Ex Parte O

Board of Patent Appeals and Interferences

Feb 23, 2012

10311462 (B.P.A.I. Feb. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PATRICK J. O’NEILL
____________
Appeal 2011-012073
Application 10/311,462
1

Technology Center 2100
____________

Before KALYAN K. DESHPANDE, ERIC B. CHEN, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL

1
Filed on May 13, 2003. This application is a national stage entry of
PCT/US01/44034, filed on November 19, 2001. The real party in interest is
Hewlett-Packard Development Co., LP. Br. 3.
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s Final Rejection of claims 123-138, 140-153, and 155-184. Br.
3; Ans. 2. Claims 1-122, 139, and 154 have been cancelled. Claims App’x.
We have jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm.
Appellant’s Invention
Appellant invented a method, system, and apparatus for updating
information that reduces the size of an update and distributes the update in a
platform independent manner. Spec. 1: 3-6.
Illustrative Claims
123. A method of operating an electronic device having
a non-volatile memory containing a first code version, the
electronic device adapted for communication with at least one
update server via a wireless network, the method comprising:
updating at least one portion of the first code version
using an update agent resident in the electronic device and an
update package that is received by the electronic device, in its
entirety via the wireless network, before use in updating the
first code version, the update package comprising a set of
instructions executable by the update agent to transform the at
least one portion of the first code version.

141. A method of operating at least one update server
for updating an electronic device having a non-volatile memory
containing a first code version, the electronic device adapted to
communicate via a wireless network, the method comprising:
selecting an update package from a plurality of update
packages, based upon an efficiency of update of the electronic
device;
distributing the selected update package to the electronic
device, in its entirety via the wireless network;
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wherein the electronic device updates at least one portion
of the first code version using an update agent resident in the
electronic device and the received update package;
wherein the update package comprises a set of
instructions executable by the update agent; and
wherein the efficiency of update of the electronic device
comprises a measure representative of one or more of the
following: an amount of information included in each of the
plurality of update packages, an amount of information
communicated by the at least one update server to the electronic
device to perform an update of the electronic device, an amount
of updated code that is represented by a single instruction of the
update package, and an amount of transmission time needed to
send the update package to the electronic device.

146. An update server system supporting the update of a
first code version in an electronic device, the update server
system comprising:
storage comprising a plurality of update packages, each
update package comprising a set of instructions executable by
update agent code resident in the electronic device;
at least one server for determining update package
appropriate for application to the first code version from among
the plurality of update packages, based upon at least one
identifying characteristic of the electronic device and the first
code version;
the at least one server picking, from the appropriate
update packages, a target update package for updating the first
code version to a latest in time code versions; and
the at least one server communicating the target update
package for distribution to the electronic device via a wireless
network.

Prior Art Relied Upon
Cole US 5,752,042 May 12, 1998
Bealkowski US 5,878,256 Mar. 2, 1999
Waldin, Jr. US 6,052,531 Apr. 18, 2000

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Jones US 6,526,574 B1 Feb. 25, 2003
(PCT filed July 15, 1998)
Hind US 7,069,452 B1 June 27, 2006
(filed July 12, 2000)

