Nathan J. Peterson et al.

Patent Trials and Appeals Board

Feb 3, 2020

14100738 - (D) (P.T.A.B. Feb. 3, 2020)

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.
14/100,738 12/09/2013 Nathan J. Peterson RPS920130124-US-NP 2324
63203 7590 02/03/2020
ROGITZ & ASSOCIATES
4420 Hotel Circle Court
SUITE 230
SAN DIEGO, CA 92108
EXAMINER
GARCIA-CHING, KARINA J
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
John@rogitz.com
Noelle@rogitz.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NATHAN J. PETERSON, JOHN SCOTT CROWE,
AMY LEIGH ROSE, JENNIFER LEE-BARON,
JAMES C. LOEBACH, and NAGANANDA CHUMBALKAR
____________________

Appeal 2018-008706
Application 14/100,738
Technology Center 2400
____________________

Before ALLEN R. MACDONALD, MICHAEL J. ENGLE, and
IFTIKHAR AHMED, Administrative Patent Judges.

AHMED, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1, 8, 15, 20–21, and 28–43, which are all of the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Technology
The application “relates generally to peer to peer server networks.”
Spec. 1.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, the real party in interest is Lenovo
Singapore PTE. Ltd. Appeal Br. 2.
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Illustrative Claim
Claim 1 is illustrative and reproduced below with the limitation at
issue under 35 U.S.C. § 103 underlined and certain limitations at issue under
35 U.S.C. § 101 italicized (all emphasis, reformatting, and bracketed
material added):
1. An apparatus, comprising:
[A.] a processor; and
[B.] storage accessible to the processor and bearing
instructions executable by the processor to:
[i.] determine that a new computer system is
present that has not had settings other than at most
default settings applied to a basic input output system
(BIOS) executable by the new computer system to boot
the new computer system;
[ii.] based at least in part on a determination that
the new computer system at least one of[:]
[a.] is the same model of computer as the
apparatus,
[b.] has the same BIOS version as the
apparatus, and
[c.] has the same baseboard management
controller (BMC) version as the apparatus,
facilitate at least first settings to be provisioned to the
new computer system to establish the first settings in the
new computer system at least in part based on:
[a.] encapsulation of the first settings in an
extensible markup language (XML) document;
[b.] omission of at least a second setting
from the XML document, the omission being made
based at least in part on a determination that the
new computer system at least one of:
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[(i).] is not the same model of computer
as the apparatus,
[(ii).] does not have the same BIOS
version as the apparatus, and
[(iii).] does not have the same baseboard
management controller (BMC)
version as the apparatus; and
[c.] transmission of the XML document to
the new computer system.
Appeal Br. 44 (Claims Appendix).
REJECTIONS
Claims 1, 8, 15, 20–21, and 28–43 stand rejected under 35 U.S.C.
§ 101 as being directed to ineligible subject matter without significantly
more. Final Act. 3. We select claim 1 as representative for this rejection.
Claim 42 stands rejected under 35 U.S.C. § 112(b) as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which the inventors regards as the invention. Final Act. 6.2
Claims 21 and 42 stand rejected under 35 U.S.C. § 102(a) as
anticipated by Gillingham (US 2009/0073896 A1; Mar. 19, 2009). Final
Act. 6.
Claim 1 stands rejected under 35 U.S.C. § 103 as obvious over the
combination of Fulginiti (US 2003/0120827 A1; June 26, 2003) and Lee
(US 2008/0130517 A1; June 5, 2008). Final Act. 9.

2 The Answer does not discuss the 35 U.S.C. § 112(b) rejection of claim 1
and its dependent claims (Final Act. 6). We deem that rejection to be
overcome by an amendment in the reply filed on May 9, 2017 (after the
Final Action), and entered by the Examiner on June 14, 2017. Advisory
Action 1.
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Claims 8 and 33–36 stand rejected under 35 U.S.C. § 103 as obvious
over the combination of Zintel (US 2005/0097503 A1; May 5, 2005), Porel
(US 2009/0228649 A1; Sept. 10, 2009), and Brown (US 7,827,394 B2; Nov.
2, 2010). Final Act. 13, 23, 24.
Claims 15 and 39 stand rejected under 35 U.S.C. § 103 as obvious
over the combination of Gillingham, Zintel, and Chen (US 2007/0288662
A1; Dec. 13, 2007). Final Act. 15.
Claims 28 and 29 stand rejected under 35 U.S.C. § 103 as obvious
over the combination of Fulginiti, Lee, Porel, and Agarwal (US
2014/0126410 A1; May 8, 2014). Final Act. 19.
Claims 30 and 31 stand rejected under 35 U.S.C. § 103 as obvious
over the combination of Fulginiti, Lee, Porel, and Olsen (US 2009/0282328
A1; Nov. 12, 2009). Final Act. 20.
Claim 32 stands rejected under 35 U.S.C. § 103 as obvious over the
combination of Fulginiti, Lee, Porel, and Chen. Final Act. 22.
Claim 37 stands rejected under 35 U.S.C. § 103 as obvious over the
combination of Zintel, Porel, Brown, and Agarwal. Final Act. 25.
