Ex Parte Gonzalez et al

Board of Patent Appeals and Interferences

Jan 15, 2009

10751033 (B.P.A.I. Jan. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CARLOS J. GONZALEZ and ANDREW TOMLIN
____________________

Appeal 2008-36591
Application 10/751,033
Technology Center 2100
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Decided: January 15, 2009
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Before JAMES D. THOMAS, JEAN R. HOMERE, and STEPHEN C. SIU,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1 through 4, 10, 17, 18, 20, and 23. Claims 21, 22, and 25 through 27

1 Filed December 31, 2003. The real party in interest is SanDisk Corp.
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have been allowed. Claims 5 through 9, 11 through 16, 19, and 24 have
been deemed to be allowable if rewritten in independent form to include the
limitations of their respective base claims and any other intervening claims.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Appellants’ Invention
As depicted in Figure 1, Appellants invented a method and system for
screening a copy of firmware code transferred from a flash memory (13) into
a random access memory (RAM) (21) during the initialization of a computer
system. (Spec. 10.)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method of initiating a memory storage system having flash
memory containing at least first and second copies of firmware code stored
in different locations therein, a microprocessor, a read-only-memory (ROM)
containing microprocessor accessible boot code and a random-access-
memory (RAM) for storing microprocessor accessible firmware code, the
method comprising:

executing the boot code to transfer a first copy of the firmware from
the flash memory to the RAM,

identifying any bit errors in the transferred first copy of the firmware
code,

if bit errors are identified that are correctable, correcting the erroneous
bits,
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if bit errors are identified that are not correctable, reading at least a
portion of the second copy of the firmware code into the RAM in place of at
least a portion of the first copy containing the uncorrectable bit errors, and

executing an error free copy of the firmware code from the RAM.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Smith US 2004/0088534 A1 May 6, 2004
(filed Oct. 31, 2002)
Langford US 2004/0205328 A1 Oct. 14, 2004
(filed Apr. 10, 2003)

Rejection on Appeal
The Examiner rejected the claims on appeal as follows:
Claims 1 through 4, 10, 17, 18, 20, and 23 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Langford
and Smith.
Appellants’ Contentions
Appellants contend that the combination of Langford and Smith does
not render the claimed invention unpatentable. Particularly, Appellants
contend that while the cited combination teaches or suggests loading a boot
code from the Flash memory to the RAM before checking for errors in the
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Application 10/751,033

firmware code, it does not load the firmware code into the RAM until after
verifying that it is error free. (App. Br. 7-8, Reply Br. 1-3.)2
Examiner’s Findings
The Examiner finds that Langsford’s disclosure of loading the boot
code into the RAM from the flash memory before verifying the validity of
each microcode image in the flash memory teaches identifying bit errors in a
transferred copy of the firmware code, as recited in independent claim 1.

II. ISSUE
Have Appellants shown that the Examiner erred in concluding that the
combination of Langford and Smith renders claim 1 unpatentable?
Particularly, the issue turns on whether the cited combination teaches or
suggests identifying a bit error in a firmware code transferred from a flash
memory into a RAM.

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.

2 Appellants acknowledge that they inconsistently used the terms microcode
(firmware code) and boot code in their earlier briefs/replies to explain the
operation of the Langford reference. However, in the Reply Brief, they have
rectified all confusion regarding the proper use of such terms.
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Langford
1. As shown in Figures 2-3, Langford discloses, during the
initialization of a computer system (200), loading a boot code (300) from a
flash memory (220) into a RAM (221). (P. 3, para. [0025].)
2. The boot code (300) is executed in the RAM to instruct the boot
code (304, 314) in the flash memory (220) to check the validity flag (320,
322) of each firmware code (308, 316) in the flash memory. If the validity
flag indicates that a corresponding firmware code (308, 310, 316, 318) is
valid (i.e. it has no error), the boot code (304, 314) transfers the valid
firmware code from the flash memory into the RAM. (P. 3, para. [0027].)
3. If the validity flag indicates that the corresponding firmware
code is invalid, the boot code corrects it if possible. (P. 1, para. [0006].)
4. If correction is not possible, the boot code skips it and moves
on to check another firmware code for transfer into the RAM. (P. 3, para.
[0028.])
Smith
5. Smith teaches a method and system for reconfiguring the BIOS
of a computing system by updating it to reflect a desired customization level.
Particularly, Smith discloses customizing a BIOS code copy by updating
checksums or error correction codes associated with the contents of a BIOS
code copy. (P. 4, para. [0047].)

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IV. PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

V. ANALYSIS
Independent claim 1 requires in relevant part identifying bit errors in a
firmware code transferred from a flash memory into a RAM. As set forth in
the Findings of Facts section, Langford discloses, during the initialization of
a processor, loading a boot code in a RAM to trigger the verification of the
validity flag of a firmware code in a flash memory before transferring the
firmware code into a RAM. Particularly, Langford teaches transferring the
firmware code into the RAM only if it is first found to be valid. (FF. 1-4.)
We agree with Appellants that Langford’s teaching is limited to checking for
errors in the firmware code in the flash prior to transferring it into the RAM.
The Examiner appears to have mistakenly equated Langford’s initial loading
of the boot code into the RAM for the claimed limitation of transferring the
firmware code into the RAM. Like in Appellants’ earlier Briefs, the
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Examiner appears to confuse Langford’s boot code with the firmware code.3
We further agree with Appellants that Smith does not cure these deficiencies
of Langford noted above. It therefore, follows that Appellants have shown
that the Examiner erred in concluding that the combination of Langford and
Smith renders independent claims 1 through 4, 10, 17, 18, 20, and 23
unpatentable.

CONCLUSION OF LAW
Appellants have established that the Examiner erred in rejecting
claims 1 through 4, 10, 17, 18, 20, and 23 as being unpatentable under
35 U.S.C. § 103(a).

DECISION
We reverse the Examiner's rejection of claims 1 through 4, 10, 17, 18,
20, and 23.
REVERSED

rwk

DAVIS WRIGHT TREMAINE LLP –
SANDISK CORPORATION
505 MONTGOMERY STREET
SUITE 800
SAN FRANCISCO CA 94111

3 See supra note 2.
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