Ex Parte Deboer et al

Board of Patent Appeals and Interferences

Aug 30, 2012

10478457 (B.P.A.I. Aug. 30, 2012)

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.
10/478,457 11/21/2003 Timothy G. Deboer CA920010033US1 (310) 5156
46320 7590 08/30/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
TAHA, SHAQ
ART UNIT PAPER NUMBER
2478
MAIL DATE DELIVERY MODE
08/30/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TIMOTHY G. DEBOER, TIMOTHY M. FRANCIS,
SHELDON B. WOSNICK, and SIU CHUNG YUEN
____________________

Appeal 2009-015340
Application 10/478,4571
Technology Center 2400
____________________

Before JOSEPH L. DIXON, THU A. DANG, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed November 21, 2003 claiming the benefit of
PCT/EP02/04839, filed May 3, 2002 and CA 2,349,086, filed May 30, 2001.
The real party in interest is IBM Corp. (App. Br. 1.)
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Application 10/478,457

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STATEMENT OF THE CASE
Appellants appeal from the Examiner’s non-final rejection of claims
1-30. Claims 31-34 have been canceled. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellants’ Invention
The invention at issue on appeal concerns a system, computer
program product, and method for managing, configuring, and
selecting servers for running software modules. (Spec. 1:4-6; 4:4-11;
Abstract.).2
Representative Claim
Independent claim 1, reproduced below, with disputed limitations
italicized, further illustrates the invention:

1. A method for managing a plurality of servers
comprising:
receiving a request to configure a suitable server being
suitable for running a module;
locating an identifier of the suitable server from a table
comprising identifiers of suitable servers; and
configuring the suitable server to run the module.

Rejections on Appeal
1. The Examiner rejects claims 1-4, 6, 8, 11-14, 16, 18, 21-24, 26,

2 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed June 29, 2008; and Reply Brief (“Reply Br.”) filed November 24, 2008.
We also refer to the Examiner’s Answer (“Ans.”) mailed June 11, 2009.
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and 28 under 35 U.S.C. § 102(e) as being anticipated by U.S. Patent App.
Pub. No. 2002/0174247 A1, published Nov. 21, 2002 (filed Apr. 2, 2001)
(“Shen”).
2. The Examiner rejects claims 5, 7, 9, 10, 15, 17, 19, 20, 25, 27,
29, and 30 under 35 U.S.C. § 103(a) as being unpatentable over Shen and
U.S. Patent No. 6,327,622 B1, issued Dec. 4, 2001 (filed Sep. 3,1998)
(“Jindal”).

ISSUE
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us is as follows:
Does the Examiner err in finding that Shen discloses “receiving a
request to configure a suitable server being suitable for running a module;
locating an identifier of the suitable server from a table comprising
identifiers of suitable servers; and configuring the suitable server to run the
module” within the meaning of Appellants’ claim 1 and the commensurate
limitations of claims 11 and 21?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Non-Final
Office Action, mailed May 21, 2008, as our own.

ANALYSIS
Based on Appellants’ arguments (App. Br. 4-8) we select independent
claim 1 and dependent claims 4 and 5 as representative of Appellants’
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arguments and groupings with respect to claims. 37 C.F.R.
§ 41.37(c)(1)(vii).
Claim 1
Appellants contend that Shen does not disclose the disputed
limitations of claim 1. (App. Br. 4-6; Reply Br. 2-4.) Specifically,
Appellants contend that Shen does not disclose: (1) “‘receiving a request to
configure a suitable server being suitable for running a module’” because
“step 204 teaches submit[ting] a query to run a server” (App. Br. 5); (2)
“‘locating an identifier of the suitable server from a table comprising
identifiers of suitable servers’” because Shen is “silent as to both the
‘locating an identifier’ and the ‘table comprising identifiers’” (App. Br. 5-6);
and (3) “configuring the suitable server to run the module” because Shen
“fails to teach that the ‘suitable server’ is configured ‘to run the module,’ as
claimed” (App. Br. 6).
The Examiner sets forth a detailed explanation of the anticipation
rejection in the Examiner’s Answer with respect to each of the claims so
rejected and, in particular, the rejection of claim 1. (Ans. 4-5, 9-11.)
Specifically, the Examiner submits that Shen explicitly discloses a request
(receiving a request) to configure a particular. (Ans. 5, 10 (citing Shen, ¶¶
[0021] and [0033]; Fig. 2).) The Examiner also finds that Shen discloses
locating an identifier for (of) the server in (from) a table. (Ans. 5, 10 (citing
Shen, ¶¶ [0032]-[0034]; Table A (p. 4); Fig. 2).) Further, the Examiner finds
that Shen discloses configuring the server to run the module. (Ans. 5, 10
(citing Shen, ¶¶ [0027], [0033]; Fig. 2).)

