Ex Parte Cromer et al

Patent Trial and Appeal Board

Aug 12, 2016

11692283 (P.T.A.B. Aug. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111692,283 03/28/2007 Daryl Carvis Cromer
63203 7590 08/16/2016
ROGITZ & AS SOCIA TES
750B STREET
SUITE 3120
SAN DIEGO, CA 92101
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.
RPS92006l049US1 7298
EXAMINER
MILLER, VIV AL
ART UNIT PAPER NUMBER
2197
NOTIFICATION DATE DELIVERY MODE
08/16/2016 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):
Noelle@rogitz.com
eofficeaction@appcoll.com
J ohn@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARYL CARVIS CROMER, HOWARD JEFFREY LOCKER,
RANDALL SCOTT SPRINGFIELD, and ROD D. WAL TERMANN1
Appeal2014-006129
Application 11/692,283
Technology Center 2100
Before DEBRA K. STEPHENS, JASON V. MORGAN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's non-
final rejection of claims 1---6, 8-12, and 14--19. Claims 7, 13, and 20 are
canceled. Non-Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Invention
Appellants disclose a computer system hypervisor that processes a
received firmware update by first inhibiting use of a device-to which the
1 Appellants identify Lenovo Singapore Pte. Ltd. as the real party in interest.
App. Br. 2.
Appeal2014-006129
Application 11/692,283
firmware update corresponds-by each of one or more guest operating
systems. Abstract. After the guest operating systems have been inhibited
from using the device, the firmware in the device is upgraded by the
hypervisor using the received firmware update. Id. After the firmware has
been upgraded, each of the guest operating systems is allowed use of the
device. Id.
Exemplary Claims
Claims 1 and 3, reproduced below with key Hrnitations emphasized~
are representative:
1. A computer-implemented method comprising:
receiving a firmware update at a computer system,
wherein the computer system is executing a hypervisor and one
or more guest operating systems, and wherein the firmware
update corresponds to a hardware device accessible by the
computer system, the hardware device including an updateable
firmware;
hypervisor operates by:
inhibiting use of the hardware device by each of
the one or more guest operating systems, the inhibiting
including unmounting the hardware device from each of
the guest operating systems;
for each of the one or more guest operating
systems:
selecting one of the one or more guest
operating systems;
determining whether to continue execution
of the selected guest operating system for a
duration that the hardware device is unmounted
from the one or more guest operating systems;
in response to determining to continue
execution of the selected guest operating system,
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buffering one or more requests generated by the
selected guest operating system and targeted to the
unmounted hardware device; and
in response to determining to not continue
execution of the selected guest operating system,
suspending the selected operating system;
upgrading the firmware using the received
firmware update while the one or more guest operating
systems are inhibited from using the hardware device;
and
after the upgrading, allowing each of the guest
operating systems use of the hardware device, wherein
the allowing further comprises sending the buffered
requests to the hardware device.
3. The method of claim 2 wherein the validating further
comprises:
receiving, from a user, a password that is used to control
firmware updates to the computer system; and
comparing the received password to an expected
password, wherein the upgrading is performed in response to
the received password matching the expected password.
Rejections
The Examiner rejects claims 14--19 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Non-Final Act. 2-3.
The Examiner rejects claims 1, 6, 8, 12, 14, and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Schoenberg (US 2007/0074199 Al;
Mar. 29, 2007) and Lowell (US 2005/0076155 Al; Apr. 7, 2005). Non-
Final Act. 3-9.
The Examiner rejects claims 2, 4, 10, 15, and 17 under 35 U.S.C.
§ 103(a) as being unpatentable over Schoenberg, Lowell, and Kachroo (US
2008/0189697 Al; Aug. 7, 2008). Non-Final Act. 9-11.
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The Examiner rejects claims 3, 9, and 16 under 35 U.S.C. § 103(a) as
being unpatentable over Schoenberg, Lowell, Kachroo, and Nasu (US 2004/
0243994 Al; Dec. 2, 2004). Non-Final Act. 11-13.
The Examiner rejects claims 5, 11, and 18 under 35 U.S.C. § 103(a) as
being unpatentable over Schoenberg, Lowell, Kachroo, and Hind (US
7,069,452 Bl; June 27, 2006). Non-Final Act. 13-15.
ISSUES
1. Did the Examiner err in finding that claim 14 is directed to non-
statutory subject matter?
2. Did the Examiner err in finding the combination of Schoenberg
and Lowell teaches or suggests "determining whether to continue execution
of the selected guest operating system for a duration that the hardware
device is unmounted from the one or more guest operating systems," as
recited in claim 1?
3. Did the Examiner err in finding the combination of Schoenberg,
Lowell, Kachroo, and Nasu teaches or suggests "receiving, from a user, a
password that is used to control firmware updates to the computer system,"
as recited in claim 3?
ANALYSIS
We agree with and adopt as our own the Examiner's findings of facts
and conclusions as set forth in the Answer and in the Action from which this
appeal was taken. We have considered Appellants' arguments, but do not
find them persuasive of error. We provide the following explanation for
emphasis.
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Application 11/692,283
35 U.S.C § 101----Claims 14-19
In rejecting claim 14---which is directed to a "computer program
product stored in a tangible computer readable storage medium"-under 3 5
U.S.C. § 101, the Examiner finds that the claimed computer readable storage
medium is not defined and therefore encompasses non-statutory signals. See
Ans. 16; Non-Final Act. 2-3.
Appellants contend the Examiner erred because the Board previously
approved, as statutory, a claim directed to "a computer readable storage
medium." App. Br. 6 (citing Ex parte Hu, Appeal No. 2010-000151 (BPAI
2012), available at https://e-foia.uspto.gov/Foia/RetrievePdf?system=
BPAI&flNm=fd2010000151-02-09-2012-1); see also Reply Br. 2.
However, the Board has since made clear that absent a definition in the
Specification or limitation in the claims that excludes transitory media, a
"computer readable storage medium" is directed to non-statutory subject
matter. Ex parte Mewherter, 107 USPQ2d 1857, 1859, 1862 (PTAB 2013)
(precedential-in-part).
Appellants further argue "Claim 14 goes one step further by including
the word 'tangible' before the phrase." App. Br. 7. However, there may be
"tangibility arguably attributed to a signal." In re Nuijten, 500 F.3d 1346,
1356 (Fed. Cir. 2007); see also U.S. Patent & Trademark Office, Evaluating
Subject Matter Eligibility Under 35 USC§ 101(August2012 Update) (p.
14), available at http://www.uspto.gov/patents/law/exam/10 !_training_
aug2012.pdf (noting that while requiring a medium be "non-transitory" is a
viable option for excluding signals, merely indicating that a medium is
"physical" or "tangible" is not acceptable). Thus, in the context of the
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Specification and claim terms at issue here, the inclusion of the word
"tangible" is insufficient to limit claim 14 to statutory subject matter.
For these reasons, we agree with the Examiner that claim 14 is
directed to non-statutory subject matter. Accordingly, we sustain the
Examiner's 35 U.S.C. § 101 rejection of claim 14, and claims 15-19, which
Appellants do not argue separately with respect to this issue.
35 U.S.C. § 103(a)-Claims 1, 2, 4-6, 8, 10--12, 14, 15, and 17-19
In rejecting claim 1 under 3 5 U.S. C. § 1 0 3 (a), the Examiner finds
Lowell's interception of access to an I/O device by an operating system, and
Lowell's allowing a virtual machine monitor to temporarily stop the
operating system from commencing a new I/O sequence, teaches or suggests
determining whether to continue execution of the selected guest operating
system for a duration that the hardware device is unmounted from the one or
more guest operating systems. Final Act. 6 (citing Lowell i-f 23, claims 20,
21, 23, and 24); Ans. 18-19 (further citing Lowell i-fi-119, 45, and 54).
Appellants contend the Examiner erred because the teachings of
Lowell have "nothing to do with 'stopping' Lowell's operating system."
App. Br. 9. Appellants argue "Lowell seems to uniformly indicate that its
OS continues to function without giving any consideration to whether it
should be suspended." Id. at 4.
