Ilya Firman et al.

Patent Trials and Appeals Board

Sep 4, 2019

13411048 - (D) (P.T.A.B. Sep. 4, 2019)

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.
13/411,048 03/02/2012 Ilya Firman 1233-619US01 3513
98449 7590 09/04/2019
Shumaker & Sieffert, P.A.
1625 Radio Drive, Suite 100
Woodbury, MN 55125
EXAMINER
SOWA, TIMOTHY JOHN
ART UNIT PAPER NUMBER
2448
NOTIFICATION DATE DELIVERY MODE
09/04/2019 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):
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ILYA FIRMAN and FICUS KIRKPATRICK
____________

Appeal 2018-004731
Application 13/411,0481
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, JOYCE CRAIG, and
SCOTT E. BAIN, Administrative Patent Judges.

BAIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–8 and 10–27, which constitute all claims
pending in the application. Claim 9 has been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify Google Inc. as the real party in interest. App. Br. 1.
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STATEMENT OF THE CASE
The Claimed Invention
Appellants’ claimed invention relates to software distribution, and
specifically, to an application marketplace. Spec. ¶¶ 1–4. Appellants’
invention permits convenient distribution of “supplemental files” associated
with an application, such as “graphics, audio, or multimedia assets that are
associated with the application.” Id. at ¶ 4. Claims 1, 13, and 21 are
independent. Claim 1 is illustrative of the invention and the subject matter
of the appeal, and reads as follows (with disputed limitations emphasized):
1. A computer-implemented system for distributing
application files to a computing device from an application
marketplaces, the system comprising:
a server system interface arranged to receive, from a client
application of the computing device that is one of a plurality of
client computing devices, a communication that corresponds to a
request to obtain or update a software application for the
computing device; and
an application marketplace server system programmed to:
identify, in response to the communication, application
files that include
(a) a particular version of an executable application
binary file that corresponds to the software application and
(b) a particular version of one or more supplemental files
that is a data resource of the software application and that each
of a plurality of versions of the executable application binary file,
including the particular version of the executable application
binary file, is arranged to access and use while executing, and to
send information that relates to the application files to the client
application in response to receiving the communication,
wherein a plurality of versions of the supplemental files
for the software application are targeted to respective device
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groups based, at least in part, on one or more of: device screen
size and device graphics processing capacity,
wherein the application marketplace server system is
programmed to perform the following operations to identify the
particular version of the supplemental files for the computing
device: determine a particular device group to which the
computing device belongs based on one or more of: the
computing device’s screen size and the computing device’s
graphics processor, and
identify, from among the plurality of versions of the
supplemental files and independent of the particular version
being selected from among the plurality of versions of the
executable application binary file, the particular version of the
supplemental files for the computing device based on the
particular device group for the computing device, and
identify stored files on the computing device that
correspond to the application files, determine particular ones of
the application files to download based on the identified stored
files and the information that relates to the application files sent
from the application marketplace server system, and initiate
download of the particular ones of the application files,
wherein determining the particular ones of the application
files to download comprises identifying the executable
application binary while excluding a set of the particular version
of the one or more supplemental files upon determining that the
set of the particular version of the one or more supplemental files
are stored on the computing device and do not need updating on
the computing device.
App. Br. 9–10 (Claims App.) (emphases added).

