Ex Parte Turner et al

Board of Patent Appeals and Interferences

Feb 4, 2004

09160490 (B.P.A.I. Feb. 4, 2004)

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written for publication and is not binding precedent of the Board.

Paper No. 26

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ADRIAN J. TURNER, SIMON PEARCE,
DAVID ANTHONY EVES and ALLAN ROGER TIMMS
__________

Appeal No. 2002-2040
Application No. 09/160,490
___________

ON BRIEF
___________

Before McKELVEY, Senior Administrative Patent Judge and MEDLEY,
and MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 5-9, which are all the pending claims of this
application.
REPRESENTATIVE CLAIM
The appellant has indicated (Brief, page 3) that, for the
purposes of this appeal, claims 5-9 will stand or fall together.
Accordingly, we select claims 5 and 9, the independent claims, to
be representative of the claims on appeal. Note 37 CFR
§1.192(c)(7). See also In re Dance, 160 F.3d 1339, 1340 n.2, 48
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USPQ2d 1635, 1636 n.2 (Fed. Cir. 1998); In re King, 801 F.2d 1324,
1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d
989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983). Claims 5 and 9 are
reproduced in full below:
5. A method of enabling customizing technical features of
network-enabled equipment of an end-user, said method comprising:
storing a profile of the end-user’s preferences in regard to
technical features of said equipment;
storing information describing prospective new and modified
technical features of said equipment;
determining if a prospective technical feature is relevant to
the end-user, based on the stored information concerning said
feature and the user-profile; and
notifying the end-user via the network of the availability of
an option to select a relevant prospective technical feature for
addition to the equipment.

9. A method of customizing an end-user’s network-enabled
equipment, said method comprising:
registering in a registration server a profile of the user’s
preferences in regard to technical features of said equipment,
said profile being based on information provided by the user and
by suppliers of said equipment;
storing said profile of the user’s preferences in a user
profile database;
assembling and storing in a feature database information
relating to availability of prospective new and modified technical
features of said equipment; and
associating, in a feature management server, the user’s
preferences as determined from the user profile database and the
feature information as determined from the feature database, so as
to determine and supply the user with feature information which is
consistent with the user’s preferences.

The References
In rejecting the claims under 35 U.S.C. §102(b) and 35 U.S.C.
§103(a), the examiner relies upon the following references:

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Rowley 5,999,740 Dec. 07, 1999
Traversat et al. (Traversat) 6,161,125 Dec. 12, 2000
The Rejections
Claims 5-9 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Rowley in view of Traversat.
The Invention
The invention relates to providing customized technical
functions to a network-enabled piece of equipment of an end user.
A profile of the end-user and information about a technical
feature for use with the equipment are stored in a server system.
(Specification, page 2, lines 21-24). Based upon the user profile
it is determined whether the user should be notified about the
availability of this feature. If the user is notified, and the
feature is software, the feature may be downloaded from the
network. If the feature is hardware, it may be shipped to the end
user (Id., page 2, lines 25-29). Further details of the claimed
method are seen with reference to claims 5 and 9 above.
The Rejection of Claims 5-9 Under 35 U.S.C. §103(a)
Claims 5-9 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Rowley in view of Traversat.
The examiner has found that Rowley describes a method of
enabling customizing technical features of network-enabled
equipment of an end user, including storing a profile of the end
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user’s preferences in regard to the technical features of the
equipment, storing information relating to new and modified
technical features of the equipment, determining if a prospective
technical feature is relevant to the end user, based upon the
stored information, and notifying the end-user of the option to
select a relevant technical feature for addition to the equipment
(Examiner’s Answer, Paper 22 page 3, lines 6-17). The examiner
has additionally found that Traversat describes a server to send
application updates over a network to a client for the client to
determine which application to upgrade (Id., page 3, line 19 –
page 4, line 2).
The examiner then concluded that it would have been obvious
to one of ordinary skill in the art at the time the invention was
made to incorporate notifying the client via a network, taught by
Traversat, into the updating system, taught by Rowley, since
Traversat suggests that the configuration and profile files of a
client, similar to the registration file disclosed by Rowley, can
be on the server, so that the client would be notified of upgrades
over the network. According to the examiner, one of ordinary
skill in the art would have been motivated to modify Rowley to
include the network server in view of Traversat, so that the
configuration and profile files would be centrally stored to
easily determine upgrades by multiple clients to be able to have a
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mass push of upgrades. (Id., page 4, lines 2-9).
The appellant, on the other hand, draws several distinctions
between the cited art and the invention. First, the appellant
urges that Rowley’s computer client is distinct from the end user
of the present invention (Appeal Brief, paper 21, page 5, lines
10-12). Second, the appellant urges that the registration profile
of Rowley is distinct from the profile of preferences to a user of
equipment. (Id., page 5, lines 13-26). Third, the appellant
urges that Rowley neither teaches nor suggests the step of
determining if an update or a new application is relevant to the
end user based on feature and user profiles.(Id., page 6, lines 4-
16). Fourth, the appellant urges that Traversat does not teach or
suggest notifying the end user, as Traversat’s client is a
computer, not a user of equipment. (Id., page 6, last three
lines).
Prior to addressing the merits of the examiner’s rejections,
we consider the scope and meaning of certain terms that appear in
appealed claim 5. Gechter v. Davidson, 116 F.3d 1454, 1457, 1460
n.3, 43 USPQ2d 1030, 1032, 1035 n.3 (Fed. Cir. 1997); In re
Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674 (Fed. Cir.
1994). In proceedings before the U.S. Patent and Trademark
Office, unpatented claims must be interpreted by giving words
their broadest reasonable meanings in their ordinary usage, taking
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into account the written description found in the specification.
In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir.
1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989).
The specification sheds illumination on the term
“preferences” as follows:
Preferences may be explicitly supplied by the end-user in
order to be registered at server 120 and/or implicitly
derived from, e.g., a user-profile gradually built-up through
relations with the hardware and/or service provider. User-
preferences relate to, for example, context of use (e.g.
profession, hobbies, home, office, hotel, school, college,
airport, shopping mall), device characteristics, user needs.
(Specification, Page 4, lines 20-24).

