Ex Parte 6243838 et al

Patent Trial and Appeal Board

Jun 23, 2014

90012329 (P.T.A.B. Jun. 23, 2014)

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.
90/012,329 05/30/2012 6243838 016295.4367 8491
27299 7590 06/23/2014
GAZDZINSKI & ASSOCIATES, PC
16644 WEST BERNARDO DRIVE
SUITE 201
SAN DIEGO, CA 92127
EXAMINER
YIGDALL, MICHAEL J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/23/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROUND ROCK RESEARCH LLC
____________

Appeal 2014-003947
Reexamination Control 90/012,329
Patent US 6,243,838 B1
1

Technology Center 3900
____________

Before JOHN A. EVANS, CATHERINE SHIANG, and MINN CHUNG,
Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
Introduction
These reexamination proceedings arose from a third-party request for
ex parte reexamination filed on May 30, 2012 by Baker Botts L.L.P. on
behalf of an anonymous third-party Requester.

1
The patent involved in this reexamination appeal proceeding (the “’838
Patent”) issued to Ji-hwan Liu, Ken Nguyen, and Karl Johnson on June 5,
2001. We refer to the Reexamination Final Rejection (“Reexam. Final
Rej.”), filed January 23, 2013; Appellant’s Appeal Brief (“Br.”), filed
August 26, 2013; and the Examiner’s Answer (“Ans.”), mailed October 8,
2013.
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Round Rock Research LLC, (“Appellant”), appeals under 35 U.S.C.
§ 134 from the Examiner’s decision finally rejecting Claims 2-5, 10, 16, 23,
28, 29, 34, 40- 48, 51-53, 55-61, and 63-67. Br. 4-5. Claim 1 has been
cancelled. Br. 16. Claims 6-9, 11-15, 17-22, 24-27, 30-33, 35-39, 49-50,
54, and 62 are patentable and/or confirmed. Reexam. Final Rej. 2.
We have jurisdiction over the appeal under 35 U.S.C. §§ 6, 134, and
306.
We AFFIRM.
Related Proceedings
Appellant declares that there are no related proceedings. Br. 27.
The Invention
The claims relate to a method of reporting a system failure in a server
system. See Abstract.
Claim 2 is illustrative of the appealed subject matter and is reproduced
below (Br. 16, Claims App’x) with disputed limitations italicized:
2. A method of reporting a system failure in a server
system, comprising:
detecting a system failure condition;
transmitting failure information related to the failure
condition to an independently functional system recorder;
storing the failure information related to the failure
condition in a system log;
reporting an occurrence of an event,
wherein the act of reporting an occurrence of an event
comprises reporting the occurrence of the event to a central
processing unit of the server system; and
accessing the system log to read the failure information
from the system log.

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The Prior Art
Daniel US 4,823,345 Apr. 18, 1989
Derr US 5,179,695 Jan. 12, 1993
Barrett US 5,323,393 June 21, 1994
Ward US 5,367,670 Nov. 22, 1994
Carbonneau US 5,586,250 Dec. 17, 1996
Goodrum US 5,822,512 Oct. 13, 1998
Compaq Computer Corporation, Netware Server Management, 1992,
(hereinafter “Compaq”).
Intel Corporation, LANDesk® Server Module Monitor, Technical Product
Summary, March 1995, (hereinafter “LANDesk”).
Intel Corporation, Intel AP450GX MP Server System Technical Product
Specification, February 1997, (hereinafter “Intel”).
The Rejections
1. Claims 2-5, 10, 16, 23, 28, 29, 34, and 40-42 stand rejected under 35
U.S.C. § 102(b) as anticipated by LANDesk.
2. Claims 43-48, 51-53, 55-57, 60, 61, and 63-65 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Intel and LANDesk.
3. Claims 58, 59, 66, and 67 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Intel, LANDesk, and Goodrum.

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ANALYSIS
ANTICIPATION
Claims 2-5, 10, 23, 28, 29, 34, and 40-42
Appellant traverses the rejection of independent Claims 2, 10, 23, 29,
34, and 40 (Br. 5) and contends that dependent Claims 3-5, 28, 41, and 42
are patentable for the same reasons as advanced for the independent claims.
Br. 8.
Appellant contends that prior art LANDesk fails to disclose “an
independently functional system recorder,” as recited in Claim 2. Br. 5.
Appellant contends that the term “independently functional,” as recited in
Claim 2, is used generally in the art to refer to a “standalone” device that is
able to function independently of other devices. Appellant cites the
prosecution history of the ’838 Patent:
The independently functional system recorder defined by
Applicant includes, in one embodiment, a microcontroller
operating independently of the server system that continuously
monitors system conditions in the event of a major system
failure, such as primary CPU crash or loss of server system
power.

