Ex Parte Pardehpoosh et alDownload PDFPatent Trial and Appeal BoardMay 27, 201613248942 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/248,942 09/29/2011 Pedraum R. Pardehpoosh 133036 7590 06/01/2016 DLA Piper LLP (US) 2000 University A venue East Palo Alto, CA 94303-2215 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 337722-310301/Pl 1377USC1 5264 EXAMINER TECKLU, ISAAC TUKU ART UNIT PAPER NUMBER 2193 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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): AppleProsAdmin@dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PED RAUM R. P ARDEHPOOSH, CRAIG M. FEDERIGHI, DANIEL I. FELDMAN, GREGORY T. QUIRK, JACK R. MATTHEW, JACKIE LEE-KANG, JEAN-PIERRE CIUDAD, MONIKA E. GROMEK, THOMAS K. BURKHOLDER, DANIEL EMIL PU, SAM GHARABALL Y, ELLIS MARSHALL VEROSUB, and YOON SUB HWANG Appeal2014-009297 Application 13/248,942 Technology Center 2100 Before JOHN A. EV ANS, MONICA S. ULLAGADDI, and SCOTT E. BAIN, Administrative Patent Judges. BAIN, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1, 9, 18, and 24. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify Apple, Inc. as the real party in interest. Br. 1. Appeal2014-009297 Application 13/248,942 STATEMENT OF THE CASE Appellants' invention relates to techniques for linking software applications that are pre-installed on an electronic device to a user account on an online store. See Spec. 1. The claims on appeal, all of which are independent, have not been argued separately and therefore stand or fall together. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv). Exemplary claim 1 is reproduced below, with the disputed limitations in italics: 1. A method comprising: receiving a request from a computing device to update an application installed on the computing device; determining, by a server, that the application installed on the computing device has an update available; notifying the computing device that the application has an update available; receiving, from the computing device, user authorization to link the application with a user account associated with the computing device; in response to receiving the user authorization, receiving, from the computing device, a unique hardware identifier associated with the computing device; determining that the application has not been linked with any user account based upon the unique hardware identifier associated with the computing device; and linking the application with the user account, wherein linking the application with the user account allows the application and updates to the application to be downloaded to one or more computing devices associated with the user account, 2 Appeal2014-009297 Application 13/248,942 wherein the application is not permitted to be linked with the user account if the application has been linked to another user account using a different unique hardware identifier. Br. 14 (emphasis added). THE REJECTIONS ON APPEAL Claims 1, 9, 18, and 24 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 5-6. Claims 1and18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gharabally et al. (US 2009/0307682 Al; Dec. 10, 2009), Cordani et al. (US 2011/0173277 Al; July 14, 2011), Arnold et al. (US 2009/0100149 Al; Apr. 16, 2009), Dumais (US 2010/0248699 Al; Sept. 30, 2010), Meyer et al. (US 7,016,944 B 1; Mar. 21, 2006), Hammond et al. (US 7,913,246 B2; Mar. 22, 2011) and Bartlett (US 2010/0146609 Al; June 10, 2010). Final i~ .. ct. 6-13. Claims 9 and 24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gharabally, Cordani, Arnold, Dumais, and Bartlett. Final Act. 13-20.2 ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments presented in this appeal. Any other arguments which Appellants could have made but chose not to make in the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). With respect to the rejection under 2 Claims 2, 3, 7, 8, 10-12, 14--17, 19-23, 25 and 27 also stand rejected but are not appealed. Claims 4--6, 13, and 26 have been canceled. 3 Appeal2014-009297 Application 13/248,942 35 U.S.C. § 112, we are persuaded the Examiner erred and do not sustain the rejection. With respect to the obviousness rejections (of the same claims), however, Appellants have not persuaded us of error, and we adopt as our own the findings and reasons set forth in the rejections from which this appeal is taken and in the Examiner's Answer. We provide the following to highlight and address specific arguments. Rejection Under 35 USC§ 112, First Paragraph Appellants argue the Examiner erred in finding the Specification lacks support for the claim element "different unique hardware identifier," recited in each of the independent claims on appeal. Br. 9--10. Appellants do