Ex Parte Shapiro

Board of Patent Appeals and Interferences

Apr 27, 2012

11428376 (B.P.A.I. Apr. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/428,376 06/30/2006 Alan Joshua Shapiro 5056.001US6 3905
40064 7590 04/30/2012
LEMAIRE PATENT LAW FIRM, P.L.L.C.
P.O. BOX 1818
BURNSVILLE, MN 55337
EXAMINER
VU, TUAN A
ART UNIT PAPER NUMBER
2193
MAIL DATE DELIVERY MODE
04/30/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ALAN JOSHUA SHAPIRO
____________________

Appeal 2010-002073
Application 11/428,376
Technology Center 2100
____________________

Before MURRIEL E. CRAWFORD, MARC S. HOFF, and
THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant invokes our review under 35 U.S.C. § 134(a) from final
rejections of claims 1, 2, and 6-29 (Final Action 2-21). We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part.

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Application 11/428,376

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STATEMENT OF CASE
Introduction
Appellant claims a method and electronic apparatuses for storing a
plurality of soft assets (e.g., programs, songs, videos) and selecting assets
from the stored plurality. Non-selected assets are erased to provide a
custom-selected set of stored assets (Abstract). The below reproduced claim
1 is exemplary of the claims on appeal:

1. A programmed method for installing and distributing customized
content, the method comprising:
installing a collection of initially available installed content into a
storage medium;
receiving selection data that distinguishes a user-selected portion of
the initially available content to be kept from an extraneous portion of
the initially available content to be removed;
coupling the storage medium having the initially installed content to a
dispensing computer;
removing the extraneous portion using the dispensing computer based
on the received selection data; and
after the removing of the extraneous content, operatively coupling the
storage medium with an end-user device for a first time.

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Rejections
The Examiner cites the following prior art:
1

Fisher US 6,247,128 B1 June 12, 2001
Burkhardt US 2003/0037326 A1 Feb. 20, 2003
Kroening US 2003/0158926 A1 Aug. 21, 2003
Murray US 6,874,143 B1 Mar. 29, 2005
Ohbitsu US 2005/0222916 A1 Oct. 6, 2005
Kelso US 2007/0028231 A1 Feb. 1, 2007
A. The Examiner under the judicially created doctrine of obviousness-
type double patenting provisionally rejected claims 1 and 19 as
being unpatentable over claims of:
1. Co-pending Application No. 11/428,374 (docketed Appeal No.
2009-014878) (Final Action 2-3);
2. Co-pending Application No. 11/428,352 (docketed Appeal No.
2009-012842 (Final Action 3-4);
3. Prior co-pending Application No. 11/428,359 (now issued US
7,712,094) (Final Action 4-5); and
4. Co-pending Application No. 11/428,369 (docketed Appeal No.
2009-015337) (Final Action 5-6).
2

1
Effective filing dates for cited prior art precede Appellants‟ earliest
effective filing date and are not at issue.
2
These provisional rejections are not contested (App. Br. 1-2). As
addressed infra, claims 1 and 19 are also rejected under § 103(a) and that
rejection will not be sustained. Accordingly, the provisional rejection
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B. The Examiner, under 35 U.S.C. § 103(a), rejected:
1. Claims 1, 2, 6-10, 12-16, 19-21, and 24-26 as unpatentable over
Burkhardt and Kroening (Final Action 6-14);
2. Claim 11 as unpatentable over Burkhardt, Kroening, and Kelso
(Final Action 14-15);
3. Claims 17, 22, and 23 as unpatentable over Burkhardt,
Kroening, Fisher (Final Action 15-17);
4. Claim18 as unpatentable over Burkhardt, Kroening, and Murray
(Final Action 18); and
5. Claims 27-29 as unpatentable over Burkhardt, Kroening, and
Ohbitsu (Final Action 19-21).
Issues
Appellant‟s contentions raise the following pivotal issues:
1. Did the Examiner err in rejecting claim 1 under § 103(a)
because Burkhardt and Kroening alone or in combination do
not teach or suggest coupling a storage medium storing initially
available installed content to a dispensing computer that
removes user non-selected portions of the content from the
storage medium? App. Br. 20.
2. Did the Examiner err in rejecting claim 27 under § 103(a)
because Burkhardt, Kroening, and Ohbitsu alone or in

arising from US 7,712,094 will be sustained and the others will not be
sustained as to do so would be premature at this time.
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combination do not teach or suggest the recited “means for
modifying the means for storing [soft assets] to prevent access
to soft assets that are non-selected and keep selected soft
assets”? App. Br. 24.

