Ex Parte Pitts et al

Patent Trial and Appeal Board

May 21, 2018

13401697 (P.T.A.B. May. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/401,697 02/21/2012
101702 7590 05/23/2018
EMBARCADERO C/0 WAGNER BLECHER LLP
123 WESTRDIGE DRIVE
WATSONVILLE, CA 95076
James B. Pitts
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.
MBARC-008 6132
EXAMINER
GLASSER, DARA J
ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
05/23/2018 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):
patents@wagnerblecher.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES B. PITTS and WAYNE D. WILLIAMS
Appeal2017-007589
Application 13/401,697
Technology Center 2100
Before CARL W. WHITEHEAD JR, NABEEL U. KHAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1--4 and 7-23
under 35 U.S.C. § 134(a). Appeal Brief 34. We have jurisdiction under
35 U.S.C. § 6(b) (2012).
We affirm.
Introduction
The invention is directed to linking a file to a product or app.
Specification ,r,r 14, 20.
Appeal2017-007589
Application 13/401,697
Illustrative Claim (Disputed limitations emphasized/
1. A method for linking a file with a product, said method
compnsmg:
intercepting, at a product browser associated with a user
device, a command to an operating system to open a file with a
file type;
preventing said operating system from taking action
based on said command;
searching for available compatible products compatible
with said file type and capable of opening said file, wherein
said searching searches, at least in part, for a product that is a
self-contained file resolvable by said product browser at said
user device, and wherein said searching comprises:
searching for installed products in said operating
system that are compatible with said file type and capable
of opening said file;
searching for remote products, in a remote
database, that are compatible with said file type and
capable of opening said file, wherein said remote
products are each a self-contained file resolvable by said
product browser at said user device;
presenting a list of said available compatible products at
said user device via a user interface associated with said
product browser;
executing a selected product at said user device via said
product browser in response to a selection of said selected
product from said list of said available compatible products
wherein said selected product is a self-contained file resolvable
by said product browser, wherein said executing said selected
product occurs without requiring installation in an operating
system associated with said user device, and wherein said
product browser accomplishes said executing by using a cache
to sandbox said selected product from said operating system;
automatically obtaining and managing a license that is
available to said user device for said selected product without
requesting a user to input any licensing data, wherein said user
1 See Appeal Brief 12.
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Application 13/401,697
device is one of a plurality of devices and said license is one of
a limited number of licenses available to said plurality of
devices;
opening said file via said selected product at said user
device, wherein said managing said license allows said opening
said file to occur fluidly without requiring an additional
command to re-initiate said opening of said file after said
selection of said selected product;
tracking a usage of said product at said user device via
said product browser based on how often and how long said
product is executed at said user device, and wherein usage
statistics are captured based on said license, and generating a
report based on said usage;
determining said product is under-utilized at said user
device based on said tracking said usage;
making a decision about whether said product should
remain cached at said product browser based on said tracking
said usage; and
preventing said product from executing in response to a
license cap being exceeded.
Rejections on Appeal
Claim 23 stands rejected under pre-AIA 35 U.S.C. § 112, 4th
paragraph, as being of improper dependent form for failing to further limit
the subject matter of the claim upon which it depends. Final Action 2-3.
Claims 1, 2, 7-12, and 15-23 stand rejected under pre-AIA
35 U.S.C. § 103 (a) as being unpatentable over Masinter (US Patent
7,409,405 Bl, issued August 5, 2008), de Vries (US Patent 7,451,196 Bl;
issued November 11, 2008) and Fitzgerald (US Patent Application
Publication 2008/0184225 Al; published July 31, 2008). Final Action 3-24.
Claims 3 and 13 stand rejected under pre-AIA 35 U.S.C. § 103 (a) as
being unpatentable over Masinter, de Vries, Fitzgerald and Cover (US Patent
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Application 13/401,697
Application Publication 2006/0136389 Al; published June 22, 2006). Final
Action 24--25.
Claims 4 and 14 stand rejected under pre-AIA 35 U.S.C. § 103 (a) as
being unpatentable over Masinter, de Vries, Fitzgerald and Duggal (US
Patent Application Publication 2010/0299187 Al; published June 22, 2006).
Final Action 25-26.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed December 5, 2016), the Reply Brief (filed
April 24, 2017), the Answer (mailed February 23, 2017) and the Final
Action (mailed June 16, 2016) for the respective details.
35 U.S.C. § 112, 4th paragraph, rejection
Claim 18 recites, "searching code for discovering compatible products
in a remote database." Appellants contend "Claim 23 recites 'wherein
provided said selected product is a remote product in a remote database, said
executing code is for executing said remote product via said product
browser,"' and therefore, further limits the subject matter of claim 18 from
which it depends. Appeal Brief 10. Appellants' Specification discloses,
"The [compatible] products may be searched for in a database such as a
public or private remote database or a local database" (paragraph 55) and
"[at step 406 of the process shown in Figure 4], remote products are
searched for, in a remote database, that are compatible with the file type and
capable of opening the file, wherein the remote products are each a self-
contained file resolvable by the product browser" (paragraph 64). The
Examiner finds "every product in the claimed 'list of said compatible
products' [in claim 18] is necessarily a remote product in a remote database,
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Application 13/401,697
including the claimed 'selected product' that is executed," and therefore,
claim 23 fails to further limit claim 18. Answer 4. We agree with the
Examiner's findings. Accordingly, we sustain the 35 U.S.C. § 112, 4th
paragraph, rejection.
35 U.S.C. § 103, obviousness rejections
Appellants argue Masinter discloses "a system in which compatible
yet unavailable applications can be purchased and/or downloaded for
installation responsive to a user action," and therefore, "such user action
required to purchase and/or download an application teaches away from
'automatically obtaining and managing a license that is available to said user
device for said selected product without requesting a user to input any
licensing data ... ' ( emphasis added) as claimed." Appeal Brief 14 ( citing
Masinter column 5, lines 34--51). We do not find Appellants' arguments
persuasive because the cited portion of Masinter does not discourage
automatically obtaining a license, Masinter merely discloses a manual
method of purchasing and/or downloading an application with "an
opportunity to purchase rights to use an application already installed on the
computer system." Masinter, column 5, lines 49-51. 2
Appellants further argue that "Fitzgerald does not overcome the
shortcomings of Masinter in view of de Vries," because "by requiring that a
user action initiate purchasing and/or downloading an application for
installation, Appellants [maintain] that Masinter teaches away from the
2 "A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant." In re Kahn, 441 F.3d 977, 990 (Fed.
Cir. 2006) ( citations and internal quotation marks omitted).
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proposed combination with Fitzgerald." Appeal Brief 14. We are not
persuaded of Examiner error, because Masinter does not teach away from
automatically obtaining the license. We agree with the Examiner's findings
that it would be obvious to one of ordinary skill in the art to modify the
Masinter/de Vries combination to obtain a license automatically as taught by
Fitzgerald. See Final Action 8 (citing Fitzgerald, paragraph 9). Note it is
unlikely that a claimed invention's mere automation would alone defeat a
rejection under 35 U.S.C. § 103 over any prior art teachings. See, e.g., In re
Venner, 262 F.2d 91, 95 (CCPA 1958). ("[I]t is well settled that it is not
'invention' to broadly provide a mechanical or automatic means to replace
manual activity which has accomplished the same result.").
Consequently, we sustain the Examiner's obviousness rejection of
claim 1 and of claims 2, 7-10, and 21, not argued separately. See Appeal
Brief 16. We also sustain the Examiner's obviousness rejection of claims
11, 12, 15-17, and 22 (argued together) as well as claims 18-20 and 23
(argued together) for the same reasons as claims 1, 2, 7-10, and 21 wherein
the groups of claims are commensurate in scope. See Appeal Brief 21, 26.
Appellants argue claims 3 and 13 together and claims 4 and 14
together. See Appeal Brief 26, 30. Appellants argue that the combined
references fail to teach automatically obtaining and managing a license, and
that Masinter teaches away from the claimed embodiments, and therefore,
teaches away from the proposed modification and combination with
Fitzgerald. Appeal Brief 27-33. We do not find Appellants' arguments
persuasive for the reasons stated above, because we do not find that Masinter
teaches away from automatically obtaining a license. We sustain the
Examiner's obviousness rejections of claims 3, 4, 13, and 14.
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DECISION
The Examiner's 35 U.S.C. § 112, 4th paragraph rejection of claim 23
is affirmed.
The Examiner's 35 U.S.C. § 103 rejections of claims 1--4 and 7-23
are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED
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