Ex Parte Zilavy et al

Patent Trial and Appeal Board

Jan 15, 2013

10941704 (P.T.A.B. Jan. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DANIEL V. ZILAVY and LEO J. EMBRY
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Appeal 2010-007249
1

Application 10/941,704
Technology Center 2100
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Before JEAN R. HOMERE, KALYAN K. DESHPANDE, and MICHAEL J.
STRAUSS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1
The real party in interest is Hewlett Packard Development Co. (App. Br.
2.)

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Application 10/941,704

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-4, 8-17, 19, 20, and 23-26. Claims 5-7, 18, 21, and 22
have been indicated as being allowable if rewritten in independent form to
include the limitations of their respective base claims and any intervening
claims. (App. Br. 4.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part, and enter a new ground of rejection.
Appellants’ Invention
Appellants invented a method for allowing a computer to continue to
boot when a console (keyboard/monitor) connected thereto has failed. In
particular, upon detecting that a universal asynchronous receiver/transmitter
(UART) that interfaces a console is non-functional, a dummy transceiver
driver allows the computing device to continue to boot without
communication with the console. (Spec., (¶¶ [0010], [0011]).)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. A system embodied in a computer-readable storage
media for a computing device that includes at least a console,
the system comprising:
boot logic configured to detect whether communication
with the console is functional or non-functional and to allow the
computing device to boot with a non-functional console.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
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Application 10/941,704

3
LaChance US 7,017,038 B1 Mar. 21, 2006
Bulusu US 7,143,277 B2 Nov. 28, 2006

Rejection on Appeal
The Examiner rejects claims 1-4, 8-17, 19, 20, and 23-26 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Bulusu and
LaChance.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the principal Brief pages 11-18 and the Reply Brief, pages 2-7.
Dispositive Issue: Have Appellants shown that the Examiner erred in
finding that the combination of Bulusu and LaChance teaches or suggests a
boot logic configured to allow a computing device to boot with a detected
non-functional console, as recited claim 1?

Appellants argue that neither LaChance nor Bulusu teaches or
suggests the disputed limitations emphasized above. In particular,
Appellants argue that while Bulusu discloses rebooting a computing system
upon detecting a failed console, Bulusu does not teach allowing the
computing device to continue booting upon such detection. (App. Br. 13,
Reply Br. 3.) Similarly, Appellants argue that while LaChance discloses
downloading a copy of a bootstrap program from an external location when
the memory contents of a computing system are not usable for boot up,
LaChance does not remedy the deficiencies of Bulusu. (App. Br. 14, Reply
Br. 3.)
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In response, the Examiner finds that Bulusu’s disclosure of
establishing communication between a valid console and a computing device
in combination with LaChance’s disclosure of providing a missing boot up
code to a booting computer teaches the disputed limitations. (Ans. 14-18.)
On the record before us, we agree with the Examiner’s findings and
ultimate conclusion of obviousness. Bulusu discloses a console maintenance
agent that monitors the attachment or the detachment of a console to/from a
computer. (Col. 4, ll. 57-67.) Upon detecting that the console is detached
from the computer, the agent passes the information to a controller, which
deletes the configuration parameters of the detached console from the
computer operating system, and subsequently reboots the computing system
with current console configuration information. (Col. 7, l. 51- col. 8, l. 47.)
Next, LaChance discloses downloading a boot-up copy from an
external location if the memory of the computing device does not have the
required code to proceed with a boot-up. (Abstract.) We find that by
deleting parameters of a console detected as being detached from the
computing system, and allowing the computing system to continue booting
or reboot with updated console parameters, Bulusu discloses allowing the
computing system to boot with the detached console. Therefore, because the
disclosed detached console is a non-functional console, Bulusu teaches the
detected non-functional console. Additionally, we find that LaChance
complements Bulusu’s teachings by allowing the computing device to
download required boot-up codes in order to continue a boot up session with
a new console if such code is not readily available in the computer.
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Accordingly, we find that Appellants have not shown error in the
Examiner’s rejection of claim 1 as being unpatentable over the combination
of Bulusu and LaChance.
Because claim 8 recites commensurate limitations to those of claim 1,
we find no error in the Examiner’s rejection of claim 8 for the foregoing
reasons.
Regarding claim 2, we find that while Bulusu discloses using a UART
for allowing the computer to boot up with a valid console (col. 6, ll. 48-55),
and a controller for allowing the computer to boot up despite a failed
console, Bulusu is silent regarding using a dummy driver to allow the
computing device to boot up without the failed console. Rather, Bulusu
discloses utilizing the driver of another valid console to allow the computer
to boot up during a reboot. It follows that Appellants have shown error in
the Examiner’s rejection of claim 2.
Because claims 3, 4, 9-17, 19, 20, and 23-26 recite commensurate
limitations with those of claim 2, we find that Appellants have also shown
error in the Examiner’s rejection of those claims.

NEW GROUND OF REJECTION
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
35 U.S.C. § 101 Rejection
Claim 1 recites in relevant part a system embodied in a computer-
readable storage medium for a computing device. While Appellants’
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Specification defines a computer-readable medium to include carrier waves,
and signals ¶ [0014], the Specification is silent as to what a computer-
readable storage medium encompasses. Therefore, consistent with USPTO
guidelines, we broadly, but reasonably construe the “computer-readable
storage medium” recitation as encompassing a signal per se, which is
directly to non-statutory subject matter. U.S. Patent & Trademark Office,
Evaluating Subject Matter Eligibility Under 35 USC § 101 (Aug. 2012
Update); pp. 11-14, available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf.
Because claims 2-9, and 17-20 also recite a computer-readable storage
medium, we conclude they are also directed to non-statutory subject matter.

DECISION
We affirm the Examiner’s rejection of claims 1 and 8 as set forth
above. However, we reverse the Examiner’s rejection of claims 2-4, 9-17,
19, 20, and 23-26.
We enter a new ground of rejection against claims 1-9, and 17-20
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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
37 C.F.R. § 41.50(b)

ELD