not dispute the Examiner's finding, Ans. 4--5, that the precise phrase "different unique hardware identifier" does not appear in the Specification. Appellants contend, nevertheless, that the Specification as a whole sufficiently describes the meaning and context of the term, so as to satisfy the written description requirement. Br. 9-10. We agree. The Specification discloses that a "unique hardware identifier" may be "based upon one or more hardware components of the electronic device, such as a MAC address, universal device identifier (UDID), a logic board serial number, or an Ethernet hardware address." Spec. i-f 9. Linking a pre- installed application with a particular user account can, according to the Specification, include "updating a uniqueness table to include the unique hardware identifier" and "associating the pre-installed application with the user account." Id. Furthermore: When a device adopts (i.e. links) some or all of its pre-installed applications with a user account, the device's unique hardware 4 Appeal2014-009297 Application 13/248,942 identifier is stored within the uniqueness table. This prevents future requests to link the pre-installed software on the device from being authorized since these requests are invalid. Thus, performing a query on whether a unique hardware identifier is in the uniqueness table [already] determines if the device associated with the unique hardware identifier has already linked its pre- installed applications with a user account. If so, the current request should be rejected. Br. 9 (citing Spec. i-fi-1 41--44) (emphasis omitted). On the record before us, we are persuaded that one of ordinary skill in the art would understand the foregoing description of "unique hardware identifier" and "user account," and the relationship between them, sufficiently to discern when one unique hardware identifier is "different" from another, as recited in the claims. See Ariad Pharmaceuticals v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) (written description requirement involves "an objective inquiry into the four comers of the specification from the perspective of a person of ordinary skill in the art."). Accordingly, we do not sustain the Examiner's rejection of claims 1, 9, 18 and 24 under 35 U.S.C. § 112, first paragraph. Rejections Under 35 US.C. § 103(a) Appellants argue the Examiner erred in finding Bartlett and Dumais teach the limitation "wherein the application is not permitted to be linked with the user account if the application has been linked to another user account using a different unique hardware identifier," as recited in the claims. Specifically, Appellants assert Bartlett discloses a system for accessing accounts on a server based on MAC addresses rather than "linking applications with user accounts" as recited in the claims, Br. 10-11, and "Dumais is limited to describing a system used for receiving application data 5 Appeal2014-009297 Application 13/248,942 from mobile devices, storing the received application data, and restoring/downloading the stored application data to mobile device(s)." Id. at 11. Appellants' individual attack of the references, however, does not demonstrate error because the Examiner's rejection is based upon the combined teachings of the references. See, e.g., In re Keller, 642 F.2d 413, 426 (CCPA 1981). In particular, the Examiner finds Dumais teaches "application data" only being provided "if it is determined that the requesting device is associated with" a matching user account. Ans. 6 (citing Dumais i-f 128). This determination may be made "based on the identification information" received previously. Id. While the Examiner does not expressly find a "unique hardware identifier" (or "different unique hardware identifier") in Dumais, the Examiner finds that element in Bartlett, which (as acknowledged by Appellants, App. Br. 11) is directed to permitting/denying access to an account based upon a device's MAC address (unique hardware identifier). The record supports the Examiner's finding, particularly in light of Appellants' Specification stating the "unique hardware identifier" can be based upon "a MAC address." Spec. i-f 9; see also Ans. 6. Appellants do not address the combined teachings cited by the Examiner, Ans. 5---6, nor dispute the Examiner's articulated rationale for combining the references. Thus, for the foregoing reasons, we sustain the rejections of claims 1, 9, 18, and 24 under 35 U.S.C. § 103(a). 6 Appeal2014-009297 Application 13/248,942 DECISION We affirm the Examiner's decision rejecting claims 1, 9, 18, and 24. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 1.136(a)(l)(iv) (2013). AFFIRMED 7 Copy with citationCopy as parenthetical citation