Ex Parte Hinton et al

Patent Trial and Appeal Board

Mar 9, 2015

11770890 (P.T.A.B. Mar. 9, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HEATHER M. HINTON, IVAN M. MILMAN, and
PATRICK R. WARDROP
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Appeal 2012-012378
Application 11/770,890
Technology Center 2100
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Before CARL W. WHITEHEAD JR., DANIEL N. FISHMAN, and
NORMAN H. BEAMER, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL
Appellants
1
appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1–20. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We affirm.

1
Appellants identify International Business Machines Corporation as the
real party in interest. (Br. 1.)
Appeal 2012-012378
Application 11/770,890

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THE INVENTION
The claims are directed to managing the installation and
configuration of a software product. (Abstract.) Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method for installing a software product within a data
processing system, the method comprising:
identifying, for a software product, one or more prerequisite
components during an installation process flow for the software product;
building, for a first prerequisite component, a list of a plurality of
provider options comprising a first provider option that identifies a re-
usable component that has previously been installed and a second
provider option for performing a new installation of the first prerequisite
component;
receiving a user selection of the second provider option; and
installing the first prerequisite component by using the second
provider option.
The Examiner rejected claims 1–5, 8–12, and 14–18 under 35 U.S.C.
§ 102(b) as being anticipated by Sierer et al. (US 2004/0255291 A1; Dec.
16, 2004). (Ans. 4–8, 10, 11.)
The Examiner rejected claims 6, 7, 13, 19, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Sierer and Herzog (U.S. 2006/0010434
A1; Jan. 12, 2006). (Ans. 9–10, 11.)

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Application 11/770,890

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ISSUES ON APPEAL
Appellants’ Appeal Brief raises the following issues:
2

First Issue: Whether Sierer discloses “a list of ... provider options,”
including an option that “identifies a re-useable component,” as required by
independent claims 1, 8 and 14. (Br. 7.)
Second Issue: Whether Sierer discloses “accessing a deployed product
itemization data store which stores information identifying provider
options,” as required by claims 2, 9 and 15. (Br. 8.)
Third Issue: Whether Sierer discloses “performing a new installation
of the first prerequisite component when there are no re-usable components
that have previously been installed corresponding to the first prerequisite
component,” as required by claims 3, 10 and 16. (Br. 8.)
Fourth Issue: Whether Sierer discloses “storing installation and
configuration parameter information from the installation of the first
prerequisite component ‘so that the installation and configuration parameter
information is available for subsequent re-use,’” as required by claims 4, 11
and 17. (Br. 8.)
Fifth Issue: Whether the proposed combination of Sierer and Herzog
is proper and whether the combination teaches or suggests the subject matter
of claims 6, 7, 13, 19, and 20. (Br. 9–14.)

2
Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed Feb. 14, 2012) and the Answer (mailed June
7, 2012) for the respective details. We have considered in this Decision only
those arguments Appellants properly raised in the Brief. Any other
arguments Appellants could have made but chose not to make in the Brief,
or which are made in a conclusory fashion, are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2011).
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Application 11/770,890

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
arguments. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Ans. 4–11); and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief (Ans. 11–20), and concur with the
conclusions reached by the Examiner.
First Issue
The Examiner finds that the provision for a list of “deployment
options” in Sierer discloses building a list of provider options, including an
option that “identifies a re-useable component,” as required by claims 1, 8,
and 14. (Ans. 5–6; Sierer ¶¶ 39–46.) Appellants argue that such
“conventional ‘deployment options’ for deploying software” do not meet the
“provider options” limitation. (Br. 5–6.) Appellants also argue that the
requirement that one provider option “identifies a re-usable component” is
not disclosed in Sierer, but rather Sierer discloses the “functional reverse” of
that requirement, in that Sierer’s “previously installed components are
removed or written over, while the claimed provider options are used to
install the prerequisite component.” (Br. 7–8.)
The Examiner rejects the argument that there is a distinction between
a “provider option” and a “deployment option” insofar as the claims are
concerned, and cited the disclosure in Sierer of the ability to determine that a
software component “already exists” in the target system, in which case “the
user has [a] . . . deployment option specifying an update or upgrade for that
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Application 11/770,890

