Ex Parte Kincaid

Board of Patent Appeals and Interferences

Apr 15, 2010

10318809 (B.P.A.I. Apr. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JASON R. KINCAID
____________

Appeal 2009-004983
Application 10/318,809
Technology Center 2100
____________

Decided: April 15, 2010
____________

Before JOHN A. JEFFERY, DEBRA K. STEPHENS, and
JAMES R. HUGHES, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

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STATEMENT OF THE CASE
Appellant invented a wireless communication system (e.g., cell
phones and wireless handheld computers) having a controller that supervises
downloading the latest software versions to modular components. See
generally Spec. 1-5. Claim 1 is illustrative:
1. A mobile station capable of wirelessly receiving
software files from a software upgrade server via a wireless
communication network, said mobile station comprising:

a memory capable of storing said received software files
in a plurality of download modules, wherein each download
module (DLM) comprises a plurality of related components that
operate together to perform a particular function; and

a DLM controller associated with said memory capable
of determining a version identifier associated with each
component in each of said plurality of download modules,
wherein said controller is further capable of comparing a first
group of version identifiers associated with a first plurality of
related components in a first download module with
corresponding version identifiers associated with said first
plurality of related component that are contained in a list of
latest component versions.

The Examiner relies on the following as evidence of unpatentability:
Imamatsu US 6,687,901 B1 Feb. 3, 2004
(filed Aug. 9, 2000)

Karim El Malki et al., Low Latency Handoff in Mobile IPv4 (Internet-
Draft) 1-44 (Karim El Malki ed., May 2001) (“El Malki”).

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THE REJECTIONS
1. The Examiner rejected claims 1-9 and 11-19 under 35 U.S.C.
§ 102(e) as anticipated by Imamatsu. Ans. 4-12.1
2. The Examiner rejected claims 10 and 20 under 35 U.S.C. § 103(a)
as being unpatentable over Imamatsu and El Malki. Ans. 13-14.2

THE ANTICIPATION REJECTION
Regarding claim 1, the Examiner finds that Imamatsu discloses a
mobile station (e.g., 10 in Figure 3) that includes memory capable of storing
DLMs (e.g., modules B-D), and each DLM comprises related components
that operate together to perform a particular function (e.g., module C and D
are involved in key control process and other service functions). Ans. 4 and
17. The Examiner also finds Imamatsu discloses in Figures 9, 13, and 14 a
DLM controller that compares version identifiers of components with a list
when replacing modules B-D, and when partially updating software modules
(e.g., modules B-D) by comparing or determining version identifiers (e.g.,
latest version information and version management) of components to
determine the updating operation. Ans. 4, 5, and 18.
Appellant argues that Imamatsu does not disclose DLMs having
related components that operate together. App. Br. 12. Appellant further
asserts that Imamatsu’s version identifier comparison for software updates
occurs on the server side and is not part of the mobile station as required by

1 Throughout this opinion, we refer to (1) the Appeal Brief filed October 15,
2007; (2) the Examiner’s Answer mailed January 10, 2008; and (3) the
Reply Brief filed March 12, 2008.
2 The Examiner has withdrawn the § 102 rejection based on Leppanen and
the § 103 rejection based on Leppanen and El Malki. See Ans. 3.
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claim 1. App. Br. 13; Reply Br. 2-3. Finally, Appellant contends that
Imamatsu discloses a single version number rather than the recited version
identifiers associated with DLM components. Reply Br. 4.
The issue before us, then, is as follows:

ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Imamatsu’s DLM controller is capable of comparing (1) a first group of
version identifiers associated with first related components in a first
download module with (2) corresponding version identifiers associated with
first related components that are contained in a list of latest component
versions?