Claim 38 stands rejected under 35 U.S.C. § 103 as obvious over the
combination of Zintel, Porel, Brown, and Chen. Final Act. 26.
Claims 40 and 41 stand rejected under 35 U.S.C. § 103 as obvious
over the combination of Gillingham, Zintel, Chen, and Olsen. Final Act. 27.
Claim 43 stands rejected under 35 U.S.C. § 103 as obvious over the
combination of Gillingham and Olsen. Final Act. 28.
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ISSUES
1. Did the Examiner err in concluding that claim 1 is directed to
ineligible subject matter without significantly more under
§ 101?
2. Did the Examiner err in concluding that claim 42 is indefinite
for failing to particularly point out and distinctly claim the
subject matter which the inventors regards as the invention
under 35 U.S.C. § 112(b)?
3. Did the Examiner err in concluding that Gillingham teaches
“present[ing] a prompt on a display accessible to the processor,
the prompt requesting configuration of the second server,”
“responsive to a determination that there is no device available
from which receive settings,” as recited in claim 42?
4. Did the Examiner err in concluding that Lee teaches or suggests
“omission of at least a second setting from the XML
document,” as recited in claim 1?
5. Did the Examiner err in concluding that Zintel teaches or
suggests “responsive to a new computer system (NCS)
establishing communication with a peer-to-peer network,
determining whether an existing computer system (ECS) can
provide boot settings to the NCS,” as recited in claim 8?
6. Did the Examiner err in concluding that the combination of
Zintel and Chen teaches or suggests “responsive to the
communication being established, present a user interface (UI)
on a display accessible to the system, the UI comprising a
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prompt regarding whether to transmit a pull request for settings
to apply to the system,” as recited in claim 15?
ANALYSIS
§ 101 Rejection of Claims 1, 8, 15, 20–21, and 28–43
Section 101 defines patentable subject matter: “Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. The Supreme Court, however, has “long held that
this provision contains an important implicit exception” that “[l]aws of
nature, natural phenomena, and abstract ideas are not patentable.” Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). “Eligibility under 35 U.S.C. § 101 is a question of law,
based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1166 (Fed. Cir. 2018). To determine patentable subject matter, the Supreme
Court has set forth a two part test.
“First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014).
“The inquiry often is whether the claims are directed to ‘a specific means or
method’ for improving technology or whether they are simply directed to an
abstract end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant that “all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas” (Mayo, 566 U.S. at 71), and “describing the
claims at . . . a high level of abstraction and untethered from the language of
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the claims all but ensures that the exceptions to § 101 swallow the rule.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, “the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter.” Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
If the claims are directed to an abstract idea or other ineligible
concept, then we continue to the second step and “consider the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). The Supreme Court has “described step two of this analysis as a
search for an ‘inventive concept’—i.e., an element or combination of
elements that is sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the ineligible concept itself.” Id. at
217–18 (quotation omitted).
The U.S. Patent & Trademark Office has published revised guidance
on the application of § 101. USPTO, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under
that guidance, we look to whether the claim recites
(1) a judicial exception, such as a law of nature or any of the
following groupings of abstract ideas:
(a) mathematical concepts, such as mathematical formulas;
(b) certain methods of organizing human activity, such as a
fundamental economic practice; or
(c) mental processes, such as an observation or evaluation
performed in the human mind;
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(2) any additional limitations that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h));
and
(3) any additional limitations beyond the judicial exception that,
alone or in combination, were not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)).
See Guidance 52, 55, 56. Under the Guidance, if the claim does not recite a
judicial exception, then it is eligible under § 101 and no further analysis is
necessary. Id. at 54. Similarly, under the Guidance, “if the claim as a whole
integrates the recited judicial exception into a practical application of that
exception,” then no further analysis is necessary. Id. at 53, 54.
A) Claim 1
The Examiner concludes that claims 1, 8, 15, 20–21, and 28–43 are
directed to patent-ineligible subject matter. Final Act. 3–5. We select
independent claim 1 as representative for this rejection. The Examiner
determines that claim 1 is directed to “an abstract idea of provisioning
settings to a new computer system,” including the steps of “1) collecting and
comparing know[n] information (i.e. based at least in part on a determination
that the new computer system at least one of is the same model of computer
as the apparatus, has the same BIOS version as the apparatus, and has the
same baseboard management controller (BMC) version as the apparatus),
and 2) collecting information, analyzing it, and displaying certain results of
the collection and analysis (i.e. based at least in part on a determination that
the new computer system at least one of is the same model of computer as
the apparatus, has the same BIOS version as the apparatus, and has the same
baseboard management controller (BMC) version as the apparatus, facilitate
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at least some settings in the apparatus to be provisioned to the new computer
system to establish the at least some settings in the new computer system).”
Id. at 4. The claimed concept, the Examiner determines, “can be carried out
in existing computers long in use, [with] no new machinery being
necessary.” Id. The Examiner further determines that by Appellant’s own
admission, the “claimed invention is simply automation of an existing
manual technique[].” Id. (citing Spec. ¶ 2) (emphasis added).
