Ex Parte LU et alDownload PDFPatent Trial and Appeal BoardMar 10, 201512103730 (P.T.A.B. Mar. 10, 2015) Copy Citation 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 Copy with citationCopy as parenthetical citation