Ex Parte Marolia et al

Board of Patent Appeals and Interferences

Mar 22, 2012

10879869 (B.P.A.I. Mar. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SUNIL MAROLIA and BINDU RAMA RAO
____________________

Appeal 2010-001787
Application 10/879,869
Technology Center 2100
____________________

Before JOSEPH L. DIXON, THU A. DANG,
and JAMES R. HUGHES, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-19 (App. Br. 2). Claims 1, 2, 7, and 12 are objected (App. Br. 5).
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

A. INVENTION
Appellants’ invention is directed to a method for downloading update
of firmware/software components in an electronic device; wherein, different
protocols for discovery, provisioning, and subsequent download of update
packages may be used (Abstract).

B. ILLUSTRATIVE CLAIMS
Claims 1 and 12 are exemplary:
1. A system that facilitates the updating of firmware in an
electronic device, using updating information received through
a network, the system comprising:

at least one electronic device having firmware, the at
least one electronic device arranged to communicatively couple
to at least one server to download firmware updating
information;

wherein the at least one server schedules one or more
times at which the at least one electronic device is to
communicatively couple to the at least one server to
download firmware updating information; and

wherein the at least one server sends schedule
information to the at least one electronic device that causes the
at least one electronic device to initiate a download of the
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firmware updating information from the at least one server
according to the scheduled one or more times.

12. An electronic device that employs a first protocol to
interact with a first server to determine the existence of
updating information for updating the electronic device and to
receive a schedule of one or more times at which the electronic
device is to communicatively couple to the first server to
download the updating information, and employs a second
protocol to initiate download of the updating information from
a second server according to the scheduled one or more times, if
the first server indicates the existence of the updating
information in the second server.

C. REJECTIONS12
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lipsit US 5,974,311 Oct. 26, 1999
Shin US 6,198,946 B1 Mar. 06, 2001
Lahti US 2003/0101246 A1 May 29, 2003
Hassett US 6,807,558 B1 Oct. 19, 2004
(filed Jun. 02, 1998)

Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shin in view of Admitted Prior Art (“APA”) and Hassett.
Claims 3-6, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shin in view of APA, Hassett, and Lahti.

1 The Examiner has withdrawn the rejection of claims 1-11 and 17-19 under
35 U.S.C. 112, first paragraph, as failing to comply with the enablement
requirement (Ans. 2).
2 Although Appellants’ Brief presents arguments relating to the duplicate
claims objection for claims 1, 2, 7, and 12 (App. Br. 7-12), we find that this
objection relates to petitionable subject matter under 37 CFR § 1.181 and not
to appealable subject matter.
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Claims 7-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shin in view of APA, Hassett, and Lipsit.
Claims 12-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lahti in view of APA and Hassett.

II. ISSUES
The dispositive issues before us are whether the Examiner has erred in
concluding that:
1. the combination of Shin, APA, and Hassett teaches or would have
suggested a system that facilitates updating of firmware in an electronic
device, “wherein the at least one server sends schedule information to the at
least one electronic device that causes the at least one electronic device to
initiate a download of the firmware updating information from the at least
one server according to the scheduled one or more times” (claim 1, emphasis
added); and
2. the combination of Lahti, APA, and Hassett teaches or would have
suggested “[a]n electronic device that employs a first protocol to interact
with a first server to determine the existence of updating information for
updating the electronic device and to receive a schedule of one or more
times at which the electronic device is to communicatively couple to the first
server to download the updating information, and employs a second protocol
to initiate download of the updating information from a second server
according to the scheduled one or more times, if the first server indicates the
existence of the updating information in the second server” (claim 12,
emphasis added).

