Ex Parte Wright et al

Patent Trial and Appeal Board

Oct 26, 2017

13362508 (P.T.A.B. Oct. 26, 2017)

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.
13/362,508 01/31/2012 Edward Allen Wright 82904410 1600
56436 7590
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
CHACKO, JOE
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD ALLEN WRIGHT, DARREN J. CEPULIS, and
THOMAS A. SCHWARTZ
Appeal 2017-006899
Application 13/362,5081
Technology Center 2400
Before ALLEN R. MacDONALD, JEREMY J. CURCURI, and
MICHAEL J. ENGLE, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest is Hewlett-Packard Development Company, LP.
App. Br. 2.
Appeal 2017-006899
Application 13/362,508
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A method for remotely configuring an online computer
system, said method comprising:
generating a configuration file at a management controller
which is a component of a computer system in response to a request
from a configuration utility associated with a user device, wherein
said user device is located remotely from said computer system;
sending said configuration file from said management
controller to said configuration utility via a network connection;
receiving a modified configuration file at said management
controller from said configuration utility via said network connection,
wherein said modified configuration file comprises system level
changes to a configuration of said computer system; and
implementing said system level changes from said modified
configuration file at said computer system while an operating system
associated with said computer system is online.
Rejection on Appeal
The Examiner rejected claims 1—20 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Maity (US 8,484,325 Bl; iss. July 9,
2013) and Bemardy et al. (US 7,475,235 Bl; iss. Jan. 6, 2009).2
2 Our decision as to the rejection of claim 1 is determinative. Therefore,
except for our ultimate decision, the rejection of claims 2—20 is not
discussed further herein.
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Appeal 2017-006899
Application 13/362,508
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS3
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
A
Appellants respectfully submit that the instant Office
Action fails to explain the differences between the asserted art
and Applicant’s claimed features, in which the asserted art
fails to teach, describe, or suggest features of Applicant's
claimed embodiments. Moreover, Appellants respectfully
submit that the instant Office Action fails to explain why these
differences would have been obvious to one of ordinary skill
in the art.
App. Br. 8 (emphasis added).
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because “Maity does not teach, describe, or suggest
‘generating a configuration file at a management controller,’ as claimed.”
App. Br. 9.
First, ... the “remote console data,” as disclosed by Maity,
does not teach, describe or suggest “a configuration file,” as
claimed. In other words, Appellants understand Maity to
describe the server computer system or the BMC generating
data that may or may not be used to generate a configuration
file.
App. Br. 9.
3 The contentions discussed herein are determinative as to the rejection on
appeal. Therefore, although we find Appellants’ remaining contentions
unpersuasive, they are not discussed.
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Appeal 2017-006899
Application 13/362,508
Second,. . . Maity, does not teach, describe or suggest
“generating a configuration file at a management controller,” as
claimed. In other words, Appellants understand Maity to
describe the server computer system or the BMC [i.e.,
baseboard management controller] generating data that is then
passed on to the management appliance 8 where . . . the data is
converted to a common format. Appellants do not
acknowledge that the common format of Maity is the same as a
configuration file ....
App. Br. 9—10 (emphasis omitted and added).
Further, Appellants contend that the Examiner erred in rejecting
claim 1 because “Maity does not teach, describe, or suggest ‘management
controller which is a component of a computer system’ and ‘sending said
configuration file from said management controller to said configuration
utility,’ as claimed.” App. Br. 10.
Appellants respectfully submit that the “a management
appliance 8” that connects to the server “through a network
switch” and “the management appliance 8 transmits the
converted data to the remote management application 20,” as
disclosed by Maity, does not teach, describe or suggest
“management controller which is a component of a computer
system” and “sending said configuration file from said
management controller to said configuration utility,” as claimed
(emphasis added).
App. Br. 11.
B
One gist of Appellants’ arguments is that Maity fails to teach
“generating a configuration file” and “sending said configuration file” as
claimed because Maity’s data (which is converted to a common format) is
not a configuration file. We agree. An artisan would understand a
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Appeal 2017-006899
Application 13/362,508
“configuration file” to be a particular type of file (e.g., a config.sys4 file). In
our review of Maity, we do not find the “data” to be a configuration file, nor
do we find the process steps of Maity correspond to the claimed steps of
“generating a configuration file” and “sending said configuration file.” In
the absence of further explanation from the Examiner, Maity’s “common
format” appears more like a universal protocol than a configuration file.
See, e.g., Maity 10:19—24 (“The common format comprises a format capable
of encapsulating each of the possible remote console protocols. In this
manner, remote console data expressed in RDP, VNC, or serial over LAN
can be recomposed into a common format for transmission . . . .”), 5:46-49
(“Once the protocol has been detected, the management appliance 8 converts
the received remote console data, regardless of protocol, into a common
format capable of encapsulating each of the possible protocols.”) (all
emphasis added).
We conclude, consistent with Appellants’ arguments, there is
insufficient articulated reasoning to support the Examiner’s findings as to
Maity teaching “generating a configuration file” and “sending said
configuration file.” Therefore, we conclude that there is insufficient
articulated reasoning to support the Examiner’s final conclusion that claim 1
4 http://www.computeruser.com/directory (ComputerUser High Tech
Dictionary; accessed October 19, 2017) (“config.sys”):
A file found in the root directory of DOS and OS/2 systems that
is used to load drivers and configure the system. Some
parameters which are set by CONFIG.SYS are the number of
files that can be opened at once, the memory available for disk
buffers, the number of disk drives, etc. The user can modify
CONFIG.SYS, and it is automatically adjusted by some
software installation programs, to enable the software to work
with that system.
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Application 13/362,508
would have been obvious to one of ordinary skill in the art at the time of
Appellants’ invention. Put another way, the Examiner’s conclusion of
obviousness is not supported by sufficient fact findings (that is, a rational
underpinning) on the record.
When the Examiner does not provide sufficient articulated reasoning
to support a conclusion of obviousness, then improper hindsight is inferred.
Cf. In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (“When the Board does
not explain the motivation, or the suggestion or teaching, that would have
led the skilled artisan at the time of the invention to the claimed combination
as a whole, we infer that the Board used hindsight to conclude that the
invention was obvious.”) (citing In re Rouffet, 149 F.3d 1350, 1358 (Fed.
Cir. 1998)).
CONCFUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1—20 as being unpatentable under 35 U.S.C. § 103(a).
(2) On this record, these claims have not been shown to be
unpatentable.
DECISION
The Examiner’s rejection of claims 1—20 is reversed.
REVERSED
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