Ex Parte Martin et al

Patent Trial and Appeal Board

Nov 17, 2016

13457925 (P.T.A.B. Nov. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/457,925 04/27/2012 Sean James Martin
23483 7590 11/21/2016
WILMERHALE/BOSTON
60 STATE STREET
BOSTON, MA 02109
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.
2212124.00122US2 9264
EXAMINER
DOAN,HUANV
ART UNIT PAPER NUMBER
2437
NOTIFICATION DATE DELIVERY MODE
11/21/2016 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):
whipusptopairs@wilmerhale.com
teresa.maia@wilmerhale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN JAMES MARTIN and SIMON LUKE MARTIN
Appeal2016-000983
Application 13/457,925
Technology Center 2400
Before THU A. DANG, STEPHEN C. SIU, and
CARLL. SILVERMAN, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
A. INVENTION
According to Appellants, the invention "generally relates to computer
networks, and more specifically, to incremental deployment of computer
software program logic on client devices in a network" (Spec. i-f 2).
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Application 13/457,925
B. REPRESENTATIVE CLAIM
Claim 1 is exemplary:
1. A method for requesting a computer software program logic by
a client computing device from a server in a network, the method at the
server compnsmg:
receiving, via at least one processor, a request for computer software
program logic from a client computing device along with a first list
comprising details about one or more modules running on the client
computing device;
determining, via the at least one processor and based at least in part on
the first list, a second list comprising details of one or more modules
required to deploy the computer software program logic on the client
computing device;
checking, via the at least one processor, whether the one or more
modules of the second list need to be substituted based on their availability
on the server;
updating, via the at least one processor, the second list based at least
in part on the check performed;
checking, via the at least one processor, whether the client computing
device has permission rights for accessing the one or more modules of the
updated second list; and
transmitting, via the at least one processor, an object comprising the
one or more modules of the updated second list that are not on the first list to
the client computing device based at least in part on the check performed,
wherein the updated second list comprises details of the one or more
modules required for deployment of computer software program logic on the
client computing device such that after transmission of the object begins no
further information regarding the modules running on the client computing
device are provided.
C. REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
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Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the teachings of Hendler et al. (US 2002/0042833 Al; pub. Apr. 11,
2002) and Grey et al. (US 2007/0038520 Al; pub. Feb. 15, 2007).
II. ISSUES
The principal issues before us are whether the Examiner erred in
finding:
1) the Specification, as originally filed, does not have support for
newly amended limitation: "after transmission of the object begins no
further information regarding the modules running on the client computing
device are provided" (claim 1 ).
2) Hendler, in view of Grey, teaches or suggests "receiving ... from a
client ... a first list comprising details about one or more modules running
on the client computing device;" "determining, ... a second list comprising
details of one or more modules required to deploy the computer software
program logic ... ;"and "transmitting . .. an object comprising the one or
more modules of the updated second list that are not on the first list to the
client computing device .... "(claim 1, emphases added).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Hendler
1. Hendler discloses extracting files from archive and streaming the
extracted files from the server to the client (Abstract), wherein, for
transmitting modules from a first computer (server) to a second computer
(client), a module set is formed at the first computer, each module being
associated with an application executing at the second computer, and the
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selection being made in accordance with predetermined selection criteria
independent of the second computer's execution environment (i-f 15).
Streamed files from the server to the client include a streaming control file
used by the server to predict modules that will be needed at the client (i-f 36).
2. As downloaded modules are executed by the client, the client sends
control data to the server which is used to request particular modules from
the server (i-f 35).
3. If a module is not already available at the client, the server will
complete delivery of the module to the client (i-f 38).
4. In some scenarios, control data is sent to the server to request needed
procedures, and in response, the server halts the current module stream and
sends the requested module (i-f 62).
IV. ANALYSIS
35 U.S. C. § 112, first paragraph.
The Examiner rejects claims 1-20 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement
(Non-Final Rej. 7). In particular, the Examiner finds claim limitation "after
transmission of the object beings no further information regarding the
modules running on the client computer device are provided" is "new
matter" which "was not described in the originally disclosed specification as
filed" (Non-Final Rej. 8).
