Ex Parte Lill et al

Patent Trial and Appeal Board

Sep 15, 2014

10570779 (P.T.A.B. Sep. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID LILL, ERIC BENSON, and
JAMES JESPERSEN
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Appeal 2012-004683
Application 10/570,779
Technology Center 2400
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Before MICHAEL J. STRAUSS, CATHERINE SHIANG, and
JOHN P. PINKERTON, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
11, 12, 18, and 19. Claims 1–10 and 13–17 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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THE INVENTION
The claims are directed to synchronizing and controlling software
downloads, such as for utility meter-reading data collection and processing.
Abst. Claim 11, reproduced below, is representative of the claimed subject
matter:
11. A method for providing software for download to a least
one of multiple utility data collection devices, wherein the
utility data collection devices gather utility data from multiple
utility meters, and wherein the utility data includes data
reflecting consumption of a utility, the method comprising:
receiving a request from the utility data collection device,
wherein the utility data collection device comprises a non-
mobile cell control unit associated with a respective grouping of
associated multiple utility meters, and wherein the utility data
collection device gathers the utility data from its grouping of
associated multiple utility meters including data reflecting
consumption of the utility;
determining a current condition of the utility data
collection device;
based on the received request and the determined current
condition of the utility data collection device, sending a
software download command to the data collection device; and,
wherein the utility data collection device stores at such
collection device both a newly downloaded software version
and a previous software version, wherein the previous software
version is stored at such collection device even after the newly
downloaded software version has been successfully
downloaded; and
said method further comprises sending information for
download to the data collection device without interrupting
normal operation of such data collection device.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Nwafor US 2003/0126159 A1 July 3, 2003 (filed Aug. 22, 2002)
Denby US 6,976,062 B1 Dec. 13, 2005 (filed Sept. 18, 2000)
Hunt US 2006/0103549 A1 May 18, 2006 (priority claimed to
Apr. 15, 2002)

REJECTION1
The Examiner rejected claims 11, 12, 18, and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Denby, Hunt, and Nwafor. Ans. 4-8.

APPELLANTS’ CONTENTIONS
1. The combination of Denby and Hunt to include Nwafor is based on
impermissible hindsight reconstruction and, if made, would result in a
system restart interrupting normal operation, contrary to the requirements
of claim 11. App. Br. 8-10.
2. Nwafor’s storage of new and old versions of objects in a functional
modification interface system fails to teach storage in a utility data
collection device. App. Br. 10.

ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 7-11)
and Reply Brief (Reply Br. 2-6), the issues presented on appeal are:

1 Appellants argue the rejection of claim 11 under 35 U.S.C. § 103(a).
Separate patentability is not argued for claims 12, 18, and 19. Therefore,
based on Appellants’ arguments, we decide the appeal of claims 11, 12, 18,
and 19 based on claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(vii).

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1. Whether the Examiner erred in combining the teachings of Denby and
Hunt to include that of Nwafor.
2. Whether the Examiner erred in finding the combination of Denby,
Hunt and Nwafor teaches or suggests storing both a newly
downloaded software version and a previous software version at the
utility data collection device.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Ans. 4-8) and (2)
the reasons set forth by the Examiner in the Examiner’s Answer in response
to Appellants’ Appeal Brief (Ans. 8-12) and concur with the conclusions
reached by the Examiner. We highlight the following for emphasis.
Appellants contend modifying Denby’s method of upgrading software
by replacing it with Hunt’s rollback method would defeat Denby’s minor
upgrade ability which supports upgrading without interrupting normal
operation as required by claim 11. App. Br. 9. Appellants further argue
[T]here would be (and simply is) no reason to modify Denby/Hunt
with Nwafor’s disclosure in a piecemeal fashion in an attempt to
retain the “minor” upgrade ability of Denby while otherwise also
replacing Denby’s already present and fully functional major upgrade
ability (that does require a reboot per Denby column 3, lines 8-9)
with the Nwafor system which requires a restart in every instance.
Id. The Examiner responds by finding Denby teaches or suggests keeping
devices in a working state in the case of a remote software upgrade failure,
while Nwafor teaches a device may be “rolled back” to a previous state by
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storing both old and new software objects. Ans. 9-10. The Examiner further
finds incorporating Nwafor’s rollback into the teachings of Denby and Hunt
“would be one way to be sure that the devices being upgraded remain in a
proper working state, as suggested by Denby.” Ans. 10. The Examiner
concludes:
[T]he Denby/Hunt combination suggests keeping devices in a working
state, and Nwafor provides a specific way for keeping devices in a
working state by rolling the device back. Both the Denby/Hunt
combination and Nwafor pertain to remote software upgrading.
Therefore, the combination Denby/Hunt and Nwafor would have been
obvious for these reasons.
Id.
We agree with the Examiner. Claim 11 requires sending information
without interrupting normal operation, not performing the entirety of an
upgrade operation, e.g., installing and switching over to a newly downloaded
software version. See Ans. 10-11. Therefore, Appellants’ argument that
Nwafor’s system and Denby’s major upgrade both require a reboot or restart
(App. Br. 9) is not commensurate in scope with claim 11. See Ans. 11. Any
reboot is required to enable the updated software to run, but not to merely
send information for download as required by claim 11. Furthermore, other
than attorney argument based on mere speculation, Appellants provide
insufficient evidence that modifying the combination of Denby and Hunt to
incorporate the rollback feature of Nwafor would defeat or degrade Denby’s
minor upgrade ability so that it could not be performed without rebooting
(Denby col. 5, ll. 6-8). Nor have Appellants provided sufficient evidence
that the combination would be antithetical to Denby’s teaching or suggestion
of ensuring that devices being upgraded remain in a proper working state.
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Furthermore, we note that “[a] person of ordinary skill is also a person
of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 421(2007). In particular, all of the features of one reference need
not be bodily incorporated into the other, but consideration should be given
to what the combined teachings, knowledge of one of ordinary skill in the
art, and the nature of the problem to be solved as a whole would have
suggested to those of ordinary skill in the art (see In re Keller, 642 F.2d 413,
425 (CCPA 1981)). The artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984)). Appellants fail to provide sufficient evidence
that one skilled in the art would be dissuaded from modifying the teachings
of Denby and Hunt to include the rollback feature of Nwafor merely because
they use different techniques to upgrade a device’s software. Therefore, for
the reasons supra, Appellants’ contention 1 is unpersuasive of Examiner
error.
Nor are we persuaded of error by Appellants’ contention 2 that
storage of new and old versions in Nwafor’s functional modification
interface system fails to teach storage in a utility data collection device as
required by claim 11. App. Br. 10. The Examiner relies on Denby, not
Nwafor, for teaching storage at the collection device. Ans. 12. Thus, it is the
combination of Denby and Hunt with Nwafor that the Examiner finds
teaches or suggests the limitations of the final clause of claim 11, not
Nwafor alone. Therefore, Appellants’ contention 2 is not persuasive of error
because Appellants are arguing the teachings of Nwafor separately without
considering the combined teachings of the references. “Non-obviousness
cannot be established by attacking references individually where the
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rejection is based upon the teachings of a combination of references.” In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642
F.2d at 425). In particular, the Examiner finds and we agree “the teachings
of Denby allow the automatic data collection devices to store the old version
of software while the new version of software is being downloaded, in the
least, since Denby clearly states that the ‘minor’ upgrade does not require
the processes to be shut down.” Ans. 12. That is, Denby and Nwafor must be
read, not in isolation, but for what they fairly teach in combination with the
prior art as a whole. Merck, supra. Furthermore, while Appellants contend
the combination of Denby and Nwafor would likely result in the storage of
new and old versions of software on either Denby’s host 103 or server 100
rather than controller 104, we find insufficient evidence to persuade us that
the Examiner’s conclusion that the automatic data collection devices would
store both versions of software is unreasonable or technically flawed.
Therefore, Appellants’ contention 2 is unpersuasive of Examiner error.
For the reasons supra, we are not persuaded of Examiner error and
sustain the rejection of independent claim 11 under 35 U.S.C. § 103(a) over
Denby, Hunt, and Nwafor, together with the rejection of dependent claims
12, 18, and 19, which are not separately argued.

CONCLUSIONS
1. The Examiner did not err in combining the teachings of Denby and
Hunt to include that of Nwafor.
2. The Examiner did not err in finding the combination of Denby, Hunt
and Nwafor teaches or suggests storing both a newly downloaded
software version and a previous software version at the utility data
collection device.
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3. The Examiner did not err in rejecting claims 11, 12, 18, and 19 under
35 U.S.C. § 103(a) over Denby, Hunt, and Nwafor

DECISION
The Examiner’s decision to reject claims 11, 12, 18, and 19 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

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