Ex Parte Crosbie

Patent Trial and Appeal BoardOct 31, 2012

11333092 (P.T.A.B. Oct. 31, 2012)

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. 11/333,092 01/17/2006 David Bruce Crosbie 0521US-Leostream 5728 23521 7590 11/01/2012 SALTAMAR INNOVATIONS 1 Mathewson Road Barrington, RI 02806 EXAMINER JACOBS, LASHONDA T ART UNIT PAPER NUMBER 2457 MAIL DATE DELIVERY MODE 11/01/2012 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 DAVID BRUCE CROSBIE ____________________ Appeal 2010-006711 Application 11/333,092 Technology Center 2400 ____________________ Before ERIC S. FRAHM, TREVOR JEFFERSON, and JOHN G. NEW, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-006711 Application 11/333,092 2 STATEMENT OF THE CASE1 Introduction Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-24, all the claims pending in the application. Claims 25-37 were cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellant’s Disclosed Invention Appellant discloses a method of transferring operating environments between computers (Spec. ¶ [0001]) including making modifications to an original computer environment, such as boot paths or installing drivers needed on the target system, so that a computing image can be created to boot-up the target computer (Spec. ¶ [0043]). Exemplary Claim An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below with emphases added: 1. A method for transferring a data image from an origin computer coupled to at least one storage medium, and origin operating system and computing environment image stored on the medium, to a second computer, the method comprising the steps of: executing a host agent on the second computer; on the origin computer under control of the origin operating system: profiling the origin computer; modifying certain origin computer configuration parameters to fit the target computer configuration; 1 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.,” filed January 22, 2010) and Reply Brief (“Reply Br.,” filed March 26, 2010), and the Examiner’s Answer (“Ans.,” mailed March 2, 2010). Appeal 2010-006711 Application 11/333,092 3 reading a data image of the storage medium, and transmitting the image to the host agent for making an image bootable on the second computer, or on a virtual machine executed thereon; wherein the image reflects changes made to the configuration parameters during the step of modifying, prior to the step of transmitting. The Examiner’s Rejection The Examiner rejected claims 1-24 under 35 U.S.C. § 102(e) as being anticipated by Larvoire (U.S. Patent No. 6,804,774 B1 (filed August 2, 2000)). Ans. 3-7. Appellant’s Contentions2 Appellant contends (App. Br. 11-26; Reply Br. 1-4) that the Examiner erred in rejecting claims 1-24 under 35 U.S.C. § 102(e) as being anticipated by Larvoire for numerous reasons, including Larvoire fails to disclose “on the origin computer under control of the origin operating system . . . modifying certain origin computer configuration parameters to fit the target computer configuration,” as recited in claim 1. Issue on Appeal Did the Examiner err in rejecting claims 1-24 under 35 U.S.C. § 102(e) as being anticipated by Larvoire because Larvoire fails to disclose: “on the origin computer under control of the origin operating system . . . modifying certain origin computer configuration parameters to fit the target computer configuration,” as recited in claim 1? 2 We recognize that Appellant’s arguments present additional issues. Some of the arguments presented by the additional issues are not persuasive; nonetheless we were persuaded of error by this issue and as such we do not reach the additional issues as this issue is dispositive of the appeal. Appeal 2010-006711 Application 11/333,092 4 ANALYSIS We have reviewed the Examiner’s rejection in light of Appellant’s contentions in the Appeal Brief (App. Br. 11-26) and the Reply Brief (Reply Br. 1-4) that the Examiner has erred. We agree with Appellant’s above contention (App. Br. 19-21; Reply Br. 3) that Larvoire fails to disclose “on the origin computer under control of the origin operating system . . . modifying certain origin computer configuration parameters to fit the target computer configuration,” as recited in claim 1. The Examiner determines (Ans. 3, 7-8) that Larvoire meets the limitation at issue because Larvoire discloses a software image transition aid that makes modifications to the image file created from the source computer (Larvoire, col. 2, ll. 6-44, col. 3, ll. 12-31, and col. 5, ll. 36-46). Larvoire, however, discloses booting the target PC from the bootable storage media and then running a program, stored on the bootable storage media, to analyze and make changes to the software image (col. 3, ll. 32-40). In short, Larvoire discloses making changes to the image file on the target system, not the origin computer. Because Larvoire does not disclose “modifying certain origin computer configuration parameters to fit the target computer configuration” on the origin computer, we will not sustain the § 102(e) rejection of claims 1-24. CONCLUSIONS (1) Appellant has established that the Examiner erred in rejecting claims 1-24 under 35 U.S.C. § 102(e) as being anticipated by Larvoire because Larvoire fails to disclose “on the origin computer under control of the origin operating system . . . modifying certain origin computer Appeal 2010-006711 Application 11/333,092 5 configuration parameters to fit the target computer configuration,” as recited in claim 1. (2) On this record, claims 1-24 have not been shown to be unpatentable. DECISION The Examiner’s rejection of claims 1-24 is reversed. REVERSED llw