Ex Parte Ekka et al

Patent Trial and Appeal Board

Sep 23, 2016

12576479 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/576,479 10/09/2009
72058 7590 09/27/2016
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
FIRST NAMED INVENTOR
Pradeep Cyril Ekka
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.
58083-394860(B1094) 2209
EXAMINER
MILLER, VIV AL
ART UNIT PAPER NUMBER
2197
NOTIFICATION DATE DELIVERY MODE
09/27/2016 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):
ipefiling@kilpatrickstockton.com
j lhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRADEEP CYRIL EKKA, SANDEEP RANDA, and
AFROZ MUZAMMIL
Appeal2015-004661
Application 12/576,479 1
Technology Center 2100
Before LARRY J. HUME, JAMES W. DEJMEK, and
JOYCE CRAIG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-17 and 20-22. Appellants have canceled claims 18
and 19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Adobe Systems, Inc.
Br. 2.
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Application 12/576,479
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention relates to a "method,
apparatus and computer program product for simulation installation
operations." Abstract.
Exemplary Claims
Claims 1 and 5, reproduced below, are representative of the subject
matter on appeal (emphasis and formatting added to contested limitations):
1. A computer-implemented method in which a
computer system performs operations comprising:
identifying an installer software application;
identifying a payload to be installed by said installer
software application;
simulating installation of said payload by said installer
software application,
wherein said simulating installation of said payload
comprises [L 1] recording one or more operations associated
with the installation of the payload to a product database and
refraining from performing one or more file copy operations;
and
[L2] verifYing, based on the product database resulting
from the simulating of the installation of the payload, that the
one or more operations recorded for the simulated installation
2 Our decision relies upon Appellants' Appeal Brief ("Br.," filed
Sept. 3, 2014); Examiner's Answer ("Ans.," mailed Jan. 16, 2015); Final
Office Action ("Final Act.," mailed Apr. 8, 2014); and the original
Specification ("Spec.," filed Oct. 9, 2009). We note Appellants did not file a
Reply Brief in response to the factual findings and legal conclusions in the
Examiner's Answer.
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conforms to one or more coexistence scenarios such that there
is no conflict with another installed suite or version.
5. The method of claim 4 [L3] wherein said payload
further comprises a database file containing a set of commands
to be executed for each of said at least one file to be installed,
at least one registry to be installed, and at least one folder to be
installed.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Canning et al. ("Canning") US 2006/0075001 Al Apr. 6, 2006
Isaacson et al. ("Isaacson") US 2006/0265706 Al Nov. 23, 2006
Apostoloiu et al. ("Apostoloiu") US 2007 /0220341 Al Sept. 20, 2007
Wookey US 2008/0201705 Al Aug. 21, 2008
Rejections on Appeal
RI. Claims 1, 2, and 4--223 stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combination of Wookey, Canning, and Isaacson.
Ans. 3; Final Act. 6-15.
R2. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Wookey, Canning, Isaacson, and
Apostoloiu. Ans. 12-13; Final Act. 15-16.
3 The Examiner incorrect! y indicated that claims 18 and 19 are also rejected
under Rejection RI, but these claims have been canceled by Appellants and
are not before us on appeal.
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CLAIM GROUPING
Based on Appellants' arguments (Br. 5-17), we decide the appeal of
obviousness Rejection RI of claims 1, 2, 4, 6-13, 15-17,
and 20---22 on the basis of representative claim 1; and we decide the appeal
of obviousness Rejection RI of claims 5 and 14 on the basis of
representative claim 5.
Remaining claim 3 in Rejection R2, not argued separately, stands or
falls with independent claim 1 from which it depends. 4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1-17
and 20---22, and we incorporate herein and adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claims 1
and 5 for emphasis as follows.
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
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1. § 103 Rejection RI of Claims 1, 2, 4, 6-13, 15-17, and 20-22
Issue 1
Appellants argue (Br. 6-15) the Examiner's rejection of claim 1 under
35 U.S.C. § 103(a) as being obvious over the combination ofWookey,
Canning, and Isaacson is in error. These contentions present us with the
following issues:
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests a computer-implemented method in which a computer
system performs operations including, inter alia, the steps of limitation L 1,
"recording one or more operations associated with the installation of the
payload to a product database and refraining from performing one or more
file copy operations," and limitation L2, "verifying, based on the product
database resulting from the simulating of the installation of the payload, that
the one or more operations recorded for the simulated installation conforms
to one or more coexistence scenarios such that there is no conflict with
another installed suite or version," as recited in claim 1?