In response, Appellants contend that the Specification, in particular,
steps, 540, 542, and 546 "indicate that a complete list of required modules
and code libraries is built" and "each of the items on the list is retrieved ... ,"
wherein "[t]he object contains all the software program code necessary to
create the evolved client software" (App. Br. 8). Thus, "one of ordinary skill
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in the art would clearly understand that no additional information regarding
the modules operating on the client is required by the server or provided to
the server once the transmission of the object begins" (id.).
We do not find Appellants' contention persuasive.
Here, although Appellants point to support in the Specification for
items on the "complete" list being retrieved (id.), there is no support in the
Specification that no further information is provided as recited in the claims.
That is, even assuming arguendo that the specified sections of the
Specification disclose that the complete list is retrieved and thus no
additional information is "required'' as Appellants contend (id., emphasis
added), there is no positive teaching or disclosure that further information
(required or not) is not provided.
The mere absence of a positive recitation of a claim element in the
Specification is not basis for its express exclusion in the claims. MPEP §
2173.05(i). Our review court guides "Negative claim limitations are
adequately supported when the specification describes a reason to exclude
the relevant limitation," describing disadvantages of the excluded part will
suffice. Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1355 (Fed. Cir. 2015)
(quoting Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351
(Fed. Cir. 2012)).
Here, however, the Specification fails under these requirements. See
generally, Spec. In particular, there is no mention of not providing further
information, but moreover, the Specification does not discuss any advantage
or disadvantage for not providing further information. Id. Thus, even if
assuming arguendo that the Specification discloses that no additional
information is "required" because a complete list has already been provided,
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as Appellants contend (App. Br. 8), the Specification still does not discuss
any advantage/ disadvantage for not providing additional information. In
fact, as the Examiner points out, "appellant's specification's paragraph 69 ..
. discloses the client may send similar future request to the server for
requesting software modules from the server," and thus, even Appellants'
Specification discloses sending further information comprised in future
requests (Ans. 21 ).
Any claim containing a negative limitation which does not have basis
in the original disclosure is correctly rejected under 35 U.S.C. § 112(a) or
pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement. See MPEP § 2173.05(i). For the above
reasons, we find that the preponderance of evidence supports the Examiner's
determination that the claims are not adequately supported by a written
description under 35 U.S.C. § 112, first paragraph.
35 u.s.c. § 103
Appellants contend "Hendler states that control data may be used to
request particular modules from the server" and "the requested module is
streamed to the client" (App. Br. 11 ). However, according to Appellants, for
the control data of Hendler to be analogous to the claimed "first list," "the
server would not stream the requested modules to the client" (id.). That is,
Appellants contend the claims require that "none of the modules listed on
the first list are included in the object transmitted to the client" and thus for
the control data of Hendler to be analogous to the "first list" "the modules
streamed to the client would not include any module identified by the
control data" (App. Br. 10). Accordingly, "Hendler fails to teach or suggest
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that the object transmitted to the client comprises one or more modules of
the updated second list that are not on the first list," as recited (App. Br. 12).
Appellants further contend Hendler also does not disclose or suggest
that "after transmission of the object begins no further information regarding
the modules running on the client computing device are provided" (App. Br.
14--15). Appellants then contend Grey fails to cure the deficiencies of
Hendler (id.).
We have considered all of Appellants' arguments and evidence
presented. However, we disagree with Appellants' contentions regarding the
Examiner's rejections of the claims. We agree with the Examiner's findings,
and are unpersuaded of error with the Examiner's conclusion that the
claimed subject matter would have been obvious over the combined
teachings.
As an initial matter of claim construction, we give the claims their
broadest reasonable interpretation consistent with the Specification. See In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We note that although
Appellants contend the claims require that "none of the modules listed on
the first list are included in the object transmitted to the client" (App. Br. 10,
emphasis added), such contention is not commensurate in scope with the
language of the claims. That is, the claims do not require that "none" of the
modules on the first list are included in the transmitted object, but rather the
object comprises "one or more modules of the updated second list that are
not on the first list" (claim 1, emphasis added).
