Ex Parte Borchers et al

Patent Trial and Appeal Board

Nov 7, 2014

10254060 (P.T.A.B. Nov. 7, 2014)

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.
10/254,060 09/23/2002 Gregory E. Borchers SLA1214 7133
27518 7590 11/07/2014
SHARP LABORATORIES OF AMERICA, INC
5750 NW PACIFIC RIM BLVD
CAMAS, WA 98642
EXAMINER
PEREN, VINCENT ROBERT
ART UNIT PAPER NUMBER
2675
MAIL DATE DELIVERY MODE
11/07/2014 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 GREGORY E. BORCHERS, SCOTT C. KOSS, and
RONO J. MATHIESON1
__________

Appeal 2012-005406
Application 10/254,060
Technology Center 2600
__________

Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a system
and method for downloading and installing a printer driver to a work station
in a network. The claims have been rejected as anticipated or obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the Real Party in Interest is Sharp Laboratories of
America, Inc. (Appeal Br. 3).
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STATEMENT OF THE CASE
The Specification discloses “a web-based network system and
methodology that involve the ‘pre-delivery’ preparation (before
downloading and installation) of fully pre-configured printer drivers which
are readied, at a network-common consolidation site, for delivery to
requesting user work stations seeking to use selected network-available
printing devices” (Spec. 1:5–8).
Claims 1–4 and 10 are on appeal. Claim 1 is illustrative and reads as
follows:
1. A web-based network system for selectively pre-configuring,
and for supporting the subsequent, direct, network downloading and
installing to a user’s work station, in response to a combined downloading
and installing request made by a user of, a printer driver for a selected,
network-available printing device comprising
a driver-management, web-based server site from which a pre-
configured, device-specific printer driver for the selected printing device
may, on receipt, effectively by the site, of a combined user request for such
downloading and installing, downloaded to, and installed in, the work station
of a prospective network user of that device, and
operatively associated with said site, pre-configuration activity
structure, operable, in direct response to such a user’s combined request to
the site for both the downloading and installing of a fully pre-configured,
printer-specific driver for the selected printer, to deliver that driver through
said site for the direct implementation of such a user’s combined request for
the downloading and installing of the driver to the user’s associated work
station.

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The claims stand rejected as follows:
Claims 1, 3, 4, and 10 under 35 U.S.C. § 102(b) as anticipated by, or
alternatively under 35 U.S.C. § 103(a) as obvious based on, Teng2 (Ans. 4);
and
Claim 2 under 35 U.S.C. § 103(a) as obvious based on Teng and
Marbry3 (Ans. 11).
I.
Issue
The Examiner has rejected claims 1, 3, 4, and 10 as either anticipated
by or obvious based on Teng because Teng discloses or would have made
obvious all of the limitations of the claimed system and method (Ans. 4–11).
Appellants contend that claim 1 requires, in response to a single
request, both downloading and installing a printer driver to a user’s
workstation, without any pause or interruption between the downloading and
installing (Appeal Br. 10). Appellants argue that Teng, in contrast, describes
a process that includes an interruption for a user to choose whether or not to
accept the downloaded software (id.). Appellants also argue that “[t]he fact
that intentional and ever-present software-installation pause is a central
aspect of Teng et al. essentially dictates that [ ] this reference simply cannot
alternatively support an obviousness rejection of appellants’ claims” (id. at
12).
The issue presented is whether Teng discloses or would have made
obvious a downloading-and-installing process that installs downloaded

2 Teng et al., U.S. Patent 6,094,679, issued July 25, 2000.
3 Marbry et al., U.S. Patent 5,692,111, issued Nov. 25, 1997.
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software without pausing the process to allow a user to approve or reject
installation of software.
Analysis
We adopt the Examiner’s findings regarding the scope and content of
the prior art. We also agree with the Examiner that the limitations of claim 1
are disclosed by, or at a minimum would have been obvious based on, Teng.
Appellants argue, however, that Teng always includes a pause for user
intervention, and therefore the pause is not a discardable option and is
instead a core feature of Teng’s disclosure (Appeal Br. 12).
In response to this argument, the Examiner noted that he has pointed
to Teng’s incorporation by reference of Slivka4 as evidence that the pause at
issue is optional:
Teng, by incorporating by reference the entirety of Slivka et
al. . . . explicitly teaches that, after digital signature verification,
downloaded software is automatically installed and that it is
completely optional to prompt a user of the client terminal for
confirmation before completing installation of downloaded
software (see paragraphs 15-16 in the June 24, 2011 Final
Rejection).
(Ans. 14.)
In addition to incorporating Slivka’s disclosure by reference, Teng
discusses Slivka’s method. Teng states that Slivka discloses “an update
service which automatically inventories the network client to determine if
any of its resident software files are out-of-date and/or in need of
maintenance updates” (Teng 2:10–13). If software updates are required, the

