Ex Parte Aleksandrov et al

Patent Trial and Appeal Board

Dec 23, 2016

13474063 (P.T.A.B. Dec. 23, 2016)

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.
13/474,063 05/17/2012 Anton Aleksandrov RSW920120079US1 4465
75949 7590
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
12/28/2016 EXAMINER
SALAD, ABDULLAHI ELMI
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
12/28/2016 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):
patents @ fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTON ALEKSANDROV, AMIT BEN-SHEFFER,
RAANAN AVIDOR, YOAV BODOR, ISHAI BOROVOY,
YARON GOLDBERG, TODD ERIC KAPLINGER,
IDDO LEVIN, RAN ENRIKO MAGEN, RON PERRY, and
ARTEM SPECTOR
Appeal 2016-001240
Application 13/474,063
Technology Center 2400
Before JOSEPH L. DIXON, STEPHEN C. SIU, and JAMES W. DEJMEK,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-001240
Application 13/474,063
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—25. We have jurisdiction under 35 U.S.C. § 6(b). This appeal is related to
Appeal 2016-001242, Serial Number 13/481,169 and Appeal 2016-004742,
Serial Number 13/480,301.
We affirm.
The claims are directed to an updating web resources. Claims 1,17,
and 20 reproduced below, are illustrative of the claimed subject matter:
1. A method for updating web resources, comprising:
extracting web resources from an application to local files
of a client device;
downloading updates to said web resources to said local
files from an external server; and
running said application using contents from said local
files.
17. A method for updating web resources, comprising:
downloading an application comprising web resources;
extracting web resources from said application to local
files in response to an initial start-up of said application;
querying a server to identify updates to said web
resources;
downloading said updates to said web resources to said
local files from an external server; and
running said application using contents from said local
files.
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20. A method for updating web resources, comprising:
receiving a query from a client device for updates to web
resources of an application downloaded to said client device, said
application comprising a first component to extract said web
resources, pre-packaged in said application, from said
application to one or more local files on said client device and a
second component to operate said application using said web
resources from said local files; and
sending said updates to said client device.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chiles et al.
Mason et al.
Chasman et al.
Holmes et al.
US 6,167,567
US 2004/0128347 Al
US 2007 /0180075 Al
US 2008/0077941 Al
Dec. 26, 2000
July 1,2004
Aug. 2, 2007
Mar. 27, 2008
REJECTIONS
The Examiner made the following rejections:
Claims 1—25 are provisionally rejected on the ground of non-statutory
obviousness-type double patenting as being unpatentable over claims 1—25
of co-pending Application No. 13/481,169 and claims 1—25 of co-pending
Application No. 13/480,301.
Claims 1—8, 10, 16—18, and 20 stand rejected under pre-AIA
35 U.S.C. § 102(b) based as being anticipated by Mason.
Claims 9, 11, 12, 21, and 23—25 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Mason in view of Chiles.
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Claims 13, 14, and 22 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Mason in view of Chiles and further in
view of Chasman.
Claims 15 and 19 stand rejected under pre-AIA 35 U.S.C. § 103 (a) as
being unpatentable over Mason in view of Holmes.
ANALYSIS
For clarity, we address the rejections in the order set forth in the
Appeal Brief.
Non-Statutory Obviousness Type Double Patenting
Appellants contend:
Appellant notes that the present application was filed
before the other two applications cited, as demonstrated by its
lower serial number.
As explained in the MPEP § 804, when a provisional
double patenting rejection is the only rejection remaining in the
earlier filed of two co-pending applications, that earlier
application is to be allowed to issue. A terminal disclaimer may
then be required in the second of the two applications.
(App. Br. 10; see generally Reply Br. 3).1
1 MPEP 804 (I)(B)(1):
If a “provisional” nonstatutory double patenting rejection is the only
rejection remaining in an application having the earliest effective U.S. filing
date (including any benefit claimed under 35 U.S.C. 120, 121, 365(c),
or 386(c) ) compared to the reference application(s), the examiner should
withdraw the rejection in the application having the earliest effective U.S.
filing date and permit that application to issue as a patent, thereby converting
the “provisional” nonstatutory double patenting rejection in the other
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The “examiner agrees with the Appellant and the provisional double
patenting rejection will be maintained until a provisional double patenting
rejection is the only rejection remaining of the claims in this application.”
(Ans. 2). We disagree with Appellants and the Examiner that this
application is the “earlier filed application.” We find the 13/481,169 and
13/480,301 applications both claim priority to the present application (serial
number 13/474,063), which has a filing date of May 17, 2012.
Consequently, each of the applications has the “same effective filing date”
as discussed in MPEP 804. As a result, there is no actual “earlier” filed
application due to the similar claims of priority.
The Examiner maintained the provisional obviousness-type double
patenting rejection. (Ans. 2). Because Appellants have not filed a terminal
disclaimer nor have Appellants presented argument regarding the
obviousness-type double patenting rejection, we summarily sustain the
obviousness-type double patenting rejection of claims 1—25.
Additionally, we note that an additional continuation application is
pending which the Examiner may also consider in an obviousness-type
double patenting rejection (serial number 15/367,345 filed on December 2,
2016 and a related patent (US 9,525,587 from serial number 13/474,371 )
therefrom is scheduled to issue on December 20, 2016).
Appellants further contend “if the other rejections against Appellant's
claims are not sustained, this provisional double patenting rejection should
also be overturned as to this, the earliest filed, of the applications in
application(s) into a nonstatutory double patenting rejection when the
application with the earliest U.S. effective filing date issues as a patent.
(Emphases added).
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question.” (App. Br. 10; Reply Br. 3). We decline to do so as the Appeal
Brief “shall explain why the examiner erred as to each ground of rejection
contested by appellant.” 37 C.F.R. § 41.37(c)(l)(iv) (emphasis added).
Appellants have not identified any errors in the Examiner’s conclusions
regarding the provisional obviousness-type double patenting rejection. “If
an appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.” Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Accordingly, we
summarily affirm the provisional rejection of claims 1—25 on the ground of
non-statutory obviousness-type double patenting over claims 1—25 of co­
pending Applications 13/480,301 and 13/474,063.
35U.S.C. § 102
Independent claim 17
Appellants contend:
There is simply no teaching or suggestion in the cited reference
of an application that includes web resources within a download
package so as to provide for “downloading an application
comprising web resources; [and] extracting web resources from
said application to local files in response to an initial start-up of
said application.” (Claim 17).
(App. Br. 11). Appellants further contend:
Thus, Mason describes a local portal catalog storing
content for use by the portal services module. The content for
the local portal catalog is requested and received from a remote
portal catalog. However, there is no teaching or suggestion of
“downloading an application comprising web resources. ”
(Claim 17) (emphasis added). Mason never teaches or suggests
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“extracting web resources from said [downloaded] application
to local files.” (Claim 17) (emphasis added). The Action simply
overlooks some of the subject matter clearly recited. For at least
these reasons, Mason does not anticipate the subject matter of
claim 17.
Claim 17 also recites that the extracting of files from the
downloaded application is “in response to an initial start-up of
said application.” As noted above, Mason does not teach or
suggest extracting files from an application. Moreover, Mason
teaches that updates to the local portal catalog simply occur
whenever the user is online. “[T]he portal services module of the
present invention dynamically updates local content when the
user is online. In order to achieve this result, it is necessary to
determine whether the user is online or offline.” (Mason,
paragraph 0042). This has no connection to initial start-up of an
application. Thus, Mason further does not teach or suggest
“extracting web resources from said application to local files in
response to an initial start-up of said application. ” (Claim 17)
(emphasis added). For at least this additional reason, Mason does
not anticipate claim 17.
(App. Br. 12-13).
The Examiner maintains:
Mason discloses when requested application (i.e., file or
application catalog) is downloaded from a remote system (or
other source). Then, the local catalog is updated to indicate that
the most current version of the requested file has been
downloaded locally, the version, the date of the download
application is extracted and recorded (that is web resource such
as version of the application, date and other template are
extracted and stored locally). For example, when application
catalog is downloaded, configuration information such as XML
document templates, XSL stylesheets, and HTML files are
extracted and saved. Thus, When a request for information
occurs, the file date of files indicated by each of these above
template are compared to the file dates indicated in the remote
portal catalog. If the local file dates are older than the remote file
dates, some (or all) of the files indicated in the catalog 360 are
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selectively downloaded to the local machine, and the catalog is
updated to reflect the date of the download(s). In this manner,
content on the local machine is dynamically updated (see par.
0035, 0041, and 0071). Also, the portal configuration files track
an application's local root location within the portal. This allows
the portal services module 32 to communicate with one or more
remote servers 60 to exchange content between the user
computer local files and the remote server 60. In addition, this
mechanism allows the aforementioned portal catalogs to be
updated whenever the user becomes on-line. Thus, the portal
services module 32 downloads updated versions of the XML,
XSL, HTML, and portal configuration files 42 from the remote
server 60.
