Ex Parte Stoev et al

Patent Trial and Appeal Board

Mar 29, 2016

12430161 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/430, 161 0412712009
112594 7590 03/31/2016
BlackBerry Limited (CRGO Cases)
2200 University A venue East
Waterloo, ON N2K OA 7
CANADA
FIRST NAMED INVENTOR
Orlin Vesselinov Stoev
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.
1400-106U 2604
EXAMINER
BOURZIK, BRAHIM
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
03/31/2016 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):
docketing@dimock.com
portfolioprosecution@blackberry.com
ptoboca@fggbb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ORLIN VESSELINOV STOEY and MICHAEL W. BROWN
Appeal2013-009437
Application 12/430,161 1
Technology Center 2100
Before STEPHEN C. SIU, ANDREW J. DILLON, and JENNIFER L.
McKEOWN, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-20. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
STATEMENT OF THE CASE
Appellants' invention is directed to a mobile wireless communication
system including an application server configured to provide at least one
mandatory mobile device application and may further include a mobile
wireless communications device configured to initiate a registration request
to register with a wireless communications network, and download and
1 The real party in interest is Research in Motion Limited. Br. 2.
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Application 12/430,161
install the at least one mandatory mobile device application from the
application server via the wireless communications network upon
registration during background operation and without user prompting or user
acceptance. Abstract.
Claim 1 is illustrative and is reproduced below with key disputed
limitations emphasized:
1. A mobile wireless communication system comprising:
an application server configured to provide at least one
mandatory mobile device application; and
a mobile wireless communications device
configured to initiate a registration request to register with
a wireless communications network, and
download and install the at least one mandatory
mobile device application from said application server via
the wireless communications network upon registration
during background operation and without user prompting
or user acceptance.
THE REJECTIONS
The Examiner rejected claims 1, 5-7, 11-13, 16-17, and 20 under
35 U.S.C. § 103(a) as unpatentable over O'Farrell (US 2004/0224674 Al;
publ. Nov. 11, 2004) and Deakin (US 2006/0129638 Al; publ. June 15,
2006). Final Act. 5-10.
The Examiner rejected claims 2--4, 8-10, 14, 15, 18, and 19 under
35 U.S.C. § 103(a) as unpatentable over O'Farrell, Deakin, and Birk Olsen
(US 2007/0106984 Al; publ. May 10, 2007) (hereafter "Birk"). Final Act.
10-12.
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Application 12/430,161
THE OBVIOUSNESS REJECTION BASED ON 0 'FARRELL AND DEAKIN
The Examiner finds that O'Farrell teaches the limitations of claim 1,
except a mobile wireless communications device configured to initiate a
registration request to register with a wireless communications network.
Final Act. 6.
Appellants, on the other hand, contend that the cited combination fails
to teach downloading and installing the at least one mandatory mobile
device application from said application server via the wireless
communications network upon registration during background operation
and without user prompting or user acceptance. Br. 8-10.
ISSUE
Did the Examiner err in finding that the cited combination teaches
downloading and installing the at least one mandatory mobile device
application from said application server via the wireless communications
network upon registration during background operation and without user
prompting or user acceptance, as required by claim 1?
ANALYSIS
Claims 1, 5-7, 11-13, 16--17, and 20
Based on the record before us, we find that the Examiner did not err in
rejecting claims 1, 5-7, 11-13, 16-17, and 20 as unpatentable over the
O'Farrell and Deakin.
Appellants contend that the cited combination does not teach that the
recited downloading and installing occurs "upon registration during
background operation[s] and without user prompting or user acceptance."
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Application 12/430,161
See, e.g., Br. 8-9. Appellants, in particular, explain that "[t]he claimed
invention expressly ties the feature of communications network registration
with downloading and installation of the mandatory application." Whereas
in the cited prior art references downloading and installation are instead
"tied to the login of the user into a web application server or the subscription
action, which do not equate to the claimed communications network
registration." Br. 9-10.
Notably, the Examiner relies on Deakin, not O'Farrell, to teach the
recited registration limitation. Ans. 6 and 13. See In re Keller, 642 F.2d
