Ex Parte Condon et al

Board of Patent Appeals and Interferences

Jan 14, 2008

09467706 (B.P.A.I. Jan. 14, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAT CONDON, MIKE FINUCANE, MAURICE HAYES,
PATRICK O’GRADY, PAUL REID, DAVID SPEIGHT, JOHN WHITE
____________

Appeal 2007-3761
Application 09/467,706
Technology Center 3600
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Decided: January 14, 2008
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Condon, et al. (Appellants) seek our review under 35 U.S.C. § 134 of
the final rejection of claims 1, 4, 12-16, and 19. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
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Application 09/467,706

SUMMARY OF DECISION
We REVERSE.1
THE INVENTION
The Appellants’ claimed invention is to a method of automatically
configuring a computer in accordance with a customer’s requirements.
(Specification 4:19-20.) A manufacturer provides a manufacturer web page
unit, a manufacturer office unit, and a manufacturer plant. (Specification
6:6-14 and Fig. 2.) The general sequence of operations is presented in
Figure 1. A customer places an order and receives a generated reference
number. (Specification 5:7-8.) The order is down-loaded to the
manufacturing plant and if any special configuration is required for the
order, an auto-configuration indicator is included with the order.
(Specification 5:9-11.) The process for any special configuration required
by the customer occurs essentially in parallel with the standard order
procedures. (Specification 5:12-15.) In order for the customer to be able to
make the special configuration request, the manufacturer provides a web
page for this purpose and the special configuration request via this web page
is passed over the Internet to the manufacturer. (Specification 5:16-18 and
7:5-6.) A special configuration is a configuration that differs from the
standard default configuration. (Specification 7:4-5.) The special
configuration is passed to a validation system to verify whether the special
configuration is consistent and within the range of special configurations the
manufacturer can implement. (Specification 5:19-22.) The technical

1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed Oct. 25, 2006), Reply Brief (“Reply Br.,” filed Apr. 5, 2007), and the
Examiner’s Answer (“Answer,” mailed Feb. 9, 2007).
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elements of the order are passed to a control unit in the manufacturing plant
that controls the manufacture of the computer. (Specification 6:24-26.)
Appropriate hardware is selected from the supply lines for the assemblage of
the ordered computer. (Specification 6:27 to 7:1.) Likewise, appropriate
software packages are selected from the supply lines and loaded onto the
ordered computer. (Specification 7:2-3.) The web page that contains the
special configuration is passed to the modification unit in the office unit.
(Specification 7:12-13.) The special configuration details are then passed to
a validation unit which is also provided the details of the customer’s order
from the order unit. (Specification 7:13-15.) The validation unit will check
the compatibility of the special configuration details and the main order
details and check the current capabilities of the manufacturer to insure
compatibility between the manufacturer capability and the special
configuration. (Specification 7:15-19.) Once the special configuration
details are validated, they are made available to the manufacturer’s control
unit. (Specification 7:20-21.) The control unit detects any modification
details, i.e. a flag for special configuration details, from the main order and
obtains the corresponding configuration details from the modification unit.
(Specification 7:21-23.) Next the control unit checks the special
configuration details with a factory database to determine the best
implementation of the special configuration details. (Specification 7:23-25.)
The control unit then enters the appropriate data into the computer being
manufactured which includes entering the special configuration details into
the appropriated software packages which are being loaded or have been
loaded into the computer from the supply line. (Specification 7:25 to 8:1.)
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Claim 1, reproduced below, is representative of the subject matter on
appeal. The reference letters adjacent each limitation are present for ease of
reading the claim and should not be construed as presenting the steps in any
particular order.
1. A method of automatically manufacturing a computer
comprising:
[a.] a manufacturer providing a manufacturer web page unit,
a manufacturer office unit and a manufacturer plant;
[b.] a customer sending a main order for the computer to the
office unit via a web page in the web page unit, the customer
being required to indicate if a special configuration is desired;
[c.] passing elements of the main order to a control unit in the
manufacturing plant unit;
[d.] the control unit controlling manufacturing and supply
lines containing a plurality of compatible hardware and selected
software components for installation into the computer being
manufactured;
[e.] the customer entering any special configuration details to
the web page unit;
[f.] passing the web page to a modification unit in the office
unit;
[g.] passing the special configuration details to a validation
unit in the office unit;
[h.] the validation unit checking the special configuration
details for compatibility with details of the main order;
[i.] upon validation, sending the special configuration details
to the control unit;
[j.] the control unit detecting any modification details in the
main order details and obtaining corresponding configuration
details from the modification unit;
[k.] the control unit checking the configuration details with a
factory database for implementation; and
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[l.] the control unit entering appropriate data into the computer
being manufactured including entering modification details in
appropriate ones of the selected software components which are
being installed or have been installed in the computer.

