HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P.

Patent Trials and Appeals Board

Apr 15, 2020

14780892 - (D) (P.T.A.B. Apr. 15, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/780,892 09/28/2015 JEFFREY KEVIN JEANSONNE 84366059 4186
22879 7590 04/15/2020
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
EXAMINER
BUCKNOR, OLANREWAJU J
ART UNIT PAPER NUMBER
2495
NOTIFICATION DATE DELIVERY MODE
04/15/2020 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
jessica.pazdan@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 JEFFREY KEVIN JEANSONNE, VALIUDDIN Y. ALI,
JAMES M. MANN, and BORIS BALACHEFF
____________________

Appeal 2019-001584
Application 14/780,892
Technology Center 2400
____________________

Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
KRISTEN L. DROESCH, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 2 through 20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). According to Appellant, Hewlett-Packard Development
Company, L.P. is the real party in interest. Appeal Br. 1.
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Application 14/780,892
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INVENTION
Appellant’s invention is directed to a protection mechanism in a
computing system, to protect the system code used during start up of the
computing system from malware attacks. Spec. ¶¶ 3–5. Claim 2 is
illustrative of the invention and is reproduced below.
2. A method comprising:
during an initialization procedure of a controller in a
system, verifying, by the controller that is separate from a
processor of the system, controller code for execution on the
controller, wherein the verifying is performed before execution
of the processor;
after verifying the controller code, verifying, by the
controller, system boot code, wherein the system boot code is
for execution by the processor; and
the controller code upon execution by the controller
verifying the system boot code prior to each instance of the
processor restarting execution of the system boot code.

EXAMINER’S REJECTIONS2
The Examiner rejected claims 2, 5, 9, and 16 under 35 U.S.C.
§ 102(a)(2) as being anticipated by Huang (US 2014/0115314 A1; Apr. 24,
2014). Final Act. 5–7.
The Examiner rejected claim 4 under 35 U.S.C. § 103 as being
unpatentable over Huang and Wang (US 2007/0260866 A1; Nov. 8, 2007).
Final Act. 7–8.

2 Throughout this Decision, we refer to the Appeal Brief filed July 2, 2018
(“Appeal Br.”); Reply Brief, filed December 13, 2018 (Reply Br.); Final
Office Action mailed December 26, 2017 (“Final Act.”); and the Examiner’s
Answer mailed October 18, 2018 (“Ans.”).
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Application 14/780,892
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The Examiner rejected claims 3, 6, 7, 10 through 13, 15 and 17
through 20 under 35 U.S.C. § 103 as being unpatentable over Huang and
Dayan (US 2008/0126782 A1; May 29, 2008). Final Act. 8–14.
The Examiner rejected claims 8 and 14 under 35 U.S.C. § 103 as
being unpatentable over Huang, Dayan and Frid (US 2004/0030877 A1;
Feb. 12, 2004). Final Act. 14–16.

