Ex Parte Foster et al

Patent Trial and Appeal Board

Dec 8, 2014

11116077 (P.T.A.B. Dec. 8, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GAVIN ANDREW ERIC FOSTER, RANDY SCOTT JOHNSON,
JAMES MICHAEL KENLEY, TEDRICK NEAL NORTHWAY,
NEIL WALLACE O’CONNOR, BRIAN T. WONG, and
CLEA ANNE ZOLOTOW
____________

Appeal 2012-005102
Application 11/116,077
Technology Center 2100
____________

Before CARL W. WHITEHEAD JR., STANLEY M. WEINBERG, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

BOUDREAU, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 21–29. Claims 1–20 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
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STATEMENT OF THE CASE
Appellants’ claimed invention relates to “processes and apparatus for
controlling the installation of software programs, and includes means or
steps for setting up and preparing an operating system on a computer
system.” Spec. ¶ 1.
Independent claim 21, reproduced below, is representative of the
subject matter on appeal.
21. A method for making standard code operable on a
mainframe computer, the method comprising:
a computer deploying the standard code on a first logical
partition of the mainframe computer, the first logical partition
having no data or software installed thereon, to create first
logical partition standard code, wherein the first logical
partition standard code is inoperable without additional
configuration;
the computer defining a first dataset including one or
more first telecommunication parameters for a first user, one or
more first job entry system parameters for the first user, and
one or more first security parameters for the first user; and
the computer configuring the first logical partition
standard code with the first dataset to make the first logical
partition standard code operable for the first user on the first
logical partition in a shared computing environment.

Claims 21, 22, 24, 25, 27, and 28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Amodio (US 2004/0068722 A1;
published Apr. 8, 2004), Yadav (US 6,795,965 B1; issued Sept. 21, 2004),
and Lacouture (US 7,181,473 B1; issued Feb. 20, 2007 (filed Nov. 12,
2002)). Ans. 4–9.
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Claims 23, 26, and 29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Amodio, Yadav, Lacouture, and Appellant-
acknowledged prior art techniques. Ans. 9–10.

