Ex Parte Lamoureux

Patent Trial and Appeal Board

May 1, 2013

11256327 (P.T.A.B. May. 1, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOUGLAS ROBERT LAMOUREUX
____________

Appeal 2011-00428
Application 11/256,327
Technology Center 2400
____________

Before BRUCE R. WINSOR, BARBARA A. BENOIT, and
GREGG I. ANDERSON, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to updating a configuration file that is
stored locally on a computer. The configuration file provides various
directives to an operating system, which ultimately controls the operation of
the computer system. In one embodiment, a configuration server is also
communicatively associated with each of the client machines by means of a
Appeal 2011-000428
Application 11/256,327

2

network. A particular client machine obtains a global configuration profile
from the configuration server upon system startup. The client machine uses
the global configuration profile to establish a local configuration within the
client machine 10. See generally Spec. 4. Claim 6 is illustrative:
6. A client computer comprising:

one or more processors for executing an instruction sequence;

interface for enabling the processor to communicate with an external
device;

memory for storing one or more instruction sequences and also for
storing an operating configuration; and

one or more instruction sequences stored in the memory including:

configuration module that, when executed by the processor,
minimally causes the processor to retrieve a global configuration
profile from an external device using the interface, to parse the
global configuration profile, to evaluate a variable tag located
within the global configuration profile based on an equation
included in the global configuration profile, and to set a
configuration attribute in the operating configuration according to
the evaluated tag; and

operating system that, when executed by the processor,
minimally causes the processor to control the client computer
according to the operating configuration stored in the memory.

THE REJECTIONS
(1) The Examiner rejected claims 1, 2, 4-7, 9-12, 14-17, 19, and 20
under 35 U.S.C. §103(a) as being unpatentable over Chari (US
Appeal 2011-000428
Application 11/256,327

3

7,457,853B1, issued Nov. 25, 2008) and Vasisht (US 2004/0133689 A1,
published July 8, 2004). Ans1. 4-11.
(2) The Examiner rejected claims 3, 8, 13 and 18 under 35 U.S.C.
§103(a) as being unpatentable over Chari, Vasisht, and Robohm (US
2002/0136222 A1, published Sept. 26, 2002). Ans. 12-17.

ISSUES
Under 35 U.S.C. § 103(a), has the Examiner erred by finding that
Chari and Vasisht collectively would have taught or suggested:
(1) a configuration module that “causes the processor to retrieve a
global configuration profile from an external device,” as recited in claim 6?
(2) a “data repository" limitation "wherein the configuration module
causes the processor to retrieve a global configuration profile by minimally
causing the processor to retrieve a file from a remotely accessed data
repository, ” as recited in claim 7?
(3) a configuration module to establish a configuration in memory by
“minimally causing the processor to substitute a variable tag included in a
retrieved global configuration profile with a value stored in the a priori tag
evaluation list,” as recited in claim 10?

1 Throughout this opinion, we refer to (1) the Appeal Brief filed Apr. 25,
2010 (“App. Br.”); (2) the Examiner’s Answer mailed July 21, 2010
(“Ans.”); and (3) the Reply Brief (Merged with Appeal Brief) filed Sept. 14,
2010 (“Reply Br.”).

Appeal 2011-000428
Application 11/256,327

4

ANALYSIS
Claims 6 and 9
On this record, we find no error in the Examiner’s obviousness
rejection of representative claim 62 which recites, in pertinent part, a
configuration module that “causes the processor to retrieve a global
configuration profile from an external device.”
With respect to the disputed limitation of claim 6, Chari teaches a
configuration template 136, stored in non-volatile memory of a network
device of a user. Chari, col. 3, ll. 4-7. The Examiner finds Chari’s
configuration template maps to the configuration profile as claimed. Ans. 6,
18 (citing Chari, col. 7, ll. 1-6). Further, when executed by the processor,
the configuration template is downloaded, i.e., retrieved. Ans. 6, 18 (citing
Chari, col. 7, ll. 1-6). The retrieval of Chari’s configuration template comes
from external network elements, which the Examiner finds are the external
devices recited. Ans. 6 (citing Chari, col. 13, ll. 48-49).
Appellant asserts neither Chari nor Vasisht teach the disputed
limitation of claim 6. App. Br. 11. Specifically, Appellant contends the
downloading of the configuration template of Chari is performed in the first
instance by the user or customer of the network and not the configuration
module, as Appellant asserts is claimed. App. Br. 12. Further, Appellant
contends the external devices of Chari are not a configuration module of a
computer that retrieves a global configuration file from an external device.
Id. Appellant summarizes that the preceding argument shows the Examiner

