Ex Parte Adler et al

Patent Trial and Appeal Board

Sep 29, 2016

11845018 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111845,018 08/24/2007
21186 7590 10/03/2016
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Steven M. Adler
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.
1060.0llUSl 8004
EXAMINER
NGUYEN, STEVEN C
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN M. ADLER, JOSEPH B. GRAND,
ANDREW S. HUANG, DUANE S. MAXWELL,
KENNETH E. STEELE, and STEPHEN L. TOMLIN
Appeal2015-004686
Application 11/845,018 1
Technology Center 2400
Before LARRY J. HUME, NATHAN A. ENGELS, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 2, 4-15, 17-22, 24-26, 29, 33-36, and 45-51.
Appellants have canceled claims 3, 16, 23, 27, 28, 30-32, and 37--44. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is BBY Solutions, Inc.
App. Br. 2.
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Application 11/845,018
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention relates to systems,
methods, and apparatus "for facilitating sharing of widget programs among a
plurality of personal electronic devices." Spec. i-f 1217 (Abstract).
Exemplary Claims
Claims 1, 14, and 29, reproduced below, are representative of the
subject matter on appeal (emphases added to contested limitations):
1. A system, comprising:
a plurality of personal electronic devices; and
a service provider apparatus in communication with the
plurality of personal electronic devices over at least one
communication network, the service provider apparatus
including:
a database of software applications, said software
applications capable of being downloaded and executed by at
least some of said plurality of personal electronic devices;
a server communicatively coupled to the database and
the at least one communication network, the server being
responsive to instructions received over the at least one
communication network to provide respective profiles to
respective ones of the plurality of personal electronic devices,
wherein the respective profiles specifY instances of ones of the
downloaded software applications, and conditions relating to
execution of the instances, to the respective ones of the plurality
of personal electronic devices,
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Aug. 12, 2014); Reply Brief ("Reply Br.," filed Mar. 16, 2015); Examiner's
Answer ("Ans.," mailed Jan. 16, 2015); Final Office Action ("Final Act.,"
mailed Jan. 16, 2014); and the original Specification ("Spec.," filed
Aug. 24, 2007).
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wherein the respective profiles specify a certain subset of
the downloaded software applications for execution on the
respective personal electronic device, and wherein the
conditions relating to execution of the instances include a
defined sequence for playback of the specified subset of the
downloaded software applications on the respective personal
electronic device in an order specified by the server, and
wherein, when executed by a first personal electronic
device included within the plurality of personal electronic
devices, the [ ] respective profiles cause said first personal
electronic device to execute the downloaded software
applications in the defined sequence in the order specified by
the server.
14. The system of claim 1 wherein one of the
conditions defines one or more absolute times of execution of
the instances of the ones of the downloaded software
applications provided to one of the plurality of personal
electronic devices.
29. A method of operating a personal electronic
device, the method comprising:
receiving, at the personal electronic device, a profile
specifying a sequence for execution of instances of ones of
software applications and conditions relating to execution of the
instances, the profile specific to the personal electronic device;
receiving, at the personal electronic device, a stream of
first instances of a plurality of downloaded software
applications downloaded from a server in a first order;
temporarily storing, within memory of the personal
electronic device, the first instances of the downloaded software
applications; and
executing, using a processor of the personal electronic
device, each of the first instances of the downloaded software
applications in a second order defined by the sequence specified
by said profile;
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wherein the profile specifies a certain subset of the
downloaded software applications for execution on the personal
electronic device, and wherein the conditions relating to
execution of the instances include a playback sequence of the
specified subset of the downloaded software applications
arranged in the second order.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Chaudhri et al. ("Chaudhri")
Chang
US 2006/0015818 Al Jan. 19, 2006
US 2007/0022431 Al Jan. 25, 2007
Pyhalammi et al. ("Pyhalammi") US 2007 /0250643 Al Oct. 25, 2007
Rejection on Appeal
Claims 1, 2, 4--15, 17-22, 24--26, 29, 33-36, and 45-51 stand rejected
under 35 U.S.C. § 103(a) as being obvious over the combination of
Chaudhri, Chang, and Pyhalammi. Ans. 3.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 10-19), we decide the
appeal of the obviousness rejection of claims 1, 2, 4--13, 15, 17-22, 24--26,
33-36, 45--49, and 51 on the basis of representative claim l; we decide the
appeal of the obviousness rejection of claims 29 and 50 on the basis of
representative claim 29; and we decide the appeal of the obviousness
rejection of separately argued claim 14, infra.
