Ex Parte McCoy et al

Board of Patent Appeals and Interferences

Feb 28, 2011

09785010 (B.P.A.I. Feb. 28, 2011)

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
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