Ex Parte Cepulis et al

Patent Trial and Appeal Board

Nov 15, 2012

11262200 (P.T.A.B. Nov. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DARREN J. CEPULIS and ANDREW BROWN
____________

Appeal 2010-004918
Application 11/262,200
Technology Center 2100
____________

Before BRUCE R.WINSOR, ANDREW CALDWELL,
and JEREMY J. CURCURI, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-24, which constitute all the claims pending in this application.
Claims 25 and 26 are cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention relates to the replacement of computer boot
code stored in a read only memory (ROM). (See generally Spec. ¶ [0001]).
Appeal 2010-004918
Application 11/262,200

2
Claims 13, 20, and 23, which are illustrative of the invention, read as follows
(bracketed letters added for ease of reference):
13. A computer, comprising:
[a] a management processor; and
[b] a read only memory (ROM) coupled to said
management processor;
[c] wherein, upon request from a device external to said
computer, [d] said management processor provides
a copy of an executable ROM image currently
stored in said ROM to the external device and [e]
receives a replacement executable ROM image
from the external device.
20. A computer, comprising:
[f] a host processor;
[g] a management processor; and
[h] a read only memory (ROM) coupled to said
management processor and said host processor;
[i] wherein, upon request from a device external to said
computer, [j] said management processor flashes
the ROM with a replacement executable ROM
image [k] even while said host processor is in a
non-operational state.
23. The system of claim 20 [l] wherein said management
processor provides a version value to an external device, said
version value being associated with the executable ROM image
currently stored in said ROM.
Claims 13 and 16-191 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Le (US 5,819,987; Oct. 6, 1998). (Ans. 3-4).

1 The Examiner’s Answer (Ans. 3-4) indicates that claims 25 and 26 are also
rejected as anticipated by Le. However, claims 25 and 26 were cancelled by
an Amendment after Final filed September 1, 2009, and entered by an
Advisory Action mailed November 27, 2009. Therefore, claims 25 and 26
Appeal 2010-004918
Application 11/262,200

3
Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as obvious over
Le and Bhatia (US 6,052,803; Apr. 18, 2000). (Ans. 5-7).
Claims 10-12, 14, 15, 20-22, and 24 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Le and Miller (US 5,729,675; Mar. 17, 1998).
(Ans. 7-10).
Claims 7-9 and 23 stand rejected under 35 U.S.C. § 103(a) as obvious
over Le, Bhatia, and Miller. (Ans. 10-12).
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.”; “Reply Br.”) and the Answer (“Ans.”) for the respective positions of
Appellants and the Examiner. Only those arguments actually made by
Appellants have been considered in this decision. Arguments that
Appellants did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2010).

ISSUES
The pivotal issues raised by Appellants contentions are as follows:
Did the Examiner err in finding that Le discloses a computer “[c]
wherein, upon request from a device external to said computer, [d] said
management processor provides a copy of an executable ROM image
currently stored in said ROM to the external device and [e] receives a
replacement executable ROM image from the external device” as recited in
claim 13?
Did the Examiner err in finding that the combination of Le and Miller
teaches or suggests a computer wherein “[i] wherein, upon request from a

are not before us and we treat their inclusion in the Answer as a harmless
typographical error.
Appeal 2010-004918
Application 11/262,200

4
device external to said computer, [j] said management processor flashes the
ROM with a replacement executable ROM image [k] even while said host
processor is in a non-operational state,” as recited in claim 20?
Did the Examiner err in finding that the combination of Le, Bhatia,
and Miller teaches or suggests a computer “[l] wherein said management
processor provides a version value to an external device, said version value
being associated with the executable ROM image currently stored in said
ROM,” as recited in claim 23?

ANALYSIS
Claim 13
The Examiner finds that Le discloses the limitations [c]-[e] at column
3, lines 56-64. (Ans. 3). Appellants contend that “[a]t most Le teaches a
new ROM image being transferred from an external device to the computer
system whose ROM is being replaced [(i.e., limitation [e])], but lacks a
teaching . . . that the computer system provides a copy of its ROM image to
the external device [(i.e., limitation [d])].” (App. Br. 11).
We agree with Appellants. The Examiner maps limitation [e] to Le’s
disclosure (Le col. 11, ll. 5-9) of a second computer system 192 that contains
a new valid BIOS to be loaded on flash ROM 122 (Ans. 13-14; see also
App. Br. 11). In other words, for limitation [e] the Examiner maps the
recited external device to Le’s second computer system 192. The Examiner
maps the recited external device in limitation [d] to Le’s CPU 100. (Ans. 14
(citing Le col. 15, l. 3—col. 16, l. 6; col. 16, l. 34—col. 17, l. 19)).
However, claim 13 recites “a device external to said computer . . . the
external device . . . the external device” (emphases added). We conclude
Appeal 2010-004918
Application 11/262,200