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We agree with particular arguments advanced by Appellants with
respect to claim 14 for the specific reasons discussed below.
However, we disagree with Appellants' arguments with respect to
claims 1, 2, 4--13, 15, 17-22, 24--26, 29, 33-36, and 45-51, and we
incorporate herein and adopt as our own: ( 1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons and rebuttals set forth in the Examiner's Answer in response
to Appellants' arguments. We incorporate such findings, reasons, and
rebuttals herein by reference unless otherwise noted. We highlight and
address specific findings and arguments regarding claims 1, 14, and 29 for
emphasis as follows.
1. Rejection of Claims 1, 2, 4--13, 15, 17-22, 24--26, 33-36, 45--49, 51
Issue 1
Appellants argue (App. Br. 11-17; Reply Br. 1-7) the Examiner's
rejection of claim 1under35 U.S.C. § 103(a) as being obvious over the
combination of Chaudhri, Chang, and Pyhalammi is in error. These
contentions present us with the following issues:
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests a system that includes, inter alia, a server, wherein
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"respective profiles specify instances of ones of the downloaded software
applications, and conditions relating to execution of the instances ... the
respective profiles cause said first personal electronic device to execute the
downloaded software applications in the defined sequence in the order
specified by the server," as recited in claim 1?
(b) Did the Examiner err in combining the cited prior art in the
manner suggested to render claim 1 obvious under§ 103?
Analysis
Issue 1 (a)- Claim Limitations
Appellants contend,
The Rejection's reliance on Chang is misplaced for multiple
reasons. First, Chang cannot disclose this portion of claim 1
because Chang does not discuss operation of a server or
downloaded software in any part of its disclosure. The
Rejection makes no attempt to provide reasoned argument, or
any argument for that matter, to satisfy Changis failure to even
mention a server or downloaded software.
App. Br. 12.
Appellants further contend,
Device drivers for an audio device and CD player that are
loaded onto a computer cannot be considered as equivalent to
downloaded software applications that are executed in a server-
specified order. Chang does not disclose the "downloaded
software applications" or the "server" of claim 1 as asserted by
the Examiner.
App. Br. 12-13. Furthermore, Appellants argue, "Chang's system simply
would not allow use of an 'order specified by the server' because Chang's
system requires a preset priority order to load the drivers." App. Br. 13.
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The Examiner responds, and we agree, the claimed "downloaded
software" reads on the device drivers of Chang, as the device drivers "are a
form of a computer program and these drivers are stored in a data storage on
the computer system," and Chang further teaches that the device drivers
"follow a program execution priority table that define[ s] what order the
drivers are to be loaded." Ans. 17. We find this teaches or at least suggests
the "instances of ones of the downloaded software applications" portion of
the contested limitations.
With respect to the "respective profiles" portion of the disputed
limitations, Appellants contend the Examiner's reliance upon the teachings
and suggestions of Pyhalammi is in error because,
[t]he filtering of content in Pyhalammi occurs before the
content is sent to the widget, and therefore there is no condition
on the execution of Pyhalammi' s widget that can be considered
to be contained in a user profile . . . [such that] Pyhalammi
discusses no more, in this context, than the fact that software
can be downloaded.
App. Br. 13.
As for the claimed "profile," the Examiner interprets that term to be
anything that performs the related claim limitations, i.e., the respective
profiles specify conditions relating to execution of the instances of
downloaded software. Ans. 18. The Examiner correctly points out, and we
agree, Appellants have not identified an explicit definition of "profile" in the
Specification or claim that would preclude the Examiner's interpretation.
We agree with the Examiner that Pyhalammi teaches or suggests a server
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creating a user profile, sent to the client from the server, and which is based
upon user-marked URLs. Id.; see Pyhalammi i-fi-137, 38, and 41. 3
Moreover, because the Examiner rejects the claims as obvious over
the combined teachings of Chaudhri, Chang, and Pyhalammi, the test for
obviousness is not what the references show individually but what the
combined teachings would have suggested to one of ordinary skill in the art.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Thus, we do
not find Appellants' arguments against the references separately, discussed
above, to be persuasive.
