Ex Parte Shapiro

Board of Patent Appeals and Interferences

Mar 23, 2012

11428352 (B.P.A.I. Mar. 23, 2012)

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.
11/428,352 06/30/2006 Alan Joshua Shapiro 5056.001US2 3880
40064 7590 03/26/2012
LEMAIRE PATENT LAW FIRM, P.L.L.C.
P.O. BOX 1818
BURNSVILLE, MN 55337
EXAMINER
YIGDALL, MICHAEL J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/26/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ALAN JOSHUA SHAPIRO
____________________

Appeal 2009-012842
Application 11/428,352
Technology Center 2100
____________________

Before MURRIEL E. CRAWFORD, MARC S. HOFF, and
THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012842
Application 11/428,352

2
STATEMENT OF CASE
Appellant invokes our review under 35 U.S.C. § 134(a) from final
rejections of claims 1-31, 33, and 36-40 (Final Action 7-48).
1
We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Introduction
Appellant claims an apparatus and method that allows a user to select
electronically stored soft assets (e.g., programs, songs, videos) for operation
on a user device. The non-selected assets are permanently erased from
storage while the selected assets provide a custom-selected set of
interoperable assets (Abstract). The below reproduced claim 1 is exemplary
of the claims on appeal:
1. An apparatus comprising:
an end-user storage medium having a prewritten panoplex [i.e., a
superset of soft assets] stored thereon that includes a plurality of
installed soft assets, including a plurality of installed software
applications, that form a superset of separately selectable soft assets,
all of said installed soft assets on said storage medium being fully
installed on the storage medium so as to be free of interoperability
problems and configuration conflicts, validated such that all the

1 Claims 32, 34, and 35 were withdrawn prior to Appellant filing the Notice
of Appeal. Accordingly, the Board has no jurisdiction over these claims,
and, therefore, Appellant’s request that the Board review a prior action
concerning these claims (App. Br. 27) is not addressed.
Appeal 2009-012842
Application 11/428,352

3
software applications in the superset do not conflict with each other,
work correctly with an end-user device's environment including its
operating system, and are configured to be arbitrarily uninstalled
without creating system instability, wherein the storage medium is
configured to be selectively gryphed [i.e., removed from storage]
before first availability of the plurality of installed soft assets to an
end user, in order to retain an ipselecta [i.e., kept soft assets]
comprising a first subset of the plurality of installed soft assets, said
first subset including one of any uniquely selected set of the soft
assets selected by a user, and to erase, by a further operation, a relicta
[i.e., removed soft assets] comprising a second subset of the plurality
of installed soft assets such that only the first subset are available as
installed on the end-user storage medium, and storage space from the
second subset is available for storage of other data, wherein the
plurality of installed soft assets are unavailable for use until the
further operation has erased the relicta.
Rejections
2

The Examiner relies upon the following prior art:
Seko US 5,196,970 Mar. 23, 1993
Burkhardt US 2003/0037326 A1 Feb. 20, 2003
Kroening US 2003/0158926 A1 Aug. 21, 2003
Marino US 6,681,391 B1 Jan. 20, 2004
Koh US 6,757,783 B2 June 29, 2004
Sales US 6,868,496 B2 Mar. 15, 2005
Ohbitsu US 2005/0222916 A1 Oct. 6, 2005

2
A rejection under 35 U.S.C. § 112, second paragraph, of claim 10 is
withdrawn (Advisory Action mailed Oct. 11, 2007).
Appeal 2009-012842
Application 11/428,352

4
A. The Examiner, under the judicially created doctrine of
obviousness-type double patenting, provisionally rejected claims 1,
10, 17, and 27 as being unpatentable over claims of:
1. Prior co-pending Application No. 11/428,346 (now issued US
7,398,524) (Ans. 3);
3
,
4

2. Prior co-pending Application No. 11/428,359 (now issued US
7,712,094) (Ans. 3);
3. Co-pending Application No. 11/428,369 (docketed Appeal No.
2009-015337) (Ans. 3);
4. Co-pending Application No. 11/428,374 (docketed Appeal No.
2009-014878) (Ans. 3); and
5. Co-pending Application No. 11/428,376 (docketed Appeal No.
2010-002073) (Ans. 4).
B. The Examiner, under 35 U.S.C. § 103(a), rejected:
1. Claims 1, 2, 10, 17, 24-27, 29, 30, and 36 as unpatentable over
Burkhardt and Marino (Ans. 5-13);

