AIRWATCH LLC

Patent Trials and Appeals Board

Mar 25, 2022

2021000414 (P.T.A.B. Mar. 25, 2022)

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. 15/660,990 07/27/2017 ADAM STEPHEN RYKOWSKI W384.01 (500104-1610) 6468 152577 7590 03/25/2022 Thomas | Horstemeyer, LLP (VMW) 3200 Windy Hill Road, SE Suite 1600E Atlanta, GA 30339 EXAMINER FAN, JOHN ART UNIT PAPER NUMBER 2454 NOTIFICATION DATE DELIVERY MODE 03/25/2022 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): docketing@thomashorstemeyer.com ipadmin@vmware.com uspatents@thomashorstemeyer.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ADAM STEPHEN RYKOWSKI, HUDA OSMAN, MITHILA TOPLE, JACOB POSTEMA, JEREMY DEJIACOMO, HARIT PATEL, and MANIKANDAN SIGAMANI ___________________ Appeal 2021-000414 Application 15/660,990 Technology Center 2400 ____________________ Before ST. JOHN COURTENAY III, ELENI MANTIS MERCADER, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as AirWatch, LLC (Appeal Br. 2). Appeal 2021-000414 Application 15/660,990 2 We REVERSE. STATEMENT OF THE CASE Disclosed Invention and Exemplary Claim Appellant’s disclosed invention, entitled “Dynamic Construction of Configuration Profiles for Settings Common Across Different Operating Systems” (see Title), relates generally to “bring-your-own-device (BYOD) technology in the workplace” (Spec. ¶ 3), in which “an enterprise can permit its employees to use their own devices to access enterprise data, such as email and corporate documents” (Spec. ¶ 3). Appellant has recognized the need for providing device management capabilities to allow workplace administrators to set policies and settings managing configurations for the employees’ devices (see Spec. ¶ 4). With this in mind, Appellant discloses methods and systems for providing the capability for enterprise administrators to “remotely install applications, resources, or other data on an employee’s device” (Spec. ¶ 4). Exemplary independent claim 1 under appeal reads as follows: 1. A system, comprising: at least one computing device; and program instructions executable in the at least one computing device that, when executed by the at least one computing device, cause the at least one computing device to: identify a value from a field of at least one user interface, the field being associated with a setting common to a plurality of operating systems; [D] determine a first variable name for inclusion in a first configuration profile in association with the value based at least in part on a first one of the plurality of operating systems; [E] determine a second variable name for inclusion in a second configuration profile in association with the Appeal 2021-000414 Application 15/660,990 3 value based at least in part on a second one of the plurality of operating systems, the second one of the plurality of operating systems being different than the first one of the plurality of operating systems; [A] generate the first configuration profile such that the value is a parameter of the first variable name for deployment to a first client device having the first one of the plurality of operating systems installed thereon; and [B] generate the second configuration profile such that the value is a parameter of the second variable name for deployment to a second client device having the second one of the plurality of operating systems installed thereon, [C] wherein the first configuration profile and the second configuration profile are each configured to, when installed on a respective client device, configure the respective client device and designate a respective agent application as a device administrator, the agent application as the device administrator being configured to control access to at least one software or hardware function of the respective client device. Appeal Br. 23-24, Claims App. (emphases, formatting, and bracketed lettering added in the order argued by Appellant in the briefs). Remaining independent claims 8 and 15 recite a non-transitory computer-readable medium (claim 8) and a computer-implemented method (claim 15) for generating configuration profiles having limitations commensurate in scope with limitations A, B, D, and E of claim 1. As discussed below, limitations A, B, D, and E, which recite determining first and second variable names for inclusion in first and second configuration profiles (claim 1, limitations D and E) and then generating first and second configuration profiles (claim 1, limitations A and B), will be dispositive of the instant appeal. Appeal 2021-000414 Application 15/660,990 4 The Examiner’s Rejections (1) Claims 1, 5-8, 12-15, and 18-20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Buerk et al. (US 2015/0040239 A1; published Feb. 5, 2015) (hereinafter, “Buerk”) and Dabbiere et al. (US 2014/0330945 A1; published Nov. 6, 2014) (hereinafter, “Dabbiere”) (Final Act. 6-19). (2) Claims 2-4, 9-11, 16, and 17 stand