Ex Parte Kane

Board of Patent Appeals and Interferences

Dec 14, 2011

10851853 (B.P.A.I. Dec. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TRAVIS DAVID KANE
__________

Appeal 2009-014655
Application 10/851,853
Technology Center 2100
__________

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Before JEAN R. HOMERE, JOHN A. JEFFERY, and
ST. JOHN COURTENAY III, 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 final rejection of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We Affirm-in-part.
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Invention
The disclosed invention relates generally to computer systems. More
particularly, the invention on appeal is directed to a distributed installation
configuration system and method. (Spec. 1).

Representative claim 1 is illustrative:
A distributed installation configuration system,
comprising:

a computer-readable medium; and

a processor, the processor operable to execute a program
of instructions encoded on the computer-readable medium, the
program of instructions comprising:

an installer module operable to collect a first set of one or
more configuration settings needed for installing a plurality of
product components on one or more machines before installing
the plurality of product components, the installer module
operable to install the one or more of the plurality of
components; and

a configuration agent module operable to store and
manage the collected first set of one or more configuration
settings, the configuration agent module operable to provide
data associated with the collected first set of one or more
configuration settings,

the installer module further operable to determine
whether the plurality of product components are being installed
for the first time, and if the plurality of product components are
being installed for the first time, the installer module further
operable to create the configuration agent module;

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if one or more of the plurality of product components
were installed previously, the installer module further operable
to determine a location of the configuration agent module,
whether on a local machine or a remote machine, retrieve the
collected first set of one or more configuration settings from the
configuration agent module, collect a second set of one or more
configuration settings related to localized information from a
user, continue with installing one or more of the plurality of
product components using the collected first set of one or more
configuration settings and the second set of one or more
configuration settings.

Rejections
1. Claims 1-7 and 9-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Goldman (US Pat. 6,615,405)
and Aronberg (US Pat. 5,933,647).
2. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Goldman, Aronberg, and
Gibson (US Pat. Pub. 2004/0044999).

ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal regarding
independent claims 1, 11, and 17:
Under §103, did the Examiner err in finding that the cited
combination of Goldman and Aronberg would have
taught or suggested:

if one or more of the plurality of product components
were installed previously, the installer module further operable .
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. . . collect a second set of one or more configuration settings
related to localized information from a user, continue with
installing one or more of the plurality of product components
using the collected first set of one or more configuration
settings and the second set of one or more configuration
settings,

within the meaning of claim 1 and the commensurate
language of claims 11 and 17?

ANALYSIS
Appellant contends, inter alia, that the following limitations of
independent claim 1 are not taught or suggested by the Examiner’s proffered
combination of Goldman and Aronberg:
if one or more of the plurality of product components
were installed previously, the installer module further operable
. . . collect a second set of one or more configuration settings
related to localized information from a user, continue with
installing one or more of the plurality of product components
using the collected first set of one or more configuration
settings and the second set of one or more configuration
settings.
(App. Br. 13-14).
Based upon our review of the record, we agree with Appellant.
In reviewing the Examiner’s underlying factual findings and ultimate
legal conclusion of obviousness, it is our view that the Examiner paints with
a broad brush in reading the disputed language of independent claims 1, 11,
and 17 on the cited combination of Goldman and Aronberg.
Even assuming arguendo (without deciding) that Aronberg (Figs. 9-
10, col. 7, ll. 24-31) would have taught or suggested “collect[ing] a second
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set of one or more configuration settings related to localized information
from a user” (claim1), as proffered by the Examiner (Ans. 14-15), we agree
with Appellant (App. Br. 13-14) that there exists a gap in the combined
teachings regarding the claimed “if . . . condition” clause:
if one or more of the plurality of product components
were installed previously, the installer module further operable
to . . . continue with installing one or more of the plurality of
product components using the collected first set of one or more
configuration settings and the second set of one or more
configuration settings.
(Claim 1, emphasis added; see commensurate limitations recited in claims
11 and 17).
We find the Examiner has not fully developed the record to establish
how this disputed “if . . . condition” clause is taught or fairly suggested by
the cited combination of Goldman and Aronberg. We find speculation is
required to ascertain exactly how the Examiner is reading the disputed “if
. . . condition” and the corresponding collecting function on the combination
of Goldman and Aronberg.
In the rejection of claim 1, the Examiner appears to be relying on
Goldman to teach or suggest “if one or more of the plurality of product
components were installed previously, the installer module further operable
to determine a location.” (Claim 1, emphasis added; Ans. 5). However, the
Examiner looks to the secondary Aronberg reference for purportedly
teaching or suggesting:
collect[ing] a second set of one or more configuration
settings related to localized information from a user, continue
with installing one or more of the plurality of product
components using the collected first set of one or more
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configuration settings and the second set of one or more
configuration settings.
(Claim 1; Ans. 5-6).
We are particularly troubled by the chain of causation that is split
between the two references in the Examiner’s proffered combination of
Goldman and Aronberg. Since neither reference alone teaches or suggests
the complete chain of causation (if . . . {condition is met}, then perform the
recited collecting of a second set of configuration information), we agree
with Appellant that the Examiner’s findings and ultimate legal conclusion of
obviousness are unconvincing regarding claims 1, 11, and 17.
Therefore, for essentially the same reasons argued by Appellant in the
Briefs, as discussed above, we find the Examiner erred in rejecting
independent claims 1, 11, and 17 and associated dependent claims, excepting
claim 8, which we address infra.

Dependent Claim 8
Regarding dependent claim 8, on this record, the Examiner has not
established the tertiary Gibson reference overcomes the deficiencies of
Goldman and Aronberg, as discussed above regarding claim 1 from which
claim 8 depends. Therefore, we reverse the Examiner’s second-stated
rejection of claim 8 over the combination of Goldman, Aronberg, and
Gibson.
Independent claim 19
Appellant argues all claims except claim 8 together as a single group.
(App. Br. 12-14). We particularly observe that Appellant does not present
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separate arguments regarding the broadest independent claim on appeal:
claim 19.
However, independent claim 19 is silent regarding the argued “if . . .
condition” clause that we found dispositive regarding independent claims 1,
11, and 17, as discussed above. Moreover, claim 19 does not recite the
additional limitation argued by Appellant on page 12 of the principal Brief:
“the installer module further operable to determine whether the plurality of
product components are being installed for the first time.” (emphasis added).
Because Appellant has not presented substantive arguments directed
to the broader language of independent claim 19, we are not convinced of
Examiner error regarding this broadest independent claim on appeal. See
In re Lovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011) (“We conclude that the
Board has reasonably interpreted Rule 41.37 to require applicants to
articulate more substantive arguments if they wish for individual claims to
be treated separately.”). Accordingly, we sustain the Examiner’s rejection of
claim 19 and claim 20 which depends therefrom (not argued separately).
See 37 C.F.R. § 41.37(c)(1)(vii).

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DECISION
We reverse the Examiner’s § 103 rejections of claims 1-18.
We affirm the Examiner’s § 103 rejection of claims 19 and 20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED-IN-PART

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