Ex Parte Dandekar et al

Board of Patent Appeals and Interferences

Jun 13, 2012

10768823 (B.P.A.I. Jun. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SHREE A. DANDEKAR, BRIAN BEARDEN,
and DAVID A. BUTTS
____________________

Appeal 2009-014315
Application 10/768,823
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, JEFFREY S. SMITH, and
DAVID M. KOHUT, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014315
Application 10/768,823

2
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b).

Exemplary Claim
Exemplary claim 1 under appeal reads as follows:
A system for automated dissemination of software to an
information handling system, comprising:
a distribution server operable to receive a software file
comprising a plurality of individual constituent program files and a
plurality of installation parameters associated with said software file;
a repack and script regeneration server operably connected to
said distribution server, wherein said repack and script regeneration
server:
a) disassembles said software file into a first plurality of
individual constituent program files;
b) generates customized installation scripts in accordance
with said plurality of installation parameters associated with
said software file;
c) removes predetermined individual constituent program
files from said first plurality of individual constituent program
files in accordance with a prune list, thereby creating a second
plurality of individual constituent program files; and
d) repackages said second plurality of individual
constituent program files combined with said customized
installation scripts to provide automatic transfer of said
software file to an information handling system; and
a download server operable to transfer said second plurality of
individual constituent program files to a target information handling
system.

Appeal 2009-014315
Application 10/768,823

3
Rejections
1. The Examiner rejected claims 1-8 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. (Final Rej. 3).
1

2. The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Amberg (US 5,991,543) and
Okachi (US 2004/0158817 A1).

3. The Examiner rejected claims 2-24 under 35 U.S.C. § 103(a) as
being unpatentable over various combinations of Amberg, Okachi, Feinman
(US 6,075,943), and Karasudani (US 6,378,054 B1).
2

Appellants’ Contentions
3. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Applicants respectfully submit that the combination
proposed by Examiner is improper because it would destroy the
intended purpose of the Okachi system. Applicants’ invention
relates to the initial installation of software on information
handling systems in a manufacturing facility, while Okachi is
directed to a system that ascertains the current version of
software on a client terminal and then updates the existing
software with a later version. In Applicants’ system and
method, there is no preexisting software to overwrite and,
therefore, the intended function of the Okachi system and
method would be impermissibly destroyed.
(App. Br. 5).

1
Since we affirm the Examiner’s § 103(a) rejection, we do not reach the
rejection under § 101. The § 101 rejection is not discussed further herein.

2
Separate patentability is not argued for claims 2-24. Except for our
ultimate decision, the § 103(a) rejections of these claims are not discussed
further herein.
Appeal 2009-014315
Application 10/768,823

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ISSUES
Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 103(a)
because Okachi teaches away from its combination with Amberg?

ANALYSIS
We have reviewed the Examiner’s § 103(a) rejection of claim 1 in
light of Appellants’ argument that the Examiner has erred.
Appellants argue that the references teach away from the proposed
modifications (i.e., the proposed modifications would render the prior art
unsatisfactory for its intended purpose). In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984) (“Indeed, if the French apparatus were turned upside down,
it would be rendered inoperable for its intended purpose.” “In effect, French
teaches away from the board’s proposed modification.”).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference...would be led in a direction divergent from
the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327,
1335 (Fed. Cir. 2001) (citing TecAir, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d
1353, 1360 (Fed. Cir. 1999)). We do not find this to be the situation before
this Board. We disagree with Appellants’ conclusions. We agree with (1)
the findings and reasons set forth by the Examiner in the action from which
this appeal is taken and (2) the reasons set forth by the Examiner at pages 29
through 31, line 2, of the Examiner’s Answer in response to Appellants’
Appeal Brief. We concur with the conclusion reached by the Examiner.

Appeal 2009-014315
Application 10/768,823

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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-24 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-24 are not patentable.

DECISION
The Examiner’s rejection of claims 1-24 under 35 U.S.C. § 103(a) 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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