(Ans. 3—4).
While Appellants’ arguments are presented regarding “teaches and
suggests,” we find the rejection is based upon anticipation where the issue is
whether the Mason reference discloses the claimed invention. We agree
with Appellants that the Examiner has not identified any specific disclosure
in the Mason reference regarding the claimed “extracting web resources
from said application to local files in response to an initial start-up of said
application. ” As a result, we cannot sustain the anticipation rejection of
independent claim 17 and dependent claim 18.
Independent claim 20
With respect to independent claim 20, Appellants repeat the language
of the claim and contend “Mason does not teach or suggest a downloaded
application ‘comprising a first component to extract said web resources,
prepackaged in said application, from said application to one or more local
files on said client device.’” (App. Br. 14).
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The Examiner finds:
as explained above with respect claim 17, in Mason downloaded
application catalogs are pre-packed with web resource such as
configuration files. Such files are preferably XML document
templates, XSL stylesheets, and HTML files, but could be any
file type known in the art. Thus, When a request for information
occurs, the file date of files indicated by each of these above
template are compared to the file dates indicated in the remote
portal catalog downloaded to the local machine. If the local file
dates are older than the remote file dates, some (or all) of the files
indicated in the catalog 360 are selectively downloaded to the
local machine, and the catalog is updated to reflect the date of
the download(s). In this manner, content on the local machine
is dynamically updated (see par. 0035, 0041, and 0071). The
portal services module 32 downloads updated versions of the
extracted and saved XML, XSL, HTML, and portal
configuration files 42 from the remote server 60.
(Ans. 4—5).
We find claim 20 is directed to a “method for updating web
resources” from a device separate from the client device. In other words,
some other (unspecified) device receives a query from a client device for
updates to web resources and, subsequently, sends the updates to the client
device. As a result, the claim terminology regarding the application on the
client device does not further limit the active method steps of “receiving a
query from a client device” and “sending said updates to said client device.”
Consequently, Appellants’ reliance upon the “web resources, pre-packaged
in said application” does not change or limit the two recited method steps in
claim 20. Therefore, Appellants’ argument is not persuasive of error in the
Examiner’s finding of anticipation of method claim 20.
We further find a distinction between independent claim 17, which
contains an active step of downloading, and the method recited in claim 20,
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which does not contain a similar active step in the method. As a result,
Appellants’ reliance upon this distinction is unavailing.
Assuming arguendo that the claim limitation “an application
downloaded to said client device” limits the step of receiving a query from
the client, we agree with the Examiner that the application on the client of
the Mason reference clearly discloses the claimed “first component to
extract said web resources, pre-packaged in said application, from said
application to one or more local files on said client device and a second
component to operate said application using said web resources from said
local files” because Mason discloses using the application both online and
off-line. (See Mason || 31—44 and 69-74).
Thus, it is our view that Appellants have made a general allegation in
the Appeal Brief that the above-mentioned claims define a patentable
invention without specifically pointing out how the language of the claims
patentably distinguishes over the cited references. Merely reciting the
language of the claim is insufficient. See 37 C.F.R. § 41.37(c)(iv) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”). Merely
alleging that the references fail to support an obviousness rejection or that
the claim is novel over the cited reference is insufficient to persuade us of
Examiner error. Attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693,
slip op. at 7—8 (BPAI Aug. 10, 2009) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf.
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As a result, Appellants’ general argument for patentability does not
show error in the Examiner’s finding of anticipation of independent claim
20.
Independent claim 1
Appellants repeat the language of independent claim 1 and contend:
claim 1 recites extracting web resource from an application to
local files and, then, running that same application using the
contents of those “said” local files into which the web resources
extracted from the application itself were placed. In contrast,
Mason does not teach or suggest this subject matter.
(App. Br. 15; Reply Br. 7). Appellants repeat the language of independent
claim 1 and generally contend that the Mason reference does not teach or
suggest the claimed invention. Appellants do not identify any specific
definition of any of the claim terminology, but generally contend that
“Mason does not ever teach or suggest” the claimed limitations. (App.
Br. 15). Appellants further contend that in Mason “this content is not
‘extract[ed] ... in response to an initial start-up of said application, as in
claim 1. (App. Br. 15). We note that claim 1 does not recite the claim
language “extract[ed] ... in response to an initial start-up of said
application.” Id. (emphasis omitted). Therefore, Appellants’ argument is not
commensurate in scope with the express language of independent claim in 1
and does not show error in the Examiner’s finding of anticipation.