THE PRIOR ART
The Examiner relies upon the following as evidence of
unpatentability:
Kroening US 6,080,207 Jun. 27, 2000
Knowles US 6,182,897 B1 Feb. 6, 2001
Dharnipragada US 6,490,493 Dec. 3, 2002

THE REJECTION
The following rejection is before us for review:
Claims 1, 4, 12-16, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dharnipragada in view of Kroening and further in
view of Knowles.

ISSUE
The issue is whether the Appellants have shown the Examiner erred in
rejecting claims 1, 4, 12-16, and 19 as unpatentable over Dharnipragada in
view of Kroening and further in view of Knowles.2 This issue turns on
whether the cited prior art would have led one having ordinary skill in the art
to have a process for manufacturing a computer with the handling and

2 Only those arguments actually made by Appellants have been considered
in this decision. Arguments that Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
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implementation of special configuration details that include the steps of
“passing the special configuration details to a validation unit in the office
unit; the validation unit checking the special configuration details for
compatibility with details of the main order; upon validation, sending the
special configuration details to the control unit; the control unit detecting
any modification details in the main order details and obtaining
corresponding configuration details from the modification unit; the control
unit checking the configuration details with a factory database for
implementation; and the control unit entering appropriate data into the
computer being manufactured including entering modification details in
appropriate ones of the selected software components which are being
installed or have been installed in the computer” as claimed in claim 1.

