Ex Parte Issa

Board of Patent Appeals and Interferences

Jun 8, 2011

10927291 (B.P.A.I. Jun. 8, 2011)

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.
10/927,291 08/25/2004 Al Issa 1104-043 1451
74548 7590 06/08/2011
FlashPoint Technology and Withrow & Terranova
100 Regency Forest Drive
Suite 160
Cary, NC 27518
EXAMINER
HIGA, BRENDAN Y
ART UNIT PAPER NUMBER
2441
MAIL DATE DELIVERY MODE
06/08/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte AL ISSA
_____________

Appeal 2009-011076
Application 10/927,291
Technology Center 2400
______________

Before ALLEN R. MACDONALD, ROBERT E. NAPPI, and
THOMAS S. HAHN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-011076
Application 10/927,291
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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 361.
We affirm.
INVENTION
The invention is directed to a method for use in a photosharing
system. See Specification 4-5. Claim 1 is representative of the invention
and reproduced below:
In a network photosharing system having at least one peer computer coupled
to a photosharing system server, a method for serving an image stored in the
peer computer to a requesting computer, comprising:

(a) caching a copy of the image in the photosharing server;

(b) in response to the photosharing server receiving a request from the
requesting computer to view the image stored in the peer computer, sending
a request from the photosharing server to the peer computer to determine if
the image stored on the peer computer has been
modified;

(c) if a response from the peer computer indicates that the image has not
been modified, transmitting the cached image from the photosharing server
to the requesting computer; and

(d) if the image has been modified, caching a copy of the modified image
on the photosharing server, and transmitting the modified image from the
photosharing server to the requesting computer.

1 We note that claim 28 as presented in the evidence appendix is dependent
upon itself; this appears to be a typo as originally filed claim 28 was
dependent upon claim 27. Should there be further processing of this
application Appellant is encouraged to correct this typographical error.
Appeal 2009-011076
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REFERENCES

BREBNER 2002/0184364 A1 Dec. 5, 2002
SVENDSEN US 2003/0063770 A1 Apr. 3, 2003
TOYAMA US 2004/0070678 A1 Apr. 15, 2004
PARDIKAR US 6,757,705 B1 Jun. 29, 2004
SINGH US 2005/0138176 A1 Jun. 23, 2005

R. T. Fielding, J. Gettys, J. C. Mogul, H. Frystyk, L. Masinter, P. Leach, and
T. Berners- Lee. RFC 2616: Hypertext transfer protocol - HTTP/1.1, June
1999.

REJECTION AT ISSUE
The Examiner has rejected claims 1, 5 through 7, 13, 17 through 19,
25, and 29 through 31under 35 U.S.C. § 103(a) as being unpatentable over
Toyama in view of Singh. Answer 3-62.
The Examiner has rejected claims 2 through 4, 14 through 16, and 26
through 28 under 35 U.S.C. § 103(a) as being unpatentable over Toyama in
view of Singh and Fielding. Answer 6-7.
The Examiner has rejected claims 8 through 11, 20 through 23, and 32
through 35 under 35 U.S.C. § 103(a) as being unpatentable over Toyama in
view of Singh and Pardikar. Answer 8-9.
The Examiner has rejected claims 12, 24, and 36 under 35 U.S.C.
§ 103(a) as being unpatentable over Toyama in view of Singh and Svedsen.
Answer 10.

2 Throughout this opinion we refer to the Examiner’s Answer mailed on
November 12, 2008.
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ISSUES
Appellant argues on pages 9 through 13 of the Brief3 that the
Examiner’s rejection based upon Toyama in view of Singh is in error. These
arguments present us with the following issues:
a) Did the Examiner err in finding that the combination of references
teaches a photosharing server sending a request received from a
requesting computer to a peer computer to determine if a stored
image on the peer computer has been modified?
b) Did the Examiner err in finding that the combination of references
teach that if the image is not modified, transmitting the cached
image from the photosharing server to the responding computer
where the peer computer stores the image?

Appellant argues on pages 13 and 14 of the Brief that the Examiner’s
other rejections which rely upon Toyama and Singh in combination with
additional references are similarly in error. Thus, Appellant’s contentions
directed to these claims present the same issues as the rejection based upon
Toyama in view of Singh.