Appellants further contend:
Mason does not ever teach or suggest that this content, loaded to
the local portal catalog is then used to run the application(s) from
which it came. This is what claim 1 recites “running said
application using contents from said local files” after “extracting
web resources from an application to local files of a client
device.” (Claim 1). This subject matter is entirely beyond the
scope and content of Mason.
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(App. Br. 15—16).
The Examiner maintains:
Mason teaches in response content stored locally being
refreshed, the portal services module 32 downloads updated
versions of the XML, XSL, HTML, and portal configuration files
42 from the remote server 60. Thus, the local portal catalog 44
is updated to reflect the same. Also, daemon or other process
executing on the local system could be scheduled to initiate
process updating local applications at pre-determined times (see
par. 0044).
(Ans. 5). We agree with the Examiner and find Appellants’ mere recitation
of the language of the claim is insufficient. See 37 C.E.R. § 41.37(c)(l)(iv).
Additionally, Appellants’ paraphrasing of the claim limitations is not
commensurate in scope with the express language recited in the method
steps of independent claim 1. Lor example, Appellants contend that claim 1
requires “running said application using contents from said local files” after
“extracting web resources from an application to local files of a client
device.” (App. Br. 16; Reply Br. 7—8). We disagree with Appellants’
contentions and find that the running of the application is with the
downloaded updates which is the intermediary step. As a result, we find
Appellants’ arguments to be unpersuasive of error in the Examiner’s finding
of anticipation of independent claim 1.
Appellants have not set forth separate arguments for patentability of
dependent claims 6—8, 10, and 16. Consequently, Appellants have not
shown error in the Examiner’s finding of anticipation, and we sustain
rejection for the same reasons as independent claim 1 and dependent claims
6—8, 10, and 16.
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Claim 2
Appellants repeat the language of the claim and contend that the
Examiner has misinterpreted the claim2. (App. Br. 16 — 17).
The Examiner maintains in “Mason downloaded application catalogs
are pre-packed with web resource such as configuration files. Such
configuration files are preferably XML document templates, XSL
stylesheets, and HTML files, but could be any file type known in the art.”
(Ans. 6).
Appellants further contend that “Mason never mentions or discusses
‘web resources which are pre-packaged in the downloaded application.’”
(Reply Br. 8). We agree with Appellants that the Examiner has not
identified a disclosure in the Mason reference of downloading an application
with web resources which are pre-packaged in the downloaded application
where the catalogs are not deemed to be applications but data files.
Consequently, we find error in the Examiner’s finding of anticipation of
dependent claim 2.
Claim 3
Appellants contend that “[t]hus, claim 3 recites an application that is
both the source from which web resources are extracted and comprises a
private browser for accessing those web resources in the local files.” (App.
Br. 17). Appellants further contend that “[tjhere simply is no teaching or
suggestion here of the claimed application that is both the source from which
2 We agree with Appellants that dependent claim 2 impliedly recites the
downloading of the application where claim 2 recites “[t]he method of claim
1, wherein said application, as downloaded to said client device, comprises
machine readable instructions to extract the web resources which are pre­
packaged in the downloaded application.”)
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web resources are extracted and comprises a private browser for accessing
those web resources in the local files.” (App. Br. 19; Reply Br. 9).
The Examiner finds in “Mason the web browser 38 within the portal
environment provides the user a personalized and unified look-and-feel and
allowing access to remote and local content and applications (see par.
0030).” (Ans. 7). We agree with the Examiner that the web browser of the
portal environment is a “private browser” on the local computer.
“In the patentability context, claims are to be given their broadest
reasonable interpretations . . . limitations are not to be read into the claims
from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted). 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.”). Absent an express intent to impart a novel meaning to a
claim term, the words take on the ordinary and customary meanings
attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1,
LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)
(citation omitted).
We disagree with Appellants and find Appellants’ attempt to read
limitations into the claim that are not expressly set forth. Again, Appellants
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have not identified any special definition of any of the claim terminology.3
As a result, we find Appellants’ argument to the “application” does not show
error in the Examiner’s finding of anticipation of the method of dependent
claim 3 which depends from independent claim 1.
