Ex Parte Herle

Patent Trial and Appeal Board

Mar 27, 2013

10600223 (P.T.A.B. Mar. 27, 2013)

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