Ex Parte McCoy et alDownload PDFBoard of Patent Appeals and InterferencesFeb 28, 201109785010 (B.P.A.I. Feb. 28, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P Alexandria, 0 Box 1450 Virginia 22313- 1450 www uspto gov 26379 7590 03/02/20 1 1 DLA PIPER LLP (US ) 2000 UNIVERSITY AVENUE APPLICATION NO. EAST PAL0 ALTO. CA 94303-2248 EXAMINER 09/785,010 02/16/2001 James McCoy 350176-991101 407 1 FILING DATE ELISCA, PIERRE E I ARTUNIT I PAPERNUMBER I FIRST NAMED INVENTOR Please find below andlor attached an Office communication concerning this application or proceeding. ATTORNEY DOCKET NO. NOTIFICATION DATE The time period for reply, if any, is set in the attached communication. CONFIRMATION NO. DELIVERY MODE Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): PatentDocketingUS-PaloAlto@ dlapiper.com 03/02/2011 ELECTRONIC PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte JAMES MCCOY and DOUGLAS BARNES Appeal 2010-003000 Application 0917 85,O 10 Technology Center 3600 Before HUBERT C. LORIN, ANTON W. FETTING, and JOSEPH A. FISCHETTI, Administrative Patent Judges. FETTING, Administrative Patent Judge. The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE" (paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-003000 Application 091785,O 10 James McCoy and Douglas Barnes (Appellants) seek review under 35 U.S.C. 5 134 (2002) of a final rejection of claims 22 and 24-38, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. 5 6(b) (2002). The Appellants invented a micropayment accounting system for enabling in-kind transactions within a network. Specification 1. An understanding of the invention can be derived from a reading of exemplary claim 22, which is reproduced below [bracketed matter and some paragraphing added]. 22. A distributed system for publishing and retrieving content in a network, comprising: [I] a plurality of computer systems connected together in a peer-to-peer fashion and having characterizing network resources including any disk space, bandwidth, and CPU cycles for performing peer-to-peer interactions across the network, wherein the network resources can be contributed to the network by one or more contributing computer systems in return for a predetermined amount of credits, wherein the 2 Our decision will make reference to the Appellants' Appeal Brief ("App. Br.," filed January 8, 2007) and Reply Brief ("Reply Br.," filed August 17, 2007), and the Examiner's Answer ("Ans.," mailed October 8, 2009), and Final Rejection ("Final Rej .," mailed January 9, 2006). Appeal 2010-003000 Application 09/785,0 10 credits are accumulated by the contributing computer systems contributing network resources to the network, and wherein the contributing computer systems can exchange the credits with other contributing computer systems for performing peer-to- peer interactions across the network using the network resources; and [2] one or more agent applications distributed across the network and associated with the computer systems for allowing the computer systems to publish content to and retrieve content from the network by initiating the peer-to-peer interactions across the network between the agent applications. The Examiner relies upon the following prior art: Saylor et al. US 6,888,929 B1 May 3,2005 Claim 22 stands rejected under 35 U.S.C. 5 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the Appellants regard as the invention. Claims 22 and 24-38 stand rejected under 35 U.S.C. 5 103(a) as unpatentable over Saylor. ISSUES The issue of whether the Examiner erred in rejecting claims 22 under 35 U.S.C. 5 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the Appellants regard as the invention turns on whether a person with ordinary skill in the art would have understood what is being claimed by the limitation "having characterizing network resources including." Appeal 2010-003000 Application 091785,O 10 The issue of whether the Examiner erred in rejecting claims 22 and 24- 38 under 35 U.S.C. 5 103(a) as unpatentable over Saylor turns on whether Saylor describes or suggests several limitations of claim 22. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Say lor 01. Saylor is directed to a system and method for generating revenue from providing pages of voice content when users input a voice code corresponding to that content. Saylor 1: 19-21. Saylor describes an architecture where one or more voice network access providers (VNAPs) connect to a plurality of users over a communications network. Saylor 14:4-6. VNAPs further connect to VPage server systems and a VCode registration system over a communications network. Saylor 14:6-10. Content is delivered to users from VNAP databases or from VPage server systems. Saylor 14:21-24. 02. Saylor describes that a user can access content corresponding to a VCode through an interactive communications device. Saylor 2:3-6. Pages consisting of groupings of content are referred to as VPages. Saylor 2:13-17. A VCode consists of multiple portions that correspond to a predetermined category, VBooks, or VPages. Appeal 2010-003000 Application 09/785,0 10 Saylor 3:26-29 and 3:39-40. Many companies can provide content and have codes assigned to that company. Saylor 4:7-10. A VCode registry returns the address of the content and if the VCode is a multi-level VCode the registry can resolve the various portions of the VCode to identify the content. Saylor 4: 19-23. 