Ex Parte Aleksandrov et alDownload PDFPatent Trial and Appeal BoardDec 16, 201613481169 (P.T.A.B. Dec. 16, 2016) Copy Citation 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. 13/481,169 05/25/2012 Anton Aleksandrov RSW920120079US2 3221 75949 7590 IBM CORPORATION C/O: Fabian Vancott 215 South State Street Suite 1200 Salt Lake City, UT 84111 12/20/2016 EXAMINER SALAD, ABDULLAHI ELMI ART UNIT PAPER NUMBER 2456 NOTIFICATION DATE DELIVERY MODE 12/20/2016 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): patents @ fabianvancott.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTON ALEKSANDROV, AMIT BEN-SHEFFER, RAANAN AVIDOR, YOAV BODOR, ISHAI BOROVOY, YARON GOLDBERG, TODD ERIC KAPLINGER, IDDO LEVIN, RAN ENRIKO MAGEN, RON PERRY, and ARTEM SPECTOR Appeal 2016-001242 Application 13/481,169 Technology Center 2400 Before JOSEPH L. DIXON, STEPHEN C. SIU, and JAMES W. DEJMEK, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-001242 Application 13/481,169 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1—25. We have jurisdiction under 35 U.S.C. § 6(b). This appeal is related to Appeal 2016-001240, Serial Number 13/474,063. We affirm. The claims are directed to an updating web resources. Claim 1, reproduced below, is representative of the claimed subject matter: 1. A system for updating web resources, comprising: at least one processor to access and execute computer readable instructions stored on a non-transitory computer readable storage medium; said computer readable instructions to cause said at least one processor to extract web resources from an application to local files in response to an initial start-up of said application; download updates to said web resources to said local files from an external server; and run said application using contents from said local files. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Chiles et al. Mason et al. Chasman et al. Holmes et al. US 6,167,567 US 2004/0128347 Al US 2007/0180075 Al US 2008/0077941 Al Dec. 26, 2000 July 1,2004 Aug. 2, 2007 Mar. 27, 2008 2 Appeal 2016-001242 Application 13/481,169 REJECTIONS The Examiner made the following rejections: Claims 1—25 stand provisionally rejected on the ground of non- statutory obviousness-type double patenting as being unpatentable over claims 1—25 of co-pending Application No. 13/474,063 and claims 1—25 of co-pending Application No. 13/480,301. Claims 1—4, 6, 7, 9, 13—16, and 23 stand rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Mason. Claims 8, 10, 17, 19—21, and 24 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Mason in view of Chiles. Claims 5, 11, 18, and 25 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Mason in view of Chiles and further in view of Chasman.1 Claim 12 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Mason in view of Holmes. Claim 22 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Mason in view of Chiles and further in view Holmes. ANALYSIS Non-Statutory Obviousness Type Double Patenting Appellants contend: [Tjhis is a provisional rejection under non-statutory, obviousness-type double patenting, Accordingly, Appellant need 1 We note that the Examiner does not mention claim 5 in any of the rejections, but the claim language regarding the “override” parallels dependent claims 11 and 18. Therefore, we include claim 5 within this rejection. (Additionally, Appellants have not specifically argued any of these dependent claims.) 3 Appeal 2016-001242 Application 13/481,169 make no response. However, when the application is otherwise in condition for allowance, if the double patenting rejection is still held to be proper, Appellant may remove the rejection by filing a Terminal Disclaimer. App. Br. 11. The Examiner maintains that “Appellant alleges that the present application was filed before the other two applications cited,” and agrees with Appellants that this application is the earlier filed application. Ans. 2. We do not find this argument in Appellants’ Appeal Brief, and we find application 13/480,301 was filed on May 25, 2012, which has an earlier filing date. Furthermore, the present application and the 13/480,301 application both claim priority to application serial number 13/474,063 which has a filing date of May 17, 2012. Consequently, each of the applications has the same effective filing date. As a result, there is no “earlier” filed application due to the similar claims of priority. The Examiner maintains the obviousness-type double patenting rejection. Ans. 2. Because Appellants have not filed a terminal disclaimer nor have Appellants presented arguments regarding the obviousness-type double patenting rejection, we summarily sustain the rejection of claims 1—25. Additionally, we note that an additional continuation application is pending, which the Examiner may also consider in an obviousness-type double patenting rejection (serial number 15/367,345 filed on December 2, 2016, and a related patent, US 9,525,587 from serial number 13/474,371, therefrom is scheduled to issue on December 20, 2016). Appellants contend “Appellants] need make no response.” App. Br. 11. The Appeal Brief “shall explain why the examiner erred as to each 4 Appeal 2016-001242 Application 13/481,169 ground of the rejection contested by appellant.” 37 C.F.R. § 41.37(c)(l)(iv) (emphasis added). Appellants have not identified any errors in the Examiner’s conclusions regarding the provisional obviousness-type double patenting rejection. “If an appellant fails to present arguments on a particular issue — or, more broadly, on a particular rejection — the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.” Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Accordingly, we summarily affirm the provisional rejection of claims 1—25 on the ground of nonstatutory double patenting over claims 1—25 of co-pending Application No. 13/480,301 and 13/474,063. 35U.S.C. § 102 Independent claims 1 and 13 Appellants argue that the Examiner has changed the correlation of the disclosure of Mason to the claimed “web resources.” App. Br. 11—14. With respect to independent claim 1, Appellants contend “Mason describes applications, local or remote, that provide content to the portal services module ‘for presentation within the portal page.’ However, this content is not ‘extract[ed] ... in response to an initial start-up of said application, ’ as in claim 1.” App. Br. 12. With respect to independent claim 13, Appellants further contend that “[cjonsequently, Mason describes retrieving content in response to a user request. Mason still does not teach or suggest, nor does the Action adequately address, a system to ‘extract web resources from an application to local files in response to an initial start-up of said application. ’ (Claim 17 [sic, 13]).” App. Br. 13. 5 Appeal 2016-001242 Application 13/481,169 While the Examiner changes the correlation of the disclosures of the Mason reference to the claimed invention in the Examiner’s Answer from those set forth in the Final Rejection (Ans. 3—4), the Examiner only partially responds to Appellants’ argument concerning the limitation “extract web resources from an application to local files in response to an initial start-up of said application.” The Examiner does not identify any disclosure in the Mason reference that discloses the claimed “extracted]... in response to an initial start-up of said application.” Ans. 3^4. The Examiner briefly addresses the limitation with respect to dependent claim 6. The Examiner finds: Mason teaches contents stored locally are being refreshed periodically when the user is online, then portal services module 32 downloads updated versions of the XML, XSL, HTML, and portal configuration files 42 from the remote server 60. Also, daemon or other process executing on the local system could be scheduled to initiate process updating local applications at predetermined times (see par. 0044). For example, In Mason If only a single file date is old, the portal service module 32 can selectively download only the corresponding file (e.g., if a date field in the local portal catalog 44 corresponding to a single XML file indicates that the single XML file is old, the portal service module 32 downloads only the newer version of the single XML file from the remote server 72) (see par. 0035). Ans. 6—7. From the above findings, it is apparent that the Examiner has not made a specific finding regarding “in response to an initial start-up of said application” and the Examiner speculates that “contents stored locally are being refreshed periodically,” “daemon or other process executing on the local system could be scheduled to initiate process updating local applications at predetermined times (see par. 0044),” and “If only a single 6 Appeal 2016-001242 Application 13/481,169 file date is old, the portal service module 32 can selectively download only the corresponding file.” Id. (emphases added). Consequently, the Examiner has not shown that the Mason reference anticipates independent claims 1 and 13. Asa result, we cannot sustain the anticipation rejection of independent claims 1 and 13 and their respective dependent claims. With respect to dependent claims 2-4 and 6, Appellants present similar arguments. App. Br. 14—18. The Examiner addresses these limitations but does not remedy the noted deficiency above with respect to independent claims 1 and 13. Asa result, we cannot sustain the anticipation rejection of claims 2—A and 6. With respect to dependent claims 7, 9, and 14—16, Appellants do not set forth separate arguments for patentability, but the Examiner has not identified how the Mason reference remedies the deficiency above with respect to independent claims 1 and 13. Therefore, we cannot sustain the rejection of these claims based upon anticipation. Independent claim 23 With respect to independent claim 23, Appellants’ arguments are similar to those advanced with respect to dependent claim 2 regarding the “said application comprising a first component to extract said web resources, pre-packaged in said application, from said application to one or more local files on said client device.” App. Br. 19. Appellants further contend: Mason does not teach or suggest a downloaded application “comprising a first component to extract said web resources, pre packaged in said application, from said application to one or more local files on said client device.” The Action fails to 7 Appeal 2016-001242 Application 13/481,169 identify any teaching or suggestion in the cited references of “web resources, pre-packaged in [an] application.” App. Br. 19. The Examiner maintains in the rejection of dependent claim 2 and independent claim 23 regarding the “pre-packaged web resources” that the Mason reference at paras. 