Ex Parte LU et al

Patent Trial and Appeal Board

Mar 10, 2015

12103730 (P.T.A.B. Mar. 10, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHARISSE LU, EMILY J. RATLIFF, and JOHNNY SHIEH
____________

Appeal 2012-012298
Application 12/103,730
Technology Center 2100
____________

Before CARLA M. KRIVAK, CATHERINE SHIANG, and
CHRISTA P. ZADO, Administrative Patent Judges.

ZADO, Administrative Patent Judge.

DECISION ON APPEAL

Appellants
1
appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–18. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1
Appellants identify as the real party in interest International Business
Machines Corporation. (App. Br. 2.)
Appeal 2012-012298
Application 12/103,730

2
STATEMENT OF THE CASE
2

Claim 1 is illustrative of the subject matter on appeal (disputed
limitation in italics):
1. A system for efficient reinstallation of computer
software, said system comprising:
a computer that executes a plurality of software
programs;
data storage including program code configured to
record a frequency of utilization for each of said plurality of
software programs, and following a system failure, to
automatically reinstall the plurality of software programs in a
particular order based on said frequency of utilization.

THE REJECTIONS
Claims 1–3, 5–9, 11–15, 17, and 18 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Mayer (US 2008/0177994 A1; published July 24,
2008). (Ans. 5–16.)
Claims 4, 10, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mayer and Freeman (US 6,785,713 B1; issued Aug. 31,
2004). (Ans. 17–19.)

ISSUES
Under § 102, has the Examiner erred by finding Mayer discloses a
system comprising “data storage including program code configured to

2
Rather than repeat the arguments here, we refer to the Briefs for the
positions of Appellants and the Final Office Action and Answer for the
positions of the Examiner. Only those arguments actually made by
Appellants have been considered in this decision. Arguments that
Appellants did not make in the Briefs have not been considered and are
deemed to be waived. (See 37 C.F.R. § 41.37(c)(1)(iv) (2012).)
Appeal 2012-012298
Application 12/103,730

3
record a frequency of utilization for each of said plurality of software
programs, and following a system failure, to automatically reinstall the
plurality of software programs in a particular order based on said frequency
of utilization,” as recited in claim 1?
Under § 103, has the Examiner erred by finding dependent claims 4,
10, and 16 are unpatentable over Mayer and Freeman?

ANALYSIS
Appellants contend, and we agree, the Examiner has not demonstrated
Mayer discloses the disputed limitation of claim 1. (App. Br. 3, 4.)
Regarding the limitation of recording “a frequency of utilization for each
plurality of software programs,” the Examiner relies on Mayer’s disclosure
of generating a log of errors that occur during boot of an operating system.
(Ans. 6, citing Mayer ¶¶ 7–9.) However, a log of errors generated while an
operating system boots does not indicate how frequently software programs
are being used.
Regarding the limitation of automatically reinstalling “the plurality of
software programs in a particular order based on said frequency of
utilization,” the Examiner identifies the disclosure in Mayer relating to
correction of typing errors (when a user enters a file name that does not
match files in the directory, frequency of use of alternative closely matched
file names may be made available). (Ans. 6, citing ¶¶ 84–86.) The
Examiner also relies on disclosure of maintaining synchronized copies of
data on separate hard drives or partitions. (Ans. 6, citing Mayer ¶¶ 84–86.)
Neither of these discloses automatically reinstalling software programs in an
order based on the frequency of software program usage.
Appeal 2012-012298
Application 12/103,730

4
We, therefore, do not sustain the Examiner’s rejection under § 102 of
independent claim 1; independent claims 7 and 13 which recite similar
limitations; and their dependent claims 2, 3, 5, 6, 8, 9, 11, 12, 14, 15, 17, and
18.
We also do not sustain the Examiner’s rejection under § 103 of
dependent claims 4, 10, and 16, depending from claims 1, 7, and 13,
respectively, because the Examiner does not demonstrate the disputed
limitations are obvious in view of Mayer and Freeman.

DECISION
The Examiner’s decision rejecting claims 1–18 is REVERSED.

REVERSED

Klh