Ex Parte Da Palma

Patent Trial and Appeal Board

Jul 27, 2016

13788522 (P.T.A.B. Jul. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/788,522 03/07/2013
63675 7590 07/29/2016
PATTERSON & SHERIDAN, LLP/IBM SVL
24 Greenway Plaza
SUITE 1600
HOUSTON, TX 77046-2472
FIRST NAMED INVENTOR
William V. Da Palma
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.
SVL920110069US2 1056
EXAMINER
KING,JOHNB
ART UNIT PAPER NUMBER
2498
NOTIFICATION DATE DELIVERY MODE
07/29/2016 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):
P AIR_eofficeaction@pattersonsheridan.com
PSDocketing@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM V. DA PALMA
Appeal2015-004159
Application 13/788,522
Technology Center 2400
Before DEBRA K. STEPHENS, DANIEL N. FISHMAN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE INVENTION
According to Appellant, the claims are directed to a techniques for
presenting and collecting end user license agreement acceptance (Abstract).
Claim 1, reproduced below, is exemplary of the claimed subject matter:
Appeal2015-004159
Application 13/788,522
1. A computer-implemented method for configuring a
computing appliance, the method comprising:
establishing an initial configuration interface to access the
computing appliance;
receiving one or more configuration commands via the
initial configuration interface;
determining whether each of the one or more
configuration commands have been authorized for
execution prior to acceptance of an end user license
agreement (EULA); and
executing only configuration commands determined to be
authorized for execution prior to the acceptance of the
EULA.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hogberg
Lilly
Cowie
US 2007 /0238450 Al
US 2008/0120192 Al
US 2011/0119479 Al
REJECTIONS 1
Oct. 11, 2007
May 22, 2008
May 19, 2011
Claims 1-13 are provisionally rejected on the ground of non-statutory
double patenting as being unpatentable over claims 7-12 and 26-32 of co-
pending Application 13/230,388 (Final Act. 7-11).
1 Claim 5 is objected due to informalities (Final Act. 11 ). This issue is not
before us (see, e.g., MPEP § 706.01 ).
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Application 13/788,522
Claims 1--4, 7-9, and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cowie and Hogberg (Final Act. 12-17).
Claims 5, 6, 10, and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cowie, Hogberg, and Appellant's Admitted Prior
Art (AAPA) (Final Act. 17-19).
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cowie, Hogberg, and Lilly (Final Act. 19-20).
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
RELATED APPEALS AND INTERFERENCES
Despite Appellant's assertion that "no other appeals or interferences
are known to the Applicant, the Applicant's legal representative, or assignee
which will directly affect or be directly affected by or have a bearing on the
Board's decision in the pending appeal" (App. Br. 4), we note Appellant
filed an Appeal (2015-003777) for co-pending Application 13/230,388 on
the same date (August 21, 2014) by the same Attorney (Jon K. Stewart) for
the same Assignee (International Business Machines Corporation) for the
same Inventor (William V. Da Palma). Thus, Appellant has not met the
disclosure required by 37 C.F.R. § 41.37(c)(l)(ii) because a related
application is pending and furthermore, an appeal was filed on the same date
by the same attorney. 37 C.F.R. § 41.37(c)(l)(ii) states:
A statement identifying by application, patent, appeal,
interference, or trial number all other prior and pending appeals,
interferences, trials before the Board, or judicial proceedings
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Application 13/788,522
(collectively, "related cases") which satisfy all of the following
conditions: involve an application or patent owned by the
appellant or assignee, are known to appellant, the appellant's
legal representative, or assignee, and may be related to, directly
affect or be directly affected by or have a bearing on the Board's
decision in the pending appeal, except that such statement is not
required if there are no such related cases ....
As the co-pending application is a continuation, we determine the
child application is related to, directly affects or is directly affected by, and
has a bearing on the Board's decision in the pending appeal. We further
find, as both appeals list the same real party in interest, list the same
inventors, and were filed by the same attorney, the co-pending appeal was
known to Appellant, Appellant's legal representative, and Assignee.
We remind Appellant of this requirement, that Appellant did not meet
in this Appeal.
ISSUE l
Non-Statutory Double Patenting: Claims 1-13
Appellant presents no arguments pertaining to the Examiner's
limitations of the claimed subject matter rejection of claims 1-13 (App. Br.
1-12; Reply Br. 1-5). Accordingly, we summarily sustain this rejection.
See Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th Ed.,
Rev. 11.2013, Nov. 2015) ("If a ground of rejection stated by the [E]xaminer
is not addressed in the [A ]ppellant's brief, [A ]ppellant has waived any
challenge to that ground of rejection and the Board may summarily sustain
it").
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Application 13/788,522
ISSUE 2
35 U.S.C. § 103(a): Claims 1--4, 7-9, and 11
Appellant asserts their invention is not obvious over Cowie and
Hogberg (App. Br. 7-11). The issues presented by the arguments are:
Issue 2(a): Has the Examiner erred in finding the combination of
Cowie and Hogberg teaches or suggests "establishing an initial configuration
interface to access the computing appliance" and "receiving one or more
configuration commands via the initial configuration interface," as recited in
independent claim 1?
Issue 2(b): Has the Examiner erred in finding the combination of
Cowie and Hogberg teaches or suggests "establishing a connection on the
computing appliance via the network interface," as recited in independent
claim 7?
ANALYSIS
We disagree with Appellant's conclusions and adopt as our own:
