Ex Parte Mehta et al

Patent Trial and Appeal BoardApr 7, 2016

12986886 (P.T.A.B. Apr. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/986,886 01107/2011 Pratik M. Mehta 33438 7590 04/11/2016 TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP P.O. BOX 203518 AUSTIN, TX 78720 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. DC-09683A 7315 EXAMINER HAYLES, ASHFORD S ART UNIT PAPER NUMBER 3687 NOTIFICATION DATE DELIVERY MODE 04/11/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): tmunoz@tcchlaw.com kchambers@tcchlaw.com heather@tcchlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PRATIK M. MEHTA, MICHAEL RYAN, and ROGER CAMERON Appeal 2013-009621 1 Application 12/986,8862 Technology Center 3600 Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and CYNTHIA L. MURPHY, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 16-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM 1 Our decision references Appellants' Appeal Brief ("App. Br.," filed May 8, 2013) and Reply Brief ("Reply Br.," filed July 24, 2013), and the Examiner's Answer ("Ans.," mailed May 24, 2013) and Final Office Action ("Final Act.," mailed July 25, 2012). 2 Appellants identify Dell Products L.P. as the real party in interest. App. Br. 1. Appeal2013-009621 Application 12/986,886 CLAIMED fNVENTION Appellants' claimed invention "relates in general to the field of information handling system networking, and more particularly to a system and method for managing information handling system wireless wide area network provisioning" (Spec. 1, 11. 9--11 ). Claim 16, reproduced below, is the sole independent claim and representative of the subject matter on appeal: 16. A method for building an information handling system having provisioned wireless networking service, the method comprising: receiving an order for an information handling system from an end user having end user information, the order having a configuration of plural processing components, the plural processing components selected by the end user from plural processing component alternatives and including a provisioned wireless networking component; assembling plural processing components in a housing, the processing components configured to process information and including at least one \~\rireless net\~1orking component; associating end user information with the information handling system; reading identification information from the wireless networking component; and applying the end user information and identification information with an information handling system to formulate a request for communication to a wireless networking provider for provisioning wireless networking service from a wireless networking provider. REJECTIONS Claims 16 and 18 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Boyce (US 2004/0200895 Al, pub. Oct. 14, 2004) and Roberts (US 2002/0165850 Al, pub. Nov. 7, 2002). 2 Appeal2013-009621 Application 12/986,886 Claim 17 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Boyce, Roberts, and Lunden (US 2006/0009217 Al, pub. Jan. 12, 2006). Claims 19 and 20 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Boyce, Roberts, and Durig (US 7,894,812 Bl, iss. Feb. 22, 2011). 3 ANALYSIS Independent claim 16 Appellants argue that the Examiner erred in rejecting claim 16 under 35 U.S.C. Â§ 103(a) because "Boyce and Roberts do not fairly suggest building a pre-provisioned information handling system from components selected by an end user" (App. Br. 3). More particularly, Appellants argue that the combination of Boyce and Roberts fails to disclose or suggest "the order having a configuration of plural processing components, the plural processing components selected by the end user from plural processing component alternatives and including a provisioned wireless networking component" and "assembling [the] plural processing components in a housing," as recited in claim 16 (App. Br. 3--4). The Examiner maintains that the rejection is proper, and relies on Roberts as disclosing an order for an information system having a plurality of processing components selected by the end user from plural processing component alternatives, and on Boyce as disclosing that the plural processing components are assembled in a housing and include a provisioned wireless networking component (Final 3 The Examiner references Mosher (US 6,029,143, iss. Feb. 22, 2000) in setting forth the rejection of claims 19 and 20 (Final Act. 7); however, the rejection appears to be based instead on the disclosure of Durig (see id.). 3 Appeal2013-009621 Application 12/986,886 Act. 2-5 (citing Roberts il 22, Figs. 2, 3 and Boyce il 26, Fig. 2)). We agree with the Examiner. Boyce is directed to a method for mobile communication device order fulfillment (Boyce, Abstract). Boyce discloses that an order for a new account, including information about the customer and provisioning information, is transmitted electronically to an order fulfillment center; the fulfillment center assembles a kit for shipment to the customer, and includes a mobile communication device using an identity card (id.). Boyce discloses that the identity cards are installed at the fulfillment center, and programed with provisioning information; thus, when the mobile communication device arrives at the customer's premises, it can be immediately used for communicating, i.e., the customer receives a pre-provisioned information handling device. Boyce does not disclose that the user is allowed to create an order for a customized device; however, Roberts is directed to a mechanism for configuring handheld devices, including, inter alia, a build- to-order configuration engine (Roberts i-f 3). Roberts, thus, discloses a user interface, with reference to Figure 2, that allows a user to choose a specific handheld device and select software for that device (id. i-f 29; see also id. ,-r,-r 18, 19). Appellants argue that Boyce loads information into an identity card used by a mobile phone whereas claim 16 recites a method for "building an information handling system to fill a custom order by an end user who selects components where the components are built into a housing" (App. Br. 4 ). Appellants further maintain that although the Examiner relies on Roberts as showing the building of the components