Ex Parte Ballai

Board of Patent Appeals and Interferences

Sep 27, 2007

10224099 (B.P.A.I. Sep. 27, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.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

Appeal 2007-2149
Application 10/224,099
Technology Center 2100
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Decided: September 27, 2007
____________

Before JOSEPH F. RUGGIERO, HOWARD B. BLANKENSHIP, and
SCOTT R. BOALICK, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1-20, the only claims pending in this
application. We have jurisdiction under 35 U.S.C. §§ 6(b), 134(a).
Appeal 2007-2149
Application 10/224,099

INTRODUCTION
The claims relate to a system and method for automatically updating a
firmware program in the non-volatile memory of a portable card (e.g., a
wireless radio card). (Abstract.) Claim 1 is illustrative:

1. A method for automatically updating a firmware program,
comprising the steps of:

(a) determining, during an initialization process of a portable card by a
software driver for the portable card, a first version of the firmware program,
the first version being currently stored in a non-volatile memory of the card,
the card being connected to a computing device;

(b) comparing the first version with a second version of the firmware
program;

(c) automatically updating the first version with the second version in
the non-volatile memory if the second version is a subsequent version of the
firmware program, wherein the software driver automatically updates the
firmware program independently of a further software application for the
portable card; and

(d) after step (c), activating the card using the second version.

The Examiner relies on the following prior art references to show
unpatentability:
Beaverton US 5,210,854 May 11, 1993
Krishan US 5,822,692 Oct. 13, 1998
Salgado US 2002/0067504 A1 Jun. 6, 2002

The rejections as presented by the Examiner are follows:
1. Claims 1-19 are rejected under 35 U.S.C § 103(a) as unpatentable
over Krishan and Salgado.
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Application 10/224,099

2. Claim 20 is rejected under 35 U.S.C § 103(a) as unpatentable over
Krishan, Salgado, and Beaverton.

OPINION
In a rejection under 35 U.S.C. § 103, the Examiner applies the
teachings of Krishan and Salgado to demonstrate prima facie obviousness of
the subject matter as a whole of instant claim 1. The Examiner finds, as set
forth in the Answer, that Krishan shows the steps of claim 1 (see, e.g.,
“Updating of Device Firmware” in columns 15 and 16 of Krishan), but does
not expressly disclose that the software driver automatically updates the
firmware program independently of a further software application for the
portable card. The Examiner concludes that, in view of Salgado’s teachings,
it would have been obvious to update the firmware program independently
of a further software application for the portable card for the purpose of
obviating or minimizing required user interaction.
Appellant submits that Salgado does not teach or suggest a method for
a software driver to update a firmware program, being “specifically”
directed to a method for updating a printer driver on a workstation. (Appeal
Br. 7.) That Salgado does not describe updating a firmware program in a
non-volatile memory of a portable card is not disputed, because Krishan is
relied upon for that teaching. However, non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. In re Merck & Co., 800
F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986) (citing In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)).
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Application 10/224,099

Appellant goes further, however, in alleging that the functionality of
drivers is “vastly different” from that of firmware. (Appeal Br. 8-10.) If the
remarks are intended to represent an argument for patentability of claim 1,
Appellant seems to answer the argument in the Reply Brief (at 4), in
acknowledging that a printer driver and firmware are both software. Both
references are directed to ensuring that a user has the latest version of
software. Appellant submits (Reply Br. 4) that drivers and firmware are
distinct in storage location and functionality. As we have indicated,
however, Krishan discloses the claimed storage location. Claim 1 does not
specify the functionality of the firmware program, but is directed to updating
of the program to ensure possession of the latest version.
Moreover, in KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739, 82
USPQ2d 1385, 1395 (2007), the Supreme Court emphasized “the need for
caution in granting a patent based on the combination of elements found in
the prior art,” and discussed circumstances in which a patent might be
determined to be obvious without an explicit application of the teaching,
suggestion, motivation test.
In particular, the Supreme Court emphasized that “the principles laid
down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11
How. 248.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham v.
John Deere Co., 383 U.S. 1, 12, 148 USPQ 459, 464 (1966) (emphasis
added)), and reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. The Court
explained:
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Application 10/224,099

When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, §103 likely bars
its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use
of prior art elements according to their established functions.” Id.
As if recognizing the weakness of the position set out in the Appeal
Brief, Appellant adds a new argument in the Reply Brief (at 3-4). Appellant
seems to argue that Salgado cannot suggest automatically updating the
firmware program independently of a further software application for the
portable card, because the reference does not describe automatically
updating the printer driver “independently of a further software application.”
Appellant neglects to point out supporting disclosure in the
Specification for the “wherein” clause of claim 1. (See, e.g., Appeal Br. 2-3,
“Summary of Claimed Subject Matter). The recitation “independently of a
further software application for the portable card” appears, by its terms, to
be met by a further software application for the portable card such as an
application that uses the portable card to communicate with another device,
perhaps days after the firmware update. The update is thus “independent” of
a further software application for the portable card.
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Appellant suggests that an “operating system” may be considered a
“further application.” (See Reply Br. 3-4.) Operating system software,
however, is normally considered distinct from “application” software; e.g., a
WINDOWS operating system as opposed to a word processing application
(WORD) that runs on the operating system.
In any event, Appellant alleges that in Salgado a further application
would have to be executed to install a new printer driver, referring to
paragraph 10 of the reference. (Reply Br. 3.) We do not find support for
Appellant’s reading of paragraph 10. Salgado describes an embodiment
where a separate upgrade or install program may upgrade and install the
driver (e.g., ¶¶ 22, 28), but also describes the material embodiment where
the automatic upgrade is performed by the driver itself (e.g., ¶¶ 22, 24). The
reference expressly teaches that the driver can install the new version
automatically, notifying the user only after the update is complete. Salgado
¶ 27; Fig. 4.
We have considered all of Appellant’s arguments in response to the
rejection of claim 1, but find none of the arguments persuasive. Because
Appellant relies on substantially similar limitations in independent claim 10,
and relies on the same arguments in response to the rejection of claim 20,
claims 2-20 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). We thus
sustain the rejection of each claim on appeal.

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CONCLUSION
The rejection of claims 1-20 under 35 U.S.C § 103(a) 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).

AFFIRMED

rwk

OLEG F. KAPLUN, ESQ.
FAY, KAPLUN & MARCIN, LLP
150 BROADWAY
SUITE 702
NEW YORK NY 10038

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