Ex Parte Fors et al

Patent Trial and Appeal Board

Jan 23, 2018

11004285 (P.T.A.B. Jan. 23, 2018)

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.
11/004,285 12/03/2004 Tim Alan Fors CA920040115US1 1620
46320 7590
CRGO LAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
01/25/2018 EXAMINER
KANG, INSUN
ART UNIT PAPER NUMBER
2193
NOTIFICATION DATE DELIVERY MODE
01/25/2018 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIM ALAN FORS, ROBERT HOWARD HIGH JR.,
ROHIT V. KAPOOR, and JAMES LEE VAN OOSTEN
Appeal 2016-001308
Application 11/004,285
Technology Center 2100
Before ELENI MANTIS MERCADER, LARRY J. HUME, and
JESSICA C. KAISER, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1,11, 35—39, 41—48, and 50—52, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-001308
Application 11/004,285
CLAIMED SUBJECT MATTER
The claimed invention is directed to creating customized install
packages for installation of software. See Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter on Appeal:
1. A computer-implemented method for creating customizable
install packages, the method comprising:
selecting at least one asset from a group comprising an existing
installation, third party additions, a functional install image and
a maintenance package;
obtaining the at least one asset selected from the group;
generating a build definition from the at least one asset, the build
definition being saved in one of a markup language file and a
java properties file and specifying how a customizable install
package is built; and
building the customizable install package from the generated
build definition.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Daynes et al. (“Daynes”) US 2002/0013939 A1 Jan. 31, 2002
Ream et al. (“Ream”) US 2002/0112232 Al Aug. 15, 2002
REJECTION
Claims 1,11, 35—39, 41—48, and 50—52 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Ream in view of Daynes.
ANALYSIS
We adopt the Examiner’s findings in the Answer and Final Action,
and we add the following primarily for emphasis. We note that if Appellants
failed to present arguments on a particular rejection, we will not unilaterally
review those uncontested aspects of the rejection. See Ex parte Frye, 94
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USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas, 551 F.3d
1307, 1313—14 (Fed. Cir. 2008) (The Board may treat arguments Appellants
failed to make for a given ground of rejection as waived.).
Appellants argue that the Examiner improperly mapped Appellants’
“build definition” to Ream’s “build plan” (App. Br. 4). Appellants in
particular argue that the Examiner’s reliance on Appellants’ Specification
(para. 59, last sentence1) for the term “plan” being interchangeable with a
“build definition” and thereby suggesting that Ream’s reference to a build
plan is equivalent to a build definition is erroneous (App. Br. 5). Appellants
argue that the following statement in Ream differentiates the two terms,
“build definition” and “build plan”:
[a] build definition may include identification of a desired
operating system, as well as of specific software applications or
updates of applications desired to be installed on a recipient
computer 102. The build generating software 112 converts a
build definition into a build plan which may include an
executable file which can be executed by a recipient computer.
(App. Br. 6 (quoting Ream, para. 36, last two sentences, bold emphasis
omitted)). In particular, Appellants assert Ream teaches a build definition
includes the identification of a desired operating system and specific
software applications or updates of applications desired to be installed on a
recipient computer, and the build generating software converts a build
definition into a build plan (App. Br. 6). Appellants further point us to
Ream teaching a “build plan” (paras. 10—12, 17, and 49) as something
executed on a recipient computer causing software to be loaded from a build
1 Appellants’ published Specification paragraph 59 corresponds to paragraph
57 of the Specification of record. Hereinafter, we refer to the Specification
paragraph 57.
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server onto a recipient computer (App. Br. 6). Appellants point us to Ream
(para. 36) describing a “build definition” as information regarding a desired
build, which may include the identification of a desired operating system, as
well as specific software applications or updates of applications desired to be
installed on a recipient computer (App. Br. 6—7). Appellants conclude Ream
distinguishes Ream’s “build plan” from Ream’s “build definition” and
therefore Ream’s “build definition” and Ream’s “build plan” are not
interchangeable as the Examiner contends (App. Br. 7). As such, Appellants
conclude the Examiner failed to find a teaching in the cited art that teaches
or suggests that a “build definition” specifies how a customizable install
package is built, as required by claim 1. Id.
We are not persuaded by Appellants’ arguments. Appellants’
argument regarding the terms in Ream not being interchangeable because
Ream’s “build definition” is described differently from the Ream’s “build
plan” is amiss because Appellants’ own Specification also makes the same
distinction (see Appellants’ argument App. Br. 4—6 and Appellants’ Spec,
para. 57). In particular, Appellants’ Specification states that a graphical user
interface (GUI) guides an installer to “fully define the plan” for creating the
custom install package and “[upon] selection of features to be installed by
the install creator, . . . creates a plan describing how the custom install
package will be builf’ (emphasis added, Appellants’ Spec., para. 57). Thus,