ANALYSIS
Rejection over Burkhardt and Kroening
Appellant separately argues the patentability of claim 1 (App. Br. 19-
23) from the rejected claims 1, 2, 6-10, 12-16, 19-21, and 24-26. Appellant
asserts these arguments by reference for all of independent “claims 1, 19, 24,
and 27” (App. Br. 21; Reply Br. 4).
3

Disputed method claim 1 limitations read: “coupling [a] storage
medium having . . . initially installed content to a dispensing computer; [and]
removing the extraneous [non-selected] portion using the dispensing
computer” (see App. Br. 20). The Examiner finds that Burkhardt describes
these limitations with disclosures for “coupling the storage medium having
the initially installed content to a[n] OEM computer (e.g. Fig.2)” (Ans. 7).
The Examiner then identifies that “Burkhardt does not explicitly disclose
that the OEM computer . . . is a dispensing computer” (Ans. 8). The
Examiner proceeds to find that the Burkhardt OEM computer functions to

3
Though listed in the Appeal Brief, claim 27 is not included in this
rejection. The rejection of claim 27 that also includes claims 28 and 29 is
addressed infra.

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“perform dispensing of unwanted assets, prior to . . . having . . . [the]
medium . . . integrated to target computers (see system image copied to the
target computer – ¶ 0033, pg. 4) for a proposed buyer” (id.). Relying on
generally identifying a “master host system as taught in Kroening” (Ans. 8),
the Examiner concludes that it would have been obvious to implement the
Burkhardt OEM factory “target computer,” i.e., an end-user computer, as
serving as an “ordained . . . „dispensing computer‟ . . .” (Ans. 8-9).
Appellant contends that the Examiner erred because the references fail
to teach or suggest coupling a storage medium to a dispensing computer that
can remove non-selected content from the storage medium (App. Br. 20;
Reply Br. 4) prior to coupling the storage medium to an end-user computer
as claimed.
Reviewing Burkhardt, we find that it teaches using a “reference
image” to install programs on a destination computer, i.e., an end-user
computer (Abstract). We further find that Kroening teaches storing a
created drive image in a storage assembly and downloading via a network
the created drive image to a hard disk drive (Abstract). Consequently, it
nowhere appears that alone or in combination these references teach or
suggest using a dispensing computer to remove non-selected content from a
storage medium that is to be coupled to an end-user computer. Appellant‟s
contention that the Examiner erred is persuasive.
Accordingly, we will not sustain the obviousness rejection of claim 1
nor will we sustain the related rejected dependent claims 2, 6-10, and 12-16.
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Appellant asserts the arguments submitted for claim 1 as also
showing claim 19 to be patentable (App. Br. 21; Reply Br. 4). Based on our
review of the record, Appellant‟s contentions that claims 1 and 19 cover
similar disputed limitations and the Examiner erred in the obviousness
rejection of these limitations are persuasive.
Accordingly, we will not sustain the obviousness rejection of claim 19
nor will we sustain the related rejected dependent claims 20 and 21.
Appellant contends the arguments submitted for claim 1 also show
claim 24 to be patentable (App. Br. 21; Reply Br. 4). Claim 24 reads:
An apparatus comprising: a functional container that includes:
a storage medium that stores, reads and writes soft assets;
a communications interface operable to couple the storage medium to
a processor in an information-processing appliance and handling
signals to and from the processor; and
a superset collection of individually accessible, installed soft assets,
wherein the functional container, prior to coupling to an end-user
information-processing appliance, serves as both a user-selectable
inventory and a vehicle to deliver a selected subset of the installed soft
assets to the end-user information-processing appliance and prevent
access to non-selected assets.
Appellant identifies the recited “functional container” (App. Br. 14) to read
on a “disk” (element 260 of Fig. 2C), “flash drive” (element 270 of Fig. 2D),
or an “intransient signal carrier” (element 290 of Fig. 2F). Applying plain
and customary term meanings in light of the Specification to construe claim
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24, we broadly interpret the claim to reasonably cover an apparatus that
includes a functional container having a storage medium coupled to a
processor. The functional container as claimed includes a superset of
installed soft assets, but this superset of installed soft assets is not specified
as being stored on the storage medium that is included in the functional
container. Additionally, we do not find that claim 24 reads on removing
portions of content from a storage medium by using a dispensing computer
(claim 1), or by similarly using a customizer executed on a processor (claim
19). Consequently, Appellant‟s contention premised on arguments for claim
1 is unavailing for the patentability of claim 24, because the asserted
limitations are not commensurate with the scope of claim 24.
Accordingly, we will sustain the obviousness rejection of claim 24
and also will sustain the related rejection of dependent claims 25 and 26 that
are not separately argued.
Rejection over Burkhardt, Kroening, and Ohbitsu
Appellant argues independent claim 27 (App. Br. 23-24) from rejected
claims 27-29. Appellant contends the Examiner failed to construe recited
means-plus-function limitations in-light of the Specification (App. Br. 23).
The Examiner responds that “[e]ach „means for‟ in the claims in question
has been matched with proper portions from Burkhardt, and it is the
Appellant‟s burden to point out where precisely in each of those portions is
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there a[n] improper teaching that fails to correspond to the above „means
for‟ entities” (Ans. 27).
Reviewing identified reasons for the rejection of claim 27 (Final
Action 19-20; Ans. 20-21), we find the Examiner mapped paraphrased
means-plus-function limitations to cited prior art disclosures. However, we
are unable to identify Examiner provided findings or reasoning for why prior
art taught structures identically or equivalently correspond to Specification
disclosed structures. See In re Donaldson, 16 F.3d 1189, 1193 (Fed. Cir.
1994).
Further, Appellant responds to the Examiner‟s statement that means-
plus-function limitations are matched to prior art (Ans. 27) by arguing that
“the Office has failed to provide the proper means-plus-function analysis,
[and] . . . submits that the burden remains on the Office to provide a prima
facie case of obviousness with respect to claim 27” (Reply Br. 7). We find
Appellant‟s argument persuasive.
Accordingly, we will not sustain the obviousness rejection of claim 27
nor will we sustain the related rejected dependent claims 28 and 29.
Rejections over Burkhardt, Kroening, Kelso, Fisher, and Murray
Appellant asserts that claims 11, 17, 18, 22, and 23 are patentable
because their respective independent base claims 1 and 19 are patentable
(App. Br. 24-27) for reasons addressed supra. As identified supra, the
rejection of both independent claims 1 and 19 is found to be in error.
Further, from our review of the record, it is not found that Kelso, Fischer, or
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Murray overcome the identified Burkhardt and Kroening deficiencies.
Accordingly, we will not sustain the obviousness rejections of dependent
claims 11, 17, 18, 22, and 23.

CONCLUSIONS
1. The Examiner did not err under § 103(a) in rejecting claims 24-
26 as being unpatentable over Burkhardt and Kroening.
2. The Examiner erred under § 103(a) in rejecting:
a. Claims 1, 2, 6-10, 12-16, and 19-21 as being unpatentable
over Burkhardt and Kroening;
b. Claims 27-29 as being unpatentable over Burkhardt,
Kroening, and Ohbitsu;
c. Claim 11 as being unpatentable over Burkhardt, Kroening,
and Kelso;
d. Claims 17, 22, and 23 as being unpatentable over Burkhardt,
Kroening, and Fisher; and
e. Claim 18 as being unpatentable over Burkhardt, Kroening,
and Murray.
3. The Examiner‟s decision rejecting claims 1 and 19 under the
judicially created doctrine of obviousness-type double patenting
over US 7,712,094 will be sustained, and the other
obviousness-type double patenting rejections of claims 1 and 19
will not be sustained.
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ORDER
The Examiner‟s decision rejecting claims 1, 19, and 24-26 is affirmed.
The Examiner‟s decision rejecting claims 2, 6-18, 20-23, and 27-29 is
reversed.
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)(v).

AFFIRMED-IN-PART

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