Ex parte Albright

Board of Patent Appeals and Interferences

Apr 11, 2000

08365269 (B.P.A.I. Apr. 11, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DAVID H. ALBRIGHT
and STEVE ZEVAN
__________
Appeal No. 1998-0946
Application 08/365,269
__________
ON BRIEF
__________
Before KRASS, FLEMING, and BARRY, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 73, all of the claims pending in the
application.
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Application No. 08/365,269
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The invention pertains to updating computer programs as
remote locations. More specifically, a customer at a remote
location from a central site can request a software service
from a software maintenance facility at the central site and
receive therefrom updated, executable software through a local
software interface front-end that permits the remote customer
to specify a range of optional service incorporation
instructions, including service research, requesting service,
applying service, providing fixes, and installing serviced
products or fixes at the remote location.
Representative independent claim 1 is reproduced as
follows:
1. A method of applying service to a computer program
that is to be executed at a remote location connected to a
central computer site of a computer network, the method
comprising the steps of:
interactively receiving a request for a computer program
service from a customer at a remote location interface with
optional service incorporation instructions of the remote
location customer;
providing the received request for service over the
computer network to a service facility at the central computer
site;
determining the components of the requested service at
the central computer site; and
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Application No. 08/365,269
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providing the results of the requested service over the
computer network back to the customer at the remote location
interface.
The examiner relies on the following references:
Kirouac et al. (Kirouac) 5,155,847 Oct.
13, 1992
Cox et al. (Cox) 5,361,358 Nov. 1,
1994
Claims 1 through 73 stand rejected under 35 U.S.C. § 103
as unpatentable over Kirouac in view of Cox.
Reference is made to the brief and answer for the
respective positions of appellants and the examiner.
OPINION
At the outset, we note that, in accordance with
appellants’ grouping of the claims at page 6 of the brief, all
claims stand or fall together.
We reverse.
Taking claim 1 as exemplary, Kirouac clearly teaches a
method of applying service to a computer program that is to be
executed at a remote location connected to a central computer
site of a computer network. The customer requests a computer
program service and the request is provided over the computer
network to a “service facility” at the central computer site.
That request is an update of software. The components of the
Appeal No. 1998-0946
Application No. 08/365,269
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requested service are determined, i.e., all that is necessary
for the requested update. The results of the requested
service are then provided over the network back to the
customer at the remote location, i.e., the updated version of
the software is sent back to the customer.
However, claim 1, as does each of the independent claims,
requires that the request is received “with optional service
incorporation instructions of the remote location customer.”
Kirouac provides for no such “optional service incorporation
instructions.” At the central computer site in Kirouac,
software patch version numbers are compared and the requester
is provided with the most recent patch version available. The
customer is not permitted to include “optional service
incorporation instructions,” as claimed.
The examiner recognizes this deficiency and relies on Cox
for the teaching of such “optional service incorporation
instructions” pointing to Figure 3 of Cox where “Install”,
“Configure”, “Remove”, “Exit” and “Help” buttons are shown.
The examiner states [answer-page 5] that these buttons
comprise the claimed “optional service incorporation
instructions” and that it would have been obvious to combine
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Application No. 08/365,269
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Cox with Kirouac because the placement of these teaching of
Cox “into the networked remote-central computer environment of
Kirouac would successfully allow a user to interactively
update applications on remote computers over a computer
network using knowledge generally available in the art”
[answer-page 6].
While appellants argue that Cox is not combinable with
Kirouac because Cox is concerned not with application updates
but, rather, with permitting an application on a first
operating system in a machine to run under another operating
system on the same machine, we do not think Cox is so far
removed from the subject matter of Kirouac so as to make them
non-combinable. They both relate to updates of applications,
generally speaking, and the artisan skilled in this art would
have been expected to be familiar with the systems of both
Kirouac and Cox. The problem, in our view, is that even if
combined, the claimed subject matter is not reached.
One may consider, as the examiner apparently did, the
claimed phrase, “optional service incorporation instructions,”
to be so broad as to read on the buttons 300, 302, 304, 306
and 308 of Cox since these buttons clearly give the user
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Application No. 08/365,269
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“options.” However, in view of the meaning given to that
phrase in the instant specification [pages 3-4 and 13] and
reiterated by appellants in the remarks accompanying the
amendment of January 10, 1997 [Paper No. 7], at which time
this phrase was added to the claims, we interpret the claimed
phrase “optional service incorporation instructions” to mean
that the customer specifies a range of optional instructions
including “service research, requesting service, applying
service, providing fixes, and installing serviced products or
fixes at the remote location.” [page 5 of the amendment or
page 4 of the specification].
Since neither Kirouac nor Cox discloses or suggests any
optional service incorporation instructions including these
specific options, we will not sustain the rejection of claims
1 through 73 under 35 U.S.C. § 103.
The examiner’s decision is reversed.
REVERSED
Errol A. Krass )
Administrative Patent Judge )
)
Appeal No. 1998-0946
Application No. 08/365,269
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)
)
Michael R. Fleming ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Lance Leonard Barry )
Administrative Patent Judge )
tdl
Appeal No. 1998-0946
Application No. 08/365,269
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Arthur J. Samodovitz
IBM Corporation, N50/040-4
1701 North Street
Endicott, NY 13760