Ex Parte Lee

Patent Trial and Appeal Board

Feb 12, 2014

10879886 (P.T.A.B. Feb. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SAM JUNG-WON LEE
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Appeal 2011-008688
Application 10/879,886
Technology Center 2100
____________________

Before JOSEPH F. RUGGIERO, JASON V. MORGAN, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
31-49. Claims 1-30 have been cancelled. We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION

The claims are directed to a system and method for installing software
on a computing device. Spec. 1. Claim 31, reproduced below, is
representative of the claimed subject matter:
31. A method for installing software on a computing device,
the method comprising:
automatically scanning a directory in a persistent file
system stored within persistent memory of the computing
device during booting of the computing device to identify a
compressed file containing the software to be installed on the
computing device;
loading an operating system in the computing device,
wherein the operating system includes an installation tool;
automatically copying the compressed file to a RAM file
system stored in RAM of the computing device; and
in response to identifying the compressed file,
automatically invoking the installation tool of the operating
system to open the compressed file and to install the software of
the compressed file within the persistent file system.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Esfahani
Chapman
US 2002/0169950 A1
US 6,594,723 B1
Nov. 14, 2002
Jul. 15, 2003
Miller US 2004/0006689 A1 Jan. 8, 2004
Appellant Acknowledged Prior Art Techniques (AAPA)
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REJECTIONS1
The Examiner made the following rejections:
Claims 31-33, 35-37 and 45 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Miller and Esfahani. Ans. 4-9.
Claims 34, 38-41, 44, 46 and 47 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Miller, Esfahani, and AAPA. Ans. 9-15.
Claims 42 and 43 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miller, Esfahani, AAPA, and Chapman. Ans. 15-16.
Claims 48 and 49 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miller, Esfahani, and Chapman. Ans. 16-17.

APPELLANT’S CONTENTIONS
1. Miller’s driver component is not part of an operating system and
therefore fails to teach the installation tool of claim 31. App. Br. 7-11.
2. Miller’s description of avoiding storing selected files in memory
teaches away from modifying Miller according to Esfahani such that
the compressed file is copied to a RAM file system stored in RAM as
recited by claim 31. App. Br. 11-12.

ISSUES ON APPEAL
Based on Appellant’s arguments in the Appeal Brief (App. Br. 6-14)
and Reply Brief (Reply Br. 1-7), the issues presented on appeal are:

1 Appellant argues the rejection of independent claims 31, 39 and 45 based
on claim 31. Separate patentability is not argued for dependent claims 32-38,
40-44, and 46-49. Therefore, based on Appellant’s arguments, we decide the
appeal of claims 31-49 based on claim 1 alone.
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(i) Whether the Examiner erred in finding Miller’s boot environment
teaches or suggests an operating system including an installation tool
invoked to open and install software of a compressed file.
(ii) Whether the Examiner erred in combining Miller and Esfahani in
formulating the rejection under 35 U.S.C. § 103(a).

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. 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. 4-17) and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal Brief (Ans. 17-26) and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
Appellant contends Miller’s driver component which provides
functionality equivalent to the installation tool of claim 31 is not part of
Miller’s operating system and therefore fails to teach the disputed limitation
“wherein the operating system includes an installation tool.” App. Br. 7. In
particular Appellant argues “the driver component cannot be part of an
operating system in the boot environment, since the driver component of
Miller is responsible for initializing the boot environment that includes the
operating system.” App. Br. 8. Appellant further argues “The driver
component of Miller is clearly not of the operating system, since the driver
component of Miller must be capable of executing prior to the operating
system executing.” Id.
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We disagree with Appellant. During examination of a patent
application, pending claims are given their broadest reasonable construction
consistent with the specification. In re Prater, 415 F.2d 1393, 1404-05
(CCPA 1969); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Under a broad but reasonable interpretation of the “operating
system” we agree with the Examiner that Miller’s boot environment which
provides operating system services teaches or suggests the operating system
of claim 31. Ans. 5, 19. We further agree that Miller’s driver component
performs the functions of the installation tool of claim 31. Ans. 5, 19-20.
Therefore, the question before us is whether the combination of Miller and
Esfahani teaches or suggests Miller’s boot environment (operating system)
includes the driver component (installation tool.)
We are not persuaded by Appellant’s argument that, because it
initializes the boot environment, Miller’s driver component cannot be part of
the boot environment. See App. Br. 7-10. As found by the Examiner, Miller
describes “an image-based operating system that has the capability of
booting itself.” See Ans. 20 citing Miller ¶0008. Therefore, we agree with
the Examiner that:
“loading” the operating system does not constitute [an] indication that
the object doing the loading “cannot be part of the operating system.”
To the contrary, Miller’s disclosure of a self[-]loading operating
system implies that he considered the object doing the loading (i.e. the
driver) to be part of the operating system.
Ans. 20-21.
While Miller does not describe the boot environment includes the
driver component in haec verba2, we agree with the Examiner that Miller’s

2 The teaching in the prior reference need not be ipsissimis verbis. Structural
Rubber Products v. Park Rubber, 749 F.2d 707, 716 (Fed. Cir. 1984).
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description of a self-loading operating system teaches or suggests the
operating system (in this case, the boot environment) includes the necessary
components to perform the loading operation including the required driver
component. We are not persuaded that the driver component is not part of
the operating system merely because it is loaded and operates prior to and
results in the loading and execution of what might be characterized as
remaining portions of the operating system. Therefore, based on a
preponderance of the evidence, we agree with the Examiner that the
combination of Miller and Esfahani teaches or suggests an operating system
including an installation tool.
We are also unpersauded of error by Appellant’s contention that,
because Miller teaches boots without storing selected files in memory, one of
ordinary skill in the art would have been led away from modifying Miller
according to Esfahani to copy the compressed file to a RAM file system
stored in RAM. See App. Br. 11-12. Teaching an alternative or equivalent
method does not teach away from the use of a claimed method. In re Dunn,
349 F.2d 433, 438 (CCPA 1965). Appellant fails to provide sufficient
evidence or argument that Miller so disparages storing files in RAM
according to Esfahani to the extent that one skilled in the art would be
discouraged from making the combination. Instead, we agree with the
Examiner that:
[E]ven though Miller would prefer to avoid the additional random
access memory overhead . . . the decision to store the selected files in
RAM provides a trade[-]off between efficiency of storage and
efficiency of access. Those of ordinary skill would have analyzed the
intended use and chosen the most appropriate configuration.
Ans. 23-24.

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On the record before us and for the reasons supra Appellant’s
contentions are unpersuasive of Examiner error. Therefore, we sustain the
rejection of independent claim 31 and, for the same reasons, the rejection of
independent claim 45 under 35 U.S.C. § 103(a) over Miller and Esfahani
together with rejection of dependent claims 32, 33, and 35-37 not separately
argued.
Appellant’s contentions of error in connection with claims 34, 38-41,
44, 46 and 47 are substantially the same as presented in connection with
claim 31 and are unpersuasive for the reasons supra. We also find
unpersuasive Appellant’s argument that “AAPA also does not provide any
hint that would have prompted a person of ordinary skill in the art to modify
the teachings of Miller to incorporate an installation tool as part of the
operating system that opens the compressed file and installs the software
containing the compressed file. . . .” App. Br. 13. As noted by the Examiner,
“AAPA is not relied upon simply for a disclosure of an installation tool but
instead is used to show that those of ordinary skill in the art recognized that
some file types required specific installation tools.” Ans. 24. Therefore, in
the absence of persuasive evidence or argument, we find Appellant’s
contentions of error unpersuasive and sustain the rejection of independent
claim 39 under 35 U.S.C. § 103(a) over Miller, Esfahani, and AAPA together
with the rejection of dependent claims 34, 38, 40, 41, 44, 46 and 47 not
separately argued. We additionally sustain the rejection of claims 42 and 43
under 35 U.S.C. § 103(a) over Miller, Esfahani, AAPA, and Chapman, and
the rejection of claims 48 and 49 under 35 U.S.C. § 103(a) over Miller,
Esfahani, and Chapman, these dependent claims also not separately argued.

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CONCLUSIONS
We find that:
i. The Examiner did not err in finding Miller’s boot environment
teaches or suggests an operating system including an installation tool
invoked to open and install software of a compressed file.
ii. The Examiner did not err in combining Miller and Esfahani in
formulating the rejection under 35 U.S.C. § 103(a).
iii. The Examiner did not err in rejecting claims 31-33, 35-37 and 45
under 35 U.S.C. § 103(a) over Miller and Esfahani.
iv. The Examiner did not err in rejecting claims 34, 38-41, 44, 46 and 47
under 35 U.S.C. § 103(a) over Miller, Esfahani, and AAPA.
v. The Examiner did not err in rejecting claims 42 and 43 under 35
U.S.C. § 103(a) over Miller, Esfahani, AAPA, and Chapman.
vi. The Examiner did not err in rejecting claims 48 and 49 under 35
U.S.C. § 103(a) over Miller, Esfahani, and Chapman.

DECISION
The Examiner’s decision to reject claims 31-49 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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