Ex Parte Cromer et al

Patent Trial and Appeal Board

May 7, 2013

10749583 (P.T.A.B. May. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte DARYL CARVIS CROMER, RICHARD ALAN DAYAN,
JOSEPH WAYNE FREEMAN, STEVEN DALE GOODMAN,
ERIC RICHARD KERN, HOWARD JEFFREY LOCKER,
and RANDALL SCOTT SPRINGFIELD
_____________

Appeal 2010-011795
Application 10/749,583
Technology Center 2400
______________

Before, ROBERT E. NAPPI, BRYAN F. MOORE and STACY G. WHITE,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011795
Application 10/749,583

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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 7, 12 through 18, 38 through 41, and 48 through 50.
We affirm-in-part.
INVENTION
The invention is directed to a method to select a boot image to be used
by a remote computer, when the computer is issued a remote wake up such
as a “Wake-on-LAN” (WOL) command. See pages 3 through 5 of
Appellants’ Specification. Claim 1 is representative of the invention and
reproduced below:
1. A method for booting a remote client via a bootable
image on the remote client over a network, the method
comprising:
selecting the bootable image on the remote client to boot
the remote client, the bootable image comprising software to
determine the trustworthiness of a software application on a
maintenance server prior to executing the software application,
for the remote client;
generating a wake-on-LAN packet with a partition
identification, the partition identification comprising an address
of a location of the bootable image, to identify the location
within a local resource of the remote client; and
transmitting the wake-on-LAN packet to the remote
client to wake up the remote client and to instruct a pre-boot
application of the remote client to boot via the bootable image.

REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 7, 12, 15 through 18, 38,
39, and 41 under 35 U.S.C. § 103(a) as being unpatentable over Girard (U.S.
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7,093,124 B2), Dayan (U.S. 2002/0188837 A1), and Rothman (U.S.
2004/0267926 A1). Answer 3-81.
The Examiner has rejected claims 13, 14, and 40 under 35 U.S.C.
§ 103(a) as unpatentable over Girard, Dayan, Rothman, and Kim (U.S.
2004/0163008 A1). Answer 8-11.
The Examiner has rejected claims 48 and 50 under 35 U.S.C. § 103(a)
as unpatentable over Girard, Dayan, Rothman, and Connery (U.S. 6,606,709
B1). Answer 11.
The Examiner has rejected claim 49 under 35 U.S.C. § 103(a) as
unpatentable over Girard, Dayan, Rothman, Kim, and Connery. Answer 12.

ISSUES
Independent Claims 1and 15
Appellants argue on pages 6 through 11 of the Appeal Brief, and
pages 6 through 11 of the Reply Brief, that the Examiner’s rejection of
independent claims 1 and 15 is in error.2 These arguments present us with
the issues:
a) Did the Examiner err in finding that Girard teaches selecting a
bootable image on a remote client as recited in claims 1 and 15?
b) Did the Examiner err in finding Dayan teaches transmitting a wake-
on-LAN packet with the partition identification comprising the
address of the bootable image?

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
April 22, 2010.
2 Throughout this opinion we refer to Appellants’ Appeal Brief filed on
February 12, 2010 and Reply Brief filed on June 22, 2010.
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c) Did the Examiner err in concluding the skilled artisan would
combine the teachings of Girard, Dayan, and Rothman?
Independent Claim 13
On page 11 through 16 of the Appeal Brief and 12 through 17 of the
Reply Brief Appellants assert the rejection of claim 13 is in error applying
the same arguments as presented with respect to claims 1 and 15. Thus, with
respect to claim 13 we are presented with the same issues as claim 1.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments.

Issue a)
We disagree with Appellants’ conclusion that the Examiner erred in
finding that Girard teaches selecting a bootable image on a remote client.
Appellants argue that the Examiner has “ignore[d] the limitations in claims 1
and 15 describing that the ‘bootable image’ is ‘on the remote client’.” Reply
Brief 7. The Examiner provided a comprehensive response finding that
Girard’s teaching that the computer 120 downloads and executes the boot
image, meets the claimed selecting a boot image on the remote client.
Answer 13. We concur with these findings by the Examiner as they relate to
claims 1 and 15. Further, with respect to claims 1 and 15, we are not
persuaded by Appellants’ argument that the Examiner’s reasoning is in error
as it is based upon actions at the client computer and not the boot computer.
Reply Brief 7. This argument is not commensurate with the scope of claims
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1 and 15, in that we do not see that independent claims 1 and 15 preclude the
selecting step from being performed at the remote client. As to claim 13,
however, we reach the opposite result in that this claim recites that the server
and not the client performs the selecting. Thus, Appellants’ first issue has
not persuaded us of error in the Examiner’s rejection of claims 1 and 15 but
has persuaded us of error in the Examiner’s rejection of independent claim
13.

Issue b)
We similarly disagree with Appellants’ conclusion that the Examiner
erred in finding that Dayan teaches transmitting a wake-on-LAN packet with
the partition identification comprising the address of the bootable image.
The Examiner responds to this argument on page 14 of the Answer finding
that Dayan teaches transmitting a command to the remote computer to wake
and boot from a designated portion of storage at the remote device and that
that the designated portion of the storage device is a partition indication. We
concur with these findings by the Examiner. Further, the Examiner finds
that Rothman teaches packets requesting commands to be executed at a
remote computer where the packet contains the memory address of the
content. Answer 14. It is the combination of these teachings that the
Examiner considers to meet the claimed transmitting the wake-on-LAN
packet. We concur. Appellants’ arguments directed to this issue address the
references individually and do not address the combined teachings. Thus,
while Dayan may not teach that the transmitted wake-on-LAN command
(which is a command requesting a remote computer to perform a task)
contains an address, the Examiner found that combined with Rothman’s
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teaching, of including an address with a command requesting a remote
computer to perform a task, the limitation is obvious. Accordingly,
Appellants’ arguments directed to the second issue have not persuaded us of
error in the Examiner’s rejection.

Issue c)
We are also not persuaded by Appellants’ arguments that the skilled
artisan would not combine the teachings of Girard, Dayan, and Rothman.
On page 10 of the Reply Brief, Appellants argue that the combination relies
upon impermissible hindsight as the combination does not teach the
limitations directed to selecting a bootable image and generating a wake-on-
LAN packet. Reply Brief 10. As we have already discussed, we are not
persuaded that the Examiner erred in finding the references teach these
limitations of independent claims 1 and 15. Further, Appellants argue that
the combination would change the principal operation of Girard as it
obviates downloading the bootable image or boot code from the managing
server. Reply Brief 10-11. We are not persuaded by this argument as it is
not commensurate with the scope of the claim, i.e. independent clam 1 does
not preclude selection of the boot image after it has been downloaded from
the managing server. Accordingly, Appellants’ arguments directed to the
third issue have not persuaded us of error in the Examiner’s rejection of
independent claims 1 and 15.

DECISION
These three issues are the only issues presented with respect to the
rejections of independent claims 1, 13, and 15. Accordingly:
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- We sustain the Examiner’s rejection of independent claim 1, 15
and dependent claims 2 through 7, 12, 16 through 18, 38, 39, 41,
48, and 50;
- We will not sustain the Examiner’s rejection of independent claim
13 and dependent claims 14, 40, and 49.

The decision of the Examiner to reject claims 1 through 7, 12 through
18, 38 through 41, and 48 through 50 is affirmed-in-part.
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-IN-PART

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