Ex Parte Zucker et al

Board of Patent Appeals and Interferences

Jul 12, 2012

11469022 (B.P.A.I. Jul. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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7
Ex parte BRIAN T. ZUCKER and WILLIAM L. BOLES 8
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Appeal 2011-002002 11
Application 11/469,022 12
Technology Center 3600 13
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Before ANTON W. FETTING, MEREDITH C. PETRAVICK, and 17
MICHAEL W. KIM, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL 20

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STATEMENT OF THE CASE1 1
Brian T. Zucker and William L. Boles (Appellants) seek review under 2
35 U.S.C. § 134 (2002) of a final rejection of claims 1-21, the only claims 3
pending in the application on appeal. We have jurisdiction over the appeal 4
pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellants invented a configuring information handling system with 6
an online sales method for providing performance information regarding an 7
intended use of the information handling system. (Specification 1: Field of 8
the Invention). 9
An understanding of the invention can be derived from a reading of 10
exemplary claim 1, which is reproduced below [bracketed matter and some 11
paragraphing added]. 12
1. A system 13
for enabling configuration of an information handling 14
system, 15
the system executing on a computer system, 16
the system comprising: 17

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed June 23, 2010) and the Examiner’s Answer (“Ans.,” mailed
August 5, 2010).
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[1] a configurator, 1
the configurator enabling a user to configure the 2
information handling system 3
with options according to user input, 4
the options being selected by the user during 5
configuration of the information handling 6
system, 7
the configurator including a validator, 8
the validator validating configuration of the 9
information handling system; 10
and, 11
[2] a performance information module, 12
the performance information module providing 13
performance information 14
based upon the options selected by the user during 15
configuration of the information handling system, 16
the performance information module presenting to a user 17
how each choice or change to an information 18
handling system configuration 19
during configuration of the 20
information handling system 21
configuration 22
effects performance of the information 23
handling system 24
for an intended use of the information 25
handling system; 26
[3] a checkout module, 27
the checkout module 28
presenting payment options 29
and 30
obtaining payment and delivery information; 31
[4] a database, 32
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the database 1
receiving information from 2
and 3
supplying information to 4
the configurator, the checkout module. 5
The Examiner relies upon the following prior art: 6
Abecassis US 6,038,367 Mar. 14, 2000
Bateman US 2004/0075750 A1 Apr. 22, 2004
Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable 7
over Bateman and Abecassis. 8
ISSUES 9
The issue of obviousness turns primarily on whether the independent 10
claims recitation of a claimed configurator, validator, and performance 11
information module does more than present configuration options for 12
selection and accept and validate the selection, as described by the 13
references. 14
FACTS PERTINENT TO THE ISSUES 15
The following enumerated Findings of Fact (FF) are believed to be 16
supported by a preponderance of the evidence. 17
Facts Related to the Prior Art 18
Bateman 19
01. Bateman is directed to managing the memory of a digital camera 20
in a flexible manner, so as to provide the user with high quality 21
data when memory is available, and to allow the user to continue 22
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to capture more image data even when the memory is fully 1
utilized. Bateman ¶ 0011. 2
02. The display module can display data stored in the memory module 3
and data captured by the capture module (before it is stored) for 4
preview purposes, and can also be used to receive instructions 5
from the user. This can be done by allowing the user to select one 6
of several options presented on the display module. Bateman ¶ 7
0029. 8
03. Bateman’s digital camera permits the user to select an image 9
quality (e.g., resolution, compression level, size, etc.) at which the 10
user desires to obtain the data. Bateman ¶ 0033. 11
04. The memory available in the memory module is checked to 12
determine whether sufficient memory to store the captured data at 13
a high quality setting is available. If enough memory is available, 14
the captured data is stored at the highest quality possible in the 15
memory module. Alternatively, if memory is available, the 16
captured data is stored at some predetermined high quality in the 17
memory module. The captured data is stored at the high (or 18
highest) quality in the memory module, regardless of the quality 19
setting for data capture specified by the user, if any. Bateman ¶ 20
0034. 21
05. Some image file formats allow maintaining image size/quality 22
data in a single file that can be resolved to multiple image quality 23
levels by a given algorithm. Such a file could be used to maintain 24
the low and high quality data in a single file. Bateman ¶ 0036. 25
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06. A single image file is stored in memory in a persistent fashion 1
with all the data in it for that image. The user specified settings 2
detailing level of compression and image resolution and image 3
width and height are stored separate from this file in a persistent 4
fashion by the camera. Only when the image data needs to be 5
downloaded to the host (pc or server), are the settings read by the 6
camera (or host) and applied to the file data by a compression 7
algorithm implemented in firmware, hardware, or software to 8
produce an output file based on the user's settings. Bateman ¶ 9
0037. 10
07. The image data can also be compressed on the fly by the camera 11
when the user chooses to review the image. The image can be 12
sampled, and/or resealed, and/or the aspect ratio adjusted to 13
produce an image that can be displayed on the camera's LCD (if it 14
has one). Or, to quicken the display process, this LCD display 15
image can be generated by the camera when the image is 16
originally captured, and this image is thereafter displayed on the 17
LCD to represent the image. Bateman ¶ 0038. 18
08. The user may review the data at the lower quality (e.g., on the 19
display module or on the host screen), and determine that he wants 20
the data at a higher quality. This determination could be based on 21
one or more of several factors, such as the importance of the data 22
to the user, the graininess of the data at the selected resolution, etc. 23
The user may then instruct the digital camera that he would like to 24
increase the quality of the data. When the digital camera receives 25
such an instruction, the camera extracts the higher quality data 26
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stored in the memory module and provides it to the user. 1
Bateman ¶ 0039-0040. 2
09. The user can communicate such an instruction to increase the 3
quality of the data to the digital camera in one of several ways. In 4
one embodiment, the user communicates this instruction to the 5
digital camera by interacting with software on the display module. 6
In one embodiment, it is possible for the user to specify which 7
aspects of quality of the data should be increased (e.g., increase in 8
resolution, increase in size, increase in frame rate, etc.). In one 9
embodiment, the user can specify by how much the various 10
aspects of quality of the data should be increased. In one 11
embodiment, the quality of the data is increased in pre-determined 12
increments, and can be increased repeatedly (until the maximum 13
data quality--that is, the quality at which the data has been stored 14
in the memory module -- is reached). For instance, the user can 15
keep pressing a button, and continue to obtain data of increased 16
quality (until an increase in quality is no longer possible). In one 17
embodiment, once the user is provided acceptable quality data, he 18
can choose to "retain" that setting. It is to be noted that at this 19
point the original (higher quality) data for that image continues to 20
be stored in memory. Thus the user can still, at a later point, 21
obtain data that is further improved in quality. Bateman ¶ 0041. 22
ANALYSIS 23
We are not persuaded by the Appellants’ argument that Bateman fails to 24
describe 25
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a configurator which enables a user to configure an information 1
handling system, much less such a configurator which includes 2
a validator which validates configuration of the information 3
handling system, much less a configurator which includes a 4
performance information module which provides performance 5
information based upon the options selected by the user during 6
configuration of the information handling system, much less 7
where the performance information module presents to a user 8
how each choice or change to an information handling system 9
configuration during configuration of the information handling 10
system configuration effects performance of the information 11
handling system for an intended use of the information handling 12
system, all as required by claim 1 and as substantially required 13
by claims 8 and 15. 14
Appeal Br. 5. 15
The claimed configurator, validator, and performance information 16
module does no more than present configuration options for selection, and 17
accept and validate the selection. As the claims do not narrow the manner in 18
which presentation of how each choice effects performance, any manner of 19
distinguishing the options where the effects are known in advance would be 20
within the scope of the claim. It is sufficient to provide any characterization, 21
however minimal, of each option to make such a presentation when the 22
effects are already known. 23
Such a selection occurs in multitudinous applications and indeed is 24
almost synonymous with graphic user interfaces. The Examiner selected a 25
reference describing using such an interface to set parameters for the 26
software in a camera. As the Examiner found, Bateman sets parameters for 27
picture quality by eliciting operator selection via a graphic user interface on 28
a display module. FF 02 and 03. This is within the scope of the 29
configurator and performance information module. The camera performs 30
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various tests to determine whether the selection is available, thus validating 1
the selection. FF 04 and 05. To the extent Appellants are arguing the 2
presence of an information handling system, every software program 3
handles information. 4
CONCLUSIONS OF LAW 5
The rejection of claims 1-21 under 35 U.S.C. § 103(a) as unpatentable 6
over Bateman and Abecassis is proper. 7
DECISION 8
The rejection of claims 1-21 is affirmed. 9
No time period for taking any subsequent action in connection with this 10
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 11
§ 1.136(a)(1)(iv) (2007). 12
13
AFFIRMED 14
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MP 18