Ex Parte Robertson et al

Patent Trial and Appeal Board

Mar 10, 2014

11962408 (P.T.A.B. Mar. 10, 2014)

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.
11/962,408 12/21/2007 Robert Hunter Robertson 16356.1085 (DC-13390) 8047
27683 7590 03/10/2014
HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
THAI, HANH B
ART UNIT PAPER NUMBER
2163
MAIL DATE DELIVERY MODE
03/10/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ROBERT HUNTER ROBERTSON,
BOGDAN ODULINKSI and JEFFREY V. FORD
__________

Appeal 2011-011371
Application 11/962,408
Technology Center 2100
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
and system for personalization of an Information Handling System. The
Examiner rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

1 Appellants identify the Real Party in Interest as Dell Computer Corporation
(see App. Br. 1).
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Statement of the Case
Background
The Specification teaches that a method for IHS (information
handling system) “personalization includes receiving a request for a
replacement IHS, collecting a plurality of customer IHS data, transferring
the plurality of customer IHS data to the replacement IHS during the
manufacture of the replacement IHS, and providing the replacement IHS to a
user of the customer IHS data” (Spec. 2 ¶ 0006).
The Claims
Claims 1-20 are on appeal. Claim 7 is representative and reads as
follows:
7. A method for Information Handling System (IHS)
personalization, comprising:
receiving a request for a replacement IHS;
collecting a plurality of customer IHS data;
packaging and transferring the plurality of customer
IHS data to the replacement IHS during the manufacture of
the replacement IHS;
providing a personalization engine on the replacement
IHS; and
providing the replacement IHS to a user of the
customer IHS data, wherein the personalization engine is
operable, in response to receiving a password from the user,
to unpack the plurality of customer IHS data and migrate the
plurality of customer IHS data to the appropriate locations
on the replacement IHS.

The Issues
A. The Examiner rejected claims 1, 2, 4, 6-9, 12, 13, and 15-20 under 35
U.S.C. § 103(a) as obvious over Hiroshige2 and Sardesai3 (Ans. 3-10).

2 Hiroshige et al., US 7,464,144 B2, issued Dec. 9, 2008.
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B. The Examiner rejected claims 3, 10, and 14 under 35 U.S.C. § 103(a)
as obvious over Hiroshige, Sardesai, and Ofek4 (Ans. 10-11).
C. The Examiner rejected claims 5 and 11 under 35 U.S.C. § 103(a) as
obvious over Hiroshige, Sardesai, and Zingher5 (Ans. 11).
A. 35 U.S.C. § 103(a) over Hiroshige and Sardesai
The Examiner finds that Hiroshige teaches the elements of claim 7
(Ans. 6), but finding that “Hiroshige, however, does not explicitly disclose
wherein the personalization engine is operable, in response to receiving a
password, to unpack and migrate the customer HIS data to the appropriate
locations on the replacement HIS” (Id.).
The Examiner finds that “Sardesai discloses method operating system
deployment including, in response to receiving a password, migrating the
customer data to the appropriate locations during data deployment (¶[0037],
Sardesai) and unpack customer data (¶[0069], Sardesai, i.e., decompresses
files)” (Ans. 5, 7).
The Examiner finds it would have been obvious “to modify Hiroshige
to include the claimed features as taught by Sardesai because it would
increase the security’s purposes during the data migration and deployment”
(Ans. 7).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Hiroshige and Sardesai render
the claims obvious?

3 Sardesai et al., US 2004/0187104 A1, published Sep. 23, 2004.
4 Ofek et al., US 2002/0004890 A1, published Jan. 10, 2002.
5 Zingher et al., US 2003/0163483 A1, published Aug. 28, 2003. 
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Findings of Fact
1. Hiroshige teaches that when “placing the order for a new
apparatus that will replace or be used with the current apparatus, the user
requests ‘setup and data transfer service’ from the manufacturer/supplier”
(Hiroshige, col. 2, ll. 4-7).
2. Hiroshige teaches this transfer service includes
receiving order information that includes an order for an
information apparatus and a request for a transfer service for
setups and/or data sent from a user’s current apparatus,
receiving the setup information and/or data from the current
apparatus, typically via a network; storing the received
setups and/or data in an administrative apparatus;
transmitting the stored dated to the new apparatus via the
network; and then providing the user with the new apparatus

