Ex Parte DEVERAKONDA VENKATA et al

Patent Trial and Appeal Board

Sep 6, 2018

12615880 (P.T.A.B. Sep. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/615,880 11/10/2009
141451 7590 09/06/2018
AT&T Legal Dept. - [HDP]
FIRST NAMED INVENTOR
SUB BARA YA KUMAR DEVERAKONDA
VENKATA
Attention: Patent Docketing, Room 2A-207
One AT&T Way
Bedminster, NJ 07921
UNITED ST A TES OF AMERICA
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.
DTV208063 1432
EXAMINER
ALMAN!, MOHSEN
ART UNIT PAPER NUMBER
2159
MAIL DATE DELIVERY MODE
09/06/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUBBARA YA KUMAR DEVERAKONDA VENKA TA,
JIANMING YU, CHARLES C. DEBERGH, GILBERT ZALDIVAR,
JOSEPH T. HA YES, ROMULO PONTUAL, and
LONNIE SCOTT CLABAUGH
Appeal2016-008600
Application 12/615,8801
Technology Center 2100
Before MAHSHID D. SAADAT, DAVID M. KOHUT, and
KAMRAN JIVANI, Administrative Patent Judges.
JIV ANI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decisions rejecting claims 1, 5, 7-17, 19, 24-25, 27-30 and
32-35. App. Br. 2. Claims 2-4, 6, 18, 20-23, 26 and 31 have been
cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify The DIRECTV Group, Inc., a subsidiary of AT&T, as
the real party in interest. App. Br. 2.
Appeal2016-008600
Application 12/615,880
STATEMENT OF THE CASE
The present application relates to system and method for downloading
content such as software images to devices within the system. Spec. ,-J 2.
Claims 1 and 28 are independent. Claim 1 is illustrative of the claimed
subject matter and is reproduced below.
1. A method comprising:
generating a schedule for a software image at
a software download manager in response to
channel data, said channel data comprising a
channel identifier for locating the software image;
generating, in the software download
manager, a download resolution file having
software image data corresponding to the software
image, the channel identifier, and a broadcast
location of the software image;
communicating a software image and the
download resolution file to a transport processing
system in response to the schedule;
broadcasting the software image and the
download resolution file;
generating, in the software download
manager, an announcement having user device
identifiers and a download resolution file location
therein;
communicating the announcement to user
devices corresponding to the user device identifiers
after the software image and the download
resolution file are being broadcasted;
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Appeal2016-008600
Application 12/615,880
in response to the announcement, locating, at
the user device, the download resolution file based
on the download resolution file location;
determining, at the user device, the broadcast
location of the software image from the download
resolution file; and
receiving and storing the software image in
the user device based on the broadcast location.
The Rejection
Claims 1, 5, 7-17, 19, 24, 25, 27-30 and 32-35 stand rejected under
35 U.S.C. § 102(b) as anticipated by McFadden et al., PCT Publication No.
WO 00/60784; Oct. 12, 2000.
ANALYSIS
Claim 1 recites in relevant part, "generating ... an announcement
having user device identifiers and a download resolution file location
therein; communicating the announcement to user devices ... after the
software image and the download resolution file are being broadcasted."
App. Br. 14. Similarly, independent claim 28 recites "a user device ... ,
receiving the download resolution file that is already broadcasting in
response to receiving the announcement based on the user device identifier
and the download resolution file location .... " Id. at 18. Thus, both
independent claims require providing the announcement after the download
resolution file is being broadcast. The Specification describes this scheme
as beneficial because, "[b ]y providing the announcement after the software
image is being broadcast, the user device is not required to wait for
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Application 12/615,880
broadcasting. This will speed up the process and improve customer
satisfaction." Spec. ,i 80.
Appellants contend, inter alia, that McFadden fails to meet the
claimed announcement-after-broadcast and instead discloses "sending an
announcement prior to a user device tuning to a predefined channel to
receive a download. Thus, the user device waits, upon tuning to the pre-
defined channel, to receive the download." Reply Br. 4; App. Br. 8-9.
The Examiner finds that the claimed announcement-after-broadcast is
a mere design choice and is "totally irrelevant because by scheduling a
future download time and notifying a user device when to expect the
download; the wait time by the customer in receiving a download is
configurable." Ans. 13-16. Therefore, the Examiner states, "the order of
the operations in the claim is considered as a description of a design choice
that has no particular functionality that could be distinguishable from the
steps that McFadden discloses for a software upgrade in user devices."
Final Act. 17.
We agree with Appellants. "A claim is anticipated only if each and
every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference." Verdegaal Bros., Inc.
v. Union Oil Co., 814 F.2d 628,631 (Fed. Cir. 1987). As our reviewing
court has instructed,
[ u ]nless a reference discloses within the four
comers of the document not only all of the
limitations claimed but also all of the limitations
arranged or combined in the same way as recited in
the claim, it cannot be said to prove prior invention
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Application 12/615,880
of the thing claimed and, thus, cannot anticipate
under 35 U.S.C. § 102.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
( emphasis added). Here, Appellants correctly contend, and the Examiner
does not dispute, that McFadden's announcement occurs before
broadcasting, the opposite of the claimed announcement-after-broadcast.
McFadden, therefore, does not describe every element as set forth in the
claim. Verdegaal Bros., Inc., 814 F.2d 631 (Fed. Cir. 1987). Contrary to the
Examiner's findings, the claimed order is not a mere design choice because
the Specification clearly ascribes a direct benefit to the order of operations,
namely that announcing after broadcast "will speed up the process and
improve customer satisfaction." Spec. ,-J 80. Moreover, whether a claimed
feature is an obvious matter of design choice is a question of obviousness
under 35 U.S.C. § 103, and irrelevant to the anticipation inquiry at hand
under 35 U.S.C. § 102.
To the extent the Examiner asserts that the claimed announcement-
after-broadcast is inherent in McFadden, the Examiner makes insufficient
findings in the record before us to support a determination of inherency. "It
is well settled that a prior art reference may anticipate when the claim
limitations not expressly found in that reference are nonetheless inherent in
it. Under the principles of inherency, if the prior art necessarily functions in
accordance with, or includes, the claimed limitations, it anticipates." In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations
and internal quotation marks omitted). The Examiner has the burden of
providing reasonable proof that a claim limitation is an inherent
characteristic of the prior art. In re Best, 562 F.2d 1252, 1254-55 (CCPA
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Application 12/615,880
1977); see also Crown Operations Int'!, LTD v. Solutia Inc., 289 F.3d 1367,
1377 (Fed. Cir. 2002). The Examiner meets this "burden of production by
'adequately explain[ing] the shortcomings it perceives so that the applicant
is properly notified and able to respond."' In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011) (quoting Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir.
2007)). The burden of proof then shifts to the applicant "to prove that the
subject matter shown to be in the prior art does not possess the characteristic
relied on." Best, 562 F.2d at 1254-55; In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997) (holding that once the Examiner established a prim a facie
case of anticipation, the burden of proof was properly shifted to the inventor
to rebut the finding of inherency). Here, the Examiner finds "the download
resolution file/instruction is inherently disclosed," (Ans. 15), but this
finding, standing alone, does not support a determination that the claimed
announcement-after-broadcast is inherent in McFadden.
Accordingly, we reverse the Examiner's 35 U.S.C. § 102 rejection of
independent claims 1 and 28 and their dependent claims 5, 7-17, 19, 24-25,
27, 29, 30 and 32-35.
DECISION
We reverse the Examiner's decision rejecting claims 1, 5, 7-17, 19,
24-25, 27-30 and 32-35.
REVERSED
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