Ex Parte Jacobus

Board of Patent Appeals and Interferences

Jul 16, 2009

09785385 (B.P.A.I. Jul. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CHARLES J. JACOBUS
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Appeal 2009-000997
Application 09/785,385
Technology Center 2400
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Decided:1 July 16, 2009
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Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).
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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1-23. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing on this appeal was conducted on July 9,
2009.
We REVERSE.

THE INVENTION
Appellant's invention relates generally to network computing.
More particularly, Appellant's invention relates to “a distributed
environment that supports massive groupware streaming and pier-to-pier
[sic] packetized communications.” (Spec. 1).
Claim 1 is illustrative:
A distributed network computing environment, comprising:

a plurality of clients communicating within a multicast cloud
distributed network using content specific data within messages to
implement data routing and message culling in a groupware
application; and
one or more network routing modules or router-embedded
applets operative, in addition to normal packet-routing, to permit or
inhibit the distribution of a particular message based upon the content
of the message.

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PRIOR ART
The Examiner relies upon the following references as evidence in
support of the obviousness rejections:
Waters US 5,841,980 Nov. 24, 1998
Lambright US 6,015,348 Jan. 18, 2000
DeSimone US 6,138,144 Oct. 24, 2000

THE REJECTIONS
1. The Examiner rejected claims 1, 3-9, 11, and 14-23 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of DeSimone and
Waters.
2. The Examiner rejected claims 2, 10, 12, and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of DeSimone and
Waters, and Lambright.

RELATED APPEALS
The following prior BPAI Decision on Appeal is noted with respect to
this appeal:
Ex parte Jacobus, Appeal No. 2006-2763, decided on January 31,
2007.

APPELLANT’S CONTENTIONS
Appellant contends that the claim term “content” should be
interpreted in accordance with the ordinary and customary meaning of the
term. (App. Br. 3). Appellant further contends that neither DeSimone nor
Waters teaches or suggests content which is data within the message where
the distribution of a particular message is permitted or inhibited based upon
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the content of the message, as claimed. (Id.) In particular, Appellant
contends that the portions of DeSimone relied on by the Examiner show that
it is the client and not data within messages that dictates what the client
wants. (App. Br. 4). Appellant asserts that “this is the way DeSimone
operates – the client decides how to interact with the conference, not the
content of messages.” (Id., emphasis in original).

EXAMINER’S FINDINGS
The Examiner states that Appellant’s amendment of the claims (i.e.,
the amendment of the claims previously before the Board) “simply makes
clear what was already implied in the previous iteration of the claims” and
“does not substantively change the interpretation of the claims and therefore
the reasoning applied in the Board’s decision should apply with full force to
Applicant’s current claims.” (Ans. 12; see also Ex parte Jacobus, Appeal
No. 2006-2763, decided on January 31, 2007).
In particular, the Examiner acknowledges that in DeSimone “the
routers and servers within the network route the packets based on the client’s
choice.” (Ans. 12, ¶3). The Examiner proffers that it would have been
obvious to an artisan that “the client’s choice of media type simply informs
routers and servers that comprise the network which packets to route to the
client.” (Id.) The Examiner maintains that the limitations argued by
Appellant are taught or suggested by the cited combination of references,
which the Examiner further maintains have been properly combined (Ans.
11-14).

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ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal:
1. Has Appellant shown the Examiner erred in finding that the
combination of DeSimone and Waters teaches or suggests
content-based routing in addition to normal packet routing (i.e.,
“one or more network routing modules or router-embedded
applets operative, in addition to normal packet-routing, to
permit or inhibit the distribution of a particular message based
upon the content of the message,” as claimed)? (See
independent claims 1 and 11).

PRINCIPLES OF LAW
“What a reference teaches is a question of fact.” In re Baird, 16 F.3d
380, 382 (Fed. Cir. 1994); In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir.
1992).
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006). Therefore, we look to Appellant’s Briefs to show error in the
Examiner’s proffered prima facie case.

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence:

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THE DESIMONE REFERENCE
1. DeSimone teaches:
Directory Server 106 functions to maintain a list of
multicast IP addresses and ports available for use
for a plurality of different and possibly concurrent
conferences, to assign a subset of those addresses
and ports to a particular conference when a
conference is initiated, and to assign from that
subset a unique multicast IP address and port
number to each media type of each client as that
client makes a request to become a member of that
conference.
(Col. 5, ll. 5-12).

