Ex Parte Marinelli et alDownload PDFPatent Trial and Appeal BoardApr 30, 201311126118 (P.T.A.B. Apr. 30, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ___________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CLAUDIO MARINELLI, LUIGI PICHETTI, and MARCO SECCHI ____________________ Appeal 2010-011538 Application 11/126,118 Technology Center 2100 ____________________ Before MAHSHID D. SAADAT, KRISTEN L. DROESCH, and IRVIN E. BRANCH, Administrative Patent Judges. BRANCH, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-8 and 10-16. We have jurisdiction under 35 U.S.C. § 6(b). Claim 9 is canceled. We affirm. Appeal 2010-011538 Application 11/126,118 2 STATEMENT OF CASE Introduction The claims are directed to a software distribution method and system supporting configuration management. Abstract. Claims 1, 5, and 6, reproduced below, are illustrative of the claimed subject matter: 1. A software distribution method including the steps of: providing a software package defining a plurality of actions for deploying a software product, the actions being partitioned into an installation category for loading the software product in a computer memory and a configuration category for setting configuration options of the software product once loaded, selecting at least one of the categories according to an actual installation state, a desired installation state, an actual configuration state and a desired configuration state of a target data processing entity, wherein if the actual installation state and the desired installation state match only selecting the configuration category, and applying the software package on the target data processing entity to execute the actions of the at least one selected category. 5. The method according to claim 1, further including the steps of: responsive to a determination that the actual installation state does not match the desired installation state and the actual configuration state does not match the desired configuration state of the target data processing entity performing a first application of the software package with the selection of the installation category and the configuration category, and responsive to a determination that the actual installation state and the desired installation state match and the actual configuration state does not match the desired configuration state of the target data processing entity performing a second Appeal 2010-011538 Application 11/126,118 3 application of the software package with the selection of the configuration category only. 6. The method according to claim 1, further including the steps of: verifying a compliance of the target data processing entity with each executed action, responsive to a negative result, providing a selective delta package including only installation category actions and configuration category actions needed for bringing the target data processing entity into compliance; executing each action of the installation category in the delta package in response to a negative result of the verification to restore the loading of the software product, and executing each action of the configuration category in the delta package in response to a negative result of the verification to restore the setting of the configuration options. References The prior art relied upon by the Examiner in rejecting the claims on appeal is: Wierman Beaman US 6,976,253 B1 US 7,487,381 B1 Dec. 13, 2005 Feb. 3, 2009 Rejections Claims 1-4, 8, 10, 15, and 16 stand rejected under 35 U.S.C §102(e) as being anticipated by Wierman. Ans. 3. Claims 5-7 and 11-14 stand rejected under 35 U.S.C §103(a) as being unpatentable over Wierman and Beaman. Ans. 6. Appeal 2010-011538 Application 11/126,118 4 ISSUES AND ANALYSIS Anticipation Rejection of Claims 1-4, 8, 10, 15, and 16 Appellants argue that the Examiner erred for substantially the same reasons with respect to claims 1-4, 8, 10, 15, and 16. App. Br. 10-17. We therefore select claim 1 as representative of this group. Issue 1 Appellants’ argue that Wierman fails to teach or suggest the “partitioning feature” (first element) and the “selecting feature” (second element) of claim 1. Id. at 11. Specifically regarding the partitioning feature, Appellants argue that “[t]here are no actions identified in Wierman that pertain to installation or configuration that Wierman categorizes into installation and configuration categories in the manner of claim 1” and that “Wierman only teaches that the contents of the package are usable for installation and configuration, without categorizing specific installation and configuration actions in any particular way.” App. Br. 12. The Examiner finds multiple instances of the “partitioning feature” in Wierman, first citing column 1, line 63, through column 2, line 7, at which location Wierman describes a “deployment package” for configuring a mobile device, which package includes multiple “installation items,” and in some cases includes “parameter values” based on a configuration file that is associated with an installation item. Ans. 3, 11. The Examiner finds that the “parameter values” are separate from the “installation item,” which separation “is an equivalent of the claimed ‘partition.’” Ans. 11. Alternatively, the Examiner finds that Wierman describes partitioning at column 6, lines 19-22 (“the associated XML file