Crowley, Richard

Patent Trials and Appeals Board

Apr 2, 2020

12213471 - (D) (P.T.A.B. Apr. 2, 2020)

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.
12/213,471 06/19/2008 Richard Crowley 29438U 2132
20529 7590 04/02/2020
NATH, GOLDBERG & MEYER
Joshua Goldberg
112 South West Street
Alexandria, VA 22314
EXAMINER
HUDA, MOHAMMED NURUL
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
USPTO@nathlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD CROWLEY
____________

Appeal 2018-007212
Application 12/213,471
Technology Center 2100
____________

Before JAMES R. HUGHES, STEVEN M. AMUNDSON, and
MICHAEL T. CYGAN, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 3–7, and 9–12, i.e., all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b). On February 25, 2020, Appellant’s
counsel presented arguments at an oral hearing.
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). Appellant identifies the real party in interest
as CebiCon GmbH. Appeal Br. 3.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the “invention relates to a process for
creating a software package which can be automatically distributed and
which is based on standard software provided to a computer.” Spec. 1.2
More specifically, the “process calls for a server that is connected to the
computer over a communication network, such as the Internet, and involves
the following steps”:
automatic transmission to the computer of packaging data
stored on the server, on the basis of the standard software
designation and at least one installation parameter, and
automatic packaging of the standard software into an
automatically distributable software package on the computer
on the basis of the packaging data transmitted by the server.
Id. at Abstract; see id. at 2.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. Process for creating an automatically executable software
package as based on a standard software that is supplied to a
computer (3), where a server (1) is connected to the computer
(3) over the Internet (2), as web portal, involving the following
steps:
working out of at least one installation parameter for the
installation of the standard software,

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed June 19, 2008; “Final Act.” for the Final Office
Action, mailed August 28, 2017; “Appeal Br.” for the Appeal Brief,
filed January 12, 2018; and “Ans.” for the Examiner’s Answer, mailed
May 17, 2018.
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automatic transmission to the computer (3) of packaging
data stored on the server (1), as based on the standard software
designation and the at least one installation parameter,
providing the standard software on the computer (3) itself
from a local source,
interrogation of the at least one installation parameter in
an inquiry dialogue which automatically takes place on the
computer (3), and
automatic packaging of the standard software as provided
on the computer (3) into software package that is automatically
executable on the computer (3), as based on the packaging data
transmitted by the server (1) and the interrogation of the at least
one installation parameter.
Appeal Br. 13 (Claims App.).
The Prior Art Supporting the Rejection on Appeal
As evidence of unpatentability under 35 U.S.C. § 103(a), the
Examiner relies on the following prior art:
The Rejection on Appeal
Claims 1, 3–7, and 9–12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Naranjo and Yamamoto. Final Act. 4–13; Ans. 3–12.
ANALYSIS
We have reviewed the § 103(a) rejection in light of Appellant’s
arguments that the Examiner erred. For the reasons explained below, we
concur with the Examiner’s conclusion concerning unpatentability under
§ 103(a). We adopt the Examiner’s findings and reasoning in the Final
Yamamoto et al.
(“Yamamoto”)
US 2007/0022420 A1 Jan. 25, 2007
Naranjo et al.
(“Naranjo”)
US 2008/0127175 A1 May 29, 2008
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Office Action and Answer. See Final Act. 4–16; Ans. 3–20. We add the
following to address and emphasize specific findings and arguments.
Claim 1: “Automatic Transmission”
and “Automatic Packaging”
As noted above, the § 103(a) rejection of claim 1 rests on Naranjo and
Yamamoto. See Final Act. 10–12; Ans. 3. Appellant argues that the
Examiner erred in rejecting claim 1 because Naranjo fails to teach claim 1’s
“automatic transmission” and “automatic packaging” limitations, i.e.,
“automatic transmission to the computer (3) of packaging data stored on the
