Ex Parte Sakaguchi et al

Patent Trial and Appeal Board

Dec 8, 2017

13595156 (P.T.A.B. Dec. 8, 2017)

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.
13/595,156 08/27/2012 Haruhiko Sakaguchi S1459.70041US01 2088
23628 7590 12/12/2017
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC AVENUE
BOSTON, MA 02210-2206
EXAMINER
WALIULLAH, MOHAMMED
ART UNIT PAPER NUMBER
2498
NOTIFICATION DATE DELIVERY MODE
12/12/2017 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_eOfficeAction@WolfGreenfield.com
W GS_eOffice Action @ W olfGreenfield .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARUHIKO SAKAGUCHI, TOMIHIKO NAKAJIMA,
YOSHIFUMIUENO, TETSUO SASAKI, OSAMU AOKI,
AKINORIIIDA, MASAYUKI KOBUNA, SHINICHIRO TAYA,
KAZUHIRO GOTOH, and MOTOHIRO OHAMA
Appeal 2017-007713
Application 13/595,156
Technology Center 2400
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C § 134(a) of the
Examiner’s Final Rejection of claims 1—17, all claims currently pending
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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Application 13/595,156
STATEMENT OF THE CASE
Appellants’ invention is “a service providing apparatus and a service
providing method, and it is applicable to a service for downloading
application programs.” Spec. 1:15—17. Claim 1, reproduced below with the
disputed limitations in italics, is representative of the claimed subject matter:
1. A terminal device, comprising:
at least one memory configured to store at least two
applications, each of the applications having a particular
version installed in the at least one memory;
a communication unit configured to communicate
automatically, without being initiated by a user of the
terminal device, with at least one service server to identify
a subset of the applications for which there is a version
that is newer than the particular version available for
installation on the terminal device, the identifying being
based at least in part on information, communicated by the
communication unit to the at least one service server,
identifying the user of the terminal device',
a display unit configured to display a representation
of the subset without being initiated by the user of the
terminal device;
an input unit configured to receive an input from the
user of the terminal device defining a selection of at least
one of the applications for installation of the newer version
on the terminal device; and
a control unit configured to install, in response to
receiving the input, the newer version of the selected at
least one application on the terminal device.
App. Br. 33 (Claims App’x).
REJECTION
Claims 1—17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cheng et al. (US 6,151,643; issued Nov. 21, 2000)
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Application 13/595,156
(“Cheng”), Vincent (US 2004/0015953 Al; published Jan. 22, 2004), and
McLlroy et al. (US 6,701,521 Bl; issued Mar. 2, 2004) (“McLlroy”).
ANALYSIS
Issue: Did the Examiner err in finding the combination of Cheng,
Vincent, and McLlroy teaches or suggests
identity a subset of the applications for which there is a version
that is newer than the particular version available for
installation on the terminal device, the identifying being based
at least in part on information, communicated by the
communication unit to the at least one service server,
identifying the user of the terminal device,
as recited in independent claim 1 (emphasis added), and commensurately
recited in independent claims 9 and 17?
The Examiner finds “Cheng teaches identifying being based at least in
part on information communicated by the communication unit to the at least
one service server, identifying the user of the terminal device.” Final Act. 4
(citing Cheng Fig. 14, col. 19,1. 50-col. 20,1. 18); see also Ans. 4 (citing
Cheng Fig. 14, col. 20,11. 49-56).1
1 In the Final Action, the Examiner additionally cites to See et al. (US
2003/0021283, published Jan. 30, 2003, hereafter “See”), stating “it is
known in the art to identify and authenticate the user based on the obtained
information.” Final Act. 4. Appellants argue See does not disclose
“identifying applications for which there is a newer version available based
at least in part upon information identifying the user of a device,” and that
the use of See in making the rejection is improper because it is not positively
included in the statement of rejection. App. Br. 18—20. The Examiner
explains “See is used to show the motivation for combination as it is already
well-known in the field of technology that information related to software
product associated with a user device is considered as one type of user
authentication information” and “Examiner did not use or apply the
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Appellants argue Figure 2 and the associated text of Cheng, as well as
Figure 10 and the associated text, merely describe identifying applications
installed on a device “by analyzing the device” and “querying a separate
service provider computer.” App. Br. 13—15; see also Reply Br. 2.
Appellants further argue “Cheng simply says nothing, in any of the passages
cited by the Office Action or elsewhere, about identifying any applications
for which there is a newer version available based at least in part upon
information identifying the user.'1'’ App. Br. 15; see also Reply Br. 3.
We are not persuaded of Examiner error. Appellants’ arguments,
directed to Figures 2 and 10 and the associated text of Cheng, do not address
