IRDETO B.V.

Patent Trials and Appeals Board

Jan 11, 2022

2020005592 (P.T.A.B. Jan. 11, 2022)

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. 15/562,426 09/28/2017 Dmitri Jarnikov 26-00005-US 7492 128144 7590 01/11/2022 Rimon PC 420 West Main Street Suite 101B Boise, ID 83702-7358 EXAMINER PATEL, DHAIRYA A ART UNIT PAPER NUMBER 2453 NOTIFICATION DATE DELIVERY MODE 01/11/2022 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): docketing.rimonlaw@clarivate.com eofficeaction@appcoll.com patentdocketing@rimonlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DMITRI JARNIKOV Appeal 2020-005592 Application 15/562,426 Technology Center 2400 Before ERIC S. FRAHM, BETH Z. SHAW, and NORMAN H. BEAMER, Administrative Patent Judges. SHAW, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-11 and 13. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Irdeto B.V. Appeal Br. 2. Appeal 2020-005592 Application 15/562,426 2 CLAIMED SUBJECT MATTER The claims are directed to monitoring a peer-to-peer network. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method, implemented by one or more processors, of monitoring a peer-to-peer network, the method comprising: monitoring network traffic between a first peer and the peer- to-peer network so as to identify a first subset of peers in the peer-to-peer network, the first peer being in communication with other peers in the first subset of peers; and preventing the first peer from communicating with at least one peer in the first subset of peers to thereby cause the first peer to conduct a peer discovery process and select at least one further peer in the peer-to-peer network so as to enable identification of the at least one further peer, wherein the at least one further peer is not in the first subset of peers. Appeal Br. 13 (Claims Appendix). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Seidel US 8,015,283 B2 Sept. 6, 2011 La Scouarnec US 2011/0161417 A1 June 30, 2011 Li1 US 2011/0292884 A1 Dec. 1, 2011 Li2 US 2012/0157121 A1 June 21, 2012 REJECTIONS In the Answer, the Examiner withdraws the rejection of claim 11 under 35 U.S.C. § 101. Claims 1, 3, 4, 11, and 13 are rejected under 35 U.S.C. § 103 as being unpatentable over Seidel and Li1. Appeal 2020-005592 Application 15/562,426 3 Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable over Seidel, Li1, and Li2. Claims 5-10 are rejected under 35 U.S.C. § 103 as being unpatentable over Seidel, Li1, and Le Scouarnec. OPINION The Examiner concludes that the combination of Seidel and Li1 teaches the claimed preventing the first peer from communicating with at least one peer in the first subset of peers to thereby cause the first peer to conduct a peer discovery process and select at least one further peer in the peer-to-peer network so as to enable identification of the at least one further peer, wherein the at least one further peer is not in the first subset of peers. Ans. 8-10. Appellant argues, in part, that: The relevant portion of paragraph [0041] of Li1 states that “In some instances, a peer identity may comprise a privacy-preserved peer identity (PPID), such as a Temporary Mobile Subscriber Identity (TMSI) or a Packet-Temporary Mobile Subscriber Identity (P-TMSI), that prevents identification of a wireless device or wireless device user based on the peer identity.” Thus, no communication at all is prevented n Li1; instead, the communication in response to a peer discovery request will simply include a peer identity which is not the true peer identity (e.g. PPID). Li1 also does not teach or suggest any form of causal link between a prevention of communication and the first peer conducting a peer discover process and selecting at least one further peer. Appeal Br. 9. We agree with Appellant that on this record, the Examiner has not sufficiently explained how Li1 teaches Appeal 2020-005592 Application 15/562,426 4 preventing the first peer from communicating with at least one peer in the first subset of peers to thereby cause the first peer to conduct a peer discovery process and select at least one further peer in the peer-to-peer network so as to enable identification of the at least one further peer as recited in claim 1. Rather, paragraph 41 of Li1 states that in some instances, a peer identity comprises an identity that is not the true peer identity (e.g., a privacy-preserved peer identity) and that prevents identification of a wireless device or user based on the peer identity. See Li1 ¶ 41. We do not agree with the Examiner’s conclusion in the Answer that “since the mobile device is being prevented from being identified it means that the mobile device cannot communicate since the other devices do not know the unidentified device exists.” Ans. 8. Paragraph 41 of Li1 does not state that communication with a peer is prevented, but rather explains that in some embodiments, a peer identity is a privacy-preserved peer identity. See Li1. Accordingly, we do not sustain the rejection of claim 1 under 35 U.S.C. § 103. For the same reasons, we do not sustain the rejection of claims 3, 4, 11, and 13. We also do not sustain the rejection of claims 2 and 5-10 because the Examiner does not allege the other cited references cure the deficiencies identified above. CONCLUSION We reverse the rejections. Appeal 2020-005592 Application 15/562,426 5 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 4, 11, 13 103 Seidel, Li1 1, 3, 4, 11, 13 2 103 Seidel, Li1, Li2 2 5-10 103 Seidel, Li1, Le Scouarnec 5-10 Overall Outcome 1-11, 13 REVERSE