Ex Parte Currid et al

Patent Trial and Appeal Board

May 29, 2014

11459892 (P.T.A.B. May. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW CURRID
and
MARK A. OVERBY
____________

Appeal 2012-003930
Application 11/459,892
Technology Center 2400
____________

Before: MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-003930
Application 11/459,892

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 3-6, 9-13, 16-18, and 22-24. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

BACKGROUND
Appellants’ invention is generally directed to computer platform
provisioning, and more specifically to a system and method for operating
system installation on a diskless computing platform (Spec., para. [0001]).
Claim 3, with bracketing matter added, is illustrative:
3. A method for providing boot operation and
installation services to a diskless computing device, the method
comprising:
[1] receiving a login command from the diskless
computing device, wherein the login command is received by a
server computing device and includes a signature value
indicating a hardware configuration of the diskless computing
device and that the diskless computing device is a member of a
particular class of hardware;
[2] determining that the signature value is not recognized
by comparing the signature value to a set of known signature
values associated with a different class of hardware;
[3] selecting an installation image;
[4] providing only the installation image to the diskless
computing device; and
[5] allocating memory space in the server computing
device for storing a new boot image that corresponds to the
signature value.

Appeal 2012-003930
Application 11/459,892

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Appellants appeal the following rejections:
Claims 22-24 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter.
Claims 3-6, 9-13, 16-18, and 22-24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Behren (US 7,363,514 B1, iss. Apr. 22, 2008),
Kobayashi (US 2005/0216668A1, pub. Sep. 29, 2005), McAlister
(US 6,598,159 B1, iss. Jul. 22, 2003), and Paul (US 6,466,972 B1, iss. Oct.
15, 2002).

ISSUE
Did the Examiner err in rejecting claims 3-6, 9-13, and 16-21 under
35 U.S.C. § 103(a) as unpatentable over Behren, Kobayashi, McAlister, and
Paul because Behren fails to disclose or suggest “providing only the
installation image to the diskless computing device,” as recited by
independent claims 3, 9, and 13?

ANALYSIS
Indefiniteness
The Appellants are not appealing the rejection of claims 22-24 under
35 U.S.C. § 112, second paragraph (Reply Br. 3). Therefore, we will
summarily sustain this rejection.

Obviousness
The Appellants argue that a combination of Behren, Kobayashi,
McAlister, and Paul fails to disclose or suggest “providing only the
Appeal 2012-003930
Application 11/459,892

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installation image to the diskless computing device,” as recited by
independent claim 3, because Behren describes that both an installation
image and boot modules are always provided to and received by the
computing device (App. Br. 12-16; Reply Br. 5-7). Independent claims 9
and 13 recite a substantially similar limitation. In response to this argument,
the Examiner argues that “the boot modules are not necessarily delivered
directly to the diskless device, but stored on a TFTP or other server 120 for
the diskless device to retrieve, if and when needed from the TFTP server”
(Ans. 28). We cannot agree with the Examiner.
In making this determination, we find Behren at column 6, lines 32-35
describes “the new or booting system (or server) 150 processes the retrieved
configuration information 162 and then, [operates] to contact the TFTP
service 120 to request one or more of the intermediate boot modules 128.”
Behren makes clear that its intermediate boot modules perform I/O
operations and are used to enable the new device to access the OS image
(see col. 4:6-12 and col. 6:37-39), whereas Appellants’ Specification at
paragraphs [0017] – [0018] clearly describes such I/O operations being
performed by firmware 120 which is already resident in the memory on the
diskless computing system (see also Fig. 1). Therefore, we agree with the
Appellants that ultimately, the boot modules are provided to the diskless
computing device (Reply Br. 5), and as such, cannot be reasonably relied
upon to disclose or suggest “providing only the installation image to the
diskless computing device,” as recited by independent claim 3. The
Examiner does not rely on Kobayashi, McAlister, or Paul to cure this
deficiency.
Appeal 2012-003930
Application 11/459,892

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The Examiner also appears to question whether the limitation
“providing only the installation image to the diskless computing device” is
supported by the Specification. However, the Examiner did not make a
rejection under 35 U.S.C. § 112, first paragraph (Ans. 28-29). Even so, we
agree with Appellants that the Specification at paragraphs [0013], [0014],
[0017], [0018], and [0029] supports “providing only the installation image to
the diskless computing device,” as recited by claim limitation [4], in
situations where a determination has been made that the signature value of
the diskless computing device “is not recognized by comparing the signature
value to a set of known signature values associated with a different class of
hardware,” as recited by claim limitations [1] and [2] of claim 3. That is, the
server only provides the diskless computing device with an OS installation
image because the boot loader and INT 13 services already reside in the
system memory of the diskless computing device (see Fig. 1).
In view of the foregoing, we will not sustain the Examiner’s rejection
of independent claim 3 and claims 4-6 and 22 dependent thereon. We will
also not sustain the rejection as it is directed to the remaining claims because
independent claims 9 and 13 recite a substantially similar limitation.

DECISION
We summarily affirm the Examiner’s 35 U.S.C. § 112, second
paragraph, rejection of claims 22-24 as being indefinite for failing to
particularly point out and distinctly claim the subject matter.
We reverse the Examiner’s rejection of claims 3-6, 9-13, 16-18, and
22-24 under 35 U.S.C. § 103(a).
Appeal 2012-003930
Application 11/459,892

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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