Ex Parte George et al

Patent Trial and Appeal Board

Mar 21, 2016

12836663 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/836,663 07/15/2010 Ashley George
33438 7590 03/23/2016
TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP
P.O. BOX 203518
AUSTIN, TX 78720
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.
DC-18342 2679
EXAMINER
LI,ZHUOH
ART UNIT PAPER NUMBER
2133
NOTIFICATION DATE DELIVERY MODE
03/23/2016 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):
tmunoz@tcchlaw.com
kchambers@tcchlaw.com
heather@tcchlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASHLEY GEORGE and DAVID BUTLER
Appeal2014-003683
Application 12/836,663 1
Technology Center 2100
Before MAHSHID D. SAADAT, JOHN A. HUDALLA, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
HUDALLA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-20, which are all the claims pending in this application. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
THE INVENTION
Appellants' invention is directed to image restoration for an
information handling system that removes user data. Spec. 1 :4---6. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1 According to Appellants, the real party in interest is Dell Products L.P.
App. Br. 1.
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Application 12/836,663
1. A system for copying an image to an information
handling system non-volatile memory, the system comprising:
a detachable memory device having memory and an
interface, the interface operable to communicate between the
memory and an information handling system;
a cleanser stored in the detachable memory device and
operable to load through the interface to an information
handling system to cleanse the information handling system
non-volatile memory of information; and
an imaging tool stored in the detachable memory device
and operable to retrieve through the interface to the detachable
memory device an image information stored on the information
handling system non-volatile memory before the cleanser
cleanses the non-volatile memory, the image information
capable of re-creating an image of the information handling
system, the imaging tool further operable to copy the retrieved
image information to the information handling system non-
volatile memory after the cleanser cleanse [sic] the information
handling system non-volatile memory.
App. Br. 9 (Claims App.2).
THE EXAMINER'S REJECTIONS
Claims 1, 2, 4--7, 9-15, and 17-19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Huang (US 7,729,690 Bl, June 1, 2010) and
Eri (US 2010/0005262 Al, Jan. 7, 2010). Final Act. 2-5.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Huang, Eri, and Brown (US 2008/0310633 Al, Dec. 18, 2008). Final Act.
5---6.
2 As noted by the Examiner, see Ans. 8, Appellants mistakenly labeled
claims 3-10 as claims 1-8 in the Claims Appendix. We treat the claims in
the Appendix as if they had been numbered sequentially.
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Claims 8, 16, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Huang, Eri, and Kim (US 2008/0155683 Al, June 26,
2008). Final Act. 6-7.
ISSUES
Does the Examiner err in finding the combination of Huang and Eri
teaches or suggests the "imaging tool" in claim 1?
Does the Examiner err in finding the combination of Huang and Eri
teaches or suggests a "manufacture partition having [a] restore tool," as
recited in claim 2?
Does the Examiner err in finding the combination of Huang and Eri
teaches or suggests "instructions to format the hard disk drive," as recited in
claim 5?
ANALYSIS
A. Claims 1, 3, 4, 6--13, and 15-20
In the obviousness rejection of claim 1, the Examiner cites Huang for
teaching "an imaging tool ... operable to retrieve ... an image information
stored on the information handling system non-volatile memory." Final Act.
3; Ans. 3--4. Specifically, the Examiner cites Huang's teachings on backup
module 120 "back[ing] up the relevant user data by storing a copy of it onto
memory card 50 in database 130." Ans. 4 (citing Huang 4:39--49). The
Examiner also finds Huang's relevant user data is "image information
capable of re-creating an image" because Huang teaches it can be copied
back to non-volatile memory after initiation of a restore operation. Id.
(citing Huang 7:51-8: 13).
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Appellants argue "Huang does not disclose such an imaging tool as
recited by Claim 1" because Huang "puts the mobile phone to an original
state based on information stored in the mobile phone and retrieves user data
from a detachable memory." App. Br. 4. Appellants also argue the
Examiner's cited references do not "disclose the back-and-forth copying of
functional information as recited by Claim 1." Reply Br. 2; see also App.
