Ex Parte Yeager et al

Board of Patent Appeals and Interferences

Sep 21, 2010

10284917 (B.P.A.I. Sep. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM J. YEAGER, and RITA Y. CHEN
____________

Appeal 2009-005782
Application 10/284,917
Technology Center 2400
____________

Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-51. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We Affirm-In-Part.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 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.

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BACKGROUND
Appellants’ invention is directed to implementing mobile agents in
peer-to-peer networks. (Spec. 1).
Claim 1 is illustrative:
1. A peer-to-peer network system, comprising:

a plurality of peer nodes;

an initiating peer node configured to launch a mobile agent in the
peer-to-peer network, wherein the mobile agent includes an itinerary
indicating a subset of the plurality of peer nodes to be visited by the mobile
agent, wherein the initiating peer node and the subset of the plurality of peer
nodes are member peer nodes in a group of peer nodes in the peer-to-peer
network;

wherein the mobile agent is configured to visit one or more of the
subset of the plurality of peer nodes indicated by the itinerary and to provide
indications of the one or more visited peer nodes to the initiating peer node;
and

wherein the initiating peer node is further configured to update
presence information indicating presence of member peer nodes in the group
of peer nodes in accordance with the indications of the one or more visited
peer nodes provided by the mobile agent.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Chao US 5,964,837 Oct. 12, 1999
Walsh US 6,233,601 B1 May 15, 2001
Alapuranen US 7,016,306 B2 Mar. 21, 2006
Olson US 7,043,522 B2 May 9, 2006
Lauzon US 7,050,861 B1 May 23, 2006
Meyer US 2003/0037097 A1 Feb. 20, 2003
Costa-Requena US 2004/0071099 A1 Apr. 15, 2004

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Appellants appeal the following rejections:
1. Claims 1, 2, 4-8, 12, 14, 15, 17, 18, 20, 22, 23, 25-30, 35, 37, 38, 40-45
and 50 under 35 U.S.C. § 103(a) as unpatentable over Walsh, Meyer,
Lauzon, and Chao.
2. Claims 3, 16, 24, and 39 under 35 U.S.C. § 103(a) as unpatentable over
Walsh, Meyer, Lauzon, Chao, and Costa-Requena.
3. Claims 9-11, 19, 31-34, and 46-49 as unpatentable over Walsh, Meyer,
Lauzon, Chao, and Alapuranen.
4. Claims 13, 21, 36, and 51 as unpatentable over Walsh, Meyer, Lauzon,
Chao, and Olson.

APPELLANTS’ CONTENTIONS
Appellants’ contentions are addressed in the analysis below.

ISSUES
1. Under § 103, did the Examiner err in combining the cited references?
2. Under § 103, did the Examiner err in determining that the cited
references would have taught or suggested a “mobile agent is configured to
visit one or more of the subset of the plurality of peer nodes indicated by the
itinerary and to provide indications of the one or more visited peer nodes to
the initiating peer node?” (Claim 1).
3. Under § 103, did the Examiner err in determining that the cited
references would have taught or suggested a “mobile agent is further
configured to store the indications of the one or more visited peer nodes as a
payload of the mobile agent?” (Claim 4).
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4. Under § 103, did the Examiner err in determining that the cited
references would have taught or suggested “the initiating peer node is further
configured to update presence information indicating presence of member
peer nodes in the group of peer nodes in accordance with indications of the
one or more visited peer nodes provided by the mobile agent?” (Claim 1).
5. Under § 103, did the Examiner err in determining that the cited
references would have taught or suggested an “initiating peer node
configured to remove from the presence information indications that one or
more of the subset of the plurality of peer nodes not visited by the mobile
agent are present in the group of peer nodes?” (Claim 3).
6. Under § 103, did the Examiner err in determining that the cited
references would have taught or suggested an initiating peer node configured
to “determine a first peer node indicated by the itinerary that is available to
receive the mobile agent, and send the mobile agent to the first peer node?”
(Claim 9).
7. Under § 103, did the Examiner err in determining that the cited
references would have taught or suggested “each of the subset of the
plurality of peer nodes indicated by the itinerary is configured to receive the
mobile agent, select a target peer node that is available to receive the mobile
agent from unvisited peer nodes in the subset of the plurality of nodes
indicated by the itinerary; and send the mobile agent to the target peer
node,” as recited in dependent claim 10.
8. Under § 103, did the Examiner fail to provide a prima facie rejection
of claims 13, 21, 36, and 51?

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FACTUAL FINDINGS
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows.
Additional findings of fact may appear in the Analysis infra.

