LENOVO (BEIJING) LTD.

Patent Trials and Appeals Board

Sep 22, 2021

2019006602 (P.T.A.B. Sep. 22, 2021)

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.
15/373,266 12/08/2016 MA LIANG LIANG CN920160033-US-NP 1039
124845 7590 09/22/2021
Russell Ng PLLC (LENOVO)
8729 Shoal Creek Blvd., Suite 100
Austin, TX 78757
EXAMINER
NDIAYE, CHEIKH T
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
09/22/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
stephanie@russellnglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MA LIANG LIANG
Appeal 2019-006602
Application 15/373,266
Technology Center 2400
Before ROBERT E. NAPPI, JOHN A. JEFFERY, and JOHN A. EVANS,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Lenovo
Corporation. Appeal Br. 3.
Appeal 2019-006602
Application 15/373,266

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BACKGROUND
The Claimed Invention
The invention relates to computer network configuration, and
specifically, to “automatically configuring new servers in a data center to
deploy computer networks within a network environment.” Spec. 1.
Claims 1, 9, and 17 are independent. Claim 1 is illustrative of the
invention and the subject matter in dispute, and is reproduced below:
1. A method comprising:
transmitting a broadcast message by a network device
within a server to a network in order to investigate the
availability of said network;

determining whether or not a response message
responding to said broadcast message has been received by said
network device within said server;

in a determination that a response message has been
received by said network device, concluding that said network
is available and configuring said network device to connect
with said network; and

in a determination that no response message has been
received by said network device, concluding that said network
is not available and configuring said network device as a server
node of said network.

Appeal Br. 9 (Claims App.).
Reference
The reference relied upon by the Examiner is:

Name Reference Date
Heim US 2011/0055364 A1 March 3, 2011
Appeal 2019-006602
Application 15/373,266

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The Rejection on Appeal
Claims 1–20 are rejected under 35 U.S.C. § 102(a)(1) as anticipated
by Heim. Final Act. 3.2
DISCUSSION
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments presented in this appeal. Arguments that Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). For the reasons discussed below, Appellant has persuaded
us of error.
Appellant argues the Examiner erred in finding Heim discloses
“transmitting a broadcast message . . . within a server” and “determining
whether or not a response message . . . has been received by said network
device within said server,” as recited in claim 1. Appeal Br. 6–7 (emphasis
added); Reply Br. 2–4. Specifically, Appellant argues there is no “server” in
Heim that performs each of the recited elements, but rather, at most, Heim
discloses a separate “host 201/202” and “management server 203.” Further,
Appellant argues Heim does not disclose “in a determination that a response
message has been received . . . configuring said network device to connect
with said network,” and “in a determination that no response message has
been received . . . configuring said network device as a server node,” as
recited in claim 1. Appeal Br. 6–7. We are persuaded by Appellant’s
arguments.

2 We note that an Information Disclosure Statement was filed January 31,
2020, after briefing was completed in this appeal.

Appeal 2019-006602
Application 15/373,266

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We begin by observing that claim 1 recites transmitting a broadcast
message within “a server” and determining receipt “within said server,” i.e.,
within the same server in which the broadcast message is transmitted.
Appeal Br. 9 (emphasis added). The Examiner finds:
Heim discloses hosts 201-202 are part of a cluster associated
with host 104 (e.g., VDS) and management server 203 is part of
server 102 (Fig. 1; [¶] 0024), wherein server 102 may be a
separate machine or part of the machine hosting server (i.e.,
virtual desktop server or VDS) ([¶] 0021) . . . existing host 201
and management server 203 are part of the VDS and can be one
hosting server broadcasting discovery messages and collecting
the responses to network messages.

Ans. 6–7.
The Examiner’s finding, however, does not identify any element in
Heim that fulfills both of the recited steps in claim 1 performed “within said
server.” See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (finding
that the absence of a single limitation—even if that limitation would be
obvious from the cited reference—negates anticipation). The Examiner’s
finding, rather, conflates various separate elements in Heim. Specifically,
Heim discloses “host 201” is a virtual desktop server and “management
server 203” is a virtual desktop control server. Heim Fig. 2, ¶¶ 21, 24. The
Examiner does not explain, on this record, how one of ordinary skill would
understand Heim as disclosing a “cluster” operating as “a server,” within
which the steps recited in claim 1 are performed. To the extent the
Examiner intends to map the “server” in claim 1 to another element in Heim,
we cannot discern the Examiner’s reasoning on the record before us.
Additionally, and for similar reasons, we are also persuaded by
Appellant’s arguments regarding the final “determination” step of claim 1,
Appeal 2019-006602
Application 15/373,266

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i.e., “in a determination that no response message has been received
. . . configuring said network device as a server node.” The Examiner finds
Heim discloses a “method for automatically configuring a network
interface.” Ans. 11–12; Heim ¶ 33. Specifically, paragraph 33 of Heim
discloses a contingency in which the management server determines if there
is an existing host, and if not, the host has to be “manually configured.” The
Examiner does not explain on this record, however, how this manual
configuration discloses the “determination” step recited in claim 1.
Accordingly, for the foregoing reasons, we are persuaded the
Examiner erred in rejecting claim 1. Independent claims 9 and 17 recite
limitations commensurate in scope with the disputed limitations of claim 1,
and were rejected for the same reasons. We, therefore, also find the
Examiner erred as to those claims. The remaining claims each depend,
directly or indirectly, from claim 1, 9, or 17.
We, therefore, do not sustain the Examiner’s rejection of claims 1–20
as anticipated by Heim.

CONCLUSION
For the foregoing reasons, we reverse the Examiner’s decision to
reject claims 1–20.

Appeal 2019-006602
Application 15/373,266

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 102(a)(1) Heim 1–20

REVERSED