FINDINGS OF FACT (FF)
1. Imamatsu discloses control-software 43 stored in memory 23 of a
mobile terminal device 10. Control-software 43 includes software modules
A-D that are practically interrelated. Module A takes part in a fixed process;
module B relates to a communication control process, such as a call control;
and modules C and D are involved in a key control process and other service
functions. Col. 5, ll. 47-53 and col. 6, ll. 35-61; Figs. 3 and 4A.
2. Imamatsu discloses the software-supply device 50 compares the
mobile station’s control-software 43 version number to the latest version
number managed by the mobile communication system. Imamatsu explains
version numbers are sent back to the mobile device 10 at step J5. Col. 8,
ll. 52-56 and col. 9, ll. 33-56; Fig. 7.
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3. Imamatsu states that a version number represents the version of the
entire control-software 43 and not a single module. Col. 8, ll. 5-6.
4. Imamatsu’s Figures 13 and 14 show the first and second stage of
updating downloaded modules B-D. The present control-software 43 that
includes the old module B downloads a new module B. The present control-
software 43 stops so that the update-software 41 can update module B.
After updating, the control-software’s version number is renewed. Modules
C and D are updated in a similar fashion. Col. 15, ll. 59-67; Figs. 13-14.
5. Imamatsu discloses a process of partially updating a module in a
sector at steps S28-33. Col. 6, ll. 56-58, col. 11, ll. 64-65, col. 12, ll. 7-25,
and col. 13, ll. 65-67; Fig. 9.
6. Imamatsu discloses a version-management domain 42 stored in the
flash ROM 33 of memory 23 has two sectors (i.e., Sectors # 1 and 2) to
manage the version management information. Each piece of the version
management information is recorded in a domain of 16 bytes. Imamatsu
shows a second labelled version number in Sector #1 and #2 below the first
16 bytes. Col. 6, ll. 1-34 and col. 7, ll. 50-55; Figs. 4A and 5.
7. Imamatsu’s Figure 10 details the “update decision” process.
Imamatsu determines whether the latest version management information is
already known at S11. If not, Imamatsu’s step S12 examines version
numbers in the sectors of the version-management domain 42 to locate the
latest version management information. If either of the version numbers of
the two sectors’ domain is “clear” and “OFFFFFFFFH,” the latest version
management information must exist in the other sector. If both version
numbers are not “OFFFFFFFFH,” the latest version management
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information exists in the sector’s first domain with the greater version
number. Col. 13, ll. 10-61; Fig. 10.

PRINCIPLES OF LAW
If the prior art reference does not expressly set forth a particular
element of the claim, that reference still may anticipate if that element
is inherent in its disclosure. . . . Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not
sufficient.

In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (internal citations and
quotation marks omitted).

