Ex Parte Johnson

Board of Patent Appeals and Interferences

Apr 30, 2008

10334865 (B.P.A.I. Apr. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DONALD K. JOHNSON
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Appeal 2007-4139
Application 10/334,865
Technology Center 2100
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Decided: April 30, 2008
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Before ALLEN R. MACDONALD, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-22, 24-27, 29-32, 34-37, and 39-47.
Claims 23, 28, 33, and 38 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.
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THE INVENTION
The disclosed invention relates generally to managing software
configurations of devices. More particularly, Appellant’s invention is
directed to automatically restoring the software configuration of a device in
response to an event precipitating restoration (Spec. 1).
Independent claim 1 is illustrative:
1. A method of restoring software configurations of
devices, said method comprising:

automatically tracking an obtaining of a software
component for a device, the software component being
obtained subsequent to installation of an initial software
configuration of the device, and wherein the
automatically tracking comprises automatically
registering, responsive to the obtaining, the software
component with a hardware identifier of the device to
associate the software component with the particular
device, said hardware identifier being automatically
provided by the device, absent user intervention; and

automatically restoring a software configuration of
the device, said automatically restoring comprising
automatically identifying the device to be restored via the
hardware identifier and automatically providing to the
device the software component registered to the hardware
identifier of the device.

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THE REFERENCE
The Examiner relies upon the following reference as evidence in
support of the rejection:
“Handbook for the Palm VTM Organizer,” 1998, 3COM Corporation
(“Palm”).

THE REJECTIONS
Claims 2 and 17 stand rejected under 35 U.S.C. § 112, second
paragraph.
Claims 1-22, 24-27, 29-32, 34-37, and 39-47 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Palm.

PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006). In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).
“Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed Cir. 1999) (“In other words, if granting patent protection on
the disputed claim would allow the patentee to exclude the public from
practicing the prior art, then that claim is anticipated, regardless of whether
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it also covers subject matter not in the prior art.”) (internal citations
omitted).

ANALYSIS
35 U.S.C. § 112, second paragraph
At the outset, we pro forma affirm the Examiner’s 35 U.S.C. § 112,
second paragraph rejection of claims 2 and 17. Appellant does not contest
the antecedent basis problem pointed out by the Examiner, as Appellant
attempted to remedy the aforementioned problem by filing an after-final
amendment that was denied entry by the Examiner (see Br. 7).

Anticipation under 35 U.S.C. § 102
Regarding the anticipation rejection, we address the arguments
presented in the Brief only to the extent that Appellant’s arguments are
directed to claimed subject matter. Patentability is based upon the claims.
“It is the claims that measure the invention.” SRI Int’l v. Matsushita Elec.
Corp. of America, 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc).
“Moreover, limitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).

