Apple Inc.

Patent Trials and Appeals Board

Sep 2, 2021

2020003686 (P.T.A.B. Sep. 2, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/270,654 09/20/2016 Dana J. DuBois A00117NP 2960
151882 7590 09/02/2021
Invoke IP / Apple
30 Wall Street #800
8th Floor
New York, NY 10005
EXAMINER
SOLTANZADEH, AMIR
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
09/02/2021 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):
Apple@InvokeIP.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANA J. DUBOIS, MATTHEW SIBSON,
SAM H. GHARABALLY, and GREGORY L. MURRAY

Appeal 2020-003686
Application 15/270,654
Technology Center 2100
Before JAMES R. HUGHES, JOYCE CRAIG, and
MATTHEW J. McNEILL, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1–52 are pending, stand rejected, are appealed by Appellant,
and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act.
1; Appeal Br. 1.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Apple Inc. See
Appeal Br. 1.
2 We refer to Appellant’s Specification filed Sept. 20, 2016; Appeal Brief
(“Appeal Br.”), filed Jan. 17, 2020; and Reply Brief (“Reply Br.”), filed Apr.
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Application 15/270,654

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CLAIMED SUBJECT MATTER
The invention, according to Appellant, generally relates to “installing,
updating, and restoring applications.” Spec. ¶ 1. In particular, the invention
“may use state machines to manage app installation and related processes to
control and recover these processes.” Id. ¶ 18. For example, a state machine
responsible for app installation may be in a downloading state when a device
crash occurs, and the state machine may be restored to the downloading state
to resume the download when the device recovers. See id. Claims 1
(directed to a method), 14 (directed to a non-transitory computer-readable
medium), 27 (directed to a method), and 40 (directed to a non-transitory
computer-readable medium) are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of managing application installation on a
device, the method comprising:
instantiating, with a job manager, a job object comprising
a job state machine in a waiting state and a job pipeline
configured to relay messages related to a job;
transitioning, with the job object, the job state machine to
a downloading state in response to a start message on the job
pipeline, wherein the job object causes job data to be
downloaded to the device when the job state machine is in the
downloading state;
transitioning, with the job object, the job state machine to
an installing state in response to an assertion message on the job
pipeline, wherein the job object causes downloaded job data to
be installed on the device when the job state machine is in the
installing state; and

14, 2020. We also refer to the Examiner’s Final Office Action (“Final
Act.”), mailed Aug. 1, 2019; and Answer (“Ans.”) mailed Feb. 21, 2020.
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Application 15/270,654

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transitioning, with the job object, the job state machine to
a finished state when the job data is installed on the device;
wherein the job state machine is recoverable to the
waiting state, the downloading state, or the installing state in
response to a job object failure while the job state machine is in
the waiting state, downloading state, or installing state,
respectively.
Appeal Br. 36 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Amberg et al.
(“Amberg”)
US 5,963,743 Oct. 5, 1999
Schnoebelen et al.
(“Schnoebelen”)
US 2006/0010345 A1 Jan. 12, 2006
Jimmerson US 2009/0064135 A1 Mar. 5, 2009
Cui et al. (“Cui”) US 2009/0271781 A1 Oct. 29, 2009
Van Camp US 2010/0131084 A1 May 27, 2010
Stallings et al.
(“Stallings”)
US 2013/0263012 A1 Oct. 3, 2012
Farrell et al.
(“Farrell”)
US 2013/0159891 A1 June 20, 2013
Benson et al.
(“Benson”)
US 2015/0067670 A1 Mar. 5, 2015

REJECTIONS3
1. The Examiner rejects claims 1, 6, 10, 11, 13, 14, 19, 23, 24, 26,
27, 32, 36, 37, 39, 40, 45, 49, 50, and 52 under 35 U.S.C. § 103 as being
unpatentable over Cui and Schnoebelen. See Final Act. 2–22.

