Ex Parte French et al

Board of Patent Appeals and Interferences

May 18, 2010

09731629 (B.P.A.I. May. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN M. FRENCH and LORIN E. ULLMANN
____________

Appeal 2008-005206
Application 09/731,629
Technology Center 2400
____________

Decided: May 18, 2010
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
CAROLYN D. THOMAS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1-9 and 11-27. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

Appeal 2008-005206
Application 09/731,629

2
I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method and system for
concurrently booting a list of client computers (Spec. 1).

The Illustrative Claim
Claim 1, an illustrative claim, reads as follows:
1. A method of generating a list of target devices to be configured in
communication with a server comprising:

creating a first list of target devices to be configured;

identifying at least one addressed target device having an associated
network address;

modifying the first list of target devices using the addressed target
device; and

generating a modified list of target devices to be configured, wherein
the target devices are to be remotely booted by the server and wherein the
target devices are persistently and concurrently in communication with the
server by means of a network.

The References
The Examiner relies on the following references as evidence:
Beelitz US 6,182,275 B1 Jan. 30, 2001
(filed Jan. 26, 1998)

Appeal 2008-005206
Application 09/731,629

3
Cohn US 6,411,684 B1 Jun. 25, 2002
(filed Apr. 7, 1998)

The Rejections
The following rejections are before us for review:1
Claims 1-9 and 11-27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Beelitz and Cohn.

II. ISSUE
Has the Examiner erred in finding that the combination of Beelitz and
Cohn teaches or fairly suggests “generating a modified list of target devices
to be configured, wherein the target devices are . . . persistently and
concurrently in communication with the server by means of a network,” as
recited in independent claim 1?

III. PRINCIPLES OF LAW
Obviousness
“Obviousness is a question of law based on underlying findings of
fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying
factual inquiries are: (1) the scope and content of the prior art, (2) the

1 The Examiner rejected claims 1, 13, and 23 under 35 U.S.C. § 112, first
paragraph in the Final Rejection mailed on Sep. 26, 2006. However, in the
Examiner Answer, filed on July 18, 2007, no 35 U.S.C. § 112, first
paragraph rejection of claims 1, 13, and 23 has been applied. Thus, we
deem that the Examiner withdrew the rejection.
Appeal 2008-005206
Application 09/731,629

4
differences between the prior art and the claims at issue, (3) the level of
ordinary skill in the pertinent art, and (4) secondary considerations of
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(citation omitted).

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
Beelitz
1. Beelitz discloses a system for remotely configuring a target
computer being ordered by generating a list of operating system types
available for the computer and installed the operating system after the user
selects one (col. 7, l. 23-col. 8, l. 67).
2. Beelitz only mentions one targeted device is initially booted for
down loading and installing the operation system via internet (col. 15, ll. 1-
7), but does not teach installing operating system concurrently on a list of
targeted computer since the Beelitz’s build-to-order system is used by one
user (Abs.).
Cohn
3. Cohn discloses a network hub system, each hub may be
implemented utilizing a variety of hardware platforms and communicates
with each other through the network, can provide status or user profile
Appeal 2008-005206
Application 09/731,629

5
updates or advertisements to the hubs in the network (Abs.; col. 10, ll. 33-50;
col. 12, ll. 20-28; col. 34, ll. 7-26).

V. ANALYSIS
Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The Examiner sets forth a
detailed explanation of a reasoned conclusion of unpatentability in the
Examiner’s Answer. Therefore, we look to the Appellants’ Brief to show
error in the proffered reasoned conclusion. Id.

The Common Feature in Claims
Independent claim 1, recites, inter alia, “generating a modified list of
target devices to be configured, wherein the target devices are . . .
persistently and concurrently in communication with the server by means of
a network.” Independent claims 13 and 23, contain these similar limitations.
35 U.S.C. § 103(a) rejections
With respect to independent claim 1, the Appellants contend that
Beelitz does not disclose the argued limitations but “teaches only loading
and installing the operating system onto the targeted computer system, prior
Appeal 2008-005206
Application 09/731,629

6
to disconnecting the network connection to enable the newly built-to-order
computer to ship to a business or individual.” (App. Br. 14, Reply Br. 4).
The Examiner states that Beelitz teaches all limitation but the argued
limitation. Cohn teaches the argued limitation “due to the constant
communication between the hubs, and using a real time communication
protocol to input orders” (Ans. 10 emphasis original).
We disagree with the Examiner’s reading of references. We find that
the paragraph of the Beelitz reference relied upon by the Examiner only
discusses that one computer being ordered is configured by a list of
operating systems selected by a user (FF 1). Beelitz does not mention a list
of target devices (only one target computer), nor the target devices are
persistently and concurrently in communication with the server by the
network (FF 2).
We next look to the teachings of Cohn. We find that the network hub
system of Cohn only teaches that there is constant communication with hubs
(FF 3) but we find no teachings for booting a list of target device while the
target devices are persistently and concurrently communicated with the
server. Further, the Examiner only provided a limited discussion of the
teachings of the Cohn reference (Ans. 3 and 10). We find this limited
discussion to be not sufficient to teach or fairly suggest the specific
limitations recited in claim 1. Thus, we will not speculate whether which
specific teachings or extrapolation of teachings read on the claimed
limitations. We, therefore, find the Examiner’s position is untenable.
Appeal 2008-005206
Application 09/731,629

7
Because we agree with at least one of the Appellants’ contentions, we
find that the Examiner has not made a requisite showing of obviousness as
required to teach or fairly suggest the invention as recited in claim 1 by the
combined teachings of Beelitz and Cohn. The independent claims 13 and 23
contain the similar limitations to those found in independent claim 1. The
Appellants present similar arguments as set forth with respect to independent
claim 1 in response to the rejections of independent claims 13 and 23 (App.
Br. 13-14).
The rejection of the dependent claims 2-9, 11-12, 14-22, and 24-27
contains the same deficiency. The Appellants, thus, have demonstrated error
in the Examiner’s proffered conclusion for obviousness of the subject matter
of claims 1-9 and 11-27.

VI. CONCLUSION
We conclude that the Examiner erred in finding that the combination
of Beelitz and Cohn teaches or fairly suggests “generating a modified list of
target devices to be configured, wherein the target devices are . . .
persistently and concurrently in communication with the server by means of
a network,” as recited in independent claim 1.

Appeal 2008-005206
Application 09/731,629

8
VII. ORDER
We reverse the obviousness rejections of claims 1-9 and 11-27 under
35 U.S.C. § 103(a).

REVERSED

rwk

IBM CORP (YA)
C/O YEE & ASSOCIATES PC
P.O. BOX 802333
DALLAS, TX 75380