Ex Parte Rothrock

Patent Trial and Appeal Board

Apr 4, 2016

12677272 (P.T.A.B. Apr. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/677,272 09/09/2010
23696 7590 04/06/2016
QUALCOMM INCORPORATED
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
FIRST NAMED INVENTOR
George Allen Rothrock
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.
071161 9172
EXAMINER
MIRZA, ADNAN M
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
04/06/2016 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):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE ALLEN ROTHROCK
Appeal2014-003426
Application 12/677,272
Technology Center 2400
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JON M. JURGOV AN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-003426
Application 12/677,272
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4--15, and 17-53. Claims 3 and 16 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Exemplary Claim
Appellant's invention relates to content delivery and receipt over a
digital broadcast network. Spec. i-f 1. Exemplary claim 1 under appeal reads
as follows:
1. A method for transmitting scheduled downloads
over a wireless communications system, comprising:
scheduling a forthcoming update at a plurality of times;
notifying a plurality of client devices of a forthcoming
update; and
transmitting the update at each of the scheduled times, to
allo\x1 the plurality of client devices an opportunity to receive
the update.
The Examiner's Rejections1
The Examiner rejected claims 15, 17-21, 42--47, and 53 under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention. Final Act. 2-3.
1 Throughout this opinion we refer to the Final Office Action ("Final Act.")
mailed Mar. 12, 2013, and the Examiner's Answer ("Ans.") mailed on Nov.
19, 2013.
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Application 12/677,272
The Examiner rejected claims 1, 2, 4--15, and 17-53 under 35 U.S.C.
§ 102( e) as anticipated by Chaney (US 200710150892; June 28, 2007). Final
Act. 4--6.
Appellant's Contentions2
1. Appellant contends the Examiner erred by finding independent claims
15, 42, and 53 are indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
App. Br. 6-8; Reply Br. 2-3. Appellant argues the Specification describes
sufficient structure, material, or acts, which include a device, system,
process, hardware, firmware, and a combination of hardware and software,
as required for the recited "means" limitations. Id. (citing Spec. i-fi-1 30, 83).
Appellant further cites Figures 6 and 7, and the corresponding disclosure in
the Specification, to support the structure, material, or acts required for the
"means for scheduling," "means for notifying," etc. Id.
2. Appellant contends Chaney discloses only a single software
transmission process at a particular time, and thus does not disclose
scheduling and transmitting an update at a "plurality of times," as recited in
independent claims 1, 8, 15, 22, and 25. App. Br. 8-9; Reply Br. 3--4.
3. Appellant contends the portions of Chaney cited by the Examiner to
reject claim 5 do not disclose "receiving a request to send the update at a
time different from the scheduled times" and "sending a unicast dedicated
update in response to the request." App. Br. 9; Reply Br. 4--5.
2 Throughout this opinion we refer to the Appeal Brief ("App. Br.") dated
Aug. 12, 2013, and the Reply Brief ("Reply Br.") dated Jan. 14, 2014.
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Application 12/677,272
4. Appellant contends Chaney's single transmission process does not
disclose an "update scheduled at alternative times" and "tuning in at one of
the scheduled times to receive the update," as recited in independent claims
26, 42, 50, and 51. App. Br. 9-10; Reply Br. 5---6.
5. Appellant contends the portions of Chaney cited to reject independent
claims 35, 48, 52, and 53 discuss downloading an update at a particular rate,
but Chaney does not disclose a "background process to receive the
scheduled update."3 App. Br. 11-12; Reply Br. 6-7.
ANALYSIS
Rejection under 35 U.S. C. § 112, second paragraph
Regarding the Examiner's rejection of claims 15, 17-21, 42--4 7, and
53 under 35 U.S.C. § 112, second paragraph, we do not find Appellant's
contention 1 persuasive. Appellant's Specification discloses the "means" for
the claimed transmission can be software per se. Spec. ,-r,-r 30, 83. Because
software per se, without disclosing any specific algorithm or hardware
components that perform the recited functions, is not "structure, material, or
acts" according to § 112, sixth paragraph, we agree with the Examiner the
claims are indefinite under§ 112, second paragraph. See Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1352 (Fed. Cir. 2015)(en bane),
superseding 770 F.3d 1371 (Fed. Cir. 2014) (the specification must provide
