Ex Parte Desselle et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201311058341 (P.T.A.B. Feb. 28, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte B. DALVIS DESSELLE and GREGORY P. ZIARNIK ____________ Appeal 2010-007028 Application 11/058,341 Technology Center 2400 ____________ Before SCOTT R. BOALICK, BARBARA A. BENOIT, and TRENTON A. WARD, Administrative Patent Judges. BENOIT, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in- part. Appeal 2010-007028 Application 11/058,341 2 STATEMENT OF THE CASE Appellants’ invention relates to controlling operating system access to configuration settings for a computer. See generally Abstract; Spec. 1:4-6. Claims 1 and 21 are illustrative and read as follows, with key disputed limitations emphasized: 1. A method of operating a computer, comprising: a) assigning one or more operating system level access control parameters, wherein the one or more parameters control access by the operating system to all or a portion of one or more basic input/output system (“BIOS”) configuration settings; b) receiving an operating system level request to access all or a portion of the one or more BIOS configuration settings; and c) authorizing the operating system level request to access all or a portion of the one or more BIOS configuration settings based upon the one or more parameters[.] 21. A method of controlling operating system access to one or more BIOS configuration settings, comprising: providing a managed object format (MOF) file having content dependent upon an operating system access control parameter, wherein the MOF file is empty if the operating system access control parameter indicates operating system access is disabled, and wherein the MOF file defines methods for accessing the one or more BIOS configuration settings if the operating system access control parameter indicates operating system access is not disabled. The Examiner relies on the following as evidence of unpatentability: Ishii US 5,835,761 Nov. 10, 1998 Nakao US 2005/0257272 A1 Nov. 17, 2005 (filed Oct. 18, 2004) Microsoft Corp., Windows Instrumentation: WMI and ACPI (2001), available at http://msdn.microsoft.com/en- us/library/windows/hardware/gg463463.aspx. Appeal 2010-007028 Application 11/058,341 3 The Rejections 1. The Examiner rejected claims 1, 2, 5, 7, 8, and 17-20 under 35 U.S.C. § 102(b) as anticipated by Ishii. Ans. 3-6. 2. The Examiner rejected claims 21 and 22 under 35 U.S.C. § 102(b) as anticipated by Microsoft. Ans. 6-7. 3. The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over Ishii and Microsoft. Ans. 7-9. 4. The Examiner rejected claims 6 and 9-16 under 35 U.S.C. § 103(a) as unpatentable over Ishii and Nakao. Ans. 10-17. ANTICIPATION REJECTION BY ISHII The Examiner finds that Ishii discloses all of the limitations of illustrative claim 1. Ans. 3-4. Ishii discloses techniques for updating a BIOS program while the operating system is in operation – that is, without interrupting or stopping the operation of the system. Ishii, Abstract. The Examiner equates Ishii’s BIOS update flag 50 to the recited operating system level access control parameters. Ans. 3 (citing col. 11, l. 50–col. 12, l. 5; col. 12, l. 52–col. 13, l. 7), 18. In challenging the Examiner’s finding, Appellants contend that their Specification defines the term “operating system level access control parameters” so as to preclude the Examiner’s interpretation. App. Br. 11-13; Reply Br. 2-4. Appellants contend the term “access” means “authorization” or “access rights” and the recited “operating system level access control parameters” are parameters that determine the degree of control that a user may exercise over the BIOS configuration from the operation system. App. Br. 12. For support of their interpretation, Appellants point to “one Appeal 2010-007028 Application 11/058,341 4 embodiment of a process for controlling operating system access rights” in their Specification where “[t]he value of the parameter limits operating system access to alter or modify other configuration settings or parameters through the BIOS.” See App. Br. 12 (citing Spec. 12:18-19); Spec. 12:13- 14; see also Reply Br. 2-3. Appellants also point to an embodiment of a configuration settings display in which the parameter value of NO limits the operating system to read-only access of the nonvolatile memory storing the configuration settings, whereas a parameter value of YES provides the operating system with read and write access. App. Br. 12 (citing Spec. 13:3- 4, 8-9); see also Reply Br. 2-3. We are not persuaded that such example embodiments of how operating system level access control parameters may be used require the recited operating system level access control parameters to determine a degree of control a user may exercise over the BIOS configuration from the operation system, as Appellants argue (App. Br. 12; Reply Br. 3). The plain language of claim 1 does not mention a user or degree of control. Nor, for that matter, do the examples from the Specification relied on by Appellants. Claim terms are properly construed to include limitations not otherwise inherent in the term when the Specification “clearly set[s] forth a definition of the disputed claim term.