Ex Parte McClary

Board of Patent Appeals and Interferences

May 17, 2010

11101897 (B.P.A.I. May. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES R. McCLARY
____________

Appeal 2009-001300
Application 11/101,897
Technology Center 3600
____________

Decided: May 17, 2010
____________

Before LINDA E. HORNER, JENNIFER D. BAHR, and
JOHN C. KERINS, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
Charles R. McClary (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 7-14, the only claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).

THE INVENTION
Appellant’s claimed invention is to a method for delivering avionics
software that includes assigning a software part number to a software
application based upon enabled features of the software application.
Independent claim 7 is reproduced below, and is illustrative of the overall
claimed subject matter:
7. A method for delivering avionics software, the
method comprising:

equipping one or more aircraft with a computer
hardware unit configured to implement time and
memory space partitioning of one or more
software applications;

assigning a hardware part number to the computer
hardware unit;

installing one or more software applications into a
memory of the computer hardware unit using one
or more integrity verification protocols, wherein
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one or more features of the one or more software
applications are enabled; and

assigning a software part number to a software
application of the one or more software
applications based on enabled features of the
software application.

THE REJECTIONS
The Examiner has rejected:
(i) claims 10 and 12 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to point out and distinctly claim the subject
matter which is regarded as the invention;
(ii) claims 7-9, 11 and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Gould (US 2004/0106404 A1, published June 3, 2004) in
view of Fenstemaker (US 6,490,684 B1, issued December 3, 2002); and
(iii) claims 10, 12 and 14 under 35 U.S.C. § 103(a) as being
unpatentable over Gould in view of Fenstemaker and Muxlow (US
6,438,468 B1, issued August 20, 2002).

ISSUES
Are claims 10 and 12 indefinite under the second paragraph of 35
U.S.C. § 112 because those claims call for the one or more integrity
verification protocols to include an industry standard protocol identified as
ARINC 615?
Did the Examiner err in concluding that a combination of the
teachings of the Gould and Fenstemaker patents renders obvious the subject
matter of claims 7-9, 11 and 13?
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Did the Examiner err in concluding that a combination of the
teachings of Gould, Fenstemaker and Muxlow renders obvious the subject
matter of claims 10, 12 and 14?

PRINCIPLES OF LAW
A principal purpose of the definiteness requirement of 35 U.S.C. §
112, is
to provide those who would endeavor, in future
enterprise, to approach the area circumscribed by
the claims of a patent, with the adequate notice
demanded by due process of law, so that they may
more readily and accurately determine the
boundaries of protection involved and evaluate the
possibility of infringement and dominance.
In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970).

ANALYSIS
Claims 10 and 12--Indefiniteness
Claims 10 and 12 call for the claimed one or more integrity
verification protocols to include the ARINC 615 protocol. Both the
Examiner and Appellant agree that ARINC 615 is considered to be an
industry standard in the field of avionics. (Answer 3; Appeal Br. 10-11).
The Examiner considers the claims to be indefinite because the recited
industry standard is subject to being changed in the future, and because
Appellant is not in a position to know presently how that standard might
change. (Answer 9). Appellant counters that, “the standard is now definite
and not vague.” (Appeal Br. 11).
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Compliance with the provisions of 35 U.S.C. § 112 is determined as
of the filing date of the application. W.L. Gore & Assoc., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1556 (Fed. Cir. 1983). There does not appear to be any
dispute here that a particular version of the ARINC 615 protocol was in
existence as of Appellant’s filing date.1 Thus, one of ordinary skill in the
art, with reference to the standard in effect as of the filing date of
Appellant’s application, would readily be able to determine the metes and
bounds of this element found in claims 10 and 12. Accordingly, we will not
sustain the rejection of claims 10 and 12 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 7-9, 11 and 13--Obviousness--Gould/Fenstemaker
The Examiner’s findings that Gould “lack[s] the software installation
wherein one or more features of the one or more software applications are
enabled”, and Gould “do[es] not explicitly disclose a software part number
is assigned to a software application . . . based on enabled features of the
software applications” (Answer 4), appear to be premised on an
interpretation of claim 7 that is narrower than the broadest reasonable
interpretation of that claim. Specifically, the Examiner appears to regard
claim 7 as requiring a software installation wherein one or more features of
one or more software applications are enabled, and wherein one or more
features are not enabled, or disabled.