"adequate" corresponding structure to achieve the claimed function in order
3 Separate patentability is not argued for dependent claims 2, 4, 6, 7, 9-14,
17-21, 23, 24, 27-34, 36--41, 43--47, and 49. Except for our ultimate
decision, these claims are not discussed further.
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Application 12/677,272
to satisfy 35 U.S.C. § 112, second paragraph.)(citing In re Donaldson Co.,
16 F.3d 1189, 1195 (Fed. Cir. 1994)).
Thus, we sustain the rejection of claims 15, 17-21, 42--47, and 53
under 35 U.S.C. § 112, second paragraph, as being indefinite.4
Rejection under 35 U.S.C. § 102(e)
Regarding the rejection of claims 1, 2, 4--15, and 17-53 under
35 U.S.C. § 102(e), we have reviewed the Examiner's rejections in light of
Appellant's arguments (App. Br. 6-12; Reply Br. 2-7) that the Examiner
erred, and we disagree with Appellant's above contentions 2-5. We adopt
as our own ( 1) the findings and reasons set forth by the Examiner in the
action from which this appeal is taken (Final Act. 2-6) and (2) the reasons
set forth by the Examiner in the Examiner's Answer (Ans. 4--7) in response
to Appellant's Appeal Brief. We concur with the conclusions reached by the
Examiner. We highlight and address specific findings and arguments for
emphasis as follows.
As to Appellant's contention 2 that Chaney does not disclose
scheduling and transmitting an update at a plurality of times, we are not
persuaded of error because we agree with the Examiner's finding that
Chaney discloses multiple update transmission processes. Final Act. 4--6;
Ans. 3--4 (citing Chaney i-fi-122 and 25-27). Chaney discloses an initial
update is scheduled at a particular time (Chaney i122), and if that update is
4 Should prosecution continue, the Examiner is advised to consider rejecting
the claims under 35 U.S.C. § 101 as being directed to non-statutory subject
matter, as a method implemented exclusively in software is not patent
eligible.
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Application 12/677,272
not successful, another update is scheduled and transmitted (see also Chaney
i-f 28), which we agree constitutes scheduling and transmitting an update "at
a plurality of times." Therefore, we sustain the Examiner's rejection of
independent claims 1, 8, 15, 22, and 25 under 35 U.S.C. § 102(e).
Regarding Appellant's contention 3 that Chaney does not disclose
sending unicast update in response to a receiving a request to send the
update at a time different from the scheduled times, we do not find
Appellant's contention persuasive because Chaney discloses an individual
device sending a request for the update in the event that the initial update
attempt was not successful, and the system repeating the transmission to that
device. Chaney i-f 28. We find this request by a device for retransmission to
be a "request to send the update at a time different than the scheduled time,"
and the system sending the update to that individual device to be a "unicast
transmission." Thus, we sustain the Examiner's rejection of claim 5 under
35 U.S.C. § 102(e).
As to Appellant's contention 4 that Chaney does not disclose an
update scheduled at alternative times, we are not persuaded of Examiner
error because we find Chaney discloses multiple update transmission
processes, as discussed with respect to contention 2 supra. Chaney discloses
a retransmission is scheduled if the initial update attempt is not successful
(Chaney i-f 28), which we agree constitutes an update scheduled "at
alternative times." Therefore, we sustain the Examiner's rejection of
independent claims 26, 42, 50, and 51under35 U.S.C. § 102(e).
Regarding Appellant's contention 5 that Chaney does not disclose a
background process to receive the scheduled update, we do not find
Appellant's contention persuasive of error. Chaney's update transmission
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Application 12/677,272
process uses Out of Band channels instead of the In-Band channels that are
used for video content delivery. See Chaney i-fi-15, 45. Under the broadest
reasonable interpretation of "background process," we find the use of Out of
Band, or background, channels to transmit and receive the updates to be a
background process, because Appellant's claims and Specification do not
preclude such an interpretation. Thus, we sustain the Examiner's rejection
of independent claims 35, 48, 52, and 53 under 35 U.S.C. § 102(e).
DECISION
The Examiner's rejection of claims 15, 17-21, 42--4 7, and 53 under
35 U.S.C. § 112, second paragraph, is affirmed.
The Examiner's rejection of claims 1, 2, 4--15, and 17-53 under
35 U.S.C. § 102(e) is affirmed.
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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