ANALYSIS
Although the dispute before us presents us with a close question, we
nonetheless find error in the Examiner’s anticipation rejection of
representative claim 1 based on the record before us. Claim 1 calls for, in
pertinent part, (1) a memory capable of storing received software files in
DLMs, where each DLM comprises related components that operate
together to perform a particular function, and (2) a DLM controller capable
of comparing a first group of version identifiers associated with first related
components in a first DLM with corresponding version identifiers associated
with first related components that are contained in a latest-component-
versions list. Although these recited components need only be capable of
performing the recited storing and comparison functions, we nevertheless
find that Imamatsu’s memory and DLM controller fall short in this regard.
See In re Swinehart, 439 F.2d 210, 213 (CCPA 1971).
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Appellant first contends that Imamatsu does not disclose memory
capable of storing the software files in download modules, each module
comprising related components that operate together to perform a particular
function as recited in claim 1. App. Br. 12. Imamatsu’s mobile station 10
has modules A-D stored in memory 23 or a memory capable of storing
received software files in plural download modules. FF 1. Modules A-D are
also interrelated, and modules C and D have both a key control process
component and other service function component. Id. We therefore
disagree with Appellant (App. Br. 12) and find that Imamatsu’s modules
have related components that operate together to perform particular
functions (e.g., a key control function and other services).
Imamatsu, however, does not disclose a DLM controller capable of
comparing a first group of version identifiers associated with first related
components in a first download module with corresponding version
identifiers associated with first related components that are contained in a
list of latest component versions. We acknowledge that Imamatsu compares
the mobile station’s control-software 43 version number and the latest
version number managed by the mobile communication system at the
software-supply device 50. FF 2. But, our analysis does not end here
because Imamatsu also discusses version identifiers associated with DLMs
and comparisons with these version identifiers at the mobile station 10.
Imamatsu’s Figures 13 and 14 discussed by the Examiner (Ans. 5, 17,
and 18) disclose a version identifier (i.e., version numbers) associated with
download modules B-D. See FF 4. These version numbers are sent back to
the mobile device 10 at step J5. FF 2. As Appellant argues (App. Br. 13;
Reply Br. 5), Imamatsu’s version numbers represent the version of the entire
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control-software 43—not a single module. FF 3. Nonetheless, given the
breadth of the claim, each module’s version number also relates to each
component in a download such that the numbers are associated with related
components in a download module as recited in claim 1.
Imamatsu further discloses when a module is replaced (e.g., module
B), its version number or identifier of the control software 43 related to that
module is renewed or replaced. See FF 4. Imamatsu thus replaces each
module’s old version number with a new version number. See id. The
Examiner finds that when Imamatsu replaces one software module version
with another, a comparison of version numbers or identifiers as recited in
claim 1 must occur. Ans. 18. According to the Examiner, replacement
cannot occur without such a comparison. Id.
But we are left to speculate whether Imamatsu’s version number
replacement inherently performs the claimed comparison. Imamatsu does
not detail how the software is replaced, let alone explain how version
numbers are renewed. See FF 4. One possible mechanism for replacement
includes a flag stored in a module that does not involve a version identifier
comparison. But even if we assume, without deciding, that a comparison
between modules’ version numbers to determine whether to replace the
modules is probable, that alone is insufficient for anticipation. See
Robertson, 169 F.3d at 745. We are therefore constrained by the record
before us to find that Imamatsu fails to disclose the functional comparison
limitations in claim 1.
Alternatively, the Examiner discusses a process in Imamatsu that
partially updates data in Figure 9. Ans. 5, 17, and 18. This process
determines whether to update the module partially in a sector at steps S28-
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33. See FF 5. Imamatsu’s Figure 10 and its accompanying description
provide more details of the updating decision process. FF 7.
During the updating decision, Imamatsu determines the latest version
management information by examining version numbers in the sectors of the
version-management domain 42. See FF 6-7. For example, Imamatsu
explains how to find the latest version management information if both
version number in the sectors are not “OFFFFFFFFH.” Id. Thus, at the
mobile station 10, Imamatsu describes a version number or identifier in one
sector being compared to a version identifier in another sector. Because the
version management information relates to the download, these sectors are
arguably associated with a download module’s components. But while
Figure 5 shows an additional version number or identifier in each sector (see
FF 6), Imamatsu does not indicate whether any comparison is made with
these additional version identifiers. We are therefore constrained to find that
Imamatsu fails to disclose a DLM controller that is “capable of comparing a
first group of version identifiers associated with a first plurality of related
components in a first download module with corresponding version
identifiers associated with said first plurality of related component[s] that are
contained in a list of latest components versions” as recited in claim 1.
Independent claim 11 includes limitations commensurate with claim
1. The issues are therefore similar to those in connection with claim 1, and
we cannot sustain the Examiner’s anticipation rejection of claim 11 for the
reasons previously discussed.
For the foregoing reasons, we find that the Examiner erred in rejecting
independent claims 1 and 11 under § 102, and dependent claims 2-9 and 12-
19 for similar reasons.
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THE OBVIOUSNESS REJECTION
Claims 10 and 20 ultimately depend from claims 1 and 11
respectively. El Malki does not cure the previously-noted deficiencies of
Imamatsu. As such, the Examiner has erred in rejecting claims 10 and 20
under 35 U.S.C. § 103(a) over Imamatsu and El Malki.

CONCLUSION
The Examiner erred in rejecting (1) claims 1-9 and 11-19 under § 102,
and (2) claims 10 and 20 under § 103.

DECISION
The Examiner’s decision rejecting claims 1-20 is reversed.

REVERSED

msc

Docket Clerk
P.O. Drawer 800889
Dallas TX 75380