3
Throughout this decision we refer to the Appeal Brief filed Jan. 12, 2009
(“App. Br.”), Answer mailed Apr. 15, 2009 (“Ans.”), and Reply Brief filed
May 8, 2009 (“Reply Br. (I)”) along with an incorporated Reply Brief filed
Apr. 8, 2008 (“Reply Br. (II)”) (see Reply Br. (I) 3).
4
Appellant identified all of these provisional obviousness-type double
patenting rejections as “not ripe for Appeal” (App. Br. 1), but did not submit
arguments or persuasive evidence alleging errors as to their merits.
Consequently, Appellant is considered to have waived argument as to merits
and these rejections will be sustained. See 37 C.F.R. § 41.37 (c)(1)(vii).
Appeal 2009-012842
Application 11/428,352

5
2. Claims 3, 11, 12, 18, and 19 as unpatentable over Burkhardt,
Marino, and Ohbitsu (Ans. 13-18);
3. Claims 4-6, 9, 13, 14, and 20 as unpatentable over Burkhardt,
Marino, and Seko (Ans. 18-26);
4. Claims 7, 8, 15, 16, and 22 as unpatentable over Burkhardt,
Marino, and Koh (Ans. 27-31);
5. Claim 21 as unpatentable over Burkhardt, Marino, Seko, and
Ohbitsu (Ans. 31-34);
6. Claim 23 as unpatentable over Burkhardt, Marino, Koh, and
Ohbitsu (Ans. 34-37);
7. Claims 28, 31, and 37-40 as unpatentable over Burkhardt,
Marino, and Kroening (Ans. 37-40); and
8. Claim 33 as unpatentable over Burkhardt, Marino, and Sales
(Ans. 41-43).
Issues
1. Did the Examiner err in rejecting claims 1 and 10 under 35 U.S.C. §
103(a) because Burkhardt and Marino alone or in combination do not
teach or fairly suggest configuring soft assets such that they can be
arbitrarily uninstalled without creating system instability? App. Br.
34-37.
2. Did the Examiner err in rejecting claim 17 by failing to set out a prima
facie case of obviousness with a proper analysis of a recited means-
plus-function limitation? App. Br. 29-30.
Appeal 2009-012842
Application 11/428,352

6
3. Did the Examiner err in rejecting claims 3, 11, 12, 18, and 19 under
35 U.S.C. § 103(a) because Burkhardt, Marino, and Ohbitsu alone or
in combination do not teach or fairly suggest the claimed combination
of elements? App. Br. 37-39.
4. Did the Examiner err in rejecting claims 4-6, 9, 13, 14, and 20 under
35 U.S.C. § 103(a) because Burkhardt, Marino, and Seko alone or in
combination do not teach or fairly suggest the claimed combination of
elements? App. Br. 39-41.
5. Did the Examiner err in rejecting claims 7, 8, 15, 16, and 22 under 35
U.S.C. § 103(a) because Burkhardt, Marino, and Koh alone or in
combination do not teach or fairly suggest the claimed combination of
elements? App. Br. 41-42.
6. Did the Examiner err in rejecting claim 21 under 35 U.S.C. § 103(a)
because Burkhardt, Marino, Seko, and Ohbitsu alone or in
combination do not teach or fairly suggest the claimed combination of
elements? App. Br. 42-43.
7. Did the Examiner err in rejecting claim 23 under 35 U.S.C. § 103(a)
because Burkhardt, Marino, Koh, and Ohbitsu alone or in combination
do not teach or fairly suggest the claimed combination of elements?
App. Br. 43-44.
8. Did the Examiner err in rejecting claims 28, 31, and 37-40 under 35
U.S.C. § 103(a) because Burkhardt, Marino, and Kroening alone or in
Appeal 2009-012842
Application 11/428,352

7
combination do not teach or fairly suggest the claimed combination of
elements? App. Br. 44-47.
9. Did the Examiner err in rejecting claim 33 under 35 U.S.C. § 103(a)
because Burkhardt, Marino, and Sales alone or in combination do not
teach or fairly suggest the claimed combination of elements? App.
Br. 47-48.

