Ex Parte Casey et al

Board of Patent Appeals and Interferences

Oct 22, 2009

10652719 (B.P.A.I. Oct. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN M. CASEY and BRUCE A. PHILLIPS
____________

Appeal 2009-004207
Application 10/652,719
Technology Center 2600
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Decided: October 22, 2009
____________

Before JOHN C. MARTIN, KARL D. EASTHOM,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal1 under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-29 (App. Br. 2). We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellants’ invention provisions telecommunication offerings from a
first provider through a clearing house to equipment at a customer’s
premises. The invention also maintains the offering at the customer’s
premises and/or at customer premises equipment (CPE) located there.
(Abstract; Spec. ¶ 0022-23).
Claim 1, illustrative of the invention, follows:
1. A method of provisioning telecommunication offerings,
comprising:
receiving from a first provider a message at a services clearing
house to provision a telecommunication offering at a customer’s premises;
processing the request into a provisioning message;
directing the provisioning message to the customer’s premises,
thereby causing the offering to be provisioned at the customer’s premises;
and
maintaining the offering at the customer’s premises.

1 This opinion refers to Appellants’ Appeal Brief (filed Jan. 7, 2008) (“App.
Br.”) and Reply Brief (filed June 3, 2008) (“Reply Br.”), and the Examiner’s
Answer (mailed Apr. 3, 2008) (“Ans.”) and Final Rejection (mailed July 7,
2007) (“Fin. Rej.”).
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The Examiner relies on the following prior art references:
Hsu US 6,374,079 B1 Apr. 16, 2002
Little US 2004/0110497 A1 June 10, 2004
(filed Apr. 12, 2002)
The Examiner rejected, under 35 U.S.C. § 103(a), claims 1-29 based
upon Little and Hsu.

ISSUE
Appellants (App. Br. 4) contest the Examiner’s finding that Little and
Hsu collectively teach “maintaining the offering at the customer’s premises”
as set forth in claim 1. Appellants group claims 1-20 together (id.).
Accordingly, claim 1 is selected to represent these claims. See 37 C.F.R. §
41.37(c)(1)(vii). Appellants’ arguments with the remaining dependent
claims primarily concern the types of computer maintenance recited.
Appellants’ arguments raise the following issue:
Did Appellants demonstrate that the Examiner erred in finding that
Little and Hsu collectively teach “maintaining the offering at the customer’s
premises” as set forth in claim 1 and the maintenance related limitations set
forth in claims 21-29?

FINDINGS OF FACT (FF)
Appellants’ Disclosure
1. Appellants (App. Br. 3) rely on paragraphs 0023, 0027, and 0064
of their Specification as support for the final clause recited in claim 1,
“maintaining the offering at the customer’s premises.” Paragraph 0023
recites “routine maintenance” as including responses from service providers
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such as “diagnostic requests” which “may include both active (e.g., reboot
and passive (e.g., send data) commands.” Paragraph 0027 describes queries:
“Periodically, the centralized CPE configuration system may query CPE
connected to the network to determine if the CPE has been upgraded or
reconfigured in any way.” Paragraph 0064 describes “a method 600 of
billing a customer for telecommunication services.”
Little
2. Little teaches provisioning service books to mobile devices. These
services help to “solve real world business problems” (¶ 0004), providing
“stock quotes, flight information, airfare seat sales, sports information,
company inventory records, new contacts, new calendar events, new
contacts, new e-mail messages, and a range of other service information
pushed to any device all day and without prior action on the part of the user”
(¶ 0049).
3. Provisioning involves loading application software to perform
services listed in the service book, and it may accompany the initial service
book offer and acceptance procedure (¶¶ 0055, 0060). The invention
“provid[es] for information or software downloads to the mobile device 100
other than through a wireless communication network” in “synchronization .
. . with a desktop computer” (¶ 0105) ; i.e., providing “wireline or wireless”
delivery (¶ 0053) using “a close proximity link 62 (serial, RF, IRDA,
Bluetooth, 802.11, etc.)” behind a company firewall 64 (¶ 0051; Fig. 5).
4. “[S]ecure communications applications may enable electronic
commerce functions and other such financial transactions to be performed
using the mobile device 100” (¶ 0102). Customer credit card information
may be required during provisioning (¶¶ 0082, 0089). “Ideally the service
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offering would include a monthly charge, in this example that is $9.95 per
month” (¶ 0056).
5. Little also teaches updating service offerings: “Each time a change
occurs to the service book cache on the mobile device 100c, the user could
be prompted to make the final choice to accept or reject the change” (¶
0042). Little further teaches sending “‘ping’ tests to the host service to
ensure the host service is still on-line” (¶ 0094).
Hsu
6. Hsu teaches remote configuring, automating, and controlling of
smart home function control systems (alarm, appliance, watering, heating,
cooling, etc. (col. 3, ll. 49-53)) either from a “user premise 15” (with
personal computer (PC) 33 and base station (BS) 35 (col. 6, ll. 63-67)), a
“remote premise 19,” and/or a mobile unit 17 via the Internet (col. 6, ll. 6-
24).
7. Hsu discloses (col. 8, ll. 8-42) a company providing a service via
an Internet server 27, to provide various control and software (SW) services
including remote access to the home system and “provision of customer
premise equipment (CPE) . . . [such] as BS 35 and S/A 37 within premise
15” (col. 8, ll. 13-16). “SW residing on server 27 functions to manage . . .
user accounts and information and data regarding installations. SW residing
on server 27 also functions in the capacity of web-server software allowing
posting of stored data as well as received data, performing automated
software and firmware updates . . . and other user interaction processes”
(col. 8, ll. 33-40) (emphasis added).
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8. “Data updates in a preferred embodiment are uploaded
automatically from BS 35 to server 27 on a periodic basis” (col. 10, ll. 3-4)
(emphasis added).
9. Hsu’s system provides virtual planning of the home system and
Internet-based debugging, testing, and troubleshooting:
The inventor is aware as well that there [is] . . . very little
information for planning, installation, aid, debugging, and
troubleshooting such systems. It is a further object of the
present invention to correct this lack, and to provide an
Internet-based service through which a client may plan and
build a virtual system, . . . and then may rely on the service as
well to guide the client through installation, testing, and
debugging; and then may activate and access and interact with
the resulting system both locally and remotely, as described
above.
(col. 28, ll. 4-21) (emphasis added).