ANALYSIS
At the outset, Appellants contend that the Examiner did not provide a
prima facie rejection of claims 2, 6-8, 11, 12, 15, 20, 23, 35, 38, and 50.
(App. Br. 21 and 33). We agree because the Examiner did not address the
additional limitations recited in these dependent claims. Accordingly we
reverse the § 103 rejections of claims 2, 6-8, 11, 12, 15, 20, 23, 35, 38, and
50.

Issue 1

We decide the question whether the Examiner erred in combining the
references. Appellants contend: (1) Chao teaches away from the claimed
invention, (App. Br. 18) and, (2) the Examiner did not provide a proper
motivation to combine the references. (Id.).2
With regards to contention (1), Appellants assert that Chao requires
stationary agents. Therefore, according to Appellants, Chao teaches away
from mobile agents as recited in the present claims. However, we note that

2 Appellants’ arguments regarding the combinability of the references is
repeated for all grounds of rejection. We will address the combinability
argument here which is applicable to each ground of rejection.
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the Examiner relied on Chao to show that updating presence information
indicating the presence of member nodes in the group was known in the art.
(See Ans. 5, 13).
Further, we find Chao does not teach away from mobile agents by
disclosing stationary agents because Chao does not disavow or discourage
the use of mobile agents.3 Therefore, we find Chao does not teach away
from the present invention.
With regards to contention (2), Appellants assert that the Examiner
has not provided an “actual reason” for combining or modifying the
teachings of Walsh, Meyer, and Lauzon, because the Examiner’s proffered
motivation for combining the references is unsupported by any evidence of
record. (App. Br. 19-20).
We note that the Examiner is not required to identify a motivation to
combine the references from the references themselves. “[A]ny need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” In re ICON Health and Fitness Inc., 496 F.3d 1374,
1380 (Fed. Cir. 2007) (quoting KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
420 (2007)) (emphasis added).

3 A reference may be said to “teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed.
Cir. 2006) (citations and internal quotation marks omitted). See also In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (noting that merely disclosing
more than one alternative does not teach away from any of these alternatives
if the disclosure does not criticize, discredit, or otherwise discourage the
alternatives).
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This reasoning is applicable here. The Examiner has provided a
rationale for combining Chao with Walsh, Meyer, and Lauzon (Ans. 5)
which has not been directly rebutted by Appellants’ arguments. On this
record, Appellants have not shown error in the Examiner’s reasoning that an
artisan would have found it obvious to combine the references to “increase
efficiencies for [the] communication network”, which “can recognize [the]
current status of [the] network elements” and “adjust [the] resource
allocation/utilization for resource saving purposes.” (Id.).
Moreover, we are of the view that Appellants’ purported improvement
over the prior art represents no more than the predictable use of prior art
elements according to their established functions, and thus would have been
obvious to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc.
550 U.S. 398, 417(2007) (“when a patent ‘simply arranges old elements with
each performing the same function it had been known to perform’ and yields
no more than one would expect from such an arrangement, the combination
is obvious.”) (citing Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976).
With respect to the issue of hindsight, in KSR the U.S. Supreme Court
reaffirmed that “[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of arguments reliant upon ex
post reasoning.” KSR, 550 U.S. at 421. See also Graham v. John Deere
Co., 383 U.S. 1, 36 (1966). Nevertheless, in KSR the Supreme Court also
qualified the issue of hindsight by stating that “[r]igid preventative rules that
deny factfinders recourse to common sense, however, are neither necessary
under our case law nor consistent with it.” KSR, 550 U.S. at 421.

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In KSR, the Supreme Court further stated:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.

KSR, 127 S. Ct. at 417.

This reasoning is applicable here. For the aforementioned reasons, we
find the Examiner did not err in combining the references of record.

Issues 2-3
We decide the question whether the cited combination of references
would have taught or suggested a “mobile agent is configured to visit one or
more of the subset of the plurality of peer nodes indicated by an itinerary,
and to provide indications of the one or more visited peer nodes to the
initiating peer node,” as recited in representative claim 1. We also decide
related Issue 3, as discussed infra.
Appellants essentially argue that the Examiner’s reliance on Chao is
in error (as disclosing a mobile agent providing indications of one or more
visited peer nodes) because Chao is directed to stationary agents. (App. Br.
14-15). Therefore, according to Appellants, Chao fails to teach or suggest
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providing indications of one or more visited peer node to an initiating peer
node. We do not find this argument persuasive for the reasons discussed
infra.4
We note that the Examiner relied on Walsh and Lauzon to disclose
mobile agents (Ans. 3-4), which is not disputed by Appellants. Chao was
relied upon to disclose indicating presence of member peer nodes in the
group of peer nodes in accordance with the indications of the one or more
visited peer nodes. (See Ans. 4; Claim 1). One cannot show nonobviousness
by attacking references individually where the rejections are based on
combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Therefore, we do not find Appellants’ singular attack on
Chao to be persuasive.
Appellants further contend that the “test results” disclosed by Lauzon
are not “indications of one or more visited peer” (or indications of the one or
more visited peer nodes as a payload in a mobile agent) as recited in
representative claims 1, 4, 27, and 42. (App. Br. 23; Reply Br. 3). We
disagree.5

