Ex Parte Broyles et al

Patent Trial and Appeal BoardAug 27, 2013

11536889 (P.T.A.B. Aug. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PAUL J. BROYLES and JEFFREY P. KENLINE ____________ Appeal 2011-004057 Application 11/536,889 Technology Center 2400 ____________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 4, 5, 10, 11, 14-16, 19, and 21. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. Appeal 2011-004057 Application 11/536,889 2 STATEMENT OF THE CASE According to Appellants, “[i]n many computer systems, multiple bootable devices (e.g., hard drive, floppy drive, etc.) are available to boot the system . . . in an unsecure manner [.]” Spec., ¶ [0001].1 The invention addresses this problem by in part password protecting a system’s “boot order” (id. at ¶¶ [0013]-[0015]), which the Specification defines as a list of boot devices in a particular order that the system should attempt to boot (id. at ¶ [0015]). Claims 1 and 4, reproduced below, are illustrative.2 1. A method, comprising: receiving user input during a boot process requesting a list of selectable boot devices to be provided from which the user can select one of said devices to boot a system; and based on a security mechanism being activated that limits access to changing a boot order, precluding a function from being performed, the function otherwise permitting a user to select the device to be used to boot the system. 4. The method of claim 1 wherein the mechanism comprises a password being set. 1 Throughout this opinion, we refer to the Specification filed September 29, 2006 (“Spec.”), Appeal Brief filed June 30, 2010 (“App. Br.”), Examiner’s Answer mailed October 8, 2010 (“Ans.”), and Reply Brief filed November 2, 2010 (“Reply Br.”). 2 The claims appendix of the Appeal Brief omits claim 1, which is accordingly copied from the application’s file wrapper. Appeal 2011-004057 Application 11/536,889 3 The Examiner relies on the following references as evidence of unpatentability: Cromer US 6,161,178 Dec. 12, 2000 Yanagihara US 6,567,919 B1 May 20, 2003 Khatri US 6,721,883 B1 Apr. 13, 2004 Dao US 2005/0235135 A1 Oct. 20, 2005 APPEALED REJECTIONS3 The Examiner rejected claims 4, 5, 10, 15, 16, 19, and 21 under 35 U.S.C. § 103 as unpatentable over Cromer and Dao. Ans., pp. 6-14. The Examiner rejected claim 11 under § 103 as unpatentable over Cromer, Dao, and Yanagihara. Id. at pp. 14-15. The Examiner rejected claim 14 under § 103 as unpatentable over Cromer, Dao, and Khatri. Id. at pp. 15-17. The Examiner has newly rejected, in the Answer, claims 16, 19, and 21 under 25 U.S.C. § 101 as directed to nonstatutory subject matter. Id. at pp. 4-6. § 103 REJECTION OF CLAIMS 4, 5, 10, 15, 16, 19, and 21 Claims 1, 4, 5, 7, 10, 15, 16, 19, and 21 stand rejected as obvious over Cromer and Dao. Appellants do not address claims 1 and 7. Appellants present each of these claims as standing or falling with claim 4, which requires the security mechanism of base claim 1 to password protect a boot order. App. Br., pp. 10-11. 3 Though claims 1, 2, 4, 5, 7, 8, 10, 11, 14-16, 19, and 21 are pending, only the rejections of claims 4, 5, 10, 11, 14-16, 19, and 21 are appealed. App. Br., p. 5. Appeal 2011-004057 Application 11/536,889 4 The Examiner cites the following portion of Cromer as teaching a password protected boot order. [W]hen the system begins executing a boot process, a determination is made regarding what password requirement has been specified for each boot device included within the system. The system then selects the first device to utilize to attempt to boot. If a password requirement has been specified requiring the correct entry of a password, the system will prompt the user for a password. If the user enters the correct password, the system will complete the boot process utilizing the first device. However, if the user does not correctly enter the password, the system will not complete its boot. In this event, the system may be configured to attempt a boot from a second device. Cromer, col. 2, l. 66 – col. 3, l. 10 (cited, in part, at Ans., p. 8). Appellants disagree with the Examiner’s finding, arguing this portion of Cromer does not teach the claimed password protection of a boot order because: An order of bootable devices can be specified in which a computer system will attempt to boot up (e.g., hard drive first, if hard drive not present then USB device second, etc.). The boot order itself can be password protected. Claim 4 refers to that very password. The Examiner’s use of the password in Cromer is in the context of a password for a given boot device. In Cromer, the correct password must be entered for that device to be able to boot the system. Thus, in Cromer each bootable device has its own password