Ex Parte Zheng et al

Board of Patent Appeals and Interferences

Oct 11, 2011

11809664 (B.P.A.I. Oct. 11, 2011)

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.
11/809,664 05/31/2007 Jianyu Zheng SONY-25901 1348
7590 10/12/2011
HAVERSTOCK & OWENS LLP
ATTN: Jonathan O. Owens
162 North Wolfe Road
Sunnyvale, CA 94086
EXAMINER
MCCARTHY, CHRISTOPHER S
ART UNIT PAPER NUMBER
2113
MAIL DATE DELIVERY MODE
10/12/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIANYU ZHENG, JAMES LIN, MICHAEL CHANG,
and HSIN-JUNG HUANG
____________

Appeal 2010-000071
Application 11/809,664
Technology Center 2100
____________

Before JAY P. LUCAS, JOHN A. JEFFERY, and JAMES R. HUGHES,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-9, 11-20, 22, and 42-90. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention automatically diagnoses defects in electronic
devices. See generally Abstract. Claim 1 is illustrative with key disputed
limitations emphasized:
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Application 11/809,664

2
1. A method of automatically diagnosing software and hardware
defects in an electronic device, the method of diagnosing comprising:
a. executing an application automatically;
b. automatically completing a set of test features included in the
application; and
c. displaying a progress status corresponding to the set of test
features.

The Examiner relies on the following as evidence of unpatentability:
Storck US 5,434,395 July 18, 1995
Arcand US 2004/0153822 A1 Aug. 5, 2004
(filed Dec. 17, 2002)
Palm OS: Palm OS 5 Readiness Kit Test Cases 1-11 (2002), available at
web.archive.org (―Palm‖).

Sony Corp., Operating Instructions: Clié Personal Entertainment Organizer
(2002) (―Sony‖).

THE REJECTIONS
1. The Examiner rejected claims 1, 4, 6-9, 11, 12, 15, 17-20, 22, 42-45,
47-51, 53-55, 57-61, 63-68, 70-74, and 76-78 under 35 U.S.C.
§ 103(a) as unpatentable over Palm and Storck. Ans. 3-19.
1

2. The Examiner rejected claims 2, 3, 5, 13, 14, 16, 56, 69, 79-86, and
88-90 under 35 U.S.C. § 103(a) as unpatentable over Palm, Storck,
and Sony. Ans. 19-25.
3. The Examiner rejected claims 46, 52, 62, and 75 under 35 U.S.C.
§ 103(a) as unpatentable over Palm, Storck, and Arcand. Ans. 26-27.

1
Throughout this opinion, we refer to (1) the Appeal Brief filed
June 2, 2009; (2) the Examiner’s Answer mailed July 31, 2009; and
(3) the Reply Brief filed August 31, 2009.
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Application 11/809,664

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4. The Examiner rejected claim 87 under 35 U.S.C. § 103(a) as
unpatentable over Palm, Storck, Sony, and Arcand. Ans. 27-28.

THE OBVIOUSNESS REJECTION OVER PALM AND STORCK
Regarding representative claim 1, the Examiner finds that Palm
diagnoses hardware and software defects in an electronic device, but does
not (1) execute an application automatically; (2) automatically complete a
set of test features in the application; and (3) display a corresponding
progress status, but cites Storck as teaching these features in concluding that
the claim would have been obvious. Ans. 3-4.
Appellants argue that the cited prior art does not teach or suggest
automatically (1) executing an application, and (2) completing a set of test
features in the application since Storck requires user involvement and is
silent regarding automatically completing sequential tests. App. Br. 6-9;
Reply Br. 5-7 (emphasis added). The issue before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Palm and Storck collectively would have taught or suggested
automatically (1) executing an application, and (2) completing a set of test
features in the application?

FINDINGS OF FACT (FF)
1. Storck’s transaction device 1 receives two microcircuit carriers 2, 5
in slots on opposite ends of the device. In one implementation, the device’s
slot receives a connector 204 into which a modular keyboard 200 is inserted
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Application 11/809,664

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via the connector’s slot 208. With this arrangement, the keyboard can
intervene in relations involving a microcircuit card plugged into the opposite
end of the device. An analyzer 230 is also connected to the connector’s
socket 209 for testing the microcircuit’s functions according to a test
sequence stored in the associated card 5. Storck, col. 8, ll. 55-67; col. 15,
l. 60 – col. 16, l. 39; col. 20, ll. 41-67; col. 21, ll. 20-32; Figs. 1, 11-12, 16.
Storck’s modular system is shown in Figures 1 and 12 reproduced below:

Storck’s modular system in Figures 1 and 12

2. When plugged into connector 204, the keyboard can be used to
start up a series or sequence of tests as well as display messages and results
on the device’s screen 300. Test results are also recorded in the card 5’s
memory. Storck, col. 21, ll. 23-32; Figs. 1, 11-12, 16, 22.