the Examiner’s findings that Figure 14 and its associated text teach
identifying based at least in part on information identifying the user of the
terminal device. As cited by the Examiner (Final Act. 4; Ans. 4), Figure 14
of Cheng describes a “user profile database 711” that “maintains a profile
for each user containing information about which products the user has
shown an interest, for example by requesting notification about software
updates for specific products, or about new software products.” Cheng col.
19,11. 50-53. The text associated with Figure 14 describes the “user table
1400 is keyed by the user ID 1401 to a notification table 1417 that associates
the user with selected product names 1419 and their current version” and
when there is “information for a new software update, the notification table
1417 may be scanned to identify those users by user ID 1401 to notify about
the updated Cheng col. 20,11. 49-56 (emphasis added). In other words,
reference by See to teach any of the claimed limitations.” Ans. 7. Thus,
contrary to Appellants’ arguments, the Examiner is not relying on See to
teach or suggest the disputed limitation. We, therefore, do not consider
these teachings in deciding the present appeal.
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Cheng teaches maintaining data for software updates associated with users
utilizing user IDs. Appellants have not persuasively rebutted the Examiner’s
findings, or explained how Cheng’s association of software updates with
information identifying users does not teach or suggest the claimed
identifying updated versions based at least in part on information identifying
the user of the device.
Appellants further contend, for the first time in the Reply Brief, that
Cheng does not teach “communicating automatically, without being initiated
by a user, with at least one service server to identity a subset of applications
on a terminal device for which there is a newer version available.” Reply
Br. 2-4. Appellants also argue, again for the first time in the Reply Brief,
that Cheng’s teachings are “not combinable” because they are characterized
as “alternate embodiments[s],” and any modification of Cheng would have
“no reasonable expectation” of success. Reply Br. 3^4.
Appellants’ arguments are untimely, and thus, waived.2 37 C.F.R.
§ 41.41(b)(2) (2012) (“Any argument raised in the reply brief which was not
raised in the appeal brief. . . will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.”); Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI2010) (informative) (“Any bases for
asserting error, whether factual or legal, that are not raised in the principal
brief are waived.”).
However, even if we consider Appellants’ arguments with regards to
Cheng and the claimed “communicating automatically, without being
2 Although Appellants assert the Answer contains “newly cited portions of
Cheng,” we note that the Examiner relied on the pertinent portions in the
Final Action. See Reply Br. 3; Final Act. 3^4 (citing Cheng, Fig. 14, col. 3,
11. 25-31, col. 19,1. 50-col. 20,1. 18).
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initiated by a user,” we are still not persuaded of Examiner error. The
Examiner finds Cheng teaches communicating automatically and without
intervention by a user. Final Act. 3 (citing Cheng col. 3,11. 25—31 (“client
application automatically downloads a portion of the database to the client
computer, preferably to update a mirror of portions of database”)).
Appellants do not persuasively address or rebut the Examiner’s findings.
See Reply Br. 4 (citing Cheng Figs. 14, 15, col. 19,11. 61—64).
Similarly, even if we consider Appellants’ arguments regarding the
various embodiments of Cheng, we are still not persuaded of Examiner
error. Cheng describes using the user profile database 711 “deliver[ing]
notifications about new updates available for these products to the user, for
example by email, or other electronic communications mechanisms” as an
“optional feature of the service provider computer.” Cheng col. 19,11. 53—
59. Cheng further describes “one alternate embodiment of the presentation
invention is the user of email to notify users about new software update
information” as the “e-mail notification embodiment.” Cheng col. 19,
11. 61—63; col. 20,11. 19-20. Cheng also describes the “user profile database
711 generally stores information descriptive of each user” to “associate^ the
user with selected product names 1419 and their current version 1421.”
Cheng col. 20,11. 33—34, 50-52. Based on such disclosure, we are not
persuaded one of ordinary skill in the art would not be motivated to combine
the embodiments of Cheng so that the user profile database associates
software updates and information identifying a user and provides the
optional feature of providing e-mail notification to the user of the updates.
See Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed.
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Cir. 2009) (“[Cjombining two embodiments disclosed adjacent to each other
in a prior art patent does not require a leap of inventiveness.”).
For the above reasons we sustain the Examiner’s § 103(a) rejection of
claims 1, 9, and 17, and for the same reasons sustain the Examiner’s 35
U.S.C. § 103(a) rejection of dependent claims 2—8 and 10-16, which were
not argued separately (App. Br. 20—31).
DECISION
The Examiner’s decision to reject claims 1—17 is 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)(iv).
AFFIRMED
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