Ex Parte Cutler et al

Patent Trial and Appeal Board

Mar 12, 2013

11060720 (P.T.A.B. Mar. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BRADLEY G. CUTLER and MARK EDWARD SHAW
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Appeal 2010-0105731
Application 11/060,720
Technology Center 2100
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Before JEAN R. HOMERE, JASON V. MORGAN, and BRYAN F.
MOORE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Hewlett-Packard Development Company, LP.
(App. Br. 3.)
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 4-11, and 20-30. Claims 3, 12-19, and 31-38
have been canceled. (App. Br. 4.) We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
Appellants’ Invention
Appellants invented a method and system for identifying whether a
device (114, 115) is sharable between a first operating system (102a) and a
second operating system (102b). In particular, upon determining that a
sharable bit (108, 109) in a firmware namespace (112) identifies that the
device (114, 115) is sharable, the sharable bit (108, 109) is copied into a first
and second spanning namespaces (112a, 112b) assigned respectively to the
first and second operating systems. (Fig. 1, Spec. [0001], [0017]-[0019].)
Illustrative Claim
Independent claims 1 and 29 further illustrate the invention. They
read as follows:
1. A system for sharing a device, comprising:
at least first and second operating systems;
at least one sharable bit in a firmware namespace for
identifying whether the device is sharable; and
at least first and second spanning namespaces
respectively assigned to the first and second operating systems
and wherein each spanning namespace comprises a copy of the
at least one sharable bit.

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29. A system, comprising:
means for identifying whether a device is sharable
between a plurality of operating systems; the means for
identifying comprising:
means for generating a copy of a firmware namespace for
each of the plurality of operating systems, wherein each copied
namespace includes a device object having at least one sharable
bit; and
means for examining the copied sharable bit in each
copied namespace.

Prior Art Relied Upon
Compaq Computer Corp. et al., Advanced Configuration and Power
Interface Specification, Revision 2.0b (Oct. 11, 2002) (hereinafter
“ACPI”).

Rejections on Appeal2
The Examiner rejects the claims on appeal as follows:
1. Claims 29 and 30 stand rejected under 35 U.S.C. § 101 as being
directed to nonstatutory subject matter.
2. Claims 1, 2, 4-10, and 20-30 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by ACPI.
3. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over ACPI.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 11-17, and the Reply Brief, pages 2-4.

2 The Examiner withdrew the objection previously entered against claims 1,
2, 4-11, and 20-30. (Ans. 11.)
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Dispositive Issue 1: Under 35 U.S.C. § 101, did the Examiner err in
concluding that claims 29 and 30 are directed to a computer program per se?

The Examiner concludes that because the means recited in the system
claim 29 are mere program codes that lack the necessary hardware structure,
the claim is directed to a computer program, which does not fall within any
of the four categories of statutory inventions. (Ans. 12-13.) In response,
Appellants argue that because the means recited in the claim correspond to
different functions of an operating system that necessarily require an
underlying computer system to operate, the recited system is necessarily
embodied in hardware, and it is therefore directed to statutory subject matter.
(App. Br. 11-12; Reply Br. 2-4.)
On the record before us, we find no error in the Examiner’s rejection
that the above referenced claims are directed to nonstatutory subject matter.
We note at the outset that the means for identifying, copying, and examining
as recited in the system of claim 29 correspond to the first and second
operating systems. (App. Br. 9.) While Appellants correctly argue that the
recited operating systems are inoperable without the use of an underlying
computer, the claim is not limited to an embodiment wherein the operating
systems are operating. That is, we find that the recited operating systems
also encompass inoperable instances wherein an underlying computer is not
necessarily involved. Accordingly, we conclude that in such inoperable
instances, the claim is directed to software per se, which is not a statutory
category of invention. Consequently, we will sustain the Examiner’s
rejection of claims 29 and 30.
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Dispositive Issue 2: Under 35 U.S.C. § 102, did the Examiner err in
finding that ACPI describes a first and second spanning namespaces
respectively assigned to a first and second operating systems, wherein each
spanning namespace contains a copy of the firmware namespace sharable
bit, as recited in claim 1?

Appellants argue that ACPI does not describe the disputed limitations
emphasized above. (App. Br. 12-13; Reply Br. 2-3.) In particular,
Appellants argue that even if ACPI discloses a plurality of operating systems
and a sharable bit in a firmware namespace (GBL_STS) for identifying
whether a device is sharable, ACPI does not describe a first and second
namespaces assigned to the operating systems wherein the sharable bit is
copied in each of the namespaces. (Id.) In response, the Examiner finds that
ACPI’s disclosure of the multiple operating systems loading or unloading
namespaces from the BIOS (i.e. firmware) describes the disputed
limitations. (Ans. 16-17.)
Based upon our review of the record before us, we do not agree with
the Examiner’s finding of anticipation regarding claim 1. In particular,
while the Examiner correctly finds that ACPI discloses operating systems
loading the contents of a firmware namespace, wherein such contents
include a sharable bit indicating the availability of a device (section 2.1,
table 4-11), we find nothing in the cited portions of ACPI to indicate that
each of the operating systems contains a spanning namespace, let alone that
the loaded contents are copied into the spanning namespaces, as required by
the claim. The Examiner appears to have found that the operating system’s
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loading of the contents of the firmware namespace necessarily takes place in
respective namespaces associated with the operating systems. However, the
record before us is devoid of any evidence to support such a finding.
Because such finding is conjectural at best, it is insufficient to support the
Examiner’s rejection under anticipation. Because Appellants have shown at
least one error in the Examiner’s rejection, we need not address Appellants’
remaining arguments. It follows that the Examiner erred in rejecting claim 1
as being anticipated by ACPI.
Because claims 2, 4-11, and 20-30 also recite the disputed limitations
above, the Examiner similarly erred in rejecting those claims over ACPI for
the aforementioned reasons set forth in our discussion of claim 1.
DECISION
We affirm the Examiner’s rejection of claims 29 and 30 as being
directed to nonstatutory subject matter. However, we reverse the
Examiner’s prior art rejections of claims 1, 2, 4-11, and 20-30 as set forth
above.
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

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