Appellants' arguments do not persuasively distinguish the present
application's "in response to determining to not continue execution of the
selected guest operating system, suspending the selected operating system"
(claim 1) from the prior art's "allowing the virtual machine monitor to
temporarily stop the operating system from commencing a new I/O
sequence" (Lowell claim 20). See App. Br. 9-12; Ans. 18 (citing Lowell
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Application 11/692,283
claim 20). Appellants argue the error underpinning the Examiner's findings
with respect to Lowell "is that suspending a particular 110 sequence
attempted by the Lowell[] OS ... still does not mean that the OS itself is
'stopped,' temporarily or otherwise." Reply Br. 3--4. However, as the
Examiner correctly finds, the selected operating system of Lowell is stopped
from commencing a new I/O sequence. Ans. 18 (citing Lowell claim 18).
Even if Lowell determines the operating system should not continue
execution of new I/O sequences-but should continue execution of other
portions of the operating system-Appellants still have not persuasively
shown that this determination fails to meet the claim language as written
under the broadest reasonable interpretation.
Appellants further argue Schoenberg teaches away from the claimed
invention by teaching embodiments that "permit unaltered guest software to
execute normally (including possible attempts to install processor
microcode or [the relied-upon] device firmware)." App. Br. 8; see also
Reply Br. 3. However, the teaching of embodiments that permit, rather than
require, normal execution of guest software does not teach away from the
suspension of an operating system to stop the operating system from
commencing a new I/O sequence, as taught or suggested by Lowell.
Appellants' arguments do not show that Schoenberg criticizes, discredits, or
otherwise discourages modifying suspension of an operating system in the
claimed manner. See In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004).
For these reasons, we agree with the Examiner the combination of
Schoenberg and Lowell teaches or suggests "determining whether to
continue execution of the selected guest operating system for a duration that
the hardware device is unmounted from the one or more guest operating
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systems," as recited in claim 1. Accordingly, we sustain the Examiner's 35
U.S.C. § 103(a) rejection of claim 1, and claims 6, 8, 12, 14, and 19, which
Appellants do not argue separately. Appellants do not raise additional
arguments with respect to the Examiner's 35 U.S.C. § 103(a) rejections of
claims 2-5, 10, 11, 15, 17, and 18. See App. Br. 12-13. Therefore, we also
sustain the Examiner's 35 U.S.C. § 103(a) of these claims.
35U.S.C.§103(a)-Claims 3, 9, and 16
In rejecting claim 3, the Examiner finds N asu' s use of a password list
teaches or suggests receiving, from a user, a password that is used to control
firmware updates to the computer system. Non-Final Act. 12 (citing Nasu
Fig. 5, iTiT 204--209).
Appellants contend the Examiner erred because rather than receiving
a passwordfrom a user, Nasu's "device 101 transmits a password to the
device 100." App. Br. 13. However, the Examiner correctly finds Nasu
teaches or suggests entry of a password from an administrator or user. Ans.
19. Nasu explicitly teaches a "password list ... is sent to a manager of the
intermediary device 101 ... by a safe route besides the network, for
example, by registered mail." Nasu iT 206. Thus, the Examiner correctly
finds receipt of a password (e.g., a password in a list) from a user (e.g., a
manager of intermediary device 101 ).
Appellants contend the Examiner's findings are insufficient because
"the language of the claim of receiving the password from a user at a device
where the firmware is to be updated and comparing the password to an
expected password at the same device." Reply Br. 5. Appellants further
contend that "even if the devices 100 and 101 were to receive a password
from a user at some point, when the updating is to actually occur the
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password is received from the intermediary device 101 instead of a user."
Id. (emphasis added). However, Appellants do not identify claim language
or an explicit definition in the Specification that limits the receiving and
comparing steps to performance on the same device or to both happening
when an updating is to occur. Therefore, Appellants arguments, being
incommensurate with the scoped of the claimed invention, are unpersuasive.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of claim 3, and claims 9 and 16, which Appellants do not argue separately.
DECISION
We affirm the Examiner's decision rejecting claims 1-6, 8-12, and
14--19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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