The Rejections on Appeal
Claims 1–3, 13, 15, 21, 23, and 25–27 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Zargahi, et al. (US
2010/0262619 A1; pub. Oct. 14, 2010) (“Zargahi”), McGuire et al. (US
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Application 13/411,048
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2005/0132382 A1; pub. June 16, 2005) (“McGuire”), and Byrnes et al. (US
8,346,223 B1; iss. Jan. 1, 2013) (“Byrnes”). Final Act. 2–23.
Claims 4, 6, 16, and 17 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Zargahi, McGuire, Byrnes,
and Cheng, et al. (US 6,151,643; iss. Nov. 21, 2000) (“Cheng”). Final Act.
24–25.
Claims 5 and 22 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Zargahi, McGuire, Byrnes, and Flaming, Top 10
Questions on ThinApp. (pub. Dec. 21, 2009). Final Act. 26–27.
Claims 7, 8, 11, 18, and 19 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Zargahi, McGuire, Byrnes,
and Teodosiu et al. (US 7,536,458 B2; iss. May 19, 2009). Final Act. 27–
31.
Claims 10 and 20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Zargahi, McGuire, Byrnes, and Koreeda, et al. (US
2010/0138536 A1; pub. Jun. 3, 2010). Final Act. 31–32.
Claims 12 and 14 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Zargahi, McGuire, Byrnes, and Giannini, et al. (US
8,286,155 B1; iss. Oct. 9, 2012). Final Act. 32–34.
Claim 24 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Zargahi, McGuire, Byrnes, and Howard, et al. (US
2011/0246618 A1; pub. Oct. 6, 2011). Final Act. 34–35.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Brief are deemed to be waived. See
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37 C.F.R. § 41.37(c)(1)(iv). On the record before us, we are not persuaded
the Examiner erred. We adopt as our own the findings and reasons set forth
in the rejections from which the appeal is taken and in the Examiner’s
Answer, and provide the following discussion for highlighting and emphasis.
Rejection of Claim 1
Appellants argue the Examiner erred in finding the prior art teaches or
suggests identifying particular versions of supplemental files “independent
of the particular version . . . of the executable binary file” being selected, as
recited in claim 1. App. Br. 5–6 (emphasis added); Reply Br. 1.
Specifically, Appellants contend the Examiner erred in finding the disputed
limitation is satisfied by McGuire’s teaching of “download[ing]”
supplemental files in a manner “distinct from” executable application binary
files. App. Br. 5–6. Appellants argue that in McGuire, “the selection of a
supplemental file is dependent on the version of the executable application
binary file.” Id. at 6. We, however, are not persuaded by Appellants’
arguments.
As the Examiner finds, Zargahi teaches a “mobile device application
provision system” including “mobile device applications and various items
of data related to the provision of applications,” such as metadata related to
the applications. Ans. 5; Zargahi Fig. 3, ¶¶ 16–17, 36, 40, 43–44. Zargahi
teaches delivery of application-related data “includ[ing] binary (or other
type) application files)” as well as the corresponding metadata. Id.
The Examiner relies on the combination of Zargahi with McGuire, not
McGuire alone, as teaching the file version identification recited in the
disputed limitation. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (“Non-obviousness cannot be established by attacking references
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individually where the rejection is based upon the teachings of a
combination of references.”). The Examiner finds, and we agree, that
McGuire “discloses the selection of individual files for updating such that
each and every file selected for updating is treated as a distinct [i.e.,
independent] individual file, with each file to be updated having its own
versioning.” Ans. 5–6; McGuire ¶¶ 8, 101, 103. Appellants argue that
McGuire’s “selection of a ‘delta patch’ [is] dependent on the ‘versions of an
installed file,” rather than “independent” as recited in claim 1, but as the
Examiner finds, McGuire’s file selection is “not [to map] supplemental files
. . . to any version of the executable application binary file,” but rather to
“versions of the corresponding supplemental files already installed on a
given client device” (i.e., an update). Ans. 6; McGuire ¶¶ 101, 103.
Moreover, we do not agree that the limitation “independent of the
particular version” has the narrow meaning Appellants’ argument suggests.
Giving the term its “broadest reasonable interpretation consistent with the
specification,” as we must, we agree with the Examiner’s finding that the
versions of supplemental files in McGuire are “independent of” the versions
of executable application binary files. Id.; In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004). McGuire teaches “the selection of
individual files for updating[,] such that each and every file selected for
updating is treated as a distinct, individual file, with each file to be updated
having its own versioning.” Ans. 5; see also McGuire ¶¶ 8, 36–37, 69, 93,
101–103.
Accordingly, we are not persuaded the Examiner erred, and we sustain
the obviousness rejection of claim 1.
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Rejections of Remaining Claims
Appellants do not argue the remaining claims separately from claim 1.
App. Br. 7. For the same reasons as discussed above, therefore, we also
sustain the obviousness rejections of remaining claims 2–8 and 10–27.
DECISION
We affirm the Examiner’s decision rejecting claims 1–8 and 10–27.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 41.50(f).
AFFIRMED