Ex Parte Phillips et al

Board of Patent Appeals and Interferences

May 31, 2012

10059469 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS G. PHILLIPS, KARTIK N. RAGHAVAN, PAUL C.
SUTTON, and RYAN W. J. WAITE
____________

Appeal 2009-014475
Application 10/059,469
Technology Center 2400
____________

Before ERIC B. CHEN, BRUCE R. WINSOR,
and GLENN J. PERRY, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1 and 3-53, which constitute all the claims pending in this
application. Claim 2 is cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b).

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STATEMENT OF THE CASE
Appellants’ invention relates to dynamically purposing computing
devices. (Spec. 1:13-14)
The computing devices in a network are organized into groups
referred to as Pods, each Pod of computing devices further
comprising an aggregation node. The aggregation node
monitors and controls the computing devices in the Pod. The
aggregation node is used to copy a system image from the
pristine partition of another computer device or from a library
of system images to a target partition of the computer to be
repurposed. Because the computing devices in the network are
organized into Pods, with each Pod having an aggregation node,
there is no single point of failure for the entire management and
control of the network. The aggregation nodes for each Pod in
the network can communicate with one another to most
efficiently allocate resources among the various tasks to be
performed by the computing resources in the network.
Computing devices in the network can be repurposed and/or
reassigned to different Pods based on the various criteria.
(Abstract). Claims 1 and 8, which are illustrative of the invention, read as
follows:
1. A method for preparing a computing device that is
purposed to perform a first function to be purposed to perform a
second function by operating with a new target system image,
the computing device having a computer readable storage
medium comprising a first target partition and a second target
partition, wherein the first target partition is the active partition
and the computing device is connected to a network, the
method comprising the steps of:
receiving a prompt generated by an aggregation node to
initiate a repurposing operation; and
transferring the new target system image to the second
target partition, whereby the computing device continues to
perform the first function while the steps of the method are
performed.
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8. A method for dynamically repurposing computing
devices in a network, wherein the network is comprised of at
least a first Pod and a second Pod, at least a first computing
device and at least a first aggregation node being associated
with the first Pod, and at least a second computing device and at
least a second aggregation node being associated with the
second Pod, the at least first and second computing devices
each having a computer readable storage medium comprising a
default partition, a target partition and a pristine partition, the
method comprising the steps of:
receiving a prompt to perform a repurposing operation on
the first computing device;
booting the first computing device from the default
partition, the default partition having a default operating
system;
installing a new target system image on the target
partition of the first computing device; and
booting the first computing device from the target
partition having the new target system image.
The Examiner relies on the following prior art in rejecting the claims:
Kikinis US 5,708,776 Jan. 13, 1998
Kleinsorge US 6,247,109 B1 June 12, 2001
Pierre-Louis 1 US 6,421,777 B1 July 16, 2002
Claims 1, 3, and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kikinis in view of Kleinsorge. (Ans. 3).
Claims 50, 51, and 53 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pierre-Louis in view of Kleinsorge. (Ans. 5).2
Claims 4-6, and 52 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kikinis in view of Pierre-Louis and Kleinsorge. (Ans. 6).

1 Also referred to in the record as “Louis-Pierre.”
2 We note that Examiner does not cite Kikinis, which was cited in the ground
of rejection for the base claim from which claims 50, 51, and 53 depend.
We will presume that the omission was an oversight.
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Claims 8-49 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kikinis in view of Pierre-Louis. (Ans. 9).
Rather than repeat the arguments here, we make reference to the Brief
(“Br.” filed Nov. 28, 2006) and the Answer (“Ans.” mailed May 31, 2007)3
for the respective positions of Appellants and the Examiner. Only those
arguments actually made by Appellants have been considered in this
decision. Arguments that Appellants did not make in the Brief have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

PRINCIPLES OF LAW
If the claim preamble, when read in the context of the entire
claim, recites limitations of the claim, or, if the claim preamble
is necessary to give life, meaning, and vitality to the claim, then
the claim preamble should be construed as if in the balance of
the claim. . . . If, however, the body of the claim fully and
intrinsically sets forth the complete invention, including all of
its limitations, and the preamble offers no distinct definition of
any of the claimed invention’s limitations, but rather merely
states, for example, the purpose or intended use of the
invention, then the preamble is of no significance to claim
construction because it cannot be said to constitute or explain a
claim limitation.
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.
Cir. 1999) (citations and internal quotation marks omitted).
[The USPTO] applies to the verbiage of the proposed claims
the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of

