Ex Parte McCormick et alDownload PDFPatent Trial and Appeal BoardJul 27, 201612815446 (P.T.A.B. Jul. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/815,446 06/15/2010 14551 7590 Rowand LLP (BlackBerry) Suite 900, 357 Bay St. Toronto, ON MSH 2T7 CANADA 07/29/2016 FIRST NAMED INVENTOR William Carson McCormick 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. 101-0012USP2 1423 EXAMINER KEEHN, RICHARD G ART UNIT PAPER NUMBER 2456 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): mailbox@rowandlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM CARSON McCORMICK, PAUL MARK JOSEPH DUMAIS, TREVOR PETER SWEENEY, and SCOTT BJORN BIRKSTED Appeal2015-001822 Application 12/815,446 Technology Center 2400 Before NORMAN H. BEAMER, MELISSA A. RAAP ALA, and SCOTT B. HOW ARD Administrative Patent Judges. BEAMER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-26. 1 We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm-in-part. 1 In the Appeal Brief, Appellants identify BlackBerry Limited as the real party in interest. (App. Br. 2.) Appeal2015-001822 Application 12/815,446 THE INVENTION Appellants' invention is directed to using a web browser to trigger transmittal of an application to a device connected to a host computer. (Abstract.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for triggering a transmittal of an application to a device connected by a link to a host computer, the link comprising a direct cable connection or a short-range wireless connection, the method comprising: displaying in a web browser on the host computer a list of at least two applications available for download to the device; displaying a selectable option in the web browser to download one of the applications to the device; receiving instructions through the selectable option displayed in the web browser to download the application to the device; and in response to receiving instructions through the web browser to download the application to the device: transmitting a request for the application from the host computer to an application delivery server; receiving the application from the application delivery server at the host computer; and transmitting the application from the host computer to the device using a web-browser plug-in installed on the host computer and configured to enable communications between the web-browser and the device over the link. REJECTIONS The Examiner rejected claims 1, 3-5, 8-10, 15-17, 20-22, and 26 under 35 U.S.C. § 103(a) as being unpatentable over Huang et al. (US 2009/0254778 Al, pub. Oct. 8, 2009), Miller, "Pocket PC 2002 10 Minute 2 Appeal2015-001822 Application 12/815,446 Guide" (2003), and Mehta et al. (US 2010/0319054 Al, pub. Dec. 16, 2010). (Final Act. 7-16.) The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as being unpatentable over Huang, Miller, Mehta, and Kent (US 2011/0038470 Al, pub. Feb. 17, 2011). (Final Act. 16-17.) The Examiner rejected claims 6, 7, 11-14, 18, 19, and 23-25 under 35 U.S.C. § 103(a) as being unpatentable over Huang, Miller, Mehta, and "ActiveSync Functions," MSDN (4/8/2010). (Final Act. 17-23.) ISSUES ON APPEAL Appellants present specific arguments directed to limitations in each of claims 1 and 3-25.2 (App. Br. 5-28.) ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner erred. As to claims 1, 3, 15, 16, 18, and 19, we disagree with Appellants' arguments, and we adopt as our own ( 1) the pertinent findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the corresponding reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief, 2 Rather than reiterate the arguments of Appellants and positions of the Examiner, we refer to the Appeal Brief (filed July 23, 2014); Reply Brief (filed Nov. 12, 2014); Final Office Action (mailed Feb. 24, 2014); and the Examiner's Answer (mailed Sept. 12, 2014) for the respective details. 3 Appeal2015-001822 Application 12/815,446 and we concur with the applicable conclusions reached by the Examiner. We emphasize the following. Independent Claim l3 In finding Huang, Miller, and Mehta teach or suggest the limitations of independent claim 1, the Examiner relies on the description in Huang of a hand-held electronic device having a remote control user interface, and which is connected via a docking station to a desktop PC, which in tum communicates via the internet with web hosted services. (Final Act. 7-10; Huang Abstract, Figs. 2, 3, i-fi-131-38, 161, 162, 315.) In particular, Huang discloses setup software which, inter alia, downloads various files such as a graphic file and sound file to be associated with a particular user. (Huang i-fi-1 161, 162.) Huang also discloses ActiveSync software installed on the device and the desktop PC that functions as a communications conduit to/from the remote control application, and supplemental Java software to automatically check for, and download, updates and supplemental patches from the web hosting services. (Huang Fig. 3, i-fi-131-38, 315.) The Examiner also relies on the description in Miller of ActiveSync software, including the ability to "use ActiveSync to install new programs on your Pocket PC, using your desktop PC as a controller." (Final Act. 8; Miller p. 4.) Miller also discloses automatic synchronization options, and a menu entitled "Add/Remove Programs," which allows the user to selectably install or delete listed programs. (Miller Fig. 13.4, pp. 7, 22.) 