(Hiroshige, col. 2, ll. 14-21).
3. Hiroshige teaches that “[a]dministrative apparatus 17A stores
the information in the user information management database 23d contained
therein” (Hiroshige, col. 8, ll. 25-27). Hiroshige further teaches that
“[a]dministrative apparatus 17A stores the transfer information in user
data storage section 23a, setup data storage section 23b and application
storage section 23c in respective user information storage section 23e”
(Hiroshige, col. 10, ll. 29-33).
4. Hiroshige teaches an embodiment where “the setup information
and data to be transferred are encrypted for transmission from current
apparatus 11 to administrative apparatus 17A” (Hiroshige, col. 10, ll. 61-63).
5. Hiroshige teaches that
before transmitting the setups and data to be transferred to
the administrative apparatus 17A, the dedicated transfer tool
prompts the user to input an encryption key, as shown in
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FIG. 9A. The user inputs the key (character string) for the
encryption, and the setups and data to be encrypted undergo
encryption when the user presses the “encrypt” button.
Then, 1 the encrypted information are transmitted from the
current apparatus 11 to administrative apparatus 17A via the
network 16. Administrative apparatus 17A stores the
encrypted setup information or data information in
respective user information storage section 23e. In the
production process of the new apparatus, administrative
apparatus 17A transmits, sets up and stores the encrypted
transfer contents stored in respective user information
storage section 23e, with respect to the ordered apparatus,
and then the new apparatus is delivered to the user. At the
time of delivery, a function may be added, to the settings of
the new apparatus for displaying an image as shown in FIG.
9B for inputting a decryption key for decrypting the
encrypted information when the new information apparatus
is started up.

(Hiroshige, col. 10, l. 67 to col. 11, l. 19).

6. Hiroshige teaches that “details of the dedicated transfer tool
will be described. This dedicated tool automatically extracts information
such as setup configurations, data, and so, on from current apparatus 11,
according to the user’s instructions, for transfer to new apparatus 19”
(Hiroshige, col. 8, ll. 57-61).
7. Hiroshige teaches that “[w]hen a version of an application is
common current information apparatus 11 and new apparatus 19, the file . . .
may be copied via network 16 to a folder in the new apparatus that is the
same as that of the current information apparatus” (Hiroshige, col. 10, ll. 8-
12).
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8. Hiroshige teaches that
when producing the newly ordered information apparatus,
administrative apparatus 17A transmits, sets up and stores
the contents stored in user data storage section 23a, the setup
data storage section 23b and the application storage section
23c in respective user information storage section 23e, with
respect to the ordered information apparatus, and then the
new apparatus is delivered to the user.

(Hiroshige, col. 10, ll. 48-54).
9. Sardesai teaches that
In case remote backup to a network location is requested, a
network location, and the account name/password
combination needed to gain write access to it can also be
specified. Further, the system administrator can specify the
applications whose settings will be migrated to the
destination computer during image deployment.
Additionally, the system administrator can specify the file
types and locations of user data that will be migrated during
image deployment.

(Sardesai 3 ¶ 0037).
10. Sardesai teaches that after “the old operating system is
effectively removed from the disk partition, the new image is installed. Here,
the deployment agent accesses the image file, decompresses the image file
and installs the files and folders associated with the new operating system
into the disk partition on the destination computer” (Sardesai 5 ¶ 0069).
Principles of Law
“The 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). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
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patentability.” Id. at 417. As noted by the Court in KSR, “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.” Id.
at 421.
Analysis
Hiroshige teaches a “setup and data transfer” method (FF 1) which
comprises
receiving order information that includes an order for an
information apparatus and a request for a transfer service for
setups and/or data sent from a user’s current apparatus,
receiving the setup information and/or data from the current
apparatus, typically via a network; storing the received
setups and/or data in an administrative apparatus;
transmitting the stored dated to the new apparatus via the
network; and then providing the user with the new apparatus

(Hiroshige, col. 2, ll. 14-21; FF 2). Hiroshige teaches encrypting the
information and requiring a password/decryption key in order to decrypt
“the encrypted information when the new information apparatus is started
up” (Hiroshige, col. 10, l. 67 to col. 11, l. 19; FF 5).
The Examiner acknowledges that Hiroshige does not teach “to unpack
and migrate the customer . . . data to the appropriate locations on the
replacement” information apparatus (Ans. 5, 7).
Sardesai teaches that after a “new image is installed. . . . the
deployment agent accesses the image file, decompresses the image file and
installs the files and folders associated with the new operating system into
the disk partition on the destination computer” (Sardesai 5 ¶ 0069; FF 10).
Applying the KSR standard of obviousness to the findings of fact, we
agree with the Examiner that an ordinary artisan would have reasonably
found it obvious to incorporate the compression and decompression
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technology of Sardesai into the setup and data transfer service of Hiroshige
because “it would increase the security's purposes during the data migration
and deployment” (Ans. 7). Further, compression and decompression of the
customer’s data would reduce the amount of information needing to be
transferred, thereby reducing the amount of resources required for the
transfer (FF 9). Such a combination is merely the “predictable use of prior
art elements according to their established functions.” KSR, 550 U.S. at 417.
Appellants contend that
the references, alone, or in any combination, do not teach a
personalization engine that is operable, in response to
receiving a password from a user on the replacement IHS
subsequent to the manufacture of the replacement IHS, to
unpack a plurality of customer IHS data and migrate the
plurality of customer IHS data to the appropriate locations
on a replacement IHS.