Br. 4--5 (arguing Huang does not retrieve image information capable of re-
creating an image of the information handling system). Appellants
additionally take exception to the Examiner's finding that Huang's "image
information" can include photographs, see Ans. 4 (citing Huang 7: 12-25),
"because photographs are merely part of an image" and "[p ]hotographs are
not capable of performing the recited 're-creating' function." Reply Br. 2.
The propriety of the Examiner's obviousness rejection turns on the
broadest reasonable interpretation of "image" and "image information." See
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
According to claim 1, the "image information" must be "capable of re-
creating an image of the information handling system." Appellants'
Specification states the following about images: "During manufacture of
information handling system 10, hard disk drive 20 is loaded with an image
22, such as an operating system and applications that are prepared to 30
execute upon initial start-up of information handling system 10." Spec.
6:28-30. Images and user data are often stored in a user partition of a hard
disk drive, according to the Specification. Id. at 7: 1--4. This is depicted in
Figure 1, where image 22 and user data 24 are part of user partition 26 in
hard disk drive 20. Id. at Fig. 1. The cited sections of the Specification do
not require that the image include an operating system and applications. Nor
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does the Specification require partitioning of non-volatile memory in the
way depicted in Figure 1. Thus, in the absence of any evidence of specific
definition for "image" and "image information," we conclude the broadest
reasonable construction of "image" consistent with the Specification is a
copy of data from non-volatile memory, and "image information" is
information relating to an image.
Based on our construction of these terms, we are not persuaded by
Appellants' arguments regarding the "imaging tool" in claim 1. Huang
teaches that a "backup module then backs up the relevant user data" coming
from an internal drive "by storing a copy of it onto memory card 50."
Huang 4:44--46 (cited at Ans. 3--4). This disclosure meets the recited
"retriev[ing] ... to the detachable memory device an image information
stored on the information handling system non-volatile memory," because
Huang's relevant user data is copied data from non-volatile memory. See
Ans. 3--4. Furthermore, contrary to Appellants; argument, see App. Br. 4,
Huang's relevant user data is also "capable of re-creating an image,"
because Huang teaches restoring this data to non-volatile memory. Huang
7:51-8:16 (cited at Ans. 4). For these reasons, Appellants have not
persuaded us of error in the Examiner's analysis of the recited "imaging
tool" of claim 1.
Appellants also argue "Eri may erase data incidental to restoration of
user data, but Eri does not 'cleanse' the memory as recited by Claim 1."
App. Br. 5. Yet claim 1 only requires that the recited cleanser "cleanse[s]
the information handling system non-volatile memory of information." We
agree with the Examiner that "Eri teaches a failure recovery OS to delete all
data stored in storage section," which is consonant with the cleanser
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limitation. Ans. 4 (citing Eri i-fi-129-30). To the extent Appellants argue
Eri's entire non-volatile memory must be deleted in order to meet the
cleanser limitation, this argument is not commensurate with the scope of
claim 1.
For these reasons, we are not persuaded of Examiner error in the
rejection of claim 1. We therefore sustain the rejection. Appellants rely on
the same arguments with respect to dependent claims 3, 4, and 6-9, see App.
Br. 7, so we likewise sustain the rejections of these claims.
Independent claim 10 recites "retrieving an image from the ... non-
volatile memory" and independent claim 18 recites "retrieve ... image
restore information ... operable to restore an image." Regarding the
rejections of these claims, Appellants make similar arguments to those for
claim 1 : that Huang and Eri teach retrieving something less than an image,
such as mere "user data" or "internal information." See App. Br. 6-7; Reply
Br. 2. However, based on our construction of "image,'' we are not persuaded
by Appellants' arguments for the same reasons discussed above. We
therefore sustain the Examiner's rejections of claims 10 and 18, and of
dependent claims 11-13, 15-17, 19, and 20, which are not argued separately
with particularity. See App. Br. 7.
