Ex Parte Katsaros et al

Patent Trial and Appeal Board

Apr 7, 2016

12042209 (P.T.A.B. Apr. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/042,209 03/04/2008 Georgios Katsaros
113648 7590 04/15/2016
Patent Portfolio Builders, PLLC
P.O. Box 7999
Fredericksburg, VA 22404-7999
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.
0110-179/P24644 USl 2905
EXAMINER
DENG, ANNA CHEN
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
04/15/2016 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):
Emily@ppblaw.com
Tina@ppblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGI OS KA TSAR OS and PAUL NOV AK
Appeal2014-000396
Application 12/042,209 1
Technology Center 2100
Before CARL W. WHITEHEAD JR., CARLL. SILVERMAN, and
AMBER L. HAGY, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to modifying resource files used by Java
applications. Abstract. Claim 1 is exemplary of the matter on appeal:
1 According to Appellants, the real party in interest is Telefonaktiebolaget
LM Ericsson. App. Br. 2.
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Application 12/042,209
1. i~ .. method of updating a resource file used by a Java softv,rare
application executable by an electronic processor in a user equipment for
a communication system, comprising the steps of:
finding an error arising from the Java resource file, wherein the
error is an execution error of the Java software application;
forming a report message relating to the resource file from which
the error arose for transmission through an available communication
network to a provider of the application corresponding to the resource
file, wherein the provider is identified in the report message by an
attribute value in a descriptor file that corresponds to the resource file;
sending the report message;
receiving in the user equipment a resource file responsive to the
report message; and
installing the received resource file in the user equipment to correct
the error.
App. Br. 10 (Claims Appendix).
THE REJECTIONS
Claims 1, 9, and 16 stand rejected under 35 U.S.C. § 112, second
paragraph. Final i~\:..ct. 2.
Claims 1-3, 6, 7, 9-11, 14, 16-18, 21, and 22 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Patel et al. (US 2008/0046786
Al, published Feb. 21, 2008) (hereinafter "Patel"), in view of Owen et al.
(US 2009/0253424 Al, published Oct. 8, 2009) (hereinafter "Owen"). Final
Act. 3-8.
Claims 4, 12, and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Patel, Owen, and Halbritter et al. (US 2007 /0038570 Al,
published Feb. 15, 2007) (hereinafter "Halbritter"). Final Act. 8-9.
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Application 12/042,209
Claims 5, 13, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Patel, Owen, and Hursey et al. (US 2010/0304735 Al,
published Dec. 2, 2010) (hereinafter "Hursey"). Final Act. 9-12.
Claims 8, 15, and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Patel, Owen, and Smith (US 2002/0152399 Al, published
Oct. 17, 2002) (hereinafter "Smith"). Final act. 12-13.
ANALYSIS
The 35 US. C. § 112, paragraph 2, rejection
The Examiner finds claims 1, 9, and 16 are indefinite due to the lack
of antecedent basis for "the Java resource file" in line 4. Final Act. 2.
Appellants argue, and we agree, "a resource file used by a Java software
application" is commonly shortened to "the Java resource file" (line 4) and
the Specification describes Java resource files. App. Br. 5 (citing Spec. 5, 11.
32-33).
The Examiner additionally finds, and we agree, it is unclear if "a
resource file" recited in line 1 is the "the Java resource file" recited in line 4
or the "resource" file recited in lines 12 and 14. Ans. 13. The Examiner
further finds Appellants argue a resource file used by a Java software
application may not be a Java resource file (App. Br. 7) and, therefore, "a
resource file used by a Java software application in line 1 may not be the
'Java resource file in line 4."' Ans. at 13-14.
Appellants present no arguments why the Examiner's additional
findings are unreasonable or in error. We agree with the Examiner the
claims are unclear, and we find the scope of the claims cannot be determined
with reasonable certainty by one of ordinary skill in the art. Therefore, we
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Application 12/042,209
sustain the rejection of claims 1, 9, and 16. i\:\. claim is invalid for
indefiniteness if its language, when read in light of the specification and the
prosecution history, "fail[ s] to inform, with reasonable certainty, those
skilled in the art about the scope of the invention." Nautilus, Inc. v. Biosig
Insts., Inc., 134 S. Ct. 2120, 2124 (2014).
The 35 USC§ 103(a) rejections
The Examiner finds Patel teaches claim 1 's limitations for a software
application, except it does not explicitly teach "a Java software application; .
. . wherein the provider is identified ... by an attribute value in a descriptor
file that corresponds to the resource file." Final Act. 3-5. The Examiner
finds Owen teaches this limitation. Id. at 4--5.
finds:
Regarding the combined teaching of Patel and Owen, the Examiner
Owen actually teaches a Java resource file (JAR file), and Java
software application (applications developed using the Java
programming language) and it would be obvious[ly ]to one having
ordinary skill in the computer art at the time of the invention was made
to apply Patel's method of finding an execution error from Owen's []
Java resource file (emphasis added). The combination would be
obvious because finding/detecting execution/run time errors is a well-
known technique in any software application, and moreover, Appellant
did not point out what is a novelty for finding an execution error from
a Java resource file other than from any programming language
resource file.
Ans. 15 (emphasis added).
Appellants argue the Examiner's suggested combination of Patel and
Owen does not disclose or suggest independent claims 1, 9, and 16 and is
based on improper reading of the terms "Java resource file" and "Java
Software application." App. Br. 5---6. According to Appellants, the well-
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Application 12/042,209
kno\'l/n meaning of Java "resource" is "a piece of data, such as images ...
that can be accessed by the code of an application, ... but more usually Java
resources are contained in Java archive ("JAR'') file(s) of the application"
(emphasis added). Id. at 6.
As discussed below, we are not persuaded by Appellants' arguments
and, instead, agree with the Examiner's findings.
Appellants argue Patel does not teach a Java software application and,
therefore does not teach "finding an error arising from a Java resource file,
forming any report message relating to the resource file from which the error
arose, sending the report message, etc., as recited in claim 1 [.]" App. Br. 6.
Appellants argue Owen teaches an entire application, not just a Java
resource file, can be downloaded over the internet and installed in a mobile
device after consideration of the application descriptor file. Id. at 7 (citing
Owen i-f 32). According to Appellants, Owen does not teach receiving in a
UE (user equipment) a Java resource file responsive to an error report
message. Id. Moreover, Appellants argue Owen discusses JAR and JAD
files and "a JAD file is not a Java resource file as understood by those of
skill in this art, and Owen does not describe anything about Java resource
files." Id. Appellants argue:
like Patel, Owen does not teach identifying a Java application
provider by an attribute value in a descriptor file that corresponds
to a Java resource file, and finding an error arising from a Java
resource file, forming any report message relating to the resource
file from which the error arose, sending the report message, etc.
App. Br. 7.
The Examiner finds, and we agree, Owen teaches a Java software
application wherein applications developed using the Java programming
language include a Java Archive (JAR) file that contains Java resource files
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Application 12/042,209
and a Java i\ .. pplication Descriptor (JAD) file). Final Act. 15 (citing Ov,ren
i-f 34). The Examiner notes that Appellants point out that "usually [Java]
resource are contained in Java archive ("JAR") file(s) of the application."
Ans. 15 (citing App. Br. 6).
We are not persuaded by Appellants' argument that "Owen teaches
... an entire application, not just a Java resource file, can be downloaded"
(App. Br. 7) because the rejection is based on the combined teachings of
Patel and Owen as understood by one of ordinary skill in the art. Moreover,
this argument is not commensurate with the scope of the claims, as the
claims do not recite 'just a Java resource file." Cf In re Self, 671 F.2d 1344,
1348 (CCPA 1982) ("Many of appellant's arguments fail from the outset
because ... they are not based on limitations appearing in the claims.").
Regarding the Examiner's suggested combination of Patel and Owen,
we are not persuaded by Appellants' argument:
[ e ]ven if one had thought to completely rework Patel somehow with
Owen (an unlikely thought, as that would have totally altered the
purpose of Patel that relies on a comprehensive record of device
operation), one would still have been left with downloading Owen's
entire application and not just a resource file, with no suggestion to
identify a Java application provider by an attribute value in a descriptor
file that corresponds to a Java resource file, or finding an error arising
from a Java resource file, or forming any report message relating to the
resource file from which the error arose, or sending the report message,
etc.
App. Br. 8.
As discussed above, we agree with the Examiner's finding that one of
ordinary skill in the art would recognize the software application teaching of
Patel would be used with the Java resource files of Owen. Ans. 15.
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The test for obviousness is not \'l1hether the features of a secondar'J
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. In re Keller, 642 F.2d 413, 425 (Fed. Cir. 1981). "[A] court can
take account of the inferences and creative steps that a person of ordinary
skill in the art would employ," such as the complementary teachings of the
references. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The
reason to combine the cited references is found in the references and in the
knowledge of one of ordinary skill in the art. We determine the benefit
gained from the combination, articulated by the Examiner, would have
motivated an ordinarily skilled artisan to make such a combination.
On this record, Appellants do not present sufficient evidence that the
combination of Patel and Owen is "uniquely challenging or difficult for one
of ordinary skill in the art" or "represented an unobvious step over the prior
art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418-19). Nor have Appellants provided
objective evidence of secondary considerations, which our reviewing court
guides "operates as a beneficial check on hindsight." Cheese Sys., Inc. v.
Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
In view of the above, we sustain the 35 U.S.C. § 103(a) rejection of
independent claims 1, 9, and 16. Appellants argue the additional cited
references do not remedy any of the deficiencies of Patel and Owen and do
not argue separately the remaining dependent claims over the cited
references. App. Br. 8. As discussed above, we do not agree there are
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Application 12/042,209
deficiencies and, therefore, 'l.fe also sustain the rejection of dependent claims
2-8, 10-15, and 17-23. See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
DECISION
We affirm the Examiner's decision rejecting claims 1, 9, and 16 under
35 U.S.C. § 112, second paragraph.
We affirm the Examiner's decision rejecting claims 1-23 under 35
U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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