Br. 5. Moreover, the’838 Patent incorporates by reference disclosures of US
6,202,160 (“the ‘160 Patent”):
The inventive computer server system and client computer
includes a distributed hardware environment management
system that is built as a small self-contained network of
microcontrollers. Operating independently of the system
processor and operating software, embodiments of the present
invention use separate processors for providing information
and managing the hardware environment including fans, power
supplies and temperature.
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App Br. 5-6. In other words, in Claims 2, 10, 23, 29, 34, and 40 of the ’838
Patent, the system recorder functions independently of the computer server
system that transmits the information to the system recorder. App Br. 6.
Appellant notes that the Examiner finds that the LANDesk Server Monitor
Module (SMM) DOS engine corresponds to the claimed “independently
functional system recorder.” Appellant contends, however, that the SMM
DOS engine is not disclosed as being able to function independently of the
apparatus which provides information thereto. The DOS engine is disclosed
as being an integral and central part of the SMM, and does not function
independently of the devices which provide information for storage at the
flash memory. Appellant contends that LANDesk discloses that “[t]he ISA
bus-master card [comprising the DOS engine] installs easily in one of the
server’s expansion slots.” Thus, Appellant argues, LANDesk does not
expressly or inherently describe any component of the server system which
one may reasonably argue corresponds to the “independently functional
system recorder” of Appellant’s Claims 2. Rather, LANDesk is specifically
aimed at providing an agent capable of integrating into the server itself. Br.
6.
The Examiner finds that the LANDesk DOS engine is an integral part
of the SMM and that the SMM is installed as an expansion card in the host
server, which is monitored by the SMM. Nevertheless, the Examiner
submits that the SMM and DOS engine are indeed “independently
functional” from the server because the SMM interfaces with the server
(over the ISA bus-master), but does not rely on the operation of the server to
function. Ans. 4.
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The Record does not comprise an Appellant’s Reply Brief to the
Examiner’s Answer.
We find that LANDesk discloses that the Server Monitor Module has
the “[a]bility to alert administrator when the server is down” and can
“initiate a warm reboot of the server.” LANDesk, p. 6. The SMM has a
“backup power section [that] keeps the Server Monitor Module operational
when power is interrupted to the host server.” The “XT-compatible” DOS
engine “is an 8086-compatible microprocessor with integrated core logic and
I/O support. Using an embedded processor provides the functionality of an
entire computer on-board.” LANDesk, p. 7. We agree with the Examiner
that the person of ordinary skill in the art would read these disclosures to
imply that “the SMM provides an ‘independently functional system
recorder’ such as recited in the claims.” Ans. 4.
In view of the foregoing, we are not persuaded that the Examiner has
erred in rejecting Claims 2-5, 10, 23, 28, 29, 34, and 40-42.
Claim 16
Appellant contends that Claim 16 further recites:
(i) reporting the occurrence of the event to a central processing
unit of the server system; and (ii) reporting the occurrence of
the event to a remote computer connected to the server system.
Appellant contends that LANDesk fails to disclose either of these additional
limitations, but only reports an alert from the NLM agent to the
administrator at the monitoring console. Br. 8.
The Examiner finds that the NLM agent is management software
executing in the NetWare operating system on the central processing unit
(CPU) of the host server. Events are reported from the Server Management
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Module (SMM) to the NLM agent, and therefore to the CPU of the host
server. Events are also reported from the SMM or the NLM agent to the
remote monitoring console (i.e., to a remote computer connected to the
host server). Thus, the Examiner finds that each additional limitation of
Claim 16 is disclosed by LANDesk. Ans. 6 (citing LANDesk, p. 15).
The Record does not comprise an Appellant’s Reply Brief to the
Examiner’s Answer. In view of the foregoing, we are not persuaded that the
Examiner has erred in rejecting Claim 16.
OBVIOUSNESS
Claims 43-48 and 51
Appellant contends that Intel fails to teach or suggest “transmitting
failure information related to the failure condition, via the system bus, to an
independently functional system recorder,” as recited in Claim 43.
Appellant contends that the Intel front panel I
2
C controller is not disclosed
as being able to function independently of the baseboard, the SCSI hot swap
backplane, and/or the power distribution backplane. Appellant contends that
the Examiner is improperly relying on an inherency argument. Br. 9.
The Examiner finds that the “independently functional system
recorder” of Claim 43 differs from that of Claim 2 in that the information is
transmitted to the system recorder “via the system bus.” Accordingly, the
Examiner maps the “independently functional system recorder” to the Intel
front panel I
2
C controller, the “system bus” is the I
2
C bus. The Intel
reference describes an Intel AP450GX MP Server System in which the
LANDesk SMM is optionally installed. Ans. 8.
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The Record does not comprise an Appellant’s Reply Brief to the
Examiner’s Answer. We, therefore, do not feel compelled to disturb the
Examiner’s finding that Intel discloses that its front panel I
2
C controller is an
“intelligent component” that is separate from the AP450GX MP Server
Board Set; that server board (baseboard) set includes the central processing
units of the server, while the front panel includes its own “independently
functional” microcontroller:
The front panel is a microcontroller-based design which
monitors chassis intrusion and provides power control, reset
control and an LCD interface. It also informs users of such
system abnormalities as power fail, cooling fail and drive fault
via four LEDs.

