Ex Parte CulterDownload PDFBoard of Patent Appeals and InterferencesDec 22, 200910685287 (B.P.A.I. Dec. 22, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte BRADLEY G. CULTER ____________________ Appeal 2009-005146 Application 10/685,2871 Technology Center 2100 ____________________ Decided: December 23, 2009 ____________________ Before JAY P. LUCAS, JOHN A. JEFFERY, and STEPHEN C. SIU, Administrative Patent Judges. LUCAS, Administrative Patent Judge. DECISION ON APPEAL 1 Application filed October 14, 2003. Appellant claims the benefit under 35 U.S.C. § 119 of provisional applications 60/483,670 and 60/483,885, both filed 06/30/2003. The real party in interest is Hewlett Packard Development Co., LP. Appeal 2009-005146 Application 10/685,287 STATEMENT OF THE CASE Appellant appeals from a final rejection of claims 1-34 under authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). We affirm the rejections. Appellant’s invention relates to a method and system for changing control of a processor from being under the control of a computer’s main operating system to being under the control of firmware. In the words of Appellant: Embodiments of the invention allow the existing system to handle undiscovered problems through the execution of a function(s) in the firmware with a borrowed processor. Thus problems, e.g. a design defect, that would have required a new or modified OS function and corresponding interface can be addressed in firmware. Moreover, embodiments of the invention may provide a standards-compliant system that minimizes OS development costs and may avoid significant architectural changes to ACPI. Embodiments of the invention may preserve the safety of the OS and may preserve the sovereignty of the OS over runtime resource management. Embodiments of the invention may define at least one device specific Notify command parameter(s), thus avoiding using firmware interface extensions that would require time- consuming political and technical activities in their implementation, as well as avoiding the development of a 0s- specific kernel driver(s). Embodiments of the invention may use existing (and tested) firmware that already contains functionality to program necessary chipset elements. Embodiments of the invention may permit corrections to be made without having to redesign the hardware, e.g. chipset hardware, along with the consequential program delay. Embodiments of the invention may minimally impact the OS, and can be unilaterally obsoleted by a system developer. 2 Appeal 2009-005146 Application 10/685,287 Embodiments of the invention may decouple the evolution of the OS and hardware, thus new systems can be developed from modifications in the OS and/or the hardware. This simplifies development of new systems and reduces their costs. This avoids the costly (and time consuming) political and developmental meetings between implementation teams on each side of the hardware/OS interface which would be required in many alternative solution concepts (e.g. new SAL procedures, new ACPI language semantics, new instruction set semantics, etc.). Decoupling product evolution from political process enables competitive value differentiation while still employing standard interfaces. Moreover, by remaining 100% standard (every box is identical), then no value-differentiation is obtainable. Embodiments of the invention may allow firmware to borrow a processor with the permission of the OS, rather than stealing a processor without informing the OS by using a PMI event, and thus avoids the commensurate risks of causing an OS failure. Embodiments of the invention can operate in uniprocessor systems as well as multiprocessor systems. Embodiments of the invention can operate with a standards-compatible HotPlug sequence. Thus, the operating system may safely execute core firmware to perform reprogramming of the hardware within an ACPI-standard, collaborative HotPlug sequence to add or remove cells or other system boards (e.g. 110 chassis), without changing the firmware architecture or the hardware architecture, without stealing a processor, and without having to develop a great deal of code. . . . . One embodiment of the invention is a method for changing control of a processor that is in an active state under the control of an operating system to a borrowed state wherein the processor is under control of firmware, comprising sending a request for a change in control to the operating system, deciding, by the operating system, whether to grant the request, placing the processor in a transitional state that is different from the active state, if the request is granted, and sending, by the operating system, an interrupt signal to move the processor from the transitional state into the borrowed state. 3 Appeal 2009-005146 Application 10/685,287 (Spec 4-5, ¶ [0014]; 21). Claim 1 is exemplary: 1. A method for changing control of a processor that is in an active state under the control of an operating system to a borrowed state wherein the processor is under control of firmware, comprising: sending a request for a change in control to the operating system; deciding, by the operating system, whether to grant the request; placing the processor in a transitional state that is different from the active state, if the request is granted; and sending, by the operating system, an interrupt signal to move the processor from the transitional state into the borrowed state. The prior art relied upon by the Examiner in rejecting the claims on appeal is: O’Shea US 2004/0128568 A1 Jul. 01, 2004 (filed on Dec. 31, 2002) Compaq Computer Corp., Advanced Configuration and Power Interface Specification, Revision 2.0b, October 11, 2002 (hereinafter “ACPI”). Intel Corp., ItantiumTM Processor Family System Abstraction Layer Specification, July 2001 (hereinafter “SAL”). 