Ex Parte Meenan et al

Patent Trial and Appeal Board

Jul 6, 2016

13616006 (P.T.A.B. Jul. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/616,006
100692 7590
AOL Inc./Finnegan
FILING DATE
09/14/2012
07/08/2016
901 New York Ave., NW
Washington, DC 20001
FIRST NAMED INVENTOR
Patrick MEENAN
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.
10587.0587-02000 1909
EXAMINER
NANO, SARGON N
ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
07/08/2016 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PATRICK MEENAN andFADY WILLIAM SEMAAN
Appeal2015-002294
Application 13/616,006
Technology Center 2400
Before LARRY J. HUME, JOHN P. PINKERTON, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 21--40, which constitute all of the claims pending in this application.
Claims 1-20 have been cancelled. App. Br. 20. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellants identify AOL Inc. as the real party in interest. App. Br. 1.
Appeal2015-002294
Application 13/616,006
THE INVENTION
The claimed invention is directed to obtaining configuration
information based on user identity information. Abstract.
Claim 21, reproduced below, is illustrative of the claimed subject
matter:
21. A method for obtaining configuration information,
compnsmg:
establishing, with a gateway device, electronic
communications between a user device and a trusted system;
determining that configuration information for the user
device is not available at the gateway device; and
accessing, when configuration information is determined
not to be available at the gateway device, configuration
information for the user device from the trusted system.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Freund US 2003/0167405 Al Sep.4,2003
Hughes US 6,854,009 B 1 Feb. 8,2005
Meenan (Meenan '329) US 7,752,329 Bl July 6, 2010
Meenan ("Meenan '900) US 8,275,900 B2 Sep.25,2012
REJECTIONS
Claims 21--40 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hughes in view of Freund. Final Act. 2-5.
Claims 21--40 stand rejected on the grounds of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1----67
of Meehan '329 and over claims 1-20 of Meehan '900. Final Act. 6-9.
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Appeal2015-002294
Application 13/616,006
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we consider
all evidence presented and all arguments made by Appellants. We agree
with Appellants' arguments regarding claims 21--40.
Section 103 Rejection
Appellants argue Hughes and Freund do not teach or suggest the
"determining" or "accessing" steps recited in claim 21. App. Br. 14--16;
Reply Br. 2-5. More specifically, Appellants identify two different claim
mappings relied on by the Examiner---one in which the Hughes local server,
cable modem, satellite link, DSL connection or dial-up connection constitute
the recited gateway device and a second where the network card within the
client computer is the recited gateway device-and argues that for each of
those mappings, Hughes does not teach or suggest determining if the device
configuration information is not available from the gateway device. Id.
Instead, Appellants argue the server detects what files are needed at the user
device and ensuring they are downloaded to the user device. App. Br. 15
(citing Hughes 8:1-54).
The Examiner finds Hughes teaches "establishing, with a device,
electronic communications between a user device and a trusted system."
Final Act. 2 (citing Hughes Fig. 1, 4: 12-38).2 The Examiner also finds
Hughes teaches "determining that information for the user device is not
2 Although the Examiner does not note which specific element is being
mapped to the gateway device, Hughes 4: 12-38 discusses a user device
(client 132 or 141a), a trusted service (server farm 200), and communication
over various networks.
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Appeal2015-002294
Application 13/616,006
available at the device." Final Act. 2 (citing Hughes 8: 1-54). And, the
Examiner finds Freund teaches that the device can be a gateway device.
Final Act. 3.
As a second claim mapping, the Examiner finds the gateway device is
a network card.
With regard to Appellants' argument regarding the determining step,
the Examiner finds Hughes teaches sending OS and program files from the
configuration server to the client. Ans. 8-9.
We disagree with the Examiner's finding because the Examiner has
not identified sufficient evidence or provided sufficient explanation as to
how Hughes teaches "determining that configuration information for the
user device is not available at the gateway device," as recited in claim 21.
Although the cited sections of Hughes discusses sending OS and program
files from the server (trusted system) to the client (user device), there is no
discussion in the cited sections of determining any configuration information
associated with the items mapped to the gateway device.
Accordingly, we are constrained on this record to reverse the
Examiner's section 103(a) rejection of claim 21, along with the rejections of
claims 31, which has the same limitation, and dependent claims 22-25 and
32-35.
Although claims 26 and 36 do not recite the determining limitation
discussed above, those claim recite a substantially similar limitation:
"requesting configuration information for the user device from the gateway
device." App. Br. 21, 23-24. For the same reasons discussed above for
claim 21, we disagree with the Examiner's finding because the Examiner has
not identified sufficient evidence or provided sufficient explanation as to
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Appeal2015-002294
Application 13/616,006
how Hughes teaches "requesting configuration information for the user
device from the gateway device," as recited in claim 21. 3 Although the cited
sections of Hughes discusses sending OS and program files from the server
(trusted system) to the client (user device), there is no discussion in the cited
sections of requesting any configuration information from the gateway
device.
Accordingly, we are constrained on this record to reverse the
Examiner's section 103(a) rejection of claims 26 and 36, along with the
rejections of dependent claims 27-30 and 37--40.
Nonstatutory Obviousness-type Double Patenting
Appellants argue the Examiner failed to make a prima facie case of
obviousness-type double patenting. App. Br. 18; Reply Br. 6-7.
Specifically, Appellants argue the Examiner does not compare the subject
matter of any of the claims of the instant application to claims 1-67 of
Meehan '329 or claims 1-20 of Meehan '900. App. Br. 18.
The Examiner concludes as follows:
Claims 1---67 of [Meehan '329] and claims 1-20 of [Meehan
'800] contain(s) every element of claims 21--40 of the instant
application and thus anticipate the claim( s) of the instant
application. Claims of the instant application therefore are not
patently distinct from the earlier patent claims and as such are
unpatentable over obvious-type double patenting. A later
patent/application claim is not patentably distinct from an earlier
claim if the later claim is anticipated by the earlier claim.
Final Act. 7.
3 Similar to the determining limitation discussed above for claim 21 above,
the Examiner finds the same section of Hughes teaches the requesting
limitation. Final Act. 4 (citing Hughes 8: 1-54).
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Appeal2015-002294
Application 13/616,006
We will not sustain this rejection because we agree with the
Appellants that the rejection is flawed because no proper claim-by-claim
obviousness analysis has been made. Specifically, the Examiner has failed
to set forth a prima facie case of double patenting. The Examiner has simply
stated that all of the claims of the instant application are anticipated by all of
the claims of Meehan '329 and Meehan '900. However, the Examiner has
failed to provide any analysis in support of this assertion. In a double
patenting rejection, the Examiner has the same burden to establish a prima
facie case ofunpatentability as with any other rejection. The Examiner
cannot satisfy this burden by simply noting that the conditions for double
patenting are met without a comparative analysis of the claims on appeal
with the claims of the corresponding patent or application. Because the
Examiner has failed to provide us with an appropriate comparative analysis
of the claims on appeal with the claims of Meehan '329 and Meehan '900,
we will not sustain the double patenting rejection.
DECISION
For the above reasons, we reverse the Examiner's decision rejecting
claims 21--40 as unpatentable under 35 U.S.C. § 103(a).
For the above reasons, we reverse the Examiner's decision rejecting
claims 21--40 on the grounds ofnonstatutory obviousness-type double
patenting.
REVERSED
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