Ex Parte Gassoway et alDownload PDFPatent Trial and Appeal BoardFeb 19, 201611218263 (P.T.A.B. Feb. 19, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111218,263 08/3112005 106095 7590 02/23/2016 Baker Botts LLP 2001 Ross Avenue, 6th Floor Dallas, TX 75201 FIRST NAMED INVENTOR Paul A. Gassoway 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. 063170.2706 9510 EXAMINER MAI,KEVINS ART UNIT PAPER NUMBER 2456 NOTIFICATION DATE DELIVERY MODE 02/23/2016 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): PTOmaill@bakerbotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL A. GASSOWAY and JOHN L. GARGIULO Appeal2013-009329 Application 11/218,263 Technology Center 2400 Before JOHN A. JEFFERY, STEVEN D.A. McCARTHY, and BRADLEY W. BAUMEISTER, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. STATEMENT OF THE CASE Appellants' invention updates software on client computers on a network by requesting software from a particular redistribution server with the lowest "hop count," namely the lowest number of intermediate network components between the client computer and the server. See generally Abstract; Spec. 1, 6. Claim 1 is illustrative: Appeal2013-009329 Application 11/218,263 1. A method of updating software on a client computer, compnsmg: accessing a predefined list including each of a plurality of redistribution servers available to a client computer in a network, the plurality of redistribution servers each including a software package corresponding to a software program on the client computer, the software package operable to update the software program on the client computer; determining a hop count between the client computer and each of the plurality of redistribution servers; and requesting the software package from a particular redistribution server of the plurality of redistribution servers, the particular redistribution server being the redistribution server having the lowest determined hop count. THE REJECTIONS The Examiner rejected claims 1 and 15 under 35 U.S.C. § 103(a) as unpatentable over Ko (US 2005/0278518 Al; Dec. 15, 2005) and Bauch (US 2004/0177359 Al; Sept. 9, 2004). Ans. 3-6. 1 The Examiner rejected claims 2---6 and 16-20 under 35 U.S.C. § 103(a) as unpatentable over Ko, Bauch, and Eatough (US 7,356,578 Bl; Apr. 8, 2008). Ans. 6-12. The Examiner rejected claims 8-13 and 22-26 under 35 U.S.C. § 103(a) as unpatentable over Eatough, Ko, and Meier (US 2009/0262718 Al; Oct. 22, 2009). Ans. 12-25. The Examiner rejected claims 7 and 21under35 U.S.C. § 103(a) as unpatentable over Ko, Bauch, and Costea (US 2005/0257205 Al; Nov 17, 2005). Ans. 25. 1 Throughout this opinion, we refer to the Appeal Brief filed December 31, 2012 ("Br.") and the Examiner's Answer mailed April 25, 2013 ("Ans."). 2 Appeal2013-009329 Application 11/218,263 The Examiner rejected claims 14 and 27 under 35 U.S.C. § 103(a) as unpatentable over Eatough, Ko, Meier, and Costea. Ans. 26. THE REJECTION OVER KO AND BAUCH The Examiner finds that Ko' s method of updating software on a client computer includes (1) accessing a list including each of available plural redistribution servers that each include a software package corresponding to a program on the client computer, and (2) requesting the package from the redistribution server with the lowest determined hop count. Ans. 3--4. Although the Examiner acknowledges that Ko' s list is not predefined, the Examiner cites Bauch for teaching this feature in concluding that the claim would have been obvious. Ans. 4. In reaching this conclusion, the Examiner acknowledges that Ko' s automatic update discovery functionality does not require a preprogrammed list of servers such as that in Bauch. Nevertheless, the Examiner reasons that because Ko does not prohibit such a list, it would have been obvious to add such a list to Ko to use the benefits of both techniques. Ans. 4, 27. Appellants argue that including a predefined list in Ko as the Examiner proposes would render Ko unsatisfactory for its intended purpose of automatically discovering servers that host software updates such that a preprogrammed list is unnecessary. Br. 12-13. According to Appellants, the Examiner's proposed modification would change Ko's principle of operation impermissibly by eliminating the need for the automatic discovery process that is central to Ko' s system. Br. 13. Appellants add that the Examiner's reliance on Bauch's list of available Simple Mail Transfer 3 Appeal2013-009329 Application 11/218,263 Protocol (SMTP) servers is improper because these servers process email requests, and are not redistribution servers as claimed. Br. 13-15. ISSUES (1) Under§ 103, has the Examiner erred in rejecting claim 1 by finding that Ko and Bauch collectively would have taught or suggested accessing a predefined list including each of available plural redistribution servers that each include a software package corresponding to a program on a client computer? (2) Is the Examiner's combination