Ex Parte Katsaros et al

Patent Trial and Appeal BoardApr 7, 2016

12042209 (P.T.A.B. Apr. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/042,209 03/04/2008 Georgios Katsaros 113648 7590 04/15/2016 Patent Portfolio Builders, PLLC P.O. Box 7999 Fredericksburg, VA 22404-7999 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. 0110-179/P24644 USl 2905 EXAMINER DENG, ANNA CHEN ART UNIT PAPER NUMBER 2191 NOTIFICATION DATE DELIVERY MODE 04/15/2016 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): Emily@ppblaw.com Tina@ppblaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEORGI OS KA TSAR OS and PAUL NOV AK Appeal2014-000396 Application 12/042,209 1 Technology Center 2100 Before CARL W. WHITEHEAD JR., CARLL. SILVERMAN, and AMBER L. HAGY, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-23. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. STATEMENT OF THE CASE The invention relates to modifying resource files used by Java applications. Abstract. Claim 1 is exemplary of the matter on appeal: 1 According to Appellants, the real party in interest is Telefonaktiebolaget LM Ericsson. App. Br. 2. Appeal2014-000396 Application 12/042,209 1. i~ .. method of updating a resource file used by a Java softv,rare application executable by an electronic processor in a user equipment for a communication system, comprising the steps of: finding an error arising from the Java resource file, wherein the error is an execution error of the Java software application; forming a report message relating to the resource file from which the error arose for transmission through an available communication network to a provider of the application corresponding to the resource file, wherein the provider is identified in the report message by an attribute value in a descriptor file that corresponds to the resource file; sending the report message; receiving in the user equipment a resource file responsive to the report message; and installing the received resource file in the user equipment to correct the error. App. Br. 10 (Claims Appendix). THE REJECTIONS Claims 1, 9, and 16 stand rejected under 35 U.S.C. Â§ 112, second paragraph. Final i~\:..ct. 2. Claims 1-3, 6, 7, 9-11, 14, 16-18, 21, and 22 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Patel et al. (US 2008/0046786 Al, published Feb. 21, 2008) (hereinafter "Patel"), in view of Owen et al. (US 2009/0253424 Al, published Oct. 8, 2009) (hereinafter "Owen"). Final Act. 3-8. Claims 4, 12, and 19 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Patel, Owen, and Halbritter et al. (US 2007 /0038570 Al, published Feb. 15, 2007) (hereinafter "Halbritter"). Final Act. 8-9. 2 Appeal2014-000396 Application 12/042,209 Claims 5, 13, and 20 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Patel, Owen, and Hursey et al. (US 2010/0304735 Al, published Dec. 2, 2010) (hereinafter "Hursey"). Final Act. 9-12. Claims 8, 15, and 23 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Patel, Owen, and Smith (US 2002/0152399 Al, published Oct. 17, 2002) (hereinafter "Smith"). Final act. 12-13. ANALYSIS The 35 US. C. Â§ 112, paragraph 2, rejection The Examiner finds claims 1, 9, and 16 are indefinite due to the lack of antecedent basis for "the Java resource file" in line 4. Final Act. 2. Appellants argue, and we agree, "a resource file used by a Java software application" is commonly shortened to "the Java resource file" (line 4) and the Specification describes Java resource files. App. Br. 5 (citing Spec. 5, 11. 32-33). The Examiner additionally finds, and we agree, it is unclear if "a resource file" recited in line 1 is the "the Java resource file" recited in line 4 or the "resource" file recited in lines 12 and 14. Ans. 13. The Examiner further finds Appellants argue a resource file used by a Java software application may not be a Java resource file (App. Br. 7) and, therefore, "a resource file used by a Java software application in line 1 may not be the 'Java resource file in line 4."' Ans. at 13-14. Appellants present no arguments why the Examiner's additional findings are unreasonable or in error. We agree with the Examiner the claims are unclear, and we find the scope of the claims cannot be determined with reasonable certainty by one of ordinary skill in the art. Therefore, we 3 Appeal2014-000396 Application 12/042,209 sustain the rejection of claims 1, 9, and 16. i\:\. claim is invalid for indefiniteness if its language, when read in light of the specification and the prosecution history, "fail[ s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, Inc. v. Biosig Insts., Inc., 134 S. Ct. 2120, 2124 (2014). The 35 USCÂ§ 103(a) rejections The Examiner finds Patel teaches claim 1 's limitations for a software application, except it does not explicitly teach "a Java software application; . . . wherein the provider is identified ... by an attribute value in a descriptor file that corresponds to the resource file." Final Act. 3-5. The Examiner finds Owen teaches this limitation. Id. at 4--5. finds: Regarding the combined teaching of Patel and Owen, the Examiner Owen actually teaches a Java resource file (JAR file), and Java software application (applications developed using the Java programming language) and it would be obvious[ly ]to one having ordinary skill in the computer art at the time of the invention was made to apply Patel's method of finding an execution error from Owen's [] Java resource file (emphasis added). The combination would be obvious because finding/detecting execution/run time errors is a well- known technique in any software application, and moreover, Appellant did not point out what is a novelty for finding an execution error from a Java resource file other than from any programming language resource file. Ans. 15 (emphasis added). Appellants