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application
Appeal 2020-003686
Application 15/270,654

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2. The Examiner rejects claims 2, 15, 28, and 41 under 35 U.S.C.
§ 103 as being unpatentable over Cui, Schnoebelen, and Benson. See Final
Act. 23–27.
3. The Examiner rejects claims 3, 16, 29, and 42 under 35 U.S.C.
§ 103 as being unpatentable over Cui, Schnoebelen, and Amberg. See Final
Act. 27–30.
4. The Examiner rejects claims 4, 17, 30, and 43 under 35 U.S.C.
§ 103 as being unpatentable over Cui, Schnoebelen, and Stallings. See Final
Act. 30–36.
5. The Examiner rejects claims 5, 18, 31, and 44 under 35 U.S.C.
§ 103 as being unpatentable over Cui, Schnoebelen, and Van Camp. See
Final Act. 36–41.
6. The Examiner rejects claims 7–9, 20–22, 33–35, and 46–48
under 35 U.S.C. § 103 as being unpatentable over Cui, Schnoebelen, and
Jimmerson. See Final Act. 41–50.
7. The Examiner rejects claims 12, 25, 38, and 51 under 35 U.S.C.
§ 103 as being unpatentable over Cui, Schnoebelen, and Farrell. See Final
Act. 50–56.
ANALYSIS
The Examiner rejects independent claims 1, 14, 27, and 40 (as well as
dependent claims 6, 10, 11, 13, 19, 23, 24, 26, 32, 36, 37, 39, 45, 49, 50, and
52) as obvious over Cui and Schnoebelen. See Final Act. 2–22; Ans. 4–20.
Appellant contends that Cui and Schnoebelen do not teach certain disputed

has an effective filing date (Sept. 20, 2016) after the AIA’s effective date
(March 16, 2013), this decision refers to the AIA version of 35 U.S.C. § 103.
Appeal 2020-003686
Application 15/270,654

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limitations of claim 1. See Appeal Br. 5–11; Reply Br. 1–4. Specifically,
Appellant contends, inter alia, that Cui does not teach a “downloading state”
and an “installing state” (see, e.g., Appeal Br. 6–9), and that Schnoebelen
does not teach a “job state machine is recoverable to the waiting state, the
downloading state, or the installing state in response to a job object failure
while the job state machine is in the waiting state, downloading state, or
installing state, respectively” (Appeal Br. 9–10 (emphasis omitted)).
We agree with Appellant that the Examiner-cited portions of Cui and
Schnoebelen do not teach or suggest the disputed limitations. The Examiner
relies on Cui’s description of downloading and installing an application for
teaching the “downloading state” and “installing state.” See Final Act. 3–4
(citing Cui ¶¶ 62, 63, 79, 104, Fig. 3). In particular, the Examiner finds that
in Cui “after the software component package is downloaded, the software
component package state changes from Not Downloaded to Delivered.”
Ans. 4 (citing Cui, Fig. 3). The Examiner further finds that “for a ‘job’ to go
from a ‘not downloaded’ state to a ‘delivered’ state, it needs to go through a
downloading state.” Id. Similarly, the Examiner finds that in Cui “[w]hen
the software component package is downloaded and directly installed, the
software component package state changes from Not Downloaded to
Installed.” Id. at 6. The Examiner further finds that “for a ‘job’ to go from a
‘not downloaded’ state in the terminal to a[n] ‘Installed’ state in the
terminal, the terminal needs to go through a[n] installing state.” Id.
The Examiner relies on Schnoebelen for teaching “looping back to
resume the installation effort at a point near the point of error detection,
when an error is detected.” Id. at 7 (citing Schnoebelen ¶ 24). Importantly,
the Examiner interprets claim 1 such that the job state machine need not be
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recoverable to each of the waiting state, downloading state, and installing
state, but rather only one of these states, e.g., the installing state. See id.
The Examiner errs in finding Cui teaches a “downloading state” and
an “installing state,” as recited in claim 1. Cui relates to installing software
components on a terminal. Cui, Abstract. Cui describes that “[a]s shown in
FIG. 3, the delivered software component package may be in any of the four
states: Not Download[ed] . . . Delivered . . . Installed . . . Removed . . . .
The software component package may transit from one state to another
among the four states.” Cui ¶ 62. We agree with Appellant that “in Cui, the
‘Not Downloaded’ state would be active until the very instant when it would
switch to the ‘Delivered’ state. . . . Hence, there is no instance in time when
the state machine of Cui indicates that a package is being downloaded, as
required by the claim.” Appeal Br. 7. The fact that the software component
package in Cui is in the process of being downloaded during some period of
time (see Ans. 4) does not necessarily show there is a “downloading state”
for a state machine. As recited in claim 1, there needs to be a transition “to a
downloading state in response to a start message on the job pipeline, wherein
the job object causes job data to be downloaded to the device when the job
state machine is in the downloading state.” The Examiner has not shown
Cui teaches such a “downloading state.” For similar reasons, the Examiner
has not shown Cui teaches a transition “to an installing state in response to
an assertion message on the job pipeline, wherein the job object causes
downloaded job data to be installed on the device when the job state
machine is in the installing state,” as recited in claim 1. In particular, we
agree with Appellant that “[n]one of Cui’s states indicate that the job data is
being installed to the device, only ‘Delivered’ which indicates a state after
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Application 15/270,654