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
1. Burkhardt teaches:
A computerized method and system for installing programs on
a destination computer. A reference computer ha[s] an
operating system installed thereon [and also] stores . . . one or
more fully installed programs. The operating system [and]
installed programs . . . define a reference image that is copied to
a destination computer. . . . [A configuration] script . . . directs
an installation utility to attach [a] selected program to complete
the installation thereof on the destination computer and to
detach the remaining programs not selected for installation.
(Abstract.)

2. The Examiner acknowledges that “Burkhardt does not
expressly disclose that the installed soft assets are free of interoperability
problems and validated such that all the software applications in the superset
do not conflict with each other” (Ans. 6).
Appeal 2009-012842
Application 11/428,352

8
3. Marino teaches a system and method for installation of stored
software on computer systems (col. 1, ll. 6-9). Such software may be a
stored operating system, one or more application programs, other program
modules, and program data that “interoperate and may be shared” (col. 4, ll.
55-62).

PRINCIPLES OF LAW
Obviousness “analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l Co. v. Teleflex Inc. 550 U.S. 398, 418
(2007).
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed . . . .
(Id.).

ANALYSIS
Appellant’s extensive arguments and cited evidence, including the
Wesley G. Miller Declaration under 37 C.F.R. § 1.131 filed May 14, 2007,
have been carefully considered to the end of according them every
Appeal 2009-012842
Application 11/428,352

9
consideration to which they are entitled under the law.
5
Based on this
review of the obviousness rejections in light of Appellant’s contentions, we
disagree with Appellant’s conclusions.

Rejection over Burkhardt and Marino
I
Appellant asserts the patentability of independent claim 1 (App. Br.
35-36) and relies substantially on the same arguments by reference for
asserting the patentability of independent claim 10 (App. Br. 36-37).
Appellant appears to particularly argue that Burkhardt and Marino
alone or in combination are deficient as to teaching or fairly suggesting
configuring stored soft assets so they can be arbitrarily uninstalled without
creating system instability (App. Br. 35). Addressing this argument, the
Examiner finds Burkhardt teaches storing:
[soft assets] configured to be arbitrarily uninstalled
without creating system instability (see, for example, paragraph
[0028], lines 6-10, which show a storage medium of a target
computer having a reference image, paragraph [0026], lines 1-
14, which shows that the reference image comprises separately

5
Though Declarant on page 1 testifies that the “Shapiro application
11/428,369” was carefully studied, the 11/428,352 application, which is the
application of this appeal, is nowhere identified by Declarant. Appellant
also does not appear to explicitly refer to the Declaration for asserted
contentions directed to overcoming rejections. Consequently, the
Declaration is not further addressed in the opinion.
Appeal 2009-012842
Application 11/428,352

10
selectable, pre-installed soft assets, including pre-installed
software applications, and paragraph [0030], lines 8-11, which
shows that the soft assets are configured to be arbitrarily
uninstalled, and see, for example, paragraph [0029], lines 17-
19, which shows that conflicts and instability are prevented, and
paragraph [0031], lines 1-9, which shows that the soft assets
work correctly with an operating system) . . . .
(Ans. 5-6.) Reviewing the Examiner’s cited Burkhardt disclosures, we agree
with and adopt the Examiner’s identified findings (accord FF 1). The
Examiner additionally reasons that:
Burkhardt is directed to configuring a target computer for an
end user, including configuring the hard drive to result in “the
end user's desired final configuration” (paragraph [0033], lines
1-7). Common sense suggests that the end user would not
desire the final configuration of his or her computer to suffer
from “system instability” or “interoperability problems.”
Likewise, common sense suggests that the OEM in Burkhardt
would not “seal the machine for shipping to the end user”
(paragraph [0032], lines 14-16) in a “half-baked” configuration
that suffers from such problems.
(Ans. 51-52). Weighing this reasoning in context with a record that lacks
persuasive contradicting evidence, we agree with and adopt the Examiner’s
conclusion as to Burkhardt’s teachings. KSR, 550 U.S. at 418. Accordingly,
we also agree with and adopt the Examiner’s conclusion that Burkhardt
renders obvious the disputed limitation as to configuring soft assets to be
arbitrarily uninstalled without creating system instability.
Appeal 2009-012842
Application 11/428,352