ANALYSIS
Rather than repeating Appellants’ arguments and the Examiner’s
findings, we refer to the Appeal Brief filed September 22, 2011, Examiner’s
Answer mailed December 12, 2011, and Reply Brief filed February 13,
2012, for the respective details.
We have considered in this Decision only those arguments Appellants
actually raised in the Briefs. Any other arguments that Appellants could
have made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).
Claims 21, 24, and 27
The Examiner finds Amodio discloses all elements of independent
claims 21, 24, and 27, with the exception of explicit disclosure of “on a first
logical partition,” “having no data or software installed thereon,” and
“standard code is inoperable without additional configuration.” Ans. 4–6.
The Examiner additionally finds, however, that “Lacouture teaches installing
operating system code on a first partition of the storage device” and that
“Yadav teaches deploying standard code to a storage that has no data or
software installed thereon, wherein [the] standard code is inoperable without
additional configuration.” Id. at 56 (citations omitted).
Appellants first contend “Amodio’s ‘base operating system 2 …
provided for the mainframe computer system 2’ is not a ‘first logical
partition standard code’ that is ‘inoperable without additional
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configuration.’” App. Br. 11. We are not persuaded of error. As explained
above, claim 21 is rejected over the combination of Amodio, Yadav, and
Lacouture, and the Examiner relies upon Lacouture for the installation of the
standard code on a “first logical partition” and Yadav for the standard code
being “inoperable without additional configuration.” See Ans. 4–6; see also
Ans. 11. Therefore, to the extent that Appellants’ argument amounts to an
assertion that Amodio alone does not teach “‘first logical partition standard
code’ that is ‘inoperable without additional configuration,’” we note “one
cannot show non-obviousness by attacking references individually where . . .
the rejections are based on combinations of references.” In re Keller, 642
F.2d 413, 426 (CCPA 1981).
Appellants next contend “Amodio does not deploy a standard code,
but rather ‘upgrades’ an operating system using discovered data.” App. Br.
12. In response, the Examiner explains “Amodio’s upgrading is p[er]formed
‘by automatically installing a base operating system on the mainframe
system.’” Ans. 11 (quoting Amodio, Abst.). Further, as Appellants
recognize, Amodio uses the term “upgrade” to “‘refer[], generally, to
installing a mainframe computer operating system, and using, in part,
environmental settings and other configuration settings from an existing
system therefor,’” where “‘[t]he mainframe computer system receiving the
upgrade may or may not be the same computer system that provides the
environment and configuration settings user for the upgrade.’” App. Br. 11
(quoting Amodio ¶ 23). Additionally, the term “standard code” is broadly
used in Appellants’ Specification to refer to a “baseline operating system
package.” Spec. ¶ 15.
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In the Reply Brief, Appellants attempt to draw a distinction between
“deploying” and “installing,” alleging, inter alia, that “equating ‘deploy’
with ‘install’ is incorrect.” Appellants appear to suggest, without citing any
authority apart from attorney argument, that “deployed” code is inoperable
whereas “installed” code is operable. Reply Br. 2–3. Appellants have not
provided any evidence of such an art-recognized distinction. Moreover,
Appellants themselves state in their opening brief that “Amodio deploys an
‘upgrade’ . . . .” App. Br. 12. Accordingly, giving the claim its broadest
reasonable interpretation, we discern no error in the Examiner’s finding that
Amodio teaches “deploying . . . standard code” as that phrase is used in
Appellants’ claims.
Appellants further contend “[t]he evidence cited by the Examiner fails
to teach or suggest a ‘first logical partition having no data or software
installed thereon’ in the context of claim 1 [sic].” App. Br. 12. According
to Appellants, “[t]he Examiner’s statement that a computer does not have an
OS ‘when first manufactured’ does not teach or suggest that ‘the first logical
partition’ has ‘no data or software installed thereon’ at least because it does
not preclude some data or software being installed.” Id. We are again
unpersuaded of error. The Examiner finds that “data and software are
necessarily stored on the drive only after the drive has been built, because
prior to the drive being buil[t] it is incapable of storing anything.” Ans. 12-
13. Consequently, the Examiner concludes that “[i]t is simply unreasonable
to assert that a freshly manufactured drive has data or software installed on
it.” Ans. 12. We agree with the Examiner’s reasonable finding and
conclusion.
Appellants additionally contend:
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The Examiner admits that “Amodio does not explicitly
disclose [‘]... the standard code is inoperable without additional
configuration.” (Final Office Action, dated June 16, 2011, page
7). To remedy this deficiency, the Examiner cites to Yadav col.
1, lines 55-59 “core program modules 66b” and col. 2, lines 8-
13, “these files are the same core files installed into every
computer regardless of the exact hardware configuration.”
Further, the Examiner states “note that while not explicitly
stated those of ordinary skill in the art will recognize that these
core modules cannot interact with the hardware and thus are
inoperable.” (Final Office Action, dated June 16, 2011, page
7).
. . . “[A]utomatically updating the most current program
modules associated with a just-detected hardware device”
(Yadav, col. 3, lines 34-36) cannot render Amodio capable of
“a computer deploying the standard code on a first logical
partition of the mainframe computer, the first logical partition
having no data or software installed thereon, to create first
logical partition standard code, wherein the first logical
partition standard code is inoperable without additional
configuration.”
App. Br. 12–13. The Examiner responds to Appellants’ argument, first, by
noting that Appellants have not indicated why Yadav’s teaching “‘cannot
render Amodio capable of’ p[er]forming the claimed deployment,” and
second, by explaining:
[I]t is the examiner’s assertion that the combination of Amodio
and Yadav teach[es] deploying standard code (i.e. Amodio par.
[0031] “a base operating system”; Yadav col. 1, lines 55-59
“core program modules 66b”) which is inoperable at least until
the hardware of the target computer is detected and the
hardware dependent modules are updated/installed (e.g. Yadav
col. 2, lines 14-27 “detects, enumerates and identifies the