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download, and ‘Installed’ which indicates a state after the software
component package is installed.” Appeal Br. 9.
The Examiner also errs in finding Schnoebelen teaches “the job state
machine is recoverable to the waiting state, the downloading state, or the
installing state in response to a job object failure while the job state machine
is in the waiting state, downloading state, or installing state, respectively,” as
recited in claim 1. By defining the job state machine as “recoverable” to any
one of the waiting state, the downloading state, or the installing state, claim
1 requires the job state machine to be actually capable of recovery to each of
the three states. Although claim 1 uses the conjunction “or” when reciting
recoverable states, this is because which state the job state machine is
recovered to depends on the state it was in when there was a job object
failure. The Examiner only finds Schnoebelen teaches recovery to an
installing state. See Final Act. 4; Ans. 7. Whether or not it is true that
Schnoebelen teaches an installing state, the Examiner has not made findings
that Schnoebelen teaches a job state machine recoverable to a waiting state
or a downloading state, depending on whether the job state machine fails in
either of those states.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that the combination of Cui and Schnoebelen
renders obvious Appellant’s claim 1. Independent claims 14, 27, and 40
include limitations of commensurate scope. Claims 6, 10, 11, 13, 19, 23, 24,
26, 32, 36, 37, 39, 45, 49, 50, and 52 depend from and stand with their
respective base claims. Accordingly, we do not sustain the Examiner’s
obviousness rejection of claims 1, 6, 10, 11, 13, 14, 19, 23, 24, 26, 27, 32,
36, 37, 39, 40, 45, 49, 50, and 52 over Cui and Schnoebelen.
Appeal 2020-003686
Application 15/270,654

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The Examiner rejects dependent claims 2–5, 7–9, 12, 15–18, 20–22,
25, 28–31, 33–35, 38, 41–44, 46–48, and 51 under 35 U.S.C. § 103 as being
obvious over Cui, Schnoebelen, and various other additional references. See
Final Act. 23–56. The Examiner does not suggest that the additional cited
references cure the deficiencies of the Cui and Schnoebelen combination
(supra). Therefore, we do not sustain the Examiner’s obviousness rejection
of dependent claims 2–5, 7–9, 12, 15–18, 20–22, 25, 28–31, 33–35, 38, 41–
44, 46–48, and 51 for the same reasons set forth for claim 1 (supra).
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 1–52
under 35 U.S.C. § 103. We, therefore, do not sustain the Examiner’s
rejection of claims 1–52.
Appeal 2020-003686
Application 15/270,654

9
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 6, 10, 11,
13, 14, 19, 23,
24, 26, 27, 32,
36, 37, 39, 40,
45, 49, 50, 52
103 Cui, Schnoebelen 1, 6, 10, 11,
13, 14, 19,
23, 24, 26,
27, 32, 36,
37, 39, 40,
45, 49, 50, 52
2, 15, 28, 41 103 Cui, Schnoebelen,
Benson
2, 15, 28, 41
3, 16, 29, 42 103 Cui, Schnoebelen,
Amberg
3, 16, 29, 42
4, 17, 30, 43 103 Cui, Schnoebelen,
Stallings
4, 17, 30, 43
5, 18, 31, 44 103 Cui, Schnoebelen,
Van Camp
5, 18, 31, 44
7–9, 20–22,
33–35, 46–48
103 Cui, Schnoebelen,
Jimmerson
7–9, 20–22,
33–35, 46–48
12, 25, 38, 51 103 Cui, Schnoebelen,
Farrell
12, 25, 38, 51
Overall
Outcome
1–52

REVERSED