Ex Parte Padilla et al

Board of Patent Appeals and Interferences

Jun 8, 2009

11032431 (B.P.A.I. Jun. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MICHAEL K. PADILLA and WALTER KEMP
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Appeal 2008-004897
Application 11/032,431
Technology Center 2100
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Decided:1 June 8, 2009
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Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).
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Application 11/032,431

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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 8-20. Claims 1-7 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellants’ invention relates generally to the field of an information
handling system for an operating system boot. More particularly,
Appellants’ invention relates to a system and method for an information
handling system that brands a boot device with boot information. (Spec. 1).

Independent claims 8 and 14 are illustrative:
8. A method for loading an operating system on an
information handling system, the method comprising:

initiating the operating system in a first mode;

retrieving with the operating system an order of
storage devices;

storing with the operating system the order of
storage devices on at least one of storage device;

initiating the operating system in a second mode;

retrieving the order of the storage devices from the
storage device; and

applying the retrieved order of storage devices to
the operating system.

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14. A method for booting an information handling
system, the method comprising:

initiating the operating system with firmware, the
firmware associating each of one or more storage devices
with a numerical order;

retrieving the numerical order from the firmware;

storing the numerical order associated with each
storage device on that storage device; and

booting the information handling system with the
operating system by retrieving the numerical order from
each storage device and applying the retrieved numerical
order to the operating system identification of the storage
devices.

PRIOR ART
The Examiner relies upon the following references as evidence in
support of the rejections:

Sun US 6,732,264 B1 May 4, 2004
Schwartz US 2003/0084316 A1 May 1, 2003
Beelitz US 6,247,126 B1 Jun. 12, 2001
Applicant’s Admitted Prior Art (hereinafter “AAPA”).

THE REJECTIONS
1. The Examiner rejected claims 8, 10, 11, 13-15, 17, and 19 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Sun
and Schwartz.
2. The Examiner rejected claims 9, 18, and 20 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Sun, Schwartz, and
AAPA.
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3. The Examiner rejected claims 12 and 16 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Sun, Schwartz, and
Beelitz.

ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal:

Have Appellants shown the Examiner erred in finding that the
combination of Sun and Schwartz teaches or suggests retrieving
the order of the storage devices from the storage device
(independent claim 8) and retrieving the numerical order from
each storage device (independent claim 14)?

PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 419 (2007).

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence:

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THE SCHWARTZ REFERENCE
1. Schwartz teaches that “an identifier 44, such as a serial number,
password, or other type of identifying number and/or code, associated
with hard drive 16 is stored in memory 42 as an identifier 46.” (Para.
[0014]).

2. Schwartz teaches that “[d]uring execution of the power-on self-test
module 28, BIOS 26 compares identifier 46 with identifier 44 of hard
drive 16 to verify system 10 configuration. If identifiers 44 and 46
match, BIOS 26 proceeds to boot hard drive 16 and, for example, load
an operating system or other software application. If identifiers 44 and
46 do not match, BIOS 26 does not boot hard drive 16, thereby
maintaining motherboard 14 in a ‘locked’ configuration.” (Id.).

3. Schwartz teaches that “[d]uring execution of power-on self-test
module 28, processor 22 begins attempting to boot the drive storage
devices for booting an operating system. For example, during power-
on self-test module 28 executions, a list of available drive devices
coupled to motherboard 14 may be compiled. Although each drive
device may contain a different operating system each capable of
booting, generally, only the drive devices in the bootable drive list
maintained by BIOS 26 that have a default setting and are user
configurable may be selected to boot. Accordingly, system 10 will
generally attempt boot the drive devices in the order appearing on the
list; however, parameters may also be stored in BIOS 26 indicating
which drive device to boot first.” (Para. [0015]).
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4. Schwartz teaches that “[a]t step 206, identifier 44 retrieved from drive
device 15 is stored in memory 42 as identifier 46. If the current
activation is not the initial activation of power-on self-test module 28,
the method proceeds from step 202 to step 208.” (Para. [0019]).

5. Schwartz teaches that “[a]t step 208, processor 22 determines a listing
of available drive devices in accordance with power-on self-test
module 28 instructions. At step 210, processor 22 determines which
of the listed drive devices should be selected first for booting. For
example, as briefly described above, the instructions for booting the
various drive devices may comprise a particular order or may
comprise that particular drive devices be booted first. At decisional
step 212, a determination is made whether the selected drive device is
the initial drive device for an attempted booting, such as, for example,
drive device 15.” (Para. [0020]).

ANALYSIS
We decide the question of whether Appellants have shown the
Examiner erred in finding that the combination of Sun and Schwartz teaches
or suggests retrieving the order of the storage devices from the storage
device (independent claim 8) and retrieving the numerical order from each
storage device (independent claim 14).
The Examiner relies on Schwartz at paragraphs [0019-0020] and
Figure 2 (218) for teaching the limitation of retrieving the order of storage
devices from the storage device. (Ans. 4 and 8). The Appellants contend
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that Schwartz “retrieves identification information, not a numerical order for
storage devices.” (App. Br. 3, emphasis added). Based upon our review of
the record, we find the evidence before us supports the Appellants’ position.
While Schwartz teaches that an “identifier 44, such as a serial number,
password, or other type of identifying number and/or code, associated with
hard drive 16 is stored in memory 42 as an identifier 46” (FF 1), we find
Schwartz’s identifier is not retrieved from the storage device to indicate the
particular order of storage devices, as required by the language of each
independent claim on appeal.
Instead, “BIOS 26 compares identifier 46 with identifier 44 of hard
drive 16 to verify system 10 configuration. If identifiers 44 and 46 match,
BIOS 26 proceeds to boot hard drive 16 and, for example, load an operating
system or other software application. If identifiers 44 and 46 do not match,
BIOS 26 does not boot hard drive 16, thereby maintaining motherboard 14
in a ‘locked’ configuration.” (FF 2).
The Examiner’s interpretation of Schwartz appears to be premised on
Schwartz’s use of the retrieved drive identifier to reference a list containing
an order of bootable drive devices that is initially compiled during the
power-on self test (POST) (see FF 3-5). However, each of independent
claims 8 and 14 require retrieving the order of the storage devices directly
from a storage device. We find retrieving the order of the storage devices
from a storage device (as claimed) to be distinguished from merely
retrieving an identifier from a storage device that is used to reference a list
of bootable storage devices, as taught by Schwartz. (See FF 6).

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Thus, we find the portions of the Schwartz reference pointed to by the
Examiner (FF 4-5, Fig. 2) do not support the Examiner’s determination that
Schwartz teaches or suggests retrieving an order of the storage devices from
a storage device, as required by the language of each independent claim on
appeal. Moreover, we find the primary Sun reference does not remedy the
deficiencies of Schwartz.
Because we do not find support for the Examiner’s position in the
proffered combination of Sun and Schwartz, Appellants have shown the
Examiner erred. Accordingly, we reverse the Examiner’s rejection of
independent claims 8 and 14 as being unpatentable over the combination of
Sun and Schwartz. Because we have reversed the Examiner’s rejection of
each independent claim on appeal, we also reverse the Examiner’s rejections
of the dependent claims on appeal.

CONCLUSION
Based on the findings of facts and analysis above, Appellants have
established that the Examiner erred in rejecting claims 8-20 as being obvious
over the cited prior art under 35 U.S.C. §103(a).

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CISION
The Examiner’s decision rejecting claims 8-20 under 35 U.S.C.
§ 103(a) is reversed.

REVERSED

pgc

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