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`Mimi
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`« IN THE UNlTED STATES PATENT AND TRADEMARK OFFICE
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`PATENI APPLICATION
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`in re Application of:
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`YASSER ALSAFADI ET AL.
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`1
`,Appln.No.: .09/343.607
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`1
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`Filed: JUNE 30. 1999
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`Examiner: J.Q. CHAVlS
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`GrOup Art Unit: 2122
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`For:
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`RECONFIGURATION MANAGER
`FOR CONTROLLING UPGRADES...
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`April 26. 2002
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`, 71 .
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`RECEIVED:
`MAY 1 o 2002'.
`mmm
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`Honorable Commissioner of Patents and Trademarks
`Washington, 0.0. 20231
`, SIR:
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`mug
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`This is in response to the Office Action dated February 14, 2002, for the above-
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`identified application.
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`REMARKS
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`Claims 1-21 stand rejected under 35 U.S.C. 103(a) as being unpatentable over
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`APPLE .
`EXHIBIT 1008 — PAGE 0001
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`Carrol et al. (U.S. Patent No. 6,301,707).
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`Applicants respectfully submit that the pending claims are patentable for at least
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`the foll0wlng reasons.
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`reconfiguration of an electronic device. the method comprising the steps of receiving -
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`information representative of a reconfiguration request relating to the electronic device,
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`determining at least one device component required to implement the reconfiguration
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`request, comparing the determined component and information specifying at least one
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`additional component currently implemented in the electronic device with at least one of
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`a list of known acceptable configurations for the electronic device and a list of known I
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`unacceptable configurations for the electronic device; and generating information '
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`indicative of an approval or a denial of the reconfiguration request based at least in part
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`on the result of the comparing step.
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`Independent claims 11 and 21 recite similar
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`limitations.
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`Canal. 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
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`comprises a plurality of components. Only selected components are needed by the
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`target system. A profile of the target system is created when the target system is
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`defined; the profile defines the components needed by the target system. To configure
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`the target system, an installation process installs in the target system only components
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`from the source that are defined in the profile for the target system. The source may be
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`a storage medium or a separate installation system.
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`APPLE 7
`EXHIBIT 1008 - PAGE 0002
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`Carrol
`fails to teach at
`lea'st
`the limitations of
`(1)
`receiving information
`representative of a reconfiguration request relating to the electronic device and (2)
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`comparing the determined component and information specifying at least one additional
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`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
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`unacceptable configurations for the electronic device.
`The structure recited in claim 1,‘ enables efficient techniques for incrementally
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`upgrading or otherwise reconfiguring electronic devices. The invention ensures that
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`, upgrades are compatible with the configuration of a given device before they are
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`implemented in that device, thereby avoiding problems associated with inconsistent
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`upgrades, as further decribed on page 4I lines 13-16. Applicants can find nothing in
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`Carrol that shows. teaches or describes the above-discussed limiations.
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`The Office Action indicates
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`that
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`the limitation of
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`receiving information
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`representative of a reconfiguration request is inherently shown in Carrol in col. 4, lines
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`37-49. Applicants disagreee.
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`In this section, Carrol
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`teaches an apparatus for
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`performing the operation of the invention and that the “apparatus may be specially
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`constructed for the required purpose or it may comprise a general-purpose computer as
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`selectively activated or reconfigured by a computer program stored in the computer."
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`Reconfiguring a general-purpose computer to perfom the Carrol
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`invention does not
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`teach, suggest or imply the Iimitalotn of receiving information representative of a
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`reconfiguration request relating to the electronic device.
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`Although. as the Office Action indicates. Carrol teaches the use of a profile
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`comparison to install software, applicants respfully disagrees with the Office Action's
`3
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`APPLE
`EXHIBIT 1008 - PAGE 0003
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`conclusion that this suggests, imply or teaches the claimed limitation of comparing the
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`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
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`acceptable configurations for the electronic device and ailist of known unacceptable
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`configurations for the electronic device. Carrol. in fact, teaches away from the claimed
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`invention. via Carrol specific reliance on the use of a profile approach. Moreover, the
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`Office Action does not provide a rationale for the modification (only that there may be a
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`common result).
