Cohn, Alan Wade. et al.

Patent Trials and Appeals Board

Jan 22, 2020

12771071 - (D) (P.T.A.B. Jan. 22, 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.
12/771,071 04/30/2010 Alan Wade Cohn 102005.024092 1923
71581 7590 01/22/2020
BakerHostetler / Comcast
Cira Centre, 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
FAN, HUA
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
01/22/2020 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALAN WADE COHN, GARY ROBERT FAULKNER,
JAMES EDWARD KITCHEN, DAVID LEON PROFT,
and COREY WAYNE QUAIN
____________

Appeal 2019-001369
Application 12/771,071
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
GARTH D. BAER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2019-001369
Application 12/771,071

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 3–11, 13–20, 25, 26, and 31–34, which are all the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

THE INVENTION
Appellant’s claimed invention is directed to a “server-based
environment for management of widget programs distributable to remote
execution and display devices” (Abstract).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A method comprising:

receiving, by an application management system, an
application package, wherein the application package comprises
an application;

receiving an indication of an access restriction associated
with the application, wherein the access restriction is
configured to limit, based on functionality of the application,
access to the application to a subset of users of a plurality of
users;

receiving, by the application management system and
from a remote device associated with a user of the plurality of
users, a request for the application;

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies iControl Networks, Inc., which is a
subsidiary of Comcast Cable Communications, LLC, as the real party in
interest (Appeal Br. 1).
Appeal 2019-001369
Application 12/771,071

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determining, in response to receiving the request, that the
user is a member of the subset of users; and

transmitting, to an interface device associated with the
user and in response to the request, the application, wherein the
interface device is configured to install and execute the
application on the interface device, wherein the interface device
is located at a premises and configured to manage one or more
of a security device or an automation device located at the
premises.

Appeal Br. 11 (Claims Appendix).

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is the following:
Mehta US 2002/0131404 A1 Sept. 19, 2002
Bi2 US 2007/0064714 A1 Mar. 22, 2007

REJECTION
The Examiner made the following rejection:
Claims 1, 3–11, 13–20, 25, 26, and 31–34 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Mehta, in view of Official
Notice. Final Act. 3.

ISSUE
The pivotal issue is whether the Examiner erred in finding Mehta, in
view of Official Notice, teaches or suggests the limitation of

2 The Examiner additionally cited this reference to support the taking of
Official Notice. Final Act. 5.
Appeal 2019-001369
Application 12/771,071

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transmitting, to an interface device associated with the
user and in response to the request, the application, wherein the
interface device is configured to install and execute the
application on the interface device, wherein the interface device
is located at a premises and configured to manage one or more
of a security device or an automation device located at the
premises,

as recited in independent claim 1, and similarly recited in independent
claims 11 and 31.

ANALYSIS
Appellant argues that “[t]he Examiner relies on a single subscriber
device (shown as a simple cell phone in the figures) of Mehta to allegedly
teach each of the remote device, the interface device, and the automation
device, as claimed” (Appeal Br. 5, emphasis in original). Appellant
contends that “[t]he courts and the USPTO Patent Trial and Appeal Board
have held that in anticipation and obviousness rejections it is improper to
rely on the same structure as being responsive to multiple different
elements” (Appeal Br. 4, citing Ex Parte Sampath, Appeal 2016-007001
(PTAB June 9, 2017) (non-precedential), Ex parte Weideman, Appeal 2008-
003454 (BPAI Jan. 27, 2009) (non-precedential), Lantech, Inc. v. Keip
Machine Co., 32 F.3d 542 (Fed. Cir. 1994), In re Robertson, 169 F.3d 743
(Fed. Cir. 1999)).
Appellant further contends “the Examiner fails to identify distinct
‘logical devices’ from the cited references that perform the functions
associated with the corresponding interface device, remote device, and
automation device” (Appeal Br. 7).
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Application 12/771,071

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The Examiner finds that Mehta’s subscriber device (or wireless
device) functions as the claimed “remote device” (Final Act. 4, citing Mehta
Fig. 17, ¶ 138), the claimed “interface device” (Final Act. 5, citing Mehta
¶ 63), and the claimed “automation device” (Final Act. 5, citing Mehta Fig.
1, ¶ 11). Particularly, the Examiner finds that “the subscriber’s device . . .
can be considered an automation device” because the subscriber’s device
can “provide automatic notification to users when updates are available for
downloaded content” (Final Act. 5, quoting Mehta ¶ 11).
We agree with Appellant that the Examiner has not identified portions
of Mehta that teach or suggest at least one of the claimed “remote device,”
“interface device,” and “automation device.” Particularly, the Examiner
finds “the subscriber’s device . . . can be considered an automation device”
because it can “provide automatic notification to users when updates are
available for downloaded content.” However, the portion of Mehta cited by
the Examiner is describing a function of the Mobile Application System
(“MAS”),
which is a collection of interoperating server components that
work individually and together in a secure fashion to provide
applications, resources, and other content to mobile subscriber
devices, such as wireless devices

(Mehta ¶ 5), in which
[a]pplication, resources, and other content is provisioned and
verified by the MAS for authorized access by the subscriber,
compatibility with a requesting subscriber device, and/or
compliance with security and billing policies of the carrier and
system administrators of the MAS. In this manner,
applications, resources, and other content can be downloaded to
devices, such as wireless devices, with greater assurance of
their ability to successfully execute
Appeal 2019-001369
Application 12/771,071

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(Mehta ¶ 5, emphasis added). While the user of Mehta’s mobile subscriber
device may provide “automatic notification to users,” the mobile subscriber
device is merely the recipient of the notification, in which the automation is
performed by the provisioning of MAS. See Mehta ¶ 11; see also Mehta ¶¶
5–17. Thus, Mehta’s mobile subscriber device fails to teach or suggest the
claimed “automation device located at the premises.” The Examiner’s
taking of Official Notice fails to remedy this deficiency.
Accordingly, we are constrained by the record to reverse the
Examiner’s obviousness rejection of independent claim 1 and independent
claims 11 and 31 commensurate in scope, as well as dependent claims 3–10,
13–20, 25, 26, and 32–34.

CONCLUSION
The Examiner erred in finding Mehta, in view of Official Notice,
teaches or suggests the limitation of
transmitting, to an interface device associated with the
user and in response to the request, the application, wherein the
interface device is configured to install and execute the
application on the interface device, wherein the interface device
is located at a premises and configured to manage one or more
of a security device or an automation device located at the
premises,

as recited in independent claim 1, and similarly recited in independent
claims 11 and 31.

Appeal 2019-001369
Application 12/771,071

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DECISION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–11, 13–
20, 25, 26,
31–34
103(a) Mehta, Official
Notice
1, 3–11, 13–
20, 25, 26,
31–34

REVERSED