hardware devices ... Hardware-Specific Program Module
Installation”).
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Ans. 13–14. We are again unpersuaded of Examiner error. Like the
Examiner, we are unable to discern the basis for Appellants’ argument.
Further, as reflected in the above quotation from pages 12–13 of Appellants’
Appeal Brief, the Examiner cited column 1, lines 55–59, and column 2, lines
8–13, of Yadav in support of the finding that Yadav teaches installation of
code that is inoperable without further configuration. See Ans. 5–6 (see also
Final Rejection 6). Nonetheless, Appellants’ argument instead focuses on
column 3, lines 34–36, of Yadav. See App. Br. 13. We conclude the
Examiner’s finding is reasonable. Because Appellants’ argument does not
address the Examiner’s cited evidence, the argument is not persuasive of
error.
Appellants next contend “[t]he cited art, individually or in
combination, fails to disclose ‘the computer defining a first dataset including
one or more first telecommunication parameters for a first user, one or more
first job entry system parameters for the first user, and one or more first
security parameters for the first user.’” App. Br. 13.
The Examiner specifically found the recited element to have been
taught by Amodio, Ans. 4–5 (see also Final Rejection 5; Ans. 14–15). In the
Appeal Brief, however, Appellants argue only regarding the teachings of
Yadav with respect to this element, see App. Br. 13–14. Because
Appellants’ argument again does not address the cited evidence, it is not
persuasive of error. Moreover, to the extent Appellants argue more
generally (App. Br. 13) that “[t]he cited art, individually or in combination,
fails to disclose” the recited element, such a general argument too is
unpersuasive. See 37 C.F.R. § 41.37(c)(vii) (“A statement which merely
points out what a claim recites will not be considered an argument for
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separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.”).
Appellants further contend “[t]he cited art, individually or in
combination, fails to disclose ‘the computer configuring the first logical
partition standard code with the first dataset to make the first logical
partition standard code operable for the first user on the first logical partition
in a shared computing environment.’” App. Br. 14. According to
Appellants, “Amodio fails to teach or suggest ‘configuring the first logical
partition standard code with the first data set’ to make it ‘operable for the
first user on the first logical partition.’” Id. at 15. Appellants argue further,
inter alia, “Yadav cannot remedy the deficiency of Amodio,” “Yadav is
directed only to updating program modules ‘associated with a just detected
hardware device,’ . . . and not to configuring standard code on mainframe
computer for use by a user in a shared computing environment,” and
“Amodio and Yadav do not address configuring logical partition standard
code . . . .” Id. at 15.
Citing paragraphs 39 and 41 of Amodio, the Examiner finds, and we
agree, Amodio teaches configuring a deployed operating system, including
by referencing and using information stored in the discover database (a “first
dataset,” in the parlance of the claims), as well as “with a ‘user ID [and]
password.’” Ans. 16. The Examiner finds, in addition, “Yadav discloses an
operating system which is not operational for any user, including a first user,
until further configuration is performed.” Id. (citing Yadav, col. 1, ll. 55–59,
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col. 2, ll. 8–13). The Examiner further finds Lacouture teaches installing
operating system code on a “first partition” of a storage device. Id. at 6, 16.
As found by the Examiner, Lacouture specifically teaches “[c]onfiguring a
single mass storage device to have a plurality of partitions may be desirable
when a computer system associated with the single mass storage device is to
include a plurality of operating systems.” Id. at 7 (citing Lacouture, col. 7,
ll. 44–47). In view of those findings, we see no error in the Examiner’s
conclusion that the disputed limitation is disclosed by the cited art.
Finally, Appellants allege that the features of claim 21 are not
“inherently disclosed” and that “the Examiner impermissibly treated the
claimed invention as a gist” by “ignor[ing] the specifics of Amodio . . . and
Yadav . . . .” App. Br. 11, 15–16. We disagree. As pointed out by the
Examiner, “it is not clear which aspects of the rejection the [A]pplicants
believe require a showing of inherency.” Ans. 17. Nonetheless, because we
agree with the Examiner for the reasons stated above that each of the
disputed elements of claim 21 are explicitly disclosed or suggested by the
cited art, we conclude the Examiner could not have erred by failing to show
inherency for any particular element. Second, we find no evidence that the
Examiner has ignored the specifics of any of the cited art in reaching the
conclusion of obviousness. Therefore, we find Appellants’ argument
unpersuasive.
Accordingly, we affirm the Examiner’s rejection of independent claim
21, as well as independent claims 24 and 27 argued together with claim 21
(see App. Br. 10), under 35 U.S.C. § 103(a) as unpatentable over the
combination of Amodio, Yadav, and Lacouture.
Claims 22, 25, and 28
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Appellants argue the cited art fails to disclose “the computer
deploying the standard code on a second logical partition of the mainframe
computer, the second logical partition having no data or software installed
thereon, to create second logical partition standard code, wherein the second
logical partition code is inoperable without additional configuration,” as
recited in claim 22. App. Br. 17. In particular, Appellants contend “[c]laim
22 cannot be disclosed by the cited art, individually or in combination,
because the cited art combines a personal computer operating system setup
program with a mainframe discovery system.” Id. According to Appellants,
“Yadav’s modules cannot be the same as the datasets used to configure the
mainframe computer in the claim,” as “such a combination would be limited
to operate only to update modules associated with newly detected hardware
devices.” Id. at 18.
Appellants’ attorney argument provides insufficient evidence to
persuade us of Examiner error.2 The Examiner does not suggest
incorporating Yadav wholesale into Amodio, but instead cites Yadav to
show that it was known to those of skill in the art to deploy code on a
“partition having no data or software installed thereon” as well as to deploy
code that is “inoperable without additional configuration.” Ans. 7–8
(citations omitted). We note that:
To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in