3 The Answer mailed Mar. 12, 2007 has not been considered as it is deemed
to have been superseded and replaced by the Answer mailed May 31, 2007.
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definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). “Though understanding
the claim language may be aided by the explanations contained in the
written description, it is important not to import into a claim limitations that
are not a part of the claim.” SuperGuide Corp. v. DirecTV Enters., Inc., 358
F.3d 870, 875 (Fed. Cir. 2004).
“A transitory, propagating signal . . . is not a ‘process, machine,
manufacture, or composition of matter.’ [These] four categories define the
explicit scope and reach of subject matter patentable under 35 U.S.C. § 101;
thus, such a signal cannot be patentable subject matter.” In re Nuijten, 500
F.3d 1346, 1357 (Fed. Cir. 2007).

REJECTION OF CLAIM 1 UNDER 35 U.S.C. § 103(a)
Issue
With regard to claim 1, the pivotal issue raised by Appellants’
contentions is: Did the Examiner err in finding that the combination of
Kikinis and Kleinsorge teaches or suggests “transferring [a] new target
system image to [a] second target partition, whereby the computing device
continues to perform [a] first function [in a first active partition],” as recited
in claim 1?4

4 Appellants’ arguments present additional issues relevant to claim 1. We
are persuaded of error regarding this issue, which is dispositive of the
appeal. Therefore, we do not reach the additional issues.

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Analysis
We are persuaded by Appellants’ arguments (App. Br. 8) that the
Examiner erred in finding that the combination of Kikinis and Kleinsorge
would have rendered independent claim 1 obvious.
The Examiner finds:
[Kikinis teaches] transferring the new target system image to
the second target partition, whereby the computing device
continues to perform the first function while the steps of the
method are performed (see Column 3, lines 25-30).
(In the same field of endeavor, Kleinsorge teaches a
partitioned boot design. Kleinsorge teaches how multiple
partitions are each able to hold a different operating system and
run them concurrently (column 4, lines 41-54, Kleinsorge).
It would have been obvious to one skilled in the art,
during the time of the invention, to have combined the
teachings of Kikinis with those of Kleinsorge to provide a
system capable of being partitioned to allow the concurrent
execution of multiple instances of operating system software
(column 6, lines 11-16, Kleinsorge )).
(Ans. 4). However, as pointed out by Appellants:
[C]laim 1 does not specify the concurrent execution of
operating systems. As described in claim 1, "the computing
device continues to perform the first function while the steps of
the method are performed.” The computing device "continues
to perform the first function," for example, acting as a web
server, but only while the new target system image is
transferred to another ("the second") target partition - the claim
does not state that the "first function" is performed while the
"second function" is also performed, as is described in
Kleinsorge. The claim also does not say that multiple instances
of operating systems are executed concurrently.
(Br. 13).
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We find that the cited passage of Kikinis teaches an automatic
recovery routine that runs duplicate operating software 49 and installs
duplicate application software 51 from a shadow partition 57 in the event of
a corrupted primary partition 55. (Kikinis, col. 3, ll. 21-30). We further find
that Kleinsorge teaches a single physical computing machine in which
operating systems on multiple partitions function simultaneously.
(Kleinsorge, col. 4, ll. 41-54; see also, col. 6, ll. 11-16). The Examiner has
not identified in either reference, or in the combination of references, any
persuasive teaching or suggestion of a first function continuing to operate on
a first partition of a computing device while a second function is being
transferred to a second partition of the computing device. Therefore, we
conclude that the Examiner has failed to establish a prima facie case of the
obviousness of claim 1 and we will not sustain the rejection of claim 1, or of
its dependent claims 3-7 and 50-53.