According to the Examiner, “[t]he claim does not purport to identify
new computer hardware: it assumes the availability of physical components
for routine input, memory, look-up, comparison, and output capabilities.”
Id. (citing Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)).
Viewed as a whole, the Examiner concludes, the claim elements “do not
provide meaningful limitation(s) to transform the abstract idea into a patent
eligible application of the abstract idea such that the claim[] amounts to
significantly more than the abstract idea itself.” Id. at 5.
Appellant argues that the Examiner’s proposed “abstract ideas
drastically oversimplify the language of the claims.” Appeal Br. 5. Instead,
Appellant argues, the concept of provisioning computer settings to a new
computer system and the explicit language of the claims themselves are
directed to a solution that is “necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks.” Id. at 6 (citing DDR Holdings, LLC v. Hotel.com, LP, 773 F.3d
1245 (Fed. Cir. 2014)). According to Appellant, “the claims are not abstract
because they recite specific steps and computer activities that never have
been held to be abstract.” Id. at 9.
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Further, Appellant argues, claim 1 recites “additional elements of
encapsulation of settings in an extensible markup language (XML)
document, omission of at least one setting from the XML document, and
transmission of the XML document to the new computer system,” which
might add significantly more than the abstract idea. Id. at 10.
We are persuaded by Appellant’s arguments that the Examiner has not
satisfied the proper burden for making a case for patent ineligibility under 35
U.S.C. § 101.
B) USPTO Step 2A, Prong 1
Claim 1 recites, in part, (A) “determin[ing] that a new computer
system is present that has not had settings other than at most default settings
applied”; (B) “determin[ing] that the new computer system at least one of is
the same model of computer as the apparatus, has the same BIOS version as
the apparatus, and has the same baseboard management controller (BMC)
version as the apparatus as the [given] apparatus”; and (C) “facilitat[ing] at
least first settings to be provisioned to the new computer system to establish
the first settings in the new computer system.” Appeal Br. 21. Additionally,
claim 1 recites the steps of (D) “encapsulation of the first settings in an
extensible markup language (XML) document”; (E) “omission of at least a
second setting from the XML document”; and (F) “transmission of the XML
document to the new computer system.” Id.
Step (B) recites comparing version model and version information of
two computers, e.g., determining if the model numbers and BIOS/BMC
versions are the same. For purposes of this decision, we agree with the
Examiner that claim 1 recites a mental process because step (B) listed above
is recited at a high level of generality such that it could practically be
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performed in the human mind or by a human with a pen and paper. See
Elec. Power Grp., 830 F.3d at 1354 (“we have treated analyzing information
by steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category”). Further, at a high level, step (A) recites determining that a
computer is new (e.g., by a system administrator looking at it), and step (C)
simply recites a process of facilitating settings to be provisioned to the new
computer system based on the comparison done in step (B) (e.g., by a
system administrator entering those settings into the new computer).
The process recited by step (B) can undoubtedly be performed within
the human mind (e.g., a system administrator simply looking at model
numbers or BIOS/BMC versions of two computers) or with a pen and paper.
See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed.
Cir. 2011) (reasoning that when a person may implement claimed steps by
simply writing down the claimed data elements, those steps can all be
performed in the human mind); see also Univ. of Utah Research Found. v.
Ambry Genetics Corp., 774 F.3d 755, 763 (Fed. Cir. 2014) (holding that
claims for comparing BRCA sequences, where such comparison can
practically be performed in the human mind, are directed to an abstract
idea); Guidance 52 & n.14 (listing cases).
Therefore, on the record before us, we determine that the Examiner’s
articulated reasoning is sufficient on USPTO Step 2A, Prong 1, and
determining settings for a new computer based on a comparison of that
computer with an existing one comprises a mental process, which is an
abstract idea.
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C) USPTO Step 2A, Prong 2
Although we agree with the Examiner that claim 1 recites a mental
process, the Examiner has not shown that the claim, as a whole, fails to
“integrate[] the recited judicial exception into a practical application of the
exception.” Guidance 54 (emphasis added). Put another way, the Examiner
has not sufficiently addressed whether the claims “apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Id. (emphasis added). Further, the
analysis under prong 2 considers the claim as a whole, i.e., “the limitations
containing the judicial exception as well as the additional elements in the
claim besides the judicial exception need to be evaluated together to
determine whether the claim integrates the judicial exception into a practical
application.” October 2019 Patent Eligibility Guidance Update, at 12,
available at http://www.uspto.gov/PatentEligibility.
Here, Appellant argues that “‘[p]rovisioning settings to a new
computer system’ in the way claimed is indeed an improvement to computer
functionality, and ‘the plain focus of the claims is on an improvement to
computer functionality’ rather than an economic or other task for which a
computer is merely used for automation.” Appeal Br. 7. Moreover,
Appellant argues, claim 1 recites “additional elements of encapsulation of
settings in an extensible markup language (XML) document, omission of at
least one [setting] from the XML document, and transmission of the XML
document to the new computer system,” which amount to significantly more
than the abstract idea determined by the Examiner. Id. at 10. Appellant
argues that the Examiner’s rejection of claim 1 fails to consider those
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additional elements both individually and as an ordered combination. Id. at
11–12. According to Appellant, even though claim 1 recites “provisioning
settings to a new computer system,” it recites doing so “in explicit, concrete
steps that involve XML encapsulation.” Id. at 6.