of the teachings of these references supported by articulated reasoning with some rational underpinning to justify the Examiner's obviousness conclusion? This issue turns on whether the Examiner's proposed modification (a) renders Ko unsuitable for its intended purpose, and (b) changes Ko' s principle of operation impermissibly. ANALYSIS On this record, we find no error in the Examiner's obviousness rejection of claim 1, which recites, in pertinent part, accessing a predefined list of available redistribution servers. Leaving aside the fact that even an automatically-generated list can be predefined, a key aspect of the Examiner's position is that the Ko/Bauch combination accesses both (I) a list of available redistribution servers that is determined automatically using Ko's universal plug and play (UPnP) function, and (2) a predefined list of available servers as suggested by Bauch. See Ans. 4, 27. 4 Appeal2013-009329 Application 11/218,263 We see no error in this position, for Ko does not prohibit, or otherwise discourage, using a predefined available server list as an adjunct to UPnP as the Examiner proposes: Ko merely states that such a list is not required. See Ko i-f 18, 26. The Examiner's proposed combination, then, would not render Ko unsuitable for its intended purpose of discovering available servers automatically, or change its principle of operation impermissibly as Appellants contend (Br. 12-13), but, rather, would enhance Ko by using a predefined available server list as an adjunct to its automatic UPnP functionality. Such an enhancement uses prior art elements predictably according to their established functions-an obvious improvement. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). That Bauch's list of available servers handle email requests as Appellants indicate (Br. 14--15) is of no consequence here, for we see no reason why Bauch's fundamental teaching of using a predefined available server list could not be applied to other types of servers, including Ko' s redistribution servers, as the Examiner indicates. Ans. 28. That Bauch's software facility in paragraph 18 can be used in networks of virtually any type, and pass data on behalf of distributed applications other than client- server applications, as noted in paragraph 89, only bolsters the Examiner's position. In short, where, as here, a technique has been used to improve one device (SMTP servers), and an ordinarily skilled artisan would recognize that it would improve similar devices (redistribution servers) in the same way, using the technique is obvious unless its actual application is beyond his or her skill. See KSR, 550 U.S. at 417. Appellants' arguments regarding Bauch's individual shortcomings in this regard (Br. 14--15) do not show 5 Appeal2013-009329 Application 11/218,263 nonobviousness where, as here, the rejection is based on the cited references' collective teachings. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner's combining the teachings of Ko and Bauch is, therefore, supported by articulated reasoning with some rational underpinning to justify the Examiner's obviousness conclusion. Accordingly, we are not persuaded that the Examiner erred in rejecting claim 1, as well as claim 15, not argued separately with particularity. THE REJECTION OVER KO, BAUCH, AND EATOUGH We also sustain the Examiner's obviousness rejection of claim 3 over Ko, Bauch, and Eatough. Ans. 8, 30-31. Claim 3 depends from claim 2 (which depends from claim 1 ), and further recites ( 1) compiling a hop count table including a list of each redistribution server and associated hop counts, and (2) making this table available to clients in a subnet of the network. First, Appellants do not persuasively rebut the Examiner's interpreting a subnet as any particular group of clients, and, therefore, Bauch' s making the server list available to private application network (PAN) clients at least suggests the recited subnet limitation. Ans. 30. Nor are we persuaded of error in the Examiner's rationale to combine the cited references, despite the Examiner's rejection referring to the same rationale used to reject claim 1, which was over only two of the three cited references, namely Ko and Bauch. Ans. 8. Nevertheless, we deem any error in this regard harmless, for the Examiner's rationale to combine all cited references is articulated with respect to claim 2 from which claim 3 depends, as the Examiner indicates. Ans. 7-8, 31. 