that must be correctly entered if that particular device is selected to be the boot device. Cromer says nothing about how the order of the bootable device is determined and certainly says nothing of a password that prevents the boot order from being changed. Cromer’s password simply has nothing at all to do with protecting the order at which the bootable devices are used to attempt to boot the system. The same or similar reasoning applies to claims 10 and 15 as well. Appeal 2011-004057 Application 11/536,889 5 Reply Br., p. 2. The argument is persuasive. Note, again, the Specification states that “[a] boot order specifies a list of boot devices . . . in a particular order that [a system] should attempt to boot.” Spec., ¶ [0015]. Cromer’s cited password mechanism does not protect a listed boot order (i.e., predetermined order) by which the system sequentially selects boot devices when attempting to boot, but rather dictates whether “the system will complete the boot process utilizing the [currently selected boot] device.” Cromer, col. 2, l. 66 – col. 3, l. 7. If a correct password is not entered, the system attempts to boot via the next device of the boot order. Id. Thus, though Cromer’s password mechanism can cause the system to select the current boot device or move on to a next boot device, the password mechanism does not affect a listed order of boot devices for attempting to boot the system (i.e., a boot order). Id. For the foregoing reasons, the obviousness rejection of claim 4 over Cromer and Dao is not sustained. As Appellants’ argument is also applicable to claims 5 and 19, the obviousness rejection of these claims over Cromer and Dao is also not sustained. Appellants’ argument is, however, inapplicable to claims 10, 15, 16, and 21, particularly because these claims do not require password protection for a boot order. Thus, the obviousness rejection of claims 10, 15, 16, and 21 over Cromer and Dao is sustained. Before turning to the other rejections, we note Appellants’ additional contentions for claims 10 and 15 are unpersuasive. As to claim 10, Appellants additionally contend: Appeal 2011-004057 Application 11/536,889 6 Claim 10 requires that the processor precludes the user from being able to select a boot device “based on a password being required for the processor to permit a change to a configuration associated with the system.[”] Cromer has no teaching of precluding a user from selecting a boot device and certainly not based on a password being required to change a configuration. App. Br., p. 11. These statements constitute a mere allegation of patentability. See e.g., In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule [37 C.F.R. § 41.37)] to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”); cf., 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”). The statements accordingly fail to address why Cromer’s password protection, though dictating the user’s selection of devices for booting the system, does not in turn change (e.g., vary) a configuration of the system. In fact, the statements do not even assert what the claimed “configuration associated with the system” is believed to represent or encompass, much less provide a meaningful explanation of how the claimed change of this broadly-recited “configuration” distinguishes over Cromer’s password selection of a boot device in lieu of others. See In re Jung, 637 F.3d 1356, 1362-65 (Fed. Cir. 2011) (“Before the examiner, Jung merely argued that the claims differed from Kalnitsky, and chose not to proffer a serious explanation of this difference.”). Given the lack of meaningful argument, we will not evaluate the claimed change in configuration against Cromer’s cited password mechanism. Cf., In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. Appeal 2011-004057 Application 11/536,889 7 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant[.]”); Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived.”). Claim 15 depends from claim 10. As to claim 15, Appellants additionally contend: [C]laim 15 specifies that the configuration referenced in claim 10 comprises a boot order. Thus, per claim 15, the user is precluded from selecting a boot device based on a password being required to change the boot order. As explained with regard to claim 1, Cromer has no such teaching. Dao is also deficient in this regard. App. Br., p. 11. The argument is incommensurate with the scope of claim 15. Contrary to Appellants’ above contention, claim 15 does not require a password protected boot order. Rather, base claim 10 requires password protection for an unspecified “change to a configuration associated with the system” (i.e., change to an unspecified parameter) and claim 15 additionally requires the configuration