4 We addressed Appellants’ arguments regarding Chao purportedly
“teaching away” from the claimed invention supra.
5 Appellants do not contest the Examiner’s findings regarding the additional
limitations of claim 4 and instead rely on the arguments presented for claim
1. (Reply Br. 7).
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The Examiner broadly and reasonably construed the “test results” of
Lauzon as “indications,” because a test result is an indication (i.e., a
showing of the visited node’s availability) of the visited node in question.
(See Lauzon col. 18, ll. 45-58). Therefore, we do not find Appellants’
argument persuasive.
Based on the record before us, we find the Examiner did not err in
determining that the cited references would have taught or suggested a
“mobile agent is configured to visit one or more of the subset of the plurality
of peer nodes indicated by the itinerary, and to provide indications of the one
or more visited peer nodes to the initiating peer node.” (Representative
Claim 1; Issue 2).
For reasons discussed above, we also find the Examiner did not err in
determining that the cited references would have taught or suggested “the
mobile agent is further configured to store the indications of the one or more
visited peer nodes as a payload of the mobile agent.” (Claims 4, 17, 25, 40
and representative claims 27 and 42; Issue 3).

Issue 4
We decide the question whether the cited combination of references
would have taught or suggested that “the initiating peer node is further
configured to update presence information indicating presence of member
peer nodes in the group of peer nodes in accordance with indications of the
one or more visited peer nodes provided by the mobile agent.” (Claim 1).
Again, Appellants essentially argue that the Examiner’s use of Chao is
misplaced because Chao is directed to stationary agents. (App. Br. 16-17).
We fully discussed Appellants’ arguments with respect to Chao supra,
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which are applicable in this instance. Therefore, we find the Examiner did
not err in determining that the cited combination of references would have
taught or suggested that “the initiating peer node is further configured to
update presence information indicating presence of member peer nodes in
the group of peer nodes in accordance with indications of the one or more
visited peer nodes provided by the mobile agent.” (Claim 1).
Based on our findings with respect to Issues 1-4, we find the
Examiner did not err in rejecting representative claim 1. Accordingly we
sustain the Examiner’s § 103 rejection of representative claim 1 and claims
5, 14, 18, 22, 26, 37, and 41 which fall therewith.6 For the reasons discussed
supra, we also sustain the Examiner’s §103 rejection of claims 4, 17, 25, and
40 and claims 27-30 and 42-45.

Issue 5 (2nd § 103 rejection)
We decide the question whether the cited references would have
taught or suggested an “initiating peer node configured to remove from the
presence information indications that one or more of the subset of the
plurality of peer nodes not visited by the mobile agent are present in the
group of peer nodes,” as recited in representative claim 3.
Appellants contend that the “member list” of Costa-Requena is not the
same as the claimed “presence information” and that removing “user identity
records” is done in order to track the presence “members” in the conference.

6 Based on Appellants’ arguments in the Appeal Brief (14 et seq.), we decide
the appeal of claims 5, 14, 18, 22, 26, 37, and 41 on the basis of
representative claim 1. We decide the appeal of claims 28-30 and 43-45 on
the basis of representative claims 27 and 42, respectively. See 37 C.F.R.
§41.37(c)(1)(vii).
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(App. Br. 25). We disagree. We agree with and adopt the Examiner’s
findings with respect to dependent claim 3. (Ans. 17-18). Moreover, we
agree with the Examiner that “modifying the list” (Costa-Requena) includes
adding and/or removing members from the member list (i.e., presence
information). (Ans. 18).
Based on the record before us, we find the Examiner did not err in
determining that the cited references would have taught or suggested an
initiating peer node is further configured to remove from the presence
information indications that one or more of the subset of the plurality of peer
nodes not visited by the mobile agent are present in the group of peer nodes.
Accordingly, we sustain the Examiner’s § 103 rejection of representative
claim 3 as well as claims 16, 24, and 39 which fall therewith. 7

Issue 6 (3rd § 103 rejection)
We decide the question whether the cited references would have
taught or suggested an “initiating peer node is further configured to
determine a first peer node indicated by the itinerary that is available to
receive the mobile agent, and send the mobile agent to the first peer node,”
as recited in representative claim 9.
Appellants contend that the cited references do not teach or suggest
“determining a first peer indicated by the itinerary that is available to receive
the mobile agent.” (App. Br. 30). We agree with and adopt the Examiner’s
findings with respect to representative claim 9. (Ans. 9-10). Moreover, we

7 Based on Appellants’ arguments in the Appeal Brief (24 et seq.), we decide
the appeal of claims 16, 24, and 39 on the basis of representative claim 3.
See 37 C.F.R. §41.37(c)(1)(vii).
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find unpersuasive Appellants’ individual attack on Alapuranen. Appellants'
arguments are merely conclusory statements. (See Reply Br. 11). For
example, the Examiner relied on Walsh, Meyer, Lauzon, and Chao, as well
as Alapuranen in rejecting claim 9, while Appellants’ arguments are directed
to Alapuranen and do not address the combined teachings of the references.
(Ans. 9-10).
Based on the record before us, we find that the Examiner did not err in
determining that the cited references would have taught or suggested
“determining a first peer indicated by the itinerary that is available to receive
the mobile agent.” Accordingly, we affirm the rejection of representative
claim 9, as well as claims 19, 31-34, and 46-49 which fall therewith.8

Issue 7 (Claim 10 - 3rd § 103 rejection)
We decide the question whether the cited references teach or suggest
“each of the subset of the plurality of peer nodes indicated by the itinerary is
configured to receive the mobile agent, select a target peer node that is
available to receive the mobile agent from unvisited peer nodes in the subset
of the plurality of nodes indicated by the itinerary; and send the mobile agent
to the target peer node,” as recited in dependent claim 10.
We note that Appellants essentially repeat the Examiner’s rejection
and address the single reference Alapuranen in isolation. We do not find
Appellants' arguments persuasive to show error in the Examiner’s findings
of fact. See 37 C.F.R. § 41.37(c)(vii)(“A statement which merely points out

8 Based on Appellants’ arguments in the Appeal Brief (28 et seq.), we decide
the appeal of claims 19, 31-34, and 46-49, on the basis of representative
claim 9. See 37 C.F.R. §41.37(c)(1)(vii).
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what a claim recites will not be considered an argument for separate
patentability of the claim.”). We note again that the Examiner’s rejection is
based on the combination of cited references.
Specifically, in the Brief, Appellants do not make any arguments to
distinguish the limitations of claim 10 from the portions of the cited
references that were relied on in the Examiner’s rejection of claim 10.
On this record, we agree with and adopt the Examiner’s findings with
respect to the rejection of claim 10. (Ans. 9-10). Accordingly, we sustain the
Examiner’s § 103 rejection of dependent claim 10.

Issue 8 (4th § 103 rejection)
We decide the question whether the Examiner provided a prima facie
case for rejecting claims 13, 21, 36, and 51.
We agree with and adopt the Examiner’s findings with respect to
these claims. As noted by the Examiner (Ans. 20) and acknowledged by
Appellants (App. Br. 35-36), the Examiner’s use of Arora was a
typographical error, as the Examiner intended to refer to Olson instead of
Arora. (Ans. 20). Further, although the Examiner admitted that Walsh,
Meyer, Lauzon, and Chao do not explicitly disclose forming groups of peer
nodes, the thrust of the Examiner’s rejection concludes that doing so would
have been obvious to one skilled in the art in light of Olson. (Ans. 11, 20).
Thus, we find that the Examiner has provided a prima facie rejection of
claim 13. Appellants have not rebutted the Examiner’s determination. We
observe that Appellants do not address this fourth ground of rejection in the
Reply Brief.
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Based on the record before us, we find that the Examiner did provide
a prima facie case for rejecting representative claim 13 that has not been
rebutted by Appellants. Therefore, we sustain the Examiner’s § 103
rejection of claim 13 as well as claims 21, 36, and 51, which fall therewith.9

DECISION
We reverse the Examiner’s § 103 rejections of claims 2, 6-8, 11, 12,
15, 20, 23, 35, 38, and 50.
We affirm the Examiner’s § 103 rejections of claims 1, 3-5, 9, 10, 13,
14, 16-19, 21, 22, 24-34, 36, 37, 39-49, and 51.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2009).

ORDER
AFFIRMED-IN-PART

9 Based on Appellants’ arguments in the Appeal Brief (28 et seq.), we decide
the appeal of claims 21, 36, and 51 on the basis of representative claim 13.
See 37 C.F.R. §41.37(c)(1)(vii).
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