Ex Parte Owhadi et al

Board of Patent Appeals and Interferences

Sep 21, 2011

10852850 (B.P.A.I. Sep. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC OWHADI, MAHMOUD BOUCHEMOUA,
and CHRISTOPHE LE ROUZO
____________

Appeal 2009-013445
Application 10/852,850
Technology Center 2400
____________

Before JEFFREY S. SMITH, KALYAN K. DESHPANDE,
and BRUCE R. WINSOR, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013445
Application 10/852,850

2
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellants‟ invention relates to an “apparatus for and a method of
providing support for an electronic device, for example for troubleshooting
purposes” (Spec. 1:8-9).
1
Claim 1, which is illustrative of the invention,
reads as follows:
1. A method of supporting remotely a user electronic device
having an operating system for operating the device, including
the steps of providing a diagnostic and/or data harvesting
engine for the electronic device which includes at least one
procedure for diagnosing the operational state of the device
and/or harvesting data relating to the device; providing
independent Internet access software which accesses the
Internet from the user electronic device independently of the
operating system of the device; using the independent Internet
access software to access a support website; transmitting to the
website the results of the procedure for access by a support
service; and accessing by a support person said data through the
support website.
Claims 1-4 and 7-20 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Owhadi (US 2003/0037293 A1; Feb. 20, 2003).
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Owhadi in view of Johnson, II (US 6,397,245 B1; May
28, 2002).

1
References herein to Appellants‟ Specification (Spec.) are to page and line
numbers of the Specification filed May 24, 2004.
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Application 10/852,850

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The Examiner also refers to Free On-Line Dictionary of Computing,
“applet – FOLDOC Definition,” http://nightflight.com/foldoc-bin/
foldoc.cgi?query=applet (April 13, 2009) (FOLDOC), for its evidentiary
value, but does not rely on FOLDOC as prior art in the rejections.
Rather than repeat the arguments here, we make reference to the
Briefs (App. Br. filed Nov. 10, 2008; 1
st
Reply Br. filed Jan 29, 2009; 2
nd

Reply Br. filed June 19, 2009) and the Answers (Ans. mailed Dec. 1, 2008;
Supp. Ans. mailed Apr. 20, 2009) for the respective positions of Appellants
and the Examiner.

ISSUE
The pivotal issue presented by Appellants contentions is: Does
“providing independent Internet access software which accesses the Internet
from the user electronic device independently of the operating system of the
device,” (herein “the disputed limitation”) as recited in claim 1 and as
properly construed, read on Owhadi‟s applet 16?

ANALYSIS
The Examiner asserts that Owhadi “discloses an applet 16, that
gets executed on the PC 11 's browser environment, and it allows the
user to access the internet and download agent 17” (Ans. 4; see
Owhadi ¶ [0046]) . The Examiner further explains:
Pg. 2, paragraph 0046, lines 11-13 teaches applet 16 effects a
download of a configuration information gathering agent 17
that harvests hardware/software configuration data from the PC.
Here it is clear that applet 16 is internet access software which
accesses the internet from the user device to download the agent
17. Applets are java programs that are operating system
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independent and applet's access to system files is restricted in
order to prevent accidental or deliberate security violations.
(Ans. 13-14). The Examiner relies on the statement in FOLDOC that “plug-
ins . . . differ from applets in that they . . . are platform-specific” (FOLDOC
1 (emphasis omitted)) as support for the assertion that applets are operating
system independent, i.e., not platform-specific (Supp. Ans.).
Appellants contend that “Applet 16 may itself be independent of the
operating system, but that doesn't mean that it access (sic) the internet
„independently of the operating system of the device‟ as claimed!” (App.
Br. 8.)
Appellant further contends that equating an applet with
independent Internet access software which accesses the
Internet from the user electronic device independently of the
operating system of the device is inconsistent with Appellant's
Specification. Internet access software is not independent of
the operating system of a device if it requires the operating
system to be functional.
(1
st
Reply Br. 4; see, e.g., Spec. 3:4-7, 7:15-24.)
We agree with Appellants for the reasons set forth by Appellants
(App. Br. 6-8; 1
st
Reply Br. 4-6; 2
nd
Reply Br. 6-10).
The Examiner reasons that Applets are Java programs that are
“operating system independent,” (i.e., will work with any operating system
that is Java enabled) and have restricted access to system files (Ans. 13).
The Examiner relies on an internet dictionary, FOLDOC, to support this
view. In other words, the Examiner asserts that the broadest reasonable
meaning of the disputed recitation is that the independent Internet Access
software need only be “independent” of (i.e., function regardless of) the type
of operating system, but may rely on functionality in the operating system
(e.g., the application programming interface or API) to work.
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We conclude that the Examiner has incorrectly construed the disputed
limitation. The disputed limitation requires that the “independent Internet
access software . . . accesses the Internet from the user electronic device
independently of the operating system of the device; using the independent
Internet access software to access a support website” (emphasis added).
“Independently” is an adverb modifying the verb “accesses.”
“Independent,” the root adjective of “independently,” means “not subject to
control by others . . . not affiliated with a larger controlling unit . . . not
requiring or relying on something else,” Merriam-Webster‟s Collegiate
Dictionary 591 (10
th
ed. 1999) (emphasis added). We construe the disputed
limitation to encompass accessing the Internet by the independent Internet
access software without requiring or relying on the (i.e., “independently of”)
the user electronic device‟s operating system. In other words, the
independent Internet access software does not need to use the functionality
of the device‟s operating system when accessing the Internet. This
construction is consistent with the Specification, with the ordinary meaning
of “independent,” and with the grammar of the claim. The Examiner's
construction of "access[ing] the Internet from the user electronic device
independently of the operating system of the device" is neither consistent
with the Specification nor reasonable to a person with ordinary skill in the
art in light of the Specification.
We find that the passages of Owhadi cited by the Examiner (Ans. 4)
as teaching the disputed recitation do not teach or suggest applet 16
accessing the Internet without requiring or relying on the device operating
system. We have not found any other teaching or suggestion in the cited art
of accessing the Internet without requiring or relying on the device operating
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system. Accordingly, we do not sustain the rejection of claim 1, of
independent claims 12, 19, and 20, which include substantially the same
recitations as we find to not be taught or suggested by the cited prior art. We
additionally do not sustain the rejection of claims 2-11 and 13-18, which
depend from claims 1 and 12 respectively.

DECISION
The decision of the Examiner to reject claims 1-20 is reversed.

REVERSED

ELD