Ex Parte Jacobus

Board of Patent Appeals and Interferences

Jan 31, 2007

09785385 (B.P.A.I. Jan. 31, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES J. JACOBUS
____________

Appeal No. 2006-2763
Application No. 09/785,385
____________

HEARD: DECEMBER 12, 2006
____________

Before HAIRSTON, DIXON, and SAADAT, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1-23, which are all of the claims pending in this
application.
We affirm.
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BACKGROUND
Appellant’s invention is directed to packetized communications through a
multicast cloud in a distributed environment. According to Appellant, network
routing systems distribute messages based on normal packet routing behavior as
well as their content (Specification 9). An understanding of the invention can be
derived from a reading of exemplary independent claim 1, which is reproduced as
follows:
1. A distributed network computing environment, comprising:

a plurality of clients communicating within a multicast cloud using content-
specific messages to implement a groupware application; and

one or more network routing modules or router-embedded applets operative
to distribute the messages based upon the content in addition to normal packet-
routing.

The Examiner relies on the following prior art references:
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 claim rejections under appeal are:
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Claims 1 and 3-6 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by DeSimone.
Claims 7-9, 11 and 14-23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over DeSimone and Waters.
Claims 2, 10, 12 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over DeSimone, Waters and Lambright.
Rather than reiterate the opposing arguments, we refer to the Brief (filed
October 13, 2005) and the Answer (mailed January 13, 2006) for the respective
positions of Appellant and the Examiner. Only those arguments actually made by
Appellant have been considered in this decision. Arguments which Appellant
could have made but chose not to make in the brief have not been considered (37
C.F.R. § 41.37(c)(1)(vii)).
OPINION
Regarding the 35 U.S.C. § 102 rejection of the claims, the focus of
Appellant’s contention is that DeSimone identifies destinations only by address
instead of by message content type and thus, cannot anticipate the subject matter of
claim 1 (Br. 3). The Examiner argues that DeSimone teaches distributing
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messages based on their media types (DeSimone, col. 5, ll. 24-41) which is the
same as distribution based on the content (Answer 11).
A rejection for anticipation requires that the four corners of a single prior art
document describe every element of the claimed invention, either expressly or
inherently, such that a person of ordinary skill in the art could practice the
invention without undue experimentation. See Atlas Powder Co. v. IRECO Inc.,
190 F.3d 1342, 1347, 51 USPQ2d 1943, 1946-47 (Fed. Cir. 1999); In re Paulsen,
30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994). The inquiry as
to whether a reference anticipates a claim must focus on what subject matter is
encompassed by the claim and what subject matter is described by the reference.
As set forth by the court in Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772,
218 USPQ 781, 789 (Fed. Cir. 1983), it is only necessary for the claims to “‘read
on’ something disclosed in the prior art reference, i.e., all limitations of the claim
are found in the reference, or ‘fully met’ by it.” See also Atlas Powder Co. v.
IRECO Inc., 190 F.3d at 1346, 51 USPQ2d at 1945 (Fed. Cir. 1999) (quoting
Titanium Metals Corp. v. Banner, 778 F.2d 775, 781, 227 USPQ 773, 778 (Fed.
Cir. 1985)).
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In determining the subject matter encompassed by claim 1, we agree with the
Examiner that the claim merely requires “to distribute the messages based upon the
content” without specifying codes or any multicast receive address list. We also
remain unconvinced by Appellant’s argument (Br. 3-4 and oral hearing) that
sending messages based on the media type may be distinguished over the prior art
which sends the messages based on the content since the content relates to and is
determined according to the type of media selected. In that regard, we find that the
multicast capable IP routers in DeSimone distribute the messages to the clients
based on the media type (DeSimone, col. 5, ll. 24-41), which actually determines
the content.
We also note that all claim 1 requires is that the network routers distribute
the messages based upon the content, not that routers use specific code or logic, as
Appellant would have urged us to believe (Br. 3). Claims will be given their
broadest reasonable interpretation consistent with the specification, and limitation
appearing in the specification are not to be read into the claims. In re Etter, 756
F.2d 852, 858, 225 USPQ 1, 5 (Fed. Cir. 1985). Therefore, considering the
broadest claim interpretation, the type of logic or code used by the routers is
irrelevant to the recited distribution of messages “based upon the content.” In
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other words, the media types of DeSimone are the same as the claimed “content”
since the type of media determines what is in the messages to be sent.
Accordingly, the 35 U.S.C. § 102(e) rejection of claim 1, as well as claims 3-6
argued together with claim 1 as one group, over DeSimone is sustained.
Turning now to the 35 U.S.C. § 103 rejection of claims 7-9, 11 and 14-23,
we will determine whether the Examiner has properly combined DeSimone and
Waters. Appellant argues that there is no suggestion for combining the references
where the computer gaming of Waters is non-analogous to the multicast
multimedia of DeSimone (Br. 4). Additionally, Appellant asserts that even if the
references are combined, no game and game developer specific “culling rules” are
taught (Br. 5). We agree with the Examiner (Answer 13-14) that the multi-user
network of Waters is a distributed network which transmits only relevant data
applicable to each participant (Waters, abstract; col. 9, ll. 59-63). Waters also
suggests optimizing interaction among multi-users when using bandwidth
resources is optimized (Waters, col. 4, l. 65 through col. 5, l. 3). We also find that
Appellant’s claim 11, as argued by the Examiner (Answer 15), does not include the
specific definition of “culling rules,” as argued by Appellant (Br. 5). Based on
these teachings and suggestions and Appellant’s own recognition of Waters using
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culling rules based on proximity in the virtual space (Specification 7:19-20), we
find the Examiner’s position to be reasonable and sufficient to support a prima
facie case of obviousness. Therefore, the 35 U.S.C. § 103 rejection of claims 7-9,
11 and 14-23 over DeSimone and Waters is sustained.
Finally, turning to the rejection of claims 2, 10, 12 and 13, we agree with the
Examiner (Answer 15-16) and find that the claims do not recite any features
related to using fixed zones. Therefore, based on the weight of arguments
presented by Appellant (Br. 5) and the Examiner’s response, we sustain the 35
U.S.C. § 103 rejection of claims 2, 10, 12 and 13 over DeSimone, Waters and
Lambright.
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CONCLUSION
In view of the foregoing, the decision of the Examiner rejecting claims 1 and
3-6 under 35 U.S.C. § 102 and claims 2 and 7-23 under 35 U.S.C. § 103 is affirmed.
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).
AFFIRMED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )

MDS
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Application 09/785,385

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