Ex Parte Williams et al

Patent Trial and Appeal Board

Nov 21, 2016

12878827 (P.T.A.B. Nov. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/878,827 09/09/2010
141451 7590 11/21/2016
AT&T Legal Dept. - [HDP]
Attention: Patent Docketing, Room 2A-207
One AT&T Way
Bedminster, NJ 07921
FIRST NAMED INVENTOR
Ksatria G. Williams
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.
PD-209032 5712
EXAMINER
PARK, JEONG S
ART UNIT PAPER NUMBER
2454
MAILDATE DELIVERY MODE
11/21/2016 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 KSATRIA G. WILLIAMS and LOREN LEUNG
Appeal2015-006187
Application 12/878,827
Technology Center 2400
Before JOHN A. JEFFERY, THU A. DANG, and KAMRAN JIVANI,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1---6, 8, 10, 12-21, 23, 25-27, and 29-31. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Appellants' invention updates a software image at a client device by
the client communicating a device identifier to a server via a network, and
providing software images from a server device. See generally Title;
Abstract. Claim 1 is illustrative:
1. A method comprising:
storing a software image on a server device;
communicating a check image signal having a client
device identifier to the server device through a network, said
Appeal2015-006187
Application 12/878,827
client device identifier comprising a client device model
identifier, a client device make identifier or a software revision
identifier;
communicating a software image identifier to the client
device from the server device in response to the check image
signal, said software image identifier comprising an image
location;
at the client device, requesting the software image from
the server device using the image location of the software
image identifier;
communicating the software image to the client device
through the network based on the image location; and
operating the client device based on the software image.
THE REJECTIONS
The Examiner rejected claims 1-3, 6, 10, 12-18, 21, 25-27, and 29-
31 under 35 U.S.C. § 103(a) as unpatentable over Challener (US
2010/0205375 Al; Aug. 12, 2010), Lee (US 2007/00118617 Al; May24,
2007) ("Lee '617"), and Lee (US 2005/0108757 Al; May 19, 2005) ("Lee
'757"). Ans. 3-9. 1
The Examiner rejected claims 4, 5, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Challener, Lee '617, Lee '757, and Rothman
(US 2006/0143432 Al; June 29, 2006). Ans. 9-10.
The Examiner rejected claims 8 and 23 under 35 U.S.C. § 103(a) as
unpatentable over Challener, Lee '617, Lee '757, and Brubacher (US
2004/0249907 Al; Dec. 9, 2004). Ans. 10-11.
1 Throughout this opinion, we refer to (1) the Appeal Brief filed December
8, 2014 ("App. Br."); (2) the Examiner's Answer mailed April 2, 2015
("Ans."); and (3) the Reply Brief filed June 2, 2015 ("Reply Br.").
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Application 12/878,827
THEREJECTIONOVERCHALLENER LEE '617 AND LEE '757
' '
Regarding independent claims 1 and 16, the Examiner finds that
Challener discloses (1) a server device storing a software image therein, and
(2) communicating a check image signal having a client device identifier,
where the server is said to communicate the software image to the client
device through a network, and the client device operates based on the
software image. Ans. 3--4. Although the Examiner acknowledges that
Challener does not communicate a check image signal and software image
identifier between the client and server devices before requesting the
software image, the Examiner cites Lee '617 for establishing a point-to-point
connection between a server and user device, where the device sends a
request message for software upgrade information, and receives a response
message with the latest sequence number ("image identifier") that is
compared with that of the device to determine whether the device needs the
update. Ans. 4---6. The Examiner also acknowledges that the Challener/Lee
'61 7 system lacks any of the three recited client device identifiers, but cites
Lee '757 for teaching this feature in concluding that the claim would have
been obvious. Ans. 6.
Appellants argue, among other things, that not only does Challener
not communicate a check image signal from a client to a server device, let
alone with the recited client device identifier, Lee '617 does not
communicate a software image identifier with an image location to a client
device responsive to the check image signal as claimed. App. Br. 6-10;
Reply Br. 2-7.
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Application 12/878,827
ISSUE
Under§ 103, has the Examiner erred in rejecting claim 1 by finding
that Challener, Lee '617, and Lee '757 collectively would have taught or
suggested a server communicating a software image identifier comprising an
image location to a client device responsive to a check image signal
communicated to the server from the client device, where the client device
requests a software image from the server using the image location?
ANALYSIS
Independent claim 1 recites, in pertinent part, (1) communicating a
check image signal having a client device identifier to a server; (2)
communicating a software image identifier comprising an image location to
the client device from the server responsive to the check image signal; (3) at
the client device, requesting the software image from the server using the
image location; and (4) communicating the software image to the client
device based on the image location. Our emphasis underscores the key role
that the image location has in this process: it is not only communicated from
the server to the client, but is also then used by the client to request the
software image.
Given this functionality, we find the Examiner's position problematic
on this record. In the rejection, the Examiner acknowledges that a software
image identifier is not communicated between server and client before
requesting a software image in Challener, but nonetheless refers to a
software image location in paragraph 48 of that reference. Ans. 4. But this
paragraph refers to database 300 which, although including a software image
location 315, is located at the server 120---not the client. See Challener
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Application 12/878,827
il 47. To the extent that the Examiner's position is premised on this image
location data being somehow sent to the client, there is no reasonable
suggestion to do so on this record, let alone that the client would then use
this communicated location data to request the image, as claimed. Accord
Reply Br. 3 (noting this point).
Nor does Lee '617 cure this deficiency. In Lee '617, a point-to-point
communication link is established between a server and user device, where
the device sends a request message for software upgrade information to the
server, the message including the device's software identification (ID) and a
sequence number. Lee '617 i-f 38. Then, the server sends a response
message with the latest sequence number for the device's software which is
compared with the device's sequence number. Id.
Even assuming, without deciding, that the device's software ID and
sequence number in Lee '61 7 is a software image identifier as the Examiner
indicates (Ans. 13), the Examiner has still not shown that this identifier also
includes an image location, let alone that this communicated location is used
by the client to request the image, as claimed.
Notably, the Examiner finds that when Lee '617's client device
downloads the updated software from the server, the image location is said
to be "inherently known to the client device." Ans. 13. But as Appellants
indicate (Reply Br. 4--5), that is not necessarily the case, for a server can
update a client's software regardless of whether the client knows the location
of the associated image. In claim 1, the image's location is a key element
that is communicated from the server to the client, which the client then uses
to request the image. None of the cited prior art reasonably teaches or
suggests this location-based functionality.
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Application 12/878,827
So even if we were to accept the Examiner's finding that Lee '757
teaches at least one of the three recited client device identifiers (Ans. 6), the
Examiner has still not shown that the cited prior art teaches or suggests
communicating an image location to the client device in the recited manner,
where the client uses the image location to request the software image from
the server, as claimed.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 1 ; (2) independent claim 16 which recites commensurate
limitations; 2 and (3) dependent claims 2, 3, 6, 10, 12-15, 17, 18, 21, 25-27,
and 29-31 for similar reasons. Because this issue is dispositive regarding
our reversing the rejection of these claims, we need not address Appellants'
other arguments.
2 \X/ e note in passing that independent claim 16 recites a system comprising,
among other things, a server device that stores a software image therein, and
communicates a software image identifier and software image to a client
device. The claim also recites that the client device communicates a check
image signal to the server device. Our emphasis underscores the active
method steps that are recited in connection with these limitations. But
apparatus claims reciting active method steps have been held indefinite
under§ 112(b), for such claims raise the question of whether they are
infringed by devices that are merely capable of performing the recited
function, or that they must actually perform that function. See IP XL
Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005);
see also Rembrandt Data Technologies, LP v. AOL, LLC, 641F.3d1331,
1339 (Fed. Cir. 2011) (data transmitting device held indefinite for reciting
transmitting method step). Nevertheless, the Examiner did not reject claim
16 on this basis, nor will we speculate in that regard here in the first instance
on appeal. Rather, we leave this question to the Examiner to consider after
our decision.
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Application 12/878,827
THE OTHER OBVIOUSNESS REJECTIONS
Because the Examiner has not shown that the cited prior art cures the
foregoing deficiencies regarding the rejection of the independent claims, we
will not sustain the obviousness rejections of dependent claims 4, 5, 8, 19,
20, and 23 (Ans. 9--11) for similar reasons.
CONCLUSION
The Examiner erred in rejecting claims 1---6, 8, 10, 12-21, 23, 25-27,
and 29--31 under § 103.
DECISION
The Examiner's decision rejecting claims 1-6, 8, 10, 12-21, 23, 25-
27, and 29-31 is reversed.
REVERSED
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