Ex Parte Azam et alDownload PDFPatent Trial and Appeal BoardOct 31, 201613133944 (P.T.A.B. Oct. 31, 2016) Copy Citation 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 Copy with citationCopy as parenthetical citation