Ex Parte Thayer et al

Board of Patent Appeals and Interferences

May 24, 2007

10167359 (B.P.A.I. May. 24, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte JENNIFER J. THAYER,
JEFFREY D. SCHWARTZ, and NEAL A. KRAWETZ
____________________
Appeal 2007-0210
Application 10/167,3591
Technology Center 2100
____________________
Decided: May 24, 2007
____________________
Before JAMES D. THOMAS, JOSEPH F. RUGGIERO,
and JAY P. LUCAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal from a final rejection of claims 1-20 and 26-49
under authority of 35 U.S.C. § 134 (2002). The Board of Patent Appeals
and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b) (2002).

1 Application filed June 11, 2002. The real party in interest is Hewlett
Packard Company.

Appeal 2007-0210
Application 10/167,359

2
Appellants’ invention relates to a system and method for sending and
receiving software updates and other forms of data over a network between a
server and client. In the words of the Appellant:
In accordance with one embodiment of the present invention, a
data management system comprises a processor adapted to receive a
transfer of an update. The system also comprises an update manager
accessible by the processor and adapted to obtain a listing identifying
each of a plurality of data packets corresponding to the update. The
update manager is further adapted to access the listing to determine a
transfer status of each of the data packets in the response to a partial
transfer of the update.
Claim 1 is exemplary:
1. A data management system, comprising:
a processor adapted to receive a transfer of an update; and
an update manager accessible by the processor and adapted to
obtain a listing identifying each of a plurality of data packets
corresponding to the update prior to a transfer of the update.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Doshi 5,222,061 Jun. 22, 1993
Dougall 2003/0093485 A1 May 15, 2003
(filed May 15, 2002)

The Examiner rejected claims 1- 20 and 26-49 under 35 U.S.C. 103(a)
for being obvious over Dougall in view of Doshi.
Appellants contend that the claimed subject matter is not rendered
obvious over Dougall in view of Doshi, for reasons to be discussed more
Appeal 2007-0210
Application 10/167,359

3
fully below. The Examiner contends that each of the claims is properly
rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).2
We reverse the rejections.

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a) (2004). The issue turns on
whether the references Dougall or Doshi, alone or in combination, render
obvious the claimed limitation “an update manager accessible by the
processor and adapted to obtain a listing identifying each of a plurality of
data packets corresponding to the update prior to a transfer of the update.”

2 Appellants have not presented any substantive arguments directed
separately to the patentability of the dependent claims except as will be
noted in this opinion. In the absence of a separate argument with respect to
those claims, they stand or fall with the representative independent claim.
See In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991). See also 37 C.F.R. § 41.37(c)(1)(vii).

Appeal 2007-0210
Application 10/167,359

4
FINDINGS OF FACT
Findings with respect to the rejection of claims 1-20 and 26-49 under
35 U.S.C. § 103 (a).

1. Appellants have invented a system and method for transferring
a software update from a server (Appellants’ 14) to one or more
clients (Appellants’ 12) over a network, for example the
Internet (Appellants’ 16). In the terms of the Specification,
“update” is read broadly to include many types of electronic
data: programs, data files, instructions. (Specification, ¶ 0014).
2. A careful reading of the claims in view of the issues raised in
the Brief, Reply Brief and Answer indicates the key limitation
to be “…an update manager accessible by the processor and
adapted to obtain a listing identifying each of a plurality of data
packets corresponding to the update prior to a transfer of the
update.” The Specification (Specification, ¶ 0018) and
common understanding of “update” indicate the meaning of the
word is the full update, as the Specification refers to parts of the
update in terms of individual data packets.
3. Examiner’s rejection relies upon Dougall to teach as part of the
prior art a server sending an update to a processor adapted to
receive the transfer, but relies upon Doshi to “teach the
limitation of obtaining a list identifying each of data packet
prior to a transfer.” (Answer 3). It is noted that in Doshi the
Appeal 2007-0210
Application 10/167,359

5
Transmit Controller 120 (read as the claimed Update Manager)
references a list of packets to be transferred, transmit list 130
(the claimed “listing”). (Answer 4). We find, however, that this
list is not obtained by an update manager accessible by the
processor on the receiving side of the system. The list remains
on the sending side of the system, contrary to the claimed
limitation.
4. When the objection to the rejection noted in paragraph three
above was raised by the Appellants, Examiner adjusted the
rationale of the rejection. Examiner notes, in the Answer page
8, that “Doshi teaches in col. 4, line 33-62, fig. 1, element 205
stores the packet in receiver buffer 210, see col. 4, l. 4-14, and
periodically receiver 200 sends to transmitter 100 and 120
(element 100 corresponding to a processor adapted to receive
update and element 120 corresponding to update manager) a
status control message (corresponding to listing of a plurality of
update) indicating the list of sequence numbers that receiver
received correctly.” (Quote adjusted for clarity). This message,
says the Examiner, is sent prior to sending a later section of the
full update.
5. We have carefully reviewed this new rationale for the rejection,
but find that it still fails to meet the claimed limitations. The
clear meaning of the limitation is that the manager is adapted to
obtain a listing of each of the data packets of the update prior to
Appeal 2007-0210
Application 10/167,359

6
a transfer of the update. Giving as broad a reasonable
interpretation of the claims as is consistent with the
specification and plain meaning of the terms of the claim, we
find that the listing of data packets must be able to be obtained
before the transmission. That is simply not taught by the Doshi
reference.

PRINCIPLES OF LAW
On appeal, Appellants bear the burden of showing that the Examiner
has not established a legally sufficient basis for the rejection of the claims.
“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
In sustaining a multiple reference rejection under 35 U.S.C. § 103(a),
the Board may rely on one reference alone without designating it as a new
ground of rejection. In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 266-67
(CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2, 150 USPQ 441, 444 n.2
(CCPA 1966).
Our reviewing court states in In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989) that “claims must be interpreted as
broadly as their terms reasonably allow.” Our reviewing court further states,
“[t]he terms used in the claims bear a ‘heavy presumption’ that they mean
what they say and have the ordinary meaning that would be attributed to
those words by persons skilled in the relevant art.” Texas Digital Sys. Inc v.
Appeal 2007-0210
Application 10/167,359

7
Telegenix Inc., 308 F.3d 1193, 1202, 64 USPQ2d 1812, 1817 (Fed. Cir.
2002), cert. denied, 538 U.S. 1058 (2003).

ANALYSIS
Appellants have contend that Examiner erred in rejecting claims 1-20
and 26-49 under 35 U.S.C. 103(a). Reviewing the findings of facts cited
above, we find an essential limitation of the claim was not disclosed in the
cited prior art. The claim requires an update manager, accessible by a
processor, adapted to receive a transfer of a update, and adapted to receive a
listing identifying all the data packets of the update prior to the transfer.
(Finding of Fact #2). Examiner has cited art, notably Doshi, which contains
the packet list, but on the sending side. Examiner has also noted that the
reference teaches that a second list of received packets is accumulated on the
receiving side and sent back to the transmitting side, but that operation does
not take place prior to the sending of the update, in accordance with the
common meaning of the terms.
As this issue establishes the error of the rejection, the other issues
raised by Appellants need not be addressed.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in rejecting claims 1- 20 and 26-49 over the cited art.
The rejection of those claims is reversed

Appeal 2007-0210
Application 10/167,359

8
DECISION
The Examiner's rejection of claims 1-20 and 26-49 is Reversed.

REVERSED

KIS

HEWLETT-PACKARD COMPANY
INTELLECTUAL PROPERTY ADMINISTRATION
P. O. BOX 272400
FORT COLLINS, CO 80527-2400