Ex Parte Culter

Board of Patent Appeals and Interferences

Dec 22, 2009

10685287 (B.P.A.I. Dec. 22, 2009)

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.
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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.

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(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”).

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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
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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
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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
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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
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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.

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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

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