Ex Parte Heinrich et al

Patent Trial and Appeal Board

Jun 20, 2016

12913486 (P.T.A.B. Jun. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/913,486 10/27/2010 David Heinrich
56436 7590 06/22/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82264130 3978
EXAMINER
MORSHED, HOSSAIN M
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
06/22/2016 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):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID HEINRICH
and
THEODORE F. EMERSON
Appeal2014-008451
Application 12/913,486
Technology Center 2100
Before BRUCE R. WINSOR, KEVIN C. TROCK, and
MICHAEL M. BARRY, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-20, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest identified by Appellants is the Hewlett-Packard
Development Company, LP, which is a wholly owned affiliate of Hewlett-
Packard Company. (App. Br. 1.)
Appeal2014-008451
Application 12/913,486
STATEMENT OF THE CASE
Appellants' disclosed invention relates to "updating firmware" (Spec.
i-f 3), i.e., updating "machine-readable instructions or data structures that
control or enable basic operational functionality of an electronic device"
(Spec. i-f 1 ). Claim 1, which is illustrative, reads as follows:
1. A method, comprising:
copying an existing first firmware image from a first
memory to a second memory;
after the copying, directing firmware access requests from
a host processing system to a memory location in the second
memory storing the first firmware image;
after the copying, writing a second firmware image to the
first memory, wherein the second firmware image is a firmware
update for the existing first firmware image;
after the writing, setting a switch that re-directs firmware
access requests of the host processing system from the memory
location in the second memory storing the first firmware image
to a memory location in the first memory storing the second
firmware image, wherein the setting is conditioned on
occurrence of a switching synchronization event.
The Examiner relies on the following prior art in rejecting the claims:
Lei et al.
Kennedy et al.
Ebsen et al.
Cohen et al.
Chen
US 2004/0117541 Al
US 7 ,305,668 B2
US 7,380,113 B2
US 2010/0241838 Al
US 7,991,988 B2
June 1 7, 2004
Dec. 4, 2007
May 27, 2008
Sept. 23, 2010
Aug. 2, 2011
Claims 1---6, 8, 9, 12-14, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ebsen et al. (hereinafter "Ebsen") and
Chen. (See Final Act. 8-22.)
2
Appeal2014-008451
Application 12/913,486
Claim 7, 11, 15, 16 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ebsen, Chen, and Kennedy et al. (hereinafter
"Kennedy"). (See Final Act. 22-25.)
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ebsen, Chen, and Lei et al. (hereinafter "Lei"). (See Final
Act. 25-26.)
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ebsen, Chen, and Cohen et al. (hereinafter "Cohen").
(See Final Act. 26-27.)
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br.," filed Feb. 20, 2014; "Reply Br.," filed July 21, 2014) and the
Specification ("Spec.," filed Oct. 27, 2010) for the positions of Appellants
and the Final Office Action ("Final Act.," mailed Nov. 21, 2013) and the
Examiner's Answer ("Ans.," mailed May 29, 2014) for the reasoning,
findings, and conclusions of the Examiner. Only those arguments actually
made by Appellants have been considered in this decision. Arguments that
Appellants did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
ISSUES
The issues presented by Appellants' contentions are as follows:
Whether the combination of Ebsen and Chen teaches or suggests
after the writing, setting a switch that re-directs firmware access
requests of the host processing system from the memory location
in the second memory storing the first firmware image to a
memory location in the first memory storing the second firmware
image, wherein the setting is conditioned on occurrence of a
switching synchronization event[,]
3
Appeal2014-008451
Application 12/913,486
as recited in claim 1.
Whether the combination of Ebsen and Chen teaches or suggests that
the "synchronization event relat[ es] to transaction activity on a bus over
which the firmware access requests are received from the host processing
system," as recited in claim 2.
ANALYSIS
Claim 1
Appellants' argument for the patentability of claim 1 can be
summarized by the following contention:
[T]he redirection defined in independent claim 1 is from the
memory location storing the first (original) firmware to the
memory location storing the second (new) firmware, whereas the
re-direction described in Chen is from the memory location
storing the second (new) firmware to the memory location
storing the first (original) firmware.
(App. Br. 9.) We find Appellants argument to be unpersuasive because it
attacks Chen individually where the rejection is based on a combination of
Chen with Ebsen. "[T]he test [for obviousness] is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981). "[O]ne cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references." Id. at 426.
We consider the Examiner's finding regarding Chen (Final Act. 10-
11) in the context of the Examiner's findings regarding Ebsen (Final Act. 8-
10). It is uncontested that, as found by the Examiner, Ebsen teaches the
locations recited in claim 1 in which the first and second firmware images
are stored. (See id.) Ebsen teaches "after the writing, ... re-direct[ing]
4
Appeal2014-008451
Application 12/913,486
firmware access requests of the host processing system from the memory
location in the second memory storing the first firmware image to a memory
location in the first memory storing the second firmware image," as recited
in claim 1. (See Ebsen col. 8, 11. 13-24, Fig. 3B (items 330, 332).)
However, as found by the Examiner, Ebsen does not teach that the re-
directing of firmware requests is accomplished by "setting a switch that re-
directs firmware access requests of the host processing system ... , wherein
the setting is conditioned on occurrence of a switching synchronization
event," as recited in claim 1. We agree with the Examiner that Chen teaches
re-directing requests from one firmware storage location to another storage
location (see Chen col. 3, 11. 32--43, Figs. 3 (item S310), 4, 5 (item S506))
using a switch (Chen's BF flag) conditioned on a switching synchronization
event (Chen's reboot). (See Final Act. 10-11.) Therefore, we find
Appellants' arguments based on the firmware memory locations taught by
Chen (see App. Br. 6-10; Reply Br. 1--4) to be unpersuasive in light of the
Examiner's findings regarding the firmware memory locations taught by
Ebsen (see Final Act. 8-10).
We conclude Appellants' contentions do not demonstrate error in the
rejection of claim 1. Accordingly we sustain the rejections over various
combinations of Ebsen, Chen, Kennedy, Lei, and Cohen of: claim 1;
independent claims 8, 12, and 18, which are argued relying on the arguments
made for claim 1 (see App. Br. 12, 14, 15); and claims 4--7, 9-11, 13-17, 19,
and 20, which variously depend, directly or indirectly, from claims 1, 8, 12,
and 18, and are not separately argued with particularity, other than to argue
that none of Kennedy, Lei, and Cohen cure the asserted deficiencies of
Ebsen and Chen (see App. Br. 10, 13, 14, 15-17).
5
Appeal2014-008451
Application 12/913,486
Claim 2
Appellants contend Chen's "'booting' does not constitute 'a
synchronization event relating to transaction activity on a bus over which the
firmware access requests are received from the host processing system,"' as
recited in claim 2. (App. Br. 11.) We disagree. One example of a
"synchronization event" given in the Specification is an "indicat[ion] that
the bus 24 is idle." (Spec. i-f 28.) We agree with the Examiner that
"[b]ooting is inherently related to bus activity." (Ans. 15.) Indeed,
rebooting will cause the bus to be idle at least momentarily during the
reboot.
We conclude Appellants' contentions do not demonstrate error in the
rejection of claim 2. Accordingly we sustain the rejections over Ebsen and
Chen of claim 2 and claim 3, which depends from claim 2 and was not
separately argued with particularity (see App. Br. 12).
DECISION
The decision of the Examiner to reject claims 1-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2013).
AFFIRMED
6