Ex Parte Ali et al

Patent Trial and Appeal Board

Jan 31, 2019

14240198 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/240,198 02/21/2014
22879 7590 02/04/2019
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Valiuddin Y. Ali
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.
83786624 7054
EXAMINER
WEI,ZENGPU
ART UNIT PAPER NUMBER
2192
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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 V ALIUDDIN Y. ALI, JOSE PAULO XAVIER PIRES,
JAMES M. MANN, BORIS BALACHEFF, and CHRIS I. DALTON
Appeal2018-004233
Application 14/240, 198
Technology Center 2100
Before JOHN A. JEFFERY, LARRY J. HUME, and
MATTHEW J. McNEILL, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1--4, 6-8, 10, 12-14, and 16-24. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real party in interest as Hewlett-Packard
Development Company, L.P. App. Br. 1.
Appeal2018-004233
Application 14/240, 198
STATEMENT OF THE CASE
Appellants' invention handles system management requests in a
computing system by managing a trusted virtual machine (VM). In one
aspect, all communications from a guest domain to a Basic Input/Output
System (BIOS) are trapped and routed to a privileged domain portion for
processmg. See generally Abstract; Spec. ,r,r 20-23, 26. Claim 7 is
illustrative:
7. A method of handling a system management request in
a computing system, comprising:
managing, by a virtual machine monitor (VMM), a
trusted virtual machine (VM) with a virtual high-privilege
mode, the trusted VM with the virtual high-privilege mode to
receive the system management request;
preventing the system management request from
initiating a system management mode at a processor of the
computing system;
handling the system management request by the trusted
VM with the virtual high-privilege mode; and
trapping, by the VMM, requests to a physical basic
input/output system (BIOS) of the computing system from
sources other than the trusted VM, the trapping of the requests
preventing the requests from being communicated to the
physical BIOS.
THE REJECTIONS
The Examiner rejected claims 1, 7, 8, 12, 16-20, and 22-24 under 35
U.S.C. § 103 as unpatentable over Neiger (US 7,581,219 B2; issued
Aug. 25, 2009) and Aguilar (US 6,799,316 Bl; issued Sept. 28, 2004). Final
Act. 3-12.2
2 Throughout this opinion, we refer to (1) the Final Rejection mailed May
16, 2017 ("Final Act."); (2) the Appeal Brief filed October 8, 2017 ("App.
2
Appeal2018-004233
Application 14/240, 198
The Examiner rejected claims 2--4 and 21 under 35 U.S.C. § 103 as
unpatentable over Neiger, Aguilar, and Zimmer (US 2009/0172661 Al;
published July 2, 2009). Final Act. 12-14.
The Examiner rejected claims 6, 10, and 14 under 35 U.S.C. § 103 as
unpatentable over Neiger, Aguilar, and Sancho-Dominguez (US
2010/0199062 Al; published Aug. 5, 2010). Final Act. 14--17.
The Examiner rejected claim 13 under 35 U.S.C. § 103 as
unpatentable over Neiger, Aguilar, and Franco (US 2013/0042003 Al;
published Feb. 14, 2013). Final Act. 17-18.
THE OBVIOUSNESS REJECTION OVER NEIGER AND AGUILAR
The Examiner finds that Neiger discloses, among other things, a
VMM that traps requests to a handler that controls access to system
resources, thus preventing communicating the requests to those resources.
See Final Act. 3--4; Ans. 5-6. Although the Examiner acknowledges that
Neiger does not teach that the request is to a physical BIOS, the Examiner
nonetheless finds that ordinarily skilled artisans would understand that
system resources include BIOS as verified by Aguilar that is said to teach
sending requests to physical BIOS via a system management interrupt (SMI)
trap and handler. See Final Act. 4--5; Ans. 7. Based on these collective
teachings, the Examiner concludes that the claim would have been obvious.
See Final Act. 5; Ans. 5-7.
Appellants argue that because Neiger's sub-operating mode system
mode system interrupt relied upon by the Examiner is a request sent to a
Br."); (3) the Examiner's Answer mailed January 16, 2018 ("Ans."); and (4)
the Reply Brief filed March 13, 2018 ("Reply Br.").
3
Appeal2018-004233
Application 14/240, 198
VMM-not a physical BIOS-Neiger does not teach or suggest trapping
requests to a physical BIOS to prevent communicating the requests to the
BIOS as claimed. App. Br. 5-9; Reply Br. 3-5. Appellants add that the
Examiner's reliance on Aguilar is also misplaced because even if Aguilar
discloses a request to a BIOS, the request would actually be received by the