B. Claim 2
Claim 2, which depends from claim 1, recites "the image information
retrieved by the imaging tool comprises a manufacture partition having
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restore tool, the restore tool operable run on the information handling [sic] 3
to recreate an image of the information handling system." The Examiner
finds Huang's "calling [of] a relevant API [application programming
interface] to restore data from external drive back into appropriate location
on an internal drive" teaches the recited restore tool. Final Act. 4; Ans. 5
(both citing Huang 8: 14--18).
Appellants argue the Examiner has not shown that Huang's API "is
copied from an information handling system non-volatile memory to a
detachable device and then copied back to the information handling system
non-volatile memory after cleansing of the non-volatile memory." App. Br.
5; Reply Br. 1.
We are persuaded by Appellants' argument. Although the Examiner
contends claim 2 does not require the restore tool to be copied from non-
volatile memory to the detachable device and then copied back to the non-
volatile memory, Ans. 5---6, Appellants are correct that this is indeed
required in claim 2 because of its dependency from claim 1. See Reply Br.
1. By way of explanation, the "image information" of claim 1 is further
defined in claim 2 to be "a manufacture partition having [a] restore tool,"
and the imaging tool of claim 1 is operable to copy this "manufacture
partition having [a] restore tool" from the non-volatile memory to the
detachable memory device and back again. Thus, even if Huang's API were
capable of recreating an image, the Examiner has not established that Huang
teaches or suggests back-and-forth copying of Huang's API between the
non-volatile memory and the detachable memory device. Nor does the
3 It appears the word "system" was mistakenly omitted in claim 2 after
"information handling."
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Examiner present a rationale for combining Huang and Eri to teach the
same. As such, the Examiner has persuaded us of error in the Examiner's
rejection of claim 2, so we do not sustain the rejection.
C. Claims 5 and 14
Claim 5 depends from claim 4 and recites "the cleanser comprises
instructions to format the hard disk drive." The Examiner finds Eri teaches
instructions to the hard disk drive to return it to an initial state. Final Act. 4
(citing Eri i-f 29). In support of this finding, the Examiner references a
definition of "format" as meaning "to prepare a storage medium for reading
and writing." Ans. 6. The Examiner explains "Eri clearly teaches the failure
recovery OS deleting all data stored in [the] storage section for reloading
data stored in external drive to the storage section ... such that Eri teaches
the storage section being formatted in response to [an] instruction." Id.
(citing Eri ,-r,-r 29--'30).
Appellants argue "the Examiner has provided no evidence to support
his conclusion that Eri discloses formatting." App. Br. 5-6. Appellants
further argue "Eri ... is removing and reloading data and, therefore, does
not have to 'prepare' a storage medium for reading and writing - Eri just
deletes and writes." Reply Br. 2.
We are not persuaded by Appellants' arguments, because an
obviousness analysis is not an ipsissimis verbis test. See In re Gleave, 560
F.3d 1331, 1334 (Fed. Cir. 2009). Thus, contrary to Appellants' argument,
see Reply Br. 2, Eri need not use the word "format" in order to support the
Examiner's rejection. Rather, a prima facie case of obviousness is
established when the prior art itself would appear to have suggested the
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claimed subject matter to one of ordinary skill in the art. In re Rinehart, 531
F.2d 1048, 1051(CCPA1976). Eri teaches "all the data stored in the
storage section 13 are deleted and pieces of setting information of the
information processing apparatus 1 are deleted (setting states are returned to
the initial states)." Eri i-f 29 (cited at Final Act. 4; Ans. 6). We agree with
the Examiner that, at least, an ordinarily skilled artisan would have found
Eri' s teaching on returning a storage device to its initial state to be
suggestive of formatting. See Ans. 6. Therefore, we are not persuaded of
error in the Examiner's rejection of claim 5, so we sustain the rejection.
Appellants rely on the same arguments with respect to the Examiner's
rejection of claim 14, see App. Br. 6, so we likewise sustain the rejection of
claim 14.
DECISION
The Examiner;s rejections of claims 1 and 3-'20 are affirmed.
The Examiner's rejection of claim 2 is reversed.
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-IN-PART
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