Ex Parte Kataoka

Board of Patent Appeals and Interferences

Jan 10, 2012

11291129 (B.P.A.I. Jan. 10, 2012)

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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/291,129 11/30/2005 Katsuhisa Kataoka JP920040178US1 9968
58139 7590 01/10/2012
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 50784
DALLAS, TX 75201
EXAMINER
BEHARRY, NOEL R
ART UNIT PAPER NUMBER
2478
MAIL DATE DELIVERY MODE
01/10/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KATSUHISA KATAOKA
____________

Appeal 2009-013465
Application 11/291,129
Technology Center 2400
____________

Before ALLEN R. MacDONALD, ERIC S. FRAHM,
and BRUCE R. WINSOR, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013465
Application 11/291,129

2
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 5, 9, 10, and 12, which constitute all the claims pending in this
application. Claims 1-4, 6-8, 11, and 13-18 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s invention relates to controlling the execution of files
transmitted by servers to clients, such as application program updates. A
network system includes a communication network connected to a server
and a plurality of clients. The server transmits to the clients a file executable
by the clients and an execution start date. The clients determine whether to
execute the executable file based on the current time and the execution start
date. (Abstract.) Claim 5, which is illustrative of the invention, reads as
follows:
5. A method applied to a network system comprising a
server, a plurality of clients, and a communication network
connected to the server and the plurality of clients, said method
comprising:
transmitting, by the server to the clients, a file executable
in the clients via the communication network;
transmitting, by the server to the clients, execution start
date data indicating an execution start date of the file to the
clients via the communication network; and
determining, by the clients, whether to execute the file,
based on current time and the execution start date data;
wherein determining whether to execute the file
comprises determining which file is to be executed when
current time is past the execution start date.
Appeal 2009-013465
Application 11/291,129

3

The Examiner relies on the following prior art in rejecting the claims:
Deo US 6,356,956 B1 Mar. 12, 2002
Chae US 2002/0073140 A1 June 13, 2002
Paya US 2004/0181598 A1 Sept. 16, 2004
Basani US 7,346,682 B2 Mar. 18, 2008
(prior publ. Oct. 28, 2004)
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Deo and Paya.
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Deo, Chae, and Paya.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Deo, Chae, and Basani.
Rather than repeat the arguments here, we make reference to the Brief
(filed Feb. 26, 2009) and the Answer (mailed Apr. 14, 2009) for the
respective positions of Appellant and the Examiner. Only those arguments
actually made by Appellant have been considered in this decision.
Arguments that Appellant did not make in the Brief have not been
considered and are deemed to be waived.1 See 37 C.F.R. § 41.37(c)(1)(vii)
(2010).

1 We note that in some cases the Examiner’s Answer relies on references and
passages of references that differ from those relied on in the Final Rejection
mailed Nov. 5, 2008 and Advisory Action mailed Feb. 9, 2009. Appellant
has not filed a Reply Brief contesting the applicability of these passages.
Therefore, such further argument is waived. Our analysis herein is based
upon the grounds of rejection set forth in the Examiner’s Answer.
Appeal 2009-013465
Application 11/291,129

4

ISSUES
The issues presented by Appellant’s contentions are as follows:
Does Deo teach or suggest “determining whether to execute [a] file …
when the current time is past the execution start date,” as recited in claim 5
(Br. 5)?
Does Paya teach or suggest “determining whether to execute the file
comprises determining which file is to be executed,” as recited in claim 5
(Br. 6)?
Does Paya, when combined with Deo and Chae, teach or suggest
“determining whether to transmit [a] file via the communication network,
based on a condition that exists before transmitting the file[,] wherein the
file is transmitted only if the version of the file stored in the server and the
version of the file stored in the clients are different,” as recited in claim 9
(Br. 12)?
Has the Examiner articulated a sufficient rationale for the combination
of Deo and Paya in finding claims 5, 9, and 10 obvious (Br. 9, 12, 15)?
Does Basani, when combined with Deo and Chae, teach or suggest
“determining whether to transmit [a] file via the communication network,
based on a condition that exists before transmitting the file[,] wherein the
condition concerns load on the communication network,” as recited in claim
12 (Br. 17)?
Has the Examiner articulated a sufficient rationale for the combination
of Deo, Chae, and Basani in finding claim 12 obvious (Br. 20-21)?