2. DeSimone teaches:
Upon receiving the set of sockets assigned to it for
the conference, the client may decide how it wants
to interact in the conference. Specifically, for each
media type the client may only want to only
receive, or to both receive and transmit, or to just
transmit. Further, the client may choose to receive
a particular media type from only select other
clients on the conference. When a conference is
established and a client joins an established
conference, therefore, it receives a list of sockets
used for transmitting by the other clients
associated with the conference.
(Col. 5, ll. 24-33).

3. DeSimone teaches:
At any time during the conference, it may then
receive packets from the other clients in the
conference on the sockets assigned for
transmission to those other clients, or it may
choose not to receive packets of any or all media
types from other clients by either not adding the
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other client's socket(s) to its Multicast Receive
Address List (MRAL), or by deleting the other
client's socket from its MRAL if it was previously
receiving transmissions from the other client. The
client then sets its local interface to receive only
those packets whose multicast IP addresses/port
numbers match the ones in its MRAL.
(Col. 5, ll. 33-43).

4. DeSimone teaches:
[A]s illustrated in FIG. 1, client terminals 101-1
and 101-2 are members of common IP sub-
network 110, clients terminals 101-3 and 101-4 are
member of IP sub-network 111, and client terminal
101-5 is a member of IP sub-network 112. IP sub-
networks 110, 111 and 112 are interconnected
through multicast capable IP routers 113 and 114.
A Directory Server (DS) 106, which need not
operate in a multicast fashion, is connected to the
IP network through router 107, which need not be
multicast capable.
(Col. 4, ll. 55-64).

ANALYSIS
We decide the question of whether Appellant has shown the Examiner
erred in finding that the combination of DeSimone and Waters teaches or
suggests content-based routing in addition to normal packet routing (i.e.,
“one or more network routing modules or router-embedded applets
operative, in addition to normal packet-routing, to permit or inhibit the
distribution of a particular message based upon the content of the message,”
as claimed). (See independent claims 1 and 11, emphasis added).
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We begin our analysis by noting that the plain language of each
independent claim on appeal requires: (1) one or more network routing
modules, or (2) router-embedded applets that are operative to permit or
inhibit the distribution of a particular message based upon the content of the
message. In particular, we focus our attention on the further requirement of
claims 1 and 11 that the one or more network routing modules or router-
embedded applets are operative to perform the aforementioned content-
based routing function in addition to normal packet-routing.
The Examiner has acknowledged DeSimone teaches “the routers and
servers within the network route the packets based on the client’s choice.”
(Ans. 12, ¶3). The Appellant agrees. (App. Br. 4). Nevertheless, the
Examiner proffers that it would have been obvious to an artisan that “the
client’s choice of media type simply informs routers and servers that
comprise the network which packets to route to the client.” (Ans. 12, ¶3).
However, we find this rationale by the Examiner at best merely suggests the
normal packet-routing limitation of each independent claim on appeal, e.g.,
where a packet is routed according to its destination address.
Based upon our review of the DeSimone reference, we find
DeSimone teaches a plurality of client terminals 101 as shown in Figure 1.
(FF 4). DeSimone also teaches multicast-capable IP routers 113 and 114.
(FF 4). Based upon our review of the evidence, we find DeSimone is silent
regarding any express teaching of network router-embedded applets.
We find one or more network routing modules inherently reside on
multicast-capable IP routers 113 and 114 (FF 4). DeSimone also discloses
that “[a] Directory Server (DS) 106, which need not operate in a multicast
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fashion, is connected to the IP network through router 107, which need not
be multicast capable.” (FF 4). We find DeSimone is silent regarding any
specific teaching or suggestion that any of the aforementioned routers
(inherently containing network routing modules) are operative to permit or
inhibit the distribution of a particular message based upon the content of the
message, as claimed. We find the aforementioned routers are merely
operative to perform normal packet routing, as previously discussed.
However, we find Directory Server 106 also necessarily includes one
or more network routing modules. We find Directory Server 106 provides a
routing table (i.e., list of multicast IP addresses and ports available for use)
for a plurality of different and possibly concurrent conferences. (FF 1).
Directory Server 106 assigns a subset of the aforementioned multicast IP
addresses and ports to a particular conference when a conference is initiated.
(FF 1). In particular, we acknowledge that when a client makes a request to
become a member of a conference, Directory Server 106 then assigns (from
the aforementioned subset of available multicast IP addresses and ports) a
unique multicast IP address and port number to each media type (e.g., audio
or video) of each client making a request. (FF 1).
However, we agree with both the Appellant and the Examiner that
DeSimone teaches it is the client’s request that controls whether the
distribution of a particular message is permitted or inhibited based upon the
media type of the message. (See FF 2: “for each media type the client may
only want to only receive, or to both receive and transmit, or to just transmit.
Further, the client may choose to receive a particular media type from only
select other clients on the conference.”). To the extent that Directory Server
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106 may indirectly perform the assignment of available multicast IP
addresses and ports based upon the client’s choice to receive a particular
media type (FF 2), we note that Appellant has strenuously argued in the
Briefs that “content” as claimed is not media type 2 (App. Br. 3, ¶¶ 2-3; see
also Reply Br. 1-2).
Under the doctrine of file wrapper or prosecution history estoppel, we
hold Appellant to this more narrow construction of the claimed “content”
where “media type” has been disclaimed by Appellant’s arguments as being
a form of content used to determine routing. Consistent with this
construction, we read the instant claims as requiring specific data content in
a message to trigger content-based routing. According to Appellant’s
unequivocal interpretation, the mere type of content (e.g., audio or video)
would be insufficient to trigger the claimed content-based routing. (App. Br.
3, ¶¶ 2-3; see also Reply Br. 1-2). See Standard Oil Co. v. Am. Cyanamid
Co., 774 F.2d 448, 452 (Fed. Cir.1985) (ruling that “the prosecution history
(or file wrapper) limits the interpretation of claims so as to exclude any
interpretation that may have been disclaimed or disavowed during
prosecution in order to obtain claim allowance”). “As a basic principle of
claim interpretation, prosecution disclaimer promotes the public notice
function of the intrinsic evidence and protects the public's reliance on
definitive statements made during prosecution.” Omega Engineering, Inc., v.
Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (citing Digital
Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998)).
“[W]here the patentee has unequivocally disavowed a certain meaning to

