Ex Parte Sharonov

Patent Trial and Appeal Board

Mar 16, 2016

12518825 (P.T.A.B. Mar. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/518,825 06/11/2009
27683 7590 03/18/2016
HA YNES AND BOONE, LLP
IP Section
2323 Victory A venue
Suite 700
Dallas, TX 75219
FIRST NAMED INVENTOR
Sergei Sharonov
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.
1391-69504 8281
EXAMINER
RAMPURIA, SATISH
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
03/18/2016 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SERGEI SHARONOV
Appeal2014-005171
Application 12/518,825 1
Technology Center 2100
Before ELENI MANTIS MERCADER, JOHN P. PINKERTON, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 3-13, 15-22, and 24--29. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
THE CLAIMED INVENTION
Appellant's claimed invention relates to a processor replacing a first
software image with a second software image (e.g., an update), including at
re-boot resuming replacement of the first image if a flag is set conveying
that the replacement was incomplete. See Spec. 7-8. Of the claims on
1 According to Appellant, the real party in interest is Halliburton Energy
Services, Inc. App. Br. 3.
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Application 12/518,825
appeal, claim 1 is illustrative of the subject matter of the appeal and is
reproduced below with emphasis added to highlight disputed limitations.
1. An oilfield borehole device, comprising:
a storage device comprising a first software image and a
data structure, said data structure to include an address, a file
identifier, and a flag; and
a processor to download a second software image from a
second storage device external to the oilfield borehole device,
said second storage device associated with the address and said
second software image associated with the file identifier; and
wherein the processor replaces the first software image
with the second software image and changes a status of the flag
in response to replacement of the first software image; and
wherein, in response to a re-booting of the processor, the
processor automatically resumes replacement of the first
software image in response to the flag being set.
REJECTIONS ON APPEAL
(1) The Examiner rejected claims 1---6, 11-16, 19-24, and 27 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Ferguson
et al. (US 2003/0110482 Al; June 12, 2003) (hereinafter "Ferguson l"),
Chen (US 7,533,290 B2; May 12, 2009), and Herle et al. (US 2004/0261073
Al; Dec. 23, 2004) (hereinafter "Herle"), collectively referred to as the "first
combination."
(2) The Examiner rejected claims 8-10 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Ferguson 1, Chen, Herle, and
Ferguson et al. (US 2005/0262498 Al; Nov. 24, 2005) (hereinafter
"Ferguson 2"), collectively referred to as the "second combination."
(3) The Examiner rejected claims 7, 17, and 28 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Ferguson 1, Chen,
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Application 12/518,825
Herle, and Gritlioen et al. (US 2002/0188934 Al; Dec. 12, 2002)
(hereinafter "Griffioen"), collectively referred to as the "third combination."
(4) The Examiner rejected claims 18 and 29 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Ferguson 1, Chen,
Herle, and Woloson et al. (US 6,216,533 Bl; Apr. 17, 2001) (hereinafter
"W oloson"), collectively referred to as the "fourth combination."
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
contentions that the Examiner erred. In reaching our decision, we consider
all evidence presented and all arguments made by Appellant.
We disagree with Appellant's arguments and we incorporate herein
and adopt as our own: (1) the findings and reasons set forth by the Examiner
in the July 25, 2013 Final Office Action (Final Act. 2-19) and (2) the
reasons and rebuttals set forth in the Examiner's Answer (Ans. 2-23). We
incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted. We, however, highlight and address specific findings and
arguments below for emphasis.
(1) Automatically replacing software in response to the flag
Appellant argues the first combination, and particularly Chen, fails to
teach or suggest "the processor automatically resumes replacement of the
first software image in response to the flag being set," as recited in claim 1.
See App. Br. 12. Appellant first argues Chen fails to teach or suggest
resuming the software replacement in response to the flag being set. See
App. Br. 12. Appellant argues Chen instead discloses resuming the software
update "only ... upon the receipt of a command from a host or a user." See
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Application 12/518,825
id. (citing Chen Fig. 3, step 910). Appellant further argues Chen's "flag
being set to not completed has no bearing on whether Chen's update
occurs." See App. Br. 12. According to Appellant, Chen's flag is merely
used to execute the updating error handling code in boot-up, but not for
actually carrying out resuming replacement of a software image. See Reply
Br. 1-2 (citing Chen Fig. 3, steps 904 and 906).
Secondly, Appellant argues Chen also fails to teach or suggest
automatically resuming the software replacement. See App. Br. 13.
Appellant again argues Chen instead teaches a user or host command is
required for the software update to resume. See id.
The Examiner finds the combination of Chen and Herle teaches or
suggests this disputed limitation. See Ans. 19-20. Specifically, the
Examiner finds (i) Chen teaches utilizing updating error handling code for
completing boot up when the flag indicates an incomplete update occurred
(see Ans. 19 (citing Chen col. 4, 11. 53---62; col. 5, 11. 9-17; Fig. 3)); and
(ii) Herle teaches that at boot-up a processor automatically executes an
update agent program which "allows an incomplete software update
procedure to be automatically resumed" (see Final Act. 7 (citing Herle i-f 40);
see also Ans. 21 (citing Herle i-fi-1 4, 5) ).
We agree with the Examiner that the combination of Chen and Herle
teaches this disputed limitation. See Chen col. 4, 11. 53-62; col. 5, 11. 9-17;
Fig. 3; Herle i-f 40. Appellant incorrectly focuses on Chen individually
instead of addressing the combined teachings of Chen and Herle to one of
