Ex Parte UEDA et alDownload PDFPatent Trial and Appeal BoardSep 28, 201814036035 (P.T.A.B. Sep. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/036,035 09/25/2013 27562 7590 10/02/2018 NIXON & V ANDERHYE, P.C. 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Masani UEDA 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. RYM-723-3846 1012 EXAMINER LUU,BINHK ART UNIT PAPER NUMBER 2191 NOTIFICATION DATE DELIVERY MODE 10/02/2018 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASANI UEDA, YOICHI OOSHIMA, YOHEI TSUKADA, YOSUKE FUJINO, and JUMPEI WADA Appeal2018-001266 Application 14/036,035 1 Technology Center 2100 Before ERIC B. CHEN, MATTHEW R. CLEMENTS, and SCOTT E. BAIN, Administrative Patent Judges. BAIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1 and 4--18, which constitute all claims pending in the application. Claims 2 and 3 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Nintendo Co., Ltd. as the real party in interest. App. Br. 3. Appeal2018-001266 Application 14/036,035 STATEMENT OF THE CASE The Claimed Invention Appellants' invention relates to software upgrades, and specifically, to ensuring that software is updated or patched as needed prior to a user's desired upgrade. Spec. ,r,r 7, 11, 42, 51. For example, if firmware is released in versions over time, a device's installed version of firmware may be too old to control an update to the most recent version of firmware. Id. at ,r,r 2-3. The invention causes the device to first update to an intervening version of firmware (more recent), which then controls the update to the most recent version of the firmware. Id. at ,r,r 7, 11, 51. Claims 1 and 10-14 are independent. Claim 1 is illustrative of the invention and the subject matter of the appeal, and reads as follows: 1. An information processing apparatus to be controlled by system software, the information processing apparatus comprising a processor system including at least one processor, the processor system being configured to: store first system software; store second system software for updating; start any one of a plurality of pieces of system software; acquire first update data for updating the first system software and second update data for updating the second system software; determine whether or not a series of updating processes controlled by the processor system are to be executed, and in response to the determination that the series of updating processes are to be executed, as the series of updating processes, execute processes of 2 Appeal2018-001266 Application 14/036,035 (a) updating the stored second system software using the second update data while the information processing system is controlled by the first system software, (b) switching the first system software to the updated second system software after the second system software has been updated, and (c) updating the first system software using the first update data while the updated second system software is started and the information processing apparatus is controlled by the second system software. App. Br. 25 (Claims App.) ( emphasis added). The Re} ections on Appeal Claims 1, 4, 6, and 9-13 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Frakes2 and Geandert. 3 Final Act. 2-10. 2 Dan Frakes, Installing Mountain Lion: Our complete guide, Macworld https://www.macworld.com/article/1167693/software-utilities/installing- mountain-lion-our-complete-guide.html (published July 25, 2012, last visited Sept. 26, 2018). The Final Action and Answer refer specifically to two excerpts (chapters) of the guide, respectively sub-titled Hands on with Mountain Lion's OS X Recovery and Internet Recovery; and Installing Mountain Lion: What you need to know. Only these two excerpts appear in the record. Our citations in this Decision, accordingly, refer to the manually-counted, continuous pagination of the excerpted reference ( consisting of two parts) as it appears in the record. 3 Zuletzt Geandert, iMac (Slot Loading): Install iMac Firmware 4.1.9 Before Mac OS X 10.2 or later, https://support.apple.com/de-de/HT2377 (published Jan. 6, 2011, last visited Sept. 26, 2018). 3 Appeal2018-001266 Application 14/036,035 Claims 5, 7, 8, 14, and 17 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Frakes, Geandert, and Taylor. 4 Final Act. 10-15. Claims 15, 16, and 18 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Frakes, Geandert, Taylor, and Dandekar. 5 Final Act. 15- 17. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments presented in this appeal. Arguments which Appellants could have made but did not make in the Briefs are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv). On the record before us, we are not persuaded the Examiner erred. We adopt as our own the findings and reasons set forth in the rejections from which the appeal is taken and in the Examiner's Answer, and provide the following discussion for highlighting and emphasis. Claims 1, 4, 6, and 9-13 Regarding claim 1, Appellants contend the Examiner erred in finding the prior art teaches or suggests "determin[ing] ... a series of updating processes ... and in response ... execut[ing] processes of (a) updating the stored second system software ... while the ... system is controlled by the first system software, (b) switching ... to the updated second system software ... , and ( c) updating the first system software ... while the 4 Dave Taylor, How do I upgrade my AppleTV? AskDaveTaylor, http:// www.askdavetaylor.com/how_do_i_upgrade_my_appletv/ (published Mar. 15, 2012, last visited Sept. 26, 2018). 5 Dandekar et al. (US 2008/0120613 Al; May 22, 2008). 