Claim 4
With respect to dependent claim 4, Appellants repeat the language of
the claim and contend:
Claim 4 recites: “querying said external server to identify
said updates in response to any of start-up of said application, an
expiration of a run time of said system, a change in a
foreground/background status of said application, a closure of
said application, or combinations thereof.” In this regard, the
Action, without any supporting explanation, cites to Mason at
paragraphs 0042-0045 and 0086-0087. (Action, p. 9).
As demonstrated above, Mason appears only to request
content based upon a request from a user. The Action has failed
to demonstrate any teaching or suggestion in Mason of updates
to web resources been queried in response to the specific events
recited in claim 4. For at least this additional reason, the rejection
of claim 4 should not be sustained.
(App. Br. 20). Appellants further contend that “the Answer has again failed
to demonstrate any teaching or suggestion in Mason of updates to web
resources been queried in response to the specific events recited in claim 4.”
(Reply Br. 10).
The Examiner finds:
as illustrated in par[0032] Mason discloses the portal catalog 44
allows the portal services module 32 to refresh content when the
3 We find that 129 of the Specification discloses “[w]hen an application is
operating, the application creates a private browser that implements web
resources to run the application” without further detail thereto.
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user is on-line by downloading the most recent content from the
remote portal catalog 72 of the remote system 60, or other
external source. For example, Mason teaches a variable within
the portal configuration file is set to reflect online status of
external server, by changing the state of the portal service
module to “online.” Of course, any other method of ascertaining
the status of the remote host (other than the “ping” method) could
be employed without departing from the spirit or scope of the
present invention (see par. 0042).
(Ans. 7). We agree with the Examiner that the Mason reference in
paragraphs 32 and 42 disclose at least one of the conditions has been shown
at the startup of the application. Additionally, the checking online status
may be considered to be a foreground/background status change as recited in
dependent claim 4. Consequently, we find Appellants’ argument to be
unpersuasive of error in the Examiner’s finding of anticipation.
Claim 5
Appellants repeat the language of claim 5 and contend that the
Examiner has not shown the relied upon paragraphs of Mason (i.e., ]Hf 35,
42-45, 86, and 87) disclose the claimed invention. (App. Br. 20).
Appellants further contend:
As demonstrated above, Mason does not teach or suggest
any relevant application that, “upon initial startup,” “use[s] only
said web resources extracted from said application and, upon a
subsequent application startup, querying the external server for
an update to said web resources.” (Claim 5). This subject matter
is simply far beyond the scope and content of Mason.
(Reply Br. 11).
In response, the Examiner finds:
Mason teaches contents stored locally are being refreshed
periodically when the user is online, then portal services module
32 downloads updated versions of the XML, XSL, HTML, and
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portal configuration files 42 from the remote server 60. Also,
daemon or other process executing on the local system could be
scheduled to initiate process updating local applications at
predetermined times (see par. 0044). For example, In Mason If
only a single file date is old, the portal service module 32 can
selectively download only the corresponding file (e.g., if a date
field in the local portal catalog 44 corresponding to a single XML
file indicates that the single XML file is old, the portal service
module 32 downloads only the newer version of the single XML
file from the remote server 72) (see par. 0035).
(Ans. 8). We agree with the Examiner’s factual findings, but the Examiner
does not address the claimed limitation. The Examiner has identified no
corresponding disclosure in the Mason reference regarding the claimed
“upon an initial startup of said application, using only said web resources
extracted from said application.” As a result, we cannot sustain the
Examiner’s anticipation rejection of dependent claim 5.
35U.S.C. § 103
Claim 23
With respect to independent claim 23, Appellants contend that the
Examiner relied upon the Mason reference to teach or suggest:
“extracting web resources from an application to permanent
local files of a client device.” (Claim 23) (emphasis added).
Mason further does not teach or suggest creating such local
resources “in response to an initial start-up of said application on
said client device.” (Claim 23). For either and both of these two
reasons, the rejection of claim 23 should not be maintained.
(App. Br. 21; Reply Br. 11—12).
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The Examiner finds:
Mason teaches in response to content stored locally being
refreshed, the portal services module 32 downloads updated
versions of the XML, XSL, HTML, and portal configuration files
42 from the remote server 60. Thus, the local portal catalog 44
is updated to reflect the same. Also, daemon or other process
executing on the local system could be scheduled to initiate
process updating local applications at pre-determined times (see
par. 0044). furthermore, Chiles teaches [“] In the event a script-
based update is to occur for a product, [”] [“] the update script
will typically contain O/S-independent and O/S-dependent
update files and update parameters. Accordingly, once the
particular client O/S has been ascertained, the section of the
script corresponding to the particular O/S is then processed to
delineate the particular update (“copy” and “run”) files that are
to be downloaded and their ordering.” (Col. 14, lines 16-26. See
also col. 3, lines 47-67).