03. Various fee generating and billing methodologies may be implemented. Saylor 653-54. A user may be charged based on the duration of a call by implementing a 900 number. Saylor 654-57. A user can also be charged based on the time of the call, on a per call or per VCode basis, or on a subscription or flat fee basis. Saylor 657-63. Different fees can be assessed for different VCodes. Saylor 6:63-64. VCodes can be assigned a specific number of credits that a user purchases from the system and purchases a VCode by submitting the appropriate number of credits. Saylor 6:64-67. The per unit cost may be reduced for users who use the system more. Saylor 7:2-3. 04. A voice network access provider (VNAP) charges the user the fee for the content. Saylor 5:58-59. The VNAP shares a portion of the fee with the content display host, and in situations where the display host and content providers are the same, the content provider receives a share proportional to its contribution to the system. Saylor 5:58-67. Appeal 2010-003000 Application 09/785,0 10 ANALYSIS Claim 22 rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the Appellants regard as the invention. The Examiner found that the limitation "having characterizing network resources including.. ." is vague and indefinite because the claim 22 fails to define this limitation. Ans. 3 and 10. The Appellants contend that the Specification fully describes this limitation, network resources have been in existence as described by the prior art, and a person with ordinary skill in the art would have understood what was being claimed. App. Br. 10-13 and Reply Br. 7-8. We agree with the Appellants. The test for definiteness under 35 U.S.C. 5 112, second paragraph, is whether "those skilled in the art would understand what is claimed when the claim is read in light of the specification." Orthokinetics, Znc. v. Safety Travel Chairs, Znc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)(citations omitted). Claim 22 specifically recites that characterizing network resources includes any disk space, bandwidth, and CPU cycles for performing peer-to-peer interactions across the network. As such, a person with ordinary skill in the art would have understood what was being claimed since the claim language itself provides an adequate description of what is being claimed. The Examiner failed to set forth any specific rationale that illustrates why this limitation is vague and indefinite. As such, we find that the Examiner erred in rejecting claim 22 under 35 U.S.C. 5 112, second paragraph, as being indefinite. Appeal 2010-003000 Application 09/785,0 10 Claims 22 and 24-38 rejected under 35 U.S.C. § 103(a) as unpatentable over Saylor. The Appellants first contend that (1) Saylor fails to describe network resources can be contributed to a network by one or more contributing computer systems, as per claim 22. App. Br. 2-4 and Reply Br. 1-2. We disagree with the Appellants. Saylor describes a system where a user can access content that is provided by a content provider. FF 02. The system includes users, voice network access providers (VNAPs), VPage server systems, and a VCode registration system that are all connected over a communications network. FF 01. The VCode registration system maintains the address of the content and users can access the content from either VNAP databases or from VPage server systems of the content providers. FF 01-02. Since the content can be accessed by a server system provided by the content providers that are independent of the VNAPs, the content providers are contributing these server systems, the disk space required to store the content, and the bandwidth to transfer the content to the VNAP network. As such, Saylor describes this limitation of claim 1. The Appellants also argue that the claimed invention is distinguished from the prior art because the claimed invention keeps track of which users provide resources, content, and indexing services within the network. App. Br. 3. However, claim 22 does not require these limitations and therefore this argument is not found to be persuasive. The Appellants also contend that (2) Saylor fails to describe earning credits by contributing network resources to a network, as per claim 22. App. Br. 4-5 and Reply Br. 2-3. We disagree with the Appellants. The plain and ordinary definition of the term "credit" encompasses any benefit, Appeal 2010-003000 Application 09/785,0 10 compensation, or acknowledgement for the performance of a task. Saylor describes various fee generating and billing methodologies may be implemented for the system. FF 03. The VNAP charges the user for the content and shares a proportion of the revenue generated with the display host. FF 04. In situations where the display