1 The Examiner does make mention of the lack of identification of a specific
section of the recited standard being used as a reference or basis in the
claims (Answer 9-10), but does not explain why the absence of identification
of a specific section would lead to a person of ordinary skill in the art not
being able to determine the scope of the claims.
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Employing this interpretation, the Examiner (Answer 4) relies on the
Fenstemaker patent as disclosing a software installation in which one or
more features of the one or more software applications are enabled, citing to
column 2, lines 55-64 of Fenstemaker, which states that “at least some of the
features . . . are not immediately available for use (i.e., at least some features
are installed disabled).” In the combination of teachings proposed by the
Examiner, it is noted that “one can incorporate the reference of Fenstemaker
et al wherein a key with unique code could enable one or more features of
the one or more software applications that are disabled”, and that “[t]he
software part number assigned would still be the unique part number or
identifier for each software as assigned from Gould et al invention.”
(Answer 8-9). This reasoning highlights that the combination of Gould and
Fenstemaker, employing the Examiner’s narrowed claim construction, falls
short of rendering obvious the provision in claim 1 that the software part
number is assigned based on enabled features of the software application. If,
as proposed by the Examiner, the same part number is maintained even after
the enabling of an additional feature or features in the combination of Gould
and Fenstemaker, this claim element or limitation is not disclosed or
suggested by the combination.
The rejection of claim 7, and of claims 8, 9, 11 and 13 depending
therefrom, will not be sustained.
Claims 10, 12 and 14--Obviousness--Gould/Fenstemaker/Muxlow
Claims 10, 12 and 14 also depend either directly or indirectly from
claim 7. The Muxlow patent is not cited to cure the deficiency noted above
in applying the combination of Gould and Fenstemaker to the interpretation
of claim 7 employed by the Examiner. The rejection of these claims as
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being unpatentable over Gould in view of Fenstemaker and Muxlow will not
be sustained.
NEW GROUND OF REJECTION
Section 41.50(b) of Title 37 of the Code of Federal Regulations
confers authority on the Board to reject any pending claim for which the
Board has knowledge of any grounds of rejection not on appeal. 37 C.F.R. §
41.50(b) (2009). We thus enter a new ground of rejection of claim 7 under
35 U.S.C. § 102(e), as being anticipated by Gould.
Claim 7 is not, as discussed above, so limited in scope as to require a
software installation wherein one or more features of one or more software
applications are enabled, and wherein one or more features are not enabled
(i.e., are disabled). This is evinced not only by the plain language found in
claim 7, but also by considering claim 9, which depends from and further
limits claim 7, and identifies that one condition encompassed within claim 7
is when “one or more features of the one or more software applications…
are disabled”. (Appeal Br., Claims App’x.). The corollary to that condition
is one in which none of the features of the one or more software applications
are disabled.
This is borne out by the language of claim 7 itself, which does not
preclude all features of the one or more software applications being enabled.
For example, the method of claim 7 encompasses installing only one
software application into a memory of the computer hardware unit, with the
software application having one or more than one feature, and with the one
feature, or with all of the “more than one” features, enabled. The claimed
method then requires the assignment of a software part number based on the
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enabled features (all features enabled, in the above example) of the software
application.
Gould discloses a method for delivering avionics software. (Gould,
Abstract). As found by the Examiner, and not contested by Appellant, the
method disclosed by Gould comprises,
equipping one or more aircraft with a computer
hardware unit (i.e. computer/server 12) configured
to implement time and memory space partitioning
of one or more software applications (Fig. 1 & 2;
[0032]; [0037]); assigning a hardware part number
(i.e. electronic part identification placards) to the
computer hardware unit ([0013]; [0037]-[0038]);
installing one or more software applications into a
memory of the computer hardware unit using one
or more integrity verification protocols (i.e. a
software program un-packages, verifies, and stores
the updated software on the aircraft
computer/server)(Fig 5; [0042]); and assigning a
software part number (i.e. a unique part number or
identifier) to a software application of the one or
more software applications (Fig 5 -- steps “80” &
“82”; [0042]).
(Answer 3-4).
Gould further specifically discloses:
[a]t a development step 78, the software supplier
develops an updated software and/or data package
for an aircraft. At an item identification/part
numbering step 80, a unique part number or
identifier is added to the software or data package
to uniquely identify the software or data package
from all other packages. . . . After verification and
testing, the software or data package is then
transmitted to the aircraft computer/server for
storage and future use.
(Gould 4, para. [0042]).
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Since Gould does not identify that certain features of the software
application or applications are enabled, while other features are not enabled
(disabled), a person of ordinary skill in the art would understand that all
features of the software are enabled for use. The unique part
number/identifier that uniquely identifies this software or data package thus
manifestly is based on the enabled features of the software application, as
claimed.
As such, the Gould patent discloses each and every element set forth
in claim 7.

CONCLUSIONS
The rejections of claims 7-14 under 35 U.S.C. § 103(a) over Gould in
view of Fenstemaker, and over Gould in view of Fenstemaker and Muxlow
will not be sustained.
The rejection of clams 10 and 12 under 35 U.S.C. § 112, second
paragraph,also will not be sustained.

DECISION
The decision of the Examiner to reject claims 7-14 under 35 U.S.C.
§ 103(a) is reversed.
The decision of the Examiner to reject claims 10 and 12 under 35
U.S.C. § 112, second paragraph, is reversed.
Claim 7 is rejected, in a new ground of rejection, under 35 U.S.C.
§ 102(e) as being anticipated by Gould.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2007). Section 41.50(b) provides “[a] new ground of
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rejection pursuant to this paragraph shall not be considered final for judicial
review.”
Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner,
in which event the proceeding will be remanded to
the Examiner . . .
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the
same record . . .
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).

REVERSED; 37 C.F.R. § 41.50(b)

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