Ex Parte Ashok et al

Patent Trial and Appeal Board

Feb 23, 2017

13853323 (P.T.A.B. Feb. 23, 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.
13/853,323 03/29/2013 Rohith K. Ashok RSW920130019US1 5566
58139 7590
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
EXAMINER
HASSAN, AURANGZEB
ART UNIT PAPER NUMBER
2184
NOTIFICATION DATE DELIVERY MODE
02/27/2017 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):
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROHITH K. ASHOK, MICHAEL J. BURR,
HUGH E. HOCKETT, MICHAEL S. LAW, and
MATTHEW J. SHEARD
Appeal 2016-002379
Application 13/853,323
Technology Center 2100
Before DEBRA K. STEPHENS, AARON W. MOORE, and
MICHAEL J. ENGLE, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—4, 6—11, and 13—15. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Claims 5 and 12 are objected to as being dependent upon a rejected base
claim, but indicated as being allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening claims.
Appeal 2016-002379
Application 13/853,323
CLAIMED SUBJECT MATTER
According to Appellants, the claims are directed to a Universal Serial
Bus (USB) key functioning as multiple USB keys so as to efficiently
configure different types of hardware of a cloud computing environment
(Abstract). Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer program product embodied in a computer
readable storage medium for efficiently configuring different
types of hardware components, the computer program product
comprising the programming instructions for:
recognizing a first hardware component out of a plurality of
hardware components in response to a data storage device
being plugged into said first hardware component, wherein
said data storage device is preloaded with a plurality of
profiles, wherein each of said plurality of profiles contains a
configuration file associated with a particular type of
hardware component and rules for presenting said
configuration file to said particular type of hardware
component, wherein said data storage device comprises a
flash memory with an integrated Universal Serial Bus (USB)
interface;
identifying a first profile out of said plurality of profiles
containing a first configuration file associated with said first
hardware component in response to recognizing said first
hardware component; and
presenting said first configuration file to said first hardware
component based on said rules of said first profile.
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Application 13/853,323
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Claims 1—4, 8—11, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lee and Brundridge (Final Act. 2-4).
Claims 7 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Brundridge, and Koponen (Final Act. 5).
Claims 6 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Brundridge, Chow, and Koponen (Final Act. 5—6).
Appellants contend their invention as recited in claims 1—4, 8—11, and
15, is not obvious over Lee and Brundridge (App. Br. 4—26).2 The issue
presented by the arguments is:
Issue: Does the combination of Lee and Brundridge teach, suggest, or
otherwise render obvious
recognizing a first hardware component out of a plurality of
hardware components in response to a data storage device being
plugged into said first hardware component, wherein said data
2 Rather than repeat the arguments here, we refer to the Appeal Brief and
Reply Brief for the positions of Appellants and the Final Office Action and
Answer for the positions of the Examiner.
Lee
Chow
Brundridge et al.
Koponen et al.
US 2005/0080973 Al Apr. 14, 2005
US 2008/0082813 Al Apr. 3, 2008
US 2009/0144469 Al June 4, 2009
US 2013/0060929 Al Mar. 7, 2013
REJECTIONS
ISSUES
35 U.S.C. § 103(a): Claims 1—4, 8—11, and 15
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Application 13/853,323
storage device is preloaded with a plurality of profiles, wherein
each of said plurality of profiles contains a configuration file
associated with a particular type of hardware component and
rules for presenting said configuration file to said particular type
of hardware component, wherein said data storage device
comprises a flash memory with an integrated Universal Serial
Bus (USB) interface,
as recited in claim 1 ?
ANALYSIS
The Examiner finds Lee teaches recognizing a device driver to utilize
for the particular hardware component out of a plurality of hardware
components, in response to the data storage device of the USB, being
plugged into the port of the hardware component and upon connection to the
host hardware component (Final Act. 2). The Examiner finds Lee’s USB
device 50 with the memory 66, teaches the claimed “data storage device”;
the host computer 12 teaches the claimed “first hardware component”; and
the plurality of device drivers teaches the claimed “plurality of profiles”
(Final Act. 2—3; Ans. 2—3). According to the Examiner, because each of the
hardware components may have different operating systems, different
configuration files would be required (Ans. 3). Thus, the Examiner finds the
claims do not preclude Lee from functioning wherein a first hardware device
loaded with one operating system, is different from a second hardware
device loaded with a different operating system (id. ).
Appellants argue the peripheral device 50 of Lee does not recognize
computer host 12 out of a plurality of hardware components in response to
being plugged into the computer host 12 (Reply Br. 3). Moreover,
Appellants contend Lee teaches storing a device driver in memory and
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Application 13/853,323
further, teaches when a new hardware component is installed on the
computer system, a user installs a corresponding device driver so the
operating system is capable of driving the added hardware component
correctly (App. Br. 7). Appellants further contend Lee’s driver is not a
“configuration file” according to a broad but reasonable interpretation by an
ordinarily skilled artisan and in light of Appellants’ Specification (id. at 7—
8).
Initially, we note claim 1 does not specify what performs the steps,
and, more specifically, whether the “recognizing,” “identifying,” and
“presenting” are performed by the data storage device or another device
(claim 1). Nevertheless, we agree with Appellants’ assertion that the
Examiner has failed to show Lee teaches, suggests, or otherwise renders
obvious the disputed limitation. Specifically, the Examiner finds Lee’s
memory 66 stores a plurality of drivers (Final Act. 2—3 (citing Lee 129, Fig.
4 (element 114))). The Examiner further identifies Lee’s interaction of the
