Ex Parte Mani et al

Patent Trial and Appeal Board

Feb 16, 2017

12910712 (P.T.A.B. Feb. 16, 2017)

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.
12/910,712 10/22/2010 Ajay Mani 331364.01 8726
69316 7590 02/21/2017
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
ZHEN, LI B
ART UNIT PAPER NUMBER
2197
NOTIFICATION DATE DELIVERY MODE
02/21/2017 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):
u sdocket @ micro soft .com
chriochs @microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AJAY MANI, PAVEL DOURNOV, LUIS IRUN-BRIZ,
PAVITHRA NAGESHARAO, HAIZHI XU, AKRAM HASSAN,
ASHISH SHAH, and TODD PFLEIGER
Appeal 2016-003554
Application 12/910,7121
Technology Center 2100
Before ROBERT E. NAPPI, KRISTEN L. DROESCH, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—20, which constitute all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
We have reviewed Appellants’ arguments in the Appeal Brief and
Reply Brief, and the Examiner’s response to Appellants’ arguments. We
concur with Appellants’ contention that the Examiner erred in rejecting
independent claims 1, 15, and 19 under 35 U.S.C. § 103(a) because
1 Appellants identify Microsoft Technology Licensing, LLC as the real party
in interest. App. Br. 2.
Appeal 2016-003554
Application 12/910,712
Bemabeu-Auban2 (hereinafter referred to as “Auban” to be consistent with
the record) does not teach or suggest “querying the distributed application,
by a fabric controller, to identify a sequence of said update domains to
update,” as recited in claim 1, and as similarly recited in claims 15 and 19.3
App. Br. 12—13; Reply Br. 5.
In the Final Action, the Examiner cites Figure 5, and paragraphs 39,
42, and 49, of Auban as teaching the disputed limitation of claim 1. In the
Answer, the Examiner cites paragraphs 16, 38, and 47 of Auban to support
the finding that “Auban is querying an application to identify a sequence of
update domains.” Ans. 5. We have reviewed Auban, including the portions
cited by the Examiner, and agree with Appellants’ arguments that Auban
does not teach or suggest “querying the distributed application ... to
identify a sequence of said update domains to update.” App. Br. 5—7; Reply
Br. 2—3. In particular, we agree with Appellants’ argument that “controlling
or performing a software update [by Auban’s upgrade server] does not
necessarily involve querying an application.” Reply Br. 2. We also agree
with Appellants’ argument that the Examiner’s finding that Auban teaches
the upgrade server obtains role information “from a web server that stores
the roles” and, therefore, teaches querying a distributed application (see Ans.
5) is incorrect because Auban expressly teaches the upgrade server obtains
the roles from the service model, rather than the web server. Id. at 2—3
(citing Auban || 16, 39). For the reasons set forth by Appellants, we also
agree with Appellants’ arguments that paragraphs 16, 38, and 47 of Auban
2 US 2010/0058318 Al; published Mar. 4, 2010.
3 Although Appellants make other arguments in the Briefs, we do not
address them because we find this issue is dispositive.
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Appeal 2016-003554
Application 12/910,712
“fail to establish that Auban queries a distributed application to identify a
sequence of update domains.” Id. at 3.
Accordingly, the Examiner’s finding that Auban teaches or suggests
the disputed limitation of claim 1 is in error because it is not supported by a
preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed.
Cir. 1985) (Examiner’s burden of proving non-patentability is by a
preponderance of the evidence); see also In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (“The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not, because it may doubt that the
invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.”).
Thus, we do not sustain the rejection of claims 1,15, and 19. For the
same reasons, we do not sustain the rejection of claims 2—14, 16—18 and 20,
which depend from one of claims 1,15, and 19.
DECISION
We reverse the Examiner’s rejection of claims 1—20.
REVERSED
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