4 Appeal 2009-005146 Application 10/685,287 REJECTIONS The Examiner rejects the claims as follows: R1: Claims 1, 2-6, 8, 10-12, 14-20, 23-26 and 28-34 stand rejected under 35 U.S.C. § 102(e) for being anticipated by O’Shea. R2: Claims 7, 9, 21 and 22 stand rejected under 35 U.S.C. § 103(a) for being obvious over O’Shea in view of ACPI. R3: Claims 13 and 27 stand rejected under 35 U.S.C. § 103(a) for being obvious over O’Shea in view of SAL. Groups of Claims: The claims will be discussed in the order of the rejections. Appellant contends that the claimed subject matter is not anticipated by O’Shea, or rendered obvious by O’Shea in combination with ACPI or SAL, for failure of the references to teach key limitations of the claims. The Examiner contends that each of the claims is properly rejected. Rather than repeat the arguments of Appellant or the Examiner, we make reference to the Briefs and the Answer for their respective details. Only those arguments actually made by Appellant have been considered in this opinion. Arguments that Appellant could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. ISSUE The issue is whether Appellant has shown that the Examiner erred in rejecting the claims under 35 U.S.C. § 102(e) and 35 U.S.C. § 103(a). The issue turns on whether the computer code that decides to transfer control of 5 Appeal 2009-005146 Application 10/685,287 the processor from the operating system to the firmware is part of the operating system as claimed. FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence. 1. Appellant has invented a method and system for firmware to control a computer’s processor, and when done give control of the processor back to the computer’s operating system (O/S) (Spec. 4, ¶ [0013]). There are many reasons a user may have the firmware borrow the processor, such as development of architectural changes to the computer, or to test modifications of the operating system (Spec. 4-5, ¶ [0014]). A request is sent to the O/S, and upon the granting of that request the O/S releases control of the requested processor or processors to code embodied in firmware, placing the processor in a transitional ready-to-borrow state (Spec. 5-6, ¶ [0015]; 6, ¶ [0018]). The O/S then sends an interrupt to move the processor to the borrowed state, where it is under control of the firmware code (Spec. 6, ¶ [0018]). The firmware, after an indeterminate time, places the processor into a “ready to return state”, and the O/S then returns the processor to the active state under its control (Spec. 7, ¶ [0020]). 2. The O’Shea reference teaches the halting of execution of programming by an O/S of a computer to enable independent firmware code to operate the computer system (¶ [0014]). It also teaches the use of an interrupt signal to initiate the transfer to executing the code residing on the firmware storage (¶ [0038], l. 13). Before the transition to running on the 6 Appeal 2009-005146 Application 10/685,287 firmware code, various preparatory steps are performed while in the transitional state (¶ [0042], ¶ [0043]). PRINCIPLES OF LAW Appellants have the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection [under § 103] by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). “In reviewing the [E]xaminer’s decision on appeal, the Board must necessarily weigh all of the evidence and argument.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In rejecting claims under 35 U.S.C. § 102, “[a] single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted). “Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999) ANALYSIS From our review of the administrative record, we find that the Examiner has presented a prima facie case for the rejections of Appellant’s 7 Appeal 2009-005146 Application 10/685,287 claims under 35 U.S.C. §§ 102 and 103. The prima facie case is presented on pages 3 to 17 of the Examiner’s Answer. In opposition, Appellant presents a number of arguments. Arguments with respect to the rejection of claims 1, 2 to 6, 8, 10 to 12, 14 to 20, 23 to 26 and 28 to 34 under 35 U.S.C. § 102(e) [R1] The Examiner has rejected the noted claims for being anticipated by the O’Shea reference. In response, the Appellant first argues that “nothing in O’Shea teaches an operating system making a decision on whether to grant a request for a change in control.” (App. Br. 6, middle). “Again, there is no teaching of the operating system making these decisions; rather the decision is being made based on a state of the operating system. It appears that the ‘usurping code’ makes the decision base on its monitoring of the operating system’s activities.” (Id.) O’Shea uses the power management system’s interrupt capabilities to effect the transfer of processor control from the operating system to the firmware code (¶ [0043]). However, as the Examiner makes clear in his response to Appellant’s arguments, that power management code is taught as being part of the operating system (Ans. 18, middle). Thus the claim limitation, when fairly interpreted, is met by the O’Shea teachings. Appellant further argues that “there is a large technical difference between ‘usurping’ control in O’Shea, and ‘borrowing’ control of the processor as discussed in the present invention.” (App. Br. 7, middle). Representative claim 1 defines the limitation “a borrowed state” as one “wherein the processor is under control of firmware.” (Claim 1, preamble). That control of the processor is clearly demonstrated in the 8 Appeal 2009-005146 Application 10/685,287 O’Shea reference (¶ [0014], ll. 1-6). Appellant’s arguments concerning permission to take control or the processor being stolen away are simply not reflected in the claim language (App. Br. 7, bottom). We adopt and endorse the Examiner’s position in this regard and find the Appellant’s arguments not convincing of error (Ans. 20). Appellant’s arguments concerning the other claims rejected under this rejection [R1] (Claims 15-20, 23-26, and 28-30, 31-32, 33-34) are based on the reasoning discussed above (App. Br. 8-10). For the reasons stated above, we do not find them supportive of error in the rejection. Arguments with respect to the rejections of claims 7, 9, 21 and 22, and 13 and 27 under 35 U.S.C. § 103(a) [R2, R3] The Examiner has rejected claims 7, 9, 21 and 22 for being obvious over O’Shea and ACPI. Appellant’s arguments are wholly based on the reasoning stated above for rejection [R1] under 35 U.S.C. § 102(e). As stated above, we do not find error in the rejection. The Examiner has rejected claims 13 and 27 for being obvious over O’Shea and SAL. Again, Appellant’s arguments are wholly based on the reasoning stated above for rejection [R1] under 35 U.S.C. § 102(e). As stated above, we do not find error in the rejection. CONCLUSIONS OF LAW Based on the findings of facts and analysis above, we conclude that the Examiner erred in rejecting claims 1-34. 9 Appeal 2009-005146 Application 10/685,287 DECISION The Examiner’s rejections [R1], [R2], and [R3] of claims 1-34 are 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)(1)(iv). AFFIRMED peb HEWLETT-PACKARD COMPANY INTELLECTUAL PROPERTY ADMINISTRATION 3404 E. 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