Ex Parte Bolen et al

Patent Trial and Appeal Board

Sep 28, 2016

12955493 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/955,493 11/29/2010 Austin Bolen
34456 7590 09/30/2016
LARSON NEWMAN, LLP
8200 N. MOP AC EXPY.
SUITE 280
AUSTIN, TX 78759
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.
DC-18458 7595
EXAMINER
HICKS, MICHAEL J
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
docketing@larsonnewman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte AUSTIN BOLEN, RICHARD CHAN, and
SAMER EL HAJ MAHMOUD
Appeal2015-007815
Application 12/955,493
Technology Center 2100
Before BRUCE R. WINSOR, JEREMY J. CURCURI, and
IRVINE. BRANCH, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--4, 6-9, and 11-22, which constitute all the
claims pending in this application. Final Act. 1. Claims 5 and 10 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Appeal2015-007815
Application 12/955,493
REFERENCES AND REJECTIONS ON APPEAL
Claims 1--4, 6-9, and 11-22 are rejected under 35 U.S.C. § 103(a) as
obvious over Harmer et al. (US 2011/00297641 Al; Feb. 3, 2011)
("Harmer") and Silky et al. (US 7,447,802 B2; Nov. 4, 2008) ("Silky").
Ans. 2-13.
STATEMENT OF THE CASE
Appellants' invention relates to "managing configuration of
information handling systems." Spec. i-f2; see also Fig. 6.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative and reproduced below:
1. A computer implemented method comprising:
identifying a first question at a Unified Extensible
Firmware Interface (UEFI) forms package, the first question
associated with configuration of a first attribute of an object at
an information handling system and representing an
opportunity to associate the first attribute with a first value;
identifying a second question at the UEFI forms package,
the second question associated with configuration of a second
attribute of the object and representing an opportunity to
associate the second attribute with a second value;
determining that relevance of the second question
depends on the first value; and
associating a first dependency modifier with the second
question based on the determining, the associating comprising
incorporating the first dependency modifier within a UEFI
Human Interface Infrastructure (HII) configuration language
string, the first dependency modifier identifying the first
question, the first value, and an action keyword, the action
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Application 12/955,493
keyword identifying a first action to be associated with a
presentation of the second question.
ANALYSIS
The Examiner finds Harmer and Silky teach all limitations of claim 1.
Ans. 2-5.
Appellants present the following principal arguments:
1. "Claim 1 recites incorporating a dependency modifier with a
UEFI Configuration Language String. Harmer does not disclose a UEFI HII
Configuration Language String, which is a specific type of string in the
UEFI standard." App. Br. 7. 1
11. "Silky discloses storing a record of a user's interactions at a
previous web page within the page source of a subsequent web page." App.
Br. 7.
Neither Harmer nor Silky, alone or in combination, discloses
associating a first dependency modifier with the second question
based on the determining, the associating comprising
incorporating the first dependency modifier within a Unified
Extensible Firmware Interface (UEFI) Human Interface
Infrastructure (HII) configuration language string, the first
dependency modifier identifying the first question, the first
value, and an action keyword, the action keyword identifying a
first action to be associated with a presentation of the second
question, as recited in claims 1 and 18.
App. Br. 7-8; see also Reply Br. 1-3.
1 References to the "Appeal Brief' or "App. Br." are to the Corrected Brief
in Support of Appeal filed July 31, 2014.
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Application 12/955,493
We so not see any error in the contested findings of the Examiner.
Nor do we see any error in the legal conclusion of obviousness of the
Examiner.
The Examiner finds Harmer's UEFI BIOS teaches the recited
identifying a first question and identifying a second question. Ans. 2-3
(citing Harmer i-fi-f 16-18, 20-22, 25, and 35-36). We adopt these
uncontested findings as our own.
The Examiner finds Silky's sending a new page with state information
(based on previous information entered by the user) stored in hidden form
fields teaches the recited "determining that relevance of the second question
depends on the first value." Ans. 4 (citing Silky col. 5, 11. 31--46; col. 6, 11.
43-55). We adopt this uncontested finding as our own.
Regarding Appellants' argument (i), this argument does not show any
error in the Examiner's finding that Harmer teaches a UEFI HII
Configuration Language String because Harmer (i-f 22 (emphasis added))
discloses:
