Ex Parte Marinelli et al

Patent Trial and Appeal Board

Apr 30, 2013

11126118 (P.T.A.B. Apr. 30, 2013)

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.
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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
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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.

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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
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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)
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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
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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.

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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.
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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
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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
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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.
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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

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