We are persuaded that the Examiner has erred. In the context of
revised Step 2A, claim limitations “that reflect an improvement in the
functioning of a computer, or an improvement to other technology or
technical field” are indicative of a recited judicial exception being integrated
into a practical application. Guidance 55 (citing DDR Holdings, 773 F.3d at
1257); see also MPEP § 2106.05(a). A limitation that “applies or uses the
judicial exception in some other meaningful way beyond generally linking
the use of the judicial exception to a particular technological environment”
similarly integrates the exception into a practical application. Guidance 55
(citing Diamond v. Diehr, 450 U.S. 175, 184 (1981)); see also MPEP
§ 2106.05(e).
Here, claim 1 is specifically directed to provisioning settings to a new
computer system using XML encapsulation. As noted in the Background of
the invention, at the time of the invention,
configuring and replicating BIOS, BMC, RAID, settings etc.
when deploying new servers in a network can be very time
consuming. A system administrator is often required to boot
every new computer or server and either run scripts or manually
set configurations, settings, parameters, etc. As a result,
businesses typically invest a great deal of money and time for
such purposes, while simultaneously having at least part of the
network being nonoperational while each server is booted up
and/or configured.
Spec. 1 (emphasis added).
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The Specification explains how an administrator can configure a
single server manually, to subsequently configure a plurality of identical
new servers that come online and communicate over a peer-to-peer network
with the first server. Id. at 11. The Specification discloses the use of
broadcast packets on the peer-to-peer network to announce the presence of a
new server. Id. Once the network administrator has configured one server,
new servers that come online, identical in at least some respects to the
existing server are automatically provisioned with configuration settings. Id.
at 21. We therefore agree with Appellant that automatically provisioning
settings to a new computer system in the manner claimed improves the
technical functioning of the servers by efficiently configuring them as soon
as they come online.
Moreover, claim 1 recites that the provisioning of settings is done
using “encapsulation of the . . . settings in an extensible markup language
(XML) document” (Appeal Br. 44), thereby requiring a specific document
format to be used for configuration of the new server. Claim 1 further
recites “omission of at least a second setting from the XML document” and
“transmission of the XML document to the new computer system.” Id. The
claim language, when read in view of the Specification, thus supports that
claim 1 is limited to the technical field of provisioning settings to new
computers via XML documents and that such XML documents must have or
omit the specified settings.
Claim 1 therefore improves the technical functioning of the computer
by reciting a specific technique for using XML documents to improve
configuration of new servers by allowing servers on a network to be
configured automatically where a system administrator has already
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configured another identical server. See SRI Int’l, Inc. v. Cisco Sys., Inc.,
930 F.3d 1295, 1303 (Fed. Cir. 2019) (concluding that a claim that recites
using a plurality of network monitors to analyze specific network traffic data
and integrate generated reports from the monitors to identify hackers and
intruders on the network constitutes an improvement in computer network
technology); see also BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) (holding that even though the
claim at issue recites the abstract idea of filtering, the claimed invention
improves technology when the filtering limitations are considered in
combination with the remaining limitations).
Because claim 1 as a whole integrates the recited abstract idea into a
practical application of that idea and reflects an improvement in the
functioning of a computer, under the Guidance, it is not “directed to” the
recited abstract idea and thus qualifies as eligible subject matter under § 101.
The Examiner thus erred in rejecting independent claim 1. Because the
Examiner rejects claims 8, 15, 20, 21, and 28–43 for the same reasons as
claim 1 (Final Act. 3–5), we do not sustain the rejection of claims 1, 8, 15,
20, 21, and 28–43 under § 101.
§ 112 Rejection of Claim 42
Claim 42 depends from independent claim 21 and recites “responsive
to a determination that there is no device available from which receive
settings, [sic] present[ing] a prompt on a display accessible to the processor,
the prompt requesting configuration of the second server.” Appeal Br. 29
(emphasis added). In rejecting claim 42 as indefinite under § 112(b), the
Examiner concludes that the determination “there is no device available
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from which receive settings” is not clear. Final Act. 6.3 The Examiner finds
that the Specification does discuss this feature, “but fails to provide a
mechanism for determining ‘whether a (e.g.[,] pre-existing on the peer
network) server with settings from which to pull is present on the network.’”
Ans. 14 (citing Spec. ¶¶ 49, 50).4 According to the Examiner, “even when
settings are known to exist, some settings may be pulled while others are
not,” and therefore “[i]t is unclear how the system determines if settings may
be pulled and if so, which ones.” Id. (emphasis added).
Appellant argues that “the specification discloses that the
determination step regarding no device being available might be performed
[in] a number of ways.” Reply Br. 23 (citing Spec. ¶¶ 34, 35, Fig. 2).
