Ex Parte Desselle et al

Patent Trial and Appeal Board

Feb 28, 2013

11058341 (P.T.A.B. Feb. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte B. DALVIS DESSELLE and GREGORY P. ZIARNIK
____________

Appeal 2010-007028
Application 11/058,341
Technology Center 2400
____________

Before SCOTT R. BOALICK, BARBARA A. BENOIT, and
TRENTON A. WARD, Administrative Patent Judges.

BENOIT, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-
part.

Appeal 2010-007028
Application 11/058,341

2
STATEMENT OF THE CASE
Appellants’ invention relates to controlling operating system access to
configuration settings for a computer. See generally Abstract; Spec. 1:4-6.
Claims 1 and 21 are illustrative and read as follows, with key disputed
limitations emphasized:
1. A method of operating a computer, comprising:
a) assigning one or more operating system level access control
parameters, wherein the one or more parameters control access by the
operating system to all or a portion of one or more basic input/output system
(“BIOS”) configuration settings;
b) receiving an operating system level request to access all or a
portion of the one or more BIOS configuration settings; and
c) authorizing the operating system level request to access all or a
portion of the one or more BIOS configuration settings based upon the one
or more parameters[.]
21. A method of controlling operating system access to one or more
BIOS configuration settings, comprising:
providing a managed object format (MOF) file having content
dependent upon an operating system access control parameter,
wherein the MOF file is empty if the operating system access control
parameter indicates operating system access is disabled, and
wherein the MOF file defines methods for accessing the one or more
BIOS configuration settings if the operating system access control
parameter indicates operating system access is not disabled.
The Examiner relies on the following as evidence of unpatentability:
Ishii US 5,835,761 Nov. 10, 1998
Nakao US 2005/0257272 A1 Nov. 17, 2005
(filed Oct. 18, 2004)
Microsoft Corp., Windows Instrumentation: WMI and ACPI (2001),
available at http://msdn.microsoft.com/en-
us/library/windows/hardware/gg463463.aspx.
Appeal 2010-007028
Application 11/058,341

3
The Rejections
1. The Examiner rejected claims 1, 2, 5, 7, 8, and 17-20 under 35
U.S.C. § 102(b) as anticipated by Ishii. Ans. 3-6.
2. The Examiner rejected claims 21 and 22 under 35 U.S.C. § 102(b)
as anticipated by Microsoft. Ans. 6-7.
3. The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Ishii and Microsoft. Ans. 7-9.
4. The Examiner rejected claims 6 and 9-16 under 35 U.S.C. § 103(a)
as unpatentable over Ishii and Nakao. Ans. 10-17.

ANTICIPATION REJECTION BY ISHII
The Examiner finds that Ishii discloses all of the limitations of
illustrative claim 1. Ans. 3-4. Ishii discloses techniques for updating a
BIOS program while the operating system is in operation – that is, without
interrupting or stopping the operation of the system. Ishii, Abstract. The
Examiner equates Ishii’s BIOS update flag 50 to the recited operating
system level access control parameters. Ans. 3 (citing col. 11, l. 50–col. 12,
l. 5; col. 12, l. 52–col. 13, l. 7), 18.
In challenging the Examiner’s finding, Appellants contend that their
Specification defines the term “operating system level access control
parameters” so as to preclude the Examiner’s interpretation. App. Br. 11-13;
Reply Br. 2-4. Appellants contend the term “access” means “authorization”
or “access rights” and the recited “operating system level access control
parameters” are parameters that determine the degree of control that a user
may exercise over the BIOS configuration from the operation system. App.
Br. 12. For support of their interpretation, Appellants point to “one
Appeal 2010-007028
Application 11/058,341

