Ex Parte GillespieDownload PDFPatent Trial and Appeal BoardJun 17, 201612747828 (P.T.A.B. Jun. 17, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121747,828 06/11/2010 22879 7590 06/21/2016 HP Inc. 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Kurt D. Gillespie 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 82235786 8664 EXAMINER ZIMMERMAN, MARK K ART UNIT PAPER NUMBER 2619 NOTIFICATION DATE DELIVERY MODE 06/21/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): ipa.mail@hp.com barbl@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KURT D. GILLESPIE1 Appeal2014-008525 Application 12/747,828 Technology Center 2600 Before NATHAN A ENGELS, JAMES W. DEJMEK, and SCOTT B. HOWARD, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-20. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b ). We reverse. 1 Appellant identifies Hewlett-Packard Development Company, LP as the real party in interest. App. Br. 3. Appeal2014-008525 Application 12/747,828 STATEMENT OF THE CASE Introduction Appellant's invention is directed to a Basic Input/Output System ("BIOS") comprising a BIOS graphical setup engine. Spec. i-f 13. In a disclosed embodiment, when a BIOS setup program is initiated, the graphical setup engine may provide a visually enhanced BIOS setup by incorporating graphics (stored on a separate non-volatile memory device) into the setup displays. Spec. i-f 13. If the separately stored graphics (referred to in the Specification as "non-critical graphical setup images") are corrupt, or otherwise unavailable, the graphical setup engine will adjust the display to use simple, default images. Spec. i-fi-1 14, 18, 21, see also Figs. 2A, 2B. Claim 1 is illustrative of the subject matter on appeal and is reproduced below with the disputed limitation emphasized in italics: 1. A computer system, comprising: a first non-volatile storage device, the first non-volatile storage device comprising a Basic Input/Output System ("BIOS"), the BIOS further comprising a BIOS graphical setup engine; a second non-volatile storage device, the second non-volatile storage device comprising a setup image file containing a non-critical graphical setup image; and wherein the BIOS graphical setup engine selectively renders a basic graphical setup display omitting the non-critical image by using a set of pre-defined parameters stored in the first non-volatile storage device in place of the non-critical image if the non-critical image is not available, and renders an enhanced graphical setup display comprising the non-critical image contained in the setup image file stored in the second non-volatile storage device if the non-critical image is available. 2 Appeal2014-008525 Application 12/747,828 The Examiner's Rejections 1. Claims 1-5, 7, 11, and 12 stand rejected under 35 U.S.C. § 102(a) as anticipated by Falik et al. (US 7,318,173 Bl; Jan. 8, 2008) ("Falik"). Final Act. 6-9. 2. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Falik and Cheston et al. (US 2003/0097555 Al; May 22, 2003) ("Cheston"). Final Act. 10. 3. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Falik and Lee (US 2007/0130375 Al; June 7, 2007). Final Act. 11. 4. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Falik and Buswell et al. (US 5,918,039; June 29, 1999) ("Buswell"). Final Act. 12-13. 5. Claims 13-15 and 17-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Falik and Le et al. (US 8,209,680 Bl; June 26, 2012) ("Le"). Final Act. 13-17. 6. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Falik and Harding et al. (US 6,651,188 B2; Nov. 18, 2003). ("Harding"). Final Act. 17-18. Issues on Appeal 1. Did the Examiner err in finding Falik discloses a "BIOS further comprising a BIOS graphical setup engine," as recited in claim 1? 2. Did the Examiner err in finding the combination ofFalik and Le teaches or suggests generating a BIOS graphical setup display from a setup image file, as recited in claim 18? 3 Appeal2014-008525 Application 12/747,828 Claims 1-17 ANALYSIS2 In rejecting claim 1, the Examiner finds Falik discloses, inter alia, a BIOS further comprising a BIOS graphical setup engine. Final Act. 6 (citing Falik, col. 4, 11. 34--36, Fig. 4). The Examiner explains Falik discloses BIOS image A and BIOS image B, wherein either image is executed by the system. Final Act. 6, see also Falik, Fig. 4, BIOS image A ( 420), BIOS image B ( 422), and BIOS image selection ( 454). Additionally, the Examiner finds Falik discloses the stored BIOS image "includes extra features." Ans. 3 (citing Falik, col. 1, 11. 24--25). The Examiner further finds "the stored BIOS image related to a BