Ex Parte lmai et al

Patent Trials and Appeals Board

Feb 28, 2019

14371289 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/371,289 07/09/2014
27538 7590 03/04/2019
Gibson & Dernier LLP
89 Headquarters Plaza North
PMB 1469
Morristown, NJ 07960
FIRST NAMED INVENTOR
Kenichi Imai
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.
545-478 7231
EXAMINER
SOLTANZADEH, AMIR
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
info@gdiplaw.com
cmburgos@gdiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENICHI LMAI, SHIGERU ENOMOTO,
HIROSHI SAITO, TOSHIMASA AOKI, and
SATOSHI HASIMOT0 1
Appeal 2018-007111
Application 14/371,289
Technology Center 2100
Before BRADLEY W. BAUMEISTER, SHARON PENICK, and
RUSSELL E. CASS, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-11. App. Br. 6-10. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellants list Sony Computer Entertainment Inc. as the real party in
interest. Appeal Brief filed December 27, 2017 ("App. Br.") 2.
2 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents, for their respective details: the Final Action mailed
September 1, 2017 ("Final Act."); the Examiner's Answer mailed May 17,
2018 ("Ans."); and the Reply Brief filed July 5, 2018 ("Reply Br.").
Appeal 2018-007111
Application 14/371,289
STATEMENT OF THE CASE
Appellants describe the present invention as follows:
When a content acquisition unit acquires a part of full-size
application software, an installation processing unit installs the
acquired part, and an execution unit sets the installed application
software to be executable. While the execution unit is executing
the application software, the content acquisition unit continues to
download the application software. A display processing unit
changes a display mode of an icon image differently when a part
of the application software is installed and when the application
software is installed in its entirety.
Abstract.
Independent claim 1, reproduced below with modified formatting,
illustrates the claimed invention:
1. An information processing system provided with a server
for storing application software and with an information
processing apparatus for downloading application software from
the server,
wherein the information processing apparatus comprises:
an acquisition unit configured to download
application software;
a display processing unit configured to display an
icon image of the downloaded application software;
an input unit configured to receive an operation of
selecting an icon image; and
an execution unit configured to execute the
application software,
wherein the display processing unit displays a first icon
image that occurs when the application software is executable
while the application software has been downloaded in its
entirety and a second icon image that occurs when the application
software is executable while a part of the application software
has been downloaded, each in a different display mode, and
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Application 14/371,289
wherein, when the input unit receives an operation of
selecting the second icon image, the execution unit executes the
application software.
Claims 1-11 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Li (US 2003/0097400 Al; published May 22, 2003), Decker
(US 2010/0313159 Al; published Dec. 9, 2010) and Zeller
(US 2011/0185043 Al; published July 28, 2011). Final Act. 3-22.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
DETERMINATIONS DURING PROSECUTION AND CONTENTIONS
The Examiner finds that Li discloses an information processing
system including an information processing apparatus that comprises an
acquisition unit configured to download application software, an input unit
configured to receive an operation of selecting an icon image, and an
execution unit configured to execute the application software. Final Act. 3-
4 ( citing Li ,ri1). The Examiner finds that Li does not teach or suggest a
display processing unit configured to display an icon image of the
downloaded application software or teach the final two limitations of claim 1
("wherein the display processing unit ... " and "wherein, when the input unit
receive an operation ... "). Id. at 4.
The Examiner finds that Decker teaches
a display processing unit configured to display an icon
image of the downloaded application software ... , wherein the
display processing unit displays a first icon image that occurs
when the application software is executable while the application
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Application 14/371,289
software has been downloaded in its entirety. . . and a second
icon image that occurs when the application software is
executable while a part of the application software has been
downloaded, each in a different display mode.
Id. at 4--5 (citing Decker ,r,r 22, 23; FIGs. 1, 2). The Examiner concludes
that it would have been obvious to have combined Li and Decker "so that
the user is provided with [a] good experience within [a] web browser to
show [an] accurate representation of the progress made on [a] particular
download of web content." Id. at 5---6.
The Examiner further finds that the combination of Li and Decker
does not teach the claim limitation, "when the input unit receives an
operation of selecting the second icon image, the execution unit executes the
application software." Id. at 6. The Examiner finds that Zeller teaches this
limitation. Id. (citing Zeller ,r,r 41, 92). The Examiner explains that
Zeller. . . talks about translating user commands to client
application 132 into requests for operations that the Sandbox
Manager performs. It further mentions that user commands can
be "button clicks". In the broadest reasonable interpretation, the
button click can be on a selectable icon image. [Zeller also] talks
about sending a[ n] "exec" command to Sandbox Manager and in
return the Sandbox Manager executes the virtual application at
least "partially implemented". As a result, Zeller discloses a
selectable icon image that would invoke execution of a partially
downloaded application program.
Final Act. 23 (citing Zeller ,r,r 41, 92; FIG. 5).
