NINTENDO CO., LTD.

Patent Trials and Appeals Board

Oct 2, 2020

14498723 - (D) (P.T.A.B. Oct. 2, 2020)

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.
14/498,723 09/26/2014 Teruhiko GODA MJS-723-4058 8006
27562 7590 10/02/2020
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
BOOK, PHYLLIS A
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
10/02/2020 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TERUHIKO GODA, NAOKI TAKEDA,
EIJI TOKUNAGA, and KOICHI NAKAO

Appeal 2019-002948
Application 14/498,723
Technology Center 2400

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Nintendo Co., Ltd.” Appeal Br. 3.
Appeal 2019-002948
Application 14/498,723

2
STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to “reducing a processing load on a side
of server.” Spec. 0,2 ll. 17–19. Independent claims 1 and 17, reproduced
below, are illustrative of argued subject matter.
1. An information processing system comprising a first
server and a first user terminal, wherein:
the first server comprises:
storage configured to store content and to store download
information for respective content downloads for each of
a plurality of user terminals, including the first user
terminal, or for each of a plurality of users of the user
terminals, the download information for each respective
content download including one or more download tasks
comprising information for download operations for a
user terminal for downloading the respective content
download;
first communication circuitry; and
first processing circuitry configured to control the first
server to at least:
receive, via the first communication circuitry, from
the first user terminal, a first request for download;
transmit, via the first communication circuitry, to
the first user terminal, in response to the first
request, download information for the first user
terminal or for a user of the first user terminal;

2 The original Specification does not label the first page with a page number,
labels the second page as page “1,” and so forth. We accordingly reference
the first page as page “0.”
Appeal 2019-002948
Application 14/498,723

3
receive, via the first communication circuitry, from
the first user terminal, a second request for content
from the first user terminal; and
transmit, via the first communication circuitry, to
the first user terminal, in response to the second
request, the requested content from the storage,
wherein the first user terminal comprises:
second communication circuitry; and
second processing circuitry configured to control the first
user terminal to at least:
receive, via the second communication circuitry,
the download information that is transmitted from
the first server;
transmit, via the second communication circuitry,
to the first server, the second request in accordance
with the received download information; and
acquire, via the second communication circuitry,
from the first server, in accordance with the
download tasks included in the received download
information, the requested content.
17. A terminal apparatus comprising:
communication circuitry; and
processing circuitry configured to control the terminal
apparatus to perform operations comprising:
determining, by accessing a revision server, a renewal of
a download task list comprising one or more download
tasks for downloading content, the download tasks
comprising information for download operations for a
user terminal for downloading content; and
when renewal of the download task list is determined:
Appeal 2019-002948
Application 14/498,723

4
acquiring, by accessing a list server, the download
task list;
generating a task status list for the download tasks
in the download task list;
accessing, based on the task status list, a content
server to acquire content; and
updating the task status list based on whether
content acquisition for a particular download task
is successful or unsuccessful.
Appeal Br., Claims Appendix.
Rejections
Claims 1–5 and 14–193 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2–9.
Claims 1, 5–7, and 14–16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Doi (JP 2006/114967 A; Apr. 27, 2006) and Gordon
(US 2010/0011090 A1; Jan. 14, 2010). Final Act. 10–17.
Claims 2–4 stand rejected under 35 U.S.C. § 103 as unpatentable over
Doi, Gordon, and Ruppert (US 2009/0029776 A1; Jan. 29,
2009). Final Act. 17–22.

3 The record does not clearly identify the claims rejected under § 101. The
Final Action omits a statement of rejection (Final Act. 2–3), states
“[c]laims 1–19 are directed to an abstract idea” (id. at 3), and states
“claims 6–13 appear to be only tangentially related to the abstract idea[]
and [thus] have not been rejected as abstract ideas” (id. at 6–7). The Answer
omits a statement of rejection and references “the rejection of claims 1–19
under 35 U.S.C. § 101.” Ans. 4. In light of the above, we view claims 6–13
as not being rejected under § 101.
Appeal 2019-002948
Application 14/498,723

5
Claims 8–12 stand rejected under 35 U.S.C. § 103 as unpatentable
over Doi, Gordon, and Consalus (US 2014/0298041 A1; Oct. 2, 2014).
Final Act. 22–29.
Claims 13 and 17–19 stand rejected under 35 U.S.C. § 103 as
unpatentable over Doi, Gordon, and Iwaya (US 2013/0104121 A1; Apr. 25,
2013). Final Act. 29–36.
35 U.S.C. § 101
Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance
with that framework, we first determine what concept the claim is “directed
to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent-ineligible,
include certain methods of organizing human activity, such as fundamental
Appeal 2019-002948
Application 14/498,723

