Ex Parte Hanes

Patent Trial and Appeal Board

Jul 29, 2016

12834567 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/834,567 07/12/2010
22879 7590 08/02/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
David H. Hanes
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.
82263305 8738
EXAMINER
ADAMS, CARL
ART UNIT PAPER NUMBER
2627
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
U-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID H. HANES
Appeal2014-009433
Application 12/834,567
Technology Center 2600
Before JEFFREY A. STEPHENS, NATHAN A. ENGELS, and
JAMES W. DEJMEK, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 1-15, which
are all the claims pending in the application. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.
1 The real party in interest is identified as Hewlett-Packard Development
Company, LP. (App. Br. 3.)
Appeal2014-009433
Application 12/834,567
Claimed Subject Matter
The claimed invention generally relates to providing device-level
functionality without altering instructions stored in device memory of an
optical disc player. (Title, Abstract.) Claim 1, reproduced below, is
illustrative:
1. A non-transitory machine-readable medium storing first
instructions that are executed by the machine to:
provide device-level functionality unsupported by second
instructions that provide device-level functionality to the
machine and that are stored in non-volatile memory associated
with the machine without altering the second instructions in the
non-volatile memory and without altering the second instructions
in volatile memory associated with the machine;
wherein the machine comprises an optical disc player and
the medium comprises an optical disc.
Rejections
Claims 1, 2, and 6-11 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Herpel et al. (US 2007/0212026 Al, published Sept. 13,
2007). (Final Act. 5-7.)
Claims 3-5 and 12-15 stand rejected under 35 U.S.C. § 103(a) as
obvious over Herpel, Hirose et al. (US 2010/0188767 Al, published July 29,
2010), and Moreira Sa de Souza (US 2009/0097397 Al, published Apr. 16,
2009). (Final Act. 7-9.)
2
Appeal2014-009433
Application 12/834,567
ISSUE2
The dispositive issue raised by Appellant's contentions is whether the
Examiner erred in finding Herpel discloses "first instructions that are
executed by" an optical disc player "to provide device-level functionality
unsupported by second instructions that provide device-level functionality
... without altering the second instructions," as recited in claim 1, and
similarly recited in independent claims 10 and 14.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments the Examiner erred (App. Br. 7-12; Reply Br. 2---6). We concur
with Appellant's argument (App. Br. 8; Reply Br. 4) that the Examiner has
not shown Herpel discloses "first instructions that are executed by" an
optical disc player "to provide device-level functionality unsupported by
second instructions that provide device-level functionality ... without
altering the second instructions," as recited in claim 1.
We agree with Appellant that Herpel discloses (1) updating the
firmware of a disc player before presenting the contents of the disc, which
would alter the "second instructions" contrary to the claim, or (2) storing
updated instructions for later installation if the update is not necessary for
presenting the disc contents. (App. Br. 8.) The Examiner finds Herpel's
storing of the first instructions for a later update does not alter the second
instructions because in that scenario the first instructions are not used to play
the disc, and also finds that "the process of storing the updated firmware is
2 Because this issue is dispositive, we need not reach additional issues raised
by Appellant's arguments.
3
Appeal2014-009433
Application 12/834,567
part of the execution of the firmware, even if the firmware is not utilized in
the playback of the disk." (Ans. 6.) We agree with Appellant that merely
storing instructions is not the same as executing them. (Reply Br. 4.)
Because claim 1 requires executing the first instructions to provide device-
level functionality to the disc player without altering the second instructions,
and because the Examiner has not shown Herpel discloses executing the first
instructions without altering the second instructions, we do not sustain the
rejection of claim 1under35 U.S.C. § 102(b) as anticipated by Herpel. For
the same reasons, we do not sustain the rejections of claims 2-15. 3
DECISION
We reverse the Examiner's decision to reject claims 1-15.
REVERSED
3 Although additional references are relied on in rejecting claims 3-5 and
12-15, the Examiner has not shown these additional references remedy the
deficiencies noted with respect to the rejection of the independent claims.
4