Ex Parte UEDA et al

Patent Trial and Appeal Board

Sep 28, 2018

14036035 (P.T.A.B. Sep. 28, 2018)

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