4
embodiment of a process for controlling operating system access rights” in
their Specification where “[t]he value of the parameter limits operating
system access to alter or modify other configuration settings or parameters
through the BIOS.” See App. Br. 12 (citing Spec. 12:18-19); Spec. 12:13-
14; see also Reply Br. 2-3. Appellants also point to an embodiment of a
configuration settings display in which the parameter value of NO limits the
operating system to read-only access of the nonvolatile memory storing the
configuration settings, whereas a parameter value of YES provides the
operating system with read and write access. App. Br. 12 (citing Spec. 13:3-
4, 8-9); see also Reply Br. 2-3.
We are not persuaded that such example embodiments of how
operating system level access control parameters may be used require the
recited operating system level access control parameters to determine a
degree of control a user may exercise over the BIOS configuration from the
operation system, as Appellants argue (App. Br. 12; Reply Br. 3). The plain
language of claim 1 does not mention a user or degree of control. Nor, for
that matter, do the examples from the Specification relied on by Appellants.
Claim terms are properly construed to include limitations not
otherwise inherent in the term when the Specification “clearly set[s] forth a
definition of the disputed claim term.” CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Doing so is appropriate
because Appellants have the opportunity to amend the claims to obtain more
precise coverage. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). Here, claim 1 recites “one or more operating system
level access control parameters, wherein the one or more parameters control
access by the operating system to all or a portion of one or more [BIOS]
Appeal 2010-007028
Application 11/058,341

5
configuration settings.” Operating system level access control parameters,
then, control access by the operating system to all or a portion of one or
more BIOS configuration settings.
Ishii’s BIOS update flag satisfies the operating system level access
control parameters limitation, as the Examiner finds (Ans. 3, 18). There is
no dispute that Ishii’s BIOS update flag serves as an indication to the
processor that a new BIOS configuration is waiting to be loaded into the
BIOS memory. App. Br. 12; Ans. 18-19; see also Ishii, col. 13, ll. 1-7. Nor
is there a dispute that, when the BIOS update flag so indicates, the BIOS
program update is performed. App. Br. 11 (citing Ishii, col. 13, ll. 3-7). We
agree with the Examiner that Ishii discloses that “the BIOS update flag
controls the access of the information processing system to the BIOS” in that
the flag indicates whether the BIOS program will be rewritten. Ans. 19. As
such, Ishii’s BIOS update flag is an operating system level access control
parameter that controls access by the operating system to all or a portion of
one or more BIOS configuration settings, as recited by claim 1. In reciting
“assigning one or more operating system level access control parameters,”
claim 1 only requires one operating system level access control parameter.
Updating the BIOS program based on an indication of the BIOS update flag
is the epitome of controlling access to all of the BIOS configuration settings.
Appellants’ arguments that Ishii does not disclose the recited
“operating system level access control parameters” because Ishii does not
disclose denying a request to update the BIOS configuration (App. Br. 11),
does not limit a user’s ability to change the BIOS configuration from an
operating system level (App. Br. 12), or has a delay between the time the
Appeal 2010-007028
Application 11/058,341

6
update is requested and the time the update is implemented (App. Br. 11) are
unavailing because they are not commensurate with the scope of claim 1.
We therefore sustain the rejection of independent claim 1,
independent claim 17, and claims 2, 5, 7, 8, and 18-20, which were not
separately argued with particularity.

ANTICIPATION REJECTION BY MICROSOFT
The Examiner finds that Microsoft discloses all of the limitations of
independent claim 21. Ans. 6-7. As explained by the Examiner, Microsoft
discloses a MOF file which can be in the BIOS (citing page 1, line 35) and
data item qualifiers “read” and “write,” which provide indicators to
determine if any particular data item of the MOF file may be read or written
by the operating system (citing page 6, lines 8-9). Ans. 20. The Examiner
equates the read and write data item qualifiers to the recited operating
system level access control parameters. Ans. 6-7, 20-21. For the limitations
“wherein the MOF file is empty if the operating system access control
parameter indicates operating system access is disabled” and “wherein the
MOF file defines methods for accessing the one or more BIOS configuration
settings if the operating system access control parameter indicates operating
system access is not disabled,” the Examiner relies on Microsoft’s disclosure
of sample code. Ans. 7 (indicating for each limitation “pages 7-12; ASL
sample code: return value after initiating and calling Devcie(WMI1) [sic]
and Method(WQAB,1)” (emphasis omitted)).
Appellants argue, among other things, that Microsoft’s sample code is
merely intended to provide a generic example of what an event or method
Appeal 2010-007028
Application 11/058,341

