Ex Parte Singh

Board of Patent Appeals and Interferences

Jan 18, 2012

10882721 (B.P.A.I. Jan. 18, 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.
10/882,721 07/01/2004 Jitendra K. Singh 10960773-5 4068
7590 01/19/2012
HEWLETT-PACKARD COMPANY
Intellectual Property Administration
P.O. Box 272400
Fort Collins, CO 80527-2400
EXAMINER
MAHMOOD, REZWANUL
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
01/19/2012 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 JITENDRA K. SINGH
____________________

Appeal 2009-012195
Application 10/882,721
Technology Center 2100
____________________

Before MAHSHID D. SAADAT, ERIC S. FRAHM, and ERIC B. CHEN,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012195
Application 10/882,721

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 14 and 15.1 We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
Exemplary Claim
Exemplary independent claim 14 under appeal, with emphasis added,
reads as follows:
14. A method for verifying system configuration
comprising:
generating configuration information for a managed
system that indicates existing software and hardware residing
on the managed system;
sending the configuration information from the managed
system to a management system;
comparing, by the management system, the configuration
information from the managed system with database
information that indicates software and hardware supported by
the management system in order to generate validity
information that indicates any software or hardware on the
managed system that is not supported by the management
system; and
sending the validity information from the management
system to the managed system.

1 Claims 1, 2, and 4-6 have been canceled. Claims 3 and 7-13 stand
withdrawn as being directed to a non-elected invention (Requirement for
Restriction/Election, mailed Oct. 18, 2007, at 2-4).
Appeal 2009-012195
Application 10/882,721

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The Examiner’s Rejections
(1) The Examiner rejected claims 14 and 15 under 35 U.S.C. § 112,
first paragraph, as failing to provide adequate written description of the
claimed invention. Ans. 3-4.
(2) The Examiner rejected claim 15 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter (see Final Rej. 5). Because the
Examiner has withdrawn the rejection of claim 15 under 35 U.S.C. § 101 in
the Answer (Ans. 8), we do not reach the merits or otherwise review this
rejection in our decision. Accordingly, we have not considered Appellant’s
arguments in the Appeal Brief regarding this rejection (see App. Br. 11-13).
(3) The Examiner rejected claims 14 and 15 as being unpatentable
under 35 U.S.C. § 103(a) over Nakagawa (US 5,835,911) and Frye (US
6,038,586). Ans. 4-7.
Appeal 2009-012195
Application 10/882,721

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Appellant’s Contentions
Appellant contends (App. Br. 10-11) that the Examiner erred in
rejecting claims 14 and 15 under 35 U.S.C. § 112, first paragraph, because
claims 14 and 15 are adequately supported by Figure 5 (step 357) and page
9, lines 7-12 of the Specification. Appellant contends that the information
within document 107 is the validity information that indicates software or
hardware on the managed system 10 that is not supported by the
management system 50 (App. Br. 10-11). Appellant further argues (App.
Br. 11) that the validity information 107 is described in the Specification as
being sent from management system 50 to the managed system 10 (Spec.
9:9-12).
Appellant also contends (App. Br. 13-22; Reply Br. 5-7) that the
Examiner erred in rejecting claims 14 and 15 under 35 U.S.C. § 103(a)
because:
(1) Nakagawa and Frye fail to disclose or suggest validity information
(App. Br. 15-16; Reply Br. 5-7);
(2) Frye only determines when to update software, and does not
disclose or suggest generating validity information that indicates any
software or hardware on the managed system that is not supported by the
management system (App. Br. 15-16);
(3) Frye’s column 2, lines 22-26 and column 6, lines 11-21 do not
disclose or suggest validity information (App. Br. 17-18); and
(4) Nakagawa and Frye fail to disclose or suggest generating validity
information (Reply Br. 5-7).
Appeal 2009-012195
Application 10/882,721

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Issues on Appeal
Based on Appellant’s arguments, the following two issues are
presented on appeal:
(1) Did the Examiner err in determining that the originally filed
Specification fails to reasonably convey to one of ordinary skill in the art
that Appellant had possession of the claim limitation “validity information
that indicates any software or hardware on the managed system that is not
supported by the management system,” as set forth in claims 14 and 15?
(2) Did the Examiner err in rejecting claims 14 and 15 as being
obvious because the combination of Nakagawa and Frye fails to teach or
suggest generating “validity information that indicates any software or
hardware on the managed system that is not supported by the management
system,” as set forth in claims 14 and 15 on appeal?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief (App. Br. 10-11 and 13-22) and Reply Brief
(Reply Br. 2-7) that the Examiner has erred. We agree with Appellant’s
conclusions specifically listed above.
§ 112, First Paragraph, Rejection
Element 107 is described in the Specification as an “HTML
document” containing information regarding “[t]he differences between the
configuration of the system being currently registered and the standard
configuration” (Spec. 9:8-9). Because the document 107 contains
information that indicates software or hardware that is not supported by the
management system as set forth in the claims (Spec. 9:8-9), and the
Appeal 2009-012195
Application 10/882,721

6
document 107 (i.e., validity information) is sent from the management
system to the managed system (compare last clause of claim 14 with Spec.
9:10-12), the originally filed Specification did reasonably convey to one of
ordinary skill in the art that Appellant had possession of the claim
limitations “validity information” as recited in claims 14 and 15.
§ 103(a) Rejection
The Examiner asserts that Frye discloses indicating if a submission of
a user created software or hardware configuration criteria is not satisfied
(i.e., a user submission is not found or recognized) (Ans. 11-12). However,
our close review of Frye reveals that Frye merely describes updating
software on a computer connected to a network, including executing
software when a set of hardware or software criteria are met (Abs., ll. 12-21;
Figs. 2C and 2G). Although Frye compares configuration information, Frye
is silent as to generating any validity information that indicates
incompatibility.
Frye compares a user selected configuration for a workstation to a list
of hardware and software criteria (col. 2, ll. 16-26; col. 6, ll. 12-16; step 68
in Fig. 4). If all the criteria are met, then the system proceeds to step 72 (col.
6, ll. 16-18), and the system updates the software (col. 6, ll. 23-28; step 72 in
Fig. 4). And, if all the criteria are not met (i.e., user submission not found or
software/hardware is not supported), the system proceeds to step 70 where
the procedure number is incremented, and then proceeds to step 64 (col. 6, ll.
18-20). At step 64 (see Fig. 4), the system determines if there is a procedure
(col. 6, ll. 1-2), and if one cannot be found, “the system proceeds to step 66
in which the program terminates” (col. 6, ll. 10-11). Thus, Frye simply
terminates the procedure if the system determines that there is any
Appeal 2009-012195
Application 10/882,721

7
configuration incompatibility. This is not the same as generating validity
information indicating configurations that are not supported.
In view of the foregoing, Nakagawa and Frye, taken individually or in
combination, fail to teach or suggest generating “validity information that
indicates any software or hardware on the managed system that is not
supported by the management system,” as recited in claims 14 and 15.

CONCLUSIONS
(1) Appellant has demonstrated that the Examiner erred in
determining that the originally filed Specification fails to reasonably convey
to one of ordinary skill in the art that Appellant had possession of the claim
limitation “validity information,” and in rejecting claims 14 and 15 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
(2) Appellant has also demonstrated that the Examiner erred in
rejecting claims 14 and 15 as being unpatentable under 35 U.S.C. § 103(a).

DECISION
The Examiner's § 112, first paragraph, and § 103(a) rejections of
claims 14 and 15 are reversed.

REVERSED

msc