Rejections on Appeal
Claims 123-132, 140, 151-153, 155, 160-169, and 176-180 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Jones and Hind. Ans. 3-11.
Claims 133-138, 156, 170-175, and 181 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Jones, Hind,
and Bealkowski. Ans. 11-14.
Claims 141-145 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Waldin, Jr. and Hind. Ans. 14-18.
Claims 146-150 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Cole and Hind. Ans. 18-20.
Claims 157-159 and 182-184 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Jones, Hind, Cole, and
Waldin, Jr. Ans. 20-22.
Examiner’s Findings and Conclusions
1. With respect to independent claims 123, 151, 160, and 177, the
Examiner finds that there is a sufficient rationale to combine Jones and
Hind. Ans. 4-5, 9-11, and 22-24.
2. The Examiner finds that Waldin, Jr. discloses choosing update
packages based on the goal of minimizing the number of packages selected
and, therefore, teaches or suggests the “efficiency of an update” as recited in
independent claim 141 because the less information that needs to be
transferred, the faster the update will occur. Ans. 25. Moreover, the
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Examiner finds that since independent claim 141 explicitly recites “the
efficiency of update of the electronic device comprises a measure
representative of one or more of the following: . . . an amount of information
communicated by the at least one update server to the electronic device to
perform an update of the electronic device,” the amount of information
communicated to the electronic device is one measure of an efficiency of
update. Ans. 25-26. Consequently, the Examiner finds that Waldin, Jr.
teaches or suggests “selecting an update package from a plurality of update
packages, based upon an efficiency of update of the electronic device,” as
claimed. Ans. 14-15 and 25-26. Further, the Examiner finds that there is a
sufficient rationale for combining Waldin, Jr. and Hind. Ans. 15-16 and 26-
27.
3. With respect to independent claim 146, the Examiner finds that
there is a sufficient rationale to combine Cole and Hind. Ans. 19 and 28-29.
Appellant’s Contentions
1. With respect to independent claims 123, 151, 160, and 177,
Appellant contends that the Examiner does not provide a sufficient rationale
to combine Jones and Hind. Br. 10-12.
2. Appellant contends that Waldin, Jr. discloses using fewer
incremental updates and, therefore, teaches or suggests that less information
needs to be transferred to an application. Br. 14. However, Appellant
argues that this cited portion of Waldin, Jr. does not teach or suggest
“selecting an update package from a plurality of update packages, based
upon an efficiency of update of the electronic device,” as recited in
independent claim 141. Br. 15 (emphasis in original). Moreover, Appellant
alleges that since Hind is only directed to providing secure updates of
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firmware, Hind does not teach or suggest the disputed claim limitation. Id.
Further, Appellant contends that the Examiner does not provide a sufficient
rationale to combine Waldin, Jr. and Hind. Br. 16-18.
3. With respect to independent claim 146, Appellant contends that
the Examiner does not provide a sufficient rationale to combine Cole and
Hind. Br. 18-20.

II. ISSUES
1. Did the Examiner err in concluding that the combination of
Jones and Hind renders independent claims 123, 151, 160, and 177
unpatentable? In particular, the issue turns on whether the Examiner
provides a sufficient rationale to combine Jones and Hind.
2. Did the Examiner err in concluding that the combination of
Waldin, Jr. and Hind renders independent claim 141 unpatentable? In
particular, the issue turns on whether:
(a) Waldin, Jr. teaches or suggests “selecting an update package
from a plurality of update packages, based upon an efficiency of update of
the electronic device,” as recited in independent claim 141; and
(b) the Examiner provides a sufficient rationale to combine Waldin,
Jr. and Hind.
3. Did the Examiner err in concluding that the combination of
Cole and Hind renders independent claim 146 unpatentable? In particular,
the issue turns on whether the Examiner provides a sufficient rationale to
combine Cole and Hind.

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III. CLAIM GROUPINGS
Appellant does not provide separate and distinct arguments for
patentability with respect to dependent claims 124-138, 140, 142-145, 147-
150, 152, 153, 155-159, 161-176, 178-184. See Br. 10-12. Consequently,
we accept Appellant’s grouping of: 1) dependent claims 124-138 and 140
with independent claim 123; 2) dependent claims 142-145 with independent
claim 141; 3) dependent claims 147-150 with independent claim 146; 4)
dependent claims 152, 153, and 155-159 with independent claim 151; 5)
dependent claims 161-176 with independent claim 160; and 6) dependent
claims 178-184 with independent claim 177. Br. 12-13, 16, 18, and 20.
Therefore, dependent claims 124-138, 140, 142-145, 147-150, 152, 153,
155-159, 161-176, 178-184 fall with their respective independent claims
123, 141, 146, 151, 160, and 177. See 37 C.F.R. § 41.37(c)(1)(vii).

IV. ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. We disagree with Appellant’s
conclusions. The Examiner summarizes and addresses each of Appellant’s
contentions with respect to independent claims 123, 141, 146, 151, 160, and
177. See Ans. 22-29. Accordingly, we adopt as our own: 1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken (see Ans. 4-5, 9-11, 14-16, and 19); and 2) the reasons set forth by the
Examiner in the Answer in response to Appellant’s Brief. See Ans. 22-29.
It follows that the Examiner has not erred in concluding that: 1) the
combination of Jones and Hind renders independent claims 123, 151, 160,
and 177 unpatentable; 2) the combination of Waldin, Jr. and Hind renders
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independent claim 141 unpatentable; and 3) the combination of Cole and
Hind renders independent claim 146 unpatentable.

V. CONCLUSION OF LAW
The Examiner has not erred in rejecting claims 123-138, 140-153, and
155-184 as being unpatentable under 35 U.S.C. § 103(a).

VI. DECISION
We affirm the Examiner’s decision to reject claims 123-138, 140-153,
and 155-184.
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

ELD