6
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978));
and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
Concepts determined to be patent-eligible include physical and chemical
processes, such as “molding rubber products” (Diamond v. Diehr, 450
U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth,
vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning
v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that ”a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim ”seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
Appeal 2019-002948
Application 14/498,723

7
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
PTO Guidance
The PTO provides guidance for 35 U.S.C. § 101. USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Guidance”). Under the Guidance, we first look to whether the
claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, and mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
(MPEP) § 2106.05(a)–(c), (e)–(h) (9th ed. 2018)).
84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2)
does not integrate that exception into a practical application, do we then
conclude the claim is directed to a judicial exception (id. at 54) and look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
Appeal 2019-002948
Application 14/498,723

8
(4) simply appends well-understood, routine, conventional
(herein “WURC”) activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
Id. at 56.
Further, the Examiner must explain the required determinations.
October 2019 Patent Eligibility Guidance Update (“Guidance Update”)
at 16.4 The Examiner must also explicitly identify the required evidence.
Id.
Analysis
We are persuaded the Examiner erred in rejecting claims 1–5 and 14–
19 under § 101. The same errors occur for each of claims 1–5 and 14–19,
which are addressed as a group by the Examiner (Final Act. 8–
9). We explain Appellant’s contentions and the Examiner’s errors with
reference to claim 1.
Appellant contends the Examiner does not adequately address the
claimed use of download information and included download tasks.
Appeal Br. 10–14. First, and as addressed below for the Guidance’s
Step 2A(prong 1), there is the following claimed corresponding of the
download information to content downloads and terminals/users:
“download information for respective content downloads for each of a
plurality of user terminals or for each of a plurality of users of the user
terminals, the download information . . . including one or more download
tasks . . . for downloading the respective content download.” Second, and as

4 Available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf.
Appeal 2019-002948
Application 14/498,723

9
addressed below for the Guidance’s Step 2B, there is the following claimed
implementing of the download information via a first user terminal:
transmitting a download request to a server; receiving the download
information from the server in response to the request; transmitting a content
request to the server in accordance with the received download information;
and acquiring the requested content from the server in accordance with the
download tasks included in the received download information.
Turning to the Guidance’s Step 2A (prong 1), the Examiner states the
claimed corresponding of download information constitutes JE subject
matter. Final Act. 6–7. Specifically, the Examiner states the claimed
corresponding of download information: corresponds the download
information to respective content and terminals/users (id. at 5–6); thereby
constitutes a “classification of download information based on terminals”
(id. at 6) that is analogous to the patent-ineligible “classifying and storing
digital images in an organized manner” addressed in TLI Communications
LLC v. AV Automotive LLC, 823 F.3d 607 (Fed. Cir. 2016) (Final Act. 5);
and also thereby constitutes a “predetermined classification” that is
analogous to the patent-ineligible “collecting, . . . recognizing . . . , and
storing” of data addressed in Content Extraction & Transmission LLC
v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343 (Fed. Cir. 2014)
(Final Act. 7).
Appellant contends that, even assuming the claimed corresponding of
download information is analogous to the patent-ineligible claim features of
TLI and Content Extraction, the Examiner still fails to explain why the
claimed corresponding of download information falls within the Guidance’s
categories of JE subject matter. Reply Br. 2.
Appeal 2019-002948
Application 14/498,723

10
The claimed subject matter does not fall within one of the Guidance’s
categories of judicial exceptions. See Guidance at 52. Further, even
assuming (arguendo) the Examiner shows the claimed corresponding of
download information is equivalent to the patent-ineligible claim features of
TLI and Content Extraction, the Examiner does not show the Guidance’s
categories of JE subject matter encompass those patent-ineligible claim
features. See e.g., Guidance at 52–53 nn.12–15 (listing Federal Circuit
determinations of patent-ineligibility and omitting TLI and Content
Extraction); see also id. at 52 n.11 (stating TLI is part of a “growing body of
precedent” that problematically describes “similar subject matter . . . both as
abstract and not abstract”). Therefore, we conclude the claims do not recite
judicial exceptions pursuant to Step 2A, Prong One, of the Guidance. We
reverse the Examiner’s 35 U.S.C. § 101 rejection of claims 1–5 and 14–19.

