Ex Parte DA PALMADownload PDFPatent Trial and Appeal BoardJul 27, 201613230388 (P.T.A.B. Jul. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/230,388 09/12/2011 63675 7590 07/29/2016 PATTERSON & SHERIDAN, LLP/IBM SVL 24 Greenway Plaza SUITE 1600 HOUSTON, TX 77046-2472 FIRST NAMED INVENTOR WILLIAM V. DA PALMA 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 ATTORNEY DOCKET NO. CONFIRMATION NO. S VL9201 l 0069US 1 1410 EXAMINER KING,JOHNB ART UNIT PAPER NUMBER 2498 NOTIFICATION DATE DELIVERY MODE 07/29/2016 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): P AIR_eofficeaction@pattersonsheridan.com PSDocketing@pattersonsheridan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM V. DA PALMA Appeal2015-003777 Application 13/230,388 Technology Center 2400 Before DEBRA K. STEPHENS, DANIEL N. FISHMAN, and KARA L. SZPONDOWSKI, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of claims 7-18 and 26-32, all remaining claims of the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE INVENTION According to Appellant, the claims are directed to techniques for presenting and collecting end user license agreement acceptance (Abstract). Claim 7, reproduced below, is exemplary of the claimed subject matter: Appeal2015-003777 Application 13/230,388 7. A computer program product for configuring a computing appliance, which, when executed on a processor, performs an operation, comprising: establishing an initial configuration interface to access the computing appliance; receiving one or more configuration commands via the initial configuration interface; determining whether each of the one or more configuration commands have been authorized for execution prior to acceptance of an end user license agreement (EULA); and executing only configuration commands determined to be authorized for execution prior to the acceptance of the EULA. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hogberg Lilly Cowie US 2007 /0238450 Al US 2008/0120192 Al US 2011/0119479 Al REJECTIONS Oct. 11, 2007 May 22, 2008 May 19, 2011 Claims 7-12 and 26-32 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-13 of co-pending Application No. 13/788,522 (Final Act. 7-11). Claim 16 stands rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention (id. at 11-12). 2 Appeal2015-003777 Application 13/230,388 Claims 7-10, 13-16, 26-28, and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cowie and Hogberg (id. at 12-20). Claims 11, 12, 17, 18, 29, and 32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cowie, Hogberg, and AAPA (id. at 20- 22). Claim 31 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Cowie, Hogberg, and Lilly (id. at 22-23). RELATED APPEALS AND INTERFERENCES Despite Appellant's assertion that "no other appeals or interferences are known to the Applicant, the Applicant's legal representative, or assignee which will directly affect or be directly affected by or have a bearing on the Board's decision in the pending appeal" (App. Br. 4), we note Appellant filed an Appeal for co-pending Application 13/788,522 on the same date (August 21, 2014) by the same Attorney (Jon K. Stewart) for the same Assignee (International Business Machines Corporation) for the same Inventor (William V. Da Palma), examined by the same Examiner (John B. King). Thus, Appellant has not met the disclosure required by 37 C.F.R. § 41.3 7 because a related application is pending and furthermore, had an appeal filed on the same date by the same attorney. 37 C.F.R. § 41.37(c)(l)(ii), states: A statement identifying by application, patent, appeal, interference, or trial number all other prior and pending appeals, interferences, trials before the Board, or judicial proceedings (collectively, "related cases") which satisfy all of the following conditions: involve an application or patent owned by the appellant or assignee, are known to appellant, the appellant's legal representative, or assignee, and may be related to, directly affect or be directly affected by or have a bearing 3 Appeal2015-003777 Application 13/230,388 on the Board's decision in the pending appeal, except that such statement is not required if there are no such related cases .... As the co-pending application is a continuation, we determine the child application is related to, directly affects or is directly affected by and has a bearing on the Board's decision in the pending appeal. We further find, as both appeals list the same real party in interest, list the same inventor, and were filed by the same attorney, the co-pending appeal was known to Appellant, Appellant's legal representative, and Assignee. We remind Appellant of this requirement that Appellant did not meet in this Appeal. ISSUE 1 Non-Statutory