Ex Parte Oka et al

Patent Trial and Appeal Board

Sep 27, 2012

11020595 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KENJI OKA, EITAROH KASAMATSU, and SHINJI OHISHI
____________

Appeal 2010-005377
Application 11/020,5951
Technology Center 2100
____________

Before JOSEPH L. DIXON, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed on December 22, 2004. The Real Party in Interest is
Lenovo Pte. Ltd. (Br. 1.)
Appeal 2010-005377
Application 11/020,595

2
STATEMENT OF CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1-8, 11-15, and 17-20. Claims 9, 10, and 16 were
cancelled during prosecution. (Br. 2.) We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Invention
Appellants’ invention relates generally to upgrading the firmware of a
computer system with a new firmware image, and more particularly to
determining whether to allow or disallow the upgrade based on comparing
firmware-related bits of the firmware of the computer system with
corresponding bits associated with the new firmware image. (Spec. 1, ll. 4-
7.)2
Representative Claim
1. A method comprising:
determining a first series of firmware-related bits, the
first series of bits corresponding to firmware compatibility
information of firmware of a computer system, each bit of the
first series corresponding to an attribute of at least one of the
computer system and the firmware;
determining a second series of firmware-related bits, the
second series of bits corresponding to a firmware image with
which the firmware of the computer system is desired to be
upgraded, each bit of the second series indicating whether the
firmware image is compatible with the attribute of a
corresponding bit of the first series;

2 We refer to Appellants’ Specification (“Spec.”) and Appeal Brief (“Br.”)
filed Jul. 12, 2009. We also refer to the Examiner’s Answer (“Ans.”) mailed
Nov. 18, 2009.
Appeal 2010-005377
Application 11/020,595

3
performing only a single logical AND operation on the
first series of bits and the second series of bits;
where a result of only the single logical AND operation
is equal to the first series of bits, concluding that the firmware
of the computer system is compatible with the firmware image
and allowing the firmware of the computer system to be
upgraded with the firmware image, the result of the logical
AND operation being equal to the first series of bits being both
a sufficient logic condition and a necessary logic condition, and
not just only a necessary logic condition, to concluding that the
firmware of the computer system is compatible with the
firmware image; and,
where the result of only the single logical AND operation
is unequal to the first series of bits, concluding that the
firmware of the computer system is incompatible with the
firmware image and disallowing the firmware of the computer
system from being upgraded with the firmware image.
(emphasis added).
Rejection on Appeal
The Examiner rejects claims 1-8, 11-15, and 17-20 under 35 U.S.C.
§ 103(a) as being unpatentable over Liu (U.S. Pat. Pub. No. 2004/0143828
A1, published Jul. 22, 2004) and Warmus (U.S. Pat. Pub. No. 2004/0001087
A1, published Jan. 1, 2004).
Grouping of Claims
Based on Appellants’ arguments in the Brief, we will decide the
appeal on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE
Under § 103, did the Examiner err in finding that Liu and Warmus
collectively would have taught or suggested:
Appeal 2010-005377
Application 11/020,595

4
where a result of only the single logical AND operation
is equal to the first series of bits, concluding that the firmware
of the computer system is compatible with the firmware image
and allowing the firmware of the computer system to be
upgraded with the firmware image, the result of the logical
AND operation being equal to the first series of bits being both
a sufficient logic condition and a necessary logic condition, and
not just only a necessary logic condition, to concluding that the
firmware of the computer system is compatible with the
firmware image
(emphasis added) within the meaning of independent claim 1 and the
commensurate language of independent claims 8 and 15?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the analysis as follows.

ANALYSIS
Appellants contend, inter alia:
Liu in view of Warmus does not suggest that the result of
only a single logical AND operation is compared to the first
series of bits to determine whether there is firmware
compatibility. Rather, Liu in view of Warm suggests that a
logical AND operation is compared to zero in order to
determine whether there is firmware compatibility. For
instance, Liu in view of Warmus suggests that there is “a
determination of whether a logical ‘AND’ operation between
the corresponding bit(s) of the user profile and the content
profile results in a non-zero result” such that “[i]f yes, it means
that the content profile [is] compatible with the user’s
preferences” (Warmus, para. [0082]). That is, if the first series
of bits is F, and the second series of bits is S, then IF F AND S
Appeal 2010-005377
Application 11/020,595

5
≠ 0, Liu in view of Warmus concludes that the firmware of the
computer system is compatible with the firmware image
(Br. 6.)
The Examiner found that the cited references, particularly Warmus,
teaches a determination that a logical AND operation between corresponding
bits of a user profile and a content profile results in a non-zero result, and if
the result is non-zero, the content and user preferences are compatible.
(Ans. 5; Warmus ¶ [0082].)
Based upon our review of the record, we find Appellants’ arguments
urging patentability are predicated on nonfunctional descriptive material.
The content of nonfunctional descriptive material is not entitled to
weight in the patentability analysis. See Ex parte Curry, 84 USPQ2d 1272,
1274 (BPAI 2005) (informative), aff’d, No. 06-1003 (Fed. Cir. June 12,
2006) (Rule 36) (“wellness-related” data in databases and communicated on
distributed network did not functionally change either the data storage
system or the communication system used in the claimed method).
“[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art." Ex
parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative), aff'd,
191 Fed.Appx. 959 (Fed. Cir. 2006) (citing In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004)). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90
(BPAI 2008) (precedential) (discussing nonfunctional descriptive material).
Here, we conclude that the particular content of the claimed “result”
of the logical AND operation, i.e., being equal to the first series of bits, is
not positively recited and does not affect or otherwise alter the structure or
functionality of the method (claim 1), computer system (claim 8), or article
of manufacture (claim 15). As such, the claimed “result” of the logical AND
Appeal 2010-005377
Application 11/020,595

6
operation are merely “data,” and therefore, the informational content of the
claimed “result” of the logical AND operation represents nonfunctional
descriptive material that is entitled to no weight in the patentability analysis.
Further, while we agree with Appellants that the cited references do
not particularly disclose that the result of the logical AND operation being
equal to the first series of bits, it is our view that adapting the logical
operation such that the result is equal to the first series of bits would have
been obvious to one of ordinary skill in the art at the time of the invention.
In ascertaining the scope of the present claims, we note that representative
claim 1 is complete in the event of either separate scenario: (1) equal to the
first series of bits, allowing the firmware to be upgraded, or (2) unequal to
the first series of bits, not allowing the firmware to be upgraded. It is further
our view, that the difference between the prior art and the present invention,
i.e., the result of the AND operation being equal to the first series of bits as
opposed to being non-zero, is not such as to render the present invention
nonobvious when the references teach that a particular result of an AND
operation indicates compatibility.3
Based on this record, we conclude that the Examiner did not err in
finding that the cited references collectively would have taught or suggested
a result of only the single logical AND operation is equal to the first series
of bits, concluding that the firmware of the computer system is compatible
with the firmware image and allowing the firmware of the computer system
to be upgraded with the firmware image, as recited in representative claim 1.
Accordingly, we affirm the Examiner’s rejection of independent claims 1, 8,

3 Graham v. John Deere Co., 383 U.S. 1, (1966). The level of skill in the art
is not in dispute.
Appeal 2010-005377
Application 11/020,595

7
and 15 and dependent claims 2-7, 11-14, and 17-20 which are not separately
argued with particularity.

CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-8, 11-15, and 17-20 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1-8, 11-15, and 17-20,
under 35 U.S.C. § 103(a).

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

peb