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Shin
1. Shin discloses a base station that downloads firmware to a
wireless communications device, such as a cellular phone (Figs. 1, 4, 5, and
6; col. 4, ll. 7-22).
2. The wireless communications device enters a firmware (F/W)
upgrade mode upon power up or, if the device is presently on, the F/W
upgrade mode is enabled (Fig. 4; col.3, ll. 55-58).
3. Alternatively, the user may enter the F/W upgrade mode from a
normal mode (col.3, ll. 58-64).
4. One the device enters the F/W upgrade mode, the battery level
is checked and the user’s ID and information required for an upgrade are
transferred to the base station to determine whether the base station will
allow the upgrade (Fig. 4; col. 3, l. 65-col.4, l. 10). If upgrade is allowed,
the F/W is wirelessly upgraded to the wireless cellular phone (Fig. 4; col. 4,
ll. 10-15).
APA
5. APA discloses a mobile services network for update or
firmware/software in mobile handsets and a system and method for updating
and distributing information (Spec. ¶ [0002]).
Hassett
6. Hassett discloses an information server that sends a “next
recommended download time” along with other downloaded information to
a subscriber computer; wherein, the server selects the next recommended
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download times to spread the connection requests of the subscriber
computers evenly over time (col. 15, l. 65-col.16, l.5).
Lahti
7. Lahti discloses provisioning (configuring a mobile terminal to
use the service on the network by sending parametric data) that occurs upon
initial set up or when upgrading or updating services (¶ [0008]).
8. A plurality of remote servers each provide respective
provisioning information to a provisioning server for the provisioning of a
mobile terminal; wherein, all the servers are capable of using the WAP
bootstrap provisioning protocol and the Synchronization Markup Language
(SyncML) device management (DM) protocol (¶ [0035]). The remote
servers are enabled to instigate a communication session with the
provisioning server using the WAP bootstrap provisioning protocol and to
provide the provisioning server with provisioning information using the
SyncML DM protocol (id.).
9. Communication between a push service provider and a push
gateway is implemented using a Push Access Protocol (Fig. 3; ¶ [0039]).
The gateway and the mobile device use a special protocol to communicate
such as Push Over-the-Air (OTA) Protocol; wherein, content is transferred
to the client using either a Push Access protocol or a Push OTA Protocol
(id.).