Appeal 2009-013465
Application 11/291,129

5

ANALYSIS
We have reviewed Appellant’s contentions and arguments (Br. 4-22)
and find them to be unpersuasive. We agree with the Examiner’s findings
(Ans. 3-9) and explanations (Ans. 10-17) and adopt them as our own.
Accordingly we sustain the rejection of claims 5, 9, 10, and 12 as
unpatentable under 35 U.S.C. § 103(a). The following further analysis is
provided for emphasis.
The Limitations of Claim 5
Appellant contends that Deo does not teach or suggest “determining
whether to execute [a] file . . . when the current time is past the execution
start date,” as recited in claim 5 (Br. 5) and argues as follows:
The Examiner interprets the "initiation time" of Deo as
teaching the claimed execution start date. There is no language
in Deo that teaches determining whether to execute the file
when the current time is past the execution start date as
suggested by the Examiner. Instead, Deo teaches that that the
specified action is initiated at the specified time. There is no
discussion of executing the file when the current time is past the
specified time.
(Br. 6.) We disagree.
Patentability is not determined on the basis of ipsissimis verbis, see In
re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). “[T]he test [for obviousness]
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981). One of ordinary skill in the art would have understood Deo’s
disclosure of initiating a specified data object (see Deo 3:61-4:17) or action
as beginning the execution of a file, i.e., the data object. Furthermore, one
Appeal 2009-013465
Application 11/291,129

6
of ordinary skill in the art would have understood that the file does not
execute instantaneously, but rather executes over a period of time (however
short) that begins when execution is initiated, and ends at some later time,
i.e., the execution occurs when the current time is past the specified
initiation time.
Appellant contends Paya does not teach or suggest “determining
whether to execute the file comprises determining which file is to be
executed,” as recited in claim 5 (Br. 6). Appellant argues as follows:
Paya teaches a client querying to see if the existing copy of a
document in its cache can be used. Paya further teaches that the
server determines whether the version of the document in the
client’s cache is stale or not.
There is no language in the cited passage that teaches
determining which file [is] to be executed. Neither is there any
language in the cited passage that teaches determining which
file [is] to be executed when the current time is past the
execution start time.
(Br. 7.) We disagree.
As discussed supra the Examiner has relied on Deo for teaching or
suggesting that the file is to be executed when the current time is past the
execution time. “[O]ne cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references.” Keller, 642 F.2d at 426.
Paya discloses:
[A] client that has some local copy of [a] document [(i.e., a
file)] in the cache may query [the server] to see if that existing
copy can be used. The server decides to serve new content (i.e.,
indicating that the version in the cache is stale) or returns “Not
Modified” implying that the client may use its cached copy.
Appeal 2009-013465
Application 11/291,129

7
(Paya ¶ [0025]). We find that “determining which file is to be executed,” as
recited in claim 5, encompasses Paya’s disclosure of the client querying the
server regarding whether the file is stale or not. We note that nothing in the
claim precludes the determination being made using information obtained
from the server.2
The Limitation of Claim 9
Appellant contends that Paya, alone or when combined with Deo and
Chae, does not teach or suggest “determining whether to transmit [a] file via
the communication network, based on a condition that exists before
transmitting the file[,] wherein the file is transmitted only if the version of
the file stored in the server and the version of the file stored in the clients are
different,” as recited in claim 9 (Br. 12). Appellant argues as follows:
There is no language in Paya (and in particular paragraph
[0025]) that makes any suggestion to transmit a file only if the
version of the file stored in the server and the version of the file
stored in the clients are different (missing claim limitation) in
order to allow the client to use its cache copy or acquire a
newer version if available.
(Id.) We disagree.
Paya teaches that copies of a document (i.e., file) are stored at a server
and at a client (i.e., a condition that exists before transmitting a file) and that
the client transmits an “If-Modified-Since” or “If-Match” query to the server
to ascertain if the file at the server has been modified, so that the version at
the client is stale (i.e., the version stored in the server and the version stored
in the client are different). If the version at the client is stale, the server

2 We also note that Deo teaches initiating (i.e., beginning execution of) a
specific data object (i.e., file) (see Deo 3:61-4:17), which implicitly teaches
determining which data object (i.e., file) to execute.
Appeal 2009-013465
Application 11/291,129

8
responds by serving new content (i.e., transmits a file), otherwise it returns a
“Not Modified” message (i.e., does not transmit the file). (See Paya
¶ [0025]). Accordingly, we find that Paya explicitly teaches “determining
whether to transmit [a] file via the communication network, based on a
condition that exists before transmitting the file[,] wherein the file is
transmitted only if the version of the file stored in the server and the version
of the file stored in the clients are different.”
The Combination of Deo and Paya
Appellant contends the Examiner has not articulated a sufficient
rationale for the combination of Deo and Paya to establish a prima facie case
that claims 5, 9, and 10 would have been obvious (Br. 7-16). Appellant,
citing MPEP § 2143, argues as follows:
In order to establish a prima facie case of obviousness,
the Examiner must show reasons that the skilled artisan,
confronted with the same problems as the inventor and with no
knowledge of the claimed invention, would select the elements
from the cited prior art references for combination in the
manner claimed.
(Br. 8; see also Br. 11, 14) (underlined emphasis added). We disagree.
“Under the correct [obviousness] analysis, any need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (italicized emphasis
added).
Consistent with the Examiner’s articulated rationale (Ans. 4, 6-7, 11-
14 ), we find that one of ordinary skill in the art would have recognized that
incorporation of Paya’s technique of updating files cached at a server would
predictably improve Deo’s time triggered data objects (Deo, abstract) in the
Appeal 2009-013465
Application 11/291,129