(1) the findings and reasons set forth by the Examiner in the Action from
which this appeal is taken; and (2) the reasons set forth by the Examiner in
the Answer in response to the Appeal Brief. With respect to the claims
argued by Appellant, we highlight and address specific findings and
arguments for emphasis as follows.
Appellant argues the combination of Cowie and Hogberg does not
disclose "establishing an initial configuration interface to access the
computing appliance" and "receiving one or more configuration commands
via the initial configuration interface" (App. Br. 9-10). Specifically,
Appellant argues "[c]laim 1 recites establishing a connection to the actual
computing appliance ... and then receiving configuration commands over
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Application 13/788,522
the configuration interface of that computing appliance" (id. at 10).
Appellant further argues "the process of using an applet to specify settings
for a computing system - that may not have even been manufactured" does
not teach the disputed establishment and reception limitations (id.).
We are not persuaded by Appellant's arguments. First, as set forth by
the Examiner, Appellant is arguing limitations not recited in the claim (Ans.
7). Specifically, we note claim 1 does not require "establishing a connection
to the actual computing appliance," as argued by Appellant (App. Br. 10).
Indeed, as the Examiner finds, the claim requires "establishing an initial
configuration interface" and does not require a direct connection or any
physical connection with the computing appliance. (Ans. 7-8). Nor, as set
forth by the Examiner, do the claims recite any specifics about the
computing appliance or the connection (id. at 8).
The Examiner further finds Cowie' s user downloaded applet used to
configure settings of the user's new device (a computing appliance), teaches
the initial configuration interface that allows the user to access the
computing appliance as claimed (id. at 5---6). We agree with the Examiner's
findings. Appellant concedes the cited portion of Cowie discloses "the
'applet' allows a user to specify a variety of custom settings for a[n] item
being ordered" (App. Br. 8). We agree with the Examiner that user
customization of settings for an ordered item are received by the
"manufacturer via the applet and network communication channel"; thus,
Cowie teaches the user being able to customize settings of an ordered device
and, therefore, establishes an initial configuration interface to access the
computing appliance (Ans. 5---6).
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Application 13/788,522
With respect to claim 7, Appellant argues Cowie and Hogberg does
not disclose "establishing a connection on the computing appliance via the
network interface" (App. Br. 10-11). Specifically, Appellant argues "[a]t no
point does the online ordering ... describe receiving configuration settings
for a network interface on the computing appliance and then 'establishing a
connection ... '" as claimed (id. at 11 ).
We are not persuaded by Appellant's arguments. The Examiner finds,
and we agree, that "a connection is established between the user and the new
machine through the network communication channel and the manufacturer"
(Ans. 8). Appellant concedes Cowie discloses user interaction that requires
transmission to the manufacturer after interaction with the web based applet
(App. Br. 10). The claim merely requires "establishing a connection on the
computing appliance via the network interface" (Cl. 7); therefore, we find
the claim does not have a temporal requirement and the connection is
established, even if the transmission is delayed.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Cowie and Hogberg teaches or suggests the limitations as
recited in independent claims 1 and 7, and dependent claims 2--4, 8, 9, and
11, which were not separately argued. Therefore, we sustain the rejection of
claims 1--4, 7-9, and 11under35 U.S.C. § 103(a) for obviousness over
Cowie and Hogberg.
35 U.S.C. § 103(a): Claims 5, 6, 10, and 13
Appellant argues their invention as recited in claims 5, 6, 10, 13, is
not unpatentable over Cowie, Hogberg, and AAP A due to their dependence
on independent claims 1 and 7, respectively (App. Br. 11 ). As set forth
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above with respect to independent claims 1 and 7, we are not persuaded by
Appellant's arguments that the combination of Cowie and Hogberg fails to
teach the claimed invention of independent claims 1 and 7 (Final Act. 17-
19). Thus, for the reasons set forth above, claims 5, 6, 10, and 13 fall with
their respective independent claims.
35 U.S.C. § 103(a): Claim 12
Appellant argues their invention as recited in claim 12, is not
unpatentable over Cowie, Hogberg, and Lilly due to its dependence on claim
12 (App. Br. 12). As set forth above, we determine the Examiner has shown
the combination of Cowie and Hogberg discloses the invention as claimed in
independent claim 7. However, Appellant does not proffer sufficient
evidence or argument to persuade us of error in the Examiner's findings.
Thus, for the reasons set forth above, claim 31 falls with its respective
independent claim.
DECISION
The Examiner's rejection of claims 1-13 under non-statutory
obviousness-type double patenting as being obvious over conflicting co-
pending US Application 13/230,388, is affirmed.
The Examiner's rejection of claims 1--4, 7-9, and 11 under 35 U.S.C.
§ 103(a) as being unpatentable over Cowie and Hogberg is affirmed.
The Examiner's rejection of claims 5, 6, 10, and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over Cowie, Hogberg, and AAPA is
affirmed.
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Appeal2015-004159
Application 13/788,522
The Examiner's rejection of claim 12 under 35 U.S.C. § 103(a) as
being unpatentable over Cowie, Hogberg, and Lilly is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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