7
might look like and does not disclose the recited limitations under § 102.
App. Br. 15 (citing Microsoft at 7).
We agree with Appellants. Under § 102, Microsoft’s disclosure falls
short. To be sure, Microsoft discloses a MOF file and data item qualifiers
“read” and “write,” which provide indicators to determine if any particular
data item of the MOF file may be read or written by the operating system, as
the Examiner finds. Ans. 6-7, 20-21. The Examiner, however, does not
squarely address how Microsoft’s sample code satisfies the limitations
“wherein the MOF file is empty if the operating system access control
parameter indicates operating system access is disabled” or “wherein the
MOF file defines methods for accessing the one or more BIOS configuration
settings if the operating system access control parameter indicates operating
system access is not disabled” recited by claim 21. Accordingly, we are
persuaded of error in the Examiner’s finding that Microsoft’s disclosure
discloses these limitations.
Accordingly, based on the record before us, we cannot sustain the
Examiner’s rejection of claim 21, which recites
providing a managed object format (MOF) file having
content dependent upon an operating system access control
parameter,
wherein the MOF file is empty if the operating system
access control parameter indicates operating system access is
disabled, and
wherein the MOF file defines methods for accessing the
one or more BIOS configuration settings if the operating system
access control parameter indicates operating system access is
not disabled.
To the extent that these limitations would have been obvious over
Microsoft, or obvious over Microsoft and Ishii, however, are questions that
Appeal 2010-007028
Application 11/058,341

8
are not before us, and we will not speculate in that regard here in the first
instance on appeal.
We therefore are persuaded that the Examiner erred in rejecting under
§ 102 independent claim 21 and dependent claim 22 for similar reasons.

THE OBVIOUSNESS REJECTION OVER ISHII AND MICROSOFT
For the rejection of claims 3 and 4, each of which depend directly or
indirectly from independent claim 1, Appellants refer to the previous
arguments regarding claim 1 and contend that Microsoft does not remedy the
purported deficiency of Ishii regarding claim 1. App. Br. 16. The issues
before us, then, are the same as those in connection with claim 1, discussed
above. We are not persuaded for the reasons discussed with regard to claim
1. Based on the previous explanation, we need not address whether
Microsoft would remedy any purported deficiency of Ishii. Accordingly,
Appellants have not persuaded us of error in the rejection of claims 3 and 4.

THE OBVIOUSNESS REJECTION OVER ISHII AND NAKAO
Claims 6 and 9-13
Each of claims 6 and 9-13 depend directly from independent claim 1.
Appellants refer to the previous arguments regarding claim 1 and contend
that Nakao does not remedy the purported deficiency of Ishii regarding
claim 1. App. Br. 17-19. In particular, Appellants argue that Nakao does
not disclose limiting operating system level access to the BIOS
configuration or operating system level access control parameters, recited in
claim 1. The Examiner relies on Ishii for disclosing operating system level
access control parameters (Ans. 3-4, 10-14), and therefore Appellants’
Appeal 2010-007028
Application 11/058,341

9
arguments concerning Nakao are not persuasive. The issues before us are
the same as those in connection with claim 1, discussed above. Accordingly,
Appellants have not persuaded us of error in the rejection of claims 6 and 9-
13 for the reasons discussed with respect to claim 1.
Claims 14-16
Independent claim 14 recites “assigning one or more operating system
access control parameters to the one or more BIOS configuration
settings. . .wherein access to all or a portion of the one or more BIOS
configuration settings is limited in accordance with the one or more assigned
operating system access control parameters.” In challenging the Examiner’s
rejection of independent claim 14, Appellants refer to their previous,
unpersuasive arguments regarding claim 1 in arguing that Ishii does not
disclose operating system level access control parameters. App. Br. 20
(emphasis added). Based on Ishii’s purported failure to disclose operating
system level access control parameters, Appellants also contend that Ishii
also does not disclose “assigning one or more operating system access
control parameters to one or more BIOS configuration settings,” as recited in
claim 14. Id. The issues before us are the same as those in connection with
claim 1, discussed above. We are not persuaded for the reasons discussed
with respect to claim 1.
Appellants also argue that Nakao does not remedy Ishii’s purported
failure to disclose operating system access control parameters. Id. Based on
the previous explanation, we need not address whether Nakao cures any
purported deficiency of Ishii. Accordingly, Appellants have not persuaded
us of error in the rejection of independent claims 14 and dependent claims
15 and 16.
Appeal 2010-007028
Application 11/058,341

10

CONCLUSION
Under § 102, the Examiner did not err in rejecting claims 1, 2, 5, 7, 8,
and 17-20 but erred in rejecting claims 21 and 22. Under § 103, the
Examiner did not err in rejecting claims 3, 4, 6, and 9-16.

ORDER
The Examiner’s decision rejecting claims 1-22 is affirmed-in-part.
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-IN-PART

babc