6 Appeal2013-009329 Application 11/218,263 Therefore, we are not persuaded that the Examiner erred in rejecting claim 3, as well as claims 2, 4--6, and 16-20, not argued separately with particularity. THE REJECTION OVER EATOUGH, KO, AND MEIER The Examiner finds that Eatough discloses the recited accessing, directing, and compiling steps in independent claim 8, but does not disclose (1) redistribution servers or (2) each computer on a first subnet determining from which redistribution server to request a software package. Ans. 12-14. The Examiner, however, cites Ko for teaching these features, relying on the same rationale to combine these references that was used for claim 3. Ans. 14. Although the Examiner acknowledges that the Eatough/Ko system does not provide a hop count table to each client computer on a first subnet, the Examiner cites Meier as teaching this feature in concluding that claim 8 would have been obvious. Ans. 14--15. Appellants argue that because claim 8 recites different limitations than claim 3, the Examiner's referring back to the rationale to combine Eatough and Ko in connection with claim 3 does not explain adequately the rationale for combining Eatough, Ko, and Meier in connection with claim 8. Br. 16. Appellants add that Eatough does not direct a first client computer on a first subnet to determine hop counts between that computer and each redistribution server, but rather determines hop counts associated with a subset of domain-domain links. Br. 16-18. 7 Appeal2013-009329 Application 11/218,263 ISSUES (1) Under§ 103, has the Examiner erred in rejecting claim 8 by finding that Eatough, Ko, and Meier collectively would have taught or suggested directing a first client computer on a first subnet to determine hop counts between that computer and each redistribution server? (2) Is the Examiner's combination of the teachings of these references supported by articulated reasoning with some rational underpinning to justify the Examiner's obviousness conclusion? ANALYSIS We sustain the Examiner's obviousness rejection of claim 8. First, Appellants do not persuasively rebut the Examiner's position that Eatough's nodes determine iteratively hop counts between themselves and the other nodes by determining successively whether they are one hop away, two hops away, etc. Ans. 29--30 (citing Eatough, col. 9, 1. 40 - col. 10, 1. 30; col. 11, 11. 1-5). Our emphasis on "the other nodes" underscores the Examiner's position that Eatough's hop counts can be determined between a particular node and all other nodes, or at least that this determination would have been an obvious variation, particularly when considered in light of Ko' s calculating path cost for each newly-discovered update component in paragraph 19 as the Examiner indicates. Ans. 30. Nor are we persuaded of harmful error in the Examiner's rationale to combine Eatough, Ko, and Meier in concluding that claim 8 would have been obvious. To be sure, the Examiner's reliance on the rationale to combine Eatough and Ko in connection with claim 3 in rejecting claim 8, which recites different limitations, is somewhat dubious. See Ans. 14. 8 Appeal2013-009329 Application 11/218,263 The Examiner acknowledges that this statement is a typographical error, and the rationale for combining Ko and Eatough is actually articulated with respect to claim 2. Ans. 28. But claim 2-like claim 3-recites limitations different from claim 8, and was rejected over a different combination of references, namely Ko, Bauch, and Eatough. Nevertheless, we see no harmful error in the Examiner's rationale to combine Ko and Eatough in rejecting claim 8, for not only were these references also cited in the rejection of claims 2 and 3 in connection with limitations involving hop count determinations, but the Examiner's proposed rationale to combine these references has at least a rational basis in this regard. That is, Appellants do not persuasively rebut the Examiner's position, at least to the extent that it would have been obvious to apply a known hop determination and associated selection technique, such as that described in Ko's paragraphs 18, 19, and 21, to a known hop-count-based system, such as that in Eatough, to yield predictable results in light of the references' collective teachings. See Ans. 14, 28-29. Accord KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Nor are we persuaded of error in the Examiner's rationale to add Meier to the Eatough/Ko system in concluding that claim 8 would have been obvious. Ans. 14--15. Accordingly, the Examiner's combining the teachings of the cited references is supported by articulated reasoning with some rational underpinning to justify the Examiner's obviousness conclusion. Therefore, we are not persuaded that the Examiner erred in rejecting claim 8, and claims 8-13 and 22-26 not argued separately with particularity. 9 Appeal2013-009329 Application 11/218,263 THE OTHER OBVIOUSNESS REJECTIONS We also sustain the Examiner's obviousness rejections of dependent claims 7, 14, 21, and 27. Ans. 25-26. Appellants reiterate similar arguments made previously, and allege that the additional cited references fail to cure those purported deficiencies. See Br. 20-21. We are not persuaded by these arguments for the reasons previously discussed. CONCLUSION The Examiner did not err in rejecting claims 1-27 under§ 103. DECISION The Examiner's decision rejecting claims 1-27 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation