10954239 (P.T.A.B. Oct. 11, 2012)

Ex Parte Reisman

Patent Trial and Appeal BoardOct 11, 2012

10954239 (P.T.A.B. Oct. 11, 2012)

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. 10/954,239 10/01/2004 Richard R. Reisman 2222.431000E 5370 26111 7590 10/11/2012 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER WANG, BEN C ART UNIT PAPER NUMBER 2192 MAIL DATE DELIVERY MODE 10/11/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RICHARD R. REISMAN ____________ Appeal 2012-000514 Application 10/954,239 Technology Center 2100 ____________ Before MAHSHID D. SAADAT, MICHAEL R. ZECHER, and BRYAN F. MOORE, Administrative Patent Judges. ZECHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000514 Application 10/954,239 2 I. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-8 and 10-73. App. Br. 5. Claim 9 has been cancelled. Claims Appendix. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellant’s Invention Appellant invented a method and computer program product directed to an online service selector function that enables a user at a user station to select any one of a plurality of available online service providers. Abstract. The claimed invention also provides a communications function that establishes a communication link between the user station and the selected one of the available online service providers. Id. Illustrative Claim Claims 1, 6, 13, 18, 23, 28, 32, 37, 42, 45, 47, 49, 51, 54, 57, 59, 61, and 64 are independent claims. Independent claim 1 is illustrative: 1. A method for updating software installed on a user station using an updating software entity located at the user station, comprising: upon occurrence of a scheduled time, the updating software entity at the user station polling a remote source to check for the availability of an update for at least one of multiple software entities included in the software installed on the user station, wherein the updating software entity is running in the background at the user station while at least one of the other software entities is running in the foreground at the user station; in response to polling the remote source for the availability of an update, receiving a notification from the remote source of the availability of an update; Appeal 2012-000514 Application 10/954,239 3 in response to the notification indicating that an update is available, requesting confirmation to obtain the update; and obtaining the update from the remote source via a communications network in response to confirmation to obtain the update. Related Appeal This appeal is related to an appeal in connection with U.S. Pat. Application No. 09/553,337. See Preliminary Amendment to the Specification filed October 1, 2004. Prior Art Relied Upon Collins, III US 6,138,153 Oct. 24, 2000 (hereinafter “Collins”) (effectively filed Feb. 14, 1994) Crawford US 7,080,051 B1 July 18, 2006 (effectively filed Nov. 4, 1993) Rejection on Appeal Claims 1-8 and 10-73 were rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Crawford and Collins. Ans. 3-76. Examiner’s Findings and Conclusions The Examiner finds that Collins discloses alerting an installation agent established at a target machine that a software package has arrived. Ans. 82 (citing col. 1, ll. 40-54). In addition, the Examiner finds that Crawford’s customer computer requests confirmation before downloading software and control information. Ans. 82-83 (citing col. 28, ll. 27-40 and 50-65). Based on these aforementioned disclosures, the Examiner finds that Crawford and Collins collectively teach both “in response to polling the remote source for the availability of an update, receiving a notification from the remote source of the availability of an update[,]” and “in response to the Appeal 2012-000514 Application 10/954,239 4 notification indicating that an update is available, requesting confirmation to obtain the update[,]” as recited in independent claim 1. Ans. 83. Appellant’s Contentions Appellant contends that Collins’ disclosure of alerting the installation agent established at a target machine that a software package has arrived does not teach the “in response to the notification indicating that an update is available, requesting confirmation to obtain the update[,]” as recited in independent claim 1. Reply Br. 6. Appellant asserts that such a confirmation request would not make sense given that the software package has already arrived at the target machine by the time the alert is given. Id. (citing col. 1, ll. 44-50). Appellant also argues that Crawford’s disclosure of a customer responding to certain requests in order to access an on-line