Appellant points to portions of the Specification that disclose that network
communication for the claimed system can occur using the Internet, a WAN,
or a LAN. Id. (citing Spec. ¶¶ 47, 49). Therefore, Appellant argues, “the
specification makes very clear how the servers might be available to each
other using one of the types of network communication that the specification
describes,” and “sets forth ways for determining whether ‘no device’ is
available through the example network and example communication
protocols that it describes, with the devices either communicating or not

3 The Examiner rejected claims 1 and 28–32 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to recite antecedent basis for the
claim term “the document.” Final Act. 6. As discussed above, we deem that
rejection to be overcome by an amendment in the reply filed on May 9, 2017
and entered by the Examiner. Advisory Action dated June 14, 2017; Appeal
Br. 12, 44.
4 The Specification, as filed, includes no paragraph numbers. We therefore
cite to the Specification by page number. In its brief, however, Appellant
cites paragraph numbers from the published version the Application. See
US 2015/0163294 A1.
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communicating depending on whether the devices are connected to the same
example network 200 that is shown in Figure 2.” Id. at 23–24. Appellant
further argues that the Specification discloses “a ‘mechanism’ for the
determination that there is no device available from which to receive settings
[as recited in] Claim 42 — using broadcast packets.” Id. at 24 (citing Spec.
¶¶ 48, 49). As for specific settings, Appellant argues that because the
Specification discloses a pull request that a new server may use to pull
configuration settings and then skip certain settings received, the
Specification discloses “determining whether there is no device available
from which to receive settings, whether that is because (1) another
applicable device is not communicating over the same network or
(2) because it does not have settings specified in a pull request even if
communicating over the same network.” Id. at 25 (citing Spec. ¶ 46, Fig. 4).
We are persuaded that the Examiner has erred. Claim 42 recites that
“responsive to a determination that there is no device available from which
[to] receive settings, present a prompt on a display accessible to the
processor, the prompt requesting configuration of the second server.” The
claims, when read in light of the Specification and the prosecution history,
and under the broadest reasonable interpretation, must provide objective
boundaries for those of skill in the art. See In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014); see also Ex parte McAward, Appeal No. 2015-
006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential)
(reaffirming that “we apply the approach for assessing indefiniteness
approved by the Federal Circuit in Packard, i.e., a claim is indefinite when it
contains words or phrases whose meaning is unclear”) (quotations omitted).
We are persuaded that a person ordinarily skilled in the art, in view of the
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Specification, would have determined the scope of this claim limitation, i.e.,
understood how the determination of no device available from which to
receive settings is made. The Specification details the steps in finding a
server from which configuration settings may be received.
Then at block 258 the logic broadcasts packets over e.g. a peer-
to-peer network. The packets may be sent to the internal
network and not necessarily beyond the router within the peer-
to-peer network, if desired. Also if desired, the recipients of
such broadcast packets may be configured within the network
but need not necessarily be so configured.
Spec. 15 (discussing Fig. 4). We agree with Appellant that a person of
ordinary skill in the art would have understood the Specification as
disclosing “ways for determining whether ‘no device’ is available through
the example network” based on whether the devices are connected to the
same network and are already communicating. Reply Br. 24 (citing Spec.
Fig. 2). Further, the Specification lists at least a few settings which may be
pulled: “model settings, HDD capacity, BIOS version, and BMC version.”
Spec. 15. When read in light of the specification, claim 42 would have
provided objective boundaries to a person ordinarily skilled in the art, and
therefore, it is not indefinite.5.
§ 102 Rejection of Claims 21 and 42
Claim 42 depends from independent claim 21 and further requires
“responsive to a determination that there is no device available from which
[to] receive settings, present[ing] a prompt on a display accessible to the

5 Appellant is advised that claim 42 includes a typographical error, missing
the word “to,” where it recites “responsive to a determination that there is no
device available from which receive settings.” Appeal Br. 29 (emphasis
added).
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processor, the prompt requesting configuration of the second server.”
Appeal Br. 29 (emphasis added). The Examiner finds claims 21 and 42
anticipated by Gillingham. Final Act. 6–8.
Appellant does not appeal the rejection of independent claim 21 under
35 U.S.C. § 102(a). Final Act. 6–8. We therefore sustain the Examiner’s
rejection of claim 21.
With regard to dependent claim 42, the Examiner determines that
Gillingham teaches “present[ing] a prompt on a display” because it discloses
a method for “auto-partitioning of a multi-node processing system” that “can
include establishing connection data, identifying a primary node, and
automatically transmitting partitioning commands to other nodes to
configure them as secondary nodes,” where “[t]he partitioning commands
can adjust the BIOS settings and board controller settings of the primary and
secondary nodes such that the system boot as a single partition system.” Id.
at 8 (citing Gillingham ¶ 13).
Appellant argues that Gillingham does not disclose anything being
presented on a display. Appeal Br. 14. In fact, Appellant contends,
“[d]isplays are not even mentioned, nor are ‘prompts’ of some kind that
might be presented on them.” Id. According to Appellant, Gillingham
“merely discloses establishing connection data, identifying a primary node,
and automatically transmitting partitioning commands.” Id. (citing
Gillingham ¶ 13).
