Ex Parte Hinton et alDownload PDFPatent Trial and Appeal BoardMar 9, 201511770890 (P.T.A.B. Mar. 9, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HEATHER M. HINTON, IVAN M. MILMAN, and PATRICK R. WARDROP ____________ Appeal 2012-012378 Application 11/770,890 Technology Center 2100 ____________ 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 2 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.) Appeal 2012-012378 Application 11/770,890 3 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). Appeal 2012-012378 Application 11/770,890 4 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 Appeal 2012-012378 Application 11/770,890 5 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 Appeal 2012-012378 Application 11/770,890 6 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 Appeal 2012-012378 Application 11/770,890 7 “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.) Appeal 2012-012378 Application 11/770,890 8 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 dw Copy with citationCopy as parenthetical citation