ordinary skill in the art. See In re Merck & Co. Inc., 800 F .2d 1091, 1097
(Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
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combination of references"); see also Jn re Keller, 642 F.2d 413, 425 (CCPA
19 81) (finding the relevant inquiry is whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of the references). For example, Appellant focuses on
whether the Examiner finds Chen teaches resuming the software update by
utilizing the updating handling code, yet Appellant ignores Herle' s teachings
of automatically resuming the software update and the Examiner's other
findings. See Reply Br. 1-2.
(2) Appropriateness of Combining Chen and Herle
Appellant provides numerous arguments why combining the teachings
of Chen and Herle allegedly is improper. See, e.g., App. Br. 12-14; Reply
Br. 2. We find these arguments unpersuasive.
For example, Appellant argues one of ordinary skill in the art would
not be motivated to modify Chen so that the update occurs automatically in
light of Chen's requiring of a command from a host or user to resume its
update operation. See App. Br. 13 (citing Chen col. 4, 11. 31-38); see also
Reply Br. 2 (arguing Chen teaches away from automatically restarting its
update because a command must be received to restart the update).
However, Chen's teaching that resuming an update can wait for a user
command does not negate the Examiner's proffered motivations to modify
Chen's updating process to occur automatically in response to a flag in light
of Herle' s teachings. See Ans. 21 (motivation includes "provid[ ing] a device
that is up-to-date and performing at its best performance with the updated
software" (citing Herle i-fi-14, 5)); Final Act. 7 (motivation includes
"provid[ing] an efficient technique for updating the code so that in the event
of errors such as power failure, the updating process is maintained").
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Simply put, Chen's teaching that resuming an update can wait for a user
command does not teach away from combining Chen with Herle' s teaching
of automatically resuming an update. See Herle ,-r 40; see also In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004) (finding a reference does not teach
away by merely disclosing an alternative invention without criticizing,
discrediting, or otherwise discouraging investigation into the claimed
invention).
Appellant also argues modifying Chen to provide for automatically
restarting the update would change Chen's principle of operation (i.e.,
effectively ignoring the command from the host or user). See App. Br. 12-
13. Appellant fails, however, to provide persuasive evidence that Chen's
basic principle of operation would be changed by automatically resuming
the update. We find Chen's principle of operation relates to completing a
software update at boot-up when it previously failed to complete - not
waiting for a command to resume an update, as Appellant argues. See, e.g.,
Ans. 21; Chen Abstract. Appellant provides no persuasive evidence
contrary to this finding. See App. Br. 13; see also In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the
place of evidence.").
Appellant also argues it would not have been obvious - absent
hindsight - to modify Chen such that its update process occurs
automatically in response to a flag being set. See App. Br. 14. Appellant
also posits that besides the Examiner's cited motivations for combining
Herle and Chen, "one of ordinary skill in the art may have other
motivations ... to require a user command before resuming the update, as is
explicitly disclosed by Chen." See App. Br. 13-14.
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Based on the record evidence, we find the Examiner appropriately
combined the teachings of Chen and Herle. See Ans. 21 (finding motivation
to combine includes providing an up-to-date device performing at its best
performance); Final Act. 7 (finding motivation to combine includes
providing an efficient technique for updating software and maintaining the
updating process); see also In re McLaughlin, 443 F.2d 1392, 1313-14
(CCP A 1971) ("Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill ... and
does not include knowledge gleaned only from applicant's disclosure, such a
reconstruction is proper.").
(3) Resuming replacement of the software
Appellant argues Chen teaches that the software update is restarted in
response to receiving a command from the user, not resumed, as is required
in claim 1. See Reply Br. 2 (citing Chen col. 5, 11. 1--4). Appellant contends
one of ordinary skill in the art would differentiate Chen's teaching of
restarting a software update from claim 1 's resuming a software update.
This argument is, however, waived as it was raised for the first time in
the Reply Brief without a showing of good cause. See 37 C.F.R.
§ 41.41(b )(2) (2012); see also Ex parte Borden, 93 USPQ2d 1473, 1474
(BP AI 2010) (informative) ("[T]he reply brief [is not] an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner's rejections, but were not.").
Regardless, the first combination, and Herle in particular, teaches
automatically resuming an interrupted software update on re-boot. See Herle
i-f 40 ("[A Jn incomplete software update procedure [can] be automatically
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resumed when ... re-booted."). Moreover, Appellant does not persuasively
articulate a meaningful difference between resume and restart under the
broadest reasonable interpretation of resume. See In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (providing claims are to be
given their broadest reasonable interpretation consistent with the
specification). Accordingly, we find Appellant's argument unpersuasive.
CONCLUSION
Our above findings and reasoning also apply to the other claims on
appeal because Appellant did not provide different or additional arguments
for the remaining claims and rejections. See App. Br. 14--15. Accordingly,
we sustain the Examiner's rejections of the claims on appeal.
DECISION
We affirm the Examiner's rejections of claims 1, 3-13, 15-22, and
24--29.
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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