Claims 1, 16, 29, and 31
We consider the Examiner’s rejection of claims 1, 16, 29, and 31 as
being anticipated by Palm. Since Appellant’s arguments with respect to this
rejection have treated these claims as a single group which stand or fall
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together, we select independent claim 1 as the representative claim for this
rejection. See 37 C.F.R. § 41.37(c)(1)(vii).
We consider the following issues that flow from the contentions of the
Appellant and the Examiner:
Regarding the issue of whether the Palm reference discloses a
hardware identifier that is provided automatically by the device (Br. 9), we
note that Palm expressly discloses: “Enter a user name for your organizer
and click OK.” (Palm 60, emphasis added). Therefore, we agree with the
Examiner that the entered “user name” corresponds to the unique name (i.e.,
hardware identifier) associated with the Palm organizer. While this name or
identifier must be initially configured by the user before performing a first
“HotSync” operation (Palm 60), we nevertheless agree with the Examiner
that all subsequent operations automatically provide the unique organizer
name (i.e., hardware identifier) as an integral part of each “HotSync”
operation. It is our view that without such a unique organizer name (i.e.,
hardware identifier), the Palm Desktop would not know which organizer to
perform synchronization with (see Palm, p. 60, e.g., “Every organizer should
have a unique name.”).
Therefore, we find that the argued language of claim 1 (i.e., “said
hardware identifier being automatically provided by the device, absent user
intervention . . . ”) broadly but reasonably reads on each subsequent
automatic “HotSync” operation where the organizer name is necessarily
provided as part of the synchronization operation. Moreover, we agree with
the Examiner that the file synchronization performed by each Palm
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“HotSync” operation would not be possible without the software
components being registered (i.e., associated) with a hardware identifier
(i.e., organizer device name) (see Palm, pp. 58-59, e.g., “The “HotSync”
process automatically synchronizes – that is, exchanges and updates – data
between your organizer and Palm Desktop software. Changes you make on
your organizer or Palm Desktop software appear in both places after a
HotSync operation.”).
Regarding the issue of whether the Palm reference discloses the
recited limitations of “automatically restoring a software configuration of the
device . . . ” (claim 1), we conclude that a broad but reasonable
interpretation of the claim language does not preclude initiating an automatic
synchronization (i.e., restoring) operation by user action. Indeed, our
interpretation is entirely consistent with Appellant’s own Specification
which broadly discloses that the initiation of an automatic recovery may be
manual or automatic, as follows:
[0036] Regardless of the definition of a catastrophic software
failure, recovery is initiated in response thereto. The initiation
of recovery may be manual or automatic. For example, a user
may manually start the process or the device may automatically
go into recovery, when recovery is indicated. Notwithstanding
how the process is started, the recovery itself is automatic, in
accordance with an aspect of the present invention [emphasis
added].
(Spec. 8).
Accordingly, we agree with the Examiner that the “HotSync”
operation automatically restores a software configuration of the Palm
organizer device after a “HotSync” operation is manually initiated by user
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action (see also Palm, p. 47, e.g., “you can restore all synchronized data at
the next “HotSync” operation.”).
From the above discussion, we conclude that Appellant has not
sustained the requisite burden on appeal in providing arguments or evidence
persuasive of error in the Examiner’s rejection. Therefore, we sustain the
Examiner’s rejection of representative claim 1 (and claims 16, 29, and 31
that fall therewith) as being anticipated by Palm.

Claims 13, 26, and 41
We consider next the Examiner’s rejection of claims 13, 26, and 41 as
being anticipated by Palm. Since Appellant’s arguments with respect to this
rejection have treated these claims as a single group which stand or fall
together, we select independent claim 13 as the representative claim for this
rejection. See 37 C.F.R. § 41.37(c)(1)(vii).
Regarding representative claim 13, we note that Appellant essentially
argues the same issues previously addressed with respect to claim 1.
Therefore, we restate our response to representative claim 1, as discussed
above. In particular, we emphasize our factual finding that the entered “user
name” corresponds to the unique name (i.e., hardware identifier) associated
with the Palm organizer. See Palm 60, i.e., “Enter a user name for your
organizer and click OK.” (Emphasis added). Consistent with our
discussion above for claim 1, and for the reasons set forth by the Examiner
in the Answer, we find that the Palm reference discloses the argued
limitations of “automatically providing to a recovery unit, by a device, an
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identifier of the device, said automatically providing being absent user
intervention.” (Claim 13). We agree with the Examiner that all subsequent
operations automatically provide the unique organizer name (i.e., hardware
identifier) as a necessary part of each “HotSync” operation. Without such a
unique organizer name (i.e., hardware identifier), the Palm Desktop would
not know which organizer to perform synchronization with, as previously
discussed.
It is also our view that the “HotSync” operation performs the step of
“automatically determining, by the recovery unit, that the software
configuration of the device is to be restored” after each “HotSync” operation
is started by user action. (Claim 13). We note that Appellant’s own
Specification broadly discloses that the initiation of an automatic recovery
may be manual or automatic, as previously discussed. (See Spec. 8,
¶[0036]).
From the above discussion, we conclude that Appellant has not
sustained the requisite burden on appeal in providing arguments or evidence
persuasive of error in the Examiner’s rejection. Therefore, we sustain the
Examiner’s rejection of representative claim 13 (and claims 26 and 41 that
fall therewith) as being anticipated by Palm.