rejected under 35 U.S.C. § 103 as being unpatentable over Buerk, Dabbiere, and Attar et al. (US 2014/0047228 A1; published Feb. 13, 2014) (hereinafter, “Attar”) (Final Act. 19-24). Appellant’s Dispositive Contention Appellant contends that the Examiner erred in rejecting claims 1, 8, and 15 under 35 U.S.C. § 103 based on the failure of (i) Buerk to teach or suggest limitations D and E; and/or (ii) Dabbiere to teach or suggest limitations A and B, as recited, for example, in claim 1 (see Appeal Br. 15- 20; Reply Br. 5-7). Principal Issue on Appeal Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 11- 22) and the Reply Brief (Reply Br. 4-10), the following dispositive issue is presented on appeal: Has Appellant shown that the Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 103 over the base combination of Buerk and Dabbiere, because the base combination fails to teach or suggest the generating and determining steps of limitations A, B, D, and E, as recited in claim 1, and as commensurately recited in remaining independent claims 8 and 15? Appeal 2021-000414 Application 15/660,990 5 ANALYSIS We have reviewed Appellant’s arguments in the Briefs (Appeal Br. 11-22; Reply Br. 4-10), the Examiner’s rejection (Final Act. 6-24), and the Examiner’s response to Appellant’s arguments (Ans. 5-11). Appellant’s arguments have persuaded us of error in the Examiner’s rejection of all of the disputed claims under 35 U.S.C. § 103. In formulating the obviousness rejections, with regard to limitations A, B, D, and E of claim 1, and the commensurate limitations found in claims 8 and 15, the Examiner maps (i) Buerk to limitations D and E; and (ii) Dabbiere to limitations A and B, of claim 1, and the commensurate limitations recited in claims 8 and 15 (see Final Act. 6-9, 11- 13, 15-18). For essentially the same reasons argued by Appellant in the Briefs, and based upon our review of the record, we find a preponderance of the evidence supports Appellant’s arguments (see Appeal Br. 17-18; Reply Br. 5) that Buerk’s melding of device-specific configuration profiles for use with multiple devices to create a single profile for a user group does not teach or suggest the generation of first and second configuration profiles for first and second individual devices as recited in limitations D and E of claim 1 (and as similarly recited in claims 8 and 15). Based upon a preponderance of the evidence, we also find Appellant’s arguments (see Appeal Br. 18-19; Reply Br. 7) persuasive that Dabbiere’s configuration profiles are not operating system specific configuration profiles as required by claims 1, 8, and 15. As a result, Appellant’s arguments (see Appeal Br. 15-16, 20; Reply Br. 5-7) that the combination of Buerk and Dabbiere fails to teach or Appeal 2021-000414 Application 15/660,990 6 suggest limitations A, B, D, and E of claim 1 (and the commensurate limitations found in claims 8 and 15), are persuasive. In view of the foregoing, we agree with Appellant’s contentions (see Appeal Br. 17-20; Reply Br. 5-7) that the Examiner has not adequately shown that the base combination of Buerk and Dabbiere, or the base combination taken with Attar (see Appeal Br. 21; Reply Br. 9), teaches or suggests the disputed limitations A, B, D, and E of claim 1, and the commensurate limitations recited in claims 8 and 15. As a result, based on the record before us, Appellant has shown the Examiner erred in rejecting independent claims 1, 8, and 15, and thus claims 5-7, 12-14, and 18-20 depending respectively therefrom, under 35 U.S.C. § 103, and for similar reasons we also cannot sustain the Examiner’s obviousness rejection of claims 2-4, 9-11, 16, and 17 over the base combination of Buerk and Dabbiere. CONCLUSION2 2 Although not before us on Appeal, we leave it to the Examiner to evaluate whether claims 1-20 should be rejected based on the doctrine of non- statutory, obviousness-type double patenting over (i) claims 1-7 of USPN 10,360,047 issued on July 23, 2019; (ii) claims 1-20 of USPN 10,678,567 issued on June 9, 2020; and/or (iii) claims 1-20 of USPN 10,936,999 issued on March 2, 2021, either alone or in combination with another reference. Notably, claim 1 of USPN 10,936,999 recites generating steps similar to limitations A and B of claim 1 on appeal, as well as determining steps Appeal 2021-000414 Application 15/660,990 7 Appellant has shown the Examiner erred in rejecting independent claims 1, 8, and 15 under 35 U.S.C. § 103 over the base combination of Buerk and Dabbiere. Thus, we reverse the Examiner’s obviousness rejections of claims 1- 20 under 35 U.S.C. § 103. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5-8, 12- 15, 18-20 103 Buerk, Dabbiere 1, 5-8, 12- 15, 18-20 2-4, 9-11, 16, 17 103 Buerk, Dabbiere, Attar 2-4, 9-11, 16, 17 Overall Outcome 1-20 REVERSED similar to limitations D and E of claim 1 on appeal. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02.