Ex Parte Pruessmann et al

Patent Trial and Appeal Board

Jul 22, 2016

12140953 (P.T.A.B. Jul. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/140,953 06/17/2008
121363 7590 07/26/2016
Shook, Hardy & Bacon L.L.P.
(Adobe Systems Incorporated)
Intellectual Property Department
2555 Grand Blvd
Kansas City, MO 64108
FIRST NAMED INVENTOR
Boris Pruessmann
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.
P847/ADBS.209667 4425
EXAMINER
HUDA, MOHAMMED NURUL
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
07/26/2016 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
kspringer@shb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BORIS PRUESSMANN, FRANK SOETEBEER, and
DANIEL C. BROTSKY
Appeal 2015-001149
Application 12/140,953
Technology Center 2100
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-5, 7, 8, 10-15, 17, 18, 20-25, 27, 28, and 30-33. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Adobe Systems
Incorporated. (Br. 1.)
Appeal2015-001149
Application 12/140,953
EXEMPLARY CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter with disputed limitations emphasized:
1. A method comprising:
retrieving to a client computer over a network one or more
extensions from a source external to the client computer, where
each extension comprises software that is configured to integrate
with one or more software products installed on the client
computer and includes a user interface to extend user interaction
within the one or more software products;
distributing each extension to the one or more software
products on the client computer;
upon determining that the one or more of the extensions
have been used by the client computer at least once,
automatically retrieving over the network updates
corresponding to the one or more extensions, wherein
automatically retrieving the updates comprises:
determining version information for each of the one
or more extensions retrieved; and
providing the version information over the network
to an extension service; and
distributing each update to the one or more software
products executing on the client computer compatible with the
corresponding extension.
REJECTIONS
The Examiner made the following rejections:
Claims 11-15, 17, 18, and 20 stand rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. (Final Act. 2-3.)
Claims 1-5, 7, 8, 10-15, 17, 18, 20-25, 27, 28, and 30-33 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Murray (US
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Application 12/140,953
2005/0289535 Al; published Dec. 29, 2005) and Moshir (US 2005/0257214
Al; published Nov. 17, 2005). (Final Act. 4--22.)
ISSUES
Issue 1: Did the Examiner err in finding claims 11-15, 17, 18, and 20
recite non-statutory subject matter?
Issue 2: Did the Examiner err in finding Murray teaches or suggests
"providing the version information over the network to an extension
service," as recited in claim 1 and similarly recited in claims 8, 11, 18, 21,
28,and31?
Issue 3: Did the Examiner err in finding the combination of Murray
and Moshir teaches or suggests "upon determining that the one or more of
the extensions have been used by the client computer at least once,
automatically retrieving over the network updates corresponding to the one
or more extensions," as recited in claim 1 and similarly recited in claims 8,
11, 18, 21, 28, and 31?
ANALYSIS
Issue 1
The Examiner rejected claims 11-15, 17, 18, and 20 under 35 U.S.C.
§ 101 because "machine readable storage device" as recited in those claims
encompasses both transitory and non-transitory media. (Ans. 23-27.)
Appellants argue claims 11-15, 17, 18, and 20 are directed to statutory
subject matter because "a device cannot be considered transitory or
intangible." (Br. 12-13.)
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Application 12/140,953
We agree with Appellants that the recited "machine readable storage
device" excludes transitory signals. We observe that Appellants'
Specification distinguishes between a machine-readable storage device and a
machine-readable propagated signal. (See Spec. i-f 40.) Because the broadest
reasonable interpretation of "machine readable storage device" consistent
with the Specification does not include transitory signals, we do not sustain
the Examiner's§ 101 rejection of claims 11-15, 17, 18, and 20.
Issue 2
Appellants contend Murray does not teach or suggest "providing the
version information over the network to an extension service," as recited in
claim 1 and similarly recited in claims 8, 11, 18, 21, 28, and 31. (Br. 15-16,
19.) Specifically, Appellants argue Murray updates software extensions by
"polling an extension catalog" or by sending notifications "from the
extension catalog to the client," but the extension updates are provided
"without any indication that version information is sent." (Id. at 15-16
(citing Murray i-f 170).)
We are not persuaded. The Examiner finds, and we agree, Murray
teaches software extensions for client software and those software
extensions are associated with version information. (Final Act. 4--5 (citing
Murray i-fi-138, 51, 58, 175-188).) The Examiner further finds, and we agree,
extensions in Murray can be updated by polling a centrally stored extension
catalog, the extension catalog including version information for extensions.
(Ans. 28 (citing Murray i-fi-1170, 175-188).) The Examiner concludes it
would have been obvious to send client extension version information to an
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Application 12/140,953
extension provider storing the extension catalog to determine whether an
extension update is available. (See id.)
We are not persuaded by Appellants' arguments because we agree
with the Examiner's conclusion that it would have been obvious to an
ordinarily skilled artisan that version information would be transmitted to an
extension provider to provide a relevant extension update for a client. (Id.)
Accordingly, we are not persuaded the Examiner erred in finding
Murray teaches or suggests "providing the version information over the
network to an extension service," as recited in claim 1 and similarly recited
in claims 8, 11, 18, 21, 28, and 31.
Issue 3
Appellants contend the combination of Murray and Moshir does not
teach or suggest "upon determining that the one or more of the extensions
have been used by the client computer at least once, automatically retrieving
over the network updates corresponding to the one or more extensions," as
recited in claim 1 and similarly recited in claims 8, 11, 18, 21, 28, and 31.
(Br. 17-19.) Specifically, Appellants argue Moshir updates software "at the
direction of the human administrator," rather than automatically. (Br. 18
(citing Moshir i-f 60) (emphasis omitted).)
We are not persuaded. The Examiner finds, and we agree, Murray
teaches extension updates are automatically provided from a server to a
client (Final Act. 6-7 (citing Murray i-f 170, Fig. 14).) Indeed, Murray
teaches "automatic indirection to correct version" (Murray i-f 179) and
automatic retrieval of updates to a client (see id. i-f 170, Fig. 14). The
Examiner relies on Murray to teach automatic update retrieval (Final Act. 6-
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Application 12/140,953
7), and Appellants' arguments against Moshir (Br. 18) do not address the
Examiner's finding that Murray teaches automatic update retrieval.
Additionally, Appellants argue Moshir's "determining how often a
particular program is accessed is not the same as determining that an
extension has been used at least once." (Id. (emphasis in original).)
We are not persuaded. The Examiner finds, and we agree, Moshir
teaches preparing a proposed list of updates based on "how often a particular
program data file, etc. is accessed." (Final Act. 7 (citing Moshir i-fi-f 13 5-
138); Ans. 29-30.) Specifically, we agree with the Examiner that Moshir
teaches the disputed limitation because Moshir' s determining how often a
program is accessed would involve two metrics - number of times the
particular program is accessed and length of time during which the program
is accessed. (Ans. 30.)
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Murray and Moshir teaches or suggests "upon determining
that the one or more of the extensions have been used by the client computer
at least once, automatically retrieving over the network updates
corresponding to the one or more extensions," as recited in claim 1 and
similarly recited in claims 8, 11, 18, 21, 28, and 31.
Remaining Claims
Appellants do not argue separate patentability for dependent claims 2-
5, 7, 10, 12-15, 17, 20, 22-25, 27, 30, 32, and 33 which depend directly or
indirectly from claims 1, 8, 11, 18, 21, 28, or 31. (See Br. 19.) For the
reasons set forth above, therefore, we are not persuaded the Examiner erred
in rejecting these claims. Accordingly, we sustain the Examiner's rejections
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Application 12/140,953
of claims 2-5, 7, 10, 12-15, 17, 20, 22-25, 27, 30, 32, and 33. See 37
C.F.R. § 41.37(c)(l)(iv).
DECISION
The Examiner's rejection of claims 11-15, 17, 18, and 20 under 35
U.S.C. § 101 as being directed to non-statutory matter is reversed
TheExaminer'srejectionofclaims 1-5, 7, 8, 10-15, 17, 18,20-25,
27, 28, and 30-33 under 35 U.S.C. § 103(a) as being unpatentable over
Murray and Moshir 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)(l )(iv).
AFFIRMED
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