to “comprise” a boot order (i.e., boot order is a parameter of the configuration, but not necessarily the changed parameter). Appellants do not dispute that Cromer’s password-protected selection of a boot device changes (e.g., varies) the disclosed system’s configuration (claim 10) or that Cromer’s boot order is another comprised parameter of the system’s configuration (claim 15). § 103 REJECTIONS OF CLAIMS 11 AND 14 Claim 11 depends from claim 10 and is rejected as obvious over Cromer, Dao, and Yanagihara. As to claim 11, Appellants argue only that “Yanagihara does not satisfy the deficiencies of Cromer and Dao with regard Appeal 2011-004057 Application 11/536,889 8 to claim 10[.]” App. Br., p. 12. For the reasons sustaining the rejection of claim 10, the obviousness rejection of claim 11 over Cromer, Dao, and Yanagihara is also sustained. Claim 14 depends from claim 10 and is rejected as obvious over Cromer, Dao, and Khatri. As to claim 14, Appellants argue only that “Khatri does not satisfy the deficiencies of Cromer and Dao with regard to claim 10[.]” App. Br., p. 12. For the reasons sustaining the rejection of claim 10, the obviousness rejection of claim 14 over Cromer, Dao, and Khatri is also sustained. § 101 REJECTION OF CLAIMS 16, 19, AND 21 Claim 16 and its dependent claims 19 and 21 are rejected as encompassing nonstatutory subject matter and, particularly, as encompassing transitory propagating signals. Each of the claims is directed to a “computer-readable medium containing software that, when executed by a processor, causes the processor to” (claim 16) perform a recited process. The Examiner finds the claimed computer-readable medium encompasses transitory propagating signals because: The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media (See MPEP 2111.01). When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. §101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter). Appeal 2011-004057 Application 11/536,889 9 Ans., p. 5. Appellants respond that the claimed “computer-readable medium” does not encompass transitory signals because: [Appellants’] Figure 1 shows a read only memory (ROM) 18 as containing an executable basic input/output system (BIOS) 20 and an executable utility 24. Paragraph 11 of the specification explains that the BIOS 20 is stored on system ROM 18, but can be stored on any type of “computer-readable medium” whose software is executed by the processor. The specification thus describes the executable code as being stored on a storage device (ROM or other type of storage device). The specification makes no mention of a computer-readable medium being transitory signals. Reply Br., pp. 1-2. Appellants’ argument is not persuasive. Neither claim 16’s language nor the Specification’s cited disclosure precludes the term “computer- readable medium” from encompassing transitory propagating signals within the context of the invention. And, to the contrary, the Specification makes clear that the Figure 1 embodiment of the disclosed invention (cited by Appellants) is merely illustrative, such that “[n]umerous variations and modifications will become apparent” and “the following claims . . . embrace all such variations and modifications.” Spec., ¶ [0022]. Accordingly, as found by the Examiner, the broadest reasonable interpretation of the claimed “computer-readable medium” is inclusive of transitory propagating signals. See generally David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“The broadest reasonable interpretation of a claim drawn to a computer readable medium . . . typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary Appeal 2011-004057 Application 11/536,889 10 meaning of computer readable media, particularly when the specification is silent.”); see also Ex parte Allen, Appeal No. 2012-008748 (PTAB 2012)4 (not precedential) (explaining why “machine readable storage mediums” encompass transitory propagating signals absent an express specification definition excluding such signals). In light of the foregoing, the nonstatutory subject matter rejection of claims 16, 19, and 21 is sustained. ORDER The rejection of claims 4, 5, and 19 under 35 U.S.C. § 103 over Cromer and Dao is reversed. The rejection of claims 10, 15, 16, and 21 under § 103 over Cromer and Dao is affirmed. The rejection of claim 11 under § 103 as unpatentable over Cromer, Dao, and Yanagihara is affirmed. The rejection of claim 14 under § 103 as unpatentable over Cromer, Dao, and Khatri is affirmed. The rejection of claims 16, 19, and 21 under § 101 is affirmed. 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 llw 4 Available at http://e- foia.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2012008748-09- 26-2012-1 and via Westlaw® at 2012 WL 4483320.