35 U.S.C. § 103
Claims 1, 5–7, and 14–16 (Doi and Gordon)
Claims 1, 5–7, and 14–16 are rejected as obvious over Doi and
Gordon. Appellant addresses these claims as a group, contesting only the
Examiner’s reliance on Gordon. Appeal 14–17. We select claim 1 as
representative of the group. 37 C.F.R. § 41.37(c)(1)(iv). We are not
persuaded the Examiner erred in rejecting claim 1 under § 103.
Claim 1 recites, in disputed part, “download tasks” of a user
terminal. See infra. The download tasks are part of the claimed download
information (“download information . . . including one or more download
tasks”), thus received by the first user terminal from the server (“receive . . .
the download information . . . from the first server”), and used by the first
Appeal 2019-002948
Application 14/498,723

11
user terminal to download content from the server (“download tasks . . . for
downloading the respective content download” and “acquire . . . from the
first server[] in accordance with the download tasks”).
Appellant contends the Examiner “applies Gordon as allegedly
suggesting the providing of download tasks to the mobile terminal in Doi.”
Appeal Br. 15. Appellant further contends Gordon does not suggest the
claimed download tasks because:
Gordon discloses a download management system in which download
managers on a network negotiate bandwidth allocations[.]
. . . [V]arious download managers each gather information about
download tasks (e.g., user requested content, scheduled content,
streamed download, etc.) that are planned or in operation . . . [and]
communicate[] to the other download managers these planned or
operational download tasks . . . . The download managers can then
work together to share the download resources[.]
Gordon is quite different from the claimed subject matter in which
download information from a server to a device requesting content
includes download tasks[,] which are then used by the device to
acquire the content. Gordon contains no disclosure of, for example,
the shared resource providing download tasks to the devices
requesting content.
Id. at 16.
We not persuaded of error because Appellant addresses only Gordon,
whereas the claimed download tasks are read on Doi’s invention as modified
in view of Gordon. See In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”). Specifically, the Examiner finds Doi’s
invention transmits download information from a server to devices
requesting content. See Final Act. 12. The Examiner finds Gordon
Appeal 2019-002948
Application 14/498,723

12
communicates scheduled download tasks to networked user devices, thereby
improves downloads of the devices, and thereby suggests to communicate
scheduled download tasks within Doi’s download information that is
provided to networked user devices requesting content. Final Act. 13–15
(citing Gordon ¶ 18); see Gordon ¶ 18 (the user devices adjust their
downloads based on the scheduled download tasks of other devices). Thus,
contrary to Appellant’s above argument, Examiner finds Doi’s invention as
modified—not Gordon—achieves a system whereby a shared resource of
devices provides download tasks to devices requesting content. See
Appeal Br. 16.
We also note Appellant’s contention that Gordon does not teach a
“shared resource” providing download tasks to user computing devices not
to be persuasive of Examiner error. See Appeal Br. 16. Gordon’s “global
politeness coordination function” (e.g., a server accessed via the Internet)
dictates how the user devices download content, e.g., how a device
prioritizes a download and/or adjusts its download bandwidth. Gordon ¶¶ 4,
8–10, 19–20, 29, 31.
For the foregoing reasons, we sustain the rejection of claims 1, 5–7,
and 14–16 under § 103.
Claims 2–4 (Doi, Gordon, and Ruppert)
Claims 2–4 are rejected as obvious over Doi, Gordon, and Ruppert.
Each claim argued separately. Appeal 17–19. We are not persuaded the
Examiner erred in rejecting claims 2–4 under § 103.
Claim 2
Claim 2 depends from claim 1 and adds that the claimed first user
terminal (and particularly its second processing circuitry) is “configured to
Appeal 2019-002948
Application 14/498,723