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`In In re Lee, Slip Op. 00-1158 (Fed. Cir. Jan. 18, 2002) the court
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`indicated that:
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`The determination of patentability on the ground of
`unobviou$ness is ultimately one of judgment.
`In furtherance of
`the judgmental process. the patent examination procedure
`serves both to 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 knowledge to negate patentability. that
`knowledge must be articulated and placed on the record. The
`failure to do so is not consistent with either effective
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`administrative procedure or effective judicial review. The board
`cannot rely on conclusory statements when dealing with
`particular combinations of prior art and specific claims, but must
`set forth the rationale on which it relies.
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`Accordingly, Applicants respectfully submit that there would have been no
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`motivation for one of ordinary skill to attempt to such a modification.
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`Applicants further respectfully note that it is incumbent upon the Examiner
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`to establish a factual basis to support the legal conclusion of obviousness. See In re
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`HE. 837 F.2d 1071. 1073. 5 ‘USPQZd 1596. 1598 (Fed. Cir. 1988).
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`In so doing, the
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`4
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`APPLE
`EXHIBIT 1008 - PAGE 0004
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`Examiner is expected to make the factual determinations set for in Graham v. John
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`Deere Co., 383 US. 1, 17-18, 148 USPQ 459, 467 (1966), and to provide a reason
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`why one having ordinary skill in the pertinent art would have been led to modify the
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`prior art or to combine prior art references to arrive at the claimed invention. Such
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`reason must stem from some teaching, suggestion or implication in the prior art as a
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`whole or knowledge generally available to one having ordinary skill in the art. yflirgyal
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`Inc. v. Rudkin—Wiley Corp., 837 F.2d 1044, 1051, 5 USPQZd 1434, 1438 (Fed. Cir.),
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`cert. denied, 488 U.S. 825 (1988). These showings by the Examiner are an essential
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`part of complying with the burden of presenting a prima facie case of obviousness.
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`Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQZd 1443. 1444 (Fed. Cir. 1992).
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`Applicants respectfully submit the Office Action has failed to make a prima facie case
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`of obviousness.
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`A review of the other art of record has failed to reveal anything which,
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`in
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`Applicants' opinion, would remedy the deficiencies of the art discussed above, as a
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`reference against the independent claims herein. These claims are therefore believed
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`patentable over the art of record.
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`The other claims in this application are each dependent from the independent
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`claim discussed above and are therefore believed patentable for the same reasons.
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`Since each dependent claim is also deemed to define an additional aspect of the
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`invention, however, the individual consideration of the patentability of each on its own
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`merits is respectfully requested.
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`The applicants submit, that the claims. as they now stand,
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`fully satisfy the
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`requirements of 35 U.S.C. 103.
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`In view of the foregoing amendments and remarks,
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`APPLE
`EXHIBIT 1008 - PAGE 0005
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`favorable reconsideration and eariy passage to issue of the present application are
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`respectfully solicited.
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`Applicants' undersigned attorney may be reached by telephone at the number
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`given below.
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`Respectfully submitted,
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`Daniel Piotrowski, Reg. 42,079
`Attorney for Applicants
`Phone (914) 333-9609
`Fax:
`(914)332-0615
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`Rick de Pinho
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`Reg. 41,703
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`Mail all correspondence to:
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`US PHILIPS CORPORATION
`580 White Plains Road
`Tarrytown, NY 10591
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`CERTIFICATE OF MAILING
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`It
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`is hereby certified that this correspondence is being deposited with the
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`United States Postal Service as first-class mail in an envelope addressed to:
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`COMMISSIONER OF PATENTS AND TRADEMARKS
`Washington, DC. 20231
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`
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`Rick de Pinho, Reg. 41 .703’
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`APPLE
`EXHIBIT 1008 - PAGE 0006
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