host and the content providers are the same entity, content provider receives a share proportional to its contribution to the system. FF 04. As such, the content providers are compensated for their contributions to the system and therefore are receiving or earning credits for their contributions to the network. The Appellants further argue that Saylor fails to describes the network resources include any of disk space, bandwidth, or CPU cycles. App. Br. 4. However, as discussed supra, Saylor describes that a content provider contributes VPage server systems that provide content to the users and therefore contribute the disk space to store the content and the bandwidth to transfer the content to the user. The Appellants further contend that (3) Saylor fails to describe a distributed system for publishing and retrieving content, as per claim 22. App. Br. 5-6 and Reply Br. 3-4. The Appellants specifically argue that the Specification defines a distributed system to consist of a group of non-alike computers that are connected together by a network and equipped with corresponding software so that the computers can coordinate their activities in a common scheme. App. Br. 5. We disagree with the Appellants. As discussed supra, Saylor describes a system that includes users, voice network access providers (VNAPs), VPage server systems, and a VCode registration system that are all connected over a communications network. FF 01. Each computer in this system includes software that enables a user to Appeal 2010-003000 Application 09/785,0 10 access content. FF 01-04. As such, Saylor describes a distributed system, even as defined by the Appellants. The Appellants additionally contend that (4) Saylor fails to describe publishing and retrieving content via peer-to-peer interactions and (5) Saylor fails to describe agent applications distributed across the network, as per claim 22. App. Br. 6-7 and Reply Br. 4-5. The Appellants specifically argue that a user must access some server to access a desired VPage and therefore Saylor must be using a client-server model instead of a peer-to- peer model. App. Br. 6. We disagree with the Appellants. Saylor describes that the address of a VPage is returned based on a submitted VCode. FF 02. A VCode can be a multi-level VCode, where the registry can resolve the various portions of the VCode to identify the content. FF 02. Since content is distributed amongst several servers and a user accesses content by accessing specific portions of the content on different servers, Saylor describes a peer-to-peer model and the use of agent applications to publish and retrieve content from the network. Although a user connects to a server to find the address of a VPage and that model resembles a client-server model, the access of content where the content is distributed in portions across several machines is descriptive of a peer-to-peer model. The Appellants further contend that (6) the Examiner has failed to set forth any evidence of a motivation to modify Saylor and (7) there is no motivation to modify Saylor. App. Br. 8-10 and Reply Br. 6-7. We disagree with the Appellants. As discussed supra, Saylor suggests that content providers are compensated for their contributions of disk space (storage of content) and bandwidth (access to content) to the VNAP network. Saylor is concerned with distributing revenue generated by the Appeal 2010-003000 Application 09/785,0 10 VNAP and collected from users to display hosts and content providers for their contributions to the network. FF 04. Therefore, it would have been obvious to a person with ordinary skill in the art to measure contributions by disk space, bandwidth, or CPU cycles since such metrics are commonly used in the computer networking arts. Saylor suggests a content provider contributes at least one of disk space, bandwidth, or CPU cycles and a person with ordinary skill in the art would have found it obvious compensate content providers based on any of these metrics in order to fairly distribute revenue. As such, a person with ordinary skill in the art would have found it obvious to modify Saylor to include these features. CONCLUSIONS OF LAW The Examiner erred in rejecting claim 22 under 35 U.S.C. 5 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the Appellants regard as the invention. The Examiner did not err in rejecting claims 22 and 24-38 under 35 U.S.C. 5 103(a) as unpatentable over Saylor. DECISION To summarize, our decision is as follows. The rejection of claim 22 under 35 U.S.C. 5 1 12, second paragraph, as being indefinite for failing to particularly point out and distinctly Appeal 20 10-003000 Application 091785,O 10 claim the subject matter which the Appellants regard as the invention is not sustained. The rejection of claims 22 and 24-38 under 35 U.S.C. 5 103(a) as unpatentable over Saylor is sustained. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R. 5 1.136(a)(l)(iv) (2007). AFFIRMED mev Address DLA PIPER LLP (US ) 2000 UNIVERSITY AVENUE EAST PAL0 ALTO CA 94303-2248 Copy with citationCopy as parenthetical citation