Ex Parte Eggers et al

Patent Trial and Appeal Board

Feb 28, 2013

11111028 (P.T.A.B. Feb. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBERT J. EGGERS and DARREN C. DOUGLAS
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Appeal 2010-010382
Application 11/111,0281
Technology Center 2400
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Before MARC S. HOFF, CAROLYN D. THOMAS, and
STANLEY M. WEINBERG, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is IBM Corporation.
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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 1-7, 13, 25-28, and 30-33, which are all the
claims remaining in the application. Claims 8-12, 14-24, 29, and 34 are
cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
The present invention relates generally to temporary transformation of
a conventional client-server environment into a grid computing environment.
See Spec. ¶ [0001].
Claim 1 is illustrative:
1. A computer network having a client-server mode and a
grid mode, comprising:
a plurality of client devices, each operating under a
respective local operating system in the client-server mode and each
comprising:
a memory for storing computer-executable
instructions;
a processor for executing instructions stored in the
memory;
a communications protocol stored in the memory;
and
boot instructions stored in the memory directing
the client device to attempt to boot first from the network and from a
local device if the network boot is not successful;
a server device to which the client devices are coupled,
the server operable to:
direct that each client device initiate a boot at a
first predetermined time, whereupon each client device attempts to
perform a network boot;
upon a successful network boot by each client
device, transmit a thin-client image and a grid application to each
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client device, whereupon each network device boots the thin-client
image;
direct that each client device launch the grid
application, whereby each client device operates in a grid mode with
substantially all resources of the processor and memory of each client
device being available for use by the grid application; and
at a second predetermined time, direct that each
client device attempt a re-boot without providing a thin-client image,
whereupon a network boot fails and each client-device boots from a
local device into its respective local operating system, whereby the
client devices operate in a client-server mode.

Appellants appeal the following rejections:
R1. Claim 13 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention2;
R2. Claims 1, 4-6, 25-28, and 30-33 are rejected under 35 U.S.C. §
102(b) as being anticipated by Paul (US Patent Pub. 2003/0074549 A1, Apr.
17, 2003);
R3. Claims 2 and 3 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Paul or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Paul;
R4. Claim 7 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Paul and Brady (US Patent Pub. 2003/0208579 A1, Nov.
6, 2003); and

2 The Examiner’s Answer fails to address the rejection under 35 U.S.C. §
112, second paragraph. Therefore, we shall treat this rejection as being
withdrawn.
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R5. Claim 13 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Paul, Brady, and Boyle (US Patent Pub. 2003/0070063
A1, Apr. 10, 2003).

ANALYSIS
Our representative claim, claim 1, recites, inter alia, “each client
device launch the grid application, whereby each client device operates in a
grid mode” (emphasis added). Independent claims 13, 25, and 30 recite
commensurate limitations. Thus, the scope of each of the independent
claims includes grid processing.

Issue: Did the Examiner err in finding that Paul discloses a grid
mode?
Appellants contend that “a computing grid is one in which a central
server pools and ‘uses’ the computing resources of other computers (the
clients). . . . Nothing in Paul suggests anything even comparable to grid
computing” (App. Br. 16).
The Examiner found that “Paul teaches the grid application to be the
diagnostic or maintenance application included in the specific boot image”
(Ans. 19).
Based upon our review of the record, we conclude that the Examiner’s
broad construction is inconsistent with the usage of the claim term “grid
mode” as that term is recited throughout the claim. We note that claim terms
are not interpreted in a vacuum, devoid of the context of the claim as a
whole. See Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369,
1374 (Fed. Cir. 1999) (“Proper claim construction . . . demands
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interpretation of the entire claim in context, not a single element in
isolation.”); ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir.
2003) (“While certain terms may be at the center of the claim construction
debate, the context of the surrounding words of the claim also must be
considered . . . .”).
Here, Appellants’ Specification describes a grid mode and “the
concept of ‘grid computing’ in which computing resources are pooled or
shared for the purpose of running a particular application (or set of
applications)” (see ¶ [0002]; Fig. 5). Specifically, in Figure 5, “[t]he server
130 operates now as a master node 530 and is able to acquire the use of
substantially all of the computing resources (memory and processor) of each
client 110” (Spec. ¶ [0017]). We find this to be consistent with the ordinary
and usual meaning of “grid computing” which is the process of solving
computationally complicated problems by distributing parts of the problem
to unused capacity on a widely dispersed set of machines that are connected
on a network. DICTIONARY OF COMPUTER AND INTERNET TERMS 228 (9th ed.
2003). Therefore, we find that the claimed “grid mode” requires “grid
computing” as the context of the claim as a whole looks at each client device
in the network.
In representative claim 1, a server transmits a “grid application” to
each client device whereby each client device operates in a grid mode (see
claim 1). The Examiner found that “Paul teaches the grid application to be
the diagnostic or maintenance application included in the specific boot
image” (Ans. 19). We disagree.
As the Examiner relies upon Paul to teach the above-noted limitation,
our discussion shall be limited thereto. Specifically, Paul discloses initiating
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specific maintenance and diagnostic boot images on remote computers (see
Abstract). However, the Examiner has not established how Paul discloses a
“grid mode” whereby dispersed set of machines are running the same
application, as required in grid computing. Instead, Paul has a target device
that performs functions through a new boot image (¶ [0027]). In other
words, in Paul, “[t]he specific boot image is delivered to the target machine
via network interaction, and the target is then rebooted” (¶ [0030]).
However, we find that dispersing an application to a single target machine
and rebooting that machine (as done in Paul) is distinguishable from
dispersing a grid application to each client device whereby each client
device operates in a grid mode, i.e., a dispersed set of machines running the
same application. At best, we find that the Examiner has merely identified a
client-server mode in Paul, as opposed to a “grid mode.”
Appellants’ independent claims 13, 25, and 30 include limitations
similar in scope to the limitations of claim 1 (supra). We are therefore
constrained by the record before us to find that the Examiner erred in
rejecting representative claim 1 and claims 2-7, 13, 25-28, and 30-33 for
similar reasons.
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments. It
follows that Appellants have shown that the Examiner erred in finding that
Paul discloses “grid computing.”
Accordingly, we reverse the rejections of claims 1-7, 13, 25-28, and
30-33.

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DECISION
We reverse the Examiner’s § 102 and § 103 rejections.

REVERSED

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