13
access the first server according to existence/non-existence of renewal of the
download information.”
Appellant contends the Examiner cites Ruppert as teaching claim 2’s
limitations. Appeal Br. 17–18. Appellant further contends:
[Ruppert’s cited paragraphs 144–45] describe that a system server 201
. . . builds packages for downloading to the EGMs based on
information about the EGMs. However, nothing in the referenced
portions . . . discloses or suggests any conditions for the processing
circuitry of the EGMs to access the server 201, much less that the
processing circuitry of the EGM is configured to access a server based
on existence/non-existence of renewal of download information . . .
[comprising] download operations for . . . a respective content
download.
Id. (original emphasis); see also Reply Br. 6.
We are not persuaded of Examiner error for each of two reasons.
First, Appellant’s argument is not commensurate with the
claim scope. Appellant contends the claimed “access . . . according to
existence[] of renewal of the download information” requires a renewal of
download operations. Appeal Br. 18. That is incorrect. Though base
claim 1 recites that the download information includes download
tasks/operations, claim 2’s “existence[] of renewal of the download
information” does not specify a renewal of the included download
tasks/operations. Thus, claim 2’s “renewal of the download information”
can concern a renewal of other included information.
Second, we agree with the Examiner’s determinations. The Examiner
finds Ruppert’s EGM and download server system (201) suggest adding
claim 2’s “according to” conditition to Doi’s server system and terminal.
Id. at 12–13 (citing Ruppert ¶¶ 144–45). We agree because Ruppert’s server
system and EGM exchange the following communications: the system
Appeal 2019-002948
Application 14/498,723

14
broadly notifies EGMs, e.g., via broadcasts, that a list of available
downloads has changed; in response, and EGM requests new software and
the system verifies the EGM and request; and, if the EGM is verified, the
system instructs the EGM to add a software package, e.g., provides the
location of a distribution server for the respective download. Ruppert ¶ 145;
see also id., abst. (“multicast protocol . . . to implement a one-way download
progress notification”), ¶¶ 789–95 (describing the general purpose and use
of multicast protocol). By incorporating these teachings, Doi’s terminal
would request new software from the system (i.e., access the system) in
response to a change in the list of software available for download and
would thus “access the . . . server according to existence[] of renewal of . . .
download information” (claim 2).
Claim 3
Claim 3 depends from claim 2 and adds that the claimed first user
terminal (and particularly its second processing circuitry) “is further
configured to transmit a request to the first server, . . . when a renewal of the
download information is determined to exist, for transmission of the
download information.”
Appellant contends the Examiner cites Ruppert as teaching claim 3’s
limitations. Appeal Br. 18. Appellant further contends:
[A]s discussed [for claim 2], the new data for [Ruppert’s] EGMs
referenced in ¶ [0145] relates to the system server building packages
for download. Ruppert et al. does not disclose that the processing
circuitry of the EGM is configured to transmit a request based on the
existence of new data, much less transmit a request for the claimed
download information based on the existence of new data.
Id.; see also Reply Br. 7.
Appeal 2019-002948
Application 14/498,723

15
We are not persuaded of Examiner error. We agree with the
Examiner’s determinations. The Examiner finds Ruppert’s download server
system (201) and EGM suggest adding claim 3’s “when” condition to Doi’s
server system and terminal. Final Act. 19–20 (citing Ruppert ¶ 145). By
incorporating Ruppert’s noted teachings (see supra 17–18), Doi’s terminal
would request new software from the system in response to a renewed
(changed) list of available software and thus “transmit a request to the first
server, . . . when a renewal of the download information is determined to
exist, for transmission of the download information” (claim 3).
Claim 4
Claim 4 depends from claim 2 and adds: “the [first user terminal] is
further configured to inquire of the second server the existence/non-
existence of the renewal of the download information.”
Appellant contends the Examiner cites Ruppert as teaching claim 4’s
limitations. Appeal Br. 18. Appellant further contends Ruppert’s EGM is
not described as “inquiring of a server” about the existence of a renewal of
download information. Appeal Br. 19; Reply Br. 7 (“[T]he Appeal Brief
[contentions] are directed to Ruppert et al.’s failure to disclose that the EGM
inquires of a server about the existence/non-existence of the renewal of the
claimed download information.”).
We are not persuaded of Examiner error. We agree with the
Examiner’s determinations. The Examiner finds Doi’s terminal receives,
from the server system, a Uniform Resource Identifier (URI) location to
download content and then “inquire[s] of the second server” (claim 4) to
download content. Final Act. 21. The Examiner finds Ruppert’s download
server system (201) and EGM suggest to “inquire . . . the existence[] of the
Appeal 2019-002948
Application 14/498,723