(b) Did the Examiner err in combining Wookey, Canning, and
Isaacson in the manner suggested to render claim 1 unpatentable under
§ 103?
Analysis
The Examiner presents the interpretation of claim 1 as follows:
There is a simulation of the installation of this payload and
during the simulation, the operations are recorded or stored, and
the actual installation is not performed (e.g., there is no copy).
The result of the simulation of the payload is used verify that
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the installation of the payload does not conflict with another
installed software suite.
W ookey is used as the primary reference in this case and
it is directed towards simulating a software installation based on
a given dependency route without actually installing the
software. Canning is used as the secondary reference and it too
is directed towards the simulation of software installation via
logging the operations. Finally Isaacson teaches the verifying
software installation to make sure it does not conflict with
another installed version or suite.
Ans. 14.
Issue 1 (a)
Limitation [LI] - "Recording" Step
Appellants contend:
Canning's "Install.exe" recording information while executing
in a simulation does not involve ". . . recording one or more
operations associated with the installation of the payload to a
product database and refraining from performing one or more
file copy operations."
Nor does Canning's "Install.exe" involve such recording
and refraining when not operating in simulation mode. When
"Install.exe" is not operating in a simulation mode, it appears to
be capable of installation of the payload to a product database.
However, while not operating in a simulation mode,
"Install.exe" also performs a complete installation of an update
and, hence, is not "refraining from performing one or more file
copy operations," as also recited in claim 1.
In short, regardless of the mode in which "Install.exe" is
operating, it does not involve the features of claim 1. Neither
mode involves both the claimed recording and refraining
features of claim 1.
Br. 8-9.
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With respect to the L 1 "recording" limitation, the Examiner states, "it
was never suggested that stage.exe taught 'recording one or more operations
associated with the installation of the payload to a product database and
refraining from performing one or more file copy operations'." Ans. 15.
Further,
Install.exe is the is installation that is used to teach 'recording
one or more operations associated with the installation of the
payload to a product database and refraining from performing
one or more file copy operations', and this particular installation
is in a simulation mode (The simulate option causes the Install
exec to log the simulation information to the Install log, thus
allowing the system administrator to see what will happen
without impacting the Remote Client Server. [0057], Canning).
The payload is the install.exe file. The install.exe is executed in
simulation mode, and the operations related to the simulation
are recorded since the simulate option causes the install.exe to
log the simulation to the install log. The Appellant seems to
argue that the simulation of installation doesn't perform
installation. Based, on the language claimed, the whole purpose
[ otl simulation is not to install, and not copy files, and the
method of doing so is via simulating the installation, i.e, m
simulation mode.
Ans. 16.
Under a broad but reasonable interpretation of the contested
limitations, we agree with the Examiner's unrebutted findings concerning
limitation L 1, and note Appellants have not cited to a definition of
"recording one or more operations" or "refraining from performing one or
more file copy operations" in the Specification that would preclude the
Examiner's broader reading. 5
5 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
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Limitation f L2 j - "Verifj;ing" Step
In summary of Appellants' arguments concerning limitation L2:
Isaacson does not teach any operations through which the
conflict database may be created or derived. As such, Isaacson
does not show or suggest the element of "verifying, based on
the product database resulting from the simulating of the
installation of the payload, that the one or more operations
recorded for the simulated installation conforms to one or more
coexistence scenarios ....
Br. 10.
In response, the Examiner finds Isaacson's database is used by a
conflict checker to determine whether there is any software package run-
time conflict by, for example, "by having the database store, for each
package, a list of other packages with which the first package conflicts ... a
database is referred to in order to see if the packages have some type of
conflict issues during runtime. Once all of the selected dependency
packages have been validated, installation proceeds." Ans. 18-19 (citing
Isaacson Fig. 5, step 520; and i-f 45).
We agree with the Examiner's finding that the above-cited portions of
Isaacson teaches or at least suggests the contested limitation L2, and note
Appellants have not cited to a definition of "verifying" as recited in claim 1
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
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in the Specification that would preclude the Examiner's broad but reasonable
interpretation.