The Examiner further clarifies
[From Figure 5 and paragraphs 30 and 128 of Zeller, w ]e can
conclude that there are two parts in [Zeller's] virtual application,
which are the virtual operating system and a single or more
multiple virtualized application files. Further, there are two
stages in executing the virtual application. The first stage
involves launching the virtual operating system, and the second
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Application 14/371,289
stage involves executing the startup executables, which are the
one or more virtual application files. And from paragraph [O 128]
we can conclude that the execution can take place when the
application is partially downloaded. As a result, Zeller teaches
execution of a partially downloaded application program.
Reply Br. 2-3.
The Examiner determines that it would have been obvious to have
combined further the teachings of Zeller with those of Li and Decker
in order to enable preemptively transferring the portion of a
particular virtualized application file to reduce the amount of
time required to transfer the particular virtualized application file
after a user enters the user command into the client application
that requests the download and execution of the particular
virtualized application file, so that downloading time is reduced.
Final Act. 6-7.
Appellants argue that none of the references, either alone or
combined, teaches or suggests "a selectable icon image that would invoke
execution of a partially downloaded application program." App. Br. 8.
According to Appellants, "Decker ... merely provides the user with
information as to how the downloading is proceeding." Id. They contend
that Decker's download progress indicator changes appearance as the
downloading progresses from beginning to end (Reply Br. 4--5 ( citing
Decker FIG. 2, states 202, 204, 206)) and that each of the indicators include
an "X" that merely permits a user to click to terminate a download (id. at 5
(citing Decker ,r 23)).
Appellants argue in relation to Zeller, that it is unreasonable to
interpret a virtual operating system program and a virtual application file
together as a single application file or that downloading these two separate
files reasonably can be interpreted as two stages of a single download.
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Reply Br. 3--4. Appellants also argue the following regarding Zeller's
downloading of the application file, itself:
The user does not select an icon image to start execution of a
partially downloaded virtual application. The only time the user
provides a command is prior to the download of the virtual
application -- such that a user provides a single user command
to automatically download the virtual application from the
sandbox manager 134 to the client application 132 ([see Zeller
,r 79]). The user does not provide any further commands (and
certainly not to an icon) to begin execution of the virtual
application because the execute command is automatically
issued by the client application 132. Finally, the client
application 132 does not issue the execute command until the
entire virtual application is downloaded (decision box 470 =
YES) as is made abundantly clear in paragraph [0092].
Reply Br. 3.
ANALYSIS
Decker teaches progress indicators ( or icons) that provide a visually
distinguishable indication depending on the state of a requested operation.
Decker ,r,r 22-23; FIG. 2. For example, a darker-background indicator may
indicate a state 202 in which "the web browser is actively retrieving the
requested web page content, but [wherein] none of the requested content is
currently available for viewing on the web browser display." Id. ,r 22. In
contrast, a lighter background indicator may indicate a state 204 in which
"some portion of usable content is available for viewing on the web browser
application." Id. The absence of a progress indicator may indicate a
state 206 in which the loading of the web page is complete. Id. ,r 23.
However, Decker does not teach or suggest that a partially
downloaded application may be executed by clicking on the progress
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Application 14/371,289
indicator, itself. Decker only teaches that the progress indicator may include
an "X" that a user can click to stop the downloading. Id.
Nor does Zeller cure this deficiency of Decker. Even if the Examiner
is correct that Zeller teaches an execution unit that executes application
software when an input unit receives an operation of selecting a click button
or icon image (Final Act. 6 ( citing Zeller ,r 41) ), the Examiner has not
sufficiently established that such a selected icon image indicates the
uncompleted progress of some previously initiated download, or that such a
selected icon is different from an icon that occurs when the software has
been downloaded in its entirety. Thus, the Examiner has not demonstrated
that Zeller discloses "a second icon image that occurs when the application
software is executable while a part of the application software has been
downloaded" and executing the application software "when the input unit
receives an operation of selecting the second icon image," as required by
claim 1.
The Examiner's combination of Zeller with Li and Decker to yield the
disputed limitations appears to be a result of improper reliance on
knowledge gleaned only from Appellants' claim 1.
Any judgment on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill in the art at the time the claimed invention was
made and does not include knowledge gleaned only from
applicant's disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395, (CCPA 1971).
For these reasons, Appellants have persuaded us of error in the
Examiner's obviousness rejection of independent claim 1. Accordingly, we
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do not sustain the Examiner's rejection of that claim, or of claims 2-11,
which either depend from claim 1 or otherwise recite similar limitations.
DECISION
The Examiner's decision rejecting claims 1-11 is reversed.
REVERSED
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