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejection of all of the disputed claims under 35 U.S.C. § 102 and
35 U.S.C. § 103.
Anticipation rejection of independent claim 2 and dependent claims 5,
9, and 16
Appellant presents several arguments directed to the Examiner’s
rejection of independent claim 2 as anticipated by Huang, on pages 5
through 9 of the Appeal Brief and pages 1 through 9 of the Reply Brief. The
dispositive issue presented in these arguments is did the Examiner err in
finding under 35 U.S.C. § 102(a)(2) that Huang expressly or inherently
discloses a system with a controller, separate from the processor, verifying
controller code for execution on the controller, as recited in independent
claim 2.
The Examiner, in rejecting claim 2, finds that Huang discloses a
controller separate from a processor and that the controller verifies the
secured loader, for execution on the controller before execution by the
processor. Final Act 5–6 (citing Fig. 6, ¶¶ 19–20). Further, in response to
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Application 14/780,892
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Appellant’s argument that the secure loader, equated to the claimed “code
for execution on a controller” is not executed by the controller the Examiner
states:
Huang teaches an embedded controller which executes an
initialization procedure to include loading a secure loader and
verifying whether the secure loader has been modified using a
hash verification procedure (Huang; Fig. 1; step S11; ¶ [0020]).
Data within the secure loader is executed to generate a correct
hash value of the secure loader and compared to another stored
hash value in order to determine if the secure loader has been
modified. Additionally, within the above embodiment, Huang
teaches that a processor executes the secure loader, the secure
loader verifies the BIOS, and if the BIOS passes the verification
procedure, the processor executes the BIOS and loads an
operating system of an electronic device (Huang; step S16-19;
¶ [0022]). However, within a second embodiment, Huang
teaches that the embedded controller verifies the BIOS via the
hashing verification process and confirms if the BIOS has been
modified (Huang; Fig. 3; step S31-32; ¶ [0032]). A person of
ordinary skill in the art would have been motivated by the
explicit teachings of Huang which shows that the controller is
capable of executing a verification process for the BIOS and the
secure loader
Ans. 3–4.
We have reviewed the descriptions in Huang, as cited by the
Examiner, and concur with the Examiner’s findings that Huang discloses a
controller separate from the processor and that there are embodiments where
the controller verifies the secure loader or the BIOS. However, we do not
find that this expressly or inherently discloses the limitations of claim 2.
Claim 2 recites verifying “a controller in a system, verifying, by the
controller that is separate from a processor of the system, controller code for
execution on the controller, wherein the verifying is performed before
execution of the processor.” Thus, claim 2 requires a controller separate
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Application 14/780,892
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from the processor, verifying the instructions that it is going to execute,
before the execution by the processor. We concur with the Appellant that,
the Examiner has not shown that Huang expressly or inherently discloses the
code verified by the controller (either the secure loader or the BIOS) is
executed by the controller. Specifically, Huang in numerous disclosures
identifies that the secure loader and BIOS are executed by the processor, not
the controller (see e.g., Fig. 1, Steps 16, 19, Fig. 5 step 507, ¶¶ 22, 29, 42,
48). Thus, the Examiner has not shown that the disclosure of Huang
expressly or inherently discloses all of the limitations of independent claim 2
and we do not sustain the Examiner’s anticipation rejection of claim 2 and
dependent claims 5, 9 and 16 similarly rejected.
Obviousness rejections
Appellant argues that the Examiner’s rejection of independent claims
10 and 15 is in error for similar reasons as discussed with respect to
independent claim 2. Appeal Br. 11, 13.
We concur with Appellant’s argument. Each of independent claims
10 and 15 recite a limitation directed to a controller separate from the
processor where the controller verifies code (or firmware) that it executes
before the processor. Independent claim 10 recites “during initialization of
the embedded controller while the processor is off, determine whether the
controller firmware stored in the first memory is compromised, wherein the
controller firmware is for execution in the embedded controller.”
Independent claim 15, recites “verify, by an embedded controller, a
controller code stored in a first memory, wherein the controller code is for
execution in the embedded controller.” The Examiner in rejecting these
claims relies upon Huang to teach this limitation and does not show that the
disclosure of Dayan teaches the feature. Final Act. 10–11, 16; Ans. 9. As
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Application 14/780,892
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discussed above with respect to claim 2 the Examiner has not shown that
Huang teaches the code verified by the controller (either the secure loader or
the BIOS) is executed by the controller. Thus, the Examiner has not shown
that the disclosures of Huang and Dayan teaches all of the limitations of
independent claims 10 and 15; and we do not sustain the Examiner’s
obviousness rejection of claims 10, 15 and dependent claims 11throouh 13
and 17 through 20 similarly rejected.
We note that the Examiner has not shown that the teachings of Wang
and Dayan make up for the deficiencies noted in the anticipation rejection of
claim 2, or that the additional teachings of Frid overcome the deficiencies
noted in the rejections of independent claims 2 or 10. Accordingly, we do
not sustain the Examiner’s rejections of dependent claims 3, 4, 6, 7, 8, and
14.
CONCLUSION
We reverse the Examiner’s rejections of claims 2 through 20.

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2, 5, 9, 16 102 Huang 2, 5, 9, 16
4 103 Huang, Wang 4
3, 6, 7, 10–13,
15, 17–20
103 Huang, Dayan 3, 6, 7, 10–
13, 15, 17–
20
8, 14 103 Huang, Dayan, Frid 8, 14
Overall
Outcome
2 – 20

REVERSED