Issue 1 (b)-Motivation to Combine
Appellants contend the Examiner's stated basis for motivation to
combine the references in the manner suggested (Final Act. 4--5) "is facially
deficient and represents impermissible hindsight bias." App. Br. 15.
Appellants particularly argue Chaudhri and Chang are not combinable
because:
There is no indication in Chaudhri that the widgets use different
drivers than each other, so it is not clear what efficiency there is
to be gained by attempting to integrate Chang into Chaudhri.
Likewise, it is unclear how the execution for low-level device
drivers can be extended to higher-level widgets operating at the
highest level of the operating system graphical user interface.
The Examiner's reasoning for combining Chang and Chaudhri
3 For example, "[t]he marked links may be included in a list or user profile.
The list or user profile may be further stored either at the mobile terminal or
may be transmitted to a remote device." Pyhalammi i137. "According to
one embodiment of the invention, after the user has marked various URLs in
web feeds, a user profile is created based on the markings, and advertising
that matches criteria in the user profile is transmitted to the user via the
advertising widget." Pyhalammi i-f 41.
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simply lacks any objective analysis of why one of ordinary skill
in the art would combine the references, were it not for meeting
the current elements of the instant application.
App. Br. 16.4
Appellants also contest the Examiner's stated basis for combining
Pyhalammi with Chaudhri and Chang, arguing the following:
Pyhalammi is not combinable with Chaudhri and Chang as the
Examiner asserts. Rather, the Final Office Action's stated
reason to combine these references is nothing more than a
baseless assertion that the combination would "further allow the
user to customize the system, thereby improving user
functionality." The examples of the user profile in Pyhalammi
are URLs, summaries of web feeds, or text content of the web
feeds. It is unclear how these examples of the user profile are
capable of allowing "the user to customize the system, thereby
improving user functionality" as the Examiner alleges. . . .
Simply put, the Rejection fails to provide any reasoned basis
outside of the instant application of a motivation to combine
Pyhalammi with Chaudhri and Chang.
Id. (footnotes omitted).5
Here, we see the hindsight question before us as a balancing test, i.e.,
whether the Examiner's proffered combination of references is merely:
( 1) "the predictable use of prior art elements according to their established
functions" (KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007)),
4 The Examiner finds motivation in that "the combination of Chaudhri and
Chang would enable Chang to specify an order of execution for Chang's
widgets as both references involve downloading software and executing
them. The efficiency of Chaudhri would be improved as a user could then
select which widgets to install instead of the system installing all the widgets
at once as the user may not use all the widgets." Ans. 20.
5 The Examiner finds motivation in that "the user profile of Pyhalammi
would allow for Chaudhri and Chang to tailor information sent to the user
through widgets." Ans. 20.
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consistent with common sense; or, (2) would an artisan reasonably have
combined the cited references in the manner proffered by the Examiner but
for having the benefit of the claim to use as a guide (i.e., impermissible
hindsight)?
After reviewing the respective teachings and suggestions of the cited
references, we find the evidence more strongly supports the first prong of the
balancing test. In particular, it would have been obvious to an artisan having
general knowledge of personal electronic devices and their related software
applications to combine the user interface and widgets of Chaudhri with the
priority sequencing execution of Chang's widgets for the reasons articulated
by the Examiner. Final Act. 4--5; Ans. 20. We also find a person of
ordinary skill in the art would have been motivated to combine Chaudhri and
Chang with Pyhalammi's profile to allow targeted information to be sent to a
user through a widget based on user preferences, e.g., user's marked URLs,
for the reasons articulated by the Examiner. Final Act. 5; Ans. 20.
The Examiner provided sufficient articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.
Ans. 20; see supra notes 4 and 5. See KSR, 550 U.S. at 418. Moreover,
Appellants have not demonstrated that the Examiner's proffered combination
of references would have been "uniquely challenging or difficult for one of
ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Nor
have Appellants provided objective evidence of secondary considerations
which our reviewing court guides "operates as a beneficial check on
hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725
F.3d 1341, 1352 (Fed. Cir. 2013).