hardware component and configuration file to determine the driver profile to
be loaded as teaching “wherein each of said plurality of profiles contains a
configuration file associated with a particular type of hardware component
and rules for presenting said configuration file to said particular type of
hardware component” (Final Act. 3 (citing Lee 130)).
We agree with the Examiner that “hardware components” may be
interpreted broadly, but reasonably, to include any type of hardware
component and may include devices which have an operating system (Ans.
3). Nevertheless, we find Lee teaches “memory 66 stores a device driver 70
of the WLAN [module] 58” (Lee 129). Indeed, paragraph 29 of Lee, which
the Examiner identifies, teaches only that a memory stores “a” device driver
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and not a plurality of device drivers (id. ). Thus, we are persuaded the
Examiner has not shown Lee teaches or suggests a data storage device being
preloaded with a plurality of profiles. Moreover, although we agree with the
Examiner that an ordinarily skilled artisan would understand different
operating systems may require different configuration files (Ans. 3), we are
not persuaded Lee teaches, suggests, or otherwise renders obvious the data
storage device (USB device 50) preloaded with a plurality of profiles. The
Examiner further finds Lee’s interaction of the hardware component and
configuration file to determine the driver to be loaded teaches the plurality
of profiles contains rules for presenting the configuration file (Final Act. 3).
However, we are persuaded the Examiner has not shown with particularity,
where Lee teaches, suggests, or otherwise renders obvious the disputed
limitation.
Additionally, we are not persuaded an ordinarily skilled artisan would
have understood Lee’s driver to teach a configuration file. Indeed, we adopt
a broad, but reasonable interpretation of the claim term “configuration file”
in accordance with the ordinary and customary meaning and consistent with
Appellants’ Specification — “[a] file that contains machine-readable
operating specifications for a piece of hardware or software that contains
information on another file or on a specific user, such as the user’s logon
ID” (Microsoft Computer Dictionary 123 (5th ed. 2002)). (See also “device
driver” defined as “[a] software component that permits a computer system
to communicate with a device” (id. at 155)). In light of this interpretation,
we are not persuaded Lee’s device driver teaches, suggests, or renders
obvious a configuration file and the Examiner has not set forth with
particularity why an ordinarily skilled artisan would have understood Lee’s
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device driver to teach, suggest, or otherwise render obvious a configuration
file.
Thus, we are persuaded by Appellants’ assertions and determine the
Examiner has not shown Lee teaches, suggests, or otherwise renders obvious
the disputed limitation
recognizing a first hardware component out of a plurality of
hardware components in response to a data storage device being
plugged into said first hardware component, wherein said data
storage device is preloaded with a plurality of profiles, wherein
each of said plurality of profiles contains a configuration file
associated with a particular type of hardware component and
rules for presenting said configuration file to said particular type
of hardware component, wherein said data storage device
comprises a flash memory with an integrated Universal Serial
Bus (USB) interface,
as recited in claim 1.
Accordingly, Appellants have persuaded us the Examiner has failed to
show the combination of Lee and Brundridge teaches, suggests, or otherwise
renders obvious the limitations as recited in independent claim 1 and
commensurately recited in independent claim 8. Dependent claims 2—4, 9—
11, and 15 stand with their respective independent claims. Therefore, we
cannot sustain the rejections of claims 1—4, 8—11, and 15 under
35 U.S.C. § 103(a) for obviousness over Lee and Brundridge.
35 U.S.C. § 103(a): Claims 7 and 14
35 U.S.C. § 103(a): Claims 6 and 13
The Examiner has not shown Koponen or Chow cures the deficiencies
of Lee and Brundridge. Accordingly, claims 6, 7, 13, and 14 stand with their
respective independent claims. Therefore, we cannot sustain the rejections
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of claims 7 and 14 under 35 U.S.C. § 103(a) for obviousness over Lee,
Brundridge, and Koponen and claims 6 and 13 under 35 U.S.C. § 103(a) for
obviousness over Lee, Brundridge, Chow, and Koponen.
DECISION3
The Examiner’s rejections of claims 1—4, 8—11, and 15 under 35
U.S.C. § 103(a) as being unpatentable over Lee and Brundridge is reversed.
The Examiner’s rejections of claims 7 and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Lee, Brundridge, and Koponen is
reversed.
3 Should there be further prosecution with respect to claims 1—4, 6—11, and
13—15, the Examiner’s attention is directed to In re Nuijten, 500 F.3d 1346
(Fed. Cir. 2007). Appellants’ Specification states “[a] computer readable
storage medium may be, for example, but not limited to, an electronic,
magnetic, optical, electromagnetic, infrared, or semiconductor system,
apparatus, or device, or any suitable combination of the foregoing” (Spec.
1 51). Thus, Appellants’ Specification fails to expressly limit a “computer
readable storage medium” to non-transitory media. Nor does the claim
include recitations either expressly or implicitly limiting the “computer
readable storage medium” to non-transitory media. According to USPTO
guidelines, such claims must be amended to recite solely statutory subject
matter. See David J. Kappos, Subject Matter Eligibility of Computer
Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010); Ex parte
Mewherter, 107 USPQ2d 1857, 1859 (PTAB 2013) (“[T]he broadest
reasonable interpretation of a claim drawn to a computer readable medium
(also called machine readable medium and other such variations) typically
covers forms of non-transitory tangible media and transitory propagating
signals per se in view of the ordinary and customary meaning of computer
readable media, particularly when the specification is silent.”) (citation
omitted).
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Application 13/853,323
The Examiner’s rejections of claims 6 and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over Lee, Brundridge, Chow, and Koponen is
reversed.
REVERSED
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