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feature.” (Ans. 12.) We agree with the Examiner’s findings.
Notwithstanding that the “deployment options” disclosed in Sierer are
“conventional,” the broadest reasonable interpretation of “provider option”
encompasses “deployment options.” In addition, Sierer’s disclosure does
not disclose the “functional reverse” of the claimed subject matter as alleged
by Appellants. Although Sierer does disclose the option of removing or
writing over a software component that already exists in the target system if
it is an “old version,” Sierer also states that if the update software module is
“the same or older [than the already existing module], don’t modify the
database on the target system at all” — i.e., reuse the already existing
module. (Sierer ¶¶ 43, 244, 511.)
Accordingly, we sustain the rejection of independent claims 1, 8, and
14.
Second Issue
The Examiner finds that Sierer discloses “accessing a deployed
product itemization data store which stores information identifying provider
options,” as required by claims 2, 9, and 15, relying on the disclosure in
Sierer of “storing the sub-installer dependencies and feature dependencies in
the application dependency file.” (Ans. 13; Sierer ¶¶ 33, 34.) Appellants
respond by again drawing a distinction between deployment options and
provider options. (Br. 8.) As discussed above, we do not find that argument
persuasive.
Third Issue
The Examiner finds that Sierer discloses “performing a new
installation of the first prerequisite component when there are no re-usable
components that have previously been installed corresponding to the first
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prerequisite component,” as required by claims 3, 10 and 16. The Examiner
cites the provision in Sierer that “The application system installer may be
executed to deploy a new installation of the application system onto the
target system, to update previously installed components of the application
system, and/or to remove previously installed components of the application
system, as desired.” (Ans. 14; Sierer ¶ 54.) Appellants argue that Sierer
only contemplates systems in which “an older feature already exists.” (Br.
8.) To the contrary, however, Sierer provides that the state of a particular
software feature may be classified “as, for example, absent, installed, or
installed but older version, etc.” (emphasis added.) (Sierer ¶ 40.)
Fourth Issue
The Examiner finds that Sierer discloses “storing installation and
configuration parameter information from the installation of the first
prerequisite component so that the installation and configuration parameter
information is available for subsequent re-use,” as required by claims 4, 11,
and 17. The Examiner cites the above-discussed dependency file disclosed
in Sierer. (Ans. 15; Sierer ¶ 34.) Appellants argue that Sierer makes no
mention of storing information so that it is available for reuse. (Br. 8.)
However, as discussed above, we agree with the Examiner’s findings that
Sierer does disclose re-use of software components, and, therefore, it follows
that the information in the dependency file corresponding to such re-used
modules would also be available for re-use.
Fifth Issue
The Examiner concludes that Sierer together with Herzog teaches or
suggests the subject matter of claims 6, 7, 13, 19, and 20. (Ans. 9–11.)
Appellants first argue that the combination fails to teach or suggest the
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“provider options” limitation of the claims, repeating the same argument
made with respect to claims 1, 8, and 14. (Br. 10–11.) As discussed above,
we are not persuaded by that argument.
Appellants further argue that the Examiner has not demonstrated any
motivation to combine the two references, or to show a reasonable
likelihood of success from the combination. (Br. 11–14.) We are not
persuaded that the Examiner erred in concluding that there was a motivation
to combine the Sierer and Herzog references. As the Examiner found, Sierer
specifically discloses “collecting . . . any configuration necessary for the
system to operate successfully.” (Ans. 19; Sierer ¶ 27.) In addition, as
discussed above, we agree with the Examiner’s findings that Sierer discloses
the subject matter of claim 4, which requires “storing installation and
configuration parameter information.” We further note that Sierer
specifically refers to the need for “one or more program configuration files”
as part of the software deployment process. (Sierer ¶ 51.) The disclosure in
the Herzog reference of the use of “a configuration information collection”
is closely related to the disclosures in Seirer of the use of configuration
information, and, as the Examiner concluded, Herzog teaches that “storing
the configuration information enables the improved creation and delivery of
configuration content.” (Ans. 20; Herzog ¶ 12.) We therefore agree with
the Examiner’s conclusion that “it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to combine
teaching of Sierer with the teachings of Herzog” in regard to the
configuration limitations of claims 6, 7, 13, 19, and 20. (Ans. 9, 19–20;
Herzog ¶ 8.)
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Appellants’ argument that the Examiner failed to show a reasonable
likelihood of success from the combination hinges on the argument that the
Seirer reference does not disclose “building a list of a plurality of provider
options.” (Br. 13.) As discussed above, we are not persuaded by that
argument.
Therefore, we agree with the Examiner’s analysis, and are not
persuaded that it does not sufficiently support the Examiner’s obviousness
conclusion. (Ans. 16–20.)

CONCLUSION
For the reasons discussed above, we sustain the Examiner’s rejection
of claims 1–4, 6–11, 13–17, and 19–20. We also sustain the rejection of
claims 5, 12, and 18, which are not argued separately with particularity.

DECISION
The Examiner’s decision to reject 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)(1)(iv).

AFFIRMED
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