into a housing, Roberts 4 Appeal2013-009621 Application 12/986,886 addresses loading software onto a standardized hardware system (id.). Appellants' arguments are not persuasive of Examiner error. The Examiner relies on Boyce as disclosing that plural processing components, including a provisioned wireless networking component, are assembled in a housing (Final Act. 2-3); but the Examiner acknowledges that Boyce does not disclose receiving an order having a configuration of plural processing components selected by the end user (id. at 4). Appellants argue that Roberts addresses loading software onto a standardized hardware system and, thus, ostensibly maintain that the claimed "plural processing components selected by the end user from plural processing component alternatives" cannot include software. But we find nothing in the Specification, including the claim language, nor, for that matter, do Appellants point to anything, that precludes software modules as processing components. In fact, the Specification expressly contemplates an information handling system manufacturer receiving an order for information handling system from an end user that specifies the hardware and software configuration of the system (see, e.g., Spec. 3, 11. 23-26). Appellants further argue that although Roberts provides a handheld device, "no indication in Roberts suggests a combination with a mobile telephone disclosed by Boyce" (App. Br. 4). That argument fails at least because it not responsive to the Examiner's rejection. The Examiner does not propose combining Roberts's handheld device with Boyce's mobile telephone. Instead, the Examiner merely concludes that it would have been obvious to a person of ordinary skill in the art at the time of Appellants' invention to modify Boyce to include a custom order, as disclosed in 5 Appeal2013-009621 Application 12/986,886 Roberts, i.e., to substitute "one known element for another producing a predictable result" (Ans. 3). In view of the foregoing, we sustain the Examiner's rejection of independent claim 16 under 35 U.S.C. Â§ 103(a). We also sustain the Examiner's rejection under 35 U.S.C. Â§ 103(a) of dependent claim 18, which is not argued separately. Dependent claim 19 Claim 19 depends from claim 18, which depends, in tum, from independent claim 16. Claim 18 recites that the method of claim 16 further comprises, inter alia, "sending the request [for provisioning wireless network service] to the wireless networking provider;" claim 19 recites that the method further comprises "sending confirmation information from the wireless networking provider . . . to the wireless networking component to confirm the provisioning of the account before shipment of the information handling system to the end user." In rejecting claim 19 under 3 5 U.S. C. Â§ 10 3 (a), the Examiner acknowledges that although the Boyce-Roberts combination discloses a build-to-order device being provisioned before being shipped to a customer, the combination fails to disclose "sending confirmation information from the wireless networking provider ... to the wireless networking component to confirm the provisioning of the account," and the Examiner cites Durig to cure the deficiency of Boyce and Roberts (Final Act. 7-8 (citing Durig, col. 2, 1. 60- col. 3, 1. 3)). 4 4 The Examiner incorrectly identifies the cited passage of Durig as appearing at "Col. 2, lines 60-68" (Final Act. 7). 6 Appeal2013-009621 Application 12/986,886 Durig is directed to a method and system for automatic over-the-air updating of a preferred roaming list (PRL) in a multi-mode device based on an account association between the device and a wireless local area network ("WLAN") access point (Durig, col. 2, 11. 54--57). Durig discloses at column 2, line 60 through column 3, line 3 that a wireless carrier maintains data reflecting an account association between a multi-mode device and a WLAN access point, and that the carrier, via over-the-air service provisioning, automatically sends the SSID of the access point to the device; the device automatically adds the SSID to the device's PRL so that the device can then connect to the access point. Durig discloses that this over- the-air provisioning can occur when the device is first provisioned (id. at col. 2, 1. 66 - col. 3, 1. 1 ). Appellants argue that Durig does not disclose "confirm[ ing] the provisioning of the account before shipment of the information handling system to the end user," as recited in claim 19 (App. Br. 4) and that "[i]n order for Durig to coordinate roaming through a WLAN access point, the phone would have to have been delivered to the end user with the main telephone circuit in operation" (id.). But that argument is not persuasive at least because the Examiner cites Boyce as disclosing that a mobile communication device is sent with user provisioned information before being shipped to the user. The Examiner reasons that the sending of the SSID of the wireless access point from the wireless provider to the device, i.e., the wireless networking component, which Durig discloses may occur when the device is first provisioned, constitutes sending a "confirmation" to the device (Final Act. 8). And the Examiner concludes that 7 Appeal2013-009621 Application 12/986,886 Id. it would have been obvious to one of ordinary skill in the art at the time of the invention to include the ability [to] communicate over-the-air provisioning as taught by Durig et al. [ ]in the system of the Boyce et al.-Roberts et al. combination, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. In the absence of specific, technical arguments as to why the modification proposed by the Examiner is more than the predictable use of prior art elements according to their established functions, we are not persuaded that the Examiner erred in rejecting claim 19 under 35 U.S.C. Â§ 103(a). Therefore, we sustain the Examiner's rejection. Dependent claims 17, 18, and 20 Appellants do not present any arguments in support of the patentability of any of claims 17, 18, and 20. Therefore, we summarily sustain the Examiner's rejections of claims 17, 18, and 20 under 35 U.S.C. Â§ 103(a). DECISION The Examiner's rejections of claims 16-20 under 35 U.S.C. Â§ 103(a) are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8