(App. Br. 5).
We do not find Appellants’ argument persuasive because it fails to
combine the teachings of Hiroshige and Sardesai. Hiroshige teaches the use
of encryption (FF 4), and in particular, teaches that after transfer of
encrypted data, the encrypted data may be decrypted using a decryption key
(i.e. password) (FF 5). Sardesai teaches compressing and decompressing
data transferred from one device to another (FF 9-10). We agree with the
Examiner that the ordinary artisan, familiar with Hiroshige and Sardesai,
would have found it obvious to incorporate the compression/decompression
technology of Sardesai into the transfer method of Hiroshige in order to
increase security and reduce system resources during the transfer process as
discussed above.
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Appellants contend that they found
no discussion in Hiroshige of anything like the
personalization engine that is described and claimed in the
present disclosure and that is provided on a replacement IHS
and can unpack and migrate data from the customers old
IHS to appropriate locations in the replacement IHS
subsequent to the manufacture of the replacement IHS and
the provision of the replacement IHS to the customer (and
upon provision of a password by the customer.)

(App. Br. 6). Appellants further contend that there “simply is no disclosure
of the use of an authentication password to unpack and initiate the migration
of the customer IHS data to a replacement IHS subsequent to the
manufacture of the replacement IHS and its provision to the customer”
(App. Br. 7).
We are not persuaded. The difference argued by Appellants is one of
timing, that is, when the password is inputted into the system. Claim 7
requires “providing the replacement IHS to a user . . . wherein the
personalization engine is operable, in response to receiving a password from
the user, to unpack the plurality of customer IHS data and migrate the
plurality of customer IHS data.” Thus, claim 7 (as well as claims 1 and 16)
is reasonably interpreted to require entry of a password by the user after
receiving the new machine with the transferred data, in order to make the
data and new machine available for use.
This is entirely consistent with the teaching of Hiroshige, which
teaches input of a decryption key (i.e. password) at the time of delivery of
the new apparatus, and that after the key is entered, the information is
decrypted, making the new apparatus available for use (FF 5). Thus, the
timing of steps taught by Hiroshige is identical to that of claim 7 (as well as
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claims 1 and 16). Even if the order of steps were different, “[t]here is no
merit in the point here in the absence of any proof in the record that the
order of performing the steps produces any new and unexpected results.” In
re Burhans, 154 F.2d 690, 692 (CCPA 1946). Appellants have provided no
evidence suggesting that the precise timing of entry of the password by the
user results in any unexpected result.
Appellants contend that
Sardesai teaches migrating data from a computer to
appropriate locations on a network, and allows [an]
administrator to specify applications settings to be migrated,
file types that will be migrated, and locations of files that
will be migrated. However, there is no discussion of
migrating customer IHS data to appropriate locations on a
replacement IHS.

(App. Br. 6).
We are not persuaded. The rejection does not rely solely upon
Sardesai, but also includes Hiroshige. Hiroshige teaches that “[w]hen a
version of an application is common current information apparatus 11 and
new apparatus 19, the file . . . may be copied via network 16 to a folder in
the new apparatus that is the same as that of the current information
apparatus” (Hiroshige, col. 10, ll. 8-12; FF 7). Hiroshige further teaches that
when producing the new device, the set up and storage is appropriately
located (FF 8). Thus, Hiroshige’s express teachings (FF 7-8) render the
migration of data to the correct location during a data transfer operation
obvious to the person of ordinary skill. See In re Keller, 642 F.2d 413, 425
(CCPA 1981) (“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
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primary reference . . . . Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.”)
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Hiroshige and Sardesai render the claims obvious.
B.-C. 35 U.S.C. § 103(a) rejections
Appellants do not argue separately the claims in these obviousness
rejections. Having affirmed the obviousness rejection of claims 1, 7, and 16
over Hiroshige and Sardesai, we also find that the further combinations with
Ofek and Zingher render the remaining claims obvious for the reasons given
by the Examiner (see Ans. 10-11).
SUMMARY
In summary, we affirm the rejection of claims 1, 7, and 16 under 35
U.S.C. § 103(a) as obvious over Hiroshige and Sardesai. Pursuant to 37
C.F.R. § 41.37(c)(1), we also affirm the rejection of claims 2, 4, 6, 8, 9, 12,
13, 15, and 17-20, as these claims were not argued separately.
We affirm the rejection of claims 3, 10, and 14 under 35 U.S.C.
§ 103(a) as obvious over Hiroshige, Sardesai, and Ofek.
We affirm the rejection of claims 5 and 11 under 35 U.S.C. § 103(a)
as obvious over Hiroshige, Sardesai, and Zingher.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
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