Ex Parte Ziegler et al

Board of Patent Appeals and Interferences

Feb 19, 2010

10766984 (B.P.A.I. Feb. 19, 2010)

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

Ex parte JEREMY A. ZIEGLER and BRUCE A. ZABAVA
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Appeal 2009-004222
Application 10/766,984
Technology Center 2100
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Decided: February 19, 2010
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Before JAMES D. THOMAS, JOSEPH L. DIXON, and JAY P. LUCAS,
Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004222
Application 10/766,984

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I. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 10-18. Appellants have cancelled claims 1-9, 19, and 20.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

II. INVENTION
Appellants’ invention is best described in this manner:
Claim 10 recites a method that updates an operating system
without running the operating system. The source file of the
operating system is removed (Figure 2, element 40), the update
file is extracted from the operating system update (Figure 2,
element 42), the update file is written over the corresponding
operating system file (Figure 2, element 44), the operating
system is booted (Figure 2, element 48) and the update is
registered (Figure 2, element 50; page 6, line 29-page 7, line
15).

(App. Br. 2).

III. REPRESENTATIVE CLAIM
10. A method for creating an operating system image, the
image having integrated updates, the method comprising:
removing the source file of the operating system;
extracting an update file from an operating system
update;
writing the update file over a corresponding operating
system file;
booting the operating system; and
registering the update with the operating system.

Appeal 2009-004222
Application 10/766,984

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IV. PRIOR ART AND EXAMINER’S REJECTIONS
The Examiner relies on the following references as evidence of
anticipation and unpatentability:

Murray 7,000,230 B1 Feb. 14, 2006
(filed Jun. 21,2000)
Goodman 7,146,640 B2 Dec. 5, 2006
(filed Sep. 5, 2003)

Claims 10, 11, 13, and 15-18 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Goodman. In a first stated rejection under 35 U.S.C.
§103, the Examiner relies upon Goodman alone as to claim 14. Lastly, in
the second rejection under 35 U.S.C. §103 as to claim 12, the Examiner
relies upon Goodman in view of Murray.1

V. CLAIM GROUPINGS
Based upon Appellants arguments in the principal Brief on appeal, we
will decide this appeal on the basis of independent claim 10. This claim is
representative of all claims on appeal and no arguments are presented in the
principal brief on appeal regarding the first and second stated rejections
under 35 U.S.C. §103. No dependent claims are argued.

1 The bottom of page 2 of the Answer correctly indicates that because
claims 1-9, 19, and 20 have been cancelled, the corresponding rejections of
them have been rendered moot. As such, they are not treated in this opinion.
Appeal 2009-004222
Application 10/766,984

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VI. ISSUE
Have Appellants shown that the Examiner erred in finding that
Goodman teaches the feature of “extracting an update file from an operating
system update,” as recited in representative independent claim 10 on appeal?

VII. FINDING OF FACT
With respect to the showing in disclosed Figure 2, the paragraph
bridging pages 6 and 7 of the Specification as filed indicates “at step 42, the
update is packaged with a file and directory structure that replaces operating
system files with corresponding updated files extracted from one or more
operating system updates.”

VIII. PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

Appeal 2009-004222
Application 10/766,984

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IX. ANALYSIS
The brief arguments presented at page 3 of the principal Brief on
appeal do not contest what the Examiner has correlated to the features
recited in representative independent claim 10 on appeal except the clause
we reproduced in our issue statement earlier in this opinion. The Examiner
has provided extensive details of all features recited in independent claim 10
on appeal at pages 3 and 4 of the Answer, which are significantly expanded
upon in the Examiner’s responsive arguments beginning at page 7 through
the end of the Answer.
Essentially, it appears to us what the Examiner is saying in these
comprehensive positions is that Goodman teaches copying an operating
system and all its included update files to provide an additional operating
system. Moreover, the Examiner has isolated certain teachings in Goodman
that indicate the capability of copying, loading, or otherwise updating
different/all types of files. These functionalities are consistent with our
Finding of Fact indicating that the argued feature of “extracting” simply
amounts to a copying, updating, replacing functionality.
Additionally, the Examiner has gone further to indicate that the user in
Goodman may select certain copying or duplicating functions, thus, in a
different sense, indicating teachings that correlate to the “extracting”
functionality as argued. Claim 10 does not exclude the Examiner’s
interpretations of the reference, nor does this claim exclude the user
interaction or selectability feature. Essentially, the reference to Goodman
teaches more than what is claimed and does so in a very comprehensive
manner.
Appeal 2009-004222
Application 10/766,984

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Therefore, we find that the actual teachings relied upon by the
Examiner in Goodman indicate to one of ordinary skill in the art that the
claimed extraction function, even though disclosed in Goodman in different
words than as claimed, is anticipated by this reference notwithstanding that
the subject matter is argued not to be present in Goodman. It appears to us
that page 3 of the principal Brief and page 1 of the Reply Brief take the
position that there is no explicit or ipsis verbis teaching in Goodman that
directly, on a one to one basis, corresponds with the actual wording of the
claim. Even if we were to agree with this position, the evidence the
Examiner has provided in Goodman and the corresponding arguments
associated with the Examiner’s positions indicate that the comprehensive
teachings of Goodman include the claimed feature of extracting update
information as well as any selectable file information from an operating
system, including update files that may exist there.
The middle of page three of the principal Brief makes note as to what
Goodman teaches at column 2, lines 64-66. What Goodman actually teaches
here is “because the present invention’s inventive software technology is not
database driven it does not require malicious code definition updates.” What
a person of ordinary skill in the art would appreciate is that if these updates,
and any “updates” are present in an original operating system, they would be
copied or otherwise duplicated and extracted from the original operating
system as argued by the Examiner. By its broad, inclusive terms, Claim 10
includes all “updates.”

Appeal 2009-004222
Application 10/766,984

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X. CONCLUSION AND DECISION
Appellants have not shown that the Examiner erred in finding that
Goodman teaches “extracting an update file from an operating system
update,” as recited in representative independent claim 10 on appeal. All
claims on appeal are unpatentable.

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) (2009).

AFFIRMED

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