Ex Parte Holm et al

Patent Trial and Appeal Board

Jun 11, 2013

10514062 (P.T.A.B. Jun. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JUKKA HOLM, PAULI LAINE, CHARLIE SCHICK, and
OLAVI TOIVAINEN
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Appeal 2011-007816
Application 10/514,062
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/514,062

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-4, 6-21, and 44-46. We have jurisdiction under
35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellants’ invention relates to the distribution of software
applications (Spec. 1, ll. 6-7).
Claims 1 and 19, reproduced below, are representative of the subject
matter on appeal:
1. An electronic device comprising:
a processor configured to install a first version of a
software application using a first installation file on the
electronic device, which is operable as a first host device; and
an output interface configured to transfer a second
installation file associated with the first installation file to a
second host device for installing a second version of the
software application in the second host device, wherein
operation of the second version of the software application to
perform a function involves interaction of at least two devices
and the second version of the software application installed in
the second host device is subsequently operable to perform the
function only when invited by the first version of the software
application.

1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed October 4, 2010) and Reply Brief (“Reply Br.,” filed March 23, 2011)
and the Examiner’s Answer (“Ans.,” mailed February 2, 2011).
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19. A method comprising:
installing a first version of a software application., using
a first installation file on an electronic device operable as a first
host device; and
obtaining a second installation file, associated with the
first installation file, from memory storage of the electronic
device operating as the first host device, and transferring the
second installation file, associated with the first installation file,
to a second host device, for installing a second version of the
software application, in the second host device, wherein
operation of the second version of the software application to
perform a function involves interaction of at least two devices
and the second version of the software application installed in
the second host device is subsequently operable to perform the
function only when invited by the first version of the software
application.

THE REJECTIONS
The following rejections are before us for review:
Claims 19-21 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.2
Claim 45 stands rejected under 35 U.S.C. § 112, first paragraph, as
being based on an inadequate written description.
Claims 1-4, 6-21, and 44-46 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Claims 1-4, 6-21, and 44-46 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ginter (US 5,892,900, iss. Apr. 6, 1999).

2 The Examiner mistakenly identifies claims 19-22 as being subject to
rejection under § 101; however, claim 22 is canceled.
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ANALYSIS
Non-Statutory Subject Matter
Referencing the Bilski machine-or-transformation test, Appellants
argue that the Examiner erred in rejecting claims 19-21 under 35 U.S.C.
§ 101 because the installing and obtaining steps in claim 19 are tied to a
particular machine, i.e., an electronic device operable as a first host device,
and are not extra-solution activity (App. Br. 8-10 and Reply Br. 2-4).
The Examiner maintains that the rejection is proper because claim 19
is silent as to the device that is performing the recited installing and
obtaining steps and, therefore, broad enough to read on a person performing
these steps (Ans. 3-4 and 17-18). We agree with Appellants.
Claim 19 recites that the step of installing a first version of a software
application is performed “using a first installation file on an electronic
device operable as a first host device.” Therefore, a physical, electronic
device, i.e., a machine, is expressly required for performing the installing
step.
The obtaining step similarly involves “obtaining a second installation
file . . . from memory storage of the electronic device,” and thus likewise
requires an electronic device, i.e., a machine. We agree with Appellants that
without a machine, a person cannot obtain a file “from memory storage of
the electronic device” because a person cannot read a file from a “memory
storage of the electronic device” (Reply Br. 3).
We, of course, are mindful that the machine-or-transformation test is
not determinative of whether an invention is a patent-eligible process. See
Bilski v. Kappos, 130 S. Ct. 3218, 3221 (2010). However, we find no factors
in the record that would weigh against patent eligibility. For example,
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claim 19 does not recite purely mental steps, i.e., steps that can be performed
in the human mind. Nor does the claim merely describe an abstract idea or
concept.
The installing and obtaining steps also cannot be reasonably found to
constitute extra-solution activity. These steps constitute the fundamentals of
the claimed method. To find that they are extra to the solution would be a
misnomer.
We conclude that claim 19 recites patent-eligible subject matter.
Therefore, we will not sustain the Examiner’s rejection of claims 19-21
under 35 U.S.C. § 101.
Written Description
Appellants argue that the Examiner erred in rejecting claim 45 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement (App. Br. 10-12 and Reply Br. 4-6). The Examiner,
on the other hand, maintains that the rejection is proper because the claim
recites elements, i.e., “the further electronic device having a primary version
of the software application” and “invited by a primary version of the
software application,” which are not disclosed in the original written
description (Ans. 4-5 and 18-19). We agree with Appellants.
The Specification describes that a first version of the software
application is a fully functional version purchased by a user of the first host
device 1 (Spec. 3, l. 33 – 4, l. 2 and fig. 1), and further that a second version
has reduced functionality and operates correctly only when it is in
communication with the first device (Spec. 4, l. 28 – 5, l. 6).
A person skilled in the art would understand from the Specification
that the first, fully functional version of the software application is the
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“primary version” and that this primary version is installed on host 1,
i.e., “the further electronic device.” A person skilled in the art also would
understand from the Specification that use of the secondary version of the
software application is restricted only to those times when the primary
version of the software application causes a communication to be established
between the electronic device (on which the secondary version of the
application is operating) and the further electronic device (on which the
primary version is installed), i.e., when “the secondary version of the
software application installed in the electronic device is. . . invited by a
primary version of the software application.”
The Specification conveys with reasonable clarity to those skilled in
the art that Appellants were in possession of the invention as set forth in
claim 14, including the recitations cited by the Examiner, at the time the
application was filed. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64 (Fed. Cir. 1991). Therefore, we will not sustain the Examiner’s
rejection of claim 45 under 35 U.S.C. § 112, first paragraph.
Indefiniteness
Appellants argue that the Examiner erred in rejecting claims 1-4, 6-21,
and 44-46 under 35 U.S.C. § 112, first second paragraph, as being indefinite
(App. Br. 12-13 and Reply Br. 6-10). The Examiner maintains that the
rejection is proper because (1) it is unclear from the recitation of “interaction
of at least two devices” in claims 1, 19, and 46 what two devices are being
described; (2) it is unclear what the recitation, “wherein the installation of a
version of the software application,” in claim 44 is referring to inasmuch as
the claim does not previously recite installation of a version of the software;
and (3) it is unclear whether the recitations, “the further electronic device
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having a primary version” and “the secondary version of the software
application installed in the electronic device is subsequently operable to
perform the function only when invited by a primary version of the software
application,” in claim 45 refer to the same primary version (Ans. 5-7 and
19-22).
Claims 1, 19, and 46
Addressing the indefiniteness rejection with respect to claims 1, 19,
and 46, Appellants argue that “[i]t is clear from the unequivocal language of
the claims that the interaction is between two host devices or two electronic
devices” (Reply Br. 6; see also App. Br. 11-12). However, as the Examiner
observes, claims 1, 19, and 46 expressly recite “interaction of at least two
devices.” The claims do not recite that the interaction is between the host
devices or between the electronic device and a further electronic device
(Ans. 20-21). We agree with the Examiner that it is unclear what devices
constitute the “at least two devices,” i.e., for example, whether “the at least
two devices,” as recited in claim 1 refers to the “first host device” and the
“second host device” or some other devices (Ans. 21).
Therefore, we will sustain the Examiner’s rejection of claims 1, 19,
and 46 under 35 U.S.C. § 112, second paragraph. We also will sustain the
Examiner’s rejection of claims 2-4, 6-18, 20, 21, and 44, each of which
depends from one of claims 1 and 19.3

3 Because we conclude that claim 44 is indefinite based on its dependency
from claim 1, we need not reach the issue of whether the Examiner erred in
concluding that claim 44 is indefinite on the ground that it is unclear what
the phrase “wherein the installation of a version of the software application,”
as recited in claim 44, refers to.
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Claim 45
We are persuaded that the Examiner erred in rejecting claim 45 under
35 U.S.C. § 112, second paragraph (App. Br. 13 and Reply Br. 9-10).
In our view, one of ordinary skill in the art would understand what is
claimed when claim 45 is read in light of the Specification, namely that a
primary version of a software application is installed on one electronic
device, i.e., the “further electronic device” and that a secondary version of
the software application is installed on another electronic device “the
electronic device,” and further that the primary version of the software
application installed on the further electronic device permits the secondary
version installed on the electronic device to function in a particular manner,
i.e., “the secondary version of the software application installed in the
electronic device is subsequently operable to perform the function only
when invited by a primary version of the software application.”
See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576
(Fed. Cir. 1986) (The test for definiteness under 35 U.S.C. § 112, second
paragraph, is whether “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.”).
Therefore, we will not sustain the Examiner’s rejection of claim 45
under 35 U.S.C. § 112, second paragraph.
Obviousness
Claims 1-4, 6-21, 44, and 46
We do not reach the merits of the rejections of claims 1-4, 6-21, 44,
and 46 under 35 U.S.C. § 103(a) at this time. Before a proper review of the
rejections under § 103(a) can be performed, the subject matter encompassed
by the claims on appeal must be reasonably understood without resort to
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speculation. Because claims 1-4, 6-21, 44, and 46 fail to satisfy the
requirements under 35 U.S.C. § 112, second paragraph, we are constrained
to reverse, pro forma, the Examiner’s rejections under 35 U.S.C. § 103(a).
See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection
cannot be sustained if the hypothetical person of ordinary skill in the art
would have to make speculative assumptions concerning the meaning of
claim language.); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970)
(“If no reasonably definite meaning can be ascribed to certain terms in the
claim, the subject matter does not become obvious-the claim becomes
indefinite.”).
Claim 45
We are not persuaded that the Examiner erred in rejecting claim 45
under 35 U.S.C. § 103(a) by Appellants’ argument that Ginter fails to
disclose or suggest “wherein the secondary version of the software
application installed in the electronic device is subsequently operable to
perform the function only when invited by a primary version of the software
application,” as recited in the claim (App. Br. 13-16 and Reply Br. 10-15).
Instead, we agree with the Examiner that this feature constitutes non-
functional descriptive material (Ans. 26-27). That the secondary version of
the software is subsequently operable to perform the function only when
invited by a primary version of the application does not affect either the
structure or function of the claimed “electronic device.” As such this feature
may not be relied on to distinguish the claimed invention from the prior art
in terms of patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when
descriptive material is not functionally related to the substrate, the
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descriptive material will not distinguish the invention from the prior art in
terms of patentability).
Therefore, we will sustain the Examiner’s rejection of claim 45 under
35 U.S.C. § 103(a).
DECISION
The Examiner’s rejection of claims 19-21 under 35 U.S.C. § 101 is
reversed.
The Examiner’s rejection of claim 45 under 35 U.S.C. § 112, first
paragraph, is reversed.
The Examiner’s rejection of claims 1-4, 6-21, 44, and 46 under
35 U.S.C. § 112, second paragraph, is affirmed.
The Examiner’s rejection of claim 45 under 35 U.S.C. § 112, second
paragraph, is reversed.
The Examiner’s rejection of claims 1-4, 6-21, 44, and 46 under
35 U.S.C. § 103(a) is reversed pro forma.
The Examiner’s rejection of claim 45 under 35 U.S.C. § 103(a) 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).

AFFIRMED

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