11
For the foregoing reasons we will sustain the rejection of independent
claims 1 and 10. We also will sustain the rejection of claim 2 that depends
from claim 1, which is not separately argued.
II
Appellant contends (App. Br. 29-30) the Examiner erred in rejecting
claim 17 by not providing a proper analysis of a recited means-plus-function
limitation, and, thereby, failed to set out a prima facie case of obviousness.
6

The Examiner responds with the following analysis for the disputed
limitation:
Appellant characterizes the recited “means for subtractive
installation” as the “gryphing API” described in the
specification [App. Br. 17-18]. As noted above [Ans. 44-45],
“gryphing” is a fabricated term for removing. Accordingly, in
the context of “subtractive installation,” a reasonable
interpretation of the term “gryphing” is uninstalling. The
abbreviation “API,” as known to those of ordinary skill in the
art, refers to an application programming interface. Thus, the
“means for subtractive installation” recited in claim 17 amounts
to an application programming interface for
uninstalling soft assets from the intransient signal carrier.

6
The disputed limitation reads: “means for subtractive installation of
selected unwanted assets to leave a customized set of installed assets without
rebooting during the subtractive installation.”
Appeal 2009-012842
Application 11/428,352

12
(Ans. 49). The Examiner further responds with identifications from
Burkhardt as to equivalent teachings (id.; see Burkhardt ¶¶ [0027], [0029],
[0058], and [0108]). Appellant is silent in the Reply Briefs as to the claim
analysis and findings from Burkhardt’s disclosures set out in the Response to
Arguments section of the Examiner’s Answer. Instead, for the first time
Appellant asserts the Examiner erred in the rejection of claim 17 by
combining Burkhardt and Marino and concluding the combination teaches or
fairly suggests a different claim 17 limitation (Reply Br. (II) 7). Appellant’s
contentions are found unavailing.
Reviewing in context with the record both the Examiner’s identified
analysis of the disputed limitation and also findings from Burkhardt’s
disclosures (Ans. 49), we agree with and adopt the Examiner’s findings,
reasoning with underpinning rationale, and conclusion that Burkhardt’s
disclosures render the disputed limitation obvious. Appellant’s first time
assertion in Reply Brief (II) that the Examiner erred in concluding combined
references render claim 17 obvious is untimely made and consequently is
considered waived and unavailing. See Cross Medical Products, Inc. v.
Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1321 n.3 (Fed. Cir. 2005).
It is noted, though, that as stated supra, the obviousness rejections have been
reviewed, and based on that review the record is found to support the
Examiner identified findings (accord FF 1-3) for the rejection of claim 17
(Ans. 9-10).
Appeal 2009-012842
Application 11/428,352

13
For the foregoing reasons we will sustain the rejection of independent
claim 17.
III
No arguments or evidence directed to overcoming the rejection of
claims 24-27, 29, 30, and 36 appear in the Appeal Brief. In Reply Brief (II)
however Appellant for the first time, without predicate argument in the
Appeal Brief, asserts arguments contending that the Examiner erred in
concluding claims 24-27, 29, 30, and 36 are obvious (Reply Br. (II) 7-10).
By being asserted for the first time in a Reply Brief, these arguments are
considered waived and unavailing. See Cross Medical Products, 424 F.3d at
1321 n.3. Accordingly, we will sustain the rejection of claims 24-26 that
depend from claim 1, and we also sustain the rejection of claims 27, 29, 30,
and 36.
Rejection over Burkhardt, Marino, and Ohbitsu
Upon careful review, we find Appellant’s arguments (App. Br. 37-39;
Reply Br. (II) 10-11) unavailing that the Examiner erred in concluding that
claims 3, 11, 12, 18, and 19 are obvious (Ans. 14-18). Based on the record,
we adopt the Examiner’s findings and reasons as our own, and we also adopt
the Examiner’s response to Appellant’s Appeal Brief (Ans. 54-56). See
KSR, 550 U.S. at 418, 421 (An ordinarily skilled artisan is a person of
ordinary creativity, not an automaton; as such the Board can take into
Appeal 2009-012842
Application 11/428,352

