Ex Parte James et alDownload PDFPatent Trial and Appeal BoardMay 4, 201511841531 (P.T.A.B. May. 4, 2015) 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. 11/841,531 08/20/2007 Thomas H. James PD-206045 2184 20991 7590 05/04/2015 THE DIRECTV GROUP, INC. PATENT DOCKET ADMINISTRATION CA / LA1 / A109 2230 E. IMPERIAL HIGHWAY EL SEGUNDO, CA 90245 EXAMINER BAIG, SAHAR A ART UNIT PAPER NUMBER 2424 MAIL DATE DELIVERY MODE 05/04/2015 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 THOMAS H. JAMES and DEANNA R. KIDD ____________ Appeal 2012-001281 Application 11/841,531 Technology Center 2400 ____________ Before JEFFREY S. SMITH, HUNG H. BUI, and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-33. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. In reaching the decision, we have considered only the arguments that Appellants raised. Arguments that Appellants did not make are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appeal 11/841,531 Application 2012-001281 STATEMENT OF THE CASE The present invention relates to downloading software code from an external device to a set top box to temporarily perform a function on the set top box. See generally Spec. 1. Claim 1 is exemplary: 1. A method of performing a function comprising: coupling an external device to a host device through an interface; transferring an application code image into the memory of the host device; executing the code associated with the application code image; performing the function at the host device; and removing the application code image from the memory of the host device after performing the function. REFERENCES AND REJECTIONS Piatek US 5,793,882 Aug. 11, 1998 Scheessele US 7,055,111 May 30, 2006 Weisman US 7,171,475 Jan. 30, 2007 Phabhat Pat. Pub. 2008/0052776 Feb. 28, 2008 (1) Claims 1, 3, 4, 6, 11, 13-21, 24, 26-29, 31, 32, and 33 have been rejected under 35 USC § 102(e) as being anticipated by Prabhat. (2) Claims 2, 7, 8, 9, 10, 22, and 23 have been rejected under 35 USC § 103(a) as being unpatentable over Prabhat and Weisman. (3) Claims 5 and 30 have been rejected under 35 USC § 103(a) as being unpatentable over Prabhat and Platek. (4) Claims 12 and 25 have been rejected under 35 USC § 103(a) as being unpatentable over Prabhat and Scheessele. 2 Appeal 11/841,531 Application 2012-001281 ISSUE Under 35 U.S.C. § 102, has the Examiner erred by finding Prabhat discloses “transferring an application code image into the memory of the host device” and “removing the application code image from the memory of the host device after performing the function,” as recited in claim 1 (emphasis added)? ANALYSIS THE ANTICIPATION REJECTION First, Appellants contend the Examiner erred in finding Prabhat discloses “transferring an application code image into the memory of the host device,” as recited in independent claim 1 (emphasis added). See App. Br. 4-6; Reply Br. 2-3.1 Appellants argue Prabhat’s executing an application program from a removable device does not equal to the required “transferring” claim limitation. See Reply Br. 2-3. Appellants contend Prabhat does not mention transferring an application code image to a host device, and Prabhat teaches installing the application on the guest computer is undesirable. See App. Br. 4-5; Reply Br. 2-3. Second, Appellants argue because Prabhat does not teaching the “transferring” claim limitation and the application code image was never transferred to the memory, Prabhat cannot teach “removing the application 1 Applicants argue Prabhat’s customized virtual desk environment is not an application code image, because it does not “execute” as required by claim 1. See App. Br. 5-6. That argument is moot in light of the Examiner’s response to arguments, where the Examiner maps the recited application code image to Prabhat’s application program. See Ans. 10. 3 Appeal 11/841,531 Application 2012-001281 code image from the memory of the host device after performing the function.” See App. Br. 6-8; Reply Br. 3.2 Appellants fail to show reversible error. The Examiner finds: Prabhat discloses operating an application program that is present on a removable device by replicating them and running them on the host device (loading onto guest device; See paragraph[s] 0031, 0033). Since the replication is being performed on the computer there inherently exists a memory which allows the data to be replicated (See also paragraph[s] 0011, 0037). Ans. 10. As a result, the Examiner finds Prabhat’s application program is inherently loaded on to the guest device, and thus “transferred” to the guest device.3 Under the Examiner’s interpretation, Prabhat’s “transferring” the application based on inherency differs from “installing” the application on the guest computer. See Ans. 10. Appellants fail to persuasively rebut the Examiner’s finding that during the execution of the application program, Prabhat’s guest device inherently stores the application program in its memory. Because Appellants do not persuasively rebut the Examiner’s inherency finding, they fail to show such inherency finding is faulty. See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court [or this Board] to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). 2 We disagree with Appellants’ arguments (App. Br. 4-8; Reply Br. 2-4). 4 Appeal 11/841,531 Application 2012-001281 Accordingly, we sustain the Examiner’s rejection of claim 1, and remaining claims 3, 4, 6, 11, 13-21, 24, 26-29, and 31- 33 for similar reasons. THE OBVIOUSNESS REJECTION Appellants assert claims (1) 2, 7-10, 22, and 23 stand or fall together with claims 1 or 21, (2) claims 5 and 30 stand or fall together with claims 1 or 26, and (3) claims 12 and 25 stand or fall together with claims 1 or 21. See App. Br. 9. Therefore, we also sustain the Examiner’s obviousness rejection of those claims. DECISION The Examiner’s decision rejecting claims 1-33 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 mat 5 Copy with citationCopy as parenthetical citation