Ex Parte Dunstan

Board of Patent Appeals and Interferences

Aug 19, 2011

10644432 (B.P.A.I. Aug. 19, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/644,432 08/19/2003 Robert A. Dunstan 110349-133958 6990
25943 7590 08/19/2011
Schwabe Williamson & Wyatt
PACWEST CENTER, SUITE 1900
1211 SW FIFTH AVENUE
PORTLAND, OR 97204
EXAMINER
BONZO, BRYCE P
ART UNIT PAPER NUMBER
2113
MAIL DATE DELIVERY MODE
08/19/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ROBERT A. DUNSTAN
________________

Appeal 2009-010011
Application 10/644,432
Technology Center 2100
________________

Before ERIC S. FRAHM, JASON V. MORGAN, and BRUCE R. WINSOR,
Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-010011
Application 10/644,432

2

STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 – 4 and 6 – 35.
1
We have jurisdiction under 35 U.S.C.
§ 6(b).
Exemplary Claim
1. In an apparatus, a method of operation comprising:
in response to an AC failure condition of the apparatus, supplying
power from a backup power source to the apparatus for at least a time
period;
additionally initiating a suspend process to place the apparatus in a
suspended to memory state, to be sustained by the supplied backup power;
and
intervening and preserving a persistent copy of an operational state of
the apparatus, before completing the suspend process and placing the
apparatus in the suspended to memory state, sustained by the supplied
backup power.
(App. Br. 20; Claims App’x).
Rejections and Appellant’s Contentions
Appellant contends that the Examiner erred in rejecting claims 1, 8,
14, 21, 28, 32, and 34 under 35 U.S.C. § 102(e) as being anticipated by
Westerinen (US 2004/0088589 A1).
2

1
Appellant explicitly elects not to appeal the rejections of claims 11 – 13, 24
– 27, 30, and 31 (App. Br. 2). Appellant therefore waives arguments
challenging the Examiner’s rejections of these claims. See 37 C.F.R.
§ 41.37(c)(1)(vii); see also Ex parte Ghuman, 88 USPQ2d 1478 (BPAI
2008) (precedential). The Examiner maintains the rejection of these claims
(Ans. 17 – 19, 21 – 24, and 24 – 26). Accordingly, we pro forma affirm the
Examiner’s rejections of these claims.
Appeal 2009-010011
Application 10/644,432

3
Appellant contends that the Examiner erred in rejecting claim 2 under
35 U.S.C. § 103(a) as being unpatentable over Westerinen and Hsu (US
6,618,813 B1).
3

ISSUES
1. Is Westerinen’s hibernation state a suspended to memory state, as
recited in claims 1, 8, 14, 21, 28, 32, and 34?
2. Does Westerinen disclose intervening and preserving a persistent
copy of an operational state of an apparatus before completing a suspend
process, as recited in claim 1?
3. Does Westerinen disclose transferring control to an input/output
system (BIOS) of an apparatus, as recited in claim 4?
4. Does Westerinen disclose a basic I/O system (BIOS) to intervene
and save a persistent copy of an operational state of a system, as recited in
claim 14?
5. Does Westerinen disclose monitoring for re-application of
alternating current (AC) to an apparatus while the apparatus is in a
suspended to memory state maintained by a backup power source, as recited
in claim 8?

2
Appellant does not argue with specificity for separate patentability of
claims 5 – 7, 9, 10, 15 – 20, 22, 23, 29, 33, and 35.
3
The Examiner fails to cite to Hsu in rejecting claim 3 (Ans. 15 – 17), even
though claim 3 depends on claim 2 (Claims App’x 20) and the Examiner
relies on Hsu in rejecting claim 2 (Ans. 14 – 15). Appellant does not contend
that the Examiner’s oversight constitutes reversible error, nor does Appellant
otherwise argue with specificity for separate patentability of claim 3. As
such, we hold the Examiner’s oversight harmless.
Appeal 2009-010011
Application 10/644,432

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6. Does Westerinen disclose a controller that causes a BIOS to initiate
a resume process on re-application of AC to the system, as recited in claim
21?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
Arguments that Appellant could have made in the Appeal Brief but did not
raise until filing the Reply Brief are deemed untimely and therefore waived.
See In re Borden, 93 USPQ2d 1473, 1473 – 74 (BPAI 2010) (informative).
We disagree with Appellant’s conclusions. We adopt as our own (1)
the findings and reasons set forth by the Examiner in the action from which
this appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief. We concur
with the conclusions reached by the Examiner.
(1) Is Westerinen’s hibernation state a suspended to memory state, as
recited in claims 1, 8, 14, 21, 28, 32, and 34?
Claim 1 recites “initiating a suspend process to place the apparatus in
a suspended to memory state, to be sustained by the supplied backup power”
(Claims App’x 20). Claims 8, 14, 21, 28, 32, and 34 also recite a suspended
to memory state. We do not agree with Appellant that “the hibernation state
of Westerinen is not such a state” (Reply Br. 2). Westerinen discloses that
the hibernation state is “a persistable off state in which the state data are
persistently stored (e.g., in a non-volatile memory such as the hard drive)”
(¶ [0024]) (emphasis added). As such, this state in Westerinen is one in
which the apparatus is suspended to memory. Furthermore, Westerinen
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Application 10/644,432

