12628405 (P.T.A.B. Sep. 26, 2016)

Ex Parte Lloyd et al

Patent Trial and Appeal BoardSep 26, 2016

12628405 (P.T.A.B. Sep. 26, 2016)

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. 12/628,405 12/01/2009 David B. Lloyd 2012005 / SILLC 405 5882 73091 7590 09/27/2016 Marc P. Schuyler P.O. Box 2535 Saratoga, CA 95070 EXAMINER HEWITT II, CALVIN L ART UNIT PAPER NUMBER 3685 MAIL DATE DELIVERY MODE 09/27/2016 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 DAVID B. LLOYD and ERIC BILANGE ____________ Appeal 2014-002873 Application 12/628,405 Technology Center 3600 ____________ Before ANTON W. FETTING, BIBHU R. MOHANTY, and MATTHEW S. MEYERS, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 15–21, 31–37, and 39–43 which are all the claims pending in the application. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE. Appeal 2014-002873 Application 12/628,405 2 THE INVENTION The Appellants’ claimed invention is directed to managing software applications (Spec., para. 2). Claim 15, reproduced below with the numbering in brackets added, is representative of the subject matter on appeal. 15. A method for provisioning registered applications, the registered applications to be downloaded to mobile devices from an application provisioning server communicating with the mobile devices, the method comprising: [1] providing an application catalogue containing the registered applications; [2] receiving a first request, for downloading a selected application of the registered applications, wherein the first request includes information about a particular mobile device that is to receive the selected application; [3] determining, based on the received information, a download scenario appropriate for the particular mobile device; [4] sending the selected application for delivery to the particular mobile device using the determined download scenario, wherein the selected application sent to the mobile device is adapted for the initial execution by the mobile device but includes a portion that cannot be executed by the mobile device absent a verification; [5] receiving a second request, for the verification; and [6] conditioned upon authenticating the second request, sending the verification for delivery to the particular mobile device. THE REJECTIONS The following rejections are before us for review: 1. Claims 15–21, 31–37, and 39–43 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, for failure to show possession of the claimed invention. Appeal 2014-002873 Application 12/628,405 3 2. Claims 15–21, 31–37, and 39–43 are rejected under 35 U.S.C. § 103(a) as unpatentable over Emmerson (US 2002/0183045 A1, pub. Dec. 5, 2002), Hunter (US 7,209,900 B2, iss. Apr. 24, 2007), Leen (US 6,966,832 B2, iss. Nov. 22, 2005), and Sears (US 2002/0069263 A1, iss. June 6, 2002). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.1 ANALYSIS Rejection under 35 U.S.C. § 112, first paragraph The Examiner has rejected claims 15–21, 31–37, and 39–43 under 35 U.S.C. § 112, first paragraph, for failure to show possession of the claimed invention. The rejection states that there is no support for the claim terms “receiving a second request for the verification” and “sending the verification for delivery” (Ans. 3, 4). In contrast, the Appellants have argued that the rejection is improper and that the cited claim limitations are supported by the Specification at Figure 7, the Abstract, and paragraphs 17–19 and 21 (App. Br. 5–7; Reply Br. 1–4). We agree with the Appellants. Here, Figure 7 at items 708–710 and the Abstract provide support for the cited claim limitations, and this rejection is therefore not sustained. 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2014-002873 Application 12/628,405 4 Rejection under 35 U.S.C. § 103(a) The Appellants argue that the rejection of claim 15 is improper because the cited prior art fails to disclose claim elements [4], [5], and [6] cited above and also that the combination is not suggested or obvious (App. Br. 7-11; Reply Br. 4–12). In contrast, the Examiner has determined that the cited claim limitations are disclosed by Emmerson at Figs. 3A (item 180), 3B (item 210), paras. 28 and 29; and Hunter at column 8, lines 64–65 and column 17, lines 53–65 (Ans. 9). We agree with the Appellants. Here, the cited claim limitations claim elements [4], [5], and [6] require: [4] sending the selected application for delivery to the particular mobile device using the determined download scenario, wherein the selected application sent to the mobile device is adapted for the initial execution by the mobile device but includes a portion that cannot be executed by the mobile device absent a verification; [5] receiving a second request, for the verification; and [6] conditioned upon authenticating the second request, sending the verification for delivery to the particular mobile device. (Claim 1, emphasis added). Here, the cited portions of Emmerson do disclose the operator sending a game to a mobile phone, for instance, and that the security information is checked at the phone, but not that a second request is received for verification and that based on that second request, the sending of verification for delivery to the mobile device as claimed. Hunter, at the above cited portions above, does disclose allowing a customer to “preview” a portion of music content before it is downloaded and the use of digital keys to access special areas of digital media. Appeal 2014-002873 Application 12/628,405 5 In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), the Supreme Court noted that in an obviousness analysis that “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Here, the cited claim limitation not only requires that the selected application sent for delivery includes “a portion that cannot be executed by the mobile device absent a verification,” but also requires “receiving a second request for verification, for the verification” and upon authentication “sending the verification for the delivery to the particular mobile device.” The rationale provided for combining Emmerson and Hunter in the combination is to “give customers the flexibility to ‘preview’ the free trial version before deciding to purchase the full version” (Ans. 5); however, such reasoning fails to provide the required articulated reasoning with rational underpinnings to sustain the rejection without impermissible hindsight. Further, we note that the rejection on record incorporates Leen to teach “providing information with usage statistics for each of the at least one registered applications”; and Sears to teach the “aspect of the Java module” (Ans. 6), but neither of these elements is recited in the claim and their inclusion in the cited combination for claim 15 is unclear. For these above reasons the rejection of claim 15 and its dependent claims is not sustained. The remaining claims contain a similar limitation and the rejection of these claims is not sustained for the same reasons given above. Appeal 2014-002873 Application 12/628,405 6 CONCLUSIONS OF LAW We conclude that Appellants have shown that the Examiner erred in rejecting the claims as listed in the Rejections section above. DECISION The Examiner’s rejection of claims 15–21, 31–37, and 39–43 is reversed. REVERSED