is used to set the Appeal 2010-011538 Application 11/126,118 5 parameters of an application that is already installed”), finding that “the configuration of software is a distinct process, separate from the installation process.” The Examiner concludes that this distinction meets the claimed “partition.” Id. at 12. Regarding the selecting feature, Appellants argue that Wierman is “devoid of any teaching or suggestion of making a decision to select the category of configuration actions if desired and actual states of installation match in the manner of claim 1,” adding that “nowhere in Wierman’s entire disclosure does Wierman teach or suggest that only configuration and no installation may be carried out with respect to a package.” App. Br. 13. The Examiner finds the “selecting feature,” at Wierman, column 6, lines 16-22 (“During extraction of the installation items, the cabinet files for the applications are extracted and stored on the mobile device and the configuration settings in the XML file are used to set parameters associated with the application. For system installation items, the associated XML file is used to set the parameters of an application that is already installed”). Ans. 4, 13-14. This, the Examiner finds, “demonstrates . . . only the separately- stored configuration actions, and not the installation actions, are employed to affect an application that is already resident on the device.” Ans. 14. In the Reply Brief, Appellants argue that Wierman’s teaching at column 1, line 63, to column 2, line 7, (discussed supra) indicates “that the configuration parameters in the configuration file . . . are a part of an installation item” and cannot be used without installation thus negating the possibility that Wierman describes configuration without installation. Reply Brief 4 (emphasis omitted). Appellants therefore present us with the issue of whether Wierman can be reasonably interpreted to teach simultaneously: 1) Appeal 2010-011538 Application 11/126,118 6 partitioning actions into installation and configuration; and 2) performing configuration without performing installation. Analysis We are not persuaded that Wierman’s configuration actions cannot be performed absent installation. We agree with the Examiner’s findings and conclusions discussed above and further find that each of Wierman’s installation items in a deployment package (e.g., Figure 7) may include cabinet files and configuration files. Col. 3, ll. 3-5. For some installation items (e.g., system installation items) it is assumed that the associated application is already installed, in which case the installation item includes only configuration information. Col. 3, ll. 27-39. Once the deployment package is executed on the device, installation items are extracted in accordance with a predefined sequence. Col. 6, ll. 9-13. Extraction of each installation item involves extracting and storing the cabinet file and using the configuration settings in the XML file (i.e., the configuration file, see col. 3, ll. 17-19) to set the parameters associated with the application, except in the case of system installation items. For system installation items, the XML file is used to set the parameters, but the application is already installed. Col. 6, ll. 15-22. Accordingly, Wierman describes both the partitioning feature and the selecting feature. Other of Appellants’ arguments require limitations that are not present to be read into the claim. For example, Appellants’ argument mentioned above that Wierman is “devoid of any teaching or suggestion of making a decision to select the category of configuration actions if desired and actual states of installation match in the manner of claim 1,” implies that claim 1 Appeal 2010-011538 Application 11/126,118 7 requires the decision to be made only after the software package is deployed and only by the processing entity. As properly found by the Examiner (Ans. 13), Wierman discloses that applications already installed are configured, but are not installed or reinstalled. Moreover, “desired” and “actual” installation and configuration “states” exist in Wierman without regard to whether they are expressly named. We are thus unpersuaded that the examiner erred. Issue 2 In support of a contention that Wierman “teaches away” from Appellants’ invention recited in claim 1, Appellants state that [i]f no installation were to be performed with Wierman’s package, and only the configuration of the product was desired, the configuration would not be possible because the configuration parameters are not available until the installation item containing them is made available through installation. Thus, selecting only the configuration would not work in Wierman’s invention. App. Br. 14. Analysis Appellants’ “teaching away” argument is inapplicable to an anticipation rejection. Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). Accordingly, we do not address it. Appeal 2010-011538 Application 11/126,118 8 Obviousness Rejection of Claims 5-7 and 11-141 Issue 3 Appellants argue with respect to claims 5 and 11 that even though Beaman describes “a list of the different types of configuration tests performed . . . in their preferred order,” the results of which are then “reported by the system to the user,” Beaman does not describe a “second application of the software package, as recited in claim 5, . . . as the result of Beaman’s configuration tests.” App. Br. 19. The Examiner finds that Beaman’s teachings at column 3, lines 38-45 (“by providing a detailed report to the administrators, faster repairs and proper configurations may be generated”), “equate to actions made in response to a determination that the original installation and/or configuration actions were improper or ineffective” and that “Wierman discloses that an Application already resident on the device would subject only to configuration (see col. 6 ll. 19-23), so an application installed but improperly would be reconfigured as recited in the claim.” Ans. 17-18. We are therefore presented with the issue of whether the Examiner erred in finding that the combination of Wierman and Beaman teaches first and second applications of the software package. Analysis We are not persuaded that the Examiner erred. As discussed infra, Wierman describes installation items that may include both installation and configuration actions, or may include just configuration actions. Wierman, 1 Appellants do not separately argue claims 7, 12, or 13. Appeal 2010-011538 Application 11/126,118 9 Col. 6, ll. 16-22. Beaman describes maintaining proper configuration of installed software. Beaman, Col. 3, ll. 41-42. One skilled in the art of software configuration would have found it obvious to combine the teachings of Wierman and Beaman as explained by the Examiner to obtain the first and second applications of the software package of claim 5. Issue 4 Appellants further argue that “Wierman and Beaman are not analogous art and would not be combined by one of ordinary skill in the art in the manner suggested in the office action” since “[o]ne skilled in the art would not look to solutions in [Beaman’s] field to solve problems in the field of Wierman’s invention, or vice versa.” App. Br. 19-20. The Examiner finds that the references are analogous because “Beaman teaches the verification of the configuration . . . of computer hardware . . . by the analysis of the configuration . . . of the software running on said hardware” (citation omitted) and “Wierman teaches the configuration of mobile device hardware by the analysis and configuration of the software running on said mobile device hardware.” Ans. 18. Analysis We agree with the Examiner. “Whether a reference in the prior art is ‘analogous’ is a fact question.” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 n.9 (Fed. Cir. 1987)). Two criteria have evolved for answering the question: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the Appeal 2010-011538 Application 11/126,118 10 inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. at 658-59 (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.” Id. at 659. Here, the configuration maintenance of installed software, whether on peripheral hardware as in Beaman or mobile hardware as in Wierman, is pertinent to the inventor’s endeavor. Issue 5 Regarding claims 6 and 14, Appellants argue that while Beaman generally teaches checking system configuration items, Beaman does not teach the more specific checking for compliance to each action within a software deployment package as in claim 6. The delta software deployment packages as in claim 6 are also not taught or suggested by either reference. Thus, the combination cannot teach or suggest “providing a selective delta package including only installation category actions and configuration category actions needed for bringing the target data processing entity into compliance” as recited in claim 6. App. Br. 21. The Examiner finds that Beaman teaches the verification of proper configuration (fig. 4) and that “by providing a detailed report to the administrators, faster repairs and proper configurations may be generated.” Such a teaching, when combined with Wierman, [renders obvious] claim 6, because any new installation and Appeal 2010-011538 Application 11/126,118 11 configuration package generated (by Wierman) in response to a report (by Beaman) documenting configuration errors (e.g., wrong version of a software component is present, or the configuration settings of a software component are improper - see fig. 4) necessarily would be a “delta patch.” Ans. 19-20 (citation omitted). Analysis We find that the Examiner has provided sufficient findings of fact with respect to the teachings of Wierman and Beaman and did not err in finding that a person of ordinary skill in the art would have been motivated to combine the teachings and suggestions of the references. CONCLUSIONS On the record before us, we conclude that, because Wierman describes both partitioning actions into installation and configuration and performing configuration without performing installation, the Examiner has not erred in rejecting claims 1-4, 8, 10, 15, and 16 as anticipated by Wierman. We further conclude that, because the Examiner has provided articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have found it obvious to combine the teachings of Wierman and Beaman, the Examiner has not erred in rejecting claims 5-7 and 11-14. DECISION For the above reasons, the Examiner’s rejection of claims 1-8 and 10- 16 is affirmed. Appeal 2010-011538 Application 11/126,118 12 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)(2010). AFFIRMED ke Copy with citationCopy as parenthetical citation