Ex Parte Curtis et al

Patent Trial and Appeal Board

Oct 10, 2012

10691028 (P.T.A.B. Oct. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES RUSSELL CURTIS and BRUCE NEIL CAMPBELL
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Appeal 2010-005909
Application 10/691,028
Technology Center 2100
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Before: ROBERT E. NAPPI, DAVID M. KOHUT, and TREVOR M.
JEFFERSON Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005909
Application 10/691,028
2

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1, 3 through 6, and 8 through 10.

We reverse.
INVENTION
The invention is directed a method of providing software updates to a
user based upon information gathered about the usage of the software. See
pages 3 and 4 of Appellants’ Specification. Claim 1 is representative of the
invention and reproduced below:
1. A method comprising:
launching an application on a user system;
tracking usage of said application so as to generate usage data
on said user system;
accessing an update site from said user system;
transferring said usage data from said user system to said
update site;
said update site prioritizing updates for said application at least
in part as a function of said usage data; and
said update site presenting to a user a list of said updates as
prioritized in said prioritizing step.

REFERNCES

Moshir US 2004/0003266 Jan. 1, 2004
Sakanishi US 6,678,888 B1 Jan. 13, 2004

Appeal 2010-005909
Application 10/691,028
3

REJECTION AT ISSUE
The Examiner has rejected claims 1, 3 through 6, and 8 through 10
under 35 U.S.C. § 103(a) as obvious over Moshir in view of Sakanishi.
Answer 3-10.1

ISSUE
Appellants argue on pages 12 and 13 of the Reply Brief2 that the
Examiner’s rejection of independent claim 1 is in error. These arguments
present us with the issue: did the Examiner error in finding that the
combination of Moshir and Sakanishi teaches prioritizing updates and
presenting a prioritized list to the user?

ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellants’
arguments. We concur with Appellants’ conclusion that the Examiner erred
in finding the combination of Moshir and Sakanishi teaches prioritizing
updates and presenting a prioritized list to the user. Independent claims 1
and 6 recite prioritizing updates and presenting to the user, the list of updates
as prioritized. The Examiner in response to Appellants’ arguments finds that
Moshir teaches prioritizing critical and non-critical updates. Answer 11 and
12. Further, the Examiner finds that Moshir teaches that a list of updates is
presented to the user. Answer 12-13. Appellants concur with these findings,

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
November 16, 2009.
Appeal 2010-005909
Application 10/691,028
4

Reply Brief 12. However, we do not find that the teachings of Moshir,
which the Examiner cites, identify that the list presented to the user
identifies both the critical and non-critical updates and prioritizes the list
accordingly. Accordingly, we will not sustain the Examiner’s rejection of
independent claims 1 and 6 or the claims which depend thereupon.

ORDER
The decision of the Examiner to reject claims 1, 3 through 6, and 8
through 10 is reversed.

REVERSED

tj

2 Throughout this opinion we refer to Appellants’ Appeal Brief dated July
15, 2009 and Reply Brief dated December 11, 2009.