REJECTION OF CLAIM 8 UNDER 35 U.S.C. § 103(a)
Issue
The pivotal issue raised by Appellants’ contentions is: Are the “first
Pod,” “second Pod,” “first aggregation node,” and “second aggregation
node,” (hereinafter the “claim 8 disputed recitations”), recited in the
preamble of claim 8, limitations of the claim?
Analysis
Appellants contend as follows: “[C]laim[] . . . 8 . . . require[s] an
‘aggregation node.’ This limitation is not taught or suggested by any of the
references in isolation or in combination.” (Br. 17). Appellants further
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contend that “the combined references do not teach a Pod with an
aggregation node.” (See Br. 18-20).
The claim 8 disputed recitations are recited only in the preamble of
claim 8 and do not provide antecedent basis for any step of the claimed
method. We conclude the claim 8 disputed recitations in the preamble offer
no distinct definition of any of the claimed invention’s limitations, but rather
merely state an intended use of the invention. Accordingly, we conclude
that the claim 8 disputed limitations are of no significance to claim
construction because they cannot be said to constitute or explain a claim
limitation. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d at
1305. Therefore, in construing claim 8, we give the claim 8 disputed
limitations no patentable weight.
Appellants’ arguments are directed only to the claim 8 disputed
limitations and are, therefore, not commensurate with the scope of the claim.
Appellant has not persuaded us that the Examiner erred in rejecting claim 8
and we will, therefore, sustain the rejection of claim 8 and of dependent
claims 9-20, which were not separately argued. Additionally, Appellants
present the same arguments regarding claim 43 (Br. 17-20), and we find
those arguments unpersuasive for the same reasons. Therefore, we will
sustain the rejection of claim 43 and dependent claims 44-49, not separately
argued.

REJECTION OF CLAIM 21 UNDER 35 U.S.C. § 103(a)
Issue
The pivotal issue presented by Appellants contentions is: Did the
Examiner err in finding that the combination of Kikinis and Pierre-Louis
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teaches or suggests “at least one aggregation node for monitoring [a] first
Pod of computing devices and for managing [a] transfer of the pristine copy
of [a] target system image from [a] pristine partition of [a] second
computing device [in a second Pod] to the target partition of [a] first
computing device,” as recited in claim 21? 5
Analysis
The Examiner finds that Kikinis’s watchdog processor teaches an
aggregation node that monitors the first Pod of computing devices (Ans. 11;
see Kikinis, col. 1, ll. 53-63) and Pierre-Louis teaches or suggests the
aggregation node transferring a pristine copy of a target system image from
the second computing device to the target partition of the first computing
device (Ans. 11; see Pierre-Louis, col. 2, ll. 62-63).
Appellants contend as follows:
The Examiner has equated the "watchdog processor" of Kikinis
with the aggregation node. As specified in claim 21, the
aggregation node is "for monitoring the first Pod of computing
devices and for managing the transfer of the pristine copy of the
target system image from the pristine partition of the second
computing device to the target partition of the first computing
device". The watchdog processor of Kikinis is not described as
having the capability of monitoring a Pod of devices, nor is it
described as having the capability of managing a transfer of a
system image between multiple computing devices - instead,
the watchdog processor exists in a single computing device and
determines if the computing device must reboot due to a failure
in the computing device. The inclusion from Pierre-Louis of
the sentence "In the depicted example, a server 104 is

5 Appellants’ arguments present additional issues relevant to claim 21. We
are persuaded of error regarding this issue, which is dispositive of the
appeal. Therefore, we do not reach the additional issues.

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connected to network 102 along with storage unit 106" does not
remedy this deficiency or explain how the watchdog processor
could be capable of monitoring or managing, as is required in
claim 21.
(Br. 21).
We agree with the Examiner’s implicit claim construction that the
claimed aggregation node is a node that performs the operations identified in
the claim as being performed by the aggregation node (see Ans. 25). We
further agree with the Examiner that Kikinis’s watchdog processor monitors
a first Pod of computing devices including a first computing device (Ans.
11). We note that claim 21does not preclude the “Pod” from comprising a
single “computing device” with a single “aggregation node,” nor does it
preclude the computing device and aggregation node from being in the same
enclosure. See SuperGuide, 358 F.3d at 875.
However, we agree with Appellants that the passage of Pierre-Louis
(col. 2, ll. 62-63) cited by the Examiner does not teach or suggest the
aggregation node operation of “managing [a] transfer of the pristine copy of
[a] target system image from [a] pristine partition of [a] second computing
device [in a second Pod] to the target partition of [a] first computing
device,” as recited in claim 21. Although Pierre-Louis does disclose the
transfer of a boot image from a boot server (col. 5, ll. 21-26, 61-67), the
Examiner has made no persuasive findings that establish that it would be
obvious for Kikinis’s watchdog processor (i.e., the “aggregation node”) to
manage Pierre-Louis’s boot image transfer or to combine the operations of
Kikinis’s watchdog processor with those of Pierre-Louis’s boot server.
Therefore, we conclude that the Examiner has failed to establish a prima
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facie case of the obviousness of claim 21 and we will not sustain the
rejection of claim 1, or of its dependent claims 22-29.