5
that the “external device” recited in limitation [d] is the same “external
device” as recited in limitation [e].
“For a prior art reference to anticipate in terms of 35 U.S.C. § 102,
every element of the claimed invention must be identically shown in a single
reference. These elements must be arranged as in the claim under review
. . . .” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (internal quotation
marks omitted) (citations omitted). Because the rejection of claim 13 maps
the “external device” of limitations [d] and [e] to two different elements of
Le’s disclosure, we find that the Examiner has not established that the
elements of Le’s disclosure are arranged as recited in claim 13.
Accordingly, we will not sustain the rejections of independent claim
13 as anticipated by Le and claims 14-19, which depend, directly or
indirectly, from claim 13. Independent claims 1 and 10 include limitations
substantially paralleling limitations [d] and [e] of claim 13 and were rejected
based on substantially the same mapping to Le (see Ans. 5-8). The
Examiner has not articulated a rationale for mapping the external source
(i.e., device) to two different elements of Le. Accordingly, we will not
sustain the rejections of independent claims 1 and 10 and dependent claims
2-9, 11, and 12, which depend, directly or indirectly, from claim 1 or 10.
Claim 20
The Examiner finds that Le discloses all of the limitations (i.e., [g],
[h], [i], and [j]) of claim 20 (Ans. 9-10 (citing Le Figs. 1, 6; col. 3, l. 50))
except limitations [f] and [k]. The Examiner relies on Miller as teaching
limitations [f] and [k]. (Ans. 10 (citing Miller Figs. 1, 6; col. 3, ll. 21-22,
46)). The Examiner states
Appeal 2010-004918
Application 11/262,200

6
it would have been obvious to one of ordinary skill in the art at
the time of the invention was made to combine the teachings of
Le et al. and Miller et al. because Miller et al. teaching of
updating while all other processors are inactive would improve
the usage of Le et al. invention by allowing for multiple
processors to use one ROM.
(Ans. 10 (citing Miller col. 3, ll. 21-22, 46)).
Appellants, discussing a substantially similar limitation in claim 10,
contend “Miller does not teach or even suggest updating a ROM image by a
management processor while the host processor is in a non-operational state.
Instead, Miller teaches performing a power-on self-test (POST) while
another processor is non-operational.” (App. Br. 14). The Examiner
responds that the rejection is based on “the combination of references by Le
teaching a ROM image updating process to a CPU wherein the system can
be configured all well known ways and Miller teaching a well known
multiprocessor system wherein ROM operations are performed on one CPU
while others are in a non-operational state.” (Ans. 17). In other words, the
Examiner has relied on Le for teaching limitation [j] and Miller for teaching
limitation [k] while Appellants argue that Miller does not teach both
limitations [j] and [k].
We find such arguments, which do not address the rejection made by
the Examiner, to be unpersuasive. As pointed out by the Examiner (Ans. 17)
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
Appeal 2010-004918
Application 11/262,200

7
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
Furthermore, “one cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.” Id. at 426.
Appellants have not persuaded us of error in the rejection of claim 20.
Accordingly, we will not sustain the rejection of independent claim 20 or of
dependent claims 21, 22, and 24, which were not separately argued with
particularity.
Claim 23
The Examiner finds that limitation [l] is taught or suggested by Bhatia
(Ans. 12), which describes “comparing . . . [a executable program] copy [in
DRAM 372], on a location-by-location basis, with the executable version
then stored in flash memory 376” (Bhatia col. 16, ll. 51-53). The Examiner,
discussing substantially similar limitations in claim 4 (see Ans. 18), explains
as follows:
[A]n indication to the discrepancy between the two copies of
code forms the version value of the ROM image. Examiner is
further illustrating an example for further clarification. If there
exists a discrepancy between ROM A on the CPU with the
executable ROM B in Flash Memory, then the version value of
the ROM image is different. Further, copying the contents of
the ROM image from Flash Memory to the DRAM to replace
it. (See [Bhatia] col. 16, lines 49-60). If there exists no
discrepancy between ROM A on the CPU with executable
ROM B, then the version value of the ROM image is the same.
In essence, Bhatia describes this process as determining a
version value of the computer ROM image before replacement.
Since the claims do not provide the manner in which the
version value is used, the Examiner feels this interpretation is
reasonable.
(Ans. 15-16).
Appeal 2010-004918
Application 11/262,200

8
Appellants, discussing substantially similar limitations in claim 4 (see
App. Br. 15-16), contend “Bhatia does not teach a ROM image ‘version
value’” (App. Br. 13). Appellants further contend as follows:
Bhatia only discloses a process of comparing firmware images
on a location-by-location basis and copying the contents from
flash memory of any locations found to be different. Bhatia
does not at all teach actually determining the version value of
an executable image; determining whether a first image
matches a second image (Bhatia) does not mean you have
determined the version value of the first image.
(Reply Br. 3).
Appellants’ contentions amount to little more that conclusory
statements. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see
also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants do
not persuasively explain as to why the broadest reasonable interpretation of
“version value,” see In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997),
would not encompass the results of Bhatia’s location-by-location
comparison of the versions of the executable code in the Bhatia’s DRAM
and flash memory. We note that Appellants’ contentions regarding claim
4’s recitation of “receiving a third command from said external source” (see
App. Br. 13; Reply Br. 3) are not commensurate with the recitations of
claim 23.
Accordingly, Appellants have not persuaded us of error in the
rejection of claim 23 and we will sustain the rejection.

ORDER
The decision of the Examiner to reject claims 20-22 and 24 under
35 U.S.C. § 103(a) as obvious over Le and Miller is affirmed.
Appeal 2010-004918
Application 11/262,200

9
The decision of the Examiner to reject claim 23 under 35 U.S.C.
§ 103(a) as obvious over Le, Bhatia, and Miller is affirmed.
The decision of the Examiner to reject claims 13 and 16-19 under
35 U.S.C. § 102(b) as anticipated by Le is reversed.
The decision of the Examiner to reject claims 1-6 under 35 U.S.C.
§ 103(a) as obvious over Le and Bhatia is reversed.
The decision of the Examiner to reject claims 10-12, 14, and 15 under
35 U.S.C. § 103(a) as obvious over Le and Miller is reversed.
The decision of the Examiner to reject claims 7-9 under 35 U.S.C.
§ 103(a) as obvious over Le, Bhatia, and Miller is reversed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

babc