Issue 1 (b)-Motivation to Combine
With respect to the Examiner's stated basis for the motivation to
combine the cited prior art in the manner suggested, Appellants contend,
" [ t ]he stated rationale for combining the alleged teachings of Canning
(regarding recording operations to a product database and refraining from
performing file copy operations) into W ookey does not provide an adequate
reason for combining the alleged refraining feature of Canning with
Wookey." Br. 12-13. While admitting the Examiner provided a rationale
for using Canning's recording operations, Appellants allege the rationale is
not sufficient, and further contend:
[I]t does not provide any basis for combining Canning's alleged
refraining from performing file copy operations with anything
taught or suggested by Wookey. The stated rationale is also
unsupported by any rational underpinnings. The Office Action
does not describe why it would be necessary to record this
information generally or in the specific context of W ookey's
disclosure. The stated rationale is improper because it is
conclusory and unsupported ... [and] the alleged combination
of Wookey and Canning would improperly change the principle
of operation of W ookey ... [because t ]here is no suggestion in
W ookey or Canning of how a dependency map and a log should
or could be used together. Wookey would not work for its
intended purpose if its dependency map was modified to be a
log.
Br. 13.
An argument that the system is rendered unsuitable for its intended
purpose is a "teach away" argument. In re Gordon, 733 F.2d 900, 902 (Fed.
Cir. 1984). The Federal Circuit has held "[a] reference may be said to teach
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away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant." In re
Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed. Cir.1994)).
The Examiner finds W ookey's dependency map "is functionally
equivalent to the dependency database disclosed in Isaacson ... [such that]
each dependency package represents a dependency route." Ans. 21 (citing
Wookey i156; Isaacson Fig. 1, Fig. 6, Fig. 7A (step 710), and i-fi-f 14, 41).
"As in Isaacson, if there is no error or conflict in the package ... if there is
no error in the dependency route, it means the files/elements work together
in Wookey." Id. (citing Isaacson i145; Wookey i-f 176).
The Examiner further finds:
[T]he mere fact that W ookey and Isaacson can perform
1 • • ,..J" t. -C ana1ogous operatwns muicates tuese two re1erences are
combinable. Moreover, both Wookey and Canning simulate
installations, while the simulation in W ookey provides a more
overall approach to simulating installation, Canning provides a
more detailed approach to simulation by that produces a log of
the installation in the simulation mode.
Id. (citing Canning i1 57).
Moreover, Appellant does not meaningfully explain why the Canning
or W ookey references suggest that the line of development flowing from
their disclosures is unlikely to be productive of the objective of Appellant's
invention. See Syntex (U.S.A.) v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed.
Cir. 2005). A teaching of something different is not a teaching away.
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Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 2, 4, 6-13, 15-17, and 20-22, which fall therewith. See Claim
Grouping, supra.
2. § 103 Rejection RI of Claims 5 and 14
Issue 2
Appellants argue (Br. 16) the Examiner's rejection of claim 5 under 35
U.S.C. § 103(a) as being obvious over the combination ofWookey,
Canning, and Isaacson is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 4, "wherein said payload further comprises
a database file containing a set of commands to be executed for each of said
at least one file to be installed, at least one registry to be installed, and at
least one folder to be installed," as recited in claim 5?
Analysis
Appellants admit the portions of W ookey relied upon by the Examiner
provide examples of resolving software product dependency on a shared
system library, and that "the software products disclosed in Wookey may
include files to be installed that have dependencies," but "W ookey does not
show or suggest installation of a payload that includes 'at least one registry
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to be installed,"' nor a "'database file containing a set of commands to be
executed' for the at least one registry." Br. 16.
In response, the Examiner finds, and we agree, "a database file
containing a set of commands to be executed are any instructions or
commands that can be executed for a file that can be installed, a registry that
is to be installed, and a folder that can be installed ... [and] for any file,
registry, or folder to work, there has to be commands/instructions to be
executed." Ans. 22. "Because the registry is not expressly defined, the
broadest reasonable interpretation is used to define the registry. One of
ordinary skill in the art would interpret the registry as a hierarchical database
that stores configuration settings and options on the operating system." Id.
The Examiner makes further findings regarding the obviousness
rejection of claim 5 and the teachings and suggestions of the combination of
Wookey, Canning, and Isaacson related thereto. Ans. 22-23. We adopt the
Examiner's unrebutted findings as our own, and incorporate them herein by
reference.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 5, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 5, and grouped claim
14, which falls therewith. See Claim Grouping, supra.
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3. § 103 Rejection R2 of Claim 3
In view of the lack of any substantive or separate arguments directed
to obviousness rejection R2 of claim 3 under § 103 (see Br. 17), we sustain
the Examiner's rejection of this claim. Arguments not made are waived.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections RI
and R2 of claims 1-17 and 20-22 under 35 U.S.C. § 103(a) over the cited
prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1-17 and 20-22.
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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