34-41 discloses this limitation. Final Act. 9, 11. We agree with the Examiner that the Mason reference discloses dynamically updating content which necessarily involves an initial copy which is updated. Consequently, the Mason reference discloses pre-packaged web resources. The Examiner further maintains that “daemon or other process executing on the local system could be scheduled to initiate process updating local applications at pre-determined times (see par. 0044).” Ans. 7. We agree with the Examiner and find that if updating of an application and files is to be performed, there necessarily must be a pre-packaged content in the client device, otherwise there would be no need to “update” versions of the local content. See Mason Abstract, 112, 6, 9,10,15. We note the Examiner discusses the Chiles reference, which has not been applied to independent claim 23 in the anticipation rejection, but in light of the breadth of claim 23, we find the Examiner need not rely upon any reference beyond the Mason reference which discloses updates and the use of thereof. Appellants repeat the language of independent claim 23 and maintain that “[t]he Answer fails to identify any teaching or suggestion in the cited references of "web resources, pre-packaged in [an] application.” Reply Br. 11. We find Appellants’ argument to be unpersuasive of error in the Examiner’s finding of anticipation of independent claim 23. 8 Appeal 2016-001242 Application 13/481,169 Additionally, we note that independent claim 23 is ostensibly directed to a network device which receives a query from a client device and merely sends updates to the client device. We find this reads on almost every network device finding updates. Appellants further include details regarding the application on the client side, but these limitations do not limit the claimed “network device.” We further note that independent claim 23 does not set forth the same limitation argued with independent claim 1 and dependent claim 2. Asa result, Appellants’ argument is not commensurate in scope with the language of independent claim 23 and does not show error in the Examiner’s finding of anticipation of independent claim 23. Obviousness Independent claim 19 With respect to independent claim 19, Appellants present similar arguments as set forth with respect to independent claim 1 regarding the “processor to ‘download an application comprising web resources ’ and ‘extract said web resources from said application to permanent local files in response to an initial start-up of said application.’” App. Br. 20; Reply Br. 12. Appellants contend that the Examiner relies upon the Chiles reference for additional subject matter, but not for the disputed limitations. The Examiner maintains: When a request for information occurs, the file date of files indicated by each of these above template are compared to the file dates indicated in the remote portal catalog. If the local file dates are older than the remote file dates, some (or all) of the files indicated in the catalog 360 are selectively downloaded to the local machine, and the catalog is updated to reflect the date of the download(s). In this manner, content on the local machine is 9 Appeal 2016-001242 Application 13/481,169 dynamically updated (see par. 0035, 0041, and 0071). Also, the portal configuration files track an application's local root location within the portal. This allows the portal services module 32 to communicate with one or more remote servers 60 to exchange content between the user computer local files and the remote server 60. In addition, this mechanism allows the aforementioned portal catalogs to be updated whenever the user becomes on-line. Thus, the portal services module 32 downloads updated versions of the XML, XSL, HTML, and portal configuration files 42 from the remote server 60. Ans. 8—9. We agree with Appellants that the Examiner has not addressed the proffered distinction of with respect to the limitation “in response to an initial start-up of said application.” (Reply Br. 12—13). Consequently, we find that the Examiner has not properly established factual determinations and articulated reasoning with a rational underpinning to support the legal conclusion of obviousness for independent claim 19 resulting in a failure to establish a prima facie case of obviousness. Therefore, we cannot sustain the Examiner’s rejection of independent claim 19, and dependent claims 20-22 based upon obviousness. Dependent claims 5, 8, 10-12, 17, and 18 With respect to dependent claims 5, 8, 10-12, 17, and 18, Appellants contend that the Chiles, Chasman, and Holmes references do not remedy the deficiency noted above with respect to claims 1 and 13. App. Br. 19—21. Because the Examiner has not identified how any of the additional references remedy the noted deficiency, we cannot sustain the Examiner’s obviousness rejections for the reasons discussed above. Dependent claims 24 and 25 10 Appeal 2016-001242 Application 13/481,169 With respect to dependent claims 24 and 25, Appellants do not set forth separate arguments for patentability of these claims as they depend from independent claim 23. App. Br. 19—21. Because dependent claims 24 and 25 do not contain the same subject matter as independent claim 19, Appellants’ arguments are not commensurate in scope with the express language of claims 24 and 25. Therefore, we sustain the rejection of claims 24 and 25 for the same reasons set forth with respect to parent claim 23. CONCLUSIONS The Examiner did not err in rejecting claims 1—25 based upon provisional obvious type double patenting; the Examiner did not err in rejecting claims 23—25 based upon anticipation and obviousness, but the Examiner erred in rejecting claims 1—4, 6, 7, 9, and 13—16 based upon anticipation and in rejecting claims 5, 8, 10-12, and 17—22 based upon obviousness DECISION For the above reasons, we sustain the Examiner’s obviousness-type double patenting rejection of claims 1—25, and we sustain the anticipation and obviousness rejections of claims 23—25, but we reverse the anticipation and obviousness rejections of claims 1—22. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation