Ex Parte Rajaram et al

Patent Trial and Appeal Board

Jun 28, 2016

09972519 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
09/972,519 10/05/2001
32968 7590 06/30/2016
KYOCERA INTERNATIONAL INC
INTELLECTUAL PROPERTY DEPARTMENT
8611 Balboa Ave
SAN DIEGO, CA 92123
FIRST NAMED INVENTOR
Gowri Rajaram
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.
UTL 00144 4731
EXAMINER
TORRES, MARCOS L
ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
KII-USPatents@kyocera.com
Kathleen.Connell@kyocera.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GOWRI RAJARAM and GREGORY LIE
Appeal2014-006120
Application 09/972,519
Technology Center 2600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JEREMY J. CURCURI, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
This application returns to us after we affirmed the Examiner's
decision to reject then-pending claims 1-14, 16-35, and 37--42. Ex parte
Rajaram, No. 2010-009581, 2012 WL 3647820 (BPAI Aug. 27, 2012) ("Bd.
Dec."). Prosecution reopened after that decision, and Appellants now appeal
under 35 U.S.C. § 134(a) from the Examiner's subsequent decision to reject
claims 1-14, 16-29, 34, 35, and 37--46. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
Appeal2014-006120
Application 09/972,519
STATEMENT OF THE CASE
Appellants' invention uses dynamic instruction sets to update
persistent data items in the system software of wireless communication
devices. See generally Spec. 1, 3--4. Claim 1 is illustrative:
1. In a wireless communications device, a method for
updating data, the method comprising:
executing system software;
receiving an instruction set, having instructions and data
items, from an air interface, at least one of the instructions
including an operation code that specifies an operation to be
performed using at least one data item extracted from the
instruction set;
launching a run-time engine;
processing the instruction set;
replacing data items in the system software with updated
data items, in response to the instructions including:
using the at least one data item extracted from the
instruction set to perform the operation specified by the
operation code; and
replacing the data items with a result of the
operation; and
executing the system software with the updated data
items in response to the instructions.
RELATED APPEAL
Although Appellants indicate that they are unaware of any prior
appeals related to the present appeal (App. Br. 4), there was nevertheless an
earlier Board decision in this application as noted previously.
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Application 09/972,519
THE REJECTIONS 1
The Examiner rejected claims 1, 2, 4--10, 12-14,2 19-23, 26-29, 34,
35, and 40-42 under 35 U.S.C. § 102(b) as anticipated by Hayes, Jr. (US
5,974,312; Oct. 26, 1999) (hereinafter "Hayes"). Final Act. 6-10.3
The Examiner rejected claims 3, 16, 24, 25, 37, and 40 under
35 U.S.C. § 103(a) as unpatentable over Hayes and Fette (US 6,052,600;
Apr. 18, 2000). Final Act. 10-13.
The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Hayes and Rosauer (US 5,832,086; Nov. 3, 1998). Final
Act. 13.
The Examiner rejected claims 17 and 38 under 35 U.S.C. § 103(a) as
unpatentable over Hayes and Alperovich (US 5,960,356; Sept. 28, 1999).
Final Act. 13-14.
The Examiner rejected claims 18 and 39 under 35 U.S.C. § 103(a) as
unpatentable over Hayes and Metso (US 5,920,826; July 6, 1999). Final
Act. 14.
1 Because the Examiner withdrew rejections under§§ 112 and 101 (Ans. 2),
those rejections are not before us.
2 Although the Examiner includes claim 11 in the statement of the
anticipation rejection, it was not further discussed in this rejection, and was
rejected as obvious over Hayes and Rosauer. See Final Act. 13. In light of
this inconsistency, we presume that the Examiner did not intend to reject
claim 11 as anticipated by Hayes, and present the correct claim listing here
for clarity. For clarity, we also omit cancelled claims 31 and 33 which were
included in the statement of the rejection.
3 Throughout this opinion, we refer to (1) the Final Rejection mailed April
18, 2013 ("Final Act."); (2) the Appeal Brief filed December 20, 2013
("App. Br."); (3) the Examiner's Answer mailed February 27, 2014
("Ans."); and (4) the Reply Brief filed April 28, 2014 ("Reply Br.").
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Application 09/972,519
The Examiner rejected claims 43--46 under 35 U.S.C. § 103(a) as
unpatentable over Hayes and Kim (US 2002/0065959 Al; May 30, 2002).
Final Act. 14--15.
THE ANTICIPATION REJECTION
The Examiner finds that Hayes updates data in a wireless
communications device by, among other things, (1) receiving an instruction
set, having instructions and data items, from an air interface, at least one
instruction including an operation code specifying an operation to be
performed using at least one data item extracted from the instruction set, and
(2) replacing the data items with a result of the operation. Final Act. 6-7;
Ans. 2-7. According to the Examiner, the data sent by Hayes' wireless
programmer ("air interface") instructs a mobile device to perform an
operation using an extracted data item, such as using the received data to
replace old data items and update a mobile device's software or data. Ans.
4.
Appellants argue that Hayes does not receive an instruction set
including an operation code specifying an operation to be performed, let
alone replace data items with a result of the operation, as claimed. App. Br.
14--15; Reply Br. 2--4. Although Appellants acknowledge that Hayes'
wireless programmer transmits updated software and associated revision
numbers to devices to be updated, no associated update instructions are
transmitted with the updates; rather, the receiving devices are said to be pre-
programmed with update instructions. Id.
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Application 09/972,519
ISSUE
Under§ 102, has the Examiner erred in rejecting claim 1 by finding
that Hayes (1) receives an instruction set, having instructions and data items,
from an air interface, at least one instruction including an operation code
specifying an operation to be performed using at least one data item
extracted from the instruction set ("the operation code limitation"), and (2)
replacing the data items with a result of the operation?
ANALYSIS
We begin by noting key differences between claim 1 at issue in this
appeal as compared to the version in the earlier appeal. As the Examiner
indicates (Ans. 2-3), claim 1 was narrowed after our earlier decision to add
the operation code limitation, and that data items are replaced with a result
of the specified operation. Claim 1, however, was broadened in other
respects, namely by changing the previously-recited comparison of
"persistent" data items with "constraint" data items to using at least one
extracted data item to perform the specified operation. Claim 1 was also
broadened by removing these particular data-item labels, as well as labels
for the recited instructions and instruction set. That is, the claims now
simply recite an "instruction set," "instructions," and "data items" with no
modifying labels.
As noted above, this dispute turns on the newly-added operation code
limitation, and, in particular, whether the data sent from Hayes' wireless
programmer 200 to device 100 has instructions including an operation code
that specifies an operation to be performed using an extracted data item as
claimed. We, therefore, construe the term "operation code." According to
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the Specification, an instruction set's operation code ( 1) can be conditional,
mathematical, procedural, or logical, and (2) is read by a run-time engine to
determine what operations need to be performed. Spec. 25:7-9; see also id.
at 28:2--4 (explaining that a run-time engine processes an instruction set's
operation code to perform mathematical or logical operations on data items).
Although instruction sets are not limited to any particular language,
operation code is typically a form of machine code, and is conditional in that
it (1) analyzes a data item, and (2) makes a decision based on that analysis.
Id. at 25: 13-18. For example, the operation code may specify that a data
item is (1) compared to a predetermined value, or (2) added to another
predetermined value. Id. at 25:20-26:2.
Despite these non-limiting examples, this description nonetheless
informs our understanding of the recited operation code. Therefore, when
the term "operation code" is interpreted in light of the Specification, the
recited "operation code" must be conditional, mathematical, procedural, or
logical code that is read by a run-time engine and specifies an operation to
be performed using at least one data item extracted from an associated
instruction set. This construction is reasonably consistent with the
Examiner's cited definition of "operation code" from a telecommunications
dictionary, namely "the command part of a machine instruction." Ans. 5.
Based on this interpretation, we find problematic the Examiner's
position that the data that Hayes' device 100 receives from the wireless
programmer 200, including ( 1) the revision number of the new software
program to be downloaded; (2) channel-based location data; and (3) list of
memory block numbers to be altered in column 14, line 64 to column 15,
line 4 necessarily includes the recited operation code. Ans. 4--7. We reach
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this conclusion even if this received data constitutes "instructions" in the
sense that Hayes' update process outlined in Figures 8 to 8C is triggered
upon receipt of this data and, therefore, effectively "instructs" the device to
commence the update process using this data as the Examiner indicates. See
id.
As shown in Hayes' Figure 5A, data is exchanged between the
wireless programmer 200 and device 100 via four channels: (1) Notification
Channel 455; (2) Authentication Channel 460; (3) Data Channel 465; and (4)
Acknowledgement Channel 470. Hayes, col. 9, 11. 30-36. Data is sent
initially from the wireless programmer 200 to the device 100 via
Notification Channel 455 whose frame structure is detailed in Table 1 which
includes Revision Number ("RN"), Location (frequency, time slot, spreading
code, etc. of the other three channels) ("LOC"), and Changed Block Number
("CBN"). Hayes col. 9, 11. 43-58; Fig. 5B.
When device 100 finds the Notification Channel, the device (1) reads
the transmitted information from that channel, and (2) continues the memory
update process by tuning to the Authentication Channel and authenticating.
Hayes, col. 10, 1. 62---col. 11, 1. 9. The device then (3) tunes to the Data
Channel identified in the LOC field of the Notification Channel, and (4)
reads the information from the Data Channel (listed in Table 2 and shown in
Figure 5D) to update memory. Id.
Although the data received by the device on the Notification and Data
Channels broadly constitutes "instructions" in the sense that their receipt
triggers the device to perform a particular operation corresponding to that
data (e.g., tuning to a particular frequency specified by the Location data,
etc.), we cannot say that these instructions necessarily include an operation
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code as claimed. Rather, Hayes' device 100 may be pre-programmed with
such a code-a possibility that undermines the Examiner's position that the
operation code is necessarily received from an air interface to inherently
anticipate the claim. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999).
Whether it would have been obvious to include the recited operation
code in the data that Hayes' device 100 receives from the wireless
programmer is a question that is not before us; nor will we speculate in that
regard here in the first instance on appeal. But what we can say is that the
Examiner's position that the device necessarily receives an instruction set
with an operation code specifying an operation to be performed using at
least one data item extracted from the instruction set is untenable on this
record.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claims 20, 21, 41, and 42 which recite
commensurate limitations; and (3) dependent claims 2, 4--10, 12-14, 19, 22,
23, 26-29, 34, 35, and 40 for similar reasons.
THE OBVIOUSNESS REJECTIONS
Because the Examiner has not shown that the other cited prior art
cures the foregoing deficiencies regarding the rejection of the independent
claims, we do not sustain the obviousness rejections of dependent claims 3,
11, 16-18, 24, 25, 37--40, and 43--46 (Final Act. 11-15) for similar reasons.
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CONCLUSION
The Examiner erred in rejecting (1) claims 1, 2, 4--10, 12-14, 19-23,
26-29, 34, 35, and 40-42 under§ 102; and (2) claims 3, 11, 16-18, 24, 25,
37--40, and 43--46 under§ 103.
DECISION
The Examiner's decision rejecting claims 1-14, 16-29, 34, 35, and
37--46 is reversed.
REVERSED
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