We are persuaded of Examiner error. Claim 42 requires “present[ing]
a prompt on a display accessible to the processor, the prompt requesting
configuration of the second server.” Gilligham discloses “automatically
transmitting partitioning commands to other nodes to configure them as
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secondary nodes.” Gillingham ¶ 13. Although Gillingham teaches
transmitting commands related to configuration of a system, we agree with
Appellant that the Examiner has not sufficiently explained how Gillingham
discloses presenting a prompt on a display in order to request those
commands. Thus, we agree with Appellant that the Examiner has not shown
that Gillingham teaches “present[ing] a prompt on a display accessible to the
processor, the prompt requesting configuration of the second server,” as
recited in claim 42. Accordingly, we do not sustain the Examiner’s rejection
of claim 42 as being anticipated by Gillingham, but we do sustain the
Examiner’s rejection of claim 21.
§ 103 Rejection of Claims 1, 28–32
Independent claim 1 recites “omission of at least a second setting
from the XML document”6 (Appeal Br. 17), which the Examiner finds is
taught by Lee. Final Act. 11. The Examiner determines that Lee teaches an
“automatic reconfiguration apparatus [that] compares a hardware version of
the new network device to the stored hardware version of the former
network device located at a corresponding position in the prime topology to
see whether they are identical,” and if so, “the . . . apparatus can duplicate
and load the corresponding prime configuration . . . stored in the database of
the automatic reconfiguration apparatus into the new network device.” Id.
(citing Lee ¶¶ 23, 24). The Examiner finds that to be “equivalent to sending

6 We note that as drafted, the “omission” and “transmission” limitations of
claim 1 are not further indented below the “facilitate” limitation, which
recites “facilitate at least first settings to be provisioned to the new computer
system to establish the first settings in the new computer system at least in
part based on:.” Appeal Br. 44 (emphasis added). For the purposes of this
Appeal, we read claim 1 to have those two limitations as sub-parts of the
“facilitate” limitation.
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the settings to the new computer only if the new computer and the existing
computer are identical, otherwise the settings will not be sent.” Id.
Appellant argues that Lee “merely disclose[s] comparing hardware
versions of devices to see if they are identical . . . and then duplicating and
loading Lee’s prime configuration into the new network device so that the
new network device can work with the prime configuration.” Appeal Br. 17
(citing Lee ¶¶ 23, 24). When the devices in Lee are not identical, Appellant
contends, “Lee merely loads a default configuration into the new network
device and performs automatic reconfiguration with the default
configuration.” Id. (citing Lee ¶ 23). That, Appellant contends, “do[es] not
disclose omitting anything from a document based on a determination.” Id.
We are persuaded of Examiner error. Claim 1 requires “omission of
at least a second setting from the XML document, the omission being made
based at least in part on a determination that the new computer system at
least one of is not the same model of computer as the apparatus, does not
have the same BIOS version as the apparatus, and does not have the same
baseboard management controller (BMC) version as the apparatus.”
Although we agree with the Examiner that Lee “teaches that when the
devices are not identical, the prime configuration is not copied,” and “the
prime configuration settings are omitted from application to the new device
in lieu of default configurations” (Ans. 17), there is no teaching or
suggestion in Lee of omission of a setting, specifically a second setting,
from an XML document being used in claimed invention. In fact, Lee
teaches a determination based solely on the “hardware version” of the
network device, and where the version does not match the existing one, Lee
teaches “load[ing] a default configuration previously stored therein into the
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new network device and perform automatic reconfiguration with the default
configuration.” Lee ¶ 26, Fig. 2. That is, Lee teaches loading the entire
default configuration to the new device, and only “[a]fterwards, manual
adjustment and verification of the parameters are conducted by the
administrator to ensure the new network device is working normally.” Id.
¶ 26. We therefore agree with Appellant that the Examiner has failed to
sufficiently explain how Lee teaches “omission of at least a second setting
from the XML document,” in the manner recited in claim 1.
The Examiner also does not rely on Fulginiti or Porel as teaching this
limitation. Final Act. 11. Accordingly, we do not sustain the Examiner’s
obviousness rejection of claim 1, and its dependent claims 28–32.
§ 103 Rejection of Claims 8, 33–38
Independent claim 8 recites “responsive to a new computer system
(NCS) establishing communication with a peer-to-peer network, determining
whether an existing computer system (ECS) can provide boot settings to the
NCS” (Appeal Br. 45), which the Examiner finds is taught by Zintel. Final
Act. 13. The Examiner finds that Zintel discloses devices that “interoperate
on an ad hoc peer-to-peer networking connectivity basis,” which “enables
any networked device to initiate a communication with any other networked
device.” Id. (citing Zintel ¶ 4). The Examiner further determines that Zintel
discloses “self-bootstrapping or automatic dynamic self-configuring of
devices for ad hoc peer networking with other devices.” Id. (citing Zintel
¶ 42). Together, the Examiner concludes, these disclosures teach the
limitation as claimed. Id.; Ans. 21.