3 Appellants do not address independent claim 26, which has limitations similar to claim 1. Therefore, we summarily affirm the Examiner's rejection of claim 26. 4 Appeal2015-001822 Application 12/815,446 In addition, the Examiner relies on the disclosure in Mehta of a web browser with plug-ins that synchronizes the content of locally stored files with that of corresponding files on a remote server. (Final Act. 10-11; Mehta Figs. 1, 2, i-fi-141-51, 53-58, 67, 108.) As the Examiner states, Appellants' arguments are unpersuasive because they argue the references individually, whereas the rejection of claim 1 is based on the teachings of the combination of Huang, Miller, and Mehta. (Ans. 2.) See In re Keller, 642 F.2d 413, 208 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). For example, Appellants argue Huang and Miller do not disclose a web browser or web browser plug- in. (App. Br. 6-9.) However, the Examiner relies on Mehta for this aspect of the claims. (Final Act. 10-11.) Appellants argue Mehta's disclosure of "syncing of a local system with a remote server over a network is not the same thing as the transmission of an application from a host computer to a device connected to the host computer." (App. Br. 11.) But Mehta teaches that the disclosed synchronization process can be accomplished with a web browser and appropriate plug-ins. (Mehta i-fi-141-51, 106.) This teaching, together with the disclosure of a similar synchronization process performed by ActiveSync in Huang and Miller, which transmits applications from the host computer to the portable device, provides the teaching or suggestion of using web browser and plug-ins as claimed. (Ans. 8.) Appellants further argue Huang discloses receiving download instructions, at most, at the device, whereas the claims require the instructions to be received at the host computer, and argue Mehta also does not teach or suggest this limitation. (App. Br. 9-10.) However, the 5 Appeal2015-001822 Application 12/815,446 Examiner relies on the disclosure in Miller of the Add/Remove Programs capability of ActiveSync, which runs on the desktop PC. (Final Act. 8; Miller Fig. 13.4.) Appellants argue Huang does not teach "the alleged request for the application is transmitted to the application delivery server from the host computer 'in response to receiving instructions ... to download the application to the device.'" (App. Br. 12.) Appellants also argue Mehta does not teach the claimed downloading of applications. (App. Br. 14.) Appellants likewise argue Miller fails to teach or suggest these limitations. (App. Br. 13.) We are not persuaded the Examiner errs in relying, for these limitations, on the combined teachings of Huang, Miller, and Mehta. (Final Act. 9; Ans. 7-8.) In particular, Huang discloses selective downloading of image and sound files during user setup, and the use of ActiveSync and supplemental Java software to automatically check for, and download, updates and supplemental patches from the web hosting services. (Huang Figs. 2, 3, i-fi-131-38, 161, 162, 315.) In addition, Miller discloses the application download capabilities of ActiveSync. (Miller Fig. 13.4, pp. 19- 23.) Also, as discussed above, Mehta teaches or suggests the web browser and plug-in aspects of the claims. In sum, we are not persuaded the Examiner errs in finding: [Huang] was used to disclose the structure and many of the limitations in the claimed invention. Huang describes a system very common to the early days of personal digital assistant (PDA) devices wherein the owner of such a device would download applications for his/her PDA using a desktop or laptop computer connected to the Internet . . . . [T]he application for execution on a PDA would be sent from the server to the desktop/laptop, and then the owner would use a 6 Appeal2015-001822 Application 12/815,446 commonly known program ActiveSync to send the downloaded application to his/her PDA using the ActiveSync software loaded both on the desktop/laptop and the PDA itself. As for the web-browser plug-ins, the Mehta reference was cited to disclose this feature not explicitly disclosed in the combination of Huang and Miller. Mehta discloses the Sync manager as a browser plugin used to manage upload and download of files for device synchronization .... (Ans. 2-3, 8.) Appellants do not point to any evidence of record that the resulting arrangements of the cited references were "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418-19 (2007)). The Examiner's findings are reasonable because the skilled artisan would "be able to fit the teachings of multiple patents together like pieces of a puzzle" since the skilled artisan is "a person of ordinary creativity, not an automaton." KSR, 550 U.S. at 420-21. The claimed subject matter exemplifies the principle, "[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416. Independent Claim 15 Claim 15 has limitations similar to those of claim 1, and Appellants repeat the arguments made with respect to the latter, which arguments are unpersuasive for the reasons discussed above. (App. Br. 27.) In addition, Appellants argue the claim requires a web application stored on a server that performs the claimed operations, whereas the cited references "describe 7 Appeal2015-001822 Application 12/815,446 functions occurring on a number of different devices, including servers, host computers, and devices (such as mobile communication devices)." (App. Br. 28.) Appellants' additional argument directed to this claim