ANALYSIS
Claims 1, 4, 6-9, 11, 42-45, and 47
This appeal hinges on one word: ―automatically.‖ We emphasize this
word, for the Examiner and Appellants reach different conclusions regarding
its meaning in the context of representative claim 1. According to the
Examiner, automatically (1) executing an application, and (2) completing a
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Application 11/809,664

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set of test features does not preclude some user intervention (e.g., starting up
the application as in Storck) so long as other aspects are automatic. Ans. 29-
30. Appellants, however, contend that automatically executing an
application also starts it automatically—a feature not taught nor suggested
by the cited prior art. Reply Br. 6.
We agree with the Examiner. First, Appellants do not define the
terms ―automatically‖ and ―executing‖ in the Specification,
2
so we construe
them with their plain meaning. The term ―automatic‖ means ―[h]aving a
self-acting mechanism that performs a required act at a predetermined time
or in response to certain conditions.‖
3
And the term ―execute‖ means ―[t]o
perform an instruction. In programming, execution implies loading the
machine code of the program into memory and then performing the
instructions.‖
4

With this construction, we see no error in the Examiner’s reliance on
Storck for at least suggesting automatically (1) executing an application, and
(2) completing a set of test features as claimed. To be sure, the user initially
triggers a series or sequence of tests of a microcircuit card by plugging in
and using the keyboard. FF 2. But nothing in the claim precludes this
manual trigger, for the test application would then be automatically executed
(i.e., by performing associated stored instructions) responsive to this trigger.
See id. In short, the user simply has no role in the device’s automatically

2
Accord App. Br. 7; Reply Br. 6 (citing dictionary definitions of
―automatically‖ and ―execute‖).
3
MCGRAW-HILL DICTIONARY OF ELEC. & COMP. ENG’G 31 (2003).
4
MICROSOFT COMP. DICTIONARY 200 (5th ed. 2002).
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executing the test application’s instructions once started.
5
That Appellants’
Specification is replete with instances of user interaction in connection with
the present invention as the Examiner indicates (Ans. 29) only bolsters our
conclusion that the recited automatic functionality does not preclude at least
some user involvement.
And as the Examiner indicates (Ans. 29-30), Storck executes a series
or sequence of tests which involves not only displaying messages and test
results, but also recording those results in memory. FF 2. Notably, Storck
conducts multiple serial and sequential tests—a fact that at least suggests
that tests are executed successively such that at least some test features are
automatically completed before performing subsequent tests in the sequence.
See id.
But even assuming, without deciding, that some tests are not
automatically completed before starting other tests in Storck’s sequence such
that they run concurrently as Appellants seem to suggest (Reply Br. 7), we
nonetheless reach a similar conclusion. Notably, Storck’s test-result storage
and display functionality, made possible by Storck’s automatically-executed
test application noted above, automatically completes a set of test features, at
least in the sense that associated messages and test results are displayed and
stored following their determination. See FF 2.
And even if we were to assume that claim 1’s automatic functionality
somehow precludes any manual activity whatsoever (which it does not for

5
Cf. Ex parte Friedman, No. 2009-009963, 2011 WL 1197547, at *3 (BPAI
2011) (non-precedential) (finding that claim reciting automatically
displaying a second desired portion of a multimedia presentation after a first
desired portion without user interaction did not preclude the user’s initially
triggering this functionality by selecting a key).
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the reasons noted above), it is well settled that where, as here, merely
providing an automatic means to replace manual activity to accomplish the
same result (i.e., executing an application and completing a set of test
features) is an obvious improvement. See In re Venner, 262 F.2d 91, 95
(CCPA 1958). Nor have Appellants shown that automatically performing
these functions in lieu of at least some manual interaction would have been
uniquely challenging or otherwise beyond the level of ordinarily skilled
artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007).
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 4, 6-9, 11, 42-45, and 47 not separately
argued with particularity.

Claims 12, 15, 17-20, 22, 48-51, 53-55, 57-61, 63-68, 70-74, and 76-78
We also sustain the Examiner’s obviousness rejection of claims 12,
15, 17-20, 22, 48-51, 53-55, 57-61, 63-68, 70-74, and 76-78. Ans. 3-19.
Despite nominally arguing these claims separately, Appellants reiterate
similar arguments made in connection with claim 1. App. Br. 9-10; Reply
Br. 8-9. We are not persuaded by these arguments, however, for the reasons
previously discussed.

THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner’s obviousness rejections of claims 2, 3,
5, 13, 14, 16, 46, 52, 56, 62, 69, 75, and 79-90. Ans. 19-28. Despite
nominally arguing these claims separately, Appellants reiterate similar
arguments made in connection with claim 1. App. Br. 11-13; Reply Br. 9-
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Application 11/809,664

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11. We are not persuaded by these arguments, however, for the reasons
previously discussed.

CONCLUSION
The Examiner did not err in rejecting claims 1-9, 11-20, 22, and 42-90
under § 103.

ORDER
The Examiner’s decision rejecting claims 1-9, 11-20, 22, and 42-90 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)(1)(iv).

AFFIRMED

ak

Haverstock & Owens, LLP
Attn: Jonathan O. Owens
162 North Wolfe Road
Sunnyvale, VA 94086