Ex Parte Kapadekar et al

Patent Trial and Appeal Board

Jun 30, 2014

11552942 (P.T.A.B. Jun. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte VIVEK KAPADEKAR, SUNIL MAROLIA and
BINDU RAMA RAO
_____________

Appeal 2011-009726
Application 11/552,942
Technology Center 2600
______________

Before JAMES T. MOORE, BRADLEY W. BAUMEISTER, and
IRVIN E. BRANCH, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
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SUMMARY
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part the Examiner’s rejections of these claims.

INVENTION
Independent claim 1 is illustrative of the invention:
1. A system for managing firmware and configuration
parameter updates in memory of a plurality of mobile electronic
devices over a wireless communication network, the system
comprising:
at least one server having resident thereon executable
code for causing the at least one server to communicate with
entities external to the system device management information
regarding a bulk operation to be performed on the plurality of
mobile electronic devices, using a simple object abstraction
protocol (SOAP) or application protocol interface (API);
the at least one server also having resident thereon
executable code for managing firmware and configuration
parameter updates of the plurality of mobile electronic devices
utilizing at least a portion of the communicated device
management information, wherein the at least one server
performs on at least one of the plurality of mobile electronic
devices a management operation that has been initiated by an
entity external to the system; and
the at least one server also having resident thereon
executable code for causing the at least one server to
communicate with the at least one of the plurality of mobile
electronic devices using an Open Mobile Alliance (OMA)
device management (DM) protocol.

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REFERENCES
Chmaytelli et al. US 6,418,311 B1 July 9, 2002
Majmunder et al. US 2004/0018831 A1 Jan. 29, 2004
Little US 2004/0110497 A1 June 10, 2004
Lockwood et al. US 2004/0153356 A1 Aug. 5, 2004
Natarajan US 2006/0212937 A1 Sept. 21, 2006

REJECTIONS AT ISSUE
Claims 1-6, 9-11, 17,1 and 18 are rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Little, Natarajan and Chmaytelli. Ans. 5-
10.
Claims 7, 8 and 12-16 are rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Little, Natarajan, Chmaytelli, and
Majmundar. Ans. 10-13.
Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as obvious
over Lockwood. Ans. 3-5.

CLAIMS 1-6, 10, 11, AND 17
Contentions
In rejecting independent claims 1 and 11, the Examiner finds that
Little discloses at least one server having executable code for causing the
server to communicate with entities external to the system device
management information using simple object abstraction protocol (SOAP),

