Ex Parte Waltermann et al

Patent Trial and Appeal Board

Aug 29, 2017

13435452 (P.T.A.B. Aug. 29, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/435,452 03/30/2012 Rod D. Waltermann RPS920110066USNP(710.190) 1658
58127 7590 08/29/2017
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
MORSHED, HOSSAIN M
ART UNIT PAPER NUMBER
2191
MAIL DATE DELIVERY MODE
08/29/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROD D. WALTERMANN, NATHAN J. PETERSON,
RICHARD PAUL CORNWELL, BRUCE DOUGLAS GRESS, and JUN LI
Appeal 2017-005333
Application 13/43 5,4521
Technology Center 2100
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 5—11, and 14—21, which constitute all the claims
pending in this application. Claims 2-4 and 12—13 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Lenovo Singapore PTE LTD as the real party in
interest. App. Br. 3.
Appeal 2017-005333
Application 13/435,452
STATEMENT OF THE CASE
Introduction
Appellants’ described and claimed invention relates generally to
“creating device preloads via employing base and additional operating
system content.” See Abstract.2
Claim 1 is representative and reads as follows (with the disputed
limitations emphasized)'.
1. An information handling device comprising:
a base operating system supplied at time of manufacture;
one or more processors;
one or more memories storing program instructions
accessible by the one or more processors; and
wherein, responsive to execution of program instructions
accessible to the one or more processors, the one or more
processors:
communicate, during a first boot of the information
handling device, an aspect of the information handling device to
a repository separate from the information handling device for
selecting additional operating system content to be added to the
base operating system to form a unitary device operating system;
retrieve the additional operating system content; and
assimilate the additional operating system content at the
information handling device responsive to communication of the
aspect of the device, the additional operating system content
deriving from the repository separate from the information
handling device;
2 Our Decision refers to the Final Office Action mailed Feb. 3, 2016 (“Final
Act.”), Appellants’ Appeal Brief filed July 5, 2016 (“App. Br.”) and Reply
Brief filed Feb. 14, 2017 (“Reply Br.”), the Examiner’s Answer mailed Dec.
14, 2016, and the original Specification filed March 30, 2012 (“Spec.”).
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Application 13/435,452
wherein the base operating system and additional
operating system content are combined to form the unitary
device operating system;
wherein the additional operating system content is specific
to the communicated aspect of the information handling device;
and
wherein the base operating system content is common to
at least one other information handling device.
App. Br. 14—15 (Claims App’x.).
Rejections on Appeal
Claims 1, 5, 10-11, 14, and 18—21 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Mullin et al.
(US 2011/0197051 Al; published Aug. 11, 2011) (“Mullin”) in view of
Feinleib (US 6,343,360 Bl; issued Jan. 29, 2002) (“Feinleib”).
Claims 6—7 and 15—16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mullin, Feinleib, and Kataria et al.
(US 2006/0075276 Al; published Apr. 6, 2006) (“Kataria”).
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mullin, Feinleib, and Samba et al. (US 8,214,631 B2;
issued July 3, 2012) (“Samba”).
Claims 9 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mullin, Feinleib, and Anonymous Authors, ip.com,
System and Apparatus for Sharable Common Operating System in Cloud
Computing, IPCOM000208801D, July 18, 2011, available at
http://ip.eom/IPCOM/000208801 (“Anonymous”).
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Application 13/435,452
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Appeal Brief (see App. Br. 9-12) and Reply Brief (see
Reply Br. 10-12), and are not persuaded the Examiner has erred. Unless
otherwise noted, we adopt as our own the findings and reasons set forth by
the Examiner in the Office Action from which this appeal is taken (Final
Act. 2—22), and in the Examiner’s Answer (Ans. 2—18), and we concur with
the conclusions reached by the Examiner. For emphasis, we consider and
highlight specific arguments as presented in the Appeal Brief and Reply
Brief.
Rejection of Claims 1, 5—9, 11, and 14—21 under § 103(a)
Appellants argue the combination of Mullin and Feinleib fails to teach
or suggest “communicate, during a first boot of the information handling
device, an aspect of the information handling device to a repository separate
from the information handling device for selecting additional operating
