Ex Parte Cepulis

Patent Trial and Appeal Board

Dec 26, 2012

11514010 (P.T.A.B. Dec. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DARREN J. CEPULIS
____________

Appeal 2010-007726
Application 11/514,010
Technology Center 2100
____________

Before ELENI MANTIS MERCADER, JEFFREY S. SMITH, and
ANDREW CALDWELL, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007726
Application 11/514,010

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Representative Claim
1. A firmware modification system comprising:

a nonvolatile memory containing an archive of one or more
firmware components;

a component abstraction store comprising information for
locating the one or more firmware components stored in the archive;
and

a modification utility configured to modify a less-than-whole
portion of the archive based on a modification request, comprising:

copying the archive from the nonvolatile memory to a
writeable memory;

identifying a location of a firmware component in the archive to
be modified based on information stored in the component abstraction
store;
modifying the firmware component in the copy of the
archive in writeable memory; and

replacing the archive in the nonvolatile memory with the
modified archive.

Prior Art
Kaneshima US 5,737,585 Apr. 7, 1998
Brannock US 2003/0066062 A1 Apr. 3, 2003
Ogura US 2004/0148379 A1 Jul. 29, 2004
Wilson US 2006/0031664 A1 Feb. 9, 2006
Appeal 2010-007726
Application 11/514,010

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Cottrell US 2006/0143600 A1 Jun. 29, 2006

Examiner’s Rejections
Claims 1-7 and 12-15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kaneshima and Wilson.
Claims 8 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaneshima, Wilson, and Ogura.
Claims 9-11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kaneshima, Wilson, and Cottrell.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaneshima, Wilson, and Brannock.
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaneshima, Wilson, and Cottrell.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaneshima, Wilson, Cottrell, and Brannock.

ANALYSIS
Section 103 rejection of claims 1-7 and 12-15
Appellant contends that the combination of Kaneshima and Wilson
does not teach modifying a less than whole portion of an archive of firmware
components that has been copied into a writeable memory. App. Br. 10;
Reply Br. 5-6. In particular, Appellant contends that Kaneshima teaches that
firmware is updated as an undivided whole. Id. However, the Examiner
finds that Wilson teaches modifying a less than whole portion of an archive.
Ans. 4.
Appeal 2010-007726
Application 11/514,010

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Appellant contends that Wilson does not teach the archive of firmware
components is copied to nonvolatile memory and then modifying a firmware
component “in the copy of the archive” as recited in claim 1. According to
Appellant, Wilson only copies a portion of the archive to nonvolatile
memory. App. Br. 11-12; Reply Br. 5-8. However, the Examiner finds that
Kaneshima teaches copying the entire archive. Ans. 4.
Appellant has failed to provide persuasive evidence or argument to
rebut the Examiner’s findings. We sustain the rejection of claim 1 and
dependent claims 2-7 under 35 U.S.C. § 103. Appellant does not present
arguments for separate patentability of claims 12-15, but instead relies on
those presented for claim 1 which we find unpersuasive.
Appellant presents arguments for the separate patentability of claims
3, 4, 13, and 14 for the first time on pages 8-9 of the Reply Brief. Appellant
could have presented these arguments in the Appeal Brief, such that we
would have had benefit of the Examiner’s evaluation of the arguments in the
responsive Answer. Appellant does not explain what good cause there
might be to consider the new arguments. Appellant’s new arguments are
thus untimely and have, accordingly, not been considered. See Ex parte
Borden, 93 USPQ2d 1473 (BPAI 2010) (informative).
We sustain the rejection of claims 1-7 and 12-15 under 35 U.S.C. §
103.

Section 103 rejection of claims 8 and 16
Appellant does not present arguments for separate patentability of
claims 8 and 16, but instead relies on those presented for claim 1 (App. Br.
Appeal 2010-007726
Application 11/514,010

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14) which we find unpersuasive. We sustain the rejection of claims 8 and 16
under 35 U.S.C. § 103.

Section 103 rejection of claims 9-11
Appellant does not present arguments for separate patentability of
claims 9-11, but instead relies on those presented for claim 1 (App. Br. 14)
which we find unpersuasive. We sustain the rejection of claims 9-11 under
35 U.S.C. § 103.

Section 103 rejection of claim 17
Appellant contends that the combination of Kaneshima, Wilson, and
Brannock does not teach “receiving information about firmware components
that are to be updated together and firmware components that are not to be
removed from the archive” as recited in claim 17. App. Br. 15; Reply Br.
10-11.
The “information about firmware components” recited in claim 17
does not affect any steps or structural limitations recited in the method of
claim 17. The “information about firmware components” is merely a non-
functional description of data. The scope of claim 17 encompasses
“receiving [data].” Therefore, the “information about firmware
components” that is received in claim 17 does not distinguish the claim from
the prior art in terms of patentability. See In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983).
See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008)
(precedential).
We sustain the rejection of claim 17 under 35 U.S.C. § 103.
Appeal 2010-007726
Application 11/514,010

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Section 103 rejection of claims 18 and 19
Appellant presents arguments for the patentability of claims 18 and 19
(App. Br. 15-16; Reply Br. 11-12) similar to those presented for claim 1,
which we find unpersuasive. We sustain the rejection of claims 18 and 19
under 35 U.S.C. § 103.

Section 103 rejection of claim 20
Appellant presents arguments for the patentability of claim 20 (App.
Br. 16) similar to those presented for claims 1 and 17, which we find
unpersuasive. We sustain the rejection of claim 20 under 35 U.S.C. § 103.

DECISION
The rejection of claims 1-7 and 12-15 under 35 U.S.C. § 103(a) as
being unpatentable over Kaneshima and Wilson is affirmed.
The rejection of claims 8 and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Kaneshima, Wilson, and Ogura is affirmed.
The rejection of claims 9-11 under 35 U.S.C. § 103(a) as being
unpatentable over Kaneshima, Wilson, and Cottrell is affirmed.
The rejection of claim 17 under 35 U.S.C. § 103(a) as being
unpatentable over Kaneshima, Wilson, and Brannock is affirmed.
The rejection of claims 18 and 19 under 35 U.S.C. § 103(a) as being
unpatentable over Kaneshima, Wilson, and Cottrell is affirmed.
The rejection of claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Kaneshima, Wilson, Cottrell, and Brannock is affirmed.
Appeal 2010-007726
Application 11/514,010

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

AFFIRMED

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