BIOS contrary to the claimed invention that prevents such communication.
App. Br. 9; Reply Br. 7.
ISSUE
Under§ 103, has the Examiner erred by finding that Neiger and
Aguilar collectively would have taught or suggested a VMM that traps
requests to a physical BIOS, thus preventing communicating the requests to
the BIOS as recited in claim 1?
ANALYSIS
On this record, we find the Examiner's rejection problematic
essentially for the reasons indicated by Appellants. See App. Br. 5-10;
Reply Br. 1-8. First, as the Examiner acknowledges (Ans. 4), Neiger is
silent regarding trapping requests to a physical BIOS, let alone preventing
communicating those requests to a BIOS. As shown in Neiger's Figure 1,
VM domains 100 and 108 contain main VM monitor (MVMM) 101 and
system management mode VM monitor (SVMM), respectively. See Neiger,
col. 2, 1. 63 - col. 3, 1. 6; col. 3, 1. 40 - col. 4, 1. 5. Neiger explains that to
permit limited sub-operating system mode code execution within a secure
environment, the sub-operating system mode interrupt may be first directed
to a handler in a trusted code module that controls VM access to system
4
Appeal2018-004233
Application 14/240, 198
resources. Neiger, col. 3, 11. 22-26. This routing of the interrupt to the
handler may involve the trusted code to specify the location of the code used
to service the interrupt. Id. col. 3, 11. 26-29. Then, the interrupt is directed
to the sub-operating system mode code in another VM monitor domain to
service the interrupt. Id. col. 3, 11. 30-34.
The clear import of this discussion is that Neiger's interrupt is sent to
a handler-not BIOS. Nor is there persuasive evidence on this record to
substantiate the Examiner's finding that Neiger's system resources to which
VM access is controlled include BIOS. But even assuming, without
deciding, that these system resources could somehow include BIOS as the
Examiner indicates (Ans. 4), that does not mean that Neiger's interrupt-
based request is sent to the BIOS. Rather, the request is directed to a
handler in a trusted code module that controls VM access to system
resources. Neiger, col. 3, 11. 22-26.
Our emphasis underscores that Neiger merely teaches controlling
access to system resources-not sending the interrupt-based requests to
those resources, let alone trapping those requests to prevent their
communication to BIOS as claimed. To the extent that the Examiner finds
that by controlling access to system resources, Neiger's handler somehow
sends the received interrupt-based requests to those resources, including
BIOS (see Ans. 5), such a finding is unsubstantiated on this record. Rather,
as noted above, Neiger's interrupt-based requests are sent only to the
handler.
Aguilar does not cure this deficiency. As shown in Aguilar's
Figure 3, ROM BIOS 303 is connected to SMI trap 324 via bus 306.
Aguilar, col. 5, 1. 55 - col. 6, 1. 6. Notably, the SMI handler is configured as
5
Appeal2018-004233
Application 14/240, 198
a software routine or utility in the BIOS, and receives the SMI from the trap.
Id. col. 6, 11. 35--40. Because the BIOS-based handler receives the SMI, the
BIOS receives interrupt-based requests: the very opposite of the claimed
invention's trapping functionality that prevents communicating requests to
the BIOS as Appellants indicate. App. Br. 9; Reply Br. 7.
Despite the apparently limited purpose for which Aguilar was cited,
namely to "verify" that Neiger's system resources include BIOS (see
Ans. 4 ), the cited prior art still does not teach or suggest a VMM that traps
requests to BIOS, and thus prevent communicating those requests to the
BIOS as claimed.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 7; (2) independent claims 1 and 12 that recite
commensurate limitations; and (3) dependent claims 8, 16-20, and 22-24 for
similar reasons. Because this issue is dispositive regarding our reversing the
Examiner's rejection of these claims, we need not address Appellants' other
associated arguments.
THE REMAINING REJECTIONS
Because the Examiner has not shown that the cited prior art cures the
foregoing deficiencies regarding the rejection of the independent claims, we
will not sustain the obviousness rejections of dependent claims 2--4, 6, 10,
13, 14, and 21 (Final Act. 12-18) for similar reasons.
CONCLUSION
The Examiner erred in rejecting claims 1--4, 6-8, 10, 12-14, and 16-
24 under§ 103.
6
Appeal2018-004233
Application 14/240, 198
DECISION
We reverse the Examiner's decision to reject claims 1--4, 6-8, 10, 12-
14, and 16-24.
REVERSED
7