Ex Parte Gilman et al

Patent Trials and Appeals Board

Oct 31, 2016

13329295 - (D) (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/329,295 12/18/2011
50594 7590 11/02/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33487
FIRST NAMED INVENTOR
Brian L. Gilman
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.
RPS920110042US1 (140) 1461
EXAMINER
AGUILERA, TODD
ART UNIT PAPER NUMBER
2196
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN L. GILMAN and WILLIAM G. PAGAN
Appeal2015-008236
Application 13/329,295
Technology Center 2100
Before MARC S. HOFF, JENNIFER L. McKEOWN, and
LINZY T. McCARTNEY, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2015-008236
Application 13/329,295
STATEMENT OF THE CASE
Appellants' invention relates "to software application update
distribution and more particularly to determining a frequency of distributing
software updates to end user devices." Spec. ,-r 2.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method for configurably recommending a software
application update, the method comprising:
receiving an update for a software application along with
a set of different ratings for the update;
comparing in memory of a computer the set of ratings with
a pre-stored threshold; and,
prompting in the computer to apply the update to the
software application responsive to the set of ratings meeting the
pre-stored threshold.
THE REJECTIONS
The Examiner rejected claims 9-12 under 35 U.S.C. § 101 as being
directed to a non-statutory subject matter. Final Act. 6-7. 1
The Examiner rejected claims 1, 4, 5, 8, 9, and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Mahaffey et al. (US 2011/0047620 Al; Feb.
24, 2011) and Burke et al. (US 2010/0318986 Al; Dec. 16, 2010). Final
Act. 7-13.
The Examiner rejected claims 2, 3, 6, 7, 10, and 11 under 35 U.S.C.
§ 103(a) as unpatentable over Mahaffey, Burke, and Sprosts et al. (US
2007/0220607 Al; Sept. 20, 2007). Final Act. 13-15.
1 Throughout this decision, we also refer to (1) the Final Action mailed Nov.
28, 2014 ("Final Act."); (2) the Appeal Brief filed May 4, 2015 ("App.
Br."); (3) the Examiner's Answer mailed June 16, 2015 ("Ans."); and (4) the
Reply Brief filed Sept. 16, 2015 ("Reply Br.").
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Application 13/329,295
ANALYSIS
THE§ 101 REJECTION
Claims 9-12
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 9-12 as being directed to non-statutory subject
matter. Specifically, the Examiner rejects claim 9 "as being directed to a
non-statutory transitory signal." Final Act. 3. According to Appellants, the
Examiner erred because claim 9 recites "a computer readable storage
medium comprising a device having computer readable program code
embodied therewith .... " App. Br. 4--5 (emphasis added).
Appellants define device as "an object, machine, or piece of
equipment that has been made for some special purpose." App. Br. 5 (citing
a Merriam Webster's Dictionary definition). Appellants assert that the
Specification "reinforces this notion by referring to a device as RAM, ROM,
EEPROM or CD-ROM." App. Br. 5. The Examiner, on the other hand,
identifies that
[ u ]nder the broadest reasonable interpretation, a device includes
at least: (1) "something devised or contrived for bringing about
some end or result"; (2) "the result of contriving["]; or (3)
"something devised or framed by art or inventive power." (See
the attached definitions of "device" from the Oxford English
Dictionary at items 6 and 7.
Final Act. 3.
We are not persuaded that the use of the term "device" precludes a
transitory signal. Claim 9 recites a computer readable storage medium
comprising a device and, as such, given the open-ended nature of
comprising, the computer readable storage medium claim 9 would not be
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Application 13/329,295
limited to only a device. See, e.g., Genentech, Inc. v. Chiron Corp., 112
F.3d 495, 501 (Fed. Cir. 1997).
We also note that the Specification refers to an exemplary computer
readable storage medium as "a portable computer diskette, a hard disk, a
random access memory (RAM), a read-only memory (ROM), an erasable
programmable read-only memory (EPROM or Flash memory), an optical
fiber, a portable compact disc read-only memory (CD-ROM), an optical
storage device, [and] a magnetic storage device." Spec. i-f 21. The
Specification does not limit computer readable storage medium to only these
examples. The Specification further identifies "an electrical connection
having one or more wires" as computer readable storage medium. Spec. i-f
21. This language may at least suggest to a skilled artisan that the computer
readable storage medium is the signal traveling through the electrical
connection. As such, we find Appellants' argument unpersuasive.
Accordingly, we sustain the Examiner's rejection of claim 9, as well
as dependent claims 10-12, as being directed to non-statutory subject matter.
THE OBVIOUSNESS REJECTION BASED ON MAHAFFEY AND BURKE