1 Although not listed in the recitation of the rejection within the final Office
action dated June 11, 2010, the Appeal Brief dated Nov. 12, 2010, and the
Examiner’s Answer dated March 2, 2011, claim 17 is in fact rejected over
the combination of Little, Natarajan, and Chmaytelli. See Ans. 10.
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and the server also having executable code for managing firmware and
configuration parameter updates of the plurality of mobile electronic device.
Ans. 5, 6, and 8-10. Additionally, the Examiner finds that “Natarajan
teaches that OMA Sync ML (which became OMA DM) is an XML scheme
used for mobile device interoperability to provision parameters from a
network onto a mobile device.” Ans. 6. The Examiner further finds that
Chmaytelli discloses an externally sourced command that communicates
device management information to be performed (address book update) on a
mobile device. Id. Chmaytelli also discloses broadcasting device
management information regarding bulk operations of parameter updates to
be performed on the plurality of mobile electronic devices. Ans. 6, 7, 9, and
10. With this, the Examiner concludes that “[i]t would have been obvious to
one of ordinary skill in the art to look at the method of Little and want to
implement [it] on a more system-wide, i.e. bulk basis, to improve efficiency
and use the broadcast technique of Chmaytelli in combination with Little
and Natarajan.” Ans. 7.
In response, Appellants argue that Little teaches service information
from technical users that write software that includes Universal Description,
Discovery and Integration (UDDI) protocols and practices and that the
service information in Little does not include information regarding a bulk
operation to be performed on mobile electronic devices. App. Br. 14 and 16.
Appellants further argue that
[t]he server in Chmaytelli never communicates with entities
external to the system device management information
regarding a bulk operation to be performed on the plurality of
mobile electronic devices. Instead, the server in Chmaytelli
only communicates a data packet with the mobile phones. The
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claimed “entities external to the system” are not present,
suggested, or even needed in Chmaytelli.
App. Br. 15.
Analysis
The Examiner’s rejection of independent claims 1 and 11 establishes a
prima facie showing of obviousness (Ans. 5-10), thereby shifting the burden
of rebuttal to Appellants. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential) (An appellant may attempt to overcome an examiner’s
obviousness rejection on appeal to the Board by: (A) submitting arguments
and/or evidence to show that the examiner made an error in either (1) an
underlying finding of fact upon which the final conclusion of obviousness
was based or (2) the reasoning used to reach the legal conclusion of
obviousness; or (B) showing that the prima facie case has been rebutted by
evidence of secondary considerations of nonobviousness). In the present
case, though, Appellants have not persuasively rebutted the rejection.
Appellants argue that neither Little nor Chmaytelli teaches all of the
claimed limitations. App. Br. 14-15. However, 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).
In the absence of persuasive evidence to the contrary, we fail to see
why it would have been unobvious to incorporate Chmaytelli’s disclosure of
broadcasting bulk-operation information within Little’s system, which
communicates with external entities. Modifying Little’s management
information communicated with external entities so as to additionally
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include information regarding “a bulk operation,” as proposed, merely
constitutes a predictable use of prior art elements according to their
established functions. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
Thus, Appellants’ arguments regarding the obviousness rejection of
claim 1 are unpersuasive. Appellants provide similar arguments with respect
to independent claim 11. App. Br. 16. As such, Appellants’ arguments
regarding the obviousness rejection of claim 11 are also unpersuasive for the
reasons set forth above.
Furthermore, Appellants do not provide separate arguments in relation
to any of the rejections of claims 2-6, 10, and 17. Instead, Appellants assert
that claims 2-6 and 10 are patentable for the reasons set forth in relation to
claim 1. App. Br. 15. Appellants do not argue claim 17.
Accordingly, we sustain the Examiner’s rejection of independent
claims 1 and 11, as well as claims 2-6, 10, and 17, which are not separately
argued.

CLAIM 9
Contentions
In rejecting dependent claim 9, the Examiner finds that the
combination of Little, Natarajan, and Chmaytelli discloses the limitation of
claim 9, “the device management information which is communicated
comprises at least one device profile for one of the plurality of mobile
electronic devices.” Specifically, the Examiner finds that “Little at ¶8 ll. 1-5
discloses service information, which meets Appellants’ specification [sic]
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definition of device information, specifically update package at ¶ 56.” Ans.
15-16; see also Ans. 8.
Appellants argue that
Little . . . discusses service information and service
listings. Web browsers search for service information and
provide this information to the user. Nowhere does this section
of Little teach or even suggest device management information
comprises at least one device profile for one of the plurality of
mobile electronic devices.
App. Br. 15.
Analysis
Appellants have persuaded us of error in the Examiner’s rejection of
dependent claim 9. The rejection only relies on paragraph 8, lines 1-5 of
Little for teaching the claimed “at least one device profile for one of the
plurality of mobile electronic devices.” But this passage describes web
browsers searching for service information and providing this information to
a user. Nowhere does this section of Little teach or suggest “the device
management information which [sic: that] is communicated [with entities
external to the system] comprises at least one device profile for one of the
plurality of mobile electronic devices.” Further, the Examiner does not
describe any further teachings within Little (or within any of the other
references) to teach or suggest “the device management information which
is communicated comprises at least one device profile for one of the
plurality of mobile electronic devices.”
Accordingly, we do not sustain the pending rejection claim 9 based on
this section of Little.

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NEW GROUNDS OF REJECTION OF CLAIM 9
While the passage of Little cited by the Examiner fails to disclose the
language of claim 9, a different portion of Little does teach the limitation.
Particularly, in paragraph 74, Little states
The host services also have access to a device Id and
capabilities database 60d that provides the relationships to the
mobile devices 100. In this embodiment, once a host service
200a is started it would communicate to the device Id database
60d and determine a list of mobile devices 100 it wished to
offer the service to.
We understand the device Id and capabilities to correspond to the
claimed device profile. Accordingly, we reject claim 9 under 35 U.S.C.
§ 103(a) as unpatentable over Little in view of Natarajan, and further in view
of Chmaytelli. Because the rationale upon which we rely differs from the
thrust of the Examiner’s rejection, we designate this rejection as constituting
new grounds pursuant to our authority under 37 C.F.R. § 41.50(b).

CLAIM 18
Contentions
In rejecting dependent claim 18, the Examiner finds that the
combination of Little, Natarajan, and Chmaytelli teaches the claimed “at
least one server is configured to receive diagnostic information from the at
least one of the plurality of mobile electronic devices.” Particularly, the
Examiner cites paragraph 74, lines 22-29, of Little, stating that diagnostic
information is pushed and the mobile device sends a response. Ans. 10.
Appellants argue that Little fails to teach or even suggest that a
response by the mobile device to the database is diagnostic information of
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the mobile device. Appellants argue that the response is merely an
acknowledgement of receiving the service book, and that diagnostic
information is not sent from the mobile device to the server. App. Br. 16-17.
Analysis
Appellants’ Specification illustrates a method of operation of a
diagnostic server in Figure 4, and discusses that “In step 3, the diagnostics
server may invokes [sic] a diagnostic function (e.g., a trap) in the mobile
device to collect data . . . . In step 5, the mobile device may report the
collected data to the diagnostics or customer care server . . .” See ¶ 64. As
such, Appellants’ Specification describes that the information sent from the
mobile device is simply “collected data” that will be subsequently used by
the diagnostic server for a diagnostic operation. Thus, consistent with the
Specification, the claimed “diagnostic information” is seen to be information
collected from the mobile device for subsequent diagnostic information.
Examiner’s rejection cites paragraph 74 as teaching this limitation.
This passage of Little states
There are many ways this device Id database 60d could have
been built. For example each time a mobile device 100 was
plugged into a serial port on the corporate LAN, its device Id
information could have been collected and stored in the
database 60d . . . . Another embodiment could have the
database being built via a web interface, where mobile device
100 users enter their wireless information and desired services.
The database will also be updated to indicate which service
books 32 have been transmitted to the mobile device 100. This
can be used later for management and diagnostic purposes.
Little, ¶ 74.
That is, Little teaches that the database indicates the service books that
have been transmitted to particular mobile devices identified by collected
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device Ids of mobile devices, whereby this information is used for
“management and diagnostic purposes.” Thus, Little may be interpreted
reasonably as teaching the claimed “at least one server is configured to
receive diagnostic information from the at least one of the plurality of
mobile electronic devices.”
Therefore, Appellants’ arguments regarding the obviousness rejection
of claim 18 over Little in view of Natarajan and Chmaytelli are
unpersuasive. Accordingly, we sustain the Examiner’s rejection of
dependent claim 18.

CLAIMS 7, 8 AND 12-16
Contentions
In rejecting dependent claims 7 and 12, the Examiner finds that
Chmaytelli discloses the claim language “wherein with a priority for
activating the plurality of mobile electronic devices.” Ans. 10 (citing
Chmaytelli col. 4, ll. 52-54 (where it is disclosed that the system sets a flag,
i.e. a priority, for an update if the unit knows to make the change)). The
Examiner additionally finds Majmundar discloses that bulk operations are
started at a specific time (updates occur at a predetermined time), with a
specific activation rate of the plurality of mobile electronic devices
(broadcasts can be set up at different times and for different devices, where
the system sets a flag, i.e. a priority, for an update), and with retry
parameters (retry updates if the updates are not acknowledged). Ans. 10-11.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art—a communications engineer who would have wanted to
conserve bandwidth to only send updates at scheduled times rather than
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tying up bandwidth running updates all the time—to further combine
Majmundar with Little, Natarajan and Chmaytelli. Ans. 10-11.
Appellants argue that the cited paragraphs in Majmundar fail to teach
starting bulk operations with a specific activation rate and starting bulk
operations with a priority for activating the plurality of mobile electronic
devices and with retry parameters. App. Br. 17-18. The Examiner responds
that Appellants’ argument is a piecemeal attack of the references. Ans. 16.
Analysis
As noted by the Examiner (see Ans. 10-13), paragraph 19 of
Majmundar states that “the network administrator may also specify . . .
groups of devices to receive the download,” and paragraph 21 states that
“[f]or each terminal device that has not replied with an ACK, host 20 may
resend the calendar update repeatedly . . . . In particular, when an ACK is
not received, the host may wait for a preset time period before attempting to
resend the calendar update.” Thus, the Examiner’s rejection establishes a
prima facie showing of obviousness, thereby shifting the burden of rebuttal
to Appellants. See Frye, 94 USPQ2d at 1075.
Appellants have not persuasively rebutted the rejection. One cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d at 426.
Thus, Appellants’ arguments regarding the obviousness rejection of
claims 7 and 12 are unpersuasive. Furthermore, Appellants do not provide
separate arguments in relation to any of the rejections of claims 8 and 13-16.
Instead, Appellants assert that these claims are patentable for the reasons set
forth in relation to claims 1 and 11. App. Br. 17. Accordingly, we sustain
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the Examiner’s rejection of claims 7 and 12, as well as claims 8 and 13-16,
which are not separately argued.

CLAIMS 19 AND 20
Claim 19 reads as follows:
19. A method of providing customer service to a customer
having a handheld mobile electronic device, the method
comprising:
providing a server for receiving device profile
information regarding the handheld mobile electronic device;
receiving the device profile information before
conducting a telephone call with the customer; and
providing customer service for managing the handheld
mobile electronic device during the telephone call with the
customer, using the device profile information.
Contentions
The Examiner finds that Lockwood teaches all of the limitations of
claim 19, including the disclosure of embodiments in which the disclosed
mobile electronic devices are handheld. Ans. 4. The Examiner finds that it
would have been obvious to use handheld embodiments. Id.
Appellants argue, inter alia, that Lockwood discloses a vehicle
distress call to the dispatcher that can occur from a handheld device.
However, the dispatcher never receives “device profile information
regarding the handheld mobile electronic device” and the dispatcher never
manages “the handheld mobile electronic device during the telephone call
with the customer,” as recited in claim 19. Appellants further contend that
the dispatcher does not then manage the phone making the call, but instead
manages the vehicle in distress. App. Br. 12-13.
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Analysis
Appellants have persuaded us of error in the Examiner’s rejection of
claim 19. The Examiner has failed to establish that Lockwood discloses the
claimed “providing customer service for managing the handheld mobile
electronic device during the telephone call with the customer, using the
device profile information.”
The Examiner’s rejection states that Lockwood teaches in paragraph
[0068] that “the actions that can be included with the phone call include the
service professional managing the mobile GPS device in the vehicle to
locate it,” and in paragraph [0073] “where the customer service professional
can manage the device by immediately communicating with it.” Ans. 4.
But in this regard, the “mobile GPS device in the vehicle” is not part of the
mobile telephone, but rather the vehicle. The Examiner has not established a
reason to modify Lockwood to incorporate the GPS device within the mobile
telephone, as the invention of Lockwood is drawn to enhancing “customer
service in vehicle distress situations.” See Abstract. Further, immediately
calling the mobile phone, as contended by the Examiner, does not constitute
managing the mobile phone “during the telephone call with the customer,
using the device profile information.” [Emphasis added.] Therefore, the
Examiner has failed to establish that Lockwood discloses the claimed
“providing customer service for managing the handheld mobile electronic
device during the telephone call with the customer, using the device profile
information.”
Accordingly, we will not sustain the Examiner’s rejection of
independent claim 19, as well as dependent claim 20, based on Lockwood.

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SUMMARY
We affirm the Examiner’s decision to reject claims 1-8 and 10-18.
We reverse the Examiner’s decision to reject claims 9, 19 and 20.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject
claim 9 under 35 U.S.C. § 103(a) as unpatentable over Little in view of
Natarajan and Chmaytelli.

FINALITY
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). This regulation states that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
Furthermore, 37 C.F. R. § 41.50(b) also provides that Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
In further regard to the affirmed rejection, 37 C.F.R. § 41.50(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of the affirmance is
deferred until conclusion of the prosecution before the Examiner unless, as a
mere incident to the limited prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
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case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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-IN-PART
37 C.F.R. § 41.50(b)

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