is premised on a mischaracterization of the Examiner's analysis - as if the Examiner's rejection were posited a literal aggregation of the various components disclosed in the individual references. However, "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference." Keller, 642 F.2d at 425. Instead, the relevant issue is "what the combined teachings of the references would have suggested to those of ordinary skill in the art." Id. "Combining the teachings of references does not involve an ability to combine their specific structures." In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). We are not persuaded the Examiner errs in finding the combination Huang, Miller, and Mehta teaches or suggests the server of claim 15, on grounds similar to that of the claim 1 rejection. (Ans. 24--25.) Claims 3 and 16 Appellants argue the Examiner errs in finding Huang, Miller, and Mehta teach or suggest, "transmitting an installation command to the device to automatically install the application to the device," as required by claim 3, and similarly recited in claim 16. (App. Br. 15.) For this rejection, the Examiner relies on automatic update capabilities of ActiveSync, including the disclosed use in Huang of supplemental Java software to automatically check for, and download, updates and supplemental patches. (Final Act. 11; Ans. 9; Huang i-fi-131-38, 315; Miller pp. 4, 7.) We agree with the Examiner 8 Appeal2015-001822 Application 12/815,446 that Huang's automatic update capabilities teaches the disputed limitation and are not persuaded the Examiner errs in rejecting claims 3 and 16. Claims 18 and 19 Claim 18, depending from claim 15, additionally requires, "receiv[ing] a list of currently installed applications on the device; and display[ing], in the web-browser, a list of applications currently installed to the device." Claim 19, also depends from claim 15, additionally requires, receiv[ing] instructions through the web browser for deleting at least one of the applications in the list of applications currently installed to the device; and in response to receiving instructions to delete the application from the device: send[ing] a command from the host computer to the device to delete the application. Appellants argue the Examiner errs in rejecting these claims. (App. Br. 16-20.) For this rejection, the Examiner relies on the above-discussed combination of Huang, Miller, Mehta, and also on the descriptions in a separate document of the Active Sync functions, "FindObjects," "ReportStatus,"4 "CeSvcClose," "CeSvcDelete," and "CeSvcDelete Val." (Final Act. 18-19.) Appellants challenge the appropriateness of the Examiner's reliance on these ActiveSync functions as described in this separate document. (App. Br. 16-20.) We are not persuaded the Examiner errs. As the Examiner finds, "These are functions that must necessarily execute in order to Huang to perform the file management and synchronization functions of ActiveSync as disclosed throughout Huang." (Ans. 3--4.) Moreover, Miller explicitly 4 In the Final Action, the Examiner incorrectly referred to a non-existent "ReportObjects" function, but corrected this to "ReportStatus" in the Answer. (Final Act. 18; Ans. 11.) 9 Appeal2015-001822 Application 12/815,446 discloses the capability of ActiveSync to display a list of currently installed applications, and to delete a selected application. (Miller Fig. 13.4, pp. 21- 23.) Claims 4--14, 17, and 20-25 Claim 4, depending from claim 1, requires displaying installation progress in the web browser. Dependent claims 5, 6, 7, 11, 12, 17, 23, and 24 have limitations directed to transmitting login information. Dependent claims 8 and 20 add limitations directed to determining if applications are compatible with the device. Dependent claims 9, 10, 21, and 22 add limitations directed to installation of web browser plug-ins. Dependent claims 13 and 25 add limitations directed to device reset. Dependent claim 14 adds limitations directed to determination of memory usage. Appellants argue the Examiner errs in finding the combination of Huang, Miller, Mehta, and the "ActiveSync Functions" document teaches or suggests these limitations. (App. Br. 15-27.) We are unable to find a teaching or suggestion in the cited references of the above-described limitations, and agree with Appellants that the Examiner has not put forth a prima facie grounds for the rejections. Accordingly, based on the record before us, we do not sustain these rejections. CONCLUSIONS For the reasons discussed above, we do not sustain the obviousness rejection of claims 4, 5, 8-10, 17, and 20-22 over Huang, Miller, and Mehta, and of claims 6, 7, 11-14, and 23-25 over Huang, Miller, Mehta, and "ActiveSync Functions." 10 Appeal2015-001822 Application 12/815,446 Also for the reasons discussed above, we sustain the obviousness rejection of claims 1, 3, 15, and 16 over Huang, Miller, and Mehta, and of claims 18 and 19 over Huang, Miller, Mehta, and "ActiveSync Functions." We also sustain the obviousness rejection of claim 2 over Huang, Miller, Mehta, and Kent, and of claim 26 over Huang, Miller, and Mehta, which rejection is not argued separately with particularity. DECISION We affirm the Examiner's rejections of claims 1-3, 15, 16, 18, 19, and 26. We reverse the Examiner's rejections of claims 4--14, 17, and 20-25. 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-IN-PART 11 Copy with citationCopy as parenthetical citation