Ex Parte Reynolds

Patent Trial and Appeal Board

Apr 6, 2014

12164453 (P.T.A.B. Apr. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FRANKLIN REYNOLDS
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Appeal 2012-000475
Application 12/164,453
Technology Center 2400
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Before: HUBERT C. LORIN, ANTON W. FETTING, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-27. We have jurisdiction under 35
U.S.C. § 6(b).

BACKGROUND
Appellant’s invention relates generally to “anonymous sharing of
information.” (Spec., para. [0001]).
Claim 1 is illustrative:
1. A method comprising:
receiving, at a first node of an anonymity group, an input
message associated with a request provider external to
the anonymity group;
identifying whether the input message includes a request or a
response to the request and, if the input message includes
the request, further identifying a source of the input
message; and
causing, at least in part, transmission of an output message;
wherein causing, at least in part, transmission of the output
message comprises the output message including the
request and the output message being caused, at least in
part, to be transmitted to a second node of the anonymity
group, when the input message includes the request and
the source of the input message is identified as the
request provider;
wherein causing, at least in part, transmission of the output
message comprises the output message including the
response and the output message being caused, at least in
part, to be transmitted to a third node of the anonymity
group, when the input message includes the request and
the source of the input message is identified as a node of
the anonymity group; and
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wherein causing, at least in part, transmission of the output
message comprises the output message including the
response, when the input message includes the response.

Appellant appeals the following rejections:
Claims 1-8 are rejected under 35 U.S.C. § 101 as reciting ineligible
subject matter.
Claims 1-27 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Yamamura (US 2007/0274489 A1, pub. Nov. 29, 2007) and Buckley
(US 2007/0260739 A1, pub. Nov. 8, 2007).
We AFFIRM.

ANALYSIS
Patentable Subject Matter of Claims 1-8
We are not persuaded by Appellant’s argument that claim 1 recites
patentable subject matter, because the recited method is “tied to an
apparatus, namely the recipient node.” (App. Br. 7; see also Reply Br. 2).
This is based on the assertion that a node “is inherently a machine or
apparatus.” (App. Br. 8).
The term “node” is not explicitly defined in the Specification, but is
described by example as encompassing “a mobile or fixed terminal (e.g.,
user terminal 10), a computer, a server, a software application, an
application accessed using a browser or other front-end application, or the
like.” (Spec., para. [0027]). The examples thus encompass a general
purpose computer, which, by itself, would be insufficient to meet the
“particular machine” prong of the machine-or-transformation test. See
Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972).
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Instead, we construe “node” according to an ordinary and customary
meaning, as defined by Merriam Webster’s Collegiate Dictionary (10th ed.),
as “a place where lines in a network cross or meet.” Available at
http://www.merriam-webster.com/dictionary/node. The term, therefore,
could encompass a human social network where a node represents where
different lines of communication between people intersect. The claim,
therefore, could read on receiving and forwarding a message to different
groups, where the identity of the source may be changed, as well as
identifying whether the message contains particular content that may be
forwarded. As such, the claim describes an abstract mental process of
human gossip, with the added insignificant extra-solution activity of
receiving and outputting. We agree with the Examiner that claimed method
fails the machine-or-transformation test (Ans. 9-10), and Appellant has not
set forth any additional evidence in support of its assertion that claim 1
recites patentable subject matter.
Therefore, we sustain the rejection of claim 1, and dependent claims
2-8 that are not argued separately (see App. Br. 8).
Obviousness Rejection of Claims 1-27
Appellant argues independent claims 1, 9, 17, and 25, which
encompasses all the independent claims, together. We select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii).
We are not persuaded by Appellant’s argument of error because
Buckley “does not teach, suggest or disclose a first node, a second node or a
third node of an anonymity group, as . . . claimed in independent claims 1, 9,
17 and 25.” (App. Br. 9, see also Reply Br. 3). The Examiner relies on
Buckley as disclosing an “anonymous member being a member of an
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anonymous group and receiving requests from an external node” (Ans. 6),
and finds the first, second, and third nodes in Yamamura (Ans. 5), which
Appellant does not dispute. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
We are not persuaded by Appellant’s argument that Buckley fails to
disclose “receiving, at a first node, requests from an external node.” (App.
Br. 9). The argument fails because it is inapposite; the claim does not recite
receiving requests from an “external node,” but instead recites “receiving . . .
an input message associated with a request provider external to the
anonymity group” (claim 1).
We are not persuaded by Appellant’s argument that Buckley does not
disclose “receiving, at a first node of an anonymity group, an input message
associated with a request provider external to the anonymity group” recited
in claim 1, because:
Appellant respectfully disagrees with the Examiner’s
assertions that the SIP registrar device of Buckley et al. can
reasonably be considered to correspond to the claimed request
provider external to the anonymity group. In Buckley et al. a
node is a functional or physical entity, identified typically by an
IP address (paragraph [0033] of Buckley et al.). Further,
communications between user agents are carried out by routing
data packets that contain data through successive ones of the
nodes.
(Reply Br. 4).
To the extent that this argument asserts that Buckley does not disclose
receiving requests from an “external node,” we find the argument
unpersuasive for the same reasons above.
Furthermore, the Examiner finds that Yamamura discloses “receiving,
at a first node of an anonymity group, an input message associated with a
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request provider external to the anonymity group” (claim 1) (Ans. 4-5)
(citing Yamamura, para. [0026]), but also states Yamamura does not
disclose “the anonymous member being a member of an anonymous group
and receiving requests from an external node” (Ans. 6). Yamamura
discloses a method to prevent spamming by “message transmission from a
third party” (para. [0026]). We interpret this to mean that the system
receives requests associated with a request provider external to the
anonymity group, because the third-party messages are from someone
external to the anonymity group. See, for example, Yamamura, para. [0193].
As a result, we find Buckley is cumulative.
We are not persuaded of error by Appellant’s argument there is “no
apparent motivation to modify” Yamamura, because Yamamura does not
suggest, and there is “no teaching or advantage to combine the references to
arrive at the invention.” (App. Br. 10). To the extent Appellant seeks an
explicit suggestion or motivation in the reference itself, this is no longer the
law in view of the Supreme Court’s recent holding in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007). In addition, Yamamura (para.
[0002]) and Buckley (para. [0021]) are directed to common problems using
anonymous identifies for electronic communications, such that their
combination is reasonable for “ensuring communication privacy” (Ans. 6)
(citing Buckley, para. [0075]).
For these reasons, we sustain the rejection under 35 U.S.C. § 103(a) of
claim 1, as well as claims 2-27 that are not separately argued (App. Br. 11).

DECISION
We AFFIRM the rejection under 35 U.S.C. § 101 of claims 1-8.
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We AFFIRM the rejection under 35 U.S.C. § 103(a) of claims 1-27.
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
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