4 Appeal2018-001266 Application 14/036,035 [system] is controlled by the [updated] second system software." App. Br. 15-20; Reply Br. 2-9. Specifically, Appellants contend Frakes does not teach or suggest executing a series of software updates in response to determining that series. App. Br. 16-17; Reply Br. 2---6. Appellants further contend Geandert does not cure this alleged deficiency, but rather, merely teaches that a particular version of firmware may be required to update an OS (operating system). App. Br. 17-18; Reply Br. 2---6. Appellants also argue the Examiner erred by concluding it would have been obvious to modify Frake such that the updating steps disclosed therein are automated. Reply Br. 6-7. We, however, are unpersuaded of error. As the Examiner finds, Frakes teaches updating firmware as needed to perform a desired OS update, namely, "Internet Recovery" software (firmware update) for recovering Mountain Lion (OS update). Final Act. 3- 5; Ans. 22-23; Frakes 1, 3. First, Frake teaches the available OS installs the Internet Recovery. Id. at 3. The updated firmware, i.e., the firmware and its added Internet Recovery, then upgrades the OS by installing Mountain Lion. Id. Appellants contend neither Frakes nor Geandert teaches or suggests executing a series of software updates in response to determining that series. App. Br. 16-17; Reply Br. 2---6. As the Examiner finds, however, Geandert specifically teaches software updating steps in a series. Final Act. 5---6; Ans. 22-23. Specifically, Geandert teaches that updating an OS (from version 9.1 to version 10.2) requires the series of booting the available OS (9.1), installing a firmware update (version 4.1.9) as a prerequisite of installing the OS update (10.2), and then installing the OS update (10.2). Geandert 1. 5 Appeal2018-001266 Application 14/036,035 Further, both Frakes (at 3) and Geandert (at 1) teach that OS updates require the series of running an available OS, updating firmware as a prerequisite to updating the OS, and using the updated firmware to update the OS. See, e.g., Geandert 1 (teaching that users follow instructions to determine the series of updates needed for installing Mac OS X 10.2, and then accordantly first installing iMac Firmware 4.1.9). Appellants also contend the Examiner erred by concluding it would have been obvious to automate the steps disclosed in Frakes, without first showing the steps were "known manual activity which accomplished the same result." Reply Br. 6-7. Claim 1, however, does not recite the steps are "automated" or "automatic. " 6 Accordingly, we are not persuaded the Examiner erred in rejecting claim 1. Appellants argue dependent claim 4 separately. Claim 4 recites "the updated second system software has been automatically started" and "the first system software is automatically updated." Appellants argue that Frakes and Geandert do not teach any automatic starting or updating of firmware and OS. App. Br. 20-21; Reply Br. 9-11. As the Examiner finds, however, Frakes teaches the sequence of installing and then starting the firmware, and of installing and then starting the OS, without intervening action by the user. Ans. 28; Frakes 3 ("install 6 In contrast, dependent claim 4, discussed below, recites that step ( c) of claim 1 is performed automatically. 6 Appeal2018-001266 Application 14/036,035 [the] firmware update ... OS X Internet Recovery" and then "start Internet Recovery"), 4 ("restore ... your entire system, including the OS," and "[ o ]nee this process is finished ... your Mac will restart"). Moreover, Frakes teaches installing and starting (rebooting) as part of the overall process of recouping a fully-functional OS. Frakes 1. We, like the Examiner, find a person of ordinary skill would understand Frakes as teaching that the installing and restarting is automatic, e.g., the system performs the chain of necessary steps without user intervention. See, e.g., Frakes 5 ("the estimated download time was roughly five hours"). Accordingly, we are not persuaded the Examiner erred in rejecting dependent claim 4. Appellants do not argue independent claims 10-13, and dependent claims 6 and 9, separately from claim 1. App. Br. 15-20. Accordingly, for the same reasons discussed above, we are not persuaded the Examiner erred in rejecting those claims. For the foregoing reasons, we sustain the obviousness rejection of claims 1, 4, 6, and 9-13 over Frakes and Geandert. Claims 5, 7, 8, 14, and 17 Appellants do not argue dependent claims 5, 7, 8, and 17 separately from their independent claims. App. Br. 15-20. For the same reasons discussed above, we are not persuaded the Examiner erred in rejecting claims 5, 7, 8, and 17. Regarding dependent claim 14, Appellants argue the Examiner erred in finding Taylor teaches or suggests "the second system software is started 7 Appeal2018-001266 Application 14/036,035 and controlling" an update of a third system software. App. Br. 21-22; Reply Br. 12. Appellants contend Taylor teaches updating firmware, but "is silent with respect to the updating mode being run by the firmware (instead of the Apple TV operating system)." Reply Br. 12. The Examiner, however, relies not on Taylor alone, but the combination of Frakes and Taylor as teaching the disputed limitation. Final Act. 3-5; Ans. 22-23. As the Examiner finds, Frakes teaches an update mode capable of updating a desktop's firmware and OS. Id.; Frakes 3. As the Examiner further finds, Taylor teaches updating both an OS and the firmware serviced by the OS (e.g., applications). Final Act. 14; Ans. 30; Taylor 1 ("update and improve the firmware or operating system"). The Examiner finds, in view of these teachings, it would have been obvious to modify Frakes' updating mode to install the OS (Mountain Lion) and its needed firmware. Final Act. 14; Ans. 30; Frakes 19-20 ("Check (again) for updates" section); id. at 20 ("Mac laptops require a firmware update to support Mountain Lion's new Power Nap."). Appellants' arguments regarding Taylor alone do not demonstrate error in the Examiner's findings. See In re Keller, 642 F.2d 413,426 (CCPA 1981) (holding "one cannot show non-obviousness by attacking references individually where ... the rejections are based on combinations of references"). Accordingly, we are not persuaded the Examiner erred in rejecting dependent claim 14. For the foregoing reasons, we sustain the obviousness rejection of claims 5, 7, 8, 14, and 17 over Frakes, Geandert, and Taylor. 8 Appeal2018-001266 Application 14/036,035 Claims 15, 16, and 18 Appellants do not argue remaining dependent claims 15, 16, and 18 separately from their respective independent claims, discussed above. App. Br. 15-18. Accordingly, for the same reasons discussed above, we are not persuaded the Examiner erred in rejecting claims 15, 16, and 18. We sustain the obviousness rejection of claims 15, 16, and 18 over Frakes, Geandert, Taylor, and Dandekar. DECISION We affirm the Examiner's decision rejecting claims 1 and 4--18. 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. § 4I.50(f). AFFIRMED 9 Copy with citationCopy as parenthetical citation