11038379 - (D) (P.T.A.B. Apr. 8, 2013)

Ex Parte Culter

Patent Trials and Appeals BoardApr 8, 2013

11038379 - (D) (P.T.A.B. Apr. 8, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte BRADLEY G. CULTER _____________ Appeal 2011-005919 Application 11/038,379 Technology Center 2100 ______________ Before, DAVID M. KOHUT, JASON V. MORGAN, and JOHNNY A. KUMAR, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005919 Application 11/038,379 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-15 and 17-30.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse the Examiner’s rejection of these claims and enter a new ground of rejection. INVENTION The invention is directed to a method and system for partitioning a computer system into a plurality of soft partitions that each run an operating system. Abstract. Claim 1 is representative of the invention and is reproduced below: 1. A method comprising: partitioning a computer system into a plurality of soft partitions that each run an operating system; and instantiating a separate firmware instance for each of said plurality of soft partitions, wherein each of said firmware instances provides a pre-defined firmware interface for the operating system of its respective soft partition. REFERENCES Gulick US 6,314,501 B1 Nov. 6, 2001 Noel US 6,381,682 B2 Apr. 30, 2002 Zalewski US 6,542,926 B2 Apr. 1, 2003 Camble US 6,715,031 B2 Mar. 30, 2004 1 Claim 16 was previously cancelled. Appeal 2011-005919 Application 11/038,379 3 REJECTIONS AT ISSUE Claims 1-6, 14, 17, and 21-23 are rejected under 35 U.S.C. § 102(a) over Applicant’s Admitted Prior Art (“AAPA”). Ans. 4-8. Claims 7-8, 18-20, and 24 are rejected under 35 U.S.C. § 103(a) over AAPA and Zalewski. Ans. 8-10 and 14-16. Claims 9 and 13 are rejected under 35 U.S.C. § 103(a) over AAPA and Noel. Ans. 10-11. Claims 10-12 are rejected under 35 U.S.C. § 103(a) over AAPA, Noel, and Camble. Ans. 11-13. Claims 15 and 25-30 are rejected under 35 U.S.C. § 103(a) over AAPA and Gulick. Ans. 13-14 and 16-20. ISSUE2 Did the Examiner err in finding that AAPA describes “instantiating a separate firmware instance for each of said plurality of soft partitions,” as recited in claim 1? ANALYSIS Independent claim 1 requires instantiating a separate firmware instance for each of a plurality of soft partitions. Independent claims 14, 21, and 25 contain a similar limitation. Claims 2-13 are dependent upon independent claim 1; claims 15 and 17-20 are dependent upon independent claim 14; claims 22-24 are dependent upon independent claim 21; claims 26- 30 are dependent upon independent claim 25. The Examiner finds that 2 Appellant makes additional arguments with respect to claims 10-12. App. Br. 13-14; Reply Br. 7-8. We will not address the additional arguments as this issue is dispositive of the Appeal. Appeal 2011-005919 Application 11/038,379 4 Appellant’s Admitted Prior Art (AAPA) describes known soft partitioning techniques that include assigning each soft partition its own subset of hardware and own instance of an operating system. Ans. 21 (citing AAPA ¶ 8). The Examiner further finds that since each partition is assigned its own set of hardware and operating system that it is inherent that each partition has a separate firmware instance because, as shown in Figure 4 of AAPA, firmware is necessary for the hardware and the operating system to interact. Ans. 21-22. Appellant argues that the Examiner’s finding is in error since neither paragraph 8 nor Figure 4 of Appellant’s Specification precludes the multiple soft partitions from sharing the firmware interface provided by the same firmware instance. App. Br. 5-6; Reply Br. 3. We agree with Appellant. However, we find that one of ordinary skill in the art would find it obvious to combine paragraph 8 and Figure 4 of AAPA in a way such that each soft partition can include an instantiated separate firmware instance. AAPA describes a known soft partitioning process of a computer system in which each soft partition can be assigned a subset of hardware, run a separate instance of the operating system, and host a set of applications. ¶ 8. In addition, AAPA further describes a prior art system that includes a separate firmware instance between an operating system and associated hardware so that the operating system can interact with the hardware. Figure 4. We find that it would have been obvious to one of ordinary skill in the art to instantiate a separate firmware instance (Figure 4) with each partition having an assigned operating system and hardware (¶ 8) so that the hardware and operating system can interact. This is nothing more than a combination of familiar elements according to known methods that yield predictable Appeal 2011-005919 Application 11/038,379 5 results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). We designate our analysis to be a new ground of rejection of independent claims 1, 14, 21, and 25 under 35 U.S.C. § 103(a) over AAPA. Since the Patent Trial and Appeal Board is a review body rather than a place of initial examination, we have not reviewed dependent claims 2-13, 15, 17-20, 22-24, and 26-30 to the extent necessary to determine whether AAPA, either alone or in combination with one or more of the references of record, renders any of these claims obvious. We leave it to the Examiner to determine the appropriateness of any further rejections of dependent claims 2-13, 15, 17-20, 22-24, and 26-30 under 35 U.S.C. § 103(a). CONCLUSION The Examiner erred in finding that AAPA describes “instantiating a separate firmware instance for each of said plurality of soft partitions”, as recited in claim 1. SUMMARY The Examiner’s decision to reject claims 1-15 and 17-30 is reversed. We enter a new ground of rejection for claims 1, 14, 21, and 25 as being unpatentable under 35 U.S.C. § 103(a) over AAPA. TIME PERIOD This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO Appeal 2011-005919 Application 11/038,379 6 MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . 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). REVERSED 37 C.F.R. § 41.50(b) msc