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (citations omitted). “‘On appeal to the
Board, an applicant can overcome a rejection by showing insufficient
evidence of prima facie obviousness . . . .’” Id. at 985-986 (quoting In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
During examination of a patent application, the PTO “is obligated to
give claims their broadest reasonable interpretation during examination.” In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
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“[T]he words of a claim ‘are generally given their ordinary and customary
meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
(en banc) (internal citations omitted). “‘[C]laims must be construed so as to
be consistent with the specification, of which they are a part.’” Id. at 1316
(citation omitted).

ANALYSIS
Claims 1-20
The Examiner found that Little teaches all the claim 1 steps recited
except the last step, including the recitation in the third step of “causing the
offering to be provisioned at the customer’s premises” (Ans. 3). Appellants
do not dispute this finding. (The record supports the finding that Little
teaches provisioning at the customer premises such as behind a company
firewall (see FF 2-3)). Appellants primarily argue that “Little and Hsu are
not properly combinable” (App. Br. 4).
The Examiner applied Hsu to teach the last step in claim 1 of
“maintaining the offering at the customer’s premises.” Appellants’
Specification (FF 1) indicates that merely billing the customer satisfies this
last step. As such, Hsu’s cumulative teachings are not required. Little
suggests automatic (credit card) monthly billing (FF 4). Once a
telecommunications offering has been provisioned at the customer’s
premises, common sense indicates it must be maintained there, otherwise,
there would be no reason to provide it there. “‘Our suggestion test is in
actuality quite flexible and not only permits, but requires, consideration of
common knowledge and common sense.’” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 416 (2007)(citation omitted).
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Apart from billing, Little teaches constant communication with the
service (FF 2): “stock quotes, flight information, airfare seat sales, sport
information, new calendar events, and a range of other service information
pushed to any device all day.” Little also teaches sending prompts from the
system to the customer to accept updates and sending “‘ping’ tests” from the
customer to the service to check on the service (FF 5). In light of
Appellants’ disclosure, since monthly billing constitutes “maintaining the
offering at the customer’s premises,” it follows that Little’s daily
communication, suggested billing, service updates and/or pings also
constitute such maintenance.
Further, Appellants’ arguments notwithstanding, Hsu merely adds the
unremarkable teaching that computer systems benefit from maintenance,
including on-line debugging, software updating, and troubleshooting (FF 7-
9). The Examiner found (Ans. 4) that Hsu teaches updating “software for
communication equipment like PC or internet equipment.” The record
supports this finding (FF 7-9).
As such, Appellants’ assertions (App. Br. 4-6) that Hsu and Little are
not combinable because one relates to a home computer system while the
other relates to a mobile computer system is unconvincing. Whether
wireless (mobile) or wired (home), on-line debugging, software updating,
and troubleshooting predictably would have benefited each type of system.
Moreover, Little’s and Hsu’s systems each include wired and wireless
communication types (FF 3, 6).
Appellants also argue (App. Br. 5) that Hsu is directed to “automation
of various home function systems . . . . In other words, Hsu is not directed
to update software. Rather, Hsu is directed to help a user to automate
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certain tasks; updating software happens to be one of the tasks.” Appellants
also argue (id. at 6) that Hsu’s teachings are limited to building and planning
a virtual system. Appellants cite no authority for the proposition that a
teaching must be more than “one of the tasks” taught. As indicated supra,
Little’s automated system (trading, e-mail, billing, etc.) (FF 2) would have
predictably benefited from Hsu’s teachings of on-line debugging, software
updating, and troubleshooting (FF 7-9). Each new stage of updated software
requires debugging and troubleshooting. Troubleshooting suggests
continual maintenance.
Appellants’ related assertion (App. Br. 4) that “pushing a service book
to a home function system and/or appliance is likely to render the home
function system and/or appliance non-operable because the service book is
meant to be pushed to a mobile device” is also unconvincing because it
mischaracterizes the Examiner’s rejection. The Examiner does not attempt
to modify Hsu by pushing a service book to Hsu’s home system (Ans. 3-4).
Rather, as indicated above, the proposed modification simply applies Hsu’s
teachings of maintaining or upgrading software (FF 7-9) to Little’s computer
system.
Accordingly, Appellants have failed to demonstrate Examiner error in
the rejection of claim 1 and claims 2-20 which were not argued separately
and fall with claim 1. In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987);
37 C.F.R. § 41.37(c)(1)(vii).