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discloses that the data is persistently stored (i.e., the suspended to memory
state is entered) “before the battery power is disconnected” (id.). As such,
Westerinen discloses a suspended to memory state (where state data has
been persistently stored) that is sustained (before) by a supplied backup
power (battery power is disconnected).
Accordingly, with respect to this issue we sustain the Examiner’s
rejection of claims 1, 8, 14, 21, 28, 32, and 34, and dependent claims 2 – 4,
6, 7, 9 – 13, 15 – 20, 22 – 27, 29 – 31, 33, and 35.
(2) Does Westerinen disclose intervening and preserving a persistent copy of
an operational state of an apparatus before completing a suspend process,
as recited in claim 1?
We do not agree with Appellant that Westerinen fails to disclose the
claimed intervening and preserving before completing a suspend process
(App. Br. 8). Westerinen’s suspend process, discussed above, is complete
when the battery power can be disconnected. The battery power is not
disconnected until after “the state data are persistently stored” (¶ [0024]). As
such, Westerinen’s intervening and preserving of a persistent copy of an
operational state of an apparatus takes place before completing a suspend
process (i.e., before the battery power can be disconnected).
Accordingly, with respect to this issue we sustain the Examiner’s
rejection of claim 1 and dependent claims 2 – 7.
(3) Does Westerinen disclose transferring control to an input/output system
(BIOS) of an apparatus, as recited in claim 4?
We do not agree with Appellant that Westerinen’s disclosure is
limited to a “BIOS accepting requests from the operating system and being
programmed to be part of the mechanism to preserve state data” (App. Br.
10). Westerinen discloses a system BIOS that notifies the operating system
Appeal 2009-010011
Application 10/644,432

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of a critical energy state, which is configured to enter the hibernation state in
response to receiving the critical battery alarm signal (¶ [0028]). Thus, the
BIOS itself controls the apparatus (i.e., through its notification regarding the
critical energy state), as recited in claim 4.
Accordingly, with respect to this issue we sustain the Examiner’s
rejection of claim 4.
(4) Does Westerinen disclose a basic I/O system (BIOS) to intervene and
save a persistent copy of an operational state of a system, as recited in claim
14?
As discussed above, we do not agree with Appellant that Westerinen’s
disclosure is limited to a “BIOS accepting requests from the operating
system and being programmed to be part of the mechanism to preserve state
data” (App. Br. 14). Accordingly, with respect to this issue we sustain the
Examiner’s rejection of claim 14 and dependent claims 15 – 20.
(5) Does Westerinen disclose monitoring for re-application of alternating
current (AC) to an apparatus while the apparatus is in a suspended to
memory state maintained by a backup power source, as recited in claim 8?
We do not agree with Appellant that Westerinen fails to disclose the
recitations of claim 8 (App. Br. 10 – 11). As discussed above, Westerinen
discloses a suspended to memory state that is sustained by a backup power.
Westerinen further discloses a voltage detection circuit that detects the
presence of AC power (¶ [0026]). This voltage detection circuit is part of a
switch-over circuit, which connects a charger to a battery when a power
supply receives adequate AC power input. As such, we agree with the
Examiner that Westerinen’s recharge circuit continuously (i.e., including
when the apparatus is in a suspended to memory state) monitors for re-
application of alternating current (Ans. 27).
Appeal 2009-010011
Application 10/644,432

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Accordingly, with respect to this issue we sustain the Examiner’s
rejection of claim 8 and dependent claims 9 and 10.
(6) Does Westerinen disclose a controller that causes a BIOS to initiate a
resume process on re-application of AC to the system, as recited in claim
21?
We do not agree with Appellant that Westerinen’s disclosures are
limited to causing “the operating system to initiate the resume process and
only after re-application of AC power and a user pressing the on button
twice” (App. Br. 14). Westerinen discloses that after AC power returns the
power management controller waits for the AC power to be steady for a pre-
selected time period (¶ [0034]). This wait is part of a resume process
because later the power management controller can awaken the system from
its hibernation state (id.).
Accordingly, with respect to this issue we sustain the Examiner’s
rejection of claim 21 and dependent claims 22 and 23.

CONCLUSIONS OF LAW
The Examiner has demonstrated that claims 1 – 4 and 6 – 35 are
unpatentable because:
1. Westerinen’s hibernation state is a suspended to memory state, as
recited in claims 1, 8, 14, 21, 28, 32, and 34;
2. Westerinen discloses intervening and preserving a persistent copy
of an operational state of an apparatus before completing a suspend process,
as recited in claim 1;
3. Westerinen discloses transferring control to an input/output system
(BIOS) of an apparatus, as recited in claim 4;
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Application 10/644,432

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4. Westerinen discloses a basic I/O system (BIOS) to intervene and
save a persistent copy of an operational state of a system, as recited in claim
14;
5. Westerinen discloses monitoring for re-application of alternating
current (AC) to an apparatus while the apparatus is in a suspended to
memory state maintained by a backup power source, as recited in claim 8;
and
6. Westerinen discloses a controller that causes a BIOS to initiate a
resume process on re-application of AC to the system, as recited in claim 21.

DECISION
We affirm the Examiner’s decisions rejecting claims 1 – 4 and 6 – 35.
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

ELD