FINDINGS OF FACT
We find that the following enumerated findings of fact are supported
by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849
F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary
standard for proceedings before the Office).
The scope and content of the prior art
1. Dharnipragada relates to software to assist industrial process
engineers with specifying and managing process devices.
(Dharnipragada, col. 1, ll. 4-9.) Examples of process devices are
devices that perform measurements using pressure, flow, temperature,
and level, and devices that perform process control such as valves,
motors and switches. (Dharnipragada, col. 4, ll. 11-13.)
Dharnipragada’s software is an integration of process device: (1)
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requirement entry, (2) selection, (3) specification, and (4) ordering
often done on different computers. (Dharnipragada, col. 2, ll. 64-67.)
A relational database accommodates a process device configuration
module that has a core set of tables for process device specifications
and exception rules that identify selection and specification issues that
allow expert rules to model process requirements against one or more
process devices. (Dharnipragada, col. 3, ll. 53-62.) The software is
set up as process device modules that allow the software to be
customized for the user with any or all of the different modules for
evaluating process devices used for measurement and control and
includes features to permit importing process data, perform sizing and
selection on the data, and then export the process device
specifications. (Dharnipragada, col. 4, ll. 9-19.) The overall sequence
for determining an appropriate processing device for a particular
process application is: device requirement, device order, device
evaluation, and device management. The device requirement
sequence receives the process requirement from a point in the process
plant that is organized under a unique identifier known as a Tag.
(Dharnipragada, col. 4, ll. 42-56.) The selection sequence evaluates
the process requirements against existing process device data and
assists the user in selecting a technology that meets the process device
requirements and then applying the selected technology to the process
requirements to define a specified process device. (Dharnipragada,
col. 4, l. 66 to col. 5, l. 8.) The evaluation sequence includes the
execution of numerous validation checks to ensure the process device
selected is compatible with the process requirements.
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(Dharnipragada, col. 5, ll. 9-22.) Once the process device is selected
the software will apply sizing algorithms to evaluate the performance
characteristics of the selected technology and the user can reconsider
and change the technology as desired. (Dharnipragada, col. 5, ll. 23-
28.) The order sequence initiates the building of the specified process
device by sending an order to the manufacturer. (Dharnipragada, col.
5, ll. 50-55.) A customer can change the order because the order is
electronic and the change in the order would just be an electronic
update and the process device would likely be built to the updated
order if the update was received before building the process device.
(Dharnipragada, col. 6, ll. 3-10.) If the change was after the
beginning of manufacture, then the order database would be changed,
but the device would be built to the original order. (Dharnipragada,
col. 6, 11-15.) The evaluation sequence evaluates the built process
device to obtain built process device data and each process device is
calibrated according to the specification. (Dharnipragada, col. 6, ll.
20-28.) The management sequence places the built process device
into a built database for the management purposes of comparison and
maintenance. (Dharnipragada, col. 6, ll. 47-58.) The comparison
sequence checks to see if the built process meets the process
requirements by placing the built process device data and the ordered
process device data into a discrepancy database. (Dharnipragada, col.
7, ll. 8-14.) The discrepancies between the ordered and built process
devices are displayed and if the discrepancy is unacceptable the
device would be reordered. (Dharnipragada, col. 7. ll. 42-60.) The
maintenance sequence receives requests for replacement of built
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process devices and orders a replacement from the manufacturer.
(Dharnipragada, col. 8, ll. 1-10.)
2. Kroening teaches a system for generating custom software
configurations for computer hard drives according to wishes of
customers. (Kroening, Abstract.) A bill of materials is established
that includes a customer’s selection of desired software for a
computer. (Kroening, col. 4, ll. 10-12.) The desired configuration
may be an upgrade to an application already installed on the computer
or a new hard drive that is to be configured with an operating system
and applications. (Kroening, col. 4, ll. 34-38.) The mechanism that
performs the custom software configuration is an image builder. The
image builder is a device that surveys a database of software
configurations to identify a matching configuration or identify a
baseline configuration. (Kroening, col. 2, ll. 6-9.) Once the baseline
is identified the image builder performs a comparison to create a set of
changes to combine with or edit into the baseline image “picture” to
generate the desired software configuration. (Kroening, col. 2, ll. 10-
13.) Next the image builder goes through the baseline image file by
file, identifies the differences, and determines what needs to be
replaced. (Kroening, col. 5, ll. 11-13.) In addition, the image builder
performs a task of determining changes that need to be made in the
registry and interrupt settings in order for the software configuration
to work properly. (Kroening, col. 5, ll. 28-22.) The image builder
will reject any bill of materials as a non-functional configuration, if
the software configuration is not compatible with the hardware of the
computer. (Kroening, col. 5, ll. 22-26.) If the configuration is
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compatible, the image is loaded onto the hard drive by methods
known in the art. (Kroening, col. 5, ll. 27-36.)
3. Knowles teaches designing and manufacturing laser scanner using
wide area networks such as the Internet. (Knowles, col. 1, ll. 16-18.)
The customer accesses a website to order a scanner. (Knowles, col. 4,
ll. 1-5.) The customer provides the end-user scanning requirements at
the website using HTML forms. (Knowles, col. 4, ll. 36-46.) The
system takes the requirements provided by the customer and with the
modular components stored within its database generates a complete
model of a laser scanner that satisfies the requirements. (Knowles,
col. 4, ll. 51-62.) The system will then test the model design to see
whether customer’s requirements are met and if met generate a cost
for the final product. (Knowles, col. 5, ll. 6-16.) If the customer is
satisfied with the design, a purchase may be made by the customer.
(Knowles, col. 5, ll. 37-42.) If the customer has made a purchase
order, the customer may track the progress of manufacture of the laser
scanner. (Knowles, col. 5, ll. 49-53.)
The level of skill in the art
4. Neither the Examiner nor Appellants have addressed the level of
ordinary skill in the pertinent arts of configuring computers. As such,
we will therefore consider the cited prior art as representative of the
level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on
the level of skill in the art does not give rise to reversible error ‘where
the prior art itself reflects an appropriate level and a need for
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testimony is not shown.’”) (quoting Litton Indus. Prods., Inc. v. Solid
State Sys. Corp., 807 F.2d 955, 963 (Fed. Cir. 1985).
Secondary considerations
5. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Claims are given the broadest reasonable construction consistent with
the specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997). “Words which are defined in the specification must
be given the same meaning when used in a claim.” McGill, Inc. v. John Zink
Co., 736 F.2d 666, 674 (Fed. Cir.), cert. denied, 469 U.S. 1037 (1984).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
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It is elementary that to support an obviousness rejection, all of the
claim limitations must be taught or suggested by the prior art applied (see In
re Royka, 490 F.2d 981, 984-85 (CCPA 1974)) and that all words in a claim
must be considered in judging the patentability of that claim against the prior
art (In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970)).

