Ex Parte Nagai et al

Patent Trial and Appeal Board

Jan 22, 2014

10553385 (P.T.A.B. Jan. 22, 2014)

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.
10/553,385 10/19/2005 Takahiro Nagai 074782-0023 1179
7590 01/22/2014
Michael E. Fogarty, Esq.
McDERMOTT WILL & EMERY LLP
600 13th Street, NW
Washington, DC 20005-3096
EXAMINER
MEANS, JAREN M
ART UNIT PAPER NUMBER
2447
MAIL DATE DELIVERY MODE
01/22/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte TAKAHIRO NAGAI, SHINJI SASAKI,
and YOSHIKI KUNO
_____________

Appeal 2011-007008
Application 10/553,385
Technology Center 2400
______________

Before, JEFFREY T. SMITH, MAHSHID D. SAADAT, and
ROBERT E. NAPPI, Administrative Patent Judges.

Per Curiam.

DECISION ON APPEAL
Appeal 2011-007008
Application 10/553,385

2

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 20.
We affirm.
INVENTION
The invention is directed to a server which is designed to transmit,
receive and share multimedia information between a plurality of terminal
devices that are connected together over a network. Page 7 of Appellants’
Specification. Claim 1 is illustrative of the invention and reproduced below:
1. A server for use in a system that is designed to transmit,
receive and share multimedia information between a plurality of
terminal devices that are connected together over a network, the
plurality of terminal devices including a first terminal device
and a second terminal device, the server comprising:
a network control device;
a memory storing a management table for managing
identifiers to identify the terminal devices and network
addresses of the terminal devices on the network;
a server receiving unit configured to receive a request
including an identifier from the first terminal device through the
network control device;
a processing unit configured to acquire a network address
of the first terminal device upon receiving the request, and to
acquire a network address of the second terminal device by
referring to the identifier included in the request and the
management table; and
a server transmitting unit configured to send the network
address of the second terminal device to the first terminal
device through the network control device when the first
terminal device retains the multimedia information, or to send
the network address of the first terminal device to the second
terminal device when the second terminal device retains the
multimedia information,
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Application 10/553,385

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wherein the multimedia information is transmitted,
received and shared between the first and second terminal
devices by referring to the network addresses provided.

REJECTIONS AT ISSUE
The Examiner has rejected claims 1, 2, 6, 9, 11, 12, 16, and 19 under
35 U.S.C. § 103(a) as unpatentable over Enoki (US 5,873,085, Feb. 16,
1999) in view of Lui (Siu Man Lui & Sai Ho Kwok, Interoperability of
Peer-To-Peer File Sharing Protocols, ACM SIGecom Exchanges, Vol. 3,
No.3, pages 25-33 (Aug. 2002)), and Goodman (US 2003/0177246 A1, Sep.
18, 2003). Answer 5-17.1
The Examiner has rejected claims 3, 4, 7, 8, 10, 13, 14, 17, 18, and 20
under 35 U.S.C. § 103(a) as unpatentable over Enoki, Lui, Goodman, and
Yang (Beverly Yang & Hector Garcia-Molina, Comparing Hybrid Peer-to
Peer Systems, Proc. 27th VLDB Conference, pages 1-10 (2001)). Answer
17-24.
The Examiner has rejected claims 5 and 15 under 35 U.S.C. § 103(a)
as unpatentable over Enoki, Lui, Goodman, and Mandato (US 2001/0025280
A1, Sep. 27, 2001). Answer 24-26.

ISSUE
Appellants’ arguments on pages 10 through 11 of the Appeal Brief
directed to the Examiner’s rejection of independent claim 1 present us with

1 Throughout this opinion we refer to the Appeal Brief dated August 2,
2010, Reply Brief dated January 10, 2011, and the Examiner’s Answer
mailed on November 9, 2010.
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Application 10/553,385

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the issue: did the Examiner err in finding the combination of Enoki, Lui ,
and Goodman teaches a server transmitting unit, configured to send the
network address of the second terminal device to the first terminal device
through the network control device when the first terminal device retains the
multimedia information, or to send the network address of the first terminal
device to the second terminal device when the second terminal device retains
the multimedia information?
Appellants’ arguments directed to independent claim 11 present us the
same issue.

ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellants’
arguments. We disagree with Appellants’ conclusion that the Examiner
erred in finding the combination of Enoki, Lui , and Goodman teaches a
server transmitting unit, configured to send the network address of the
second terminal device to the first terminal device through the network
control device when the first terminal device retains the multimedia
information, or to send the network address of the first terminal device to the
second terminal device when the second terminal device retains the
multimedia information.
Appellants argue that Goodman’s system is such that each client
announces itself and as such does not teach sending the network address of a
client to the other clients. App. Br. 10. Appellants argue that the claimed
device is directed to a push system and not a pull type system as taught by
Goodman. App. Br. 11.
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Application 10/553,385

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We are not persuaded of error; the Examiner has provided a
comprehensive response to each of Appellants’ arguments on pages 27
through 32 of the Answer. We have reviewed the evidence cited by the
Examiner and the Examiner’s rationale to support the finding that the claims
are obvious. We concur with the Examiner’s conclusions that the
independent claims do not recite a push system and are not so limited.
Further, we concur with the Examiners’ finding that Goodman’s Search and
Get request involves sending network address as claimed. Thus, Appellants’
arguments have not persuaded us of error in the Examiner’s rejection of
independent claims 1 and 11. Accordingly, we sustain the Examiner’s
rejection of claims 1 through 20.

DECISION
The decision of the Examiner to reject claims 1 through 20 is
affirmed.
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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