Hendler discloses that the server predicts/ determines modules
required at the client independent of the client's environment (FF 1 ), the
client sends control data to the server (FF 2), and if a module is not available
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at the client or a procedure is needed from the server, the server completes
delivery of the module to the client (FF 3--4). In other words, Hendler
discloses that a server receives control data from the client with details about
modules running on the client (FF 2), the server having predicted modules
that will be needed at the client independent of the client's environment (FF
1 ), determines that if the module is not already available at the client or if
further procedures are needed, and the server transmits a data stream to the
client comprising module(s) or procedures not already available at the client
(FF 3--4).
We agree with the Examiner's interpretation that "Hendler's control
data is analogous to the claimed first list" wherein Hendler's "control data"
comprises "details about one or more modules running on the client device"
(Ans. 22). As the Examiner finds and we agree, in Hendler, "[b ]ased on the
information in the received control data" which includes "details about
current software modules running on the client device and software modules
available at the client device," the server will "use a streaming control
file/information to determine the particular modules that will be needed at
the client device" and then "send the particular modules, which will be
needed but not already present at the client device's local storage, to the
client device" (Ans. 22-23). That is, the server sends "one or more
modules" that will be needed but that are not identified in the control data as
running on the client device (id.).
Thus, we find no error with the Examiner's reliance on Hendler for
disclosing or at least suggesting "receiving ... from a client ... a first list
comprising details about one or more modules running on the client
computing device;" "determining, ... a second list comprising details of one
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or more modules required to deploy the computer software program
logic ... ;" and "transmitting ... an object comprising the one or more modules
of the updated second list that are not on the first list to the client computing
device ... , " as required by claim 1.
As to Appellants' contention that Hendler also does not disclose or
suggest that "after transmission of the object begins no further information
regarding the modules running on the client computing device are provided"
(App. Br. 14--15), as discussed above, we find there is no basis in the cited
section of Appellants' Specification for adding the negative limitation and
therefore, we give no patentable weight to the limitation at issue.
Nevertheless, assuming arguendo our reviewing court may give full
patentable weight to the aforementioned contested, but unsupported,
negative limitation, we agree with the Examiner that Hendler at least
suggests this contested limitation (Ans. 23-24). In particular, as the
Examiner explains, similar to Appellants' invention, in Hendler, "[a]ny
module that will be needed but not available at the client will be determined
and completely transmitted to the client" wherein the server "does not
require[ sic] the client to provide further information regarding the modules
running on the client after the transmission of the file containing the
particular modules" (id.).
Although Appellants also contend that "one of ordinary skill in the art
would not be motivated to combine Hendler with another reference" such
that "after transmission of the object begins no further information regarding
the modules running on the client computing device are provided" (App. Br.
15-1 7), Appellants are viewing the references from a different perspective
than that of the Examiner. Here, we agree with the Examiner's reliance on
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Hendler (rather than "Hendler with another reference") for disclosing and
suggesting the negative limitation (Ans. 23-24). Further, although
Appellants contend that Hendler teaches away from the claimed invention
(App. Br. 15), Appellants provides no argument or showing how Hendler
actually criticizes, discredits, or otherwise discourages investigation into the
claimed invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
On this record, we find no error with the Examiner's finding the
combination of Hendler and Grey teaches or suggests the contested
limitations recited in claim 1 and claims 8 and 14 falling therewith (App. Br.
19). Appellants do not provide substantive arguments for the dependent
claims depending therefrom (id.). Accordingly, we also affirm the rejections
of these claims.
V. CONCLUSION AND DECISION
We affirm the Examiner's rejections of claims 1-20 under 35 U.S.C. §
112, first paragraph, and under 35 U.S.C. § 103(a).
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 )(iv).
AFFIRMED
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