Ex Parte Shoobe

Board of Patent Appeals and Interferences

Nov 20, 2008

10407703 (B.P.A.I. Nov. 20, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HOWARD A. SHOOBE
____________

Appeal 2008-2007
Application 10/407,703
Technology Center 2100
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Decided: November 20, 2008
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Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III,
and STEPHEN C. SIU, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2008-2007
Application 10/407,703

THE INVENTION
The disclosed invention relates generally to the manufacture of
information handling systems. More particularly, the present invention
relates to a system and method for transition from existing to succeeding
configurations of manufactured information handling systems. (Spec. p. 1,
ll. 7-10).
Independent claim 1 is illustrative:
1. A system for managing information handling system
configuration transitions, the system comprising:

a processing component relationship table associating
information handling system processing components according
to one or more transition factors;

a customer information handling system configuration
database storing customer information handling system
configurations, each customer information handling system
configuration comprising physical processing components to
build an information handling system; and

an automatic configuration transition engine interfaced
with the processing component relationship table and customer
information handling system configuration database, the
automatic configuration transition engine operable to
automatically apply the transition factors to a selected customer
information handling system configuration to determine a
transition configuration associated with the selected customer
information handling system.

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Application 10/407,703

THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the rejection:
Thompson US 6,535,975 B1 Mar. 18, 2003
(filed Oct. 13, 1999)
Fichtner US 6,360,362 B1 Mar. 19, 2002
(filed Feb. 20, 1998)
Brown US 2005/0188117 A1 Aug. 25, 2005

THE REJECTIONS
1. The Examiner rejected claims 1, 2, and 6-9 under 35 U.S.C.
§ 102(e) as being anticipated by Thompson.
2. The Examiner rejected claims 5, 10-14, 16-18, and 20 under
35 U.S.C. § 103(a) as being unpatentable over Thompson in view of
Fichtner.
3. The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a)
as being obvious over Thompson in view of Brown.
4. The Examiner rejected claims 15 and 19 under 35 U.S.C.
§ 103(a) as being obvious over Thompson in view of Fichtner and
Brown.

APPELLANT’S CONTENTIONS
1. Appellant contends that the Examiner erred in rejecting
independent claims 1, 10, and 16 because Thompson fails to teach or suggest
the element of “transition configuration.” (App. Br. 5-6).
2. Appellant contends that Thompson fails to teach replacement of a
physical component with a successor component. (App. Br. 7).
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Application 10/407,703

3. Appellant contends that the cited references fail to teach or
suggest building of an information handling system from physical
components. (Reply Br. 2).

EXAMINER’S FINDINGS
1. Thompson teaches that each of the application components
130-130n can go from one state to another. (Ans. 22).
2. Thompson teaches “transition configuration.” (Id.).
3. The feature of “replacement of a physical component with a
successor component” is not recited in claim 1. (Ans. 22).

ISSUE
1. Has Appellant shown that the Examiner erred in determining that
Thompson teaches or suggests the claimed “transition configuration?”

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 Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).
“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
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Application 10/407,703

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.)
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006). Therefore, we look to Appellant’s Briefs to show error in the
proffered prima facie case.
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Findings of Fact
The following findings of fact are supported by a preponderance of
the evidence.
Thompson
1. Thompson is directed to a configuration system for an application
having a plurality of application components. (Abst., ll. 1-2).
2. Thompson teaches a configuration information store that stores all
of the configuration information necessary for completion of all
state transitions for the components 130-130n. (Col. 8, ll. 36-39).
3. Thompson teaches that the components can go from one state to
another, e.g., from a startup state to an operational state. (Col. 5, ll.
55-58).
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Application 10/407,703

4. Appellant admits that Thompson discloses that the application 13
“‘can be any kind of component-based application or component-
based hardware/firmware system’ in which each component 130
performs a function for the application 13.” (App. Br. 7, ll. 13-15).
5. Thompson teaches that the structure of the component core varies
in accordance with the designated functions. (Col. 6, ll. 23-24)

Specification
6. Appellant maps the claimed “transition configuration” to page 6, ll.
13-18 of the Specification.
7. The Specification teaches that an automatic configuration
transition engine 18 determines a transition configuration for the
selected configuration. (Spec. 7, ll. 4-8).

ANALYSIS
Claims 1, 2, and 6-9
We consider the Examiner’s rejection of claims 1, 2, and 6-9 under
35 U.S.C. § 102(e) as being anticipated by Thompson. Because Appellant
has argued these claims as a single group, we select claim 1 as the
representative claim for this group. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant contends that Thompson fails to teach the element of
transition configuration, as recited in claim 1. We disagree for the reasons
discussed infra.

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It is our view that Thompson teaches the claimed “transition
configuration” in that the components 130-130n are transformed from one
state to another. (FF 2-3). In addition, we note that Thompson teaches that
the components can be component-based hardware/firmware, i.e., physical
components. (See FF 4).
Appellant contends that the element “transition configuration” should
be read in the context of replacing physical components. However, as noted
by Appellant, while limitations are interpreted in light of the Specification,
we cannot read the limitation of replacing components, physical or
otherwise, into claim 1 as urged by the Appellant. Furthermore, Appellant’s
Specification does not define the term “transition configuration” to be
limited to the replacement of physical components. Thus, based on the
above, we conclude that the element “transition configuration” is taught by
Thompson.
As stated above, arguments which Appellant could have made but
chose not to make in the Briefs have not been considered and are deemed to
be waived.
Based on the record before us, we conclude that the Appellant has not
shown that the Examiner erred in rejecting claim 1 and claims 2 and 6-9 that
fall therewith, as being anticipated by Thompson. Accordingly, we sustain
the Examiner’s rejections of claims 1, 2, and 6-9 as being anticipated by
Thompson.
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Application 10/407,703

Obviousness Rejections
Claims 3-5, and 10-20
Regarding the obviousness rejection of claims 10 and 16 as being
unpatentable over Thompson in view of Fichtner, Appellant merely argues
that the combination of Thompson and Fichtner fails to teach or suggest the
claimed “transition configuration.” (App. Br. 5-6). We have found that
Thompson discloses this limitation, as discussed supra. Therefore,
independent claims 10 and 16 fall with claim 1 for the same reasons
discussed above.
Regarding claims 3-5, 11-15 and 17-20, Appellant did not present
separate arguments for these claims. Therefore, Appellant has waived any
arguments directed to the separate patentability of claims 3-5, 11-15 and
17-20. See In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991). See also 37
C.F.R. § 41.37(c)(1)(vii).
Because Appellant has not shown the Examiner erred, we sustain the
Examiner’s rejections of claims 3-5, and 10-20 under 35 U.S.C. §103(a).

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude the
following:
Appellant did not show that the Examiner erred in determining that
Thompson teaches the claimed “transition configuration.”

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Application 10/407,703

Based on the findings of facts and analysis above, we conclude that
Appellant has not met his burden of showing that the Examiner erred in
rejecting claims 1, 2, and 6-9 as being anticipated by Thompson under
35 U.S.C. § 102(e).
Based on the findings of facts and analysis above, we conclude that
Appellant has not met his burden of showing that the Examiner erred in
rejecting claims 5, 10-14, 16-18 and 20 as being unpatentable over
Thompson in view of Fichtner under 35 U.S.C. § 103(a).
Based on the findings of facts and analysis above, we conclude that
Appellant has not met his burden of showing that the Examiner erred in
rejecting claims 3 and 4 as being unpatentable over Thompson in view of
Brown under 35 U.S.C. § 103(a).
Based on the findings of facts and analysis above, we conclude that
Appellant has not met his burden of showing that the Examiner erred in
rejecting claims 15 and 19 as being unpatentable over Thompson in view of
Fichtner and Brown under 35 U.S.C. § 103(a).

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Application 10/407,703

DECISION
The decision of the Examiner rejecting claims 1-20 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

pgc

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