Ex Parte Ronning et al

Patent Trial and Appeal BoardMar 29, 2017

13458367 (P.T.A.B. Mar. 29, 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. 13/458,367 04/27/2012 Joel A. Ronning 1142.015US6/D33-029-14US 6745 7590 Billion & Armitage - Digital River 7401 Metro Blvd. Suite 425 Minneapolis, MN 55439 EXAMINER NGUYEN, VAN KIM T ART UNIT PAPER NUMBER 2456 NOTIFICATION DATE DELIVERY MODE 03/31/2017 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): docketing @billionarmitage.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOEL A. RONNING, KELLY J. WICAL, and MARC A. KUKURA Appeal 2015-007766 Application No. 13/458,3671 Technology Center 2400 Before MARC S. HOFF, TERRENCE W. McMILLIN, and NORMAN H. BEAMER, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of claims 1—12. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appellants’ invention is a method for scheduling downloading of a file. An agent automatically downloads files upon request by a user and can download a file in multiple portions by tracking received byte numbers. The agent searches for updates to files by using application signatures to 1 The real party in interest is Digital River, Inc. Appeal 2015-007766 Application No. 13/458,367 uniquely identify files stored on a user’s machine and transmitting the application signatures to a server storing the updates. See Abstract. Claim 1 is exemplary of the claims on appeal: 1. A method for scheduling downloading of a file to an end user machine by interacting through a network with a server, comprising steps of: receiving from a user an identification of a file to be downloaded at the end user machine; receiving from the user, user selected schedule information at the end user machine the user selected schedule information identifying a specific future download date and time to download the file, the specific future download date and time including both an hour and minute within the hour to initiate downloading of the identified file; and automatically downloading the identified file from the server to the end user machine through the network based upon the user selected schedule information by the end user machine (i) detecting and occurrence of the specific future download date and time, and (ii) requesting download of the identified file from the server through the network in response to the detected occurrence. The Examiner relies upon the following prior art in rejecting the claims on appeal: Wing Freiberger et al. Mizuhara Chiles et al. US 5,570,373 US 6,034,652 US 6,106,570 US 6,167,567 Oct. 29, 1996 Mar. 7, 2000 Aug. 22, 2000 Dec. 26, 2000 Claims 1—6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chiles and Wing. 2 Appeal 2015-007766 Application No. 13/458,367 Claims 7—12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chiles, Freiberger, and Mizuhara. Throughout this decision, we make reference to the Appeal Brief (“App. Br.,” filed October 9, 2014) and the Examiner’s Answer (“Ans.,” mailed June 3, 2015) for their respective details. ISSUES 1. Does Wing constitute analogous art? 2. Does the combination of Wing and Chiles teach or fairly suggest a specific future download date and time including hour and minute? 3. Does the combination of Wing and Chiles teach or fairly suggest appending digital information to a previously-received portion of a file, if present? 4. Does the combination of Chiles, Freiberger, and Mizuhara teach or fairly suggest obtaining an application signature, within the meaning ascribed to the term in the Specification, and receiving recommended updates for each file having one of the application signatures sent to the server? PRINCIPLES OF LAW “The analogous-art test requires that the Board show that a reference is either in the field of the applicant's endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection. References are selected as being reasonably pertinent to the problem based on the judgment of a person having ordinary skill in the art.” In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006). 3 Appeal 2015-007766 Application No. 13/458,367 ANALYSIS Claims 1-6 We do not agree with Appellants’ argument that Wing constitutes nonanalogous art. See App. Br. 7. We agree with the Examiner that Chiles and Wing are both directed to scheduling. Wing’s disclosure concerns scheduling when to collect data, at a specific interval, over a collection period, at specific collection times such as each minute of an hour. See Ans. 7; Wing col. 12:35—50. We further agree with the Examiner that Wing’s disclosure of scheduling a specific collection time during a collection interval is reasonably pertinent to the problem with which Chiles was concerned. We conclude that combination with Chiles was therefore proper. We are unpersuaded by Appellants that the combination of Wing and Chiles fails to teach or suggest a specific future download date and time including hour and minute. See App. Br. 9-10. Wing teaches that data collection is indicated according to a pilot signal test schedule, which establishes times for collection of data. The schedule indicates the times of day for the collection of data, including scheduling particular hour(s) during a day and particular minute(s) during those hour(s). See Ans. 3, 8, 9; Wing col. 12:35—50. We therefore agree with the Examiner that the combined teachings of Chiles and Wing suggest receiving user selected schedule information identifying a specific future download date and time (Chiles), the specific future time including both an hour and minute within the hour to initiate downloading (Wing). With respect to claims 2 and 5, we agree with Appellants’ contention that Chiles fails to teach receiving a serial transmission of digital information, at the end user machine for a file beginning at an indicated 4 Appeal 2015-007766 Application No. 13/458,367 starting point, and appending the digital information, at the end user machine, to a previously-received portion of the file, if present, as recited in claim 2. The Examiner identifies column 9, line 35 to column 10, line 12 of Chiles as supposedly disclosing this limitation. See Ans. 9. We find that while the cited portion of Chiles discloses downloading software updates according to a script, the cited portion of Chiles does not disclose appending the digital information to a previously-received portion of the file, if present. Accordingly, we sustain the Examiner’s § 103 rejection of claims 1,3, 4, and 6 over Chiles and Wing. We do not sustain the Examiner’s § 103 rejection of claims 2 and 5. Claims 7-12 We are persuaded that the Examiner erred in rejecting representative claim 7 because Chiles does not teach “obtaining an application signature” as called for in the claim. See App. Br. 11. Appellants’ Specification discloses a definition of “application signature” as “any information used to uniquely identify a file.” Spec. 1103. The Examiner finds that Chiles discloses “obtaining an application signature (i.e., update script) for each file found during the scanning operation that has a particular file type (col. 21: lines 54—59).” We do not agree with the Examiner that an “update script” constitutes “any information used to uniquely identify a file.” Therefore, an update script cannot constitute an application signature; as a consequence of that, the Examiner has not established the prima facie obviousness of claim 7, or claims 8—12 dependent therefrom. Accordingly, we do not sustain the Examiner’s § 103 rejection of claims 7—12 over Chiles, Freiberger, and Mizuhara. 5 Appeal 2015-007766 Application No. 13/458,367 CONCLUSION 1. Wing constitutes analogous art. 2. The combination of Wing and Chiles fairly suggests a specific future download date and time including hour and minute. 3. The combination of Wing and Chiles does not teach or fairly suggest appending digital information to a previously-received portion of a file, if present. 4. The combination of Chiles, Freiberger, and Mizuhara does not teach or fairly suggest obtaining an application signature, within the meaning ascribed to the term in the Specification, and receiving recommended updates for each file having one of the application signatures sent to the server. ORDER The Examiner’s decision to reject claims 1, 3, 4, and 6 is affirmed. The Examiner’s decision to reject claims 2, 5, and 7—12 is reversed. 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-IN-PART 6