2, 2007
Ko
Rowe
Multerer
Ellis
US 2002/0013882 A1
US 2002/0138594 A1
US 2004/0002384 A1
US 2004/0015608 A1
Jan. 31, 2002
Sep. 26, 2002
Jan. 1, 2004
Jan. 22, 2004

REJECTION
Claims 1, 3-16, and 18-31 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Multerer, Ko, and Kreller.

ISSUE
The issue of whether the Examiner erred in rejecting claims 1, 3-16,
and 18-31 under 35 U.S.C. § 103(a) as unpatentable over Multerer, Ko, and
Kreller turns on whether: (1) the combination of Multerer, Ko, and Kreller
teaches or suggests “compiling network access software and peering
software using the configuration file” and “installing the network access
software and the peering software using the configuration file;” and (2)
whether the Examiner provided an articulated reasoning with some rational
underpinning in supporting the legal conclusion of obviousness.

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ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellants’ contentions that the Examiner has erred.
We disagree with the Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to the Appellants’ Appeal Brief. We
concur with the conclusion reached by the Examiner. We highlight the
following arguments for emphasis.

Claims 1, 3-6, and 8-11
The Appellants contend that the combination of Multerer, Ko, and
Kreller fail to teach or suggest limitations [1][e] and [1][f] as recited in claim
1. App. Br. 7-12 and Reply Br. 4-6. The Appellants submit this argument in
support of claims 1, 3-6, and 8-11. App. Br. 12. The Appellants specifically
argue that Ko fails to describe “installing the network access software and
the peering software using the configuration file” and Kreller fails to cure
this deficiency. App. Br. 7-9. The Appellants further argue that Kreller fails
to describe “compiling network access software and peering software using
the configuration file.” App. Br. 10-11.
We disagree with the Appellants. With respect to limitation [1][f], the
Examiner found that Multerer describes creating a peering session and
connecting a first network device to a communications network, and
therefore, inherently describes the installation of peering software and
network access software. Ans. 4-6 and 12-13. The Examiner further found
that Ko describes the generation of a configuration file based on detected
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hardware configuration and installing based on the configuration file. Ans.
5. The Examiner also found that Kreller describes an installation system that
compiles and installs an executable application based on a hardware list of
existing components. Ans. 4-6. With respect to limitation [1][e], the
Examiner again relied on Multerer to describe the peering session, Ko to
describe the generation of a configuration file, and Kreller to describe the
compilation and installation of software. Ans. 4-6.
Therefore, the Examiner found that the combination of Multerer, Ko,
and Kreller teaches or suggests limitations [1][e] and [1][f] of claim 1. Ans.
4-6 and 12-13. The Appellants’ contention that Ko and Kreller each fail to
teach or suggest the entire limitation does not persuade us of error on part of
the Examiner because the Appellants are responding to the rejection by
attacking the references separately, even though the rejection is based on the
combined teachings of the references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The Appellants further contend that the Examiner failed to provide an
articulated reasoning with some rational underpinning to support the
conclusion of obviousness. App. Br. 11-12 and Reply Br. 6. We disagree
with the Appellants. The Examiner found that a person with ordinary skill
in the art would have been motivated to combine Multerer with Ko in order
to access software without being constrained by the operation system or
hardware components. Ans. 5. The Examiner further found that a person
with ordinary skill in the art would have been motivated to combine Kreller
with Multerer and Ko in order to avoid incompatibilities between software
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applications and hardware installed. Ans. 5-6. We find that these statements
include an articulated reasoning with some rational underpinning to support
the Examiner’s conclusion of obviousness. The Appellants do not set forth
any evidence or rationale to rebut the Examiner’s findings or conclusion. As
such, we are not persuaded by the Appellants’ argument.
The Appellants also contend that Wies fails to cure the deficiencies
set forth supra in support of claim 1, with respect to claim 6. App. Br. 13.
We disagree with the Appellants. The Appellants’ arguments in support of
claim 1 were not found to be persuasive supra and are not persuasive here
for the same reasons.

Claims 12-15, 18-23, 24-26, and 29-31
The Appellants contend that the Examiner erred in rejecting claims
12-15, 18-23, 24-26, and 29-31 for reasons similar to those as submitted in
support of claims 1, 3-6, and 8-11. App. Br. 14-21, 22-29, and 32-38. We
disagree with the Appellants. The Appellants’ arguments in support of
claims 1, 3-6, and 8-11 were not found to be persuasive supra and are not
persuasive here for the same reasons.

Claims 6-7, 16, and 27-28
The Examiner took Official Notice for the limitations found in claims
6-7, 16, and 27-28. Ans. 6-7 and 9-11. The Examiner and the Appellants
agree that the Appellants did not challenge the Examiner’s Official Notice in
their next opportunity. The Examiner then took the Official Notice as
Appellants’ Admitted Prior Art.
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The Appellants contend that the Appellants are not required to
seasonably traverse the Examiner’s taking of Official Notice and the
Appellants further presented in a footnote that the Appellants’ silence as to
the Examiner’s Official Notice is not an indication of the Appellants’
concession that the Examiner’s Official Notice is accurate. App. Br. 13-14,
21-22, and 29-32. We disagree with the Appellants. If an applicant does not
seasonably traverse the taking of official notice during examination, then the
object of the official notice is taken to be admitted prior art. See In re
Chevenard, 139 F.2d 711, 713 (CCPA 1943). Here, the Appellants’
contention is inconsistent with the holding of our reviewing court. As such,
we do not find the Appellants’ contention persuasive2.

CONCLUSIONS
The Examiner did not err in rejecting claims 1, 3-16, and 18-31 under 35
U.S.C. § 103(a) as unpatentable over Multerer, Ko, and Kreller.

DECISION
To summarize, our decision is as follows.
The rejection of claims 1, 3-16, and 18-31 under 35 U.S.C. § 103(a) as
unpatentable over Multerer, Ko, and Kreller is sustained.

2 The Appellants do not provide any evidence or rationale to traverse the
Examiner’s Official Notice. An adequate traverse must contain adequate
information or argument to create on its face, a reasonable doubt regarding
the circumstances justifying Examiner's notice of what is well known to one
of ordinary skill in the art. See In re Boon, 439 F.2d 724, 728 (CCPA 1971).
Regardless, the Examiner has submitted Gordon, Rowe, and Ellis to
demonstrate that the facts taken under Official Notice are old and well-
known in the art.
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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) (2010).

AFFIRMED

msc