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Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s findings that Shen discloses the disputed
features of claim 1. Accordingly, we sustain the Examiner’s rejection of
claim 1 for the reasons set forth in the Answer, which we incorporate herein
by reference. (Ans. 4-5, 9-11.) Our additional analysis will be limited to the
following points of emphasis.
Appellants seem to argue that the configuring disclosed by Shen is not
the “configuring the suitable server” recited in Appellants’ claim –“[t]he
‘configuring’ described in paragraph [0031] of Shen is not related to
configuring a suitable server, as claimed” (Reply Br. 3). Appellants,
however, do not explicitly define “configure” or “configuring” (the
“suitable” server) in either their Specification or the claim. Accordingly, we
broadly but reasonable construe “configure”/“configuring” to mean setting
up for a particular purpose and to read on the configuring disclosed by Shen.
Thus, we find Appellants’ contrary arguments unpersuasive of error in
the Examiner’s anticipation rejection of representative claim 1. Appellants
also do not persuade us of error in the Examiner’s anticipation rejection of
independent claims 11 and 21, which include limitations of commensurate
scope, and dependent claims 2, 3, 6, 8, 12-14, 16, 18, 22-24, 26, and 28 not
separately argued with particularity (supra). Accordingly, we affirm the
Examiner’s anticipation rejection of claims 1-3, 6, 8, 11-14, 16, 18, 21-24,
26, and 28.
Claim 4
Appellants contend that Shen does not disclose the disputed limitation
of claim 4. (App. Br. 6-7; Reply Br. 5.) Specifically, Appellants contend
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that Shen does not disclose “that ‘the identifier of the suitable server
identifies a type of a server’” in that Shen discloses characteristics of servers
(“closest, least expensive, or least loaded”) and not “types” of servers.
(App. Br. 6.)
The Examiner sets forth a detailed explanation of the anticipation
rejection of claim 4 which we herein incorporate by reference. (Ans. 6, 12.)
Similar to claim 1 (supra), Appellants seem to argue that the
“characteristics” disclosed by Shen are not the “type” of server recited in
Appellants’ claim. As with claim 1, Appellants do not explicitly define
“type” in either their Specification or the claim. Accordingly, we broadly
but reasonable construe “type” to mean having or sharing traits
(characteristics) of a group and to read on the characteristics disclosed by
Shen.
Thus, we find Appellants’ contrary arguments unpersuasive of error in
the Examiner’s anticipation rejection of claim 4, and we affirm the
Examiner’s anticipation rejection of the claim.

The § 103 Rejection of Claim 5
Appellants contend that Shen and Jindal do not teach or suggest the
disputed limitation of claim 5. (App. Br. 7-8; Reply Br. 5.) Specifically,
Appellants contend that neither Shen, nor Jindal teach multiple (two) tables.
(App. Br. 8; Reply Br. 5-6.) We find these arguments unavailing of error in
the Examiner’s obviousness rejections of claim 5. Appellants do not explain
how the Examiner erred in rejecting the claim, beyond stating that Jindal
refers to servers (server farms) and not tables. (App. Br. 8; Reply Br. 6,)
We note, however, that (as explained by the Examiner) Jindal’s intermediate
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servers (in the server farms) collect data with respect to the individual
servers in order to determine a preferred server from the look up table 102
(Fig. 2). (See Jindal, col. 9, l. 35 to col. 4, l. 12; Fig. 2.) Thus, we agree
with the Examiner that the combination of Shen and Jindal would have at
least suggested multiple tables to one of skill in the art. Accordingly, we
affirm the Examiner’s obviousness rejections of claim 5 and claims 7, 9, 10,
15, 17, 19, 20, 25, 27, 29, and 30 not separately argued with particularity.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-4, 6, 8, 11-14, 16, 18, 21-24, 26, and 28 under 35 U.S.C. § 102(e).
Appellants have not shown that the Examiner erred in rejecting claims
5, 7, 9, 10, 15, 17, 19, 20, 25, 27, 29, and 30 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1-4, 6, 8, 11-14, 16, 18,
21-24, 26, and 28 under 35 U.S.C. § 102(e).
We affirm the Examiner’s rejection of claims 5, 7, 9, 10, 15, 17, 19,
20, 25, 27, 29, and 30 under 35 U.S.C. § 103(a).
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

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