It is apparent that the end-user’s “preferences” encompasses
more than user-entered data, including simply device
characteristics such as a hardware profile. Furthermore, these
end user preferences may be device specific, not necessarily user
specific, if they are solely built up by hardware relations and
reflect only device characteristics, as may be the case as stated
in the Specification.
Accordingly, we now turn to the arguments presented for
review.
The appellant’s first two arguments are closely related.
Appellant first urges that the end user is distinct from the
computer, and that Rowley’s registration file, indicating what
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applications are currently installed in the memory of a computer
and which need to be updates by a software updating mechanism,
cannot be the profile of preferences of the user (Appeal Brief,
page 4, line 24 – page 5, last line; Reply brief, page 2, lines 3-
7)).
These arguments draw a distinction between the ultimate user
of the equipment, a person, and the equipment itself, by asserting
that the profile of preferences is particular to a user of the
equipment. We agree with this general statement insofar as it
applies to the new computing paradigm - shifting value from
device-centric to functionality-centric (See, e.g., Specification,
page 2, lines 8-11). However, this is an incorrect interpretation
of the claim language.
Claim 5 requires storing a profile of the end-user’s
preferences. Such preferences are broadly defined in the
specification as recited above, and may be derived from the
hardware alone interacting with the network. Limitations are not
to be read into the claims from the specification. In re Van
Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993).
Thus, claim, broadly interpreted, is open to a situation
where the end user may be a class of persons (e.g. the on-call
attendings in a hospital, the duty nurse, etc.) or devices (all
nursing PDA’s), and not a particular person or device. The
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characteristic profile of preferences may then be derived from the
device alone (Rowley’s “registration file” at Column 1, line 27)
and still fall within the scope of claim 5.
Accordingly, we disagree with the appellant’s arguments that
the end-user’s preferences are particular to one unique user of
the equipment and that the end user and end user’s preferences
cannot be derived from the device itself.
The appellant also urges that Rowley fails to teach if a new
application or update is relevant to an end user before presenting
it to the end user. (Appeal Brief, page 6, lines 12-19). We
disagree. Rowley, column 1, lines 35-39 describes a means for
comparing the release file with a registration file to determine
which of the installed applications have upgrades available and
allowing selection of an upgrade. The selection of relevance is
made by comparison to the registration file. Accordingly, we find
this argument unpersuasive as well.
The appellant also states that Rowley neither teaches nor
suggests notifying the end user via the network of the
availability of an option to select a relevant prospective
technical feature for addition to the equipment (Appeal Brief,
page 6, lines 20-22).
This statement is not entirely accurate. Rowley describes a
remote file server having software applications and a release
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file, and a computer memory having a registration file, comparing
the registration file to the release file, and having a user
interface which allows a user to select at least one application
for upgrading. (Column 1, lines 24-50). The notification occurs
on the user interface, whose location is not specified as being
located remotely on a network. Thus, the examiner’s
characterization that Rowley discloses a server-client
relationship, but not that the end-user is notified of options via
a network (Examiner’s Answer, page 3, lines 18-19) is accurate.
The examiner does not rely on Rowley for this feature, but on the
combination of Rowley with Traversat.
The appellant urges that Traversat neither teaches nor
suggests notifying the end-user, in that the end-user is a user of
equipment and the client of Traversat is a computer. (Appeal
Brief, page 6, last paragraph). As we have discussed above, the
claims do not require that the end-user be a particular unique
individual. Traversat teaches centrally administering the update
procedure over a network (column 6, lines 19-31). Specific
teaching of update notification is described at column 13, lines
54-65. We therefore disagree that Traversat fails to teach end-
user notification over a network.

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Furthermore, we must interpret claims in the broadest
reasonable way during examination. Burlington Industries v. Quigg,
822 F.2d 1581, 1583, 3 USPQ2d 1436, 1438 (Fed. Cir. 1987) (claims
undergoing examination are given their broadest reasonable
construction consistent with the specification); In re Prater, 415
F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) (same).
We therefore affirm this rejection.
Summary of Decision
The rejection of claims 5-9 under 35 U.S.C. §103(a) as being
unpatentable over Rowley in view of Traversat, is sustained.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED

FRED E. McKELVEY )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
SALLY C. MEDLEY )
Administrative Patent Judge ) APPEALS AND
)
)
) INTERFERENCES
)
JAMES T. MOORE )
Administrative Patent Judge )

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Philips Electronics North America
Corporation
580 White Plains Road
Tarrytown, N.Y. 10591