Double Patenting: Claims 7-12 and 26-32 Appellant presents no arguments pertaining to the Examiner's limitations of the claimed subject matter rejection of claims 7-12 and 26-32 (App. Br. 1-12; Reply Br. 1-5). Accordingly, we summarily sustain these rejections. See Manual of Patent Examining Procedure (MPEP) § 1205.02, 9th ed., Rev. 11.2013 (November 2015) ("If a ground of rejection stated by the examiner is not addressed in the [A ]ppellant' s brief, [A ]ppellant has waived any challenge to that ground of rejection and the Board may summarily sustain it"). ISSUE 2 35 US.C. § 112, second paragraph: Claim 16 Appellant presents no arguments pertaining to the Examiner's limitations of the claimed subject matter rejection of claim 16 (App. Br. 1- 4 Appeal2015-003777 Application 13/230,388 12; Reply Br. 1-5). Accordingly, we summarily sustain these rejections. See Manual of Patent Examining Procedure (MPEP) § 1205.02, 9th ed., Rev. 11.2013 (November 2015) ("If a ground of rejection stated by the examiner is not addressed in the [A]ppellant's brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it"). ISSUE 3 35 US.C. § 103(a): Claims 7-10, 13-16, 26-28, and 30 Appellant asserts their invention is not obvious over Cowie and Hogberg (App. Br. 7-11). The issues presented by the arguments are: Issue 3(a): Has the Examiner erred in finding the combination of Cowie and Hogberg teaches or suggests "establishing an initial configuration interface to access the computing appliance" and "receiving one or more configuration commands via the initial configuration interface," as recited in independent claim 7, and similarly recited in independent claims 13 and 26? Issue 3 (b): Has the Examiner erred in finding the combination of Cowie and Hogberg teaches or suggests "a sentry component configured to limit access to services provided by the executable components prior to acceptance of an end user license agreement (EULA)," as recited in independent claim 13? Issue 3(c): Has the Examiner erred in finding the combination of Cowie and Hogberg teaches or suggests "establishing a connection on the computing appliance via the network interface," as recited in independent claim 26? 5 Appeal2015-003777 Application 13/230,388 ANALYSIS We disagree with Appellant's conclusions and adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken; and (2) the reasons set forth by the Examiner in the Answer in response to the Appeal Brief. With respect to the claims argued by Appellant, we highlight and address specific findings and arguments for emphasis as follows. Appellant argues the combination of Cowie and Hogberg does not disclose "establishing an initial configuration interface to access the computing appliance" and "receiving one or more configuration commands via the initial configuration interface" (App. Br. 9--10). Specifically, Appellant argues "[ c ]laim 7 recites establishing a connection to the actual computing appliance ... and then receiving configuration commands over the configuration interface of that computing appliance" (id. at 10). Appellant further argues "the process of using an applet to specify settings for a computing system - that may not have even been manufactured" does not teach the establishment and reception limitations argued (id.). We are not persuaded by Appellant's arguments. First, as set forth by the Examiner, Appellant is arguing limitations not recited in the claim (Ans. 6). Specifically, we note claim 7 does not require "establishing a connection to the actual computing appliance," as argued by Appellant (App. Br. 10). Indeed, as the Examiner finds, the claim requires "establishing an initial configuration interface" and does not require a direct connection or any physical connection with the computing appliance. (Ans. 6-7). Nor, as set forth by the Examiner, do the claims recite any specifics about the computing appliance or the connection (id. at 7-8). 6 Appeal2015-003777 Application 13/230,388 The Examiner further finds Cowie' s user downloaded applet used to configure settings of the user's new device (a computing appliance), teaches the initial configuration interface that allows the user to access the computing appliance as claimed (id. at 5). We agree with the Examiner's findings. Appellant concedes the cited portion of Cowie discloses "the 'applet' allows a user to specify a variety of custom settings for a[ n] item being ordered" (App. Br. 8). We agree with the Examiner that user customization of settings for an ordered item, are received by the "manufacturer via the applet and network communication channel"; thus, Cowie teaches the user being able to customize settings of an ordered device and, therefore, establishes