Ex Parte Adams

Board of Patent Appeals and Interferences

Apr 21, 2010

10158353 (B.P.A.I. Apr. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PHILLIP M. ADAMS
____________

Appeal 2009-012449
Application 10/158,3531
Technology Center 2100
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Decided: April 22, 2010
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Before LEE E. BARRETT, LANCE LEONARD BARRY, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed May 29, 2002. The real party in interest is Appellant
Phillip M. Adams.
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection
of claims 26-38, which are all the claims remaining in the application, as
claims 1-25 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
An Oral Hearing was held on April 15, 2010.
We reverse.

A. INVENTION
Appellant invented a system and method for circumventing hardware-
dependent software installation locks, imposed by selected software
packages, which may artificially enforce compliance with a minimum set of
hardware requirements before allowing installation. (Spec. 40, Abstract.)

B. ILLUSTRATIVE CLAIM
The appeal contains claims 26-38. Claims 26, 37, and 38 are
independent claims. Claim 26 is illustrative:
26. A method for circumventing hardware-dependent
software installation locks in a computer system, the method
comprising:
obtaining a software package restricting installation
thereof to computer systems comprising a processor within a specified
range of release of processors;
selecting a computer system;
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converting the computer system into a temporary
computer system by installing in the computer system a temporary
processor within the specified range of release;
installing the software package on the temporary
computer system;
converting the temporary computer system into a
permanent computer system by removing the temporary processor and
installing therefor[e] a permanent processor outside the specified
range of release; and
running the software package on the permanent processor
as part of the permanent computer system.

C. REFERENCES
The reference relied upon by the Examiner as evidence in rejecting
the claims on appeal is as follows:
Leonard, Jim, The Oldskool PC Guide to Getting Old Software
Running on Newer PCs, The Oldskool PC, 1998 pp. 1-38. Available from
.

D. REJECTION
The Examiner entered the following rejection which is before us for
review:
Claims 26-38 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Leonard.

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II. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Leonard
1. Leonard discloses that “over 80% of all old software problems can
be cured by slowing down the machine you’re trying to run them on.” (Page
5.)
2. Leonard discloses that hardware slowdown can be achieved
through “the addition of intentional bus/cycle delays, reducing the frequency
of execution cycles, or hindering the efficiency of data retrieval.” (Id.)

III. PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and Appellant has the burden of presenting a rebuttal to the
prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellant has the burden on appeal to the Board to demonstrate error in the
Examiner’s position. In re Kahn, 441 F.3d. 977, 985-986 (Fed. Cir. 2006).

IV. ANALYSIS
Common Feature In All Claims
Our representative claim, claim 26, recites, inter alia, “removing the
temporary processor and installing therfor [sic] a permanent processor
outside the specified range of release.” (Emphasis added.) Independent
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claims 37 and 38 recite similar limitations. Thus, the scope of each of the
independent claims includes removing a temporary processor and installing
a permanent processor.
Claims 26-38
The Examiner found:
In other words, a person of ordinary skill in the art could
remove the “newer” processor and replace it with an “older”
processor that is “outside the specified range of release” with
predictable results. The results are predictable at least because
the “older” processor, such as an Intel PENTIUM processor
rated at 75 MHz, is fully capable of running the Microsoft
WINDOWS operating system, as the appellant’s specification
admits (see, e.g., page 25, line 18 to page 26, line 6).
(Ans. 6.)
Appellant contends that Leonard fails to disclose “any teaching or
suggestion of removal and replacement of any processor, hard drive, or
RAM device with something outside a specified range of release.” (App. Br.
9.) Appellant further contends that “Appellant’s recited claims proceed
contrary to the accepted wisdom in the art and are therefore non-obvious.”
(App. Br. 10.)

Issue: Has Appellant shown that the Examiner erred in finding that
Leonard teaches or suggests removing the temporary processor and
installing a permanent processor outside the specified range of lease, as set
forth in claim 26?

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In essence, the Examiner concluded that Leonard describes solutions
in terms of slowing down the computer system and that a person of ordinary
skill in the art could downgrade the computer system to a slower processor
“outside the specified range of release” to solve the same problem. We
disagree.
While Leonard discloses methods for slowing down a machine in
order to run older software games (FF 1), we find that Leonard methods are
aimed at “software” fixes, not hardware swapping. For example, Leonard
specifically discloses that computers can be slowed down by adding delays,
reducing the speed at which the CPU processes information, and hindering
data retrieval (FF 2). However, the Examiner has not shown and we do not
readily find where Leonard discloses downgrading the CPU, i.e., swapping
out a newer processor for an older one.
Appellant contends that downgrading a CPU to run newer software
would be against the accepted wisdom in the art and that a person of
ordinary skill in the art would not be motivated to do such a thing. (App. Br.
9-10.) We agree. Leonard seeks to match older software with older CPU
speeds, whereas the present invention seeks to match older CPUs with newer
software. In other words, Leonard seeks to have the computer system be in
compliance with the software requirements, whereas the claimed invention
seeks to circumvent the system requirements for the software. Thus, we find
the Examiner’s reasoning unpersuasive.
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Since we agree with at least one of the arguments advanced by
Appellant, we need not reach the merits of Appellant’s other arguments.
Given that the Examiner has not established that Leonard teaches or suggests
the “removing and installing” limitation of claim 26, we conclude that
Appellant has shown error in the Examiner’s rejection of claim 26. Because
independent claims 37 and 38 contain similar limitations to those of claim
26 that we have discussed, and are rejected on the same basis as claim 26,
we cannot sustain the rejection of claims 26-38.
Thus, Appellant has persuaded us of error in the Examiner’s
conclusion of obviousness for representative claim 26. Therefore, we
reverse the Examiner’s § 103 rejection of independent claim 26 and of
claims 27-38, which stand therewith.

V. CONCLUSIONS
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 26-38 under 35 U.S.C. § 103(a).

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VI. DECISION
In view of the foregoing discussion, we reverse the Examiner’s
rejection of claims 26-38.

REVERSED

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