14
account the inferences and creative steps of such a person.). Accordingly,
we will sustain the rejection of claims 3, 11, 12, 18, and 19.
Rejection over Burkhardt, Marino, and Seko
Upon careful review, we find Appellant’s arguments (App. Br. 39-43
(N.B. claims 4, 13, and 20 are further argued with claim 21 at App. Br. 42-
43; Reply Br. (II) 11-12) unavailing that the Examiner erred in concluding
that claims 4-6, 9, 13, 14, and 20 are obvious (Ans. 18-26). Based on the
record, we adopt the Examiner’s findings and reasons as our own, and we
also adopt the Examiner’s response to Appellant’s Appeal Brief (Ans. 56-
57). Accordingly, we will sustain the rejection of claims 4-6, 9, 13, 14, and
20.
Rejection over Burkhardt, Marino, and Koh
Upon careful review, we find Appellant’s arguments directed to claim
7 (App. Br. 41-42; Reply Br. (II) 12) are unavailing that the Examiner erred
in concluding that claim 7 and similar claims 8, 15, 16, and 22 are obvious
(Ans. 27-31). Based on the record, we adopt the Examiner’s findings and
reasons as our own, and we also adopt the Examiner’s response to
Appellant’s Appeal Brief (Ans. 58-59). Accordingly, we will sustain the
rejection of claims 7, 8, 15, 16, and 22.

Appeal 2009-012842
Application 11/428,352

15
Rejection over Burkhardt, Marino, Seko, and Ohbitsu
Upon careful review, we find Appellant’s arguments (App. Br. 43-44;
Reply Br. (II) 12-13) unavailing that the Examiner erred in concluding that
claim 21 is obvious (Ans. 31-34). Based on the record, we adopt the
Examiner’s findings and reasons as our own, and we also adopt the
Examiner’s response to Appellant’s Appeal Brief citing to findings and
reasons with underpinning rationale directed to claim 4 (Ans. 56, 57, and
59). Accordingly, we will sustain the rejection of claim 21.
Rejection over Burkhardt, Marino, Koh, and Ohbitsu
Upon careful review, we find Appellant’s arguments (App. Br. 43-44;
Reply Br. (II) 13) unavailing that the Examiner erred in concluding that
claim 23 is obvious (Ans. 34-37). Based on the record, we adopt the
Examiner’s findings and reasons as our own, and we also adopt the
Examiner’s response to Appellant’s Appeal Brief citing to findings and
reasons with underpinning rationale directed to claim 7 (Ans. 58-59).
Accordingly, we will sustain the rejection of claim 23.

Rejection over Burkhardt, Marino, and Kroening
Upon careful review, we find Appellant’s arguments (App. Br. 44-47;
Reply Br. (II) 13-14) unavailing that the Examiner erred in concluding that
claims 28, 31, and 37-40 are obvious (Ans. 37-40). Based on the record, we
adopt the Examiner’s findings and reasons as our own, and we also adopt the
Appeal 2009-012842
Application 11/428,352

16
Examiner’s response to Appellant’s Appeal Brief (Ans. 59-62).
Accordingly, we will sustain the rejection of claims 28, 31, and 37-40.
Rejection over Burkhardt, Marino, and Sales
Upon careful review, we find Appellant’s arguments (App. Br. 47-48;
Reply Br. (II) 15) unavailing that the Examiner erred in concluding that
claim 33 is obvious (Ans. 41-43). Based on the record, we adopt the
Examiner’s findings and reasons as our own, and we also adopt the
Examiner’s response to Appellant’s Appeal Brief (Ans. 62-64).
Accordingly, we will sustain the rejection of claim 33.
ORDER
The Examiner’s decision rejecting claims 1-31, 33, and 36-40 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)(v).

AFFIRMED

kis.