Ex Parte Vincent

Board of Patent Appeals and Interferences

Mar 2, 2010

09850390 (B.P.A.I. Mar. 2, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte Christopher R. Vincent
____________________

Appeal 2008-001741
Application 09/850,3901
Technology Center 2400
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Decided: March 3, 2010
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Before JAMES D. THOMAS, JAY P. LUCAS, and STEPHEN C. SIU,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed May 7, 2001. The real party in interest is International
Business Machines Corporation.
Appeal 2009-001741
Application 09/850,390

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1 to 31 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

We reverse.

Appellant’s invention relates to a method and system for sending
requested information to a node in a network from another node in a way to
secure the identity of the requesting and the answering node. In the words of
Appellant:
One embodiment of the present invention
provides a method for responding to a resource
request from a requesting user node in a network
of user nodes. According to the method, a response
to the resource request is received at a first user
node of the network, and it is determined whether
or not to send the response back to the requesting
user node. When it is determined not to send the
response to the requesting user node, the response
is forwarded to a second user node of the network
through a direct connection. When it is determined
to send the response to the requesting user node,
the response is sent back to the requesting user
node. In a preferred embodiment, the
determination of whether or not to send the
response to the requesting user node is a random
decision made by the first user node.

(Spec 5, l. 21 to Spec 6, l. 4).

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Claim 1 is exemplary:
1. A method for responding to a resource
request made by a requesting user node in a
network of user nodes, said method comprising the
steps of:

receiving, via publication from a publish-
subscribe server node, the resource request at a
first user node of the network;

receiving, at the first user node from one of
the user nodes through a direct connection, a
response to the resource request;

determining at the first user node whether to
send the received response from the first user node
to the requesting user node, or to send the received
response from the first user node to another of the
user nodes;

forwarding the received response from the
first user node to a second user node of the
network, when it is determined to send the
received response from the first user node to
another of the user nodes; and

sending the received response from the first
user node to the requesting user node, when it is
determined to send the received response from the
first user node to the requesting user node.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bracho US 6,021,443 Feb. 01, 2000
Jacobs US 6,732,237 May 04, 2004
de Vries US 5,819,032 Oct. 06, 1998
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Appeal 2009-001741
Application 09/850,390

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1 to 31 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Bracho in view of Jacobs and further in view of de Vries.

Groups of Claims:
The claims are argued as a whole, with claim 1 representative. See
37 C.F.R. § 41.37 (c) (vii).

Appellant contends that the claimed subject matter is not rendered
obvious by Bracho, Jacobs and de Vries for failure of the references to teach
claimed limitations. The Examiner contends that each of the claims is
properly rejected.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this opinion. Arguments that Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
Jacobs and the other references teach forwarding a response from one user
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node in a conditional manner to the requesting node or another node as
claimed.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant has invented a system and method for one node on a network
to request resources from another node on a network with enhanced
privacy (Spec. 11, middle). The network is comprised of nodes that
have direct connections each to its neighbors, and all nodes have the
ability to send and receive calls to a publish/subscription server (Fig. 10,
server 402; Spec 10 bottom, spec 11, top). Privacy of a requesting node
is enhanced by forwarding a request for a resource (e.g. a stock quote) to
a random number of nodes before the request is sent to the server for
publication (Fig. 7; Spec. 12, top). Privacy of the sending node is
enhanced by similarly forwarding the response to the request to a number
of nodes before directly sending the response to the requesting node (Fig
10; Spec 14). Thus, each of the nodes transferring the response decides
whether to send the response to the requesting node or to make it travel
further on to another node before it goes back to the requesting node
(Spec 14, bottom).
2. Jacobs teaches supplying data from a data server to a user using multi-
tiered caching (Col. 2, ll. 39 to 47). Between the data server and the user
is a cache server (Fig. 1, 102) that holds a limited amount of previously
requested data (Col. 9, ll. 3 to 12). The cache server must make a
determination whether to respond itself to a request for data, returning its
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cached data to the requesting node (user), or to pass on the request to the
data server (Col. 9; ll. 38 to 52).
PRINCIPLES OF LAW

Appellants have 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) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).

ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented a prima facie case for the rejections of Appellant’s
claims under 35 U.S.C. § 103 on pages 4 to 14 of the Examiner’s Answer.
In opposition, Appellant presents a number of arguments.

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Arguments with respect to the rejection
of claims 1 to 31
under 35 U.S.C. § 103(a) [R1]

The Examiner has rejected claims 1 to 31 for being obvious over
Bracho, Jacobs and de Vries. Each of these patent references is relied upon
to teach several of the representative claim 1’s limitations (Ans. 4 to 6).
Appellant has presented three arguments, but only one argument need be
considered for disposition of this appeal (App. Br. 12, bottom). The merits
of the other arguments (App. Br. 8; 10) are simply not considered in this
opinion.
Appellant argues, and the claim requires, that when it is determined to
send the received response from the first user node to another of the user
nodes, “the received response is forwarded from one user node to a user
node other than the requesting user node.” (App. Br. 13, bottom) (emphasis
omitted). The Examiner relies upon Jacobs for this teaching (Ans. 5,
middle). Appellant argues that Jacobs teaches a cache server either sending
a request for data on to the data server or sending the requested content to
the requesting user (App. Br. 13, bottom). We agree that this teaching of
Jacobs is different from, and does not render obvious, the noted part of the
claim limitation. There is no determination concerning where to send a
received response and, based on that determination, forwarding a response to
another of the user nodes not the requesting node.
As Jacobs is relied upon in the rejection of all the claims, we find that
Appellant has demonstrated error in the rejection. Neither de Vries nor
Bracho supply the required teaching.

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CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in rejecting claims 1 to 31.

DECISION
The Examiner’s rejection of claims 1 to 31 is Reversed.

REVERSED

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