Ex Parte Howell et al

Patent Trial and Appeal Board

Apr 29, 2013

10158981 (P.T.A.B. Apr. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES A. HOWELL, JR.,
THOMAS VRHEL, JR.,
and
SHREE DANDEKAR
____________

Appeal 2011-001432
Application 10/158,981
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001432
Application 10/158,981

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 to 16. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Appellants’ invention is directed to a system and method for
preconfiguration using after point of sale information (Spec. 1).
Claim 1 is illustrative:
1. A system for preconfiguring an
information handling system with registration and
customization information comprising:
a configurator, the configurator configuring a
system with options selected according to user input;
a registration and customization module, the
registration and customization module obtaining
information relating to registration and
customization for the information handling system;
a store registration and customization
information module, the store registration and
customization information module storing the
information relating to the registration and
customization on the information handling system;
and,
a database, the database receiving information
from and supplying information to the configurator,
the registration and customization module and the
store registration and customization information
module.

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Appellants appeal the following rejection:
Claims 1 to 16 under 35 U.S.C. § 102(e) as anticipated by Burkhardt
(US 6,823,508 B1; iss. Nov. 23, 2004).

FACTUAL FINDINGS
We adopt the Examiner’s findings as our own. Exam’r’s Ans. 7 to 10.
Additional findings of fact may appear in the Analysis that follows.

ANALYSIS
Indefiniteness
The Examiner entered a new ground of rejection in the Examiner’s
Answer against claims 12 and 14 under 35 U.S.C. § 112 as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which applicant regards as the invention (Exam’r’s Ans. 3). The Examiner
properly gave notice of the new ground of rejection (Exam’r’s Ans. 3) and
the Technology Center Director approved it (Exam’r’s Ans. 11). As the
Examiner’s Answer indicated (Exam’r’s Ans. 10-11), the Appellants were
required to respond to the new ground within two months in either of two
ways: 1) reopen prosecution (see 37 C.F.R. § 41.39(a)(2)(b)(1)); or 2)
maintain the appeal by filing a reply brief as set forth in 37 C.F.R. § 41.41
(see 37 C.F.R. § 41.39(a)(2)(b)(2)), “to avoid sua sponte dismissal of the
appeal as to the claims subject to the new ground of rejection” (Exam’r’s
Ans. 10). According to the record before us, neither option appears to have
been exercised.
Therefore we dismiss the appeal as to these claims.

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Application 10/158,981

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Anticipation
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the setup as described in Burkhardt is different
from the preconfiguration as claimed because the claimed preconfiguration
takes place during the fabrication of the information handling system and
Burkhardt’s setup takes place after receipt of the system by the user. This
argument is not persuasive because it is not commensurate in scope with
independent claims 1 and 7 which do not recite that the preconfiguration is
done during fabrication. In addition, Burkhardt discloses that
preconfiguration can take place during fabrication by disclosing that the
system may be integrated with user information at the factory (col. 2, ll. 11
to 15).
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that registration and customization information is not
inherently saved in a database. We agree with the Examiner’s finding at
page 10 of the Answer that Burkhardt discloses saving user-specific
information in a database. In this regard, Burkhardt discloses saving user-
specific in a database by disclosing that user-specific information is stored in
a user information store (col. 2, ll. 1 to 10).
In view of the foregoing, we will sustain the Examiner’s rejection as it
is directed to claim 1. We will also sustain this rejection as it is directed to
claims 2, 5, 6, 7, and 10 to 12, and 15 because the Appellants do not argue
the separate patentability of these claims.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument in regard to claims 3, 8, and 13 that Burkhardt does
not disclose a configurator and registration and customization module which
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provide a consistent customer service. We agree with the Examiner’s
finding that consistent customer experience is a byproduct of the
customization of the system with user information disclosed in Burkhardt.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument in regard to claims 4, 9 and 14 that Burkhardt does not
disclose a service activation module which enables a user to activate services
based upon the options selected according to user input. We agree with the
Examiner that since Burkhardt discloses that the operating system is pre-
populated with user-specific information prior to the first use of the
computer, Burkhardt discloses this subject matter (col. 2, ll. 18 to 20).

DECISION
The decision of the Examiner 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED

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