The VFR File Data files 154, 254 represent the text based VFR
data files that are edited and created to define BIOS setup screens
and contents of these setup screens. This may include the titles,
sub-titles, strings, fields and Variable Services 276 VarStore
definitions as defined in the VFRIHII and UEFI specs.
In addition to these teachings in Harmer, Appellants admit that the
UEFI specification is prior art. See Spec i15 ("For example, the Unified
Extensible Firmware Interface (UEFI) specification defines a collection of
procedures and protocols in an attempt to standardize the interface and
interoperability of devices that together make up an information handling
system."); see also App. Br. 7 ("UEFI HII Configuration Language String,
which is a specific type of string in the UEFI standard."); see also Ans. 14
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("Paragraph 35 of Harmer clearly states that the system described by Harmer
'would allow the UEFI drivers that ne[ e ]d access to the HII database [270]
to get setup strings and prompts along with a mapping of system
configuration data through Property Services.'").
Regarding Appellants' argument (ii) and the recited
associating a first dependency modifier with the second question
based on the determining, the associating comprising
incorporating the first dependency modifier within a UEFI
Human Interface Infrastructure (HII) configuration language
string, the first dependency modifier identifying the first
question, the first value, and an action keyword, the action
keyword identifying a first action to be associated with a
presentation of the second question[,]
we agree with the Examiner that, collectively, Harmer and Silky teach these
limitations. See Ans. 4--5 (citing Silky col. 5, 11. 31--46; col. 6, 11. 23-55).
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test 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) (citations omitted).
Appellants' argument (ii) does not show any error in the Examiner's
finding because Appellants argue Silky individually, where the Examiner
relied on the combined teachings of the references.
Here, Harmer teaches a UEFI Human Interface Infrastructure (HII)
configuration language string. See Harmer, i-f 22. Silky teaches sending a
new page with state information (based on previous information entered by
the user) stored in hidden form fields. See Silky col. 5, 11. 31--46; col. 6, 11.
23-55).
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Put another way, Silky teaches associating a first dependency modifier
with the second question based on the determining (Silky's sent new page
depends on information entered by the user in previous pages), the
associating comprising incorporating the first dependency modifier within a
string (Silky' s state information is stored in hidden fields in the new page),
the first dependency modifier identifying the first question, the first value,
and an action keyword, the action keyword identifying a first action to be
associated with a presentation of the second question (Silky's state
information depends on information entered by the user in previous pages
and affects the new page sent).
When this teaching from Silky is applied to Harmer, given Harmer's
teaching of a UEFI Human Interface Infrastructure (HII) configuration
language string, Harmer's UEFI Human Interface Infrastructure (HII)
configuration language string implements Silky's technique with a
dependency modifier identifying the first question, the first value, and an
action keyword, the action keyword identifying a first action to be associated
with a presentation of the second question, in accordance with the UEFI
specification, and as claimed. See Ans. 15 ("Silky clearly discloses
determining to display or present a second question based on the answer to a
first. Although Silky does not operation within the bounds ofUEFI
configuration, Examiner notes that Silky is not cited to disclose such aspects
of the invention.").
We, therefore, sustain the Examiner's rejection of claim 1, as well as
claims 2--4, 6-9, 11-13, 18-20, and 22, which are not separately argued with
particularity.
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Regarding independent claim 14, Appellants present the same
principal arguments as presented for claim 1, arguing that Harmer does not
disclose UEFI configuration language strings. See App. Br. 9-10.
For the same reasons discussed above with respect to claim 1,
Appellants' arguments do not show any error in the Examiner's rejection of
claim 14.
We, therefore, sustain the Examiner's rejection of claim 14, as well as
claims 15-17 and 21, which are not separately argued with particularity.
DECISION
The Examiner's decision rejecting claims 1--4, 6-9, and 11-22 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 )(iv).
AFFIRMED
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