Ex Parte Howell et al

Board of Patent Appeals and Interferences

Jun 21, 2012

10346523 (B.P.A.I. Jun. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES A. HOWELL, JR. and
SHREE DANDEKAR
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Appeal 2010-003900
Application 10/346,523
Technology Center 2100
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Before JOHN A. JEFFERY, THOMAS S. HAHN, and
JEREMY J. CURCURI, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-10, 12-15, and 17-20. We have jurisdiction under 35
U.S.C. § 6(b).
Claims 1-5, 9, 10, 15, and 20 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Stedman (US 6,262,726 B1; issued July 17, 2001).
Claims 6-8, 12-14, and 17-19 stand rejected under 35 U.S.C. § 103(a)
as obvious over Stedman in view of Milius (US 2003/0200201 A1;
published Oct. 23, 2003; filed Apr. 23, 2002).
We affirm.

STATEMENT OF CASE
Appellants’ invention provides a customized out of box experience for
an information handling system. See generally Abstract. Claim 1 is
illustrative and reproduced below with key disputed limitations emphasized:
1. A method of providing a customized out of box experience for an
information handling system comprising:
configuring the information handling system with options selected
according to user input, the options selected including service options, the
configuring including customizing an out of box presentation based upon
selected service options; and
presenting a customized out of box experience when the information
handling system is initially started by a user based upon selected service
options.

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CONTENTIONS1
Appellants argue the following with regard to claims 1 and 20 and
Stedman, column 2, lines 29-33:
However nowhere within this portion of Stedman, or
anywhere else in Stedman, is there a disclosure or suggestion of
a customized out of box experience which includes customizing
an out of box presentation based upon selected service options
and presenting a customized out of box experience based upon
selected service options, as required by claims 1 and 20.
(Br. 4).
The Examiner finds, with regard to claims 1 and 20, that Stedman
teaches presenting a customized out of box experience when the information
handling system is initially started by a user based upon selected service
options. (Ans. 3, 6 (citing Stedman, col. 2, ll. 29-33)). The Examiner
further finds that Appellants’ Specification does not define what service
options are, and interprets service options as software to be installed on the
specific computer. The Examiner maps the recited “service options” to
Stedman’s software installed on the computers. (Ans. 9-10 (citing Stedman,
col. 3, ll. 35-42; col. 5, ll. 24-35)).
Appellants argue the following with regard to claims 9 and 15 and
Stedman, column 2, lines 29-33:
Additionally, nowhere within this portion of Stedman, or
anywhere else in Stedman, is there a disclosure or suggestion of
storing out of box experience files on an information handling
system based upon an information part number where the
information part number is based upon services ordered during

1 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the following documents for their respective
details: the Appeal Brief (Br.) filed August 17, 2009; and the Examiner’s
Answer (Ans.) mailed November 2, 2009.
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configuration of the information handling system, as required
by claims 9 and 15.
(Br. 4).
The Examiner finds, with regard to claims 9 and 15, that Stedman
teaches out of box experience files on the information handling system based
upon an information part number, the information part number being based
upon services ordered during configuration of the information handling
system. (Ans. 4-5 (citing Stedman, col. 7, ll. 17-20; col. 3, ll. 18-49)). The
Examiner further finds that Stedman teaches that customers may request any
one or more software applications be installed onto the computer system.
The Examiner maps the part number to the name of the application the user
wishes to install on their machine, which is based on the user’s wishes when
ordering the machine. (Ans. 10-11 (citing Stedman, col. 3, ll. 29-37; col. 4,
ll. 13-39)).
Appellants argue the following with regard to claims 6-8 and Milius:
While Milius discloses service options which include
Internet service options, Milius does not disclose or suggest a
customized out of box experience which includes customizing
an out of box presentation based upon selected service options
and presenting a customized out of box experience based upon
selected service options, much less where the service options
include Internet services, as required by claim 6, where whether
certain providers are presented during the out of box
presentation is determined based upon selected service options,
as required by claim 7 or where an order of presentation of
providers during the out of box presentation is determined
based upon the services ordered, as required by claim 8. These
deficiencies of Milius are not cured by Stedman.
(Br. 6).
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The Examiner finds, with regard to claim 6, Milius teaches service
options include Internet services. (Ans. 7 (citing Milius, Figs. 2-4; ¶
[0018])).
The Examiner finds, with regard to claim 7, Milius teaches certain
providers are presented during the out of box presentation is determined
based upon the selected service options. (Ans. 7 (citing Milius, Figs. 2-4; ¶¶
[0018], [0021], [0024])).
The Examiner finds, with regard to claim 8, Milius teaches an order of
presentation of providers during the out of box presentation is determined
based upon the services ordered. (Ans. 8 (citing Milius, Figs. 2-4; ¶¶ [0018],
[0021], [0024])).

ISSUES
Under 35 U.S.C. § 102(b), has the Examiner erred in rejecting claims
1-5, 9, 10, 15, and 20 as anticipated by Stedman?
Under 35 U.S.C. § 103(a), has the Examiner erred in rejecting claims
6-8, 12-14, and 17-19 as obvious over Stedman in view of Milius?

PRINCIPLES OF LAW
An argument that merely points out what a claim recites is
unpersuasive. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e
hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”).
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One cannot show nonobviousness by attacking references individually
where the rejection is based on combinations of references. In re Keller, 642
F.2d 413, 426 (CCPA 1981).

ANALYSIS
We agree with the Examiner’s position, with regard to claims 1 and
20, that Stedman teaches the argued claim limitations. The Examiner has
made factual findings, as detailed supra, with respect to the argued claims.
The Examiner maps the recited “service options” to Stedman’s software
installed on the computers. (Ans. 9-10 (citing Stedman, col. 3, ll. 35-42; col.
5, ll. 24-35)).
Appellants’ argument, as detailed supra, restates the claim language
and alleges that the claimed elements are not disclosed in Stedman.
Appellants, however, do not explain why this is the case. Appellants do not
present any persuasive arguments to explain why the Examiner’s factual
findings are in error. See 37 C.F.R. § 41.37(c)(1)(vii) (noting that an
argument that merely points out what a claim recites is unpersuasive).
Accord Lovin, 652 F.3d at 1357 (“[T]he Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”).
In any event, we find the Examiner’s position (Ans. 3, 6, 9-10)
reasonable, for nothing in the claim precludes the Examiner’s finding that
Stedman presents a customized out of box experience based upon selected
service options as required by claims 1 and 20 giving the terms their
broadest reasonable interpretation in light of the Specification.
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We also agree with the Examiner’s position, with regard to claims 9
and 15, that Stedman teaches the argued claim limitations. The Examiner
has also made factual findings, as detailed supra, with respect to these
argued claims. The Examiner maps the part number to the name of the
application the user wishes to install on their machine, which is based on the
user’s preferences when ordering the machine. (Ans. 10-11 (citing Stedman,
col. 3, ll. 29-37; col. 4, ll. 13-39)).
Appellants’ argument, as detailed supra, restates the claim language
and argues that the claimed elements are not disclosed in Stedman. We are
not persuaded of error in the Examiner’s position. See Lovin, 652 F.3d at
1357.
Weighing as a whole, Appellants’ arguments, which are not supported
by further explanation, that certain elements are missing from Stedman,
together with the Examiner’s specific and detailed findings, we conclude
that Appellants have not shown error in the Examiner’s finding of
anticipation based on Stedman regarding claims 1-5, 9, 10, 15, and 20.
We reach a similar conclusion regarding the issue of claims 6-8, 12-
14, and 17-19 as obvious over Stedman in view of Milius.
Appellants’ only arguments presented with regard to this rejection
pertain to claims 6-8 and Milius. Br. 6.
We agree with the Examiner’s position, with regard to claims 6-8, that
these claims are obvious over Stedman in view of Milius. The Examiner has
made factual findings with respect to these argued claims. Ans. 7-8.
Appellants’ arguments, as detailed supra, only restate the claim
language and allege that the claimed elements are not disclosed in Milius.
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We are not persuaded of error in the Examiner’s position. See Lovin, 652
F.3d at 1357.
Further, Appellants acknowledge that Milius discloses service options
which include Internet service options, but argue that Milius does not
disclose or suggest a customized out of box experience including the further
limitations of claims 6-8. (App. Br. 6). We are not persuaded of error in the
Examiner’s position.
One cannot show nonobviousness by attacking references individually
where, as here, the obviousness rejection is based on the combination of
references. Keller, 642 F.2d at 426.
Weighing as a whole, Appellants’ arguments, which are not supported
by further explanation, that certain elements are missing from Stedman and
Milius, together with the Examiner’s specific and detailed findings, we
conclude that Appellants have not shown error in the Examiner’s
obviousness rejection based on Stedman in view of Milius regarding claims
6-8, 12-14, and 17-19.

CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
1-5, 9, 10, 15, and 20 under 35 U.S.C. § 102(b).
Appellants have not shown that the Examiner erred in rejecting claims
6-8, 12-14, and 17-19 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1-10, 12-15, and 17-20 is
affirmed.
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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