10324889 (B.P.A.I. Mar. 29, 2010)

Ex Parte Mese et al

Board of Patent Appeals and InterferencesMar 29, 2010

10324889 (B.P.A.I. Mar. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JOHN C. MESE, NATHAN J. PETERSON, and ROD DAVID WALTERMANN ____________ Appeal 2009-000944 Application 10/324,889 Technology Center 2100 ____________ Decided: March 30, 2010 ____________ Before JOHN A. JEFFERY, JAMES D. THOMAS, and HOWARD B. BLANKENSHIP, Administrative Patent Judges. BLANKENSHIP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-14, which are all the claims in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2009-000944 Application 10/324,889 2 Invention Appellants’ invention relates to configuring hardfiles (e.g., hard drives) of a computer system during installation, reinstallation, or when the hardfiles otherwise require configuration. Abstract. See also Spec. 1: 9-11. Representative Claim 1. A method for configuring a hardfile for a computing system, the method comprising: creating an abstraction of a desired configuration for the hardfile, the abstraction being a textual representation of the desired configuration in a standard generalized markup language; creating a virtual model of the hardfile in a memory, the virtual model of the hardfile being created from the abstraction; and generating one or more physical drive configuration scripts to physically configure the hardfile in the computer system as specified in the abstraction based on the virtual model of the hardfile. Prior Art Murray 6,330,653 B1 Dec. 11, 2001 Maddux 2002/0124245 A1 Sep. 5, 2002 Examiner’s Rejection Claims 1-14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Murray and Maddux. Appeal 2009-000944 Application 10/324,889 3 Claim Groupings Based on Appellants’ arguments in the Appeal Brief, we will decide the appeal on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). FINDINGS OF FACT We refer to, and rely on, the Examiner’s findings set out in the Final Rejection and Answer. PRINCIPLES OF LAW The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). “A reference may be said to teach away when a person of ordinary skill, upon [examining] the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Para-Ordnance Mfg. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995) (alteration in original) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Appeal 2009-000944 Application 10/324,889 4 What the prior art teaches and whether it teaches toward or away from the claimed invention are determinations of fact. Para-Ordnance Mfg., 73 F.3d at 1088. ANALYSIS Appellants allege that each of Murray and Maddux, when considered alone, fails to disclose creating a virtual model of a hardfile from an abstraction, in which the abstraction is a textual representation of a desired configuration for the hardfile in a standard generalized markup language. Br. 4-7. Appellants conclude that prima facie obviousness of the claimed invention has not been shown, because all the claim limitations are not taught or suggested by the prior art. Id. at 7. However, the Examiner finds that Murray teaches creating a virtual model of a hardfile from an abstraction, in which the abstraction is a textual representation of a desired configuration for the hardfile. The Examiner cites to particular text in Murray in support of the findings. The Examiner further finds that Murray does not teach that the abstraction (textual representation) is in a standard generalized markup language. The Examiner cites to particular text in Maddux in support of the finding that the reference teaches abstracting configuration parameters into one or more text instructions using a generalized markup language (XML). The Examiner further finds that one of ordinary skill in the art would have been motivated to use a standard generalized markup language as taught by Maddux in Murray’s system, citing as support particular text in Maddux. Based on the findings with respect to the scope and content of the prior art, the difference between the claimed invention and the prior art, and the motivation from the Appeal 2009-000944 Application 10/324,889 5 prior art to combine the references, the Examiner concludes that the subject matter as a whole of claim 1 would have been prima facie obvious at the time of invention. Ans. 3-4. Appellants’ remarks in the Appeal Brief do not respond to the rejection applied against claim 1. In particular, the Examiner did not allege that either of Murray or Maddux contains all the limitations of instant claim 1. Nor did the Examiner reject claim 1 as being anticipated (35 U.S.C. § 102) by either of Murray or Maddux. Further, the level of skill in the art, as demonstrated by the references, was such that one of ordinary skill would have been able to use a generalized markup language in the system taught by Murray. Appellants have provided no evidence tending to show that the use of a conventional generalized markup language (e.g., XML) for textual representation was “uniquely challenging or difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007)). To the extent that any of Appellants’ allegations about individual deficiencies of the references might be seen as responsive to the rejection, we refer to the Examiner’s response to the allegations in the Answer. Appellants add an allegation that Maddux “teaches away” from “generating one or more physical configuration scripts to physically configure the hardfile in the computer system,” because Maddux teaches that installation scripts have “numerous shortcomings.” Br. 6-7. The “teaching away” allegation is also answered to our satisfaction by the Examiner (Ans. 14). The Examiner finds that when the alleged “teaching away” is considered in the context of Maddux’s contribution to the art, the reference Appeal 2009-000944 Application 10/324,889 6 actually teaches toward the claimed invention. Id. Moreover, the text in Maddux referenced by Appellants (Maddux ¶¶ [0019]-[0024]) clearly refers to scripts in a “deployment option” in the prior art with respect to Maddux, rather than a general warning to the artisan against the use of installation scripts. Appellants have thus failed to demonstrate error in the § 103(a) rejection over Murray and Maddux. We sustain the rejection of claims 1-14. DECISION The rejection of claims 1-14 under 35 U.S.C. § 103(a) as being unpatentable over Murray and Maddox 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). See 37 C.F.R. § 41.50(f). 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