Ex Parte Shapiro

Board of Patent Appeals and Interferences

Apr 26, 2012

11428369 (B.P.A.I. Apr. 26, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/428,369 06/30/2006 Alan Joshua Shapiro 5056.001US4 3897
40064 7590 04/27/2012
LEMAIRE PATENT LAW FIRM, P.L.L.C.
P.O. BOX 1818
BURNSVILLE, MN 55337
EXAMINER
DAO, THUY CHAN
ART UNIT PAPER NUMBER
2192
MAIL DATE DELIVERY MODE
04/27/2012 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 2009-015337
Application 11/428,369
Technology Center 2100
____________________

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

HAHN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant invokes our review under 35 U.S.C. § 134(a) from
rejections of claims 1-3, 5-7, 11-15, 21, and 23-39. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
Introduction
Appellant claims apparatuses and methods for electronically 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). Claim 1 is illustrative:
1. A computer-implemented method for distributing ready-to-
use soft assets in an end-user device, the method comprising:
producing a prewritten superset of ready-to-use, pre-loaded, but
obscured soft assets on an intransient signal carrier, wherein the
prewritten superset includes a plurality of pre-loaded soft assets that
include a plurality of software packages that have each been installed
so as to be integrated with an operating system and so as to have a
registry entry in a registry file of the operating system, but are in an
obscured state;
subsequently displaying a set of choices of the pre-loaded soft
assets from which a customized first subset of the installed soft assets
that are to be retained are chosen, and wherein the set of choices from
which a customer can arbitrarily choose includes substantially all
those pre-loaded soft assets that are contained in the superset of
prewritten pre-loaded soft assets already on the intransient signal
carrier;
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subsequently receiving selection data provided by the customer
that distinguishes the first subset of the pre-loaded soft assets that are
to be retained from a second subset of the pre-loaded soft assets that
are not to be retained; and
automatically modifying the intransient signal carrier based on
the selection data, wherein the modifying includes:
automatically culling the second subset such that erased space is
available in place of the second subset of installed soft assets that are
not to be retained and modifying the registry such that registry entries
for each of a plurality of software packages in the second subset are
deleted, and
unobscuring the first subset of soft assets that are to be retained
so the first subset of soft assets are available on the intransient signal
carrier to an end user as installed and substantially ready-to-use.
Rejections
The Examiner relies upon the following prior art:1
Traxler US 2003/0046372 A1 Mar. 6, 20032
Barajas US 2005/0055688 A1 Mar. 10, 2005
Cardinell US 2006/0200656 A1 Sep. 7, 2006
Cheston US 7,143,067 B1 Nov. 28, 2006
Pujare US 7,330, 967 B1 Feb. 12, 2008

1 Effective filing dates for cited prior art precede Appellants’ earliest
effective filing date and are not at issue.
2 The Examiner cites Traxler and Pujare as evidence relied on in the
Response to Argument section of the Answer (Ans. 34-35).
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The Examiner, under 35 U.S.C. § 103(a), rejected:
1. Claims 1-3, 5-7, 11-15, 23-36, 38, and 39 as unpatentable over
Cheston and Admitted Prior Art (Spec. ¶¶ 0034.3, 0034.4,
00147, and 00149 (hereafter “APA”))3 (Ans. 3-15);
2. Claims 1-3, 5-7, 11-15, and 23-36 as unpatentable over Barajas,
Cheston, and APA (Ans. 15-28); and
3. Claim 37 as unpatentable over Cheston, APA, and Cardinell
(Ans. 28-29).
Issues
1. Has the Examiner erred under 35 U.S.C. § 103(a) by concluding that
Cheston and APA alone or in combination teach or suggest producing
a plurality of software packages, i.e., soft assets, that are “installed” so
as to be integrated with an operating system and so as to have a
registry entry in a registry file of the operating system, but are in an
“obscured state” as recited in claims 1, 23, and 39? (App. Br. 22.)
2. Has the Examiner erred under 35 U.S.C. § 103(a) by concluding that
Barajas, Cheston, and APA alone or in combination teach or suggest
producing pre-loaded installed obscured software packages with

3 Appellant requests re-labeling of APA by deleting “Admitted” (App. Br.
23; Reply Br. 9-10). The Specification concedes the referenced subject
matter is prior art. Consistent with long-standing practice the Examiner
labeled these acknowledgments “Admitted Prior Art.” See In re Nomiya,
509 F.2d 566, 571 (Fed. Cir. 1975). Appellant’s request is denied.
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registry entries that are automatically cullable to unobscure selected
assets as recited in claims 1 and 23? (App. Br. 22.)
3. Has the Examiner erred under 35 U.S.C. § 103(a) by concluding that
Cheston, APA, and Cardinell alone or in combination teach or suggest
the claim 37 recited intransient signal carrier including a first data
structure having a registry in a location other than a location used by
an operating system as a registry? (App. Br. 37.)
PRINCIPLES OF LAW
Examined claim terms are given their broadest reasonable meaning
utilizing ordinary usage as such claim terms would be understood by one
skilled in the art by way of definitions and the written description. In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
The claims, of course, do not stand alone. Rather, they are part
of a ‘fully integrated written instrument’ . . . consisting
principally of a specification that concludes with the claims. For
that reason, claims ‘must be read in view of the specification, of
which they are a part.’ . . . . [T]he specification ‘is always highly
relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a
disputed term.’

Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005).

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ANALYSIS
Appellant’s arguments and cited evidence, including the Declarations
filed Jan. 18, 2007 (hereafter “Declaration I” or “Decl. I”) and June 1, 2007
(hereafter “Declaration II” or “Decl. II”), have been carefully considered to
the end of according them every consideration to which they are entitled
under the law.
Rejection over Cheston and APA
Appellant asserts the patentability of independent claim 1 (App. Br.
25-27) and relies by reference on the same arguments for asserting the
patentability of independent claims 23 and 39.
Appellant’s patentability contention is directed to the claim 1
recitation for
‘a plurality of software packages that have each been installed [as
‘installed’ is understood by those of ordinary skill in the art] so as to
be integrated with an operating system and so as to have a registry
entry in a registry file of the operating system, but are in an obscured
state’

(App. Br. 25). Appellant asserts that this disputed limitation is not taught or
suggested in Cheston and/or the APA (id.).
The Examiner identifies findings with mappings to Cheston
disclosures for the claim 1 covered “producing a prewritten superset of
ready-to-use, pre-loaded, but obscured soft assets on an intransient signal
carrier, wherein the prewritten superset includes a plurality of pre-loaded
soft assets in an obscured state” (Ans. 3 (emphasis omitted)). The Examiner
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further finds the APA discloses the claim 1 covered “plurality of software
packages that have each been installed so as to be integrated with an
operating system . . . [and] to have a registry entry in a registry file of the
operating system” (Ans. 4-5 (emphasis omitted)).
Appellant argues that Cheston “do[es] not truly install (as ‘install’ is
understood by a person of ordinary skill in the art upon review of the present
application) until after the user has selected their software” (App. Br. 25).
The Examiner disagrees, and identifies findings from Cheston disclosures
(Ans. 32-33). Appellant responds with an extensive reproduction from
Declaration II (Reply Br. 11-13; see Decl. II 3-7).
Appellant’s Declarant, Mr. Wilson, testifies in Declaration II that
“[s]ometimes people take [install] to mean just copying a file to a system”
(Decl. II 2). Declarant further testifies that
the meaning of ‘install’ is that you take an MSI [Microsoft System
Installer] file (or other setup file) and run it under the control of the
hosting operating system, which reads it, processes it and makes the
required changes to its system registry, files and so on, in order to
INSTALL the software

(Reply Br. 12; Decl. II 5).

Declarant’s opinion as to the meaning of “install” and Appellant’s
reliance on that testimony are not persuasive because Declarant nowhere
testifies as to what the term would mean to an ordinarily skilled artisan,
which is required for construing claim terms. See Morris, 127 F.3d at 1054.
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Further, Appellant acknowledges Declarant is an “expert” (Reply Br. 11)
and not an ordinarily skilled artisan.
In view of this record, construing the term requires it be given its
broadest reasonable meaning utilizing ordinary usage in light of the
Specification. Turning to the Specification, we do not find “install” defined,
but do find the term described as including copying files (Spec. ¶¶ 00214-
15; see Ans. 40). Appellant argues these Specification disclosures are
distinguished from installation by stressing that copying is merely disclosed
as being included for installing and is itself not installing (Reply Br. 23).
The argument is found unavailing in context with Cheston since the
Examiner identifies that Cheston, which Appellant contends just copies
software until a user selects software (App. Br. 25), teaches integrating
software with an operating system and thus installs software (Ans. 32-33;
see also Cheston col. 6, l. 53 - col. 7, l. 53, Fig. 4). Appellant, in response,
does not dispute that Cheston teaches installing software, but contends the
Examiner erred in not considering claim 1 as a whole (Reply Br. 15-16) with
its recited method for installing software followed by subsequent customer
selection of soft assets. Appellant contends Cheston is deficient because it
does not disclose installing software until after a user selects the software to
be installed (Reply Br. 16). We disagree because we find Cheston’s Fig. 4
and supporting written disclosures (e.g., col. 7, ll. 47-53) teach installing
software (blocks 150-152) prior to selection of software (block 160).
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The Examiner also finds that the claim 1 recited obscuring software
reads on Cheston’s disclosures for software compression/encryption (Ans. 3;
see Cheston col. 6, l. 67 – col. 7, l. 4, Fig. 4 (block 152)). Appellant does
not dispute that Cheston teaches software compression/encryption, but
argues “installed” software cannot be encrypted/decrypted (App. Br. 25-26).
As addressed supra, we conclude the claimed “installed” software reads on
Cheston. We construe the further claimed “installed” software being in an
“obscured state” in light of the Specification that discloses “data-encryption
[being] . . . used to obscure and prevent access to . . . soft assets” (Spec. ¶
0048; see App. Br. 5). Accordingly, based on the record and our findings
that both Cheston and Appellant’s Specification disclose installing software
and encryption/decryption of the software, we agree with the Examiner.
For the foregoing reasons, we will sustain the rejection of independent
claims 1, 23, and 39, and will also sustain the rejection of their respective
dependent claims 2, 3, 5-7, 11-15, 24-36, and 38 that are not separately
argued.
Rejection over Barajas, Cheston, and APA
Appellant’s pivotal patentability contention is directed to subject
matter similarly recited in independent claims 1 and 23 for producing
preloaded “installed obscured software packages . . .” (App. Br. 28). The
Examiner correspondingly finds “Barajas discloses a plurality of software
packages that have each been installed so as to be integrated with an
operating system (e.g., [008], [011], [023], [028])” (Ans. 17 (emphasis
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omitted)). Further, the Examiner finds Cheston discloses “obscured soft
assets (e.g., FIG. 4, block 152-158, col. 7: 35-53)” (Ans. 16-17 (emphasis
omitted)).
Appellant on the whole contends that Barajas copies without installing
software (App. Br. 27-29). The Examiner disagrees and relies on
reproduced Barajas ¶¶ 0011, 0023, and 0028, which in part disclose that a
created “image can be installed onto a target system 120 . . .” (Barajas ¶
0028; Ans. 38). Appellant relies on Mr. Wilson’s Declarations to continue
contesting that Barajas fails to teach installing software (Reply Br. 20-21).
Reviewing this record, we find Mr. Wilson testifies that an “image . . .
[is] information . . . treated as data by an outside program” (Decl. II 1). We
also find Barajas teaches creating “an image for installation” (¶ 0011
(emphasis added)), which is consistent with Declaration II, i.e, an image is
data and not installed software. Consequently, we find Barajas does not
teach software installation as claimed, and the Examiner erred.
For the foregoing reason, this rejection as identified by the Examiner
will not be sustained for claims 1 and 23, and also will not be sustained for
their dependent claims 2, 3, 5-7, 11-15, and 24-36. As addressed supra,
Cheston teaches or suggests the here disputed subject matter and is so relied
on for the previous rejection of all these claims that we will sustain.
Rejection over Cheston, APA, and Cardinell
Appellant in particular contends that Cardinell fails to teach or suggest
the claim 37 recited first data structure including a registry in a location
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other than a location used by an operating system as a registry (App. Br. 29).
The Examiner responds by identifying that the Appellant acknowledged
Cardinell teaches two registries – a primary Registry and a Registry Copy
(Ans. 41). Appellant concurs that Cardinell teaches using two operating
system registries stored at different locations (Reply Br. 24), but contends
the two Cardinell registries are not read on by claim 37 (id.). Appellant
spells out that claim 37 recites “‘[a] first data structure includes the registry
in a location other than a location used by the operating system as a
registry’” (id.). And the Appellant literally argues that the Cardinell
“Registry Copy IS used by the operating system as a registry (i.e., the
Registry Copy does not have to be, and is not, moved to the location of the
primary Registry before the operating system can, and does, use it as a
backup)” (id.).
We find Appellant’s argument unavailing because we agree with the
Examiner that Cardinell’s Registry Copy is stored in different location from
the primary Registry that is used by the operating system (Ans. 41; see
Cardinell ¶¶ 0045-47). As a result, we find the subject claimed limitation
reads on Cardinall, i.e., Cardinell’s data structure includes a registry
(Registry Copy) in a location other than a location used by the operating
system as a registry (primary Registry).
For the foregoing reason, we will sustain the rejection of claim 37.
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CONCLUSIONS
The Examiner did not err in rejecting:
1. Claims 1-3, 5-7, 11-15, 23-36, 38, and 39 as being obvious over
Cheston and APA; and
2. Claim 37 as being obvious over Cheston, APA, and Cardinell.
The Examiner erred in rejecting claims 1-3, 5-7, 11-15, and 23-36 as
being obvious over Barajas, Cheston, and APA.
ORDER
The Examiner’s decision rejecting claims 1-3, 5-7, 11-15, and 23-39
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)(1)(iv).

AFFIRMED

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