Dependent claim 44
We consider next the Examiner’s rejection of dependent claim 44 as
being anticipated by Palm.
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Appellant contends that Palm does not disclose automatically
detecting a failure, and then automatically initiating recovery, responsive to
that detected failure. (Br. 12).
We disagree. It is our view that the weight of the evidence supports
the Examiner’s finding that after any data loss event (e.g., hard reset or
battery failure), the Palm “HotSync” operation will automatically detect a
file synchronization anomaly (i.e., data loss) and correct it, albeit after user
action initiates the “HotSync” operation. We conclude that a broad but
reasonable interpretation of the claim language does not preclude initiating
an automatic synchronization (i.e., restoring) operation by user action, as
previously discussed. (See Spec. 8, ¶[0036]). Appellant’s own Specification
broadly discloses that the initiation of an automatic recovery may be manual
or automatic, as previously discussed. (See Spec. 8, ¶[0036]). Because
Appellant has not shown that the Examiner has erred, we sustain the
Examiner's rejection of claim 44 as being anticipated by Palm.

Independent Claim 30
We consider next the Examiner’s rejection of independent claim 30 as
being anticipated by Palm.
Appellant contends that Palm does not disclose automatically
detecting a condition of a device for which restoration of the device is
desired, as well as automatically restoring, in response to detecting that
condition, a software configuration of the device. (Br. 16).
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We disagree. We restate our previous analyses of representative
claims 1 and 13, and, in particular, claim 44. In our view that after any data
loss event (e.g., hard reset or battery failure), the Palm “HotSync” operation
will automatically detect a file synchronization anomaly (i.e., data loss) and
correct it, albeit after user action initiates the “HotSync” operation, as
previously discussed. We again conclude that a broad but reasonable
interpretation of the claim language does not preclude initiating an automatic
synchronization (i.e., restoring) operation by user action. (See Spec. 8,
¶[0036]).
Appellant further contends that Palm does not disclose the automatic
tracking of software components of the device and of automatically
providing to the device those components that are automatically tracked.
(Br. 17).
After reviewing the evidence before us, it is our view that the Palm
“HotSync” operation performs the argued functions of automatically
tracking software components of the device and of automatically providing
to the device those components that are automatically tracked (see Palm, pp.
58-59, e.g., “The “HotSync” process automatically synchronizes – that is,
exchanges and updates – data between your organizer and Palm Desktop
software. Changes you make on your organizer or Palm Desktop software
appear in both places after a HotSync operation.”).
Because Appellant has not shown that the Examiner has erred, we
sustain the Examiner's rejection of independent claim 30 as being anticipated
by Palm.
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Dependent claims 45 and 46
Because we conclude that Appellant has met the burden of showing
error for claims 45 and 46, we reverse the Examiner’s rejection of these
claims for the following reasons:
Regarding claim 45, we find that Palm does not fairly disclose
“automatically determining, absent user intervention, at least one of a patch
and an update pertaining to the software configuration of the device to be
provided to the device,” as claimed (emphasis added). In particular, we find
the Examiner admits in the Answer that the selection of the software is
performed by a manual step. (See Answer 18).
Regarding claim 46, we agree with Appellant that the portion of page
91 of the Palm reference (i.e., “Shows version information for Address
book.”), as relied on by the Examiner, does not fairly disclose determining
the appropriate version of the software component to be provided, as
required by the language of claim 46.

Dependent claims 2-12, 14, 15, 17-22, 24, 25, 27,
32-37, 39, 40, 42-43, and 47
Appellant has not presented any substantive arguments directed
separately to the patentability of dependent claims 2-12, 14, 15, 17-22, 24,
25, 27, 32-37, 39, 40, 42-43, and 47. Therefore, we sustain the Examiner’s
rejection of these claims as being anticipated by Palm. See In re Young, 927
F.2d 588, 590 (Fed. Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(vii).

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CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown the Examiner erred in rejecting claims 2 and 17
under 35 U.S.C. § 112, second paragraph. We conclude that Appellant has
not shown the Examiner erred in rejecting claims 1-22, 24-27, 29-32, 34-37,
39-44, and 47 under 35 U.S.C. § 102(b) for anticipation. However, we
conclude that Appellant has shown the Examiner erred in rejecting claims 45
and 46 under 35 U.S.C. § 102(b) for anticipation.

DECISION
We affirm the Examiner’s decision rejecting claims 1-22, 24-27,
29-32, 34-37, 39-44, and 47.
We reverse the Examiner’s decision rejecting claims 45 and 46.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

pgc

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