ANALYSIS
Rejection of claims 1, 4, 12-16, and 19 as unpatentable over
Dharnipragada, Kroening, and Knowles
The Examiner found that Dharnipragada teaches a customer entering
special configuration details in a computer in column 5, line 1 through
column 6, line 19 and checking configuration details with a database to
determine implementation in column 7, lines 1 through 63. (Answer, 3.)
The Specification defines the term “special configuration” as: “a
configuration which differs from the standard default configuration.”
(Specification 7:4-5.) Thus, in light of the Specification, the broadest
reasonable construction of the claim as it would be interpreted by one of
ordinary skill in the art is that the claim term “special configuration” means
“a configuration which differs from the standard default configuration.”
The Examiner, however, has construed the term “special
configuration” differently. What the Examiner has identified as meeting the
“special configuration details” is in actuality the selection sequence
evaluating the process requirements against existing process device data and
assisting the user in selecting a technology that meets the process device
requirements and then applying the selected technology to the process
requirements to define a specified process device and the ability of the
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customer to change the order with pre-production and post-production
consequences. (Finding of Fact 2.) As such, the “special configuration
details” the Examiner is referring to is just the customer selecting of
components to build the process device and the customer having the
capability of changing the order. This is inconsistent with the broadest
reasonable construction to be given the term “special configuration” in light
of Specification.
The Appellant argues that Dharnipragada, in addition, lacks a teaching
of the claim limitations of “passing the special configuration details to a
validation unit in the office unit; the validation unit checking the special
configuration details for compatibility with details of the main order; upon
validation, sending the special configuration details to the control unit; the
control unit detecting any modification details in the main order details and
obtaining corresponding configuration details from the modification unit; the
control unit checking the configuration details with a factory database for
implementation; and the control unit entering appropriate data into the
computer being manufactured including entering modification details in
appropriate ones of the selected software components which are being
installed or have been installed in the computer.” (App. Br. 8-9.) We agree.
We are unable to find these limitations disclosed in Dharnipragada.
(Finding of Fact 2.)

Teachings of Kroening and Knowles
We do not see where Kroening corrects the deficiencies found in
Dharnipragada with respect to providing a teaching of permitting a customer
to indicate a “special configuration” or the other steps outlined supra.
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(Finding of Fact 2.) Further, we do not see where the Examiner has
identified where Knowles would cure the deficiencies found in
Dharnipragada. (Finding of Fact 3.)

CONCLUSION OF LAW
We conclude the Appellants have shown that the Examiner erred in
rejecting claims 1, 4, 12-16, and 19 as unpatentable over Dharnipragada,
Kroening, and Knowles.

DECISION
The decision of the Examiner to reject claims 1, 4, 12-16, and 19 is
reversed.

REVERSED

JRG

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