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Doing so is appropriate because Appellants have the opportunity to amend the claims to obtain more precise coverage. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, claim 1 recites “one or more operating system level access control parameters, wherein the one or more parameters control access by the operating system to all or a portion of one or more [BIOS] Appeal 2010-007028 Application 11/058,341 5 configuration settings.” Operating system level access control parameters, then, control access by the operating system to all or a portion of one or more BIOS configuration settings. Ishii’s BIOS update flag satisfies the operating system level access control parameters limitation, as the Examiner finds (Ans. 3, 18). There is no dispute that Ishii’s BIOS update flag serves as an indication to the processor that a new BIOS configuration is waiting to be loaded into the BIOS memory. App. Br. 12; Ans. 18-19; see also Ishii, col. 13, ll. 1-7. Nor is there a dispute that, when the BIOS update flag so indicates, the BIOS program update is performed. App. Br. 11 (citing Ishii, col. 13, ll. 3-7). We agree with the Examiner that Ishii discloses that “the BIOS update flag controls the access of the information processing system to the BIOS” in that the flag indicates whether the BIOS program will be rewritten. Ans. 19. As such, Ishii’s BIOS update flag is an operating system level access control parameter that controls access by the operating system to all or a portion of one or more BIOS configuration settings, as recited by claim 1. In reciting “assigning one or more operating system level access control parameters,” claim 1 only requires one operating system level access control parameter. Updating the BIOS program based on an indication of the BIOS update flag is the epitome of controlling access to all of the BIOS configuration settings. Appellants’ arguments that Ishii does not disclose the recited “operating system level access control parameters” because Ishii does not disclose denying a request to update the BIOS configuration (App. Br. 11), does not limit a user’s ability to change the BIOS configuration from an operating system level (App. Br. 12), or has a delay between the time the Appeal 2010-007028 Application 11/058,341 6 update is requested and the time the update is implemented (App. Br. 11) are unavailing because they are not commensurate with the scope of claim 1. We therefore sustain the rejection of independent claim 1, independent claim 17, and claims 2, 5, 7, 8, and 18-20, which were not separately argued with particularity. ANTICIPATION REJECTION BY MICROSOFT The Examiner finds that Microsoft discloses all of the limitations of independent claim 21. Ans. 6-7. As explained by the Examiner, Microsoft discloses a MOF file which can be in the BIOS (citing page 1, line 35) and data item qualifiers “read” and “write,” which provide indicators to determine if any particular data item of the MOF file may be read or written by the operating system (citing page 6, lines 8-9). Ans. 20. The Examiner equates the read and write data item qualifiers to the recited operating system level access control parameters. Ans. 6-7, 20-21. For the limitations “wherein the MOF file is empty if the operating system access control parameter indicates operating system access is disabled” and “wherein the MOF file defines methods for accessing the one or more BIOS configuration settings if the operating system access control parameter indicates operating system access is not disabled,” the Examiner relies on Microsoft’s disclosure of sample code. Ans. 7 (indicating for each limitation “pages 7-12; ASL sample code: return value after initiating and calling Devcie(WMI1) [sic] and Method(WQAB,1)” (emphasis omitted)). Appellants argue, among other things, that Microsoft’s sample code is merely intended to provide a generic example of what an event or method Appeal 2010-007028 Application 11/058,341 7 might look like and does not disclose the recited limitations under § 102. App. Br. 15 (citing Microsoft at 7). We agree with Appellants. Under § 102, Microsoft’s disclosure falls short. To be sure, Microsoft discloses a MOF file and data item qualifiers “read” and “write,” which provide indicators to determine if any particular data item of the MOF file may be read or written by the operating system, as the Examiner finds. Ans. 6-7, 20-21. The Examiner, however, does not squarely address how Microsoft’s sample code satisfies the limitations “wherein the MOF file is empty if the operating system access control parameter indicates operating system access is disabled” or “wherein the MOF file defines methods for accessing the one or more BIOS configuration settings if the operating system access control parameter indicates operating system access is not disabled” recited by claim 21. Accordingly, we are persuaded of error in the Examiner’s finding that Microsoft’s disclosure discloses these limitations. Accordingly, based on the record before us, we cannot sustain the Examiner’s rejection of claim 21, which recites providing a managed object format (MOF) file having content dependent upon an operating system access control parameter, wherein the MOF file is empty if the operating system access control parameter indicates operating system access is disabled, and wherein the MOF file defines methods for accessing the one or more BIOS configuration settings if the operating system access control parameter indicates operating system access is not disabled. To the extent that these limitations would have been obvious over Microsoft, or obvious over Microsoft and Ishii, however, are questions that Appeal 2010-007028 Application 11/058,341 8 are not before us, and we will not speculate in that regard here in the first instance on appeal. We therefore are persuaded that the Examiner erred in rejecting under § 102 independent claim 21 and dependent claim 22 for similar reasons. THE OBVIOUSNESS REJECTION OVER ISHII AND MICROSOFT For the rejection of claims 3 and 4, each of which depend directly or indirectly from independent claim 1, Appellants refer to the previous arguments regarding claim 1 and contend that Microsoft does not remedy the purported deficiency of Ishii regarding claim 1. App. Br. 16. The issues before us, then, are the same as those in connection with claim 1, discussed above. We are not persuaded for the reasons discussed with regard to claim 1. Based on the previous explanation, we need not address whether Microsoft would remedy any purported deficiency of Ishii. Accordingly, Appellants have not persuaded us of error in the rejection of claims 3 and 4. THE OBVIOUSNESS REJECTION OVER ISHII AND NAKAO Claims 6 and 9-13 Each of claims 6 and 9-13 depend directly from independent claim 1. Appellants refer to the previous arguments regarding claim 1 and contend that Nakao does not remedy the purported deficiency of Ishii regarding claim 1. App. Br. 17-19. In particular, Appellants argue that Nakao does not disclose limiting operating system level access to the BIOS configuration or operating system level access control parameters, recited in claim 1. The Examiner relies on Ishii for disclosing operating system level access control parameters (Ans. 3-4, 10-14), and therefore Appellants’ Appeal 2010-007028 Application 11/058,341 9 arguments concerning Nakao are not persuasive. The issues before us are the same as those in connection with claim 1, discussed above. Accordingly, Appellants have not persuaded us of error in the rejection of claims 6 and 9- 13 for the reasons discussed with respect to claim 1. Claims 14-16 Independent claim 14 recites “assigning one or more operating system access control parameters to the one or more BIOS configuration settings. . .wherein access to all or a portion of the one or more BIOS configuration settings is limited in accordance with the one or more assigned operating system access control parameters.” In challenging the Examiner’s rejection of independent claim 14, Appellants refer to their previous, unpersuasive arguments regarding claim 1 in arguing that Ishii does not disclose operating system level access control parameters. App. Br. 20 (emphasis added). Based on Ishii’s purported failure to disclose operating system level access control parameters, Appellants also contend that Ishii also does not disclose “assigning one or more operating system access control parameters to one or more BIOS configuration settings,” as recited in claim 14. Id. The issues before us are the same as those in connection with claim 1, discussed above. We are not persuaded for the reasons discussed with respect to claim 1. Appellants also argue that Nakao does not remedy Ishii’s purported failure to disclose operating system access control parameters. Id. Based on the previous explanation, we need not address whether Nakao cures any purported deficiency of Ishii. Accordingly, Appellants have not persuaded us of error in the rejection of independent claims 14 and dependent claims 15 and 16. Appeal 2010-007028 Application 11/058,341 10 CONCLUSION Under § 102, the Examiner did not err in rejecting claims 1, 2, 5, 7, 8, and 17-20 but erred in rejecting claims 21 and 22. Under § 103, the Examiner did not err in rejecting claims 3, 4, 6, and 9-16. ORDER The Examiner’s decision rejecting claims 1-22 is affirmed-in-part. 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 babc Copy with citationCopy as parenthetical citation