(Ans. 8-9).
We find the Examiner’s findings do not address the merits of
Appellants’ arguments regarding the claim limitation “in response to an
initial start-up of said application on said client device.” While the Mason
reference generally teaches and suggests downloading updated versions of
files and scheduling updates, the Examiner has not identified a teaching or
suggestion to perform these specific functions. Therefore, we cannot sustain
the Examiner’s obviousness rejection of independent claim 23 and
dependent claims 24 and 25 based upon the combination of the Mason and
Chiles references, as proffered by the Examiner.
Claim 13
Appellants repeat the language of claim 13 and contend “[i]n contrast,
the Action fails to identify how or where the cited references address a
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conflict, not just between two updates, but between a common update and a
specific update.” (App. Br. 22). Appellants further contend:
Chasman has not been shown to teach or suggest “a conflict
between said common and specific updates” or resolving such a
conflict by “overriding said common updates with said specific
updates.” This subject matter is beyond the scope and content of
any and all the cited references in combination. Given this, no
prima facie case of unpatentability has been made against claim
13.
(App. Br. 22).
The Examiner relies upon para. 26 of the Chasman reference to teach
and suggest conflict resolution with regards to business objects. (Ans. 9—
10).
Additionally, Appellants argue:
The conflict recited is not between updates of the same type, but
rather “a conflict between said common and specific updates.”
In contrast, the Answer again fails to identity how or where the
cited references address a conflict, not just between two updates,
but between a common update and a specific update.
(Reply Br. 12). Appellants further contend that the Examiner’s proffered
interpretation of the Chasman reference “does not rise to the level of what is
claimed. If two people are trying to update an object, and one has priority
over the other, that is not a conflict between a common update v. a specific
update.” (Reply Br. 13). We agree with Appellants. Although we agree
with the Examiner that the Chasman reference discloses a rule-based conflict
resolution, the disclosed client conflict resolution is not based upon the
specific updates that are targeted to specific operating systems and common
updates that are targeted to multiple operating systems and resolution
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Application 13/474,063
therebetween as disclosed in dependent claim 13, which additionally
depends from claims 12 and 11 and ultimately from independent claim 1.
As a result, we cannot sustain the Examiner’s obviousness rejection of
dependent claim 13.
Claims 14, 15, 19, and 22
Appellants repeat the language of the claims and relies on the
patentability of the corresponding parent claim. (App. Br. 23). Because we
found Appellants’ argument unpersuasive with respect to parent independent
claims 1 and 20, we find Appellants’ argument to be unpersuasive with
respect to dependent claims 14, 15, and 22.
Because we found Appellants’ arguments persuasive with respect to
independent claim 17 and the Examiner has not identified how the additional
teachings of the Holmes reference remedy the noted deficiency, we cannot
sustain the Examiner’s obviousness rejection of dependent claim 19.
Claims 9, 11, 12, and 21
Because Appellants have not set forth separate arguments for
patentability of these claims with particularity, we summarily affirm the
rejections for the reasons set forth with respect to independent claims 1 and
20.
CONCLUSIONS
The Examiner did not err in rejecting claims 1—25 based upon
provisional non-statutory obviousness-type double patenting.
The Examiner erred in rejecting independent claim 17 and dependent
claims 2, 5, and 18 based upon anticipation, but the Examiner did not err in
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Appeal 2016-001240
Application 13/474,063
rejecting claims 1,3,4, 6—8, 10, 16, and 20 based upon anticipation under 35
U.S.C. § 102.
The Examiner erred in rejecting independent claim 23 and dependent
claims 13, 19, 24, and 25 based upon obviousness, but the Examiner did not
err in rejecting claims 9, 11, 12 14, 15, 21, and 22 based upon obviousness
under 35 U.S.C. § 103.
DECISION
For the above reasons, we sustain the Examiner’s rejection of claims
1—25 based upon provisional non-statutory obviousness-type double
patenting; we sustain the Examiner’s anticipation rejection of claims 1, 3, 4„
6—8, 10, 16, and 20; and we sustain the Examiner’s obviousness rejection of
claims 9, 11, 12 14, 15,21, and 22.
We reverse the Examiner’s anticipation rejection of claims 2, 5, 17,
and 18 based upon anticipation, and we reverse the Examiner’s obviousness
rejection of claim 13, 19, and 23—25.
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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