Claims 21, 24, and 27
Claims 21, 24, and 27, respectively dependent from claims 1, 7, and
16, add a limitation calling for querying customer provisions equipment
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(CPE) as a further limitation to the “maintaining” (claims 1 and 7) and
“provisioning arrangement” (claim 16) clauses.
Appellants initially focused on teachings in Hsu at column 33 in
response to the Examiner’s Final Rejection. The Examiner responded by
stating that “Hsu teaches the query to guide the client through installation,
testing and debugging” (Ans. 13) (citing Hsu, col. 28, ll. 11-20, 48-55). The
Examiner also stated that “Hsu teaches the query of download software to
client PC” (id.). As noted supra, Hsu does teach installation, testing and
debugging, as well as downloading software (FF 7-9).
Appellants do not reply with any particular response to these findings
as articulated by the Examiner. Appellants do generally reply, apparently as
a response to all the claim rejections, as follows: “The cited passages appear
to be directed to allowing a client to ‘plan and build a virtual system’ (Hsu,
col. 28. l. 14) . . . . In contrast, the system in Little appears to have already
been completed and fully built . . . . Accordingly, it is unclear why Little
would still need to plan and build a virtual system” (Reply Br. 3).
This response, similar to the arguments addressed supra with respect
to claim 1, focuses too narrowly on Hsu’s teachings and misconstrues the
thrust of the Examiner’s rejection. Namely, maintaining systems by
updating, testing and debugging software amounts to applying routine skill
as necessary for any computer system, new or existing. Even if Little’s
system were completely built, software updating, testing, and debugging
naturally and predictably would have benefited the system before, during,
and after such building. Querying would naturally occur as a normal first
step of determining whether or not software has been updated, or, as later
steps in any testing or debugging of the software. (See FF 7-9).
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Accordingly, Appellants have failed to demonstrate Examiner error in
the rejection of claims 21, 24 and 27.
Claims 22, 25, and 28
These claims, dependent from claims 1, 7, and 16, respectively recite
sending a diagnostic request to the “customer’s premises,” “the location of
the customer,” and to the “customer premises equipment.” As such, these
claims generally parallel the scope of claims 21, 24, and 27. Appellants’
arguments (App. Br. 7) and the Examiners findings and responses (Ans. 10,
13-14) track those with respect to claims 21, 24, and 27. Accordingly, for
the reasons supra (see also infra, dependent claims 23, 26, and 29),
Appellants have failed to demonstrate Examiner error in the rejection of
these claims.
Claims 23, 26, and 29
These claims, respectively dependent from claims 22, 25, and 28,
recite “wherein the diagnostic request comprises data update and equipment
reboot commands.” Appellants argue (App. Br. 7) that “[i]t is unclear which
portion of the long passages cited by the Office Action even teaches
‘resetting’ as argued by the Office Action, let alone ‘data update and
equipment reboot commands.’”
The Examiner cited Hsu at column 10, lines 3-14 as teaching data
updates, and reasoned that current data is required as conditions change
(Ans. 14). As to the reboot command, the Examiner explained that software
installation and initialization generally entails a boot or reboot (see id.). The
Examiner’s explanation constitutes “some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness,” Kahn,
441 F.3d at 988. Hsu teaches initializing, troubleshooting, updating, and
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debugging of software (FF 7-9). Booting, re-booting, and data updating are
part and parcel of these routine software maintenance procedures.
Accordingly, Appellants have failed to demonstrate Examiner error in
the rejection of claims 23, 26, and 29.
CONCLUSION
Appellants did not demonstrate that the Examiner erred in finding that
Little and Hsu collectively teach “maintaining the offering at the customer’s
premises” as set forth in claim 1, and the maintenance related limitations set
forth in claims 21-29.
DECISION
We affirm the Examiner’s decision rejecting claims 1-29.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

ack

cc:

Qwest Communications International Inc.
1801 California St., #900
Denver CO 80202