Ex Parte Enns et al

Patent Trial and Appeal Board

Feb 9, 2018

14218211 (P.T.A.B. Feb. 9, 2018)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/218,211 03/18/2014 Frederick Enns TN093CON2 8181
54698 7590 02/13/2018
MOSFR TAROADA
EXAMINER
1030 BROAD STREET WON, MICHAEL YOUNG
SUITE 203
SHREWSBURY, NJ 07702 ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
02/13/2018 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):
docketing@mtiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERICK ENNS, MICHEL VEILLETTE, and
RANDALL WAYNE FREI
Appeal 2017-009831
Application 14/218,211
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The disclosed and claimed invention on appeal relates to “improved
communications between HAN devices and head-end systems utilizing a
communications hub function over a WAN such as a cellular network.”
(Spec. 2).
Appeal 2017-009831
Application 14/218,211
Representative Claim
1. A computer implemented method for coordinating firmware
updates comprising:
receiving, from a designated server, firmware upgrades at
a hub device, wherein the firmware upgrades comprise one or
more firmware upgrade images for updating
[LI] one or more target devices, wherein the hub device
acts as both a coordinator and gateway between a wide area
network (WAN) and one or more home area network (HAN)
devices;
[L2] authenticating, at the hub device, the one or more
firmware upgrade images;
performing firmware upgrade on a target device when the
target device is the hub device;
transferring, from the hub device, the one or more
firmware upgrade images to the one or more target devices
when the one or more target devices are HAN devices;
[L3] initiating upgrade of the one or more target devices
in accordance with the transferred one or more firmware
upgrade images;
[L4] reporting, by the hub device, a status of each of the
one or more target devices to the WAN; and
[L5] messaging, by the hub device, activation
instructions for the one or more firmware upgrade images to the
one or more target devices.
(Contested limitations LI — L5 are emphasized).
Rejections
A. Claims 1, 4, and 7—11 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and suggestions of
O’Neill (US 2003/0182414 Al, iss. Sept. 25, 2003) and Keany et al.
(“Keany,” US 2008/0059275 Al, publ. March 6, 2008).
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B. Claims 2, 3, 5, 6, and 12 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and suggestions of
O’Neill, Keany, and Kapadekar et al. (“Kapadekar,” US 2007/0093243 Al,
publ. April 26, 2007).
Grouping of Claims
Based on Appellants’ arguments in the Appeal Brief, we decide the
appeal of rejection A of separately argued claims 1 and 4, separately, infra.
We decide the appeal of claims 7—11, also rejected under rejection A, based
upon representative claim 7. We decide the appeal of claims 2, 3, and 12,
rejected under rejection B, based upon representative claim 2. To the extent
Appellants have not advanced separate, substantive arguments for the
remaining claims on appeal, such arguments are considered waived. See 37
C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
In reaching this decision, we consider all the evidence presented and
all arguments actually made by Appellants. We find Appellants’ arguments
unpersuasive for the reasons discussed infra. We adopt as our own: (1) the
findings and legal conclusions set forth by the Examiner in the Final Office
Action from which this appeal is taken (Final Act. 2—9), and (2) the findings,
legal conclusions, and explanations set forth in the Answer in response to
Appellants’ arguments (Ans. 9-14). We highlight and address specific
findings and arguments for emphasis in our analysis below.
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Appeal 2017-009831
Application 14/218,211
Rejection A of Independent Claim 1 under 35 U.S.C. § 103(a)
Appellants contend, “O’Neill fails to teach a hub, [and] Keany fails to
teach a hub that is both a coordinator and a gateway between a WAN and a
HAN.” (App. Br. 10).
We are not persuaded by Appellants’ arguments because Appellants
are arguing the references separately.1 The Examiner cites Keany, not
O’Neill, for teaching or suggesting a hub and a HAN. (Final Act. 5; see
Keany Fig. 1,116). The Examiner cites O’Neill (Figs. IB, 1C, H 40, 160)
for teaching a device that is both a coordinator and a gateway between a
WAN and another network. (Final Act. 3).
Moreover, we agree with the Examiner that O’Neill’s update server,
acting as a gateway, and coordinating the transfer of update packages,
teaches, or at least suggests, contested limitation El: “one or more target
devices, wherein the hub device acts as both a coordinator and gateway
between a wide area network (WAN) and one or more home area network
(HAN) devices,” as recited in claim 1. (Ans. 10—11).
We find a preponderance of the evidence supports the Examiner’s
findings because O’Neill’s update server coordinates transfers of update
packages to a plurality of client devices, in which the update server acts as a
gateway. See O’Neill 147 (“the update server array 122 may coordinate
the transfer of a plurality of update packages”), 1 60 (“the update device
server(s) 136 acts as gateways”) (emphasis added). We further agree with
1 One cannot show non-obviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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Application 14/218,211
the Examiner’s findings because we find Keany’s remote network devices,
which include a gateway, teach or at least suggest2 the disputed term. (Final
Act. 5, citing Keany 116).
Appellants further urge: “the cited combination fails to teach a
firmware upgrade, rather than a software upgrade.” (App. Br. 10).
However, the Examiner concludes the claimed “firmware” is a type of
software and further finds O’Neill’s updating offirmware or software
components in devices teaches, or at least suggests, “firmware upgrades,” as
recited in claim 1. (Ans. 10, citing O’Neill 42, 63).
We find Appellants’ argument unavailing because it is grounded on an
erroneous premise that firmware is not a type of software. We agree with
the Examiner’s findings, because we find O’Neill’s over the air (OTA)
updating of software or firmware teaches or at least suggests the disputed
limitation. See O’Neill 142 (“One desirable feature of the update
management system is that it may be readily adapted for use in wireless
update procedures or over the air (OTA) updating. This method allows
updates for software or firmware components in devices without hardware
