Ex Parte Azam et al

Patent Trial and Appeal Board

Oct 31, 2016

13133944 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/133,944 06/09/2011
22879 7590 11/02/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Syed S. Azam
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82741810 6898
EXAMINER
CHOUDHURY, ZAHID
ART UNIT PAPER NUMBER
2116
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SYED S. AZAM
and
ZUBAIR BEY ABANI
Appeal2015-003593
Application 13/133,944
Technology Center 2100
Before JEFFREY A. STEPHENS, MELISSA A. RAAP ALA, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
RAAP ALA, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal2015-003593
Application 13/133,944
INVENTION
Appellants' invention is directed to booting a computer system using
preboot data. See Abstract. Claim 1 is exemplary of the subject matter on
appeal:
1. A method of booting a computer system using a preboot
data, the method comprising:
transmitting a boot request;
receiving, in response to the boot request, a boot loader
that is adapted to read the preboot data;
transmitting a request for a boot data corresponding to the
preboot data;
receiving the boot data corresponding to the preboot data;
and
booting the computer system using the boot data.
REJECTIONS ON APPEAL
Claims 1-5, 7-13, and 15 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Dickens (US 2007/0198819 Al; publ. Aug. 23, 2007).
Claims 6 and 14 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Dickens and Brown (US 2006/0010315 A 1;
publ. Jan. 12, 2006).
ISSUES
Appellants' contentions present us with the following issues:
A) Did the Examiner err in finding Dickens discloses the preboot data
recited in independent claim 1?
2
Appeal2015-003593
Application 13/133,944
B) Did the Examiner err in finding Dickens discloses the preboot data
comprises a request to perform a specific action, as recited in dependent
claim 4?
C) Did the Examiner err in finding Dickens discloses the preboot data
comprises a request to modifY a configuration file, as recited in dependent
claim 5?
ANALYSIS
We have reviewed the Examiner's rejections in consideration of
Appellants' contentions and the evidence of record. We disagree with
Appellants' conclusions that the Examiner's rejections of claims 1-3, 6-11,
14, and 15 are in error. Appellants have persuaded us the Examiner has
failed to establish that claims 4, 5, 12, and 13 are unpatentable over the cited
prior art.
Issue A: Claim 1-3, 6--11, 14, and 15
Appellants contend Dickens does not disclose the preboot data recited
in independent claim 1. App. Br. 7-9; Reply Br. 2-3. Specifically,
Appellants argue the boot application of Dickens must perform the described
test on each system to determine the system architecture because no preboot
data identifying the system architecture exists. App. Br. 9. Appellants
further argue that the preboot data recited in claim 1 is read by the adapted
boot loader, which is not the same as performing a test that includes setting a
value for a particular control option in a register to determine whether a
processor is 64-bit compatible. Reply Br. 2. We are not persuaded by these
arguments.
The Examiner finds, and we agree, that Dickens discloses the preboot
data and the specific use of the pre boot data that is recited in claim 1. See
3
Appeal2015-003593
Application 13/133,944
Final Act. 3--4; Ans. 10-11. The cited sections of Dickens describe that a
boot application performs a test for identifying whether a client is 64-bit
compatible by setting a value for a particular control option in the register of
the client processor, identifying another value as a response, and using the
received response to identify the computing architecture of the client and
transmit the appropriate boot image file, which is then executed to boot the
client. See Dickens i-fi-1 26-29. Although Appellants are correct that the
response value is created as a result of a test performed by the boot
application, claim 1 does not preclude additional steps being performed by
the claimed "boot loader" to create the claimed "preboot data," and thus,
does not exclude Dickens' teaching of the boot application creating the
response value. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501
(Fed. Cir. 1997) ("'Comprising' is a term of art used in claim language
which means that the named elements are essential, but other elements may
be added and still form a construct within the scope of the claim'') (internal
citation omitted).
Appellants fail to persuade us the Examiner errs in finding Dickens
discloses the preboot data recited in claim 1. Accordingly, we sustain the 35
U.S.C. § 102(b) rejection of: (1) claim 1; (2) independent claims 8 and 15,
for which Appellants rely on the same arguments made for claim 1 (see App.
Br. 8); and (3) dependent claims 2, 3, 7, 9-11 and 15, for which Appellants
do not present separate arguments for patentability.
With respect to dependent claims 6 and 14, Appellants merely
contend the additional reference used in the rejection of these claims
(Brown) does not make up for the purported deficiencies present in the
rejection of independent claims 1 and 8. App. Br. 11-12. For the reasons
4
Appeal2015-003593
Application 13/133,944
discussed supra, Appellants fail to establish any deficiencies in the rejection
of claims 1 and 8. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection
of claims 6 and 14.
Issues B and C: Claims 4, 5, 12, and 13
The Examiner finds Dickens discloses the preboot data comprises a
request to perform a specific action, as recited in dependent claim 4. Final
Act. 5; Ans. 11-12. The Examiner further finds Dickens discloses the
preboot data comprises a request to modify a configuration file, as recited in
dependent claim 5. Final Act. 5; Ans. 12-13.
Appellants contend that the computer architecture of the client that the
Examiner has identified as the pre boot data does not include either of the
requests recited in dependent claims 4 and 5. See App. Br. 9-10; Reply Br.
3. We agree. The cited sections of Dickens describe that a response value
(equated by the Examiner to be the preboot data) is identified which
indicates whether the client supports 64-bit computer executable
instructions. Dickens i-fi-127-28. Although the response value is used to
request the appropriate boot file, it does not itself comprise either a request
to perform a specific action or a request to modify a configuration file.
For the reasons stated above, Appellants persuade us the Examiner
errs in finding Dickens discloses the limitations set forth in claims 4 and 5.
Claims 12 and 13 recite substantially the same limitations as those recited in
claims 4 and 5 respectively. Accordingly, we do not sustain the 35 U.S.C.
§ 102(b)rejectionofclaims4, 5, 12, and 13.
DECISION
We affirm the Examiner's decision to reject claims 1-3, 6-11, 14, and
15.
5
Appeal2015-003593
Application 13/133,944
We reverse the Examiner's decision to reject claims 4, 5, 12, and 13.
No time period for taking any 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(±).
AFFIRMED-IN-PART
6