Ex Parte Larson et al

Board of Patent Appeals and Interferences

Mar 14, 2008

09924029 (B.P.A.I. Mar. 14, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THANE M. LARSON and KIRK BRESNIKER
____________________

Appeal 2007-2433
Application 09/924,0291
Technology Center 2100
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Decided: March 14, 2008
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Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and JAY P.
LUCAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed August 7, 2001. The real party in interest is Hewlett-
Packard family of companies.

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STATEMENT OF CASE
Appellants appeal from a final rejection of claims 1 to 20 under
authority of 35 U.S.C. § 134. The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
Appellants’ invention relates to a system, method and device (system)
for providing network address information in a cPCI (Compact Peripheral
Component Interconnect) server system for configuration of a plurality of
host processor cards in a single rack mounted chassis. In the words of the
Appellants:
In contrast to the prior art technique of providing an RS-232
connection to each individual server to set IP address information, the
use of an IPMII2C bus 554 allows for multiple devices on one bus,
thus greatly reducing the complexity of the system. This also allows
for better remote management, since it is undesirable to have multiple
connections into a server, or having to physically be present at the
server to change configurations.
(Spec. 17.)

Claim 1 is exemplary:
1. A server system comprising:

a plurality of host processor cards;

a management card coupled to the plurality of host processor cards via
at least one bus, the management card including at least one user interface
for receiving network address information from a user, the management card
configured to send received network address information to the plurality of
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host processor cards via the at least one bus, thereby configuring the host
processor cards for management LAN communications.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Liu US 6,185,110 B1 Feb. 6, 2001
(filed Jan. 29, 1999)
Sides US 6,363,449 B1 Mar. 26, 2002
(filed Mar. 29, 1999)
Verthein US 6,678,284 B1 Jan. 13, 2004
(filed Apr. 25, 2001)

The Examiner has entered a new rejection of claims 1 to 7 and a new
rejection of claims 8, 14, and 20 in the Examiner’s Answer, adding another
reference (Sides) to the previously used Verthein, Admitted Prior Art
(APA), and, with respect to the latter set of claims, Liu references (Ans., 2).
We will take these rejections to be substitutes for the previous rejections of
the same claims without the Sides references. The Examiner also states that
the same rationale for the rejection of claim sets 9 to 13 and 15 to 19 applies
as used for the rejection of claims 1 to 6. (Ans., 5). We thus assume that the
new rejection, using the Sides reference, applies to those claims sets, 9 to 13
and 15 to 19 as well.
In summary, we take the following to be the current rejections:
R1: Claims 1 to 7, 9 to 13, and 15 to 19 stand rejected under 35 U.S.C.
§ 103(a) for being obvious over APA in view of Verthein and Sides.
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R2: Claims 8, 14, and 20 stand rejected under 35 U.S.C. § 103(a) for being
obvious over APA in view of Verthein, Sides and Liu.
Appellants contend that the claimed subject matter is not rendered
obvious by Verthein alone, or in combination with Sides or Liu or APA, for
failure of the references to teach or suggest claimed limitations, as will be
discussed more fully below. The Examiner contends that each of the claims
is properly rejected.
We reverse the rejections.
ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
the admitted prior art (APA) in view of the Verthein and Sides references
teach all of the claimed limitations.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a server system in which the server contains a
plurality of host processor cards plus a special card that manages the
configuration of the processor cards so they can communicate across a
local area network (LAN). (Spec. 1, l. 10+). The APA uses a serial
RS232 port on each board to configure each of the host processor cards
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with its IP (Internet Protocol) address. (Spec., 1, l. 16). By using the
special management card to configure the host processor cards, the
Appellants avoid the difficulty of running RS-232 lines to each board,
and gains advantages when swapping host processor cards among servers
and LANs. (Spec., 17, ll. 10 to 22).
2. Verthein teaches a communications access device, for example one used
in public switched telephone networks, which acts as a communications
server chassis. (Col. 1, l. 53). The chassis contains various cards such as
modems for performing signal conversion for incoming and outgoing
data. (Col. 3, l. 35). In addition to those standard cards, the chassis
contains a special EdgeServer ™ card which has located on it the
hardware and software components of a general purpose computer,
including interfaces for a video monitor, keyboard, and mouse. (Col. 4, l.
34). The EdgeServer card allows various programs, including
management functions, to be run locally on the device and avoids having
to rely on external computing power to perform those functions. (Col. 3,
top paragraph).
PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
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obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
“To reject claims in an application under section 103, an examiner
must show an unrebutted prima facie case of obviousness. … On appeal to
the Board, an applicant can overcome a rejection by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.” [citations removed]
In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).
The determination of whether an intended use clause is a limitation in
a claim depends on the specific facts of the case. In Hoffer v. Microsoft
Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005), the court held that when a
“whereby clause states a condition that is material to patentability, it cannot
be ignored in order to change the substance of the invention.” Id. However,
the court noted (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc.,
336 F.3d 1373, 1381 (Fed. Cir. 2003)) that “a whereby clause in a method
claim is not given weight when it simply expresses the intended result of a
process step positively recited.” Id.
“The term ‘prior art’ as used in section 103 refers at least to the
statutory material named in 35 U.S.C. § 102. . . . However, section 102 is not
the only source of section 103 prior art. Valid prior art may be created by
the admissions of the parties.” Riverwood Int’l Corp. v. R.A. Jones & Co.,
324 F.3d 1346, 1354 (Fed. Cir. 2003) (citations omitted).
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ANALYSIS
Appellants contend that the Examiner erred in rejecting claim 1
because Verthein contains no teaching or suggestion that the computing card
24 includes at least one user interface for receiving network address
information from a user. (Br., 6, middle). Nor, it is contended, is there a
teaching in Verthein that the computing card 24 is configured to send
received network address information to a plurality of host processor cards
via a bus thereby configuring the host processor cards for management LAN
communications.
On consideration, we find that the Appellants have a point. The APA
teaches only the multiple host processor cards in a server, with individual
RS-232 connections for receiving the configuration commands. (FF1,
above) Verthein does teach having a computing card in a server box, and
broadly teaches using that card for management duties. We can even find in
Verthein the user interface for, potentially, receiving data from a user.
(FF2). However, the Appellants have argued the representative claim 1
clearly requires that the management card is configured to send the network
address information to the host processor cards, and thereby configuring the
host processor cards for management LAN configuration. (Br. 6, middle).
The Examiner has equated providing standard management functions within
the chassis as this limitation. (Ans., 7 top). We find that the Verthein
reference lacks sufficient specificity to support the rejection, as none of the
claimed configuration is extant.
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The Sides reference, which was cited for its teaching of the claimed
bus structure, was not mentioned in the Examiner’s rejection of claim 1
(Ans., 4) and does not supply the teachings that are lacking in Verthein.
Claims 8, 14, and 20 were rejected for being obvious over APA,
Verthein, Sides, and Liu. Liu was added to the rejection for its teaching of
the Liquid Crystal Display panel. As Liu does not supply the deficiencies in
the APA and Verthein references, this rejection likewise cannot be
supported.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in rejecting claims 1 to 7, 9 to 13, and 15 to 19 under
35 U.S.C. § 103(a) for being obvious over APA in view of Verthein and
Sides, and also claims 8, 14, and 20 for being obvious over APA in view of
Verthein, Sides, and Liu.

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DECISION
The Examiner's rejection of claims 1 to 20 is Reversed.

REVERSED

rwk

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