system content to be added to the base operating system to form a unitary
device operating system,” “retrieve the additional operating system content,”
and “assimilate the additional operating system content at the information
handling device responsive to communication of the aspect of the device, the
additional operating system content deriving from the repository separate
from the information handling device,” as recited in independent claim 1,
and similarly recited in independent claims 11 and 19.3 See App. Br. 10; see
also Reply Br. 10-11. More specifically, Appellants argue Feinleib teaches
retrieval of configuration information, and the Office has failed to provide
3 Appellants’ argument fails to address independent claim 20. See App.
Br. 10—11. Thus, the rejection of claim 20 is summarily sustained.
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Application 13/435,452
any evidence that Feinleib’s configuration information is equivalent to the
claimed “additional operating system content.” See App. Br. 10-11; see
also Reply Br. 11.
We are not persuaded by this argument. We agree with the Examiner
that the claimed “additional operating system content,” interpreted broadly
but reasonably in light of Appellants’ specification, reads on Feinleib’s
configuration information, as the claimed “additional operating system
content” can include any type of operating system content (such as
functional content), and Feinleib discloses that the configuration information
can include time zone information. See Ans. 15—16; see also Feinleib 6:45—
47. Appellants’ argument that the limitation “the additional operating
system content deriving from the repository separate from the information
handling device” distinguishes the claimed “additional operating system
content” from Feinleib’s configuration information is not persuasive because
Feinleib discloses that the configuration information is stored in a database
(i.e., the claimed “repository”) that is separate from a computing device (i.e.,
the claimed “information handling device”). See Feinleib 2:53—64 (“[t]he
computing device passes the zip code to the zip code database either locally,
or over a network,” emphasis added). Thus, we agree the combination of
Mullin and Feinleib teaches or suggests retrieving the claimed “additional
operating system content.”
Accordingly, we sustain the Examiner’s rejection of claims 1, 11, 19,
and 20 for obviousness under 35 U.S.C. § 103(a). We also sustain the
Examiner’s rejection of claims 5—9, 14—18, and 21, which depend from one
of claims 1,11, and 21, and which are not argued separately.
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Rejection of Claim 10 under § 103(a)
Appellants also argue the combination of Mullin and Feinleib fails to
teach or suggest “wherein the additional operating system content comprises
at least one operating system patch,” as recited in claim 10. See App Br. 11;
see also Reply Br. 12. More specifically, Appellants argue neither reference
teaches or suggests that the additional operating system content comprises
an operating system patch that is derived from a repository separate from an
information handling device. See App. Br. 11—12; see Reply Br. 12.
We are not persuaded by this argument. As a threshold matter, we
agree with the Examiner that Mullin teaches an operating system patch that
is derived from a repository separate from an information handling device.
See Ans. 17—18 (citing Mullin ]f]f 10, 21). Further, rather than solely relying
on either Mullin or Feinleib for teaching additional operating system content
that comprises at least one operating system patch, the Examiner relies upon
the combination of Mullin and Feinleib for teaching the aforementioned
limitation. In that regard, the Examiner relies upon Mullin for the claimed
“at least one operating system patch,” and further relies upon Feinleib for
teaching the claimed “additional operating system content. . . deriving from
the repository separate from the information handling device.” See Final
Act. 9, 12; see also Ans. 15—18. It is well established that one cannot show
non-obviousness by attacking references individually where the rejection is
based upon the teachings of a combination of references. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller 642 F.2d
413, 425 (CCPA 1981). As Appellants’ argument does not address the
actual reasoning of the rejection, we do not find it persuasive.
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Accordingly, we sustain the Examiner’s rejection of claim 10 for
obviousness under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejection of claims 1, 5—11, and 14—21
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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