9
same way it improves Paya’s client-server communication (Paya ¶¶ [0024]-
[0025]), and that incorporation of the technique would be within the
ordinarily skilled person’s skill, see KSR 550 U.S. at 417. More particularly,
“[i]t would have been obvious to one of ordinary skill in the art at the time
of the invention to create the invention of Deo to include determining which
version, current or stale to execute as taught by Paya in order to allow the
client to use its cache copy or acquire a newer version if available (Par.
0025).” (Ans.4.) In other words, the improvement would permit Deo to run
the most current version of the data object (i.e., file) without repeatedly
fetching the same data content (see Ans. 12).
The Limitation of Claim 12
Appellant contends Basani combined with Deo and Chae, does not
teach or suggest “determining whether to transmit [a] file via the
communication network, based on a condition that exists before transmitting
the file[,] wherein the condition concerns load on the communication
network,” as recited in claim 12 (Br. 17). Appellant argues as follows:
There is no language in the cited passage [(Basani 6:57-
67; see also 2:52-65 )] that teaches that determining whether to
transmit the file via the communication network is based on a
condition that exists before transmitting the file, where the
condition concerns load on the communication network.
Instead, Basani teaches decreasing network load. There is no
language in Basani that teaches that the condition, which exists
before transmitting the file, that determines whether to transmit
the file concerns load on the communication network.
(Br. 17-18). We disagree.
Basani discloses that “[b]ased upon the available bandwidth [(i.e., a
condition that exists before transmitting a file, the condition concerning load
on a communication network)] and the content priority, a transmission time
Appeal 2009-013465
Application 11/291,129

10
and data rate is given to the content source to initiate transmission [(i.e., a
determination is made as to whether or not to transmit a file now or at a
future time)]” (Basani 2:56-59). Therefore, we find that Basani teaches
“determining whether to transmit [a] file via the communication network,
based on a condition that exists before transmitting the file[,] wherein the
condition concerns load on the communication network” as recited in claim
12.
The Combination of Deo, Chae, and Basani
Appellant contends the Examiner has not articulated a sufficient
rationale for the combination of Deo, Chae, and Basani to establish a prima
facie case that claim 12 would have been obvious (Br. 19-22). With regard
to the Appellant’s arguments relying on the problem confronted by the
inventor (see Br. 19, 21), it is unpersuasive in view of the Supreme Court’s
holding in KSR, 550 U.S. at 420, discussed supra with regard to claims 5, 9,
and 10.
Appellant argues that:
There is no language in Chae (and in particular paragraph
[0022]) that makes any suggestion to determine whether to
transmit the file via the communication network based on a
condition that exists before transmitting the file (missing claim
limitation) in order to transmit a file during a less congested
time zone.
(Br. 20.) Appellant further argues that:
There is no language in Basani (and in particular column
6, lines 53-54) that makes any suggestion to determine whether
to transmit the file via the communication network based on a
condition that exists before transmitting the file, where the
condition concerns load on the communication network
(missing claim limitation) in order to have efficient
transmission of data files.
Appeal 2009-013465
Application 11/291,129

11
(Br. 22.)
Consistent with the Examiner’s articulated rationale (Ans. 9, 15-17 ),
we find that one of ordinary skill in the art would have recognized that
incorporation of Chae’s and Basani’s techniques of downloading files at
times when the network load conditions (e.g., bandwidth, etc.) are favorable
would predictably improve Deo’s time triggered data objects (Deo, abstract)
in the same way it improves Chae’s file transfer service (Chae, abstract) and
Basani’s system for content publication (Basani 1:20-22), and that
incorporation of the technique would be within the ordinarily skilled
person’s skill, see KSR 550 U.S. at 417. More particularly the improvement
would have the advantage of “reduc[ing] the cost associated with
transferring of the file over a mobile communications network (Chae; Par.
0025).” (Ans. 16; see also Ans. 16-17).

DECISION
The decision of the Examiner to reject claims 5, 9, 10, and 12 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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

msc