Ex Parte Richard et al

Board of Patent Appeals and Interferences

Jul 15, 2008

09883724 (B.P.A.I. Jul. 15, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRUNO RICHARD and DENIS FLAVEN
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Appeal 2008-05651
Application 09/883,724
Technology Center 2100
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Decided: July 15, 2008
_____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
CARLOYN D. THOMAS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 through 9. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

1 Filed Jun. 18, 2001. The real party in interest is Hewlett Packard
Development, Co., LP.
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The Invention
Appellants invented a process for automatically installing a software
package on a remote client computer. (Spec. 1.) As depicted in Figure 1, an
IT administrator from a console (1) instructs a server (2) having stored
thereon a plurality of shared resources including software installation
packages to associate an executable file at the server with the remote client
(3, 4). (Spec. 6, 8.) As shown in Figure 2, upon the IT administrator
dragging the software package icon, and dropping it into the client computer
icon, the executable file of the software package becomes available as a
local low level service on the operating system of the client computer. This
causes a local setup procedure to be automatically launched in accordance
with the contents of a description file for the software package contained in
the server. (Id. 8-9.)
Claim 1 further illustrates the invention. It reads as follows:
1. Process for performing a remote setup procedure of a software
application on a remote client which operates under an operating system
which does not support a remote installation facility, comprising:

associating an executable file from a shared resource on a network
with the remote client at the direction of an administrator console on the
network, the executable file being adapted for controlling a local setup
procedure under the form of a low level service which is available in the
operating system of the client for local background tasks and routines and
further being associated with a description contained within a description
file present on the shared resource; and

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starting said executable file so that it becomes available to said remote
client as a local low level service and permits the automatic launching of a
local setup procedure in accordance with the contents of said description
file.

The Examiner relies upon the following prior art:

Kung US 5,742,286 Apr. 21, 1998
Dickey US 5,881,236 Mar. 09, 1999
Delo US 6,418,554 B1 Jul. 09, 2002
(filed Sep. 21, 1998)
Applicant’s Admitted Prior Art (APA).

The Examiner rejects the claims on appeal as follows:
A. Claims 1 through 4, 8, and 9 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Delo.
B. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Delo and Kung.
C. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Delo, Kung, and Dickey.
D. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Delo and Applicant’s Admitted Prior
Art (APA).

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
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Delo
1. Delo discloses a computer mechanism for automatically
installing software packages from a network server to a remote client
computer. (Abstract, col. 5, ll. 48-52.)
2. As shown in Figure 4, the network server (49) includes a
managed software installer (API) (84a) that, upon receiving instructions
from an administrator, generates an advertised script (82) containing various
files pertaining to a particular software package that will be installed on a
client computer (20). (Col. 7, l. 61- col. 8, l. 32.)
3. Upon receiving the generated advertised script (82), the client
computer (20) uses a logon code (86) to call a local managed software
installer mechanism (84b) to process the received script, thereby making it
available to the user. Particularly, logon code (86) calls the managed
software installer mechanism (84b) to process an advertised script. This
results in a collection of advertisement information (88) including shortcuts,
which the user activates by double clicking thereupon to launch or install the
advertised software. (Col. 8, ll. 41-64.)
4. Delo discloses that advertised applications appear at the client
computer at each logon. They appear to be, but are not necessarily, installed
on the client workstation. (Col. 7, ll. 8-13.)
5. Delo also discloses that a user at a client workstation may
launch or install an advertised application by clicking on a corresponding
shortcut. This will cause the installer to search for the application locally. If
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the application is not installed on the client workstation, the installer looks to
a centralized class store (70) to transparently install the software on the
client workstation. (Col. 11, ll. 24-58.)

PRINCIPLES OF LAW
ANTICIPATION
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
Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005), citing Minn.
Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d
1559, 1565 (Fed. Cir. 1992). “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 it also covers subject matter not in the
prior art.”) (Internal citations omitted).

ANALYSIS
35 U.S.C. § 102
Independent claim 1 recites in relevant part associating an executable
file from a shared resource on a network with a remote client at the direction
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of an administrator console, and starting the executable file on the remote
client as a local low level service to automatically launch a local setup
procedure according to the contents of a descriptor file. (Claims Appendix
A-1.) Appellants argue that Delo does not teach the recited limitations.
(App. Br. 4-6.) Particularly, Appellants argue that Delo teaches a low level
service installer that locally resides on each client workstation to install an
advertised software package when activated by the user of such computer.
However, Appellants allege that Delo does not teach a low-level service
installer residing on a server to locally install the software on a client
computer through local low level service installer, as recited in the claimed
invention. (Id. 4.) Further, Appellants allege that Delo’s advertised
software is only installed upon user’s activation, whereas the claimed
invention requires that the software be launched automatically. (Id. 5.)
The Examiner, in response, finds that Delo’s disclosure of
automatically installing an advertised software package from a server to a
client computer teaches the claimed invention. (Ans. 8-11.)
Thus, the pivotal issue before us is whether one of ordinary skill in the
art would find that Delo’s automatic software installation mechanism
teaches using a centralized low level service in conjunction with a local low
level service to automatically launch a software package on a client
computer. We answer this inquiry in the affirmative.
As detailed in the Findings of Facts section above, Delo discloses a
low-level service installer (managed software installer) at a server for
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generating, in response to an administrator’s request, an advertised script to
be downloaded unto a client computer. (FF. 2.) Further, Delo discloses
another low-level service installer locally installed at the client computer to
process the advertised software upon user activation to thereby make the
software available to the user. (FF. 3-5.) One of ordinary skill in the art
would readily recognize that Delo’s software installation mechanism uses
both a centralized low-level service installer and a local low-level service
installer to install the shared software on the client workstation. We do not
agree with Appellants that the low level service installer resides only in
Delo’s client computer, and not on a shared resource. The ordinarily skilled
artisan would duly appreciate that the low level service installer residing on
the server computer is very instrumental in getting the advertised software to
the client computer. As shown above, without the low-level service installer
on the server, the advertised software would not be generated at all. Further,
as correctly noted by the Examiner, the claim language merely requires that
an executable file from a shared resource be adapted to control a local setup
procedure under the form of a low-level service on the client computer.
Therefore, the ordinarily skilled artisan would appreciate that Delo’s
centralized low level service installer generates an executable script on a
server (shared resource) to instruct the local low level service installer, at
logon, to process the advertised script.
Additionally, as detailed in the Findings of Fact section above, Delo
explicitly discloses that the advertised software is automatically installed on
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the client computer. (FF. 1.) Particularly, Delo teaches a logon code that
calls the local low-level service installer to process the advertised software.
(FF. 3.) The ordinarily skilled artisan would readily recognize that Delo’s
calling of the low level service installer teaches starting the executable file to
make it available to the client computer as a local low level service.
Appellants argue that the user’s double clicking on the advertised software
icon negates the automatic installation of the software on Delo’s client
computer. (App. Br. 4-5.) This argument is not persuasive. The claim
merely requires starting an executable file on the client computer as a local
low level service to permit the automatic launching of the local setup
procedure. We note that the recited claim language does not preclude a
user-initiated starting of the executable file. The claim language only
requires that the launching of the local set procedure be automatic. As set
forth in the Finding of Facts section, once the user double clicks on the
advertised software, the logon code calls the low level service to fully
execute the software. The ordinarily skilled artisan would consequently
appreciate that Delo’s user-initiated starting of the advertised program
results in the automatic execution of the underlying local setup procedure in
accordance with the contents of the description file therefor. It follows that
Appellants have failed to show that the Examiner erred in finding that Delo
anticipates independent claim 1.
Appellants do not provide separate arguments with respect to the
rejection of claims 1 through 4, 8, and 9. Therefore, we select claim 1 as
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being representative of the grouping of claims. Consequently, claims 2
through 4, 8 and 9 fall together with representative claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).

35 U.S.C. § 103
Appellants argue that neither Kung, nor Dickey, nor APA cures the
above argued deficiencies of Delo. Therefore, the combination of Delo with
any of the cited references does not render dependent claims 5 through 7
unpatentable. (App. Br. 7-8.) As detailed in our discussion of independent
claim 1 above, we find no such deficiencies in Delo for the cited references
to cure. It therefore follows that Appellants have failed to show that the
Examiner erred in concluding that the combination of Delo with the cited
references renders claims 5 through 7 unpatentable.

CONCLUSIONS OF LAW
(1) Appellants have not shown that the Examiner erred in finding
that Delo anticipates claims 1 through 4, 8, and 9 under 35 U.S.C. § 102(e).
(2) Appellants have not shown that the Examiner erred in
concluding that the combination of Delo and Kung renders claim 5
unpatentable under 35 U.S.C. § 103(a).
(3) Appellants have not shown that the Examiner erred in
concluding that the combination of Delo, Kung, and Dickey renders claim 6
unpatentable under 35 U.S.C. § 103(a).
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(4) Appellants have not shown that the Examiner erred in
concluding that the combination of Delo and APA renders claim 7
unpatentable under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1 through 9.

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

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HEWLETT PACKARD COMPANY
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INTELLECTUAL PROPERTY ADMINISTRATION
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