Appellants’ disclosed definition of the plan (i.e., “build definition”) which
defines the desired features is distinguished from the “build plan” which
describes how the custom package with desired features will be built,
thereby distinguishing the two terms.
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Application 11/004,285
Furthermore, according to Appellants’ own Specification it is the
“build plan” that describes “how the custom install package will be build”—
not the “build definition” as claimed (Appellants’ Spec. para. 57 stating
“[u]pon selection of features to be installed by the install creator, an
embodiment of the present invention creates a plan describing how the
custom install package will be built'” (emphasis added)). It appears that
Appellants relied on their Specification statement of interchangeability of
the terms “build plan” and “build definition” to claim “build definition”
instead of “build plan” (see Appellants’ Spec. para. 57 stating “[t]he term
‘plan’ may also be interchanged with a ‘build definition’”). The Examiner
interpreted the term “build plan” to meet the claimed “build definition”
consistent with Appellants’ own Specification. During prosecution, claims
must be given their broadest reasonable interpretation while reading claim
language in light of the Specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
Ream’s “build plan,” consistent with Appellants’ Specification,
describes how the selected features will be built (see Ans. 4 and Ream’s
paras. 46, 49, and 54). In particular, we agree with the Examiner’s finding
that Ream’s “build plan” is also described as information regarding a
desired build including identification of a desired operating system, any
selectable additional components to be installed (Ream’s para. 46) as well
as specific software applications or updates of applications desired to be
installed on a recipient computer (Ream’s para. 46) (Ans. 4). We further
agree with the Examiner’s finding that the customized build is performed on
a recipient computer based on the build definition converted into a build
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plan having executable file (see Ream’s para. 36) and any necessary
installation packages included into the build plan (Ans. 4 (citing Ream’s
paras. 46, 49, and 54)).
Thus, Ream’s definitions of the terms “build definition” and “build
plan” (Ream’s paras. 36, 46, 49, and 54) are consistent with Appellants’
Specification (Appellants’ Spec. para. 57) defining apian (i.e., “build
definition”) and then a plan describing how the custom install package will
be installed (i.e., “build plan”). The fact that Appellants chose to use the
interchangeable name of build definition instead of plan as so indicated in
their Specification (Appellants’ Spec. para. 57) for specifying “how the
customizable install package is built” (claim 1) does not change the meaning
of the terms of “build definition” as defining the “build plan” and the “build
plan” describing how it will be built.
Careful reading of Appellants’ interchangeability sentence stating
“[t]he term ‘plan’ may also be interchanged with a ‘build definition’ to
define the types of customizations that should be applied when the custom
install package is built by the ‘engine’ of an embodiment of the present
invention” reveals the same teaching as Ream wherein the “build definition”
defines the desired features to be used and the “build plan” applies the
defined customizations and provides how the chosen features are to be built
(see Appellants’ Spec. para. 57). Thus, Ream’s teachings of “build
definition,” including identification of a desired operating system, as well as
teaching specific software applications or updates of applications desired to
be installed on a recipient computer (i.e., desired features), and the build
generating software converting a “build definition” into a “build plan” which
may include an executable file which can be executed by a recipient
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computer (i.e., how the desired features are built) (Ream’s para. 36), parallel
Appellants’ Specification of the plan being defined (i.e., “build definition”)
and the “build plan” being the application of the “build definition”
(Appellants’ Spec. para. 57). Accordingly, we find the Examiner correctly
interpreted the terms “build definition” and “build plan” consistent with
Appellants’ Specification.
Even if we interpreted the disputed terms without turning to
Appellants’ own Specification as to the meanings attributed to them by
Appellants, and to the extent that Appellants are arguing that it is Ream’s
“build plan” that specifies “how the customizable install package is built”
and not Ream’s “build definition,” we note that there is no ipsissimis verbis
test for determining whether a reference discloses a claim element, i.e.,
identity of terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed.
Cir. 1990). Accordingly, we find Ream’s “build plan” specifying “how the
customizable install package is built” is equivalent to the claimed “build
definition,” and thus meets the claimed language.2
Accordingly, we affirm the Examiner’s rejection of claim 1 and, for
the same reasons, the Examiner’s rejections of claims 11, 35—39, 41—48, and
50-52 not argued separately.
2 This is consistent with our previous finding in our Opinion dated April 2,
2014 (Dec. 7) deciding the same issue.
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DECISION
We affirm the Examiner’s rejection of claims 1,11, 35—39, 41—48,
and 50—52.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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