changes.”) (emphasis added).
Appellants further contend, “[t]he cited combination fails to teach
messaging the activation instructions to the target devices after the hub has
received and transmitted a status of each target device receiving the
2 Our reviewing court guides: “‘the question under [35 U.S.C. § 103] is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.’” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (emphasis added); see also MPEP § 2123.
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upgrade,” because both references teach “automatic execution of a software
upgrade.” (App. Br. 11).
The Examiner notes that Appellants are arguing limitations not recited
in the claim. (Ans. 11). Because computer implemented method claim 1 is
silent regarding any transmitting step, we agree with the Examiner that
Appellants’ arguments are not commensurate with the scope of the claim(s).
Further, claim 1 is silent as to the hub having the argued “received and
transmitted a status” steps. See App. Br. 11 (“The cited combination fails to
teach messaging the activation instructions to the target devices after the hub
has received and transmitted a status of each target device receiving the
upgrade.”) (Emphasis added).
We also are not persuaded by Appellants’ arguments because we find
O’Neill’s description of the update server array coordinating the transfer of a
plurality of update packages, and the update server array retrieving the
required version of the update packages, teaches or at least suggests the
contested limitation. (O’Neill Tflf 47, 60).
For at least the aforementioned reasons, on this record, and based
upon a preponderance of the evidence, we are not persuaded by Appellants’
arguments alleging the proffered combination of references does not teach or
suggest the contested limitations, within the meaning of claim l.3 Therefore,
we sustain the Examiner’s rejection A of claim 1.
3 We give the claims their broadest reasonable interpretation consistent with
the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
While we interpret claims broadly but reasonably in light of the
Specification, we nonetheless must not import limitations from the
Specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993).
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Rejection A of Dependent Claim 4 under 35 U.S.C. § 103(a)
Dependent claim 4 recites: “The method of claim 1, further
comprising scheduling an activation time for each firmware upgrade.”
Appellants contend “claim 4 teaches scheduling activation of the
firmware upgrade AFTER the firmware upgrade has already been
downloaded and installed, as described above.” (App. Br. 11).
The Examiner finds O’Neill’s staggering of the delivery of the update
packages teaches or suggests this disputed limitation. (Ans. 12, citing
O’Neill | 51). The Examiner’s findings are further buttressed by O’Neill’s
teaching of the update installation process remaining inactive until the next
scheduled activation. (O’Neill 64, 68). See n.2, supra.
Therefore, based upon a preponderance of the evidence, we are not
persuaded by Appellants’ arguments alleging the proffered combination of
references does not teach or suggest the contested limitation, within the
meaning of claim 4. Accordingly, we sustain the Examiner’s rejection A of
claim 4.
Rejection A of Dependent Claims 7—11 under 35 U.S.C. § 103(a)
Dependent representative claim 7 recites: “The method of claim 1,
wherein when there are two or more target devices, the firmware upgrade is
performed sequentially.”
Appellants urge: “[t]he cited combination fails to teach any type of
firmware upgrade as being performed sequentially, simultaneously, or in any
manner as taught in Appellants' claims 7-11.” (App. Br. 12).
We are not persuaded by Appellants’ argument because we find the
sequential upgrade feature of claim 7 is taught or suggested by O’Neill’s
description of an update server that sends the update package in subsections
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to the client device, in which “[t]he subsections are applied sequentially to
complete the update process.” (O’Neill 175 (emphasis added)). See also
O’Neill at 1118, 42, 64.
For at least these reasons, on this record, and based upon a
preponderance of the evidence, we are not persuaded by Appellants’
argument, and we sustain the Examiner’s rejection A of representative
claim 7, and grouped claims 8—11, which fall with claim 7. See Grouping of
Claims, supra.
Rejection B of Dependent Claims 2, 3, and 12 under 35 U.S.C. § 103(a)
Regarding claims 2, 3, and 12, Appellants argue “[njowhere does
Kapadekar teach any circumstances for aborting the upgrade on all devices,
as taught in Appellants’ invention.” (App. Br. 13).
However, we agree with the Examiner that Appellants are arguing
limitations not commensurate with the scope of the claim. Claim 2 recites
“one or more target devices,” whereas Appellants argue “all devices.”
Therefore, we sustain the Examiner’s rejection B of representative
claim 2, and of grouped claims 3 and 12, which fall with claim 2. See
Grouping of Claims, supra.
Rejection B of Dependent Claims 5 and 6 under 35 U.S.C. § 103(a)
Appellants advance conclusory, attorney arguments without a
substantive argument regarding claims 5 and 6, which are rejected under
rejection B.4 (App. Br. 13). Arguments not made are waived. See 37
4 It is well settled that mere attorney arguments and conclusory statements,
which are unsupported by factual evidence, are entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re
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Application 14/218,211
C.F.R. § 41.37(c)(l)(iv). Because we are not persuaded the Examiner erred,
we sustain the Examiner’s rejection B of dependent claims 5 and 6.
Reply Brief
To the extent Appellants may advance new arguments in the Reply
Brief not in response to a shift in the Examiner’s position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief, or are not responsive to arguments raised in the Examiner’s Answer,
will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
DECISION
We affirm the Examiner’s rejections of claims 1—12 under pre-AIA
35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).
AFFIRMED
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not
evidence). See also Manual of Patent Examining Procedure (MPEP) § 2145
(9th ed. Nov. 2015) (“Attorney argument is not evidence unless it is an
admission, in which case, an examiner may use the admission in making a
rejection.”).
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