REJECTION OF CLAIM 30 UNDER 35 U.S.C. § 103(a)
Issues
The pivotal issues raised by Appellants’ contentions are:
Are the “Pod” and “aggregation node” recited in the preamble of
claim 30 limitations of the claim?
Did the Examiner err in finding that the combination of Kikinis and
Pierre-Louis teaches or suggests “installing a default operating system image
on the default partition, the default operating system image including a
service for providing a status of the computing device to [an] aggregation
node [of a Pod],” as recited in claim 30?
Analysis
Unlike claim 8, discussed supra, the aggregation node recited in the
preamble of claim 30 provides an antecedent basis for the step of “installing
a default operating system . . .” recited in the body of claim 30.
Furthermore, the preamble of claim 30 further recites the “aggregation node”
as “monitoring and managing the computing devices that comprise [a] Pod.”
We conclude that the “aggregation node for monitoring and managing the
computing devices that comprise [a] Pod” is necessary to “give life,
meaning, and vitality to the claim,” Pitney Bowes, Inc. v. Hewlett-Packard
Co., 182 F.3d at 1305. Therefore, in construing claim 30 we give patentable
weight to “Pod” and “aggregation node.”
The Examiner maps the claimed “aggregation node” onto Kikinis’s
“watchdog processor” and finds that Kikinis teaches an aggregation node for
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monitoring and managing computing devices (Ans. 12; see Kikinis, col. 1, ll.
65-67). The Examiner additionally finds that Pierre-Louis teaches a Pod of
computing devices (Ans. 12-13; Pierre-Louis col. 2, ll. 55-63). The
Examiner further finds that Kikinis teaches “[i]nstalling a default operating
system image on [a] default partition, the default operating system image
including a service for providing a status of the computing device to the
aggregation node (see Kikinis, Column 1, Lines 53-63).” (Ans. 12).
Appellants contend that Kikinis’s does not teach an aggregation node:
The "watchdog processor" or "watchdog device" of
Kikinis exists in a single computing device and determines if
the computing device must reboot due to a failure in the
computing device. Kikinis further describes the watchdog
processor as being, for example, "an integrated circuit (IC) that
is integrated into any of the other ICs or it may exist as
additional elements in network appliance 13" (column 2, lines
48-50).
In contrast, an aggregation node is a computing device
that:
is responsible for monitoring and managing the
computing devices in the Pod and for
communicating, cooperating, and generally
interacting with the aggregation nodes of the other
Pods that comprise the entire network.
Specification, page 4, lines 15-18[.]
(Br. 17). Appellants further contend:
The Examiner has equated the "watchdog processor" of Kikinis
with the aggregation node and stated that the watchdog
processor monitors and manages the computing devices (Office
Action of June 28, 2006; page 11). However, nowhere in
Kikinis, or in the other references, is the watchdog processor
described as having the capability of monitoring or managing a
Pod of devices, as is claimed - instead, the watchdog processor
exists in a single computing device and determines if that single
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computing device must reboot due to a failure in the computing
device. There is no teaching or suggestion in Kikinis or the
other references that indicates that the watchdog processor
"monitors" or "manages" any computing devices other than
possibly the computing device in which the watchdog processor
is included. A watchdog processor that is so localized as to be
part of the same set of integrated circuits that comprise an
"appliance" - as is specified by Kikinis - cannot be presumed
without any evidence to "monitor" or "manage" other
computing devices of a Pod over a network.
(Br. 22).
We agree with the Examiner’s implicit claim construction that the
claimed aggregation node is a node that performs the operations identified in
the claim as being performed by the aggregation node (see Ans. 25). We
further agree with the Examiner that Kikinis’s watchdog processor monitors
a first Pod of computing devices including a first computing device (i.e.,
Kikinis’s CPU) (Ans.11). We note that claim 30 does not preclude the
“Pod” from comprising a single (i.e., “at least one” as recited in the claim)
“computing device” with a single “aggregation node,” nor does it preclude
the computing device and aggregation node from being in the same
appliance or device. Furthermore, the claim does not recite that computing
devices are monitored and managed by the aggregation node over the
network. (C.f., Br. 22). Although we interpret the claim in light of the
Specification, we do not import limitations into the claim from the
Specification. See SuperGuide, 358 F.3d at 875.
We agree with the Examiner (Ans. 25) that, giving the claim its
broadest reasonable interpretation in light of the specification, Morris, 127
F.3d at 1054, without importing limitations from the Specification,
SuperGuide, 358 F.3d at 875, the functions of Kikinis’s watchdog processor
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are encompassed within “monitoring and managing the computing devices
comprising the Pod” (which may be a single device). We further agree with
the Examiner’s finding (Ans. 12) that the functions of Kikinis’s watchdog
processor and CPU are encompassed within “a service providing a status of
the computing device to the aggregation node.” Accordingly, we agree with
the Examiner (Ans. 25) that Kikinis’s watchdog processor is encompassed
within the claimed “aggregation node.”
The Appellants have not persuaded us of error in the Examiner’s
rejection of claim 30. Therefore, we will sustain the rejection of claim 30
and of dependent claims 31-42, not separately argued.

NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claims 7, 42-49, and 53 are rejected on a new ground of rejection
under 35 U.S.C. § 101 as being directed to unpatentable subject matter.
Our reviewing court has found that transitory, propagating signals are
not within any of the four statutory categories (process, machine,
manufacture, or composition of matter). Therefore, a claim directed to
computer instructions embodied in a signal is not statutory under 35 U.S.C.
§ 101. Nuijten, 500 F.3d at 1357. Moreover, “[a] claim that covers both
statutory and non-statutory embodiments . . . embraces subject matter that is
not eligible for patent protection and therefore is directed to non-statutory
subject matter,” U.S. Patent & Trademark Office, Interim Examination
Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. §
101, Aug. 2009, at 2, available at http://www.uspto.gov/patents/law/
comments/2009-08-25_interim_101_instructions.pdf. 
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Claim 7 recites that it is directed to “[a] computer readable medium
having computer executable instructions . . . .” Claim 7, given its broadest
reasonable interpretation, does not preclude this “computer readable
medium” and its “computer executable instructions” from being transitory.
We find Appellants’ disclosure explicitly encompasses a transitory signal
within “computer readable media.” (See Spec. 11:4-12:2). “[C]omputer
readable media may comprise computer storage media and communication
media.” (Spec. 11:7-8). “Communication media typically embodies
computer readable instructions, data structures, program modules or other
data in a modulated data signal such as a carrier wave or other transport
mechanism and includes any information delivery media.” (Spec. 11:16-
18). Accordingly, we construe claim 7 as embracing a transitory
propagating signal, and, therefore, directed to non-statutory subject matter.
Claims 42-49 and 53 include substantially the same recitation as claim 7 and
are also directed to non-statutory subject matter for the same reason as claim
7. Therefore, we enter a new ground of rejection of claims 7, 42-49, and 53
under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 6

ORDER
The decision of the Examiner to reject claims 8-20 and 30-49 under
35 U.S.C. § 103(a) is affirmed.

6 The Office suggests “[a] claim drawn to such a computer readable medium
that covers both transitory and non-transitory embodiments may be amended
to narrow the claim to cover only statutory embodiments to avoid a rejection
under 35 U.S.C. § 101 by adding the limitation ‘non-transitory’ to the
claim,” David J. Kappos, Subject Matter Eligibility of Computer Readable
Media, 1351 OFF. GAZ. PAT. OFFICE 212 (Feb. 23, 2010).

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The decision of the Examiner to reject claims 1, 3-7, 21-29, and 50-53
under 35 U.S.C. § 103(a) is reversed.
We enter a new ground of rejection for claims 7, 42-49, and 53 under
35 U.S.C. § 101.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
37 C.F.R. § 41.50(b).
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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