Appellant argues that claim 8 “recites a causal chain where
determining whether the ECS can provide certain settings to the NCS is
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done responsive to the NCS establishing communication with a peer-to-peer
network,” and that “[t]hat causal chain does not manifest itself simply by
cobbling together two paragraphs from separate portions of Zintel.” Appeal
Br. 19–20 (citing Zintel ¶¶ 4, 42).
The Examiner responds that the term “[‘r]esponsive to[’] does not
require that the determining happen immediately after the communication
establishment, because the broadest reasonable interpretation does not
require some sort of temporal requirement.” Ans. 21. According to the
Examiner, “the system cannot determine if the configuring can be performed
until there is a communication link established, because the communication
link is . . . necessary to report device settings.” Id. at 21–22. The Examiner
concludes that Zintel’s teaching is “sufficient to render the claim language
obvious because the arrangement of functions (performing determining after
establishing a connection) are functions that Appellant does not dispute the
reference teaches and they perform the same in sequence as they do in their
‘separate portions.’” Id. at 22.
We are persuaded of Examiner error. Claim 8 requires “determining
whether an existing computer system (ECS) can provide boot settings to the
NCS” “responsive to a new computer system (NCS) establishing
communication with a peer-to-peer network.” We agree with the Examiner
that Zintel teaches establishing a peer-to-peer network and that such a
network “allows for a device to be capable of both initiating and accepting
connections to/from other devices.” Zintel ¶ 4. The Examiner however fails
to sufficiently explain how Zintel teaches “determining whether an existing
computer system (ECS) can provide boot settings.” As Appellant points out,
Zintel merely discloses “self-bootstrapping or automatic dynamic self-
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configuring of devices for ad hoc peer networking with other devices on a
computing network.” Reply Br. 31. The Examiner has not sufficiently
explained why the Examiner’s interpretation would have been obvious rather
than, for example, merely Appellant’s interpretation that Zintel’s devices are
“preconfigured by the manufacturer with the ability to ‘automatic dynamic
self-configure’ without having to also communicate with other devices.”7
Id. (emphasis added). Thus, we agree with Appellant that the Examiner has
not shown that Zintel teaches or suggests “responsive to a new computer
system (NCS) establishing communication with a peer-to-peer network
determining whether an existing computer system (ECS) can provide boot
settings to the NCS,” as recited in claim 8. The Examiner also does not rely
on Porel or Brown as teaching this limitation. Final Act. 13. Accordingly,
we do not sustain the Examiner’s obviousness rejection of claim 8, and its
dependent claims 33–38.8
§ 103 Rejection of Claims 15, 20, 39–41
Independent claim 15 recites “present[ing] a user interface (UI) on a
display accessible to the system, the UI comprising a prompt regarding
whether to transmit a pull request for settings to apply to the system”
(Appeal Br. 45), which the Examiner finds is taught by the combination of

7 For example, Zintel discusses that Universal Plug and Play, one possible
implementation of self-bootstrapping (Zintel ¶ 42), “is built on top of
networking and enables ad hoc peer-to-peer connectivity” (id. ¶ 53), and
therefore occurs prior to, not responsive to, “establishing communication
with a peer-to-peer network.”
8 We note that claim 8 is a method claim which further recites “wherein the
method, to make the boot settings available, comprises: encapsulating . . . ;
omitting . . . ; and providing . . . .” Appeal Br. 45. For the purposes of this
Appeal, we read the three steps following that limitation also as sub-steps of
“the method.”
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Zintel and Chen. Final Act. 17. The Examiner finds that Zintel discloses
“provid[ing] remote access and control of connected devices and services
from another device with user interface capabilities (e.g., a universal remote
controller, handheld computer or digital assistant, cell phones, and the like),”
which the Examiner determines teaches “present[ing] a user interface (UI)
on a display accessible to the system.” Final Act. 17. The Examiner further
finds that Chen discloses “an interactive data query module (equivalent to
the apparatus) for accepting a pulling request from a remote client device
(equivalent to new computer system),” which according to the Examiner
teaches “the UI comprising a prompt regarding whether to transmit a pull
request for settings to apply to the system.”
Appellant argues “(1) that nothing in the relied-upon portions of
Zintel is disclosed as presented on a display, much less a UI specifically, and
(2) the causal chain required by the claim is also not disclosed” by Zintel.
Appeal Br. 23 (citing Zintel ¶¶ 3, 4). Appellant further contends “nothing
from [the cited] paragraphs indicates that anything is presented on a display
responsive to communication of two devices being established.” Id. With
regard to Chen, Appellant argues that it only briefly discusses a user
interface: “an interactive data query module for accepting a pulling request
from a remote client device and sending the second kind of information to
that client device according to the pulling request.” Id. (citing Chen ¶¶ 26,
55). According to Appellant, Chen “appears to assume a ‘pulling request’
has already been provided and is therefore not concerned with ‘whether to
transmit’ one.” Id. Therefore, Appellant argues, Chen “does not even
intimate that a ‘prompt’ of some kind be presented on a display, much less
one regarding whether to transmit a pull request.” Id. at 24.