service does not teach “in response to the notification indicating that an update is available, requesting confirmation to obtain the update[,]” as claimed. Reply Br. 6-7. Appellant asserts that Crawford’s confirmation request is not in response to a notification indicating that an update is available. Reply Br. 6-7. II. ISSUE The pivotal issue before us is whether the Examiner has erred in determining that the combination of Crawford and Collins collectively teaches “in response to the notification indicating that an update is available, requesting confirmation to obtain the update[,]” as recited in independent claim 1, and similarly recited in independent claims 6, 13, 18, 23, 28, 32, 37, 42, 45, 47, 49, 51, 54, 57, 59, 61, and 64? Appeal 2012-000514 Application 10/954,239 5 III. ANALYSIS Claims 1, 6, 13, 18, 23, 28, 32, 37, 42, 45, 47, 49, 51, 54, 57, 59, 61, and 64 Based on the record before us, we discern error in the Examiner’s obviousness rejection of independent claim 1, which recites, inter alia, “in response to the notification indicating that an update is available, requesting confirmation to obtain the update[.]” We also discern error in the Examiner’s obviousness rejection of independent claims 6, 13, 18, 23, 28, 32, 37, 42, 45, 47, 49, 51, 54, 57, 59, 61, and 64, which recite a similar claim limitation. At best, we find that Collins discloses alerting an installation agent located at a target machine that a software package has arrived. Col. 1, ll. 44-54. While Collins’ alert effectively notifies the target machine that a software package or update is available, Collins does not teach requesting confirmation to obtain the software update in response to the alert. In other words, it is not clear why Collins’ target machine would request confirmation to obtain the software update when the software update has already arrived at the target machine. Consequently, we agree with Appellant that Collins does not teach “in response to the notification indicating that an update is available, requesting confirmation to obtain the update[,]” as recited in independent claim 1. See Reply Br. 6. Further, Crawford discloses a customer computer that interactively accesses an on-line service (i.e., software update) by responding to confirmation requests, such as user identification, password, or request option. Col. 28, ll. 27-32. If the customer correctly responds to the confirmation requests, Crawford discloses downloading the corresponding software and control information to the customer computer. Col. 28, ll. 57- Appeal 2012-000514 Application 10/954,239 6 61. While Crawford’s customer computer requests confirmation to obtain the software update, we find no such disclosure in Crawford to indicate that the confirmation request is in response to a notification indicating that a software update is available, as required by independent claim 1. Such conjecture would therefore require us to resort to speculation, unfounded assumptions, or hindsight reconstruction. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). We will not resort to such speculation or assumptions to cure the deficiency in the factual basis in order to support the Examiner’s obviousness rejection. As such, we agree with Appellant that Crawford does not teach “in response to the notification indicating that an update is available, requesting confirmation to obtain the update[,]” as recited in independent claim 1. See Reply Br. 6-7. Because the Examiner’s reliance on Crawford and Collins does not properly account for the disputed claim limitation, we need not reach the merits of Appellant’s other arguments. It follows that the Examiner has erred in concluding that the combination of Crawford and Collins renders independent claim 1 unpatentable. Claims 2-5, 7, 8, 10-12, 14-17, 19-22, 24-27, 29-31, 33-36, 38-41, 43, 44, 46, 48, 50, 52, 53, 55, 56, 58, 60, 62, 63, and 65-73 Because dependent claims 2-5, 7, 8, 10-12, 14-17, 19-22, 24-27, 29- 31, 33-36, 38-41, 43, 44, 46, 48, 50, 52, 53, 55, 56, 58, 60, 62, 63, and 65-73 incorporate by reference the same disputed claim limitation as their underlying base claim, we find that the Examiner erred in rejecting these claims for the same reasons set forth in our discussion of independent claims 1, 6, 13, 18, 23, 28, 32, 37, 42, 45, 47, 49, 51, 54, 57, 59, 61, and 64. Appeal 2012-000514 Application 10/954,239 7 IV. CONCLUSION For the foregoing reasons, the Examiner has erred in rejecting claims 1-8 and 10-73 as being unpatentable under 35 U.S.C. § 103(a). V. DECISION We reverse the Examiner’s decision to reject claims 1-8 and 10-73. REVERSED