413, 426 (CCPA 1981) (noting that one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references); In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
Specifically, as the Examiner explains, Deakin teaches that
[ w ]hen the mobile device is switched 'ON', the handset will
initiate an authentication procedure with the mobile network, this
being standard procedure to authenticate and register the mobile
device onto the mobile operator network. This is the first thing
that happens when a device is switched on and must be
completed prior to any other services being available to a mobile.
Deakin ,-r 97. In other words, in order for a mobile device, such as
O'Farrell's client device, to communicate over a wireless communication
network with an application server, the device first registers with the
network. In view of these teachings, a skilled artisan would understand that
O'Farrell's client device registers with the wireless communications network
in order to communicate with the application server, thus "triggering" the
downloading and installation of the mandatory update. For example, once
the client device is registered, it will transmit the desired communication to
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Application 12/430,161
the application server, which in tum determines if there is a mandatory
update for downloading and installation. As such, O'Farrell and Deakin
combined teach every limitation of claim 1.
Additionally, Appellants maintain that O'Farrell's mandatory
application update "is triggered by the server checking the application and
associated data of the mobile device, rather than the registration as in the
claimed invention." Br. 10. Claim 1, though, merely requires that the
downloading and installing occur upon registration and during background
operation. As discussed above, O'Farrell's client device, in view of Deakin,
would register with the application server in order to transmit the desired
communication, the disclosed downloading and installing of the mandatory
update would thus occur upon registration. 2 As such, the cited prior art
combination teaches this limitation.
Appellants' argument regarding background operations is similarly
unpersuasive because O'Farrell teaches or suggests that the downloading
and installing of the mandatory update is during background operations. See
Ans. 17-18. Namely, O'Farrell explains that the change management
processing occurs every time the client device makes a request to the
application server for communication. O'Farrell i-f 208. Along with the
request for communication, "[t]he client can provide application version
information for all applications installed at the client device, not just the
2 Moreover, we note that a broad, but reasonable, interpretation in view of
the Specification of "upon" is "immediately or very soon after." See upon
dictionary .com (2016), http://www.dictionary.com/browse/upon? s=t (last
visited Mar. 28, 2016). O'Farrell's downloading and installing of the
mandatory updates would also be immediately or very soon after
registration.
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application for which a particular communication requested is transmitted."
O'Farrell i-f 208; Ans. 14. In other words, a skilled artisan would understand
that the analysis of the application version information and the resulting
mandatory updates are performed during background operations, i.e. are in
the background to the operations related to the requested communication.
We are also unpersuaded that the downloading and installation in
O'Farrell is "tied to the login ... or ... subscription" of the user and
requires user intervention. See Br. 9-10. To the contrary, O'Farrell, like
Appellants' Specification, discloses non-mandatory as well as mandatory
updates. Compare Spec. 15-16 with O'Farrell i-f 209. O'Farrell expressly
describes mandatory application updates or upgrades that will be
downloaded and installed "without user involvement or intervention."
O'Farrell i-f 209; Ans. 6 and 13. Therefore, we agree with the Examiner that
the combination of 0 'Farrell and Deakin teach the limitations of claim 1.
Therefore, for the reasons discussed above and by the Examiner,
claim 1, as well as claims 5-7, 11-13, 16-17, and 20 not argued with
particularity, are unpatentable over O'Farrell and Deakin.
THE OBVIOUSNESS REJECTION BASED ON O'FARRELL, DEAKIN, AND BIRK
Claims 2--4, 8-10, 14, 15, 18, and 19
Appellants present no separate argument with respect to claims 2--4,
8-10, 14, 15, 18, and 19. Br. 11. Instead, Appellants rely on the arguments
presented regarding the base independent claim 1. Br. 10-11. As discussed
above, we find these arguments unpersuasive. Therefore, claims 2--4, 8-10,
14, 15, 18, and 19 are unpatentable over O'Farrell, Deakin, and Birk.
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DECISION
The Examiner's decision rejecting claims 1-20 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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