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The Examiner responds that “[a] pull request is a command to get
information (pull information) from a networked system,” and “the teaching
[of] a pull request, as in Chen, suggests it occur[s] responsive to an
established communication.” Ans. 23. The Examiner determines that “Chen
teaches a client device sending a pull request, and Zintel . . . teaches user
interface capabilities for remote access of devices.” Id. at 24. The Examiner
further determines that “the broadest reasonable interpretation of prompt
encompasses not only prodding for a particular action, but simply a
mechanism for entering input for actions,” and therefore, “[t]he fact that a
remote access action such as a pull request is made via a UI suggests a
prompt for entering the request.” Id.
We are persuaded that the Examiner has erred. Although we agree
with the Examiner that the claim limitation should be given its broadest
reasonable interpretation, we are not persuaded that Chen teaches
“prompt[ing] regarding whether to transmit a pull request for settings to
apply to the system” in the manner determined by the Examiner. The cited
portion of Chen recites “an interactive data query module for accepting a
pulling request from a remote client device and sending the second kind of
information to that client device according to the pulling request.” Chen
¶ 26. The Examiner fails to sufficiently explain how that disclosure teaches
or suggests prompting regarding whether to transmit a pull request at the
remote client device in Chen. Moreover, it is unclear from the record before
us that the “pulling request” disclosed in Chen relates in any way to settings
to be applied to the system. See, e.g., id. ¶ 10.
The cited portion of Zintel fails to cure the deficiency found in Chen.
For example, the cited portion of Zintel does not teach or suggest a user
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interface being presented on a display. See Zintel ¶¶ 3 (simply mentioning
“device[s] with user interface capabilities”), 5 (discussing “displays” in
context of the “personal computer and its many peripheral devices”).
The Examiner also does not rely on Gillingham as teaching this
limitation. Final Act. 16–18. Accordingly, we do not sustain the
Examiner’s obviousness rejection of claim 15, and its dependent claims 20,
39–41.
§ 103 Rejection of Claim 43
Claim 43 depends from claim 21 and recites “responsive to the
communication being established, present a first user interface (UI) on a
display accessible to the processor, the first UI comprising a prompt
regarding whether to transmit a pull request for settings to apply to the
second server, the first UI further comprising a first selector element that is
selectable to transmit the pull request and a second selector element that is
selectable to configure the second server manually.” Appeal Br. 49–50. The
Examiner finds that this limitation is taught by Olsen. Final Act. 29. The
Examiner determines that Olsen discloses “[c]onfiguration keys within the
HTML code are detected by executing scanning logic, such as a script, to
prompt requests for configuration data to configure the interface components
in the UI.” Id. (citing Olsen ¶ 13). The Examiner further determines Olsen
discloses “a UI may present various selectable settings that a user can
manipulate with input to the UI,” and these settings “are typically configured
through an application that renders various types of formatted interface
components in the UI.” Id. (citing Olsen ¶ 5, Fig. 1). The Examiner finds
that “Olsen teaches a first selector, and the second selector for manual
configuration is an obvious variant.” Ans. 36.
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Appellant incorporates arguments made with reference to the rejection
of claims 15 and 39–41, and further argues that Olsen “fails to disclose any
specific UIs and selector elements that fairly approach the ones claimed,”
and “[t]he causal chain required by Claim 43 is also not disclosed in
paragraph 5 of Olsen.” Appeal Br. 42.
We are persuaded that the Examiner has erred. The cited portions of
Olsen disclose a user interface comprising various components, and disclose
updating a user interface with data obtained from a server. See Olsen ¶¶ 5,
13. The Examiner fails to sufficiently explain how Olsen teaches or
suggests “present[ing] a first user interface (UI)” “responsive to the
communication being established,” as recited by claim 43. The Examiner
also does not rely on Gillingham as teaching this limitation. Final Act. 29.
Accordingly, we do not sustain the Examiner’s obviousness rejection of
claim 43.
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claim 21 under § 102(a), but we reverse the Examiner’s decision rejecting
(A) claims 1, 8, 15, 20–21, and 28–43 under § 101; (B) claim 42 under
§ 102(a); (C) claim 42 under § 112(b); and (D) claims 1, 8, 15, 20, 28–41,
and 43 under § 103.
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 8, 15, 20–
21, 28–43
101 Ineligible
subject
matter
1, 8, 15, 20–
21, 28–43
42 112(b) Indefiniteness 42
21, 42 102(a) Gillingham 21 42
1 103 Fulginiti, Lee 1
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8, 33–36 103 Zintel, Porel,
Brown
8, 33–36
15, 39 103 Gillingham,
Zintel, Chen
15, 39
28, 29 103 Fulginiti,
Lee, Porel,
Agarwal
28, 29
30, 31 103 Fulginiti,
Lee, Porel,
Olsen
30, 31
32 103 Fulginiti,
Lee, Porel,
Chen
32
37 103 Zintel, Porel,
Brown,
Agarwal
37
38 103 Zintel, Porel,
Brown, Chen
38
40, 41 103 Gillingham,
Zintel, Chen,
Olsen
40, 41
43 103 Gillingham,
Olsen
43
Overall
Outcome
21 1, 8, 15, 20,
28–43
TIME TO RESPOND
No time for taking subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f).
AFFIRMED-IN-PART