an initial configuration interface to access the computing appliance (Ans. 5). With respect to claim 13, Appellant contends the combination of Cowie and Hogberg does not disclose "a sentry component configured to limit access to services provided by the executable components prior to acceptance of an end user license agreement (EULA)" (Reply Br. 4). Specifically, Appellant argues claim 13 requires the configuration interface and sentry component must be part of the same computing appliance, and Cowie "does not disclose anything about the user actually connecting to the computer system being purchased and then sending commands to that specific computing system" (id.). We are not persuaded by Appellant's argument, which is asserted for the first time in the Reply Brief (Reply Br. 4 ). Thus, we have not been considered (37 C.F.R. § 41.41(b)(2)). Indeed, Appellant has not explained why, nor is it apparent, that these arguments were necessitated by a new 7 Appeal2015-003777 Application 13/230,388 point raised in the Examiner's Answer, or any other circumstance constituting "good cause" for its belated presentation. With respect to claim 26, Appellant argues the combination of Cowie and Hogberg does not disclose "establishing a connection on the computing appliance via the network interface" (App. Br. 10-11). Specifically, Appellant argues "[a ]t no point does the online ordering ... describe receiving configuration settings for a network interface on the computing appliance and then 'establishing a connection .... "'as claimed (id. at 11 ). We are not persuaded by Appellant's arguments. The Examiner finds, and we agree, that "a connection is established between the user and the new machine through the network communication channel and the manufacturer" (Ans. 8). Appellant concedes Cowie discloses user interaction that requires transmission to the manufacturer after interaction with the web based applet (App. Br. 10). The claim merely requires "establishing a connection on the computing appliance via the network interface" (Cl. 26); therefore, we find the claim does not have a temporal requirement and the connection is established, even if the transmission is delayed. Accordingly, we are not persuaded the Examiner erred in finding the combination of Cowie and Hogberg teaches or suggests the limitations as recited in independent claims 7, 13, 26, and dependent claims 8-10, 14--16, 27, 28, and 30, which were not separately argued. Therefore, we sustain the rejection of claims 7-10, 13-16, 26-28, and 30 under 35 U.S.C. § 103(a) for obviousness over Cowie and Hogberg. 8 Appeal2015-003777 Application 13/230,388 35 US.C. § 103(a): Claims 11, 12, 17, 18, 29, and 32 Appellant argues the invention as recited in claims 11, 12, 17, 18, 29, and 32, is not unpatentable over Cowie, Hogberg, and AAP A due to the dependence on independent claims 7, 13, and 26, respectively (App. Br. 12). As set forth above with respect to independent claims 7, 13, and 26, we are not persuaded by Appellant's arguments that the combination of Cowie and Hogberg fails to teach the claimed invention of independent claims 7, 13, and 26 (Final Act. 21-22 ). Thus, for the reasons set forth above, claims 11, 12, 1 7, 18, 2 9, and 3 2 fall with their respective independent claims. 35 US.C. § 103(a): Claim 31 Appellant argues the invention as recited in claim 31, is not unpatentable over Cowie, Hogberg, and Lilly due to its dependence on claim 26 (App. Br. 12). As set forth above, we determine the Examiner has shown the combination of Cowie and Hogberg discloses the invention as claimed in independent claim 26. However, Appellant does not proffer sufficient evidence or argument to persuade us of error in the Examiner's findings. Thus, for the reasons set forth above, claim 31 falls with its respective independent claim. DECISION The Examiner's rejection of claims 7-12, and 26-32 under non- statutory obviousness-type double patenting as being obvious over conflicting co-pending US Application 13/788,522, is affirmed. The Examiner's rejection of claim 16 under 35 U.S.C. § 112, second paragraph, as being indefinite is affirmed. 9 Appeal2015-003777 Application 13/230,388 The Examiner's rejection of claims 7-10, 13-16, 26-28, and 30 under 35 U.S.C. § 103(a) as being unpatentable over Cowie and Hogberg is affirmed. The Examiner's rejection of claims 11, 12, 17, 18, 29, and 32 under 35 U.S.C. § 103(a) as being unpatentable over Cowie, Hogberg, and AAPA is affirmed. The Examiner's rejection of claim 31 under 35 U.S.C. § 103(a) as being unpatentable over Cowie, Hogberg, and Lilly 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). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation