International Business Machines Corporation

Patent Trials and Appeals Board

Oct 23, 2020

2019003409 (P.T.A.B. Oct. 23, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/077,223 03/22/2016 Graham C. Charters AU920150038US1 8280
11449 7590 10/23/2020
IBM Corporation - Endicott Drafting Center
Richard Lau
2455 South Road
M/S P386, Bldg. 008-2
Poughkeepsie, NY 12601
EXAMINER
CHANG, TOM Y
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
10/23/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GRAHAM C. CHARTERS, BRET W. DIXON,
BENJAMIN T. HORWOOD, ALEXANDER H. POGA, and
MARK A. SHEWELL

Appeal 2019-003409
Application 15/077,223
Technology Center 2400

Before JEAN R. HOMERE, JAMES B. ARPIN, and NABEEL U. KHAN,
Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s rejection of claims 8–20, all of the pending claims.2 Appeal
Br. 1. Claims 1–7 are canceled. Claims App. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 We refer to the Specification filed Mar. 22, 2016 (“Spec.”); the Final
Office Action, mailed June 12, 2018 (“Final Act.”); the Appeal Brief, filed
Nov. 7, 2018 (“Appeal Br.”); and the Examiner’s Answer, mailed Jan. 23,
2019 (“Ans.”).
2 “Appellant” refers to the “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies International Business Machines
Corporation, as the real party-in-interest. Appeal Br. 2.
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II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to methods
and systems for hosting a program extending the availability of shared
content between mobile computing devices (101) in mobile ad hoc network
(MANET) (100) thereby connecting the computing devices without
requiring a fixed infrastructure when they come within range of each other,
and disconnecting them when they move out of range. Spec. ¶ 3.
Figure 1, reproduced and discussed below, is useful for
understanding the claimed subject matter:

Figure 1 above illustrates MANET (100) including network (120)
interconnecting mobile computing devices (101), each containing hosting
program (110) and repository (114) containing shared content. Id. ¶¶ 8–17.

In particular, upon receiving a host determination request, computing
devices (101) are polled regarding their hosting capabilities (e.g., average
time device stays/exits the network, amount of available storage space,
battery life) to assess their visibility for hosting shared content. Id. ¶¶ 32–40.
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Based on responses received from the polled computing devices, the
shared content is transferred to the computing device with the optimal
hosting capabilities. Id.
Claims 8 and 15 are independent. Claim 8, reproduced below with
disputed limitations emphasized, is illustrative:
8. A computer program product for a hosting program extending the
availability of shared content, the computer program product
comprising:
one or more computer readable storage media; and
program instructions stored on the one or more computer
readable storage media, the program instructions comprising:
program instructions to receive an indication to
determine a device to host at least one shared content found on
a first device, wherein the first device is connected to a
network, and wherein the network includes two or more
devices;
program instructions to transmit to each device of the two
or more devices connected to the network, a request to host the
at least one shared content found on the first device;
program instructions, responsive to transmitting the
request, to receive a response to host from at least one device of
the two or more devices connected to the network;
program instructions to determine an optimal device of the at
least one device to host the at least one shared content; and
program instructions to transmit the at least one shared
content to the optimal device.
Appeal Br. 23 (Claims App.).

Appeal 2019-003409
Application 15/077,223

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III. REFERENCES
The Examiner relies upon the following references.3
Name Reference Date
Burr US 2004/0203797 A1 Oct. 14, 2004
Mehr US 2010/0274982 A1 Oct. 28, 2010
Hyde US 2014/0337842 A1 Nov. 13, 2014
Ford US 2017/0041296 A1 Feb. 9, 2017

IV. REJECTIONS4
The Examiner rejects claims 8–20 as follows:
Claims 8–20 are rejected on the ground of double patenting as
unpatentable over claims 1–7 of U.S. Patent Application No. 15/164,256.
Final Act. 2–4.
Claims 8, 9, 11, 12, 14–16, 18, and 19 are rejected under 35 U.S.C.
§ 102 as anticipated by Burr. Final Act. 6–9.
Claims 10 and 17 are rejected under 35 U.S.C. § 103 as unpatentable
over the combined teachings of Burr, Mehr, and Hyde. Final Act. 9–13.
Claims 13 and 20 are rejected under 35 U.S.C. § 103 as unpatentable
over the combined teachings of Burr and Ford. Final Act. 13–14.

3 All reference citations are to the first named inventor only.
4 The Examiner withdrew the 35 U.S.C. § 101 rejections previously entered
against claims 8–20 in the Final Action. Ans. 3.
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V. ANALYSIS
We consider Appellant’s arguments in the order they are presented in
the Appeal Brief, pages 14–21.5
1. Double Patenting Rejection
Because U.S. Patent Application No. 15/164,256 was abandoned on
September 25, 2018, and is no longer co-pending, the Examiner’s double
patenting rejection of claims 8–20 is moot.
2. Anticipation Rejection
Appellant argues that the Examiner erred in finding that Burr
describes determining an optimal device to host shared content, as recited in
independent claim 8. Appeal Br. 14. In particular, Appellant argues that
Burr’s disclosure of using various cost metrics (e.g., nearest location, least
cost metrics) for determining the most appropriate path through a network to
share content between two computing devices does not describe the disputed
claim limitations. Id. at 15–16 (citing Burr ¶¶ 46, 60).
Appellant’s arguments are persuasive of reversible Examiner error.
Burr discloses a MANET for sharing resources (e.g., processing/
storage/input-output capacity, information via common protocol) between
two or more mobile computing devices. Burr, Abst., ¶¶ 34, 41. According to
Burr, the devices may independently collect climate information from their
respective locations, and they may interrogate one another to gather
latency/speed of delivery, buffering information, error correction used to

5 We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Arguments not made are waived. See
37 C.F.R. § 41.37(c)(1)(iv) (2014).
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establish communication. Id. ¶¶ 39, 42. Further according to Burr, a device
is assigned dynamically to a closest device that offers storage services, and
data is communicated between any two devices based on the least cost path.
Id. ¶¶ 46, 60.
We do not agree with the Examiner’s finding that Burr’s disclosure of
selecting a device for storage location based on its nearest proximity to
another device or selecting the most cost effective path to route data between
two devices describes determining an optimal device for hosting shared
content, as required by the claim. Ans. 11 (citing Burr ¶¶ 46, 60). Burr is not
concerned with determining one of the computing devices in the MANET to
serve as a host. Instead, Burr is concerned with establishing efficient
communication between the devices. Although, one of ordinary skill being
apprised of all the information collected from the computing devices would
have been able to determine therefrom an optimal device under an
obviousness standard, such a determination is not readily ascertainable from
Burr’s disclosure under an anticipation standard.
Because Appellant has shown at least one reversible error in the
Examiner’s anticipation rejection of independent claim 8, we do not reach
Appellant’s remaining arguments. Accordingly, we do not sustain the
Examiner’s anticipation rejection of independent claims 8 and 15, each of
which includes the argued disputed limitations. Likewise, we do not sustain
the rejections of dependent claims 9, 11, 12, 14, 16, 18, and 19, which also
recite the disputed limitations.
3. Obviousness Rejections
Because the Examiner does not rely upon the secondary references to
cure the deficiencies of Burr discussed above, we do not sustain the
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Examiner’s rejections of dependent claims 10, 13, 17, and 20, which also
recite the disputed limitations.
VI. CONCLUSION
We reverse the Examiner’s anticipation and obviousness rejections of
claims 8–20.

VII. DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8, 9, 11, 12, 14–
16, 18, 19 102 Burr
8, 9, 11, 12,
14–16, 18,
19
10, 17 103 Burr, Mehr, Hyde 10, 17
13, 20 103 Burr, Ford 13, 20
Overall Outcome 8–20

REVERSED