Ex Parte O et al

Patent Trial and Appeal BoardMay 31, 2017

10411835 (P.T.A.B. May. 31, 2017)

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. 10/411,835 04/11/2003 Patrick O'Neill 82235924 3722 22879 HP Tnr 7590 06/02/2017 EXAMINER 3390 E. Harmony Road Mail Stop 35 RUTTEN, JAMES D FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER 2197 NOTIFICATION DATE DELIVERY MODE 06/02/2017 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): ipa.mail@hp.com barbl@hp.com y vonne.bailey @ hp. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PATRICK O'NEILL and BINDU RAMA RAO Appeal 2014-003397 Application 10/411,835 Technology Center 2100 Before JOHNNY A. KUMAR, MICHAEL J. STRAUSS, and MONICA S. ULLAGADDI, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants have filed a Request for Rehearing under 37 C.F.R. § 41.52 (hereinafter “Req. Reh’g.”), dated May 15, 2017, of our Decision mailed March 15, 2017 (hereinafter “Decision”) to the extent we sustained the Examiner’s rejections of claims 1—3, 8, 16—19, 33—35, 37, and 39-41 under 35 U.S.C. § 103(a) over combinations including Kalwitz, US 5,815,722 (“Kalwitz HIT). We have reconsidered our decision in light of Appellants’ Request for Rehearing, but we decline to change the decision. Appeal 2014-003397 Application 10/411,835 THE REQUEST FOR REHEARING A request for rehearing must state with particularity the points believed to have been misapprehended or overlooked. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing. See 37 C.F.R. § 41.52(a)(1). In addition, a request for rehearing is not an opportunity to merely express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked. The proper course for an Applicant dissatisfied with a Board decision is to appeal to the United States Court of Appeals for the Federal Circuit, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145. ANALYSIS Appellants contend this Board overlooked arguments made at page 13 of the Appeal Brief and page 5 of the Reply Brief in connection with the Kalwitz ’722 reference. Req. Reh’g. 2. In particular, Appellants reassert argument that “the cited teaching of Kalwitz [’722] ‘is not testing of memory of a mobile device and, more importantly, such testing is not performed after downloading an update package to a mobile device and prior to application of the update package to the mobile device.’” Id. (emphasis added). Appellants’ contention is unpersuasive because it merely argues that a point not explicitly addressed in our opinion is a point misapprehended or overlooked by appearance. Appellants’ contention fails to consider an acknowledgement in our Decision that we have reviewed the Examiner’s 2 Appeal 2014-003397 Application 10/411,835 rejections in light of Appellants’ arguments, disagree with Appellants’ conclusions and “adopt as our own” the Examiner’s findings and reasoning as set forth in the Final Action and Examiner’s Answer. Decision 6. That is, Appellants reargue issues that have already been decided, and thus fail to identify a point misapprehended or overlooked. Substantively, Appellants’ arguments are unpersuasive of Examiner error. Appellants argue Kalwitz ’722 is deficient because the reference “fails to disclose or suggest the claimed ‘memory of a mobile device.’” App. Br. 13; Req. Reh’g 2. However, this argument was addressed by the Examiner (Ans. 4—5) and adopted as part of our Decision (see Decision 6). In particular, Appellants’ argument ignores the Examiner’s finding, which we adopted,that Imamatsu, not the argued Kalwitz ’722 reference, teaches the “memory in the mobile device” recited by claim 1. Final Act. 4—6. Appellants’ further argument that Kalwitz ’722’s validation prior to installing the expansion board in a printer is also unpersuasive for the reasons given by the Examiner (Ans. 4—5) and adopted by our Decision. In particular, Appellants argue Kalwitz[ ’722]’s teaching of testing the network expansion board prior to installing it in the printer clearly fails to disclose or suggest that the “integrity of the memory of the mobile device ” is “verified after the downloading of the update packase to the mobile device and prior to application of the downloaded update package to the mobile device. ” Req. Reh’g 2. 3 Appeal 2014-003397 Application 10/411,835 However, as explained by the Examiner: lmamatsu discloses downloading an update package to a mobile device, Kravitz [’385] teaches the use of an agent used in verification prior to application of the update package, and Kalwitz [’722] teaches validation of content on a device after downloading. While no single reference discloses each limitation, the combination of references teaches the claim features. Ans. 5. Thus, Appellants’ argument fails to address the Examiner’s finding that lmamatsu teaches downloading the update package and Kravitz ’385, not the argued Kalwitz ’722 reference, teaches verification prior to application of the update package. In connection with the requirement for validation after downloading, we agree with the Examiner in finding Kalwitz ’722’s downloading step S2403 followed by firmware verification step S2404 as depicted in Figure 24 taken together with the associated text appearing in the Specification of Kalwitz ’722 teaches or suggests validation of content on a device after downloading. See Final Act. 8. Therefore, the combination of lmamatsu, Kravitz ’385, and Kalwitz ’722 teaches or suggests the disputed limitation. Appellants fail to explain persuasively why Kalwitz ’722’s disclosure that testing may be performed prior to installation in a printer negates or otherwise diminishes Kalwitz ’722’s teaching of update package downloading followed by verification. DECISION For the reasons supra, Appellants have failed to persuade us that we have misapprehended or overlooked any of Appellants’ arguments or other points made by Appellants. Therefore, Appellants’ Request for Rehearing 4 Appeal 2014-003397 Application 10/411,835 has been granted to the extent that our Decision has been reconsidered, but is denied with respect to making any modifications to the Decision. 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). REHEARING DENIED 5