Ex Parte HerleDownload PDFPatent Trial and Appeal BoardMar 27, 201310600223 (P.T.A.B. Mar. 27, 2013) Copy Citation 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. 10/600,223 06/20/2003 Sudhindra P. Herle 2003.07.011.WT0 9788 7590 03/27/2013 Docket Clerk P.O. Drawer 800889 Dallas, TX 75380 EXAMINER RAMPURIA, SATISH ART UNIT PAPER NUMBER 2191 MAIL DATE DELIVERY MODE 03/27/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SUDHINDRA P. HERLE ____________ Appeal 2010-000300 Application 10/600,223 Technology Center 2100 ____________ Before ST. JOHN COURTENAY III, CARLA M. KRIVAK, and CARL W. WHITEHEAD, JR., Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-000300 Application 10/600,223 2 STATEMENT OF THE CASE Appellant’s claimed invention is directed to wireless communication systems for upgrading software in a dual processor wireless device (Spec. ¶ [0001]). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A wireless communication device capable of accessing a wireless network and downloading a software upgrade file therefrom, said wireless communication device comprising: a first central processing unit (CPU) capable of controlling wireless communications with said wireless network; a first memory associated with said first CPU; a second central processing unit (CPU) capable of executing at least one end-user application on said wireless communication device; and a second memory associated with said second CPU, wherein said first CPU downloads said software upgrade file from said wireless network and stores said downloaded software upgrade file in said second memory. REFERENCES and REJECTIONS The Examiner rejected claims 1-24 under 35 U.S.C. § 103(a) based upon the teachings of O’Neill (US Patent Application Publication No. 2004/0068721 Al, Apr. 08, 2004, continuation-in-part of US Patent Application Publication No. 10/311,462, filed May 13, 2003) and Cupps (US Patent Application Publication No. 2007/0142083 Al, June 21, 2007, Appeal 2010-000300 Application 10/600,223 3 continuation-in-part of US Patent Application Publication No. 09/809,963, filed March 16, 2001). ANALYSIS Appellant contends the Examiner is incorrect finding the combination of O’Neill and Cupps teach or suggest Appellant’s wireless communication device having two CPUs, a first CPU downloading a software upgrade file to a memory in a second CPU for storage (App. Br. 15). The Examiner finds although O’Neill discloses only a first memory and CPU, it would be obvious to an ordinarily skilled artisan in view of Cupps, which discloses two memories and two CPUs, for the first CPU to download a software file and store it in a second memory of the second CPU (Ans. 5, 11). We agree. First, the argued limitation is found in a wherein clause in an apparatus claim. The wherein clause does not change the structure of the apparatus, it merely states how data is stored. Thus, this limitation is not accorded any weight.1 Even assuming arguendo the wherein clause should be accorded weight, the limitations therein are nothing more than the 1 See MPEP §2111.04 regarding “wherein” clauses: Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. However, examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are: (A) “adapted to” or “adapted for” clauses; (B) “wherein” clauses; and (C) “whereby” clauses. (MPEP §2111.04 Eighth Edition, Rev. 9, Aug. 2012). Appeal 2010-000300 Application 10/600,223 4 predictable use of elements in accordance with known practices to achieve a predictable result. (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)). With respect to Appellant’s argument that the wireless portion of O’Neill is not prior art, as US 2003/0182414 to O’Neill (O’Neill ‘414) does not support the teachings on which the Examiner relies, we do not agree (App. Br. 18-19). As the Examiner finds, O’Neill ‘414 specifically discloses wireless communication devices (Ans. 12). Particularly, O’Neill ‘414 discloses “Viable communications media may include hardwired media, removable storage media, wireless media, volatile and non-volatile memory based media, and the Internet” (¶ [0040] (emphasis added)). Additionally, paragraph [0008] of O’Neill, for example, states wireless communication devices include software update packages. Appellant’s arguments that O’Neill ‘414 must verbatim disclose Appellant’s claim language is misplaced (Reply Br. 6). All O’Neill ‘414 must do is provide support for the limitations the Examiner is relying on in O’Neill. O’Neill ‘414 provides this support, and thus O’Neill is prior art to Appellant’s claimed invention. For the above reasons, we are therefore not persuaded of Examiner error. We find the weight of the evidence supports the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness, and thus sustain the Examiner’s rejection of claims 1, 3, 13, and 15, argued together (App. Br. 14). With respect to claims 2, 4-12, 14, and 16-24, we agree with the Examiner’s findings and adopt them as our own (see Ans. 13-16). Appellant Appeal 2010-000300 Application 10/600,223 5 has merely restated the claim language in their arguments and provided similar arguments with respect to those provided for claims 1, 3, 13, and 15. DECISION The Examiner’s decision rejecting claims 1-24 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED peb Copy with citationCopy as parenthetical citation