server (1), as based on the standard software designation and the at least one
installation parameter,” and “automatic packaging of the standard software
as provided on the computer (3) into software package that is automatically
executable on the computer (3), as based on the packaging data transmitted
by the server (1) and the interrogation of the at least one installation
parameter.” See Appeal Br. 8.
In particular, Appellant contends that Naranjo teaches that “the
installation executable is combined into a single file at the server” rather
than the computer. Appeal Br. 8. Appellant also contends that Yamamoto
does not cure Naranjo’s deficiencies because Yamamoto’s software package
“is transmitted to the computer using files from the server.” Id. Further,
Appellant urges that Naranjo and Yamamoto each provide a “packaged
installation file made up from files at the server,” and thus differ from
claim 1. Id. at 9.
Appellant’s arguments do not persuade us of Examiner error for two
reasons. First, claim 1 encompasses a “packaged installation file made up
from files at the server.” See Appeal Br. 13 (Claims App.). In particular,
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claim 1 specifies that the server provides the “packaging data” to the
computer and that a local source provides the “standard software” to the
computer. Id. But claim 7 specifies that the server provides the “standard
software” to the local source. Id. at 14. So the “packaging data” and the
“standard software” may originate at the server. That both Naranjo and
Yamamoto provide a “packaged installation file made up from files at the
server” does not distinguish claim 1 from the references.
Second, Appellant’s arguments attack the references individually.
Where a rejection rests on the combined disclosures in the references, an
appellant cannot establish nonobviousness by attacking the references
individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, as explained below, the combined disclosures in Naranjo and
Yamamoto teach or suggest claim 1’s “automatic transmission” and
“automatic packaging” limitations. See Final Act. 4–8; Ans. 3–7, 14–19;
Naranjo ¶¶ 1, 8, 19–24, 36–38, code (57), Figs. 1–4; Yamamoto ¶¶ 17,
24–28, 34, 36, 38, 43, 47–48, 53, 55, 72, Fig. 5.
Specifically, Naranjo discloses a software packaging tool for creating
an installation executable. Naranjo ¶¶ 19–24, code (57), Figs. 1–3.
Naranjo’s Figure 2 is reproduced below:
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Figure 2 illustrates installation executable 206 created from installation
script 202 and program files 204. Id. ¶¶ 22–23; see id. ¶ 8.
Installation script 202 “defines a behavior for the installation package
as a list of actions to be performed in a specific order.” Naranjo ¶ 22. “In
generating the installation executable 206, the program files 204 and
installation script 202 are combined into a single file.” Id. ¶ 23.
Naranjo explains that in “a typical operation,” a server does three
things: (1) “prepare[s] an installation script for a software product”;
(2) “retrieve[s] program files associated with installing the software
product”; and (3) “combine[s] the script and the program files into a single-
file installation executable.” Naranjo ¶ 37. Distribution of the installation
executable to a user’s computer may occur “through one or more networks”
or “using portable storage media,” such as “CD-ROMs, floppy disks, [and]
flash drives.” Id.; see id. ¶¶ 1, 19, 36, 38, Fig. 4. “CD-ROMs, floppy disks,
[and] flash drives” provide a local source for the installation executable. See
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Spec. 3 (explaining that “the standard software is furnished . . . preferably
on a removable data medium such as a CD or DVD”).
Hence, Naranjo discloses automatically packaging standard software
into a software package, i.e., automatically packaging program files into an
installation executable. Naranjo ¶¶ 19–24, code (57), Figs. 1–3; see Final
Act. 4–6; Ans. 3–6, 14–19. Naranjo also discloses transmitting packaging
data to a user’s computer, i.e., transmitting an installation script in an
installation executable. Naranjo ¶¶ 36–38, Fig. 4; see Final Act. 4–6;
Ans. 3–6, 14–19.
In addition, Yamamoto discloses automatically transmitting
packaging data stored on a server to a user’s computer and automatically
packaging software at the user’s computer based on the packaging data
transmitted by the server. Yamamoto’s Figure 1 is reproduced below:

Figure 1 depicts a software package configuration system including server
100 and client 200 connected through network 30. Yamamoto ¶¶ 17, 24.
Server 100 stores a software package containing various components,
such as application programs. Yamamoto ¶¶ 25–28, 41–43, Fig. 2. Client
200 configures a software package based on “a header, data, information,
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and components” transmitted by server 100. Id. ¶ 36; see id. ¶ 34. Client
200 “acquires arrangement information in the package of information”
transmitted by server 100 and “configures a package based on the acquired
arrangement information.” Id. ¶ 38. The acquired arrangement information
includes logical data with meta-information about components and
combination information about combinations of components. Id. ¶¶ 43,
47–48, 53, 55, 72, Fig. 5.
Yamamoto’s logical data or combination information (or both)
correspond to the claimed “packaging data.” Thus, in Yamamoto server 100
stores the “packaging data” and transmits the “packaging data” to client 200.
Yamamoto ¶¶ 25–28, 34, 36, 38, 41–43, Fig. 2. Then, client 200
automatically packages software at client 200 based on the “packaging data”
transmitted by server 100. See Final Act. 7; Ans. 6, 15, 17–19; Yamamoto
¶¶ 24, 34, 36, 38, 53, 55, 72, Fig. 5.
For the reasons discussed above, the combined disclosures in Naranjo
and Yamamoto teach or suggest claim 1’s “automatic transmission” and
“automatic packaging” limitations.
Claim 1: Motivation to Combine the
Teachings of Naranjo and Yamamoto
Appellant asserts that there is no motivation or suggestion in the
references “to create the executable software package by providing the
standard software on the computer itself from a local source, interrogate an
installation parameter, and automatically package the standard software into
a software package that is automatically executable on the computer.”
Appeal Br. 9–10. Appellant similarly asserts that there is no reason that
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would have prompted an ordinarily skilled artisan to combine the teachings
of Naranjo and Yamamoto to achieve claim 1’s subject matter. Id. at 10.
An obviousness analysis should consider whether an ordinarily skilled
artisan “would have been motivated to combine or modify the teachings in
the prior art.” Regents of Univ. of Cal. v. Broad Inst., Inc., 903 F.3d 1286,
1291 (Fed. Cir. 2018); In re Stepan Co., 868 F.3d 1342, 1345–46, 1346 n.1
(Fed. Cir. 2017). The motivation to combine or modify may come “from the
prior art reference itself, from the knowledge of one of ordinary skill in the
art, or from the nature of the problem to be solved.” SIBIA Neurosciences,
Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000) (citations
omitted).
Here, the Examiner determines that the motivation to combine comes
from Yamamoto, in particular, from paragraph 10. Final Act. 7–8 (citing
Yamamoto ¶ 10); Ans. 6–7, 14–19 (citing Yamamoto ¶ 10). In
paragraph 10, Yamamoto explains that its method for configuring a software
package “reduces a network load and does not temporarily require a large
recording area at a client side.” Yamamoto ¶ 10. Thus, the Examiner
correctly finds that an ordinarily skilled artisan would have been motivated
to combine the teachings of Naranjo and Yamamoto “in order to enable
configuration of a software package that reduces a network load and does
not temporarily require a large recording area at a client side.” Final Act. 7;
Ans. 7, 15, 17, 19.
Appellant’s assertions fail to address Yamamoto paragraph 10 and fail
to persuade us of Examiner error. See Appeal Br. 9–10.
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Claim 1: Enablement of Naranjo and Yamamoto
Appellant quotes the following statement from Forest Laboratories,
Inc. v. Ivax Pharmaceuticals, Inc., 501 F.3d 1263, 1268 (Fed. Cir. 2007):
“A reference that is not enabling is not anticipating.” Appeal Br. 11.
Appellant then contends that Naranjo and Yamamoto use “techniques which
contradict Appellant’s automatic packaging technique,” and therefore “there
is no enablement for that same function.” Id.
We disagree. For anticipation under § 102, “a reference must enable
someone to practice the invention.” Symbol Techs., Inc. v. Opticon, Inc.,
935 F.2d 1569, 1578 (Fed. Cir. 1991). For obviousness under § 103(a),
however, a reference “is prior art for all that it teaches.” Beckman Instrs.,
Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989); see
Reading & Bates Constr. Co. v. Baker Energy Res. Corp., 748 F.2d 645, 652
(Fed. Cir. 1984). Hence, “[a] reference may be relied upon for all that it
would have reasonably suggested to one having ordinary skill the art,
including nonpreferred embodiments.” Manual of Patent Examining
Procedure § 2123 (9th ed. rev. 08.2017 Jan. 2018). Further, a reference must
be “considered together with the knowledge of one of ordinary skill in the
pertinent art.” In re Samour, 571 F.2d 559, 562 (CCPA 1978). A patent or
published application need not “explain every detail” since it speaks to
“those skilled in the art.” See In re Howarth, 654 F.2d 103, 105 (CCPA
1981).
Here, claim 1 stands rejected for obviousness—not anticipation. Final
Act. 4–8; Ans. 3–7. For the reasons discussed above, the combined
disclosures in Naranjo and Yamamoto teach or suggest claim 1’s “automatic
transmission” and “automatic packaging” limitations. See Final Act. 4–8;
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Ans. 3–7, 14–19; Naranjo ¶¶ 1, 8, 19–24, 36–38, code (57), Figs. 1–4;
Yamamoto ¶¶ 17, 24–28, 34, 36, 38, 41–43, 47–48, 53, 55, 72, Figs. 1–2, 5.
We discern no deficiency in the combined disclosures that would require
undue experimentation to achieve claim 1’s subject matter.
In addition, an examiner may reject a claim based on a reference
“without conducting an inquiry into” enablement of the reference. In re
Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012). If so, “the
burden shifts to the applicant to submit rebuttal evidence of nonenablement.”
Id. Here, Appellant identifies no rebuttal evidence of nonenablement. See
Appeal Br. 11.
Moreover, contrary to Appellant’s contention, Naranjo and
Yamamoto do not disclose techniques contradicting automatic packaging.
Naranjo discloses automatically packaging software at a server, while
Yamamoto discloses automatically packaging software at a client. See
Naranjo ¶¶ 19–24, 36–38, Figs. 1–4; Yamamoto ¶¶ 24, 34, 36, 38.
Summary for Claim 1
For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting claim 1 for obviousness
based on Naranjo and Yamamoto. In our view, the claimed subject matter
exemplifies the principle that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). Thus, we sustain the § 103(a) rejection of claim 1.
Dependent Claims 3–7 and 9–12
Claims 3–7 and 9–12 depend directly or indirectly from claim 1.
Appellant does not argue patentability separately for these dependent claims.
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See Appeal Br. 6–12. Thus, we sustain the § 103(a) rejection of these
dependent claims for the same reasons as claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
CONCLUSION
We affirm the Examiner’s decision to reject claims 1, 3–7, and 9–12.
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–7,
9–12 103(a) Naranjo, Yamamoto
1, 3–7,
9–12
TIME PERIOD FOR RESPONSE
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). See
37 C.F.R. § 41.50(f).
AFFIRMED