Ex Parte Saenz et al

Patent Trial and Appeal Board

Sep 20, 2018

14620065 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/620,065 02/11/2015 Mariano Saenz
51444 7590 09/24/2018
Kraguljac Law Group/Oracle
4700 Rockside Road
Summit One, Suite 510
Independence, OH 44131
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
ORA180023 (NS-107) 4678
EXAMINER
CHEN,QING
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
09/24/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
MPusti@KragLaw.com
PTOMail@KragLaw.com
DDay@KragLaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIANO SAENZ, RAJESH MANJREKAR,
and SUHAS ROHIR MEHTA 1
Appeal2018-000045
Application 14/620,065
Technology Center 2100
Before CAROLYN D. THOMAS, IRVINE. BRANCH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Non-Final Rejection of claims 1-21, all the pending claims in
the present application. (see Claims Appendix). We have jurisdiction over
the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
The present invention relates generally to automatically regenerating
an application installer (see Spec., Abstract).
1 Appellants name Netsuite, Inc. as the real party in interest (App. Br. 4).
Appeal2018-000045
Application 14/620,065
Claim 1 is illustrative:
1. A method for automatically regenerating an application
installer, the method comprising the steps of:
installing an application in a computing environment;
collecting information for objects related to the
application installed in the computing environment;
creating an installer map listing objects linked to the
installed application in response to collecting the information;
adding a copy of the linked objects to an application
installer package for the installed application;
creating, using a computer processor, a regenerated
application installer based on the application installer package for the
installed application; and
storing the regenerated application installer in a computer
memory associated with the computer processor.
Appellants appeal the following rejections:
RI. Claims 1, 6-8, 13-15, 20, and 21 are rejected under 35 U.S.C.
§ I03(a) as being unpatentable over McMahan (US 2007/0074202 Al, Mar.
29, 2007) and Morgenstern (US 8,365,164 Bl, Jan. 29, 2013) (Non-Final
Act. 3-9); and
R2. Claims 2-5, 9-12, and 16-19 are rejected under 35 U.S.C.
§ I03(a) as being unpatentable over McMahan, Morgenstern, and Schibuk
(US 2011/0246765 Al, Oct. 6, 2011) (Non-Final Act. 9-13).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
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Appeal2018-000045
Application 14/620,065
ANALYSIS
Issue: Did the Examiner err in finding that McMahan and
Morgenstern collectively teaches or suggests the argued limitations?
Appellants contend that "the method and system of McMahan et al.
cannot possible be construed to teach collecting information for objects ...
or creating an installer map listing objects linked to the installed application
... Therefore, McMahan et al. simply cannot be construed to teach 'adding
a copy of the linked objects ... to an application installer package" (App.
Br. 16). Appellants further contend that "Morgenstern et al. does not
remedy this deficient teaching because Morgenstern et al. does not teach
actually 'installing the application in the computing environment"' (App. Br.
16). We disagree with Appellants.
We refer to, rely on, and adopt the Examiner's findings and
conclusions set forth in the Non-Final Action and Answer. Our discussions
here will be limited to the following points of emphasis.
For starters, the Examiner correctly points out that "one cannot show
non-obviousness by attacking references individually where the rejections
are based on combination of references" (Ans. 14). Specifically, Appellants'
argument against McMahan separately from Morgenstern does not
persuasively rebut the combination made by the Examiner. One cannot
show non-obviousness by attacking references individually, where the
rejections are based on combinations of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425-26
(CCPA 1981).
For example, the Examiner finds that Morgenstern, not McMahan,
teaches "collecting information for objects related to the application installed
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Appeal2018-000045
Application 14/620,065
in the computing environment" and "creating an installer map listing objects
linked to the installed application in response to collecting the information"
(Non-Final Act. 5---6). Appellants fail to rebut these specific findings in
Morgenstern. Instead, Appellants improperly argue that McMahan cannot
be construed to teach such features (see App. Br. 16) when the Examiner is
not relying on McMahan, and fail to present arguments that rebut what the
collective teachings of the prior art would have suggested to one of ordinary
skill in the art. Thus, Appellants' arguments regarding McMahan are
ineffective to rebut the Examiner's prima facie case of obviousness. See In
re Keller, 642 F.2d at 425 ("The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.") ( citations omitted). This reasoning is
applicable here.
Furthermore, the Examiner finds that McMahan teaches "adding a
copy of linked objects to an application installer package for an installed
application" (Non-Final Act. 3 (citing McMahan ,r 41)). Appellants fail to
rebut this specific paragraph of McMahan, but merely contend that because
McMahan does teach collecting information for objects and creating an
installer map listing objects, consequently McMahan cannot teach adding
the copy of linked objects feature. We find that such an argument again fails
to address what the combined teachings of the references would have
suggested to those of ordinary skill in the art. Furthermore, the Examiner
finds that "McMahan [broadly] discloses that [a] custom installation medium
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Appeal2018-000045
Application 14/620,065
can be configured to only include installation program for the selected
features of the installed program product ... [hence] objects [are] 'linked' to
the installed program product" (Ans. 15). Appellants fail to rebut this
specific finding from the Examiner. Arguments not made are waived. See
37 C.F.R. § 4I.37(c)(l)(vii). Cf In re Baxter Travenol Labs., 952 F.2d 388,
391 (Fed. Cir. 1991) ("It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.")
As for Appellants' arguments that "Morgenstern et al. does not teach
actually 'installing the application in the computing environment"' (App. Br.
16), the Examiner directs our attention to col. 15, lines 47-50 of
Morgenstern (see Ans. 16). Specifically, Morgenstern discloses that
"[a]pplication transferor 110 is used to transfer applications installed on one
computer, such as old computer 102, to a second computer, such as new
computer 104" (15:47-50). We find that the aforementioned disclosure in
Morgenstern teaches "installing an application in a computing
environment," particularly in the new computer.
Accordingly, we sustain the Examiner's rejection of claim 1.
Appellants' arguments regarding the Examiner's rejection of independent
claims 8 and 15 rely on the same arguments as for claim 1, and Appellants
do not argue separate patentability for the dependent claims. We, therefore,
also sustain the Examiner's rejection of claims 2-21.
DECISION
We affirm the Examiner's§ I03(a) rejections RI and R2 of claims
1-21.
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Appeal2018-000045
Application 14/620,065
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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