Claims 1, 4, 5, 8, 9, and 12
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1, 4, 5, 8, 9, and 12 as unpatentable over Mahaffey
and Burke.
Appellants contend that the combination of Mahaffey and Burke fail
to teach or suggest "prompting in a computer to apply an update to the
application in response to a set of ratings which meet a pre-stored
threshold." App. Br. 6-10. Appellants, more specifically, argue that
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Application 13/329,295
"Mahaffey only taught 'a determination of an assessment of privacy,
security and battery rating' in contrast to the claimed 'ratings for [an] update
[for a software application]."' App. Br. 8. Additionally, Appellants assert:
Lacking in [the cited paragraph of Mahaffey] is the claimed
comparing of the set of ratings with a pre-stored threshold and
prompts the end user to apply the update to the software
application when to the ratings meet the pre-stored threshold.
Rather, in paragraph [0183] an assessment is compared to a
threshold value and if the value is exceeded, the installation is
blocked-or at least the end user is warned. But, in paragraph
[0183] there is no comparison of any values in response to which
an end user is prompted to perform the installation.
App. Br. 9 (emphasis added); see also Reply Br. 7. Appellants recognize
that Burke teaches prompting an end user to apply an update, but allege that
the combination of Mahaffey and Burke lacks prompting to apply an update
in response to the set of ratings meeting the pre-stored threshold.
App. Br. 10.
These arguments by Appellants fail to consider the combined
teachings of Mahaffey and Burke and, thus, are unavailing. As the
Examiner finds, Mahaffey teaches comparing the set of ratings with a pre-
stored threshold and taking some action with respect to a software update in
response to meeting the pre-stored threshold. See Ans. 5-6 (citing Mahaffey
i-fi-f 183, 184 (explaining that Mahaffey describes comparing privacy,
security, and battery ratings with policy thresholds to determine whether an
application update installation is allowed)). Burke teaches prompting to
apply an update in response to meeting a threshold. See Final Act. 8 (citing
Burke i156 (explaining that Burke teaches the server allowing an update in
response to a level of similarity meeting a threshold)); see also Ans. 7.
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Considering these teachings together, it would have been obvious to
one of ordinary skill in the art at the time of the invention to modify the
method of Mahaffey, which discloses comparing a set of ratings of an update
to a threshold, by incorporating prompting to allow the update in response to
meeting a threshold, as taught by Burke. Final Act. 8; see also Ans. 6. One
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). As such, we are not persuaded that the Examiner erred in
finding that Mahaffey and Burke combined teach prompting in the computer
to apply the update to the software application responsive to the set of
ratings meeting the pre-stored threshold.
Appellants also argue that Mahaffey teaches away from combination
with Burke. See Reply Br. 8-9 (arguing that issuing an alert to warn a user
rather than blocking an application is exactly the opposite and thus teaches
away from prompting the computer to apply the update in response to
meeting the pre-stored threshold). This argument, however, was raised for
the first time in the Reply Brief and is, therefore, waived as untimely.
Compare Reply Br. 8-9 with App. Br. 6-10. See also Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative) ("[T]he reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner's rejections, but were not.").
Moreover, Mahaffey's mere discussion of notifying or warning a user
of undesirability of the application does not discourage the skilled artisan
from alternatively prompting the user to apply the software application
update when a threshold is met. See DePuy Spine, Inc. v. Medtronic
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Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference
does not teach away ... if it merely expresses a general preference for an
alternative invention[.]"); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Accordingly, we sustain the Examiner's rejection of claims 1, 4, 5, 8,
9, and 12 as unpatentable over Mahaffey and Burke.
THE OBVIOUSNESS REJECTION BASED ON MAHAFFEY, BURKE AND SPROSTS
Claims 2, 3, 6, 7, 10, and 11
Appellants do not present separate arguments for dependent claims 2,
3, 6, 7, 10, and 11, but rather rely on the arguments presented for claims 1, 5,
and 9. As discussed above, we find these arguments unpersuasive.
Accordingly, we sustain the Examiner's rejection of claims 2, 3, 6, 7, 10,
and 11 as unpatentable over Mahaffey, Burke, and Sprosts.
DECISION
We affirm the Examiner's decision to reject claims 1-12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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