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Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 2, 4--13, 15, 17-22, 24--26, 33-36, 45--49, and 51, which fall
therewith. See Claim Grouping, supra.
2. Rejection of Claim 14
Issue 2
Appellants argue (App. Br. 18; Reply Br. 7-8) the Examiner's
rejection of claim 14 under 35 U.S.C. § 103(a) as being obvious over the
combination of Chaudhri, Chang, and Pyhalammi is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the system of claim 1, "wherein one of the conditions defines
one or more absolute times of execution of the instances," as recited in
claim 14? (Emphasis added).
Analysis
Appellants contend paragraphs 23 and 73 of Chaudhri cited by the
Examiner (Final Act. 9) as teaching or suggesting the contested limitation
merely "states that as the user drags widgets to the configuration bar they are
downloaded from the server ... [which] would be done at the time the user
initiates," which only implies a time for downloading a widget and does not
teach or suggest an absolute time of execution, as claimed. App. Br. 18.
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We agree with Appellants' arguments and are persuaded the Examiner
erred in finding that a random, user-initiated "drag and drop" widget
download teaches or suggests the recited "absolute time of execution."
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the combined
teachings and suggestions of the cited prior art combination to teach or
suggest the disputed limitation of claim 14, such that we find error in the
Examiner's resulting legal conclusion of obviousness. Therefore, we cannot
sustain the Examiner's obviousness rejection of dependent claim 14.
3. Rejection of Claims 29 and 50
Issue 3
Appellants argue (App. Br. 17-18; Reply Br. 7) the Examiner's
rejection of claim 29 under 35 U.S.C. § 103(a) as being obvious over the
combination of Chaudhri, Chang, and Pyhalammi is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method of operating a personal electronic device that includes,
inter alia, the step of "temporarily storing, within memory of the personal
electronic device, the first instances of the downloaded software
applications," as recited in claim 29?
Analysis
With respect to claim 29 and the Examiner's findings and legal
conclusion related thereto (Final Act. 10-11 ), Appellants contend the
"argument by the Examiner is clearly in error because storing a
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configuration so that it can be retrieved later is a non-temporary type of
storage that does not implicate temporarily storing downloaded software
applications." App. Br. 17. 6
In response, the Examiner finds "Chaudhri also disclosed that a user
can drag a widget to a trash icon that causes the widget to be deleted from
the user's machine (Paragraph 103). As the user has the ability to delete
widgets, the ones that are deleted are considered 'temporarily storing.'"
Ans. 21.
We note Appellants have not cited to a definition of "temporarily
storing" in the Specification7 that would preclude the Examiner's broader
reading. 8 Ans. 21.
6 We note the Board, as well as Examiners, make findings of fact, reach
conclusions of law, and make decisions regarding the exercise of discretion,
but do not make "arguments " "contentions " "admissions " or "concessions "
' ' ' '
because neither the Examiner nor the Board are parties in any ex parte
proceeding.
7 We note the "Summary of Claimed Subject Matter" section of Appellants'
Appeal Brief (App. Br. 7) cites to paragraph 1007 of the Specification for
support of the "temporarily storing" limitation.
In another aspect the present invention relates to a method of
operating a personal electronic device. The method includes
receiving, at the personal electronic device, a stream of first
instances of a plurality of widget programs and temporarily
storing the first instances within memory of the personal
electronic device. Each of the first instances of the plurality of
widget programs may be cached in memory for future use, or
deleted from the memory upon being executed by a processor
of the electronic device. The method further includes receiving,
at the personal electronic device, a stream of second instances
of the plurality of widget programs.
Spec. ,-r 1007.
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Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 29, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 29, and grouped
claim 50 which falls therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1-8) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1, 2, 4--13, 15, 17-22, 24--26, 29, 33-36, and 45-51under35 U.S.C.
§ 103(a) over the cited prior art combination of record, and we sustain the
rejection.
8 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
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The Examiner erred with respect to the obviousness rejection of
claim 14 under 35 U.S.C. § 103(a) over the cited prior art combination of
record, and we do not sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4--13, 15, 17-
22, 24--26, 29, 33-36, and 45-51.
We reverse the Examiner's decision rejecting claim 14.
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-IN-PART
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