2 Appellant groups claims for purposes of this appeal. Claims 6 and 9 are in
GROUP 1. App. Br. 11. Claim 7 is in GROUP 2. App. Br. 14. Claim 10 is
in GROUP 3. App. Br. 14. No other claims are argued on appeal. App. Br.
10. We follow Appellant’ grouping in our analysis.
Appeal 2011-000428
Application 11/256,327

5

erred in finding the disputed limitation to be taught by Chari. Appellant
asserts that to find the disputed limitation to be taught by Chari, the
Examiner needed to find either: 1) a customer or user of Chari is a
configuration module; or 2) some other reason the retrieval limitation is met.
Reply Br. 13.
We find the Examiner’s findings in connection with claim 6 are
reasonable. Appellant misapprehends the Examiner’s finding as well as
what is recited in the claim. First, Chari is a computer system 500 for
providing configuration customization for network service providers. See,
Ans. 6 (citing Chari, col. 13, l. 63-col. 14, l. 49). Contrary to Appellant’s
assertion (App. Br. 12), the Examiner does not equate the customer of the
Chari disclosure to the configuration module claimed. Rather, the Examiner
relies on the configuration template 124 of Chari as teaching the
configuration profile element of claim 6. Ans. 6 (citing Chari, col. 7, ll. 1-
6). The Examiner specifically finds Chari teaches one or more instruction
sequences stored in the memory including a configuration module as per the
claim, a configuration system 112B of Chari. Id., see also Chari, Figs. 1B, 3
and 4. When executed by a processor 504, the processor retrieves the
configuration template 124, i.e., a global configuration profile as recited. Id.
(citing Chari, col. 13, ll. 17-33). The configuration template is obtained
from an external device, which can be located at the vendor, service
provider, or user. See, Chari, Abstract, Fig. 4, col. 4, ll. 24-29, col. 4, ll. 42-
44.
In sum, the Examiner’s findings on Chari as a whole do not equate a
user request to the configuration module. In connection with a section 103
inquiry, “the fact that a specific [embodiment] is taught to be preferred is not
Appeal 2011-000428
Application 11/256,327

6

controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.” Merck & Co., Inc. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed.Cir.1989) (quoting In re Lamberti, 545 F.2d
747, 750 (CCPA 1976)). When all of the teachings of Chari are read, the
Examiner reasonably found the disputed limitation present.
In addition, claim 6 requires that “when executed by the processor,
minimally causes the processor to retrieve a global configuration profile
from an external device using the interface….” (emphasis added) Contrary
to Appellant’s argument that the configuration module retrieves the
configuration profile (App. Br. 12), the claim requires the processor to
retrieve the configuration profile. Though both the processor and
configuration profile are claimed elements of the configuration module,
Appellant’s argument does not track the claim language. As the Examiner
finds, the instructions are executed by a processor 504. Ans. 6 (citing Chari,
col. 13, ll. 17-33). Therefore, Appellant’s argument does not persuade us the
Examiner’s findings with respect to claim 6 and the disputed limitation are
in error.
Claim 9 is grouped in Group I by Appellant. No separate argument
for the patentability of claim 9 is made. The Examiner finds Chari teaches at
least one of a host-name tag, domain-name tag, an allowed hosts tag, and an
internet protocol address as recited in claim 9. Ans. 8 (citing Chari, col. 10,
l. 63 - col. 11, l. 34). For reasons stated above in connection with claim 6,
we agree with the Examiner’s findings in connection with claim 9.
Claim 7
On this record, we find no error in the Examiner’s obviousness
rejection of representative claim 7 which recites, in pertinent part, a “data
Appeal 2011-000428
Application 11/256,327

7

repository" limitation "wherein the configuration module causes the
processor to retrieve a global configuration profile by minimally causing the
processor to retrieve a file from a remotely accessed data repository."
The Examiner finds Chari teaches a client computer which causes the
processor to retrieve a global configuration profile by minimally causing the
processor to retrieve a file from a remotely accessed data repository. Ans. 7
(citing Chari, col. 7, ll. 1-6 and col. 13, ll. 48-49).
Appellant contends claim 7 is allowable for the same reasons as
argued on claim 6. App. Br. 14. Appellant also contends that Chari does not
show the data repository limitation.
We found Appellant’s arguments on claim 6 unpersuasive as
discussed above and apply the same rationale here. Further, Appellant gives
no explanation of why the data repository limitation is not present in Chari.
The Examiner cites to networks including elements, which can be servers.
Ans. 7 (citing Chari, col. 13, ll. 48-49). The Specification states the “data
repository” is a server. Spec. 4, l. 20. Given the absence of persuasive
argument to overcome the Examiner’s finding that the server taught by Chari
meets the data repository limitation, we sustain the Examiner’s findings.

Claim 10
We begin by construing the disputed limitation of claim 10 which
recites, in pertinent part, “minimally causing the processor to substitute a
variable tag included in a retrieved global configuration profile with a value
stored in the a priori tag evaluation list.”
The Examiner finds Chari teaches retrieval of a global configuration
profile with a value stored in the a priori tag evaluation list. Ans. 8 (citing
Appeal 2011-000428
Application 11/256,327

8

Chari, col. 10, l. 63-col. 11, l. 34). Additionally, in the Response, Chari
teaches an a priori tag evaluation list, citing inter alia, default-router
“EOIPAddress” of Table 2 of Chari. Ans. 21-22 (citing Chari, col. 10, l. 63
- col. 11, l. 34). Specifically, the network device dynamically substitutes the
value of the Ethernet IP address that is then currently used by the network
device. The Ethernet IP address, as well as other dynamic tags, can be
processed. Id. Customers download the template to the non-volatile
memory of the device to accomplish a configuration change. Id. (citing
Chari, col. 7, ll. 1-8). The setup application executed by the network device
dynamically substitutes into the configuration the value of the Ethernet IP
address that is then currently used by the network device. Id.
Appellant disagrees and asserts Table 2 of Chari is a list of tags and
does not include a value to be substituted for a variable tag included in a
global configuration profile. Reply. Br. 19. Also, Appellant contends, Chari
does not disclose that the values of Table 2 are stored in the computer
(device). Id. Thus, the passage relied on for teaching the claimed
"evaluation list" limitation does not in fact teach that limitation. Id.
We begin by construing the term “list” as used in the claim.
Appellant does not argue any particular meaning for a “list” and none is
contained in the Specification. In consulting dictionary definitions, a “list”
is “a multi-element data structure that has linear (first, second, third…)
organization but that allows elements to be removed in any order….”
Microsoft Computer Dictionary, p. 384 (2002). Accordingly, we conclude
that a “list” is a data structure arranged in a linear organization.
We understand Appellant’s argument to be that the Table 2 of Chari,
while technically admitting it is a “list” (Reply Br. 19), it is not a data
Appeal 2011-000428
Application 11/256,327

9

structure because, inter alia, it is not stored in a computer. At most,
according to Appellant, Table 2 is an example of dynamic tags. Id.
However, Table 3 of Chari is a data structure, a file for creating a
configuration template. Table 3 also includes all the dynamic tags of Table
2 as part of the file for creating a configuration template, e.g.,
“EOIPAddress.” Chari, col. 13, l. 60. The Examiner found that the dynamic
tags of Table 2 were a list. The dynamic tags are used in the data structure
of Table 3. The data structure of Table 3 is organized in linear fashion, in
order of steps to be done to create the configuration template. Given the
breadth of what a data structure is and the lack of any particular priority in
the Specification to the “evaluation list” claimed, we agree with the
Examiner’s finding that Table 2, when considered in light of the reference as
a whole, is an “evaluation list.”
Claims 1-5, 8 and 11-20
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 6, 7, 9 and 10. App. Br. 10. Claims 1-5, 8 and 11-20 are not
argued by Appellants, or otherwise indicated to be on appeal. App. Br. 5,
10. Accordingly, we confine our decision to claims 6, 7, 9 and 10.
We find the Appellant has waived any consideration by us of the
claims not appealed. See 37 C.F.R. § 41.37(c)(1)(vii). Accordingly, the
rejection of the Examiner in the Final Rejection of claims 1-5, 8, and 11-20
is summarily sustained. It is further suggested the Examiner consider
whether cancellation of claims 1-5, 8 and 11-20 is appropriate. See MPEP §
1215.03.

Appeal 2011-000428
Application 11/256,327

10

CONCLUSION
The Examiner did not err in rejecting claims 6, 7, 9 and 10 under 35
U.S.C. § 103(a).
The rejection of claims 1-5, 8 and 11-20 under 35 U.S.C. § 103(a) is
summarily sustained for failure to argue them on appeal.

ORDER
The Examiner’s decision rejecting claims 1-20 is affirmed.
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

kis