2 DeSimone describes “media-type” as audio or video. (Col. 2, l. 37).
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obtain his patent, the doctrine of prosecution disclaimer attaches and
narrows the ordinary meaning of the claim congruent with the scope of the
surrender.” Omega, 334 F.3d at 1324.
Moreover, our review of the record reveals that the Examiner has read
the claimed “lobby manager” (claim 4) on DeSimone’s Directory Server
106. (See Ans. 5 and 13). Therefore, we find the Examiner’s position is
unconvincing because: (1) the Examiner has admitted that DeSimone
teaches that “the routers and servers within the network route the packets
based on the client’s choice” (Ans. 12, ¶3.) and, (2) DeSimone’s Directory
Server 106 cannot reasonably correspond to both the claimed “one or more
network routing modules” of claims 1 and 11, and the claimed “lobby
manager” as recited in claim 11 and claim 4 (that depends from claim 1).
We do not find, nor has the Examiner established, that Waters or
Lambright overcomes the deficiencies of DeSimone, as discussed supra.
Accordingly, after considering the totality of the record before us, we find
the weight of the evidence supports the Appellant’s position.
Because Appellant has successfully demonstrated that the Examiner
has erred, we reverse the Examiner’s rejection of independent claims 1 and
11 under 35 U.S.C. § 103(a) as being unpatentable over the combination of
DeSimone and Waters. Because we have reversed the Examiner’s
obviousness rejection of each independent claim on appeal, we also reverse
the obviousness rejections of the dependent claims on appeal.

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CONCLUSION
Based on the findings of facts and analysis above, Appellant has
established that the Examiner erred in finding that the combination of
DeSimone and Waters teaches or suggests content-based routing in addition
to normal packet routing (i.e., “one or more network routing modules or
router-embedded applets operative, in addition to normal packet-routing, to
permit or inhibit the distribution of a particular message based upon the
content of the message,” as claimed). (See independent claims 1 and 11).

DECISION
We reverse the Examiner’s decision rejecting claims 1-23 under 35
U.S.C. § 103(a).

REVERSED

pgc

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