Ex Parte Dandekar et al

Board of Patent Appeals and Interferences

Apr 26, 2010

11283568 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte SHREE A. DANDEKAR and 8
SHANNON C. BOESCH 9
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Appeal 2009-008518 12
Application 11/283,568 13
Technology Center 3600 14
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Decided: April 26, 2010 17
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Before HUBERT C. LORIN, ANTON W. FETTING, and 20
JOSEPH A. FISCHETTI, Administrative Patent Judges. 21
FETTING, Administrative Patent Judge. 22
DECISION ON APPEAL 23
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STATEMENT OF THE CASE 1
Shree A. Dandekar and Shannon C. Boesch (Appellants) seek review 2
under 35 U.S.C. § 134 (2002) of a final rejection of claims 1-15, the only 3
claims pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellants invented a way of upgrading and authorizing third party 10
software and services on an information handling system (Specification 1: 11
Field of the Invention). 12
An understanding of the invention can be derived from a reading of 13
exemplary claim 1, which is reproduced below [bracketed matter and some 14
paragraphing added]. 15
1. A system for upgrading and authorizing a third party 16
component loaded onto an information handling system 17
comprising: 18
[1] an upgrade and authorization module, 19

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed August 21, 2008) and the Examiner’s Answer (“Ans.,” mailed
November 18, 2008).
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the upgrade and authorization module enabling a 1
customer to indicate a desire 2
to upgrade at least one upgradeable component 3
while the information handling system is being 4
configured, 5
the upgrade and authorization module being executed by 6
a system supplier; and, 7
[2] a database, 8
the database receiving information from and supplying 9
information to the upgrade and authorization module. 10
THE REJECTION 11
The Examiner relies upon the following prior art: 12
Muyres US 2001/0010046 A1 Jul. 26, 2001
Claims 1-15 stand rejected under 35 U.S.C. § 102(b) as anticipated by 13
Muyres. 14
ARGUMENTS 15
As to claims 1-5, the Appellants argue that Muyres does not describe a 16
system for upgrading and authorizing a third party component loaded onto 17
an information handling system which includes an upgrade and authorization 18
module which enables the customer to indicate a desire to upgrade at least 19
one upgrade-able component while the information handling system is being 20
configured, much less where the upgrade and authorization module is 21
executed by a system supplier. Appeal Br. 3-4. 22
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ISSUES 1
The issue of whether the Examiner erred in rejecting claims 1-15 under 2
35 U.S.C. § 102(b) as anticipated by Muyres turns on whether Muyres 3
describes limitation [1] of claim 1. 4
FACTS PERTINENT TO THE ISSUES 5
The following enumerated Findings of Fact (FF) are believed to be 6
supported by a preponderance of the evidence. 7
Facts Related to the Prior Art 8
Muyres 9
01. Muyres is directed to the marketing functions of sending and 10
delivery of digital content and services. Muyres ¶ 0002. 11
02. Initial delivery of Muyres’ system is on the hard drives or on a 12
new hard drive used for upgrading an existing PC. Or it may be 13
downloaded and installed it from an online source. The inventory 14
is replenished as sales occur, updated as new versions become 15
available, and expanded as suppliers change and new offerings 16
become available. Muyres’ system is maintained and updated 17
using intelligent push technology. Muyres ¶ 0068-69. 18
03. Muyres describes a mechanism for supplying an upgrade that 19
provides particular advantages to OEM suppliers of PCs and 20
upgrade hard drives. Two disk sectors of information are initially 21
omitted from an asset that is otherwise present in memory. Upon 22
asset purchase, data in the appropriate "stolen" sectors can be 23
supplied, either as part of a key itself, or via use of a key to unlock 24
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sector data which has been present all along in an encrypted 1
format. In this manner the asset remains unusable until the 2
missing parts are supplied, yet can be unwrapped reasonably 3
quickly, particularly if the key is electronically communicated to 4
the PC. Then purchased the sectors are merely installed and the 5
asset is immediately ready for use. Muyres ¶ 0075-76. 6
04. For additional security, assets may be "machine bound" to a 7
limited number of physical hard drives. The keys are each 8
specifically related to some relatively unique indicia on the hard 9
drives. Muyres ¶ 0077. 10
PRINCIPLES OF LAW 11
Anticipation 12
"A claim is anticipated only if each and every element as set forth in the 13
claim is found, either expressly or inherently described, in a single prior art 14
reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 15
631 (Fed. Cir. 1987). 16
"When a claim covers several structures or compositions, either 17
generically or as alternatives, the claim is deemed anticipated if any of the 18
structures or compositions within the scope of the claim is known in the 19
prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). 20
"The identical invention must be shown in as complete detail as is 21
contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 22
1236 (Fed. Cir. 1989). 23
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The elements must be arranged as required by the claim, but this is not 1
an ipsissimis verbis test, i.e., identity of terminology is not required. In re 2
Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 3
ANALYSIS 4
The Examiner found that Muyres described limitation [1] of claim 1 at 5
¶’s 0075-77. Ans. 3. The Appellants briefly describe parts of Muyres and 6
then state that Muyres does not describe this limitation. Appeal Br. 3-4. We 7
disagree with the Appellants. 8
Limitation [1] only requires that an upgrade and authorization module 9
enable a customer to indicate a desire to upgrade at least one upgradeable 10
component while the information handling system is being configured. The 11
manner of indication and configuration is not further limited. Muyres 12
describes allowing a customer to purchase digital assets. FF 01. 13
One method of implementing the delivery is to restore missing sectors 14
from digital content otherwise already present. Such a restoration upgrades 15
the non-working asset to a working asset. FF 03. The customer expresses a 16
desire to do so by the purchase transaction. The system for such purchases 17
is delivered with new PC’s or replacement hard drives. FF 02. Thus, the 18
customer is able to select assets for purchase while the information system in 19
a new PC or hard drive is configured. Again, the claim recites no limitation 20
on the extent or manner of configuration. One of ordinary skill generally 21
refers to the initial period of use of a new PC or hard drive as a period of 22
configuring such a device. The restoration of the sectors may occur by 23
electronic provision of a key from the system supplier. Thus, the upgrade 24
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and authorization module are executed at least in part by a system supplier 1
via installation and use of the required key. 2
The Appellants’ arguments are repeated for the remaining independent 3
claims, and these arguments are relied upon for the dependent claims. 4
CONCLUSIONS OF LAW 5
The Examiner did not err in rejecting claims 1-15 under 35 U.S.C. 6
§ 102(b) as anticipated by Muyres. 7
DECISION 8
To summarize, our decision is as follows. 9
• The rejection of claims 1-15 under 35 U.S.C. § 102(b) as anticipated 10
by Muyres is sustained. 11
No time period for taking any subsequent action in connection with this 12
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 13
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AFFIRMED 15
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