Ex Parte Almeida

Board of Patent Appeals and Interferences

Jun 27, 2007

10044432 (B.P.A.I. Jun. 27, 2007)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JASON ROBERT ALMEIDA
__________

Appeal 2007-0984
Application 10/044,432
Technology Center 2100
__________

Decided: June 27, 2007
__________

Before JAMES D. THOMAS, JOSEPH F. RUGGIERO, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2007-0984
Application 10/044,432

This appeal involves claims 1 through 24, all claims pending in the
application. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
As best representative of the disclosed and claimed invention,
representative independent claim 1 is reproduced below:
1. A computer program product comprising processor executable
instructions for programming a non-volatile storage element in a data
processing system, the instructions being stored on a computer readable
medium, comprising:

computer code means for encrypting a digital signature using a first
encryption key;

computer code means for passing the encrypted signature to a kernel
routine;

computer code means, responsive to successfully decrypting the
encrypted signature using a second encryption key, for transitioning the data
processing system from a protected-mode to a real-mode; and

real-mode computer code means for flash programming the non-
volatile storage element.

The following references are relied on by the Examiner:

Hughes US 5,968,174 Oct. 19, 1999
Bright US 6,141,756 Oct. 31, 2000
Cuccia US 6,151,676 Nov. 21, 2000

Claims 1, 2, 4, 5, 9, 10, 12, 13, 17, 18, 20, and 21 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Bright. All remaining claims on
appeal stand rejected under 35 U.S.C. § 103. As evidence of obviousness, as
to claims 3, 11, and 19, the Examiner relies upon Bright in view of Hughes
in a second stated rejection. In a third stated rejection, the Examiner relies
upon Bright in view of Cuccia as to claims 6, 7, 14, 15, 22, and 23. Lastly,
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Application 10/044,432

in a fourth stated rejection, the Examiner also relies upon Bright in view of
Cuccia as to claims 8, 16, and 24.
Rather than repeat the positions of the Appellant and the Examiner,
reference is made to the Brief and Reply Brief for Appellant’s positions, and
to the Answer for the Examiner’s positions.
OPINION
We reverse the Examiner’s initial rejection under § 102 and,
consequently, we reverse the separate rejections under § 103 based upon
additional prior art. On the other hand, we set forth our own rejections of
claims 1 through 24 on appeal within the provisions of 37 C.F.R. § 41.50(b).
Noting first that Appellant has presented arguments in the Brief only
as to the rejection under 35 U.S.C. § 102 and has presented no arguments as
to the separately stated rejections under 35 U.S.C. § 103, we are persuaded
by Appellant’s reasoning to reverse the rejection under § 102 for the reasons
generally set forth at pages 10 and 11 of the principal Brief on appeal. Here,
Appellant asserts, and we agree with Appellant’s understanding of Bright,
that this reference does not disclose either expressly or inherently anything
regarding transitioning a system from a so-called protected mode to a so-
called real mode; that the terms “real mode” and “protected mode” are not
used in Bright and that the terms “kernel” or “kernel routine” are not taught
or suggested either expressively or impliedly to the artisan in Bright.
The discussion in the paragraph bridging pages 10 and 11 of the
principal Brief on appeal makes reference to the prior art discussion at the
top of Specification page 2 relating to the use of the well known prior art
terms to “protected mode” and “real mode.” On the other hand, Bright’s
discussion in the initial paragraphs with respect to prior art processors, as
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Appeal 2007-0984
Application 10/044,432

well as the specific type of processor identified in Figure 1 as element 101 at
the bottom of column 2 of Bright, makes no reference to prior art structures
or processors that the artisan would consider well known in the art to have
embodied the quoted terms as well as the term “kernel.” Moreover, no
operating system associated with the identified general and specific
teachings of prior art processors has been indicated to the reader in Bright.
Therefore, it cannot be fairly stated within 35 U.S.C. § 102 utilizing the
Examiner’s inherency argument that the disputed terms, all of which were
noted earlier, as recited in each independent claim on appeal, are necessarily
present or implicit from an artisan’s perspective within Bright. Since an
understanding from an artisan’s perspective is not specifically taught as to
these terms in Bright as well as inherently and necessarily part thereof, the
rejection of each independent claim under 35 U.S.C. § 102 must be reversed.
Likewise, the respective rejection of the dependent claims set forth in the
initially stated rejection must also be reversed as well the separately stated
rejections utilizing additional prior art under 35 U.S.C. § 103.
On the other hand, we introduce our own rejection of all claims on
appeal within 35 U.S.C. § 103 through the provisions accorded us within 37
C.F.R. § 41.50(b). We simply add to the Examiner’s reasoning of each of
the above-noted separately stated rejections of the claims on appeal the
starting point being the admitted prior art beginning at Specification page 1,
line 26 through at least the discussion at Specification page 2, line 23. The
discussion here makes clear to us and the artisan that such operating systems
that utilize kernel level privileged accessibilities and the ability to transition
selectively from protected modes to real modes were known in the art. What
the prior art recognizes as deficient was that any non-privileged user may
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Appeal 2007-0984
Application 10/044,432

execute the transition codes necessary within the kernel to introduce
modified programming to control it and the operating system as a whole.
Bright, from an artisan’s perspective, clearly would have provided the
needed teachings to overcome the known deficiencies of the admitted prior
art. The extensive teachings of the so-called bootstrap mode in Bright
clearly would have suggested to the artisan the ability to encrypt and
selectively decrypt new/modified internal operating instructions within a
processor. An externally introducible modification of program code from
external device 103 in Figure 1, where the showing in Figure 2 clearly
indicates to the artisan the ability to encrypt such code, is decrypted with
element 107 by using the key 113 within the processor 101 in this figure.
This decryption capability is shown within Figure 3. Moreover, the ability
to use both public and private keys, respectively, is taught at columns 3 and
4 of this reference. Additionally, the ability to effect internal code and
hardware functions restrictively through only authorized users is taught at
the bottom of column 4, and summarized in the discussion at column 5, lines
14 through 24 as advantageous approaches to modifying existing coding
structures in prior art processors such as those embodying operating systems
including kernel functions consistent with those of the admitted prior art at
Specification pages 1 and 2. Therefore, the identified claims set forth in the
Examiner’s initially stated rejection, including independent claims 1, 9, and
17 would have been obvious to the artisan in light of the collective teachings
of Appellant’s admitted prior art at Specification pages 1 and 2 in view of
Bright. The examiner’s second through fourth stated rejections utilizing
respectively additional references to Hughes and Cuccia are hereby modified
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Application 10/044,432

consistent with this reasoning and the reliance upon Appellant’s admitted
prior art.
In summary, we have reversed the Examiner’s rejections of certain
claims on appeal under 35 U.S.C. §§ 102 and 103. On the other hand, we
have introduced our own rejections of claims 1 through 24 on appeal
utilizing Appellant’s admitted prior art within the discussion of the prior art
at Specification pages 1 and 2 as filed by respectively modifying each of the
Examiner’s stated rejections.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 C.F.R.
§ 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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Appeal 2007-0984
Application 10/044,432

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED; 37 C.F.R. § 41.50(b)

tdl

IBM (RPS-BLF)
c/o Biggers & Ohanian, LLP
P.O. Box 1469
Austin, TX 78767-1469

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