Ex Parte Papierniak et al

Board of Patent Appeals and Interferences

Jun 30, 2004

09040919 (B.P.A.I. Jun. 30, 2004)

-1-
The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte KAREN A. PAPIERNIAK
and LUO-JEN CHIANG
________________
Appeal No. 2003-0342
Application 09/040,919
________________
ON BRIEF
________________
Before JERRY SMITH, BARRY and LEVY, Administrative Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1, 2 and 4-13, which
constitute all the claims in the application.
Appeal No. 2003-0342
Application 09/040,919
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The disclosed invention pertains to a method and
apparatus for permitting an optical disk to be used as a primary
server in a network. Information and software from a server in
the network is copied to the optical disk. The copied software
configures the disk to function as a primary server so that a
user can access information at the server without directly
accessing the server.
Representative claim 1 is reproduced as follows:
1. A method for using an optical disk as a primary server
in a network, reducing network access time and traffic,
comprising the steps of:
placing at least one optical disk in at least one
device;
connecting the at least one device to the network;
copying information and software from a server in the
network to the at least one optical disk;
accessing said software stored on the at least one
optical disk by the at least one device to configure the at least
one device for functioning as a primary server, and for properly
accessing said information stored on the at least one optical
disk; and
accessing, by a user, said information stored on the
optical disk without directly accessing the server.
The examiner relies on the following references:
Griffin et al. (Griffin) 5,005,122 Apr. 02, 1991
Cook 5,860,068 Jan. 12, 1999
(filed Dec. 04, 1997)
Appeal No. 2003-0342
Application 09/040,919
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J. Postel, RFC 0881, “The Domain Names Plan and Schedule,”
http://rfe.fh-koeln.de/rfc/html/rfc0881, pages 1-10 (Postel).
Ron Gustavson, “Marketscape’s WebCD Pro Publisher,” Emedia
Professional, December 1997, pages 1-4.
Claims 1, 2 and 4-13 stand rejected under 35 U.S.C.
§ 103(a). As evidence of obviousness the examiner offers
Gustavson in view of Griffin with respect to claims 1, 4-9 and
12, Gustavson in view of Griffin and Postel with respect to claim
13, and Gustavson in view of Griffin and Cook with respect to
claims 2, 10 and 11.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner’s answer.
Appeal No. 2003-0342
Application 09/040,919
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It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in the
claims on appeal. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Appeal No. 2003-0342
Application 09/040,919
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Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellants have been considered in this
decision. Arguments which appellants could have made but chose
not to make in the brief have not been considered and are deemed
to be waived by appellants [see 37 CFR § 1.192(a)].
We consider first the rejection of claims 1, 4-9 and 12
based on Gustavson and Griffin. Independent claims 1, 7 and 12
stand or fall together [brief, page 7], and we will consider
claim 1 to be the representative claim for this group. The
examiner essentially finds that Gustavson teaches the claimed
invention except that Gustavson does not teach that information
Appeal No. 2003-0342
Application 09/040,919
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and software is copied directly from the network server as
claimed. The examiner takes “Official Notice” that copying
software from a server was well known in the art and cites
Griffin as supporting evidence. The examiner finds that it would
have been obvious to the artisan to incorporate the well known
software distribution technique to distribute software to a
device in a network and transfer the software to an optical disk
as is done in creating Gustavson’s WebCD. The examiner finds
that the proposed combination would be faster, cheaper and would
reduce damage [answer, pages 4-6].
Appellants argue that the examiner’s rationale for the
proposed combination of Gustavson and Griffin is inadequate.
Specifically, appellants argue that the examiner’s motivation
fails to explain how the WebCD program would have benefited from
distributing downloaded software in addition to web contents.
Appellants also argue that the combined teachings of Gustavson
and Griffin would still fail to teach the step of accessing the
software which was downloaded from the server for configuring the
Web-on-CD device accommodating the optical disk as a primary
server, and allowing the information which was also previously
downloaded from the server to be properly accessible.
Specifically, appellants argue that the setup files would not be
Appeal No. 2003-0342
Application 09/040,919
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downloaded from a server together with the web contents, but
instead, would be created locally by the Publisher component of
Web-on-CD. Appellants note that there is no need to copy
configuring software in Gustavson because the setup files are
created locally in Gustavson [brief, pages 10-11].
The examiner responds that an artisan would have been
motivated to copy software from a network server because it would
reduce the time for acquiring the software by some other means.
The examiner also responds that it would have been obvious to the
artisan to either directly download software onto the optical
disk as in appellants’ invention or to indirectly download
software onto the optical disk as is done in Gustavson [answer,
pages 9-16].
Appellants respond that the setup software is created
locally in Gustavson and is not downloaded from a network server.
Appellants also respond that the examiner’s rationale still lacks
an appropriate suggestion or motivation to modify Gustavson
[reply brief].
We will not sustain the rejection of independent claims
1, 7 and 12 for essentially the reasons argued by appellants in
the briefs. Initially, we wish to make it clear that we agree
with the examiner that it was well known in the art to download
Appeal No. 2003-0342
Application 09/040,919
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software from a network server. Claim 1, however, requires that
the software which is downloaded from the network server be
accessed for the specific purpose of configuring a device to
function as a primary server which access the information on the
disk which was also downloaded from the network server. The
problem with the examiner’s rejection is that it fails to
consider the fact that the configuring software in Gustavson is
either already available at the local device or is placed on the
optical disk by the distributor. Thus, the examiner’s proffered
rationales of faster, cheaper and less damage are irrelevant
because the software to be downloaded is already available in
Gustavson without any download at all. It is also clear that
since Gustavson relates to a software distributor and not to a
network of users, there is no suggestion that the configuring
software be downloaded from a network server along with the
information at the network site.
In summary, the examiner has acknowledged that the
combined teachings of Gustavson and Griffin fail to teach the
step of copying both software and information from a network
server in which the software is used to configure a device as a
primary server. We have found that the examiner’s argument that
it would have been obvious to the artisan to download the
Appeal No. 2003-0342
Application 09/040,919
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software in Gustavson is unsupported by the teachings of the
applied prior art because the configuing software in Gustavson is
either already at the local device or has been placed on the disk
by the distributor. Therefore, there is no support on this
record for the examiner’s position.
Since we have not sustained the examiner’s rejection of
independent claims 1, 7 and 12, we also do not sustain the
rejection with respect to any of the claims which depend
therefrom. We note that the additional teachings of Postel and
Cook fail to overcome the deficiencies in the combination of
Gustavson and Griffin discussed above.
In conclusion, we have not sustained the examiner’s
rejection of any of the claims on appeal. Therefore, the
decision of the examiner rejecting claims 1, 2 and 4-13 is
reversed.
Appeal No. 2003-0342
Application 09/040,919
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REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
LANCE LEONARD BARRY ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
STUART S. LEVY )
Administrative Patent Judge )
js/dym
Appeal No. 2003-0342
Application 09/040,919
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JAMES M. STOVER
NCR CORPORATION
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