4 Slivka et al., U.S. Patent 6,049,671, issued Apr. 11, 2000.
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“server automatically downloads the needed software files . . . along with a
secure software installation application. The installation application
downloaded by the network server is provided to cause the automatic
installation of the downloaded software files on the network client.” (Id. at
2:15–20.)
Slivka states that
[w]hen a user accesses the remote update service or network
service, an update service computer conducts an automatic
inventory of the computer software on the user computer. . . .
After the comparison is completed, the update service computer
makes the computer software stored at the remote update
service computer available to the user.
In one aspect of the invention, available computer
software can be downloaded from the remote update service
computer and installed immediately on the user computer.
(Slivka 2:36–55.) Slivka discloses that automatic installation does not
require a user prompt to start the installation. Slivka states:
If the digital signature is verified as correct, the extractor
in the self-extracting executable distribution file (e.g.,
WEXTRACT) extracts and decompresses (if compression was
used) all the files in the cabinet file, and automatically starts the
installation program (if any) that was specified (e.g., setup.exe
/RUN) when the cabinet file was created. Alternatively, the
user can also be prompted by the network browser to start the
installation program, or start the installation program manually
at a later time.
(Id. at 18:35–43, emphasis added.)
We agree with the Examiner that Teng’s discussion of Slivka’s
method, and the disclosure of Slivka that is incorporated by reference into
Teng, show that automatic installation of a downloaded software file,
without any pause to prompt a user to start the installation process, was an
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art-known alternative to a process that included a pause for user input
between downloading and installing a software file. Thus, we also agree
that such an alternative is expressly disclosed by Teng by virtue of its
incorporation of Slivka. At a minimum, modifying Teng’s process to
eliminate the pause would have been an obvious variant to those skilled in
the art, given the incorporation into Teng of a reference that expressly
discloses such a variant. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007) (“[W]hen a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result.”).
See also id. at 417 (“If a person of ordinary skill can implement a predictable
variation [of a known work], § 103 likely bars its patentability.”).
Appellants argue that “Teng et al. incorporates by reference Slivka et
al. . . . for the purpose of criticizing an aspect of this incorporated
document” (Reply Br. 1).
We do not agree that Teng’s discussion of Slivka would have
dissuaded a skilled artisan from modifying Teng’s process to eliminate a
pause for user input. It is true that Teng describes a “disadvantage” of
Slivka’s method:
[W]hile the installation application is itself provided with a
digital signature for use in providing a measure of security, the
executable software files . . . downloaded from the network
server are not provided with any means to individually check
their source. This oversight subjects the network client to a risk
of installing unverified individual executable software files
which may contain code capable of corrupting the network
client.
(Teng 2:34–42.)
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However, “a given course of action often has simultaneous advantages
and disadvantages, and this does not necessarily obviate motivation to
combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir.
2006). “‘Instead, the benefits, both lost and gained, should be weighed
against one another.’” Id. (quoting Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000)).
Here, Slivka states that its method makes upgrades and fixes available
to users (Slivka 1:58–59) without requiring user sophistication and technical
expertise in selecting, downloading, and installing of new software (id. at
2:16–24). Slivka also teaches that automatically installing the available
computer software is advantageous: “Since it is no longer necessary for the
user to install the computer software, the incidence of user related
installation problems is greatly reduced” (id. at 3:21–25). Based on Teng’s
disclosure and the disclosure of Slivka that is incorporated by reference, a
skilled worker would have recognized that, even though Slivka’s automatic
installation has a lower level of security from malware, it has the advantage
of increased user convenience. This off-setting advantage would have
provided a skilled worker with a reason to modify Teng’s process to
eliminate a pause for user input, and therefore would have at least made such
a modification obvious to those of ordinary skill in the art.
Appellants also argue that the embodiment in Slivka cited by the
Examiner does not involve responding to a user request but instead “simply
involves an automatic, computer-to-computer downloading and installing
practice absent any user requesting behavior” (Reply Br. 2). Appellants
argue that, in Slivka’s embodiment that includes a user call for an update,
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Slivka states that “[n]o software is downloaded without the user’s
permission” (id. at 2–3).
This argument is also unpersuasive. Slivka’s discussion at column 18,
which was cited by the Examiner, describes the process shown in Slivka’s
Figure 7. See Slivka 17:51–52 (“Returning to FIG. 7, the secure, self-
extracting executable distribution file . . . is transmitted.”); 17:58–60
(“When the network browser receives the secure, self-extracting executable
distribution file, the digital signature is verified.”); 18:35–39 (“If the digital
signature is verified as correct, the extractor in the self-extracting executable
distribution file . . . automatically starts the installation program.”).
Slivka’s discussion of its Figure 7 begins as follows:
The flowchart in FIG. 7 shows a method 128 of creating a
secure, self-extracting archive of files using an SSD process.
When a user makes a request, either explicitly or by a
HTML Fetch reference, for software (e.g., a new or enhanced
version of a network browser or other software[)], the server
application 116 on the server computer 118 creates a file of
directive commands . . . .
(Id. at 13:34–41, emphasis added.) It is this process that ends, in column 18,
with the automatic installation of downloaded software. Thus, we disagree
with Appellants’ position that Slivka does not describe a process that
includes the automatic installation of the software downloaded in response
to a user request.
Conclusion of Law
Teng discloses or would have made obvious a downloading-and-
installing process that installs downloaded software without pausing the
process to allow a user to approve or reject installation of software.
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Claims 3, 4, and 10 have not been argued separately and therefore fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
II.
The Examiner has rejected claim 2 as obvious based on Teng and
Marbry (Ans. 11–14). Appellants’ only argument with respect to this
rejection is that Marbry “does not mend the important ‘pause deficiency’ of
Teng et al[.]” (Appeal Br. 12). This argument is not persuasive because, as
discussed above, we conclude that Teng discloses or would have made
obvious a process of downloading and installing software without a pause
for user input. We affirm the rejection of claim 2 for the reasons given by
the Examiner.
SUMMARY
We affirm both of the rejections on appeal.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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