argue the Examiner's suggested combination of Patel and Owen does not disclose or suggest independent claims 1, 9, and 16 and is based on improper reading of the terms "Java resource file" and "Java Software application." App. Br. 5---6. According to Appellants, the well- 4 Appeal2014-000396 Application 12/042,209 kno\'l/n meaning of Java "resource" is "a piece of data, such as images ... that can be accessed by the code of an application, ... but more usually Java resources are contained in Java archive ("JAR'') file(s) of the application" (emphasis added). Id. at 6. As discussed below, we are not persuaded by Appellants' arguments and, instead, agree with the Examiner's findings. Appellants argue Patel does not teach a Java software application and, therefore does not teach "finding an error arising from a Java resource file, forming any report message relating to the resource file from which the error arose, sending the report message, etc., as recited in claim 1 [.]" App. Br. 6. Appellants argue Owen teaches an entire application, not just a Java resource file, can be downloaded over the internet and installed in a mobile device after consideration of the application descriptor file. Id. at 7 (citing Owen i-f 32). According to Appellants, Owen does not teach receiving in a UE (user equipment) a Java resource file responsive to an error report message. Id. Moreover, Appellants argue Owen discusses JAR and JAD files and "a JAD file is not a Java resource file as understood by those of skill in this art, and Owen does not describe anything about Java resource files." Id. Appellants argue: like Patel, Owen does not teach identifying a Java application provider by an attribute value in a descriptor file that corresponds to a Java resource file, and finding an error arising from a Java resource file, forming any report message relating to the resource file from which the error arose, sending the report message, etc. App. Br. 7. The Examiner finds, and we agree, Owen teaches a Java software application wherein applications developed using the Java programming language include a Java Archive (JAR) file that contains Java resource files 5 Appeal2014-000396 Application 12/042,209 and a Java i\ .. pplication Descriptor (JAD) file). Final Act. 15 (citing Ov,ren i-f 34). The Examiner notes that Appellants point out that "usually [Java] resource are contained in Java archive ("JAR") file(s) of the application." Ans. 15 (citing App. Br. 6). We are not persuaded by Appellants' argument that "Owen teaches ... an entire application, not just a Java resource file, can be downloaded" (App. Br. 7) because the rejection is based on the combined teachings of Patel and Owen as understood by one of ordinary skill in the art. Moreover, this argument is not commensurate with the scope of the claims, as the claims do not recite 'just a Java resource file." Cf In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("Many of appellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims."). Regarding the Examiner's suggested combination of Patel and Owen, we are not persuaded by Appellants' argument: [ e ]ven if one had thought to completely rework Patel somehow with Owen (an unlikely thought, as that would have totally altered the purpose of Patel that relies on a comprehensive record of device operation), one would still have been left with downloading Owen's entire application and not just a resource file, with no suggestion to identify a Java application provider by an attribute value in a descriptor file that corresponds to a Java resource file, or finding an error arising from a Java resource file, or forming any report message relating to the resource file from which the error arose, or sending the report message, etc. App. Br. 8. As discussed above, we agree with the Examiner's finding that one of ordinary skill in the art would recognize the software application teaching of Patel would be used with the Java resource files of Owen. Ans. 15. 6 Appeal2014-000396 Application 12/042,209 The test for obviousness is not \'l1hether the features of a secondar'J reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (Fed. Cir. 1981). "[A] court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ," such as the complementary teachings of the references. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The reason to combine the cited references is found in the references and in the knowledge of one of ordinary skill in the art. We determine the benefit gained from the combination, articulated by the Examiner, would have motivated an ordinarily skilled artisan to make such a combination. On this record, Appellants do not present sufficient evidence that the combination of Patel and Owen is "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19). Nor have Appellants provided objective evidence of secondary considerations, which our reviewing court guides "operates as a beneficial check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013). In view of the above, we sustain the 35 U.S.C. Â§ 103(a) rejection of independent claims 1, 9, and 16. Appellants argue the additional cited references do not remedy any of the deficiencies of Patel and Owen and do not argue separately the remaining dependent claims over the cited references. App. Br. 8. As discussed above, we do not agree there are 7 Appeal2014-000396 Application 12/042,209 deficiencies and, therefore, 'l.fe also sustain the rejection of dependent claims 2-8, 10-15, and 17-23. See 37 C.F.R. Â§ 41.37(c)(l)(iv) (2014). DECISION We affirm the Examiner's decision rejecting claims 1, 9, and 16 under 35 U.S.C. Â§ 112, second paragraph. We affirm the Examiner's decision rejecting claims 1-23 under 35 U.S.C. Â§ 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 8