Ans. 8 (citing Intel, p. 29). We also adopt the Examiner’s findings that Intel
discloses that the front panel microcontroller operates from firmware stored
inside the controller, and that “If AC power is interrupted while the system
is powered on, the front panel will restore the system to the power-on state
when AC power is restored. This function is automatic, is independent of
secure mode, and does not require intervention by an operator or the server
management card.” Ans. 8-9. We agree with the Examiner that given a
broad and reasonable interpretation consistent with the specification, the
Intel reference teaches or suggests the claimed “independently functional
system recorder.” We further agree with the Examiner’s finding that the I
2
C
bus is “the primary means for reporting so called ‘diagnostic’ information
within the system.” The I
2
C bus represents the claimed “system bus.” Thus,
as reasoned above, Intel teaches or suggests the claimed “transmitting failure
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information related to the failure condition, via the system bus, to an
independently functional system recorder.” Ans. 9-10.
In view of the foregoing, we are not persuaded that the Examiner has
erred in rejecting Claims 43-48 and 51.
Claims 52, 53, 58-61, 66, and 67
Appellant traverses the rejection of Claims 52, 53, 58-61, 66, and 67
based on essentially the same grounds related to Intel’s I
2
C controller, as
discussed above. Br. 12. As discussed above, we are not persuaded that the
Examiner has erred in rejecting Claims 52, 53, 58-61, 66, and 67.
Claims 55-57 and 63-65
Appellant contends that, although it is preferred that the memory
location be ascertained prior to writing to the memory, this is not inherent
and does not always occur. Where a memory location is not ascertained in
advance, for example, the system may simply overwrite a portion of the
stored contents. Although doing so may cause a loss of valuable data, one
cannot simply assert that ascertaining the address of a memory location in
which the failure information and its absolute time value will be stored (as
recited in Claims 55 and 63) necessarily occurs simply by virtue of a
reference’s disclosure of a read/write memory. Br. 14.
We adopt the Examiner’s findings that Intel discloses that:
[t]he system has the ability to log critical system events into a
non-volatile event log. These events can then by communicated
to the server console via server management software such as
Intel's LANDesk® Server Manager.

Should the server crash, the system administrator also must
have access to the last known status of the server. This feature
is provided by the information access capability features, which
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contain the current configuration, the last environment status,
the time and day, and any final information that might have
been saved prior to the crash.

Ans. 12. We agree with the Examiner that a person of ordinary skill in the
art would infer from Intel’s teachings that the storing of information in the
system log (i.e., at a memory location) and the reading of the same
information from memory necessarily include “ascertaining the address of a
memory location” or “determining that a memory space is available” in the
address space of the system log. Ans. 12. We adopt the Examiner’s findings
that Intel discloses that:
[t]he system has the ability to log critical system events into a
non-volatile event log. These events can then by communicated
to the server console via server management software such as
Intel's LANDesk® Server Manager.
and
Should the server crash, the system administrator also must
have access to the last known status of the server. This feature
is provided by the information access capability features, which
contain the current configuration, the last environment status,
the time and day, and any final information that might have
been saved prior to the crash.

Ans. 12. We agree with the Examiner that a person of ordinary skill in the
art would infer from Intel’s teachings that the storing of information in the
system log (i.e., at a memory location) and the reading of the same
information from memory necessarily include “ascertaining the address of a
memory location” or “determining that a memory space is available” in the
address space of the system log. Ans.12.
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We are not persuaded that the Examiner has erred in rejecting Claims
55-57 and 63-65.
DECISION
We AFFIRM the rejections of Claims 2-5, 10, 16, 23, 28, 29, 34, and
40-42 under 35 U.S.C. § 102(b) as anticipated by LANDesk.
We AFFIRM the rejections of Claims 43-53, 55-61, and 63-67 under
35 U.S.C. § 103(a).
TIME PERIOD FOR RESPONSE

Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

kis
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Patent Owner:
Round Rock Research, L.L.C.
Gazdzinski & Associaties, P.C.
16644 West Bernardo Drive
Suite 201
San Diego, CA 92127

Third Party Requester:
Dell, Inc.
Baker Botts, L.L.P.
Patent Department
98 San Jacinto Boulevard
Suite 1500
Austin, TX 78701-4039