2 See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (attorney argument
is not the kind of factual evidence required to rebut a prima facie case of
obviousness); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence.”).
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the other. The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
Keller, 642 F.2d at 425 (citations omitted). Further, to the extent Appellants
suggest that Yadav and Amodio do not disclose deploying “second logical
partition standard code” on a “second logical partition” distinct from “first
logical partition standard code” deployed on a “first logical partition,” we
agree with the Examiner that the combination with Lacouture provides that
teaching. See, e.g., Ans. 19 (citing Lacouture, col. 7, ll. 47–50 (disclosing “a
second partition can be configured for use by a second operating system”)).
For the reasons stated above with respect to the similar limitation in
claim 21, we are also unconvinced by Appellants’ argument that “[t]he cited
art, individually or in combination, fails to disclose ‘the computer defining a
second dataset . . . ,’” as cited in claim 22. See App. Br. 18.
Appellants further argue the cited art fails to disclose “the computer
configuring the second logical partition standard code . . . .” App. Br. 18.
According to Appellants, “[u]sing the standard code for two different users
on two different partitions of a mainframe computer is not explicitly taught
by the references, and the Examiner has not shown that the limitations are
inherently disclosed by showing that they must follow from the explicit
disclosures.” Id. Appellants further argue “the ‘can be configured’ language
of Lacouture is permissive and does not support an explicit disclosure,” and
“[t]he Examiner has not made a case for inherent disclosure.” Id. at 19. In
response to Appellants’ argument, the Examiner correctly finds that
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“Lacouture’s so called ‘permissive’ language constitutes an explicit
disclosure of one embodiment of the invention and thus does not require the
examiner to make a case for inherency.” Ans. 21. Because Lacouture
explicitly states that “a second partition can be configured for use by a
second operating system,” see Lacouture, col. 7, ll. 47–50, Appellants’
citation to In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) is
unpersuasive. See App. Br. 19.
Accordingly, we affirm the Examiner’s rejection of claim 22, as well
as claims 25 and 28 argued together with claim 22 (see App. Br. 16), under
35 U.S.C. § 103(a) as unpatentable over the combination of Amodio, Yadav,
and Lacouture.
Claims 23, 26, and 29
Appellants argue the cited art fails to disclose the computer
configuring the first logical partition standard code and the second logical
partition standard code, respectively, with first and second system catalogs,
model dataset control blocks, virtual input/output journaling datasets, user
attribute datasets, automatic spooling priority indices, dump analysis and
elimination datasets, system management facilities, resource measurement
facilities, procedures libraries, workload management datasets, hierarchical
file systems, and input/output definitions files, as recited in claim 23. App.
Br. 20–21. Appellants contend, in particular, that they did not acknowledge
that the recited configuration elements specified above are known in the
prior art when employed in the manner claimed. Id. at 20.
In response to Appellants’ argument, the Examiner explains that “the
rejection does not rely on an acknowledgment that the claimed elements
where [sic] employed in a specific way,” but only that they “were known
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configuration elements associated with operating systems.” Ans. 22. More
particularly, the Examiner finds each of the claimed elements are disclosed
in paragraph 20 of Appellants’ Specification either as “common activities”
in the installation and configuration of operating systems or as “datasets
specific to [the] z/OS” operating system, as well as that Amodio discloses
discovering and applying datasets representing the configuration of z/OS.
Id. We discern no error either in the Examiner’s findings or the conclusion
drawn therefrom that “it would at least have been obvious to perform
‘common activities’ associated with the installation/configuration of an
operating system and discover and apply ‘datasets specific to z/OS’.” Id. at
23.
Accordingly, we also affirm the Examiner’s rejection of claim 23, as
well as claims 26 and 29 argued together with claim 23 (see App. Br. 19),
under 35 U.S.C. § 103(a) as unpatentable over the combination of Amodio,
Yadav, Lacouture, and Appellant-acknowledged prior art techniques.

DECISION
We affirm the Examiner’s rejection of claims 21–29.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
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