ANALYSIS
First issue:
We have reviewed the Examiners’ rejection in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusion that the Examiner erred in finding that the combination of

3 Throughout this opinion we refer to the Appeal Brief dated September 16,
2008.
Appeal 2009-011076
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references teaches a photosharing server sending a request received from a
requesting computer to a peer computer to determine if a stored image on the
peer computer has been modified. 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 Appellant’s Appeal Brief. We concur with the
conclusion reached by the Examiner.
Appellant’s arguments present three lines of reasoning as to why the
references do not teach this feature. On page10 of the Brief, Appellant
asserts that neither reference teaches a photosharing server that sends a
request to a peer computer to determine if a stored image has been modified.
We are not persuaded by this argument. The Examiner finds that Toyama
teaches a photo caching system and Singh teaches a network cache
validation technique, where a request is sent to from a client proxy(which
the Examiner equates to a photosharing server) to a server proxy to
determine if the requested data has been modified since previously cached.
Answer 11-14. We find ample evidence to support the Examiner’s finding.
Further, we note that in as much as Appellant’s argument is asserting that
the data subject to the cache validation are not photos (i.e. the client proxy is
not a photosharing server). We consider the content of the data, i.e. a photo,
is not functionally related to the claimed method. The Examiner need not
give patentable weight to descriptive material absent a new and unobvious
functional relationship between the descriptive material and the substrate.
See In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994); In re Ngai, 367
F.3d 1336, 1338 (Fed. Cir. 2004) and this Board’s decision in Ex parte
Curry, 2005-0509 (BPAI 2005), 84 USPQ2d 1272 (Affirmed, Rule 36, Fed.
Cir., slip op. 06-1003, June 2006).
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Appellant further reasons, on pages 10 and 11 of the Brief, that even if
the client proxy is a photosharing server, Singh does not disclose that the
peer computer is involved with the cache validation. The Examiner finds
Toyama teaches a peer computer that provides an image and that Singh’s
server proxy also meets the claimed peer computer. Answer 15. We find
ample evidence to support these findings by the Examiner. We note that
Singh teaches the proxy server and the HTML are on the same computer;
hence the computer containing the server proxy is involved in the cache
validation by responding to requests from the client proxy and storing the
requested data (i.e. performs the claimed peer computer function of serving
stored image). Se paragraph 53 of Singh (which corresponds to paragraph
30 of the provisional application).
Appellant’s third line of reasoning asserts that if Singh’s HTTP client
and the client proxy were considered to be the photosharing server, the client
proxy does not send a request to a peer computer as claimed. Brief 11. This
line of reasoning has not persuaded us of error in the Examiner’s rejection.
The Examiner has not equated the HTTP server and the server proxy to the
claimed photosharing server, but rather the Examiner has equated Singh’s
client proxy to the claimed photosharing server. Answer 16-17.
For the aforementioned reasons, Appellant’s arguments directed to the
first issue have not persuaded us that Examiner erred in finding that the
combination of references teaches a photosharing server sending a request
received from a requesting computer to a peer computer to determine if a
stored image on the peer computer has been modified.
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Second issue:
We have reviewed the Examiners’ rejection in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusion that the Examiner erred in finding that the combination of
references teach that if the image is not modified, transmitting the cached
image from the photosharing server to the responding computer where the
peer computer stores the image 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 Appellant’s Appeal Brief. We concur with the
conclusion reached by the Examiner.
Appellant argues on page 12 of the Brief, that Singh’s server proxy
does not store a requested image and that the server proxy only provides a
response to indicate whether an image has been modified. In response the
Examiner finds that Toyama teaches a photosharing server, and that Singh
teaches that the server proxy also meets the claimed photosharing server.
Answer 17-19. As discussed supra with respect to the first issue we find
ample evidence to support these findings by the Examiner and that the
HTTP server (which contains requested data) and server proxy (which
responds to indicate change in data) can be on the same computer which
meets the claimed photosharing server. Accordingly, Appellant’s arguments
directed to the second issue have not persuaded us of error in the Examiner’s
rejection of claims 1, 5 through 7, 13, 17 through 19, 25, and 29 through
31based upon Toyama in view of Singh and we sustain the rejection.

Appeal 2009-011076
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Rejections of claims 2 through 4, 8 through 12, 14 through 16, 20
through 24, 26 through 28, and 32 through 36
As Appellant’s arguments directed to these rejections present us with
the same issues, we sustain the Examiner’s rejection of these claims for the
same reasons as discussed above with respect to the rejection base upon
Toyama and Singh.

ORDER
The decision of the Examiner to reject claims 1 through 36 is
affirmed.

AFFIRMED

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