IV. ANALYSIS
Claims 1 and 2
Appellants provide arguments with respect to independent claim 1
(App. Br. 15-19). Appellants do not provide arguments with respect to
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dependent claims 2. Accordingly, we select claim 1 as being representative
of the claims. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants contend that the Examiner “repeatedly relies on operator
intervention in its rejection of the presently claimed subject matter, and on a
purported scheduling of recommended times;” yet, “[t]he schedule
information of claim 1 that causes the at least one electronic device to
initiate a download according to the scheduled one or more times is quite
different, and patentably distinct from the schedule of merely
‘recommended’ times” (App. Br. 17). Appellants argue that the Examiner’s
“asserted motivation to include ‘recommendations’ of times would teach
against the presently claimed subject matter,” since “such a recommended
time, or a time randomly selected by subscriber computers, would teach
against a server sending scheduling information that caused the electronic
device to initiate a download according to a scheduled time” (App. Br. 17-
18).
However, the Examiner finds that “the claim [does] not provid[e]
details depicting how any internal software/hardware implementation
pertinent to the electronic handset actually supports (thereby pre-empt user
implication) the initiation or coupling”; “nor does the recited [claim
language] ‘arranged to ... couple to’ and ‘information that causes the ...
electronic device to initiate a download’ explicitly preclude role of a
operator” (Ans. 14). The Examiner notes that “[t]he ‘recommendations’ as
taught in Hassett [are] deemed fulfilling the interpretation of ‘scheduled
times’” and that “[A]ppellants’ argument is deemed not providing
demonstration as to how ‘recommended’ times as in Hassett would be
inappropriate for the upgrade approach as in Shin” (Ans. 16).
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Shin discloses a base station that downloads firmware to a wireless
communications device (FF 1). The wireless communications device enters
a firmware (F/W) upgrade mode upon power up or, if the device is presently
on, the F/W upgrade mode is enabled (FF 2). Alternatively, the user may
choose to enter the F/W upgrade mode when the device is in a normal mode
(FF 3). After a determination that an upgrade is allowed, the F/W is
wirelessly upgraded to the wireless cellular phone (FF 4).
In addition, APA is directed to a mobile services network for update
or firmware/software in mobile handsets and a system and method for
updating and distributing information (FF 5).
Furthermore, Hassett discloses an information server that sends a
“next recommended download time” along with other downloaded
information to a subscriber computer; wherein, the server selects the next
recommended download times to spread the connection requests of the
subscriber computers evenly over time (FF 6). We find that the next
recommended download time comprises schedule information. That is, we
find that a system that facilitates the updating of firmware in an electronic
device “wherein the at least one server sends schedule information to the at
least one electronic device that causes the at least one electronic device to
initiate a download of the firmware” (claim 1) reads on Hassett’s next
recommended download time.
In view of our claim construction above, we conclude that the
combination of Shin, APA, and Hassett at least suggests providing inter alia
“wherein the at least one server sends schedule information to the at least
one electronic device that causes the at least one electronic device to initiate
a download of the firmware updating information from the at least one
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server according to the scheduled one or more times,” as specifically
required by claim 1.
The Supreme Court has stated that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007).
Thus, we find no error in the Examiner’s conclusion that the
combination of Shin’s system including a server that downloads updates and
upgrades of firmware/software to a wireless communications device with the
schedule information, as disclosed in Hassett, produces a system having a
server that sends schedule information that causes the electronic device to
initiate a download which would be obvious (Ans. 5; FF 1-4 and 6).
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) over Shin in
view of APA and Hassett; and claims 2 depending from claims 1 which have
been grouped therewith.
Claims 3-11
Appellants argue that claims 3-11 are patentable over the cited prior
art for the same reasons asserted with respect to parent claim 1 (App. Br. 19-
20). Appellants contend that neither Lahti nor Lipsit cure the deficiencies of
Shin, APA, and Hassett (id.).
As noted supra, however, we conclude, in view of our claim
construction, that the combined teachings of Shin, APA, and Hassett at least
suggest all the features of claim 1. We therefore affirm the Examiner’s
rejection of claims 3-6, 10, and 11 over Shin, APA, Hassett, and Lahti for
the same reasons expressed with respect to parent claim 1, supra. We also
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affirm the Examiner’s rejection of claims 7-9 over Shin, APA, Hassett, and
Lipsit for the same reasons expressed with respect to parent claim 1, supra.
Claims 12-19
As to claims 12-16, Appellants contend, in addition to the claims
being “allowable for reasons similar to those discussed [] in connection with
claim 1” (App. Br. 20), that Lahti “fails to mention a ‘server’, and therefore
cannot teach ‘an electronic device’ that ‘interact[s] with a first server’ to
‘determin[e] the existence of updating information for updating’” (App. Br.
22). Appellants argue that “Figure 7 [of Lahti] does not disclose two
servers, let alone an electronic device that ‘initiate[s] download of the
updating information from a second server if the first server indicates the
existence of the updating information in the second server’” (App. Br. 23).
However, the Examiner finds that Lahti discloses that “remote servers
… instigate a session and further communicate provisioning information”
which “reads on [a] first protocol and [a] first server” (Ans. 17-18). The
Examiner finds further that “[t]he WAP over-the-air related gateway … to
support a Push technology based on the provisioning initial determination
step is deemed sufficient to fulfill a second server protocol supporting the
push technology, which is distinct from the initial protocol by which
provisional information … is determined” (Ans. 18).
Lahti discloses provisioning of a mobile terminal that occurs upon
initial set up or when upgrading or updating services (FF 7). A plurality of
remote servers each provide respective provisioning information to a
provisioning server for the provisioning of a mobile terminal; wherein, all
the servers are capable of using the WAP bootstrap provisioning protocol
and the SyncML DM protocol (FF 8). The remote server initiates a
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communication session with the provisioning server using the WAP
bootstrap provisioning protocol and provides the provisioning server with
provisioning information using the SyncML DM protocol (FF 8). The
gateway and the push service provider communicate using a Push Access
Protocol and the gateway and the mobile device communicates using a Push
OTA protocol (FF 9).
Although the Examiner finds that the remote server is the first server
in communication with the provisioning server and the “WAP over-the-air
related gateway … to support a Push technology based on the provisioning
initial determination step is deemed sufficient to fulfill a second server
protocol supporting the push technology” (Ans. 18), we do not find support
for the “electronic device that … employs a second protocol to initiate
download of the updating information from a second server according to the
scheduled one or more times, if the first server indicates the existence of the
updating information in the second server” in the relied upon sections, as
required by claim 12. That is, the sections of Lahti relied on by the
Examiner do not provide support that the second protocol employed by the
gateway initiates downloading of content to the provisioning server based
upon the remote server indicating the existence of updating information on
the gateway.
Accordingly, we conclude that Appellants have shown that the
Examiner erred in rejecting claim 12 under 35 U.S.C. § 103(a) over Lahti in
view of APA and Hassett; and claims 13-16 depending from claim 12 which
have the same limitations.
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As to claims 17-19, Appellants contend that independent claim 17 is
allowable “for similar reasons to those discussed above in connection with
[independent] claim 1” (App. Br. 26).
As noted supra, however, we conclude that the Hassett at least
suggests the claim limitation of claim 1 including “at least one server sends
schedule information to the at least one electronic device that causes the at
least one electronic device to initiate a download of the firmware” (claim 1)
which is similar to the claim limitation of “scheduling one or more times at
which the electronic device is to communicatively couple to at least one
server to download updating information, based upon the device
information; and communicating schedule, location and protocol
information to the electronic device to enable the electronic device to initiate
a download of the updating information according to the scheduled one or
more times, employing the location information and the protocol
information” (claim 17).
Accordingly, we conclude that Appellants have not shown that the
Examiner erred in rejecting claim 17 under 35 U.S.C. § 103(a) over Lahti in
view of APA and Hassett; and claims 18 and 19 depending from claim 17
which have been grouped therewith by Appellants.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-11 and 17-19 under 35 U.S.C. §
103(a) is affirmed, and the Examiner’s rejection of claims 12-16 under 35
U.S.C. § 103(a) is reversed.
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)(iv).
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AFFIRMED-IN-PART

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