16
renewal of the download information.” Id. at 22 (citing Ruppert ¶ 145).
Thus, the Examiner proposes to add Ruppert’s noted teachings
(see supra 17–18) to the communications between Doi’s terminal and the
URI location (second server). In Doi’s resulting invention, the terminal
would inquire the URI’s server about the availability of the content (i.e.,
would request the content) before downloading and would thus “inquire of
the second server the existence[] of the renewal of the download
information” (claim 4).
Claims 8–12 (Doi, Gordon, and Consalus)
Claims 8–12 are rejected as obvious over Doi, Gordon, and Consalus.
Claims 8–12 are not argued separately. See Appeal Br. 19. Appellant
argues only that they depend from claim 6 (id.), which is also not separately
argued (id. at 17). Appellant argues only that claim 6 depends from claim 1.
Id. As the arguments for claim 1 are not persuasive, we are not persuaded
the Examiner erred in rejecting claims 8–12 under § 103.
Claims 13 and 17–19 (Doi, Gordon, and Iwaya)
Claims 13 is not argued separately. Appellant argues only
that claim 6 depends from claim 1. Appeal Br. 19, 21. As the arguments for
claim 1 are not persuasive, we are not persuaded the Examiner erred in
rejecting claim 13 under § 103.
Claim 17 is separately argued. For the reasons below, we are not
persuaded the Examiner erred in rejecting claim 17 under § 103. As
claims 18 and 19 depend from claim 17, we are also not persuaded the
Examiner erred in rejecting claims 18 and 19 under § 103.
Appeal 2019-002948
Application 14/498,723

17
Claim 17
Claim 17 recites in disputed part: “control the terminal apparatus to
perform operations comprising: . . . determining, by accessing a revision
server, a renewal of a download task list comprising one or more download
tasks . . . for a user terminal for downloading content; . . . acquiring, by
accessing a list server, the download task list.” Appeal Br. 20–21.
Appellant contends the Examiner cites Iwaya as suggesting the above
claim limitations. Appeal Br. 20. Appellant further contends:
[T]he [terminal] device [10] of Iwaya et al. receives version
information from a [software] server [12a] and uses the version
information [to] determine whether to download a newer version of
system software. This does not involve accessing a [revision] server
and a list server as recited in claim 17. Moreover, Iwaya et al.’s “file
list” is generated by the [terminal] device [10] itself—there is no
disclosure of downloading this list[.]
Id. at 20–21.
We are persuaded of Examiner error. The Examiner cites Iwaya’s
patch file provider server (12b) and system software provider server (12a) as
respectively suggesting the claimed revision server and list server.
Final Act. 32–33; Ans. 16–18. As Appellant argues, the Examiner does not
show, as required by the mapping of Iwaya’s servers to the claimed servers,
that the patch file server (“revision server”) is accessed to determine a
renewal of a download task list and the software server (“list server”) is
accessed to acquire the same download task list. The Examiner maps
Iwaya’s servers to the claimed servers without even addressing whether
Iwaya’s servers are related by a download task list as above. See e.g.,
Ans. 13.
Appeal 2019-002948
Application 14/498,723

18
We add that the only apparent commonality between Iwaya’s servers
is that a terminal acquires version information and a list of downloads for
each server. Iwaya ¶¶ 81, 93–94. Specifically, the terminal acquires version
information from the patch file server, software server, and a content server
(12c) to determine a “list of patch files” (Iwaya ¶ 93), a “latest version” of
software (id. ¶ 81), i.e., a list of one, and a “list of content files” (id. ¶ 94) for
for download from those servers. The Examiner does not find the patch file
server (“revision server”) is accessed to determine a renewal of version
information or a download list and the software server (“list server”) is
accessed to acquire the same version information or a download list.
Conclusion
For the foregoing reasons, we sustain the § 103 rejection of claims 1–
5 and 14–16. We do not sustain the § 103 rejection of claims 17–19.
Appeal 2019-002948
Application 14/498,723

19
OVERALL CONCLUSION
We affirm the Examiner’s decision to reject claims 1–16.5 We
reverse the Examiner’s decision to reject claims 17–19.
DECISION SUMMARY
Claims
Rejected 35 U.S.C. Basis Affirmed Reversed
1–5, 14–19 § 101 Subject Matter Eligibility 1–5, 14–19
1, 5–7, 14–16 § 103 Doi, Gordon 1, 5–7, 14–16
2–4 § 103 Doi, Gordon, Ruppert 2–4
8–12 § 103 Doi, Gordon, Consalus 8–12
13, 17–19 § 103 Doi, Gordon, Iwaya 13 17–19
Overall
Outcome 1–16 17–19

AFFIRMED IN PART

5 “The affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim.” 37 C.F.R. § 41.50.