"
`-
`Examiner: J.Q. CHAVIS
`
`Group Art Unit: 2122
`
`).-
`o cin fe) Application of:
`
`)
`YASSERALSAFADI ET AL.
`sop...
`ae
`:
`me
`)
`Appin. No.: . 09/343,607
`)
`Filed: JUNE 30, 1999
`For:|RECONFIGURATION MANAGER
`,
`FOR CONTROLLING UPGRADES...
`| oe
`RECEIVED:
`
`)—April 26, 2002 MAY10 2002 .
`TechnologyCenter2100
`
`
`
`SaukOFPAPERS:
`BARNA LED:
`
`
`PATENT APPLICATION
`
`A IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`‘Honorable Commissioner of Patents and Trademarks
`‘Washington, D.C. 20231
`SIR:
`
`RESPONSE
`
`This is in response to the Office Action dated February 14, 2002, for the above-
`
`identified application.
`
`REMARKS
`
`Claims 1-21 stand rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`APPLE.
`
`-
`Examiner: J.Q. CHAVIS
`
`Group Art Unit: 2122
`
`).-
`o cin fe) Application of:
`
`)
`YASSERALSAFADI ET AL.
`sop...
`ae
`:
`me
`)
`Appin. No.: . 09/343,607
`)
`Filed: JUNE 30, 1999
`For:|RECONFIGURATION MANAGER
`,
`FOR CONTROLLING UPGRADES...
`| oe
`RECEIVED:
`
`)—April 26, 2002 MAY10 2002 .
`TechnologyCenter2100
`
`
`
`SaukOFPAPERS:
`BARNA LED:
`
`
`PATENT APPLICATION
`
`A IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`‘Honorable Commissioner of Patents and Trademarks
`‘Washington, D.C. 20231
`SIR:
`
`RESPONSE
`
`This is in response to the Office Action dated February 14, 2002, for the above-
`
`identified application.
`
`REMARKS
`
`Claims 1-21 stand rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`APPLE.
`
`EXHIBIT 1008 - PAGE 0001
`
`
`
`-
`
`
`
`
`
`Carrol et al. (U.S. Patent No. 6,301,707).
`
`
`
`Applicants respectfully submit that the pending claims are patentable for at least
`
`the following reasons.
`
`:
`
`Independentclaim 4 recites a processor-implemented method for controllin
`reconfiguration of an electronic device, the method comprising the steps of receiving’ :
`information representative of a reconfiguration request relating to the electronic device,
`
`determining at least one device component required to implement the reconfiguration
`
`request, comparing the determined component and information specifying at least one
`
`additional component currently implementedin the electronic device with atleast one of
`
`
`
`
`
`
`a list of known acceptable configurations for the electronic device andalist of known
`
`unacceptable configurations for the electronic device; and generating information —
`
`indicative of an approval or a denial of the reconfiguration request basedatleast in part
`
`on the result of the comparing step.
`
`Independent claims 11 and 21 recite similar
`
`limitations.
`
`Carrol, as read by the Applicants, relates to a software system that is selectively
`installed from a source into a target system according to a profile. The software system
`
`comprises a plurality of components. Only selected components are needed by the
`
`target system. A profile of the target system is created when the target system is
`
`defined; the profile defines the components needed by the target system. To configure
`the target system, an installation processinstalls in the target system only components
`from the source that are defined in the profile for the target system. The source may be
`
`a storage medium or a separate installation system.
`
`APPLE _
`
`EXHIBIT 1008 - PAGE 0002
`
`
`
`
`
`
`
`
`
`
`
`Carrol
`fails to teach at
`least
`the limitations of
`(1)
`receiving information
`representative of a reconfiguration request relating to the electronic device and (2)
`comparing the determined component andinformation specifying at least one additional
`
`‘component currently implementedin the electronic device with at least one ofa list of
`known acceptable configurations for
`the electronic device and a list of known
`unacceptable configurations for the electronic device.
`The structure recited in claim 1, enables efficient techniques for incrementally
`
`upgrading or otherwise reconfiguring electronic devices. The invention ensures that
`
`- upgrades are compatible with the configuration of a given device before they are
`
`implemented in that device, thereby avoiding problems associated with inconsistent
`
`upgrades, as further decribed on page4,lines 13-16. Applicants can find nothing in
`
`Carrol! that shows, teaches or describes the above-discussedlimiations.
`
`The Office Action indicates
`
`that
`
`the limitation of
`
`receiving information
`
`representative of a reconfiguration requestis inherently shownin Carrolin col. 4, lines
`37-49. Applicants disagreee.
`In this section, Carrol
`teaches an apparatus for
`performing the operation of the invention and that the “apparatus may be specially
`constructed for the required purposeorit may comprise a general-purpose computer as
`selectively activated or reconfigured by a computer program stored in the computer.”
`Reconfiguring a general-purpose computer to perfom the Carrol
`invention does not
`teach, suggest or imply the limitaiotn of receiving information representative of a
`
`reconfiguration requestrelating to the electronic device.
`Although, as the Office Action indicates, Carrol teaches the use of a profile
`comparison to install software, applicants respfully disagrees with the Office Action’s
`3
`
`APPLE
`
`EXHIBIT 1008 - PAGE 0003
`
`
`
`
`
`
`
`conclusion that this suggests, imply or teaches the claimedlimitation of comparing the
`
`determined component and information specifying at least one additional component
`currently implemented in the electronic device with at least one of a list of known
`
`acceptable configurations for the electronic device and a.list of known unacceptable
`
`configurations for the electronic device. Carrol, in fact, teaches away from the claimed
`
`invention, via Carrol specific reliance on the use of a profile approach. Moreover, the
`
`Office Action does not providea rationale for the modification (only that there may be a
`
`commonresult). In In re Lee, Slip Op. 00-1158 (Fed. Cir. Jan. 18, 2002) the court
`
`indicated that:
`
`The determination of patentability on the ground of
`unobviousnessis ultimately one of judgment.
`In furtherance of
`the judgmental process, the patent examination procedure
`serves bothto find, and to place on the official record, that
`which has been considered with respect to patentability.
`In
`finding the relevant facts, in assessing the significance of the
`prior art, and in making the ultimate determination of the issue
`of obviousness, the examiner and the Board are presumed to
`act from this viewpoint. Thus when they rely on what they
`assert to be general knowledgeto negate patentability, that
`knowledge mustbe articulated and placed on the record. The
`failure to do so is not consistent with either effective
`administrative procedure oreffective judicial review. The board
`cannotrely on conclusory statements when dealing with
`particular combinations of prior art and specific claims, but must
`set forth the rationale on whichit relies.
`
`Accordingly, Applicants respectfully submit that there would have been no
`
`motivation for one of ordinary skill to attempt to such a modification.
`
`Applicants further respectfully note that it is incumbent upon the Examiner
`
`to establish a factual basis to support the legal conclusion of obviousness. See In re
`
`Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
`
`In so doing, the
`
`4
`
`
`
`APPLE
`
`EXHIBIT 1008 - PAGE 0004
`
`
`
`
`
`
`
`Examiner is expected to make the factual determinations set for in Graham v. John
`
`Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966), and to provide a reason
`
`why one having ordinary skill in the pertinent art would have been led to modify the
`
`prior art or to combine prior art references to arrive at the claimed invention. Such
`
`reason must stem from some teaching, suggestion or implication in the prior art as a
`
`whole or knowledge generally available to one having ordinary skill in the art. Uniroyal
`
`Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
`
`cert. denied, 488 U.S. 825 (1988). These showings by the Examinerare an essential
`
`part of complying with the burden of presenting a prima facie case of obviousness.
`
`Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
`
`Applicants respectfully submit the Office Action has failed to make a prima facie case
`
`of obviousness.
`
`A review of the other art of record has failed to reveal anything which,
`
`in
`
`Applicants’ opinion, would remedy the deficiencies of the art discussed above, as a
`
`reference against the independent claims herein. These claims are therefore believed
`
`patentable overthe art of record.
`
`The other claims in this application are each dependent from the independent
`
`claim discussed above and are therefore believed patentable for the same reasons.
`
`Since each dependent claim is also deemed to define an additional aspect of the
`
`invention, however, the individual consideration of the patentability of each on its own
`
`merits is respectfully requested.
`
`The applicants submit. that the claims, as they now stand,
`
`fully satisfy the
`
`requirements of 35 U.S.C. 103.
`
`In view of the foregoing amendments and remarks,
`5
`
`APPLE
`
`EXHIBIT 1008 - PAGE 0005
`
`
`
`
`
`favorable reconsideration and early passage to issue of the present application are
`
`respectfully solicited.
`
`Applicants' undersigned attorney may be reached by telephone at the number
`
`given below.
`
`
`
`Respectfully submitted, Mail all correspondenceto:
`
`US PHILIPS CORPORATION
`580 White Plains Road
`Tarrytown, NY 10591
`
`:
`,
`Danie! Piotrowski, Reg. 42,079
`Attorney for Applicants
`Phone (914) 333-9609
`Fax:
`(914) 332-0615
`
`Rick de Pinho
`Reg. 41,703
`
`CERTIFICATE OF MAILING
`
`is hereby certified that this correspondence is being deposited with the
`It
`United States Postal Serviceasfirst-class mail in an envelope addressedto:
`
`COMMISSIONER OF PATENTS AND TRADEMARKS
`Washington, D.C. 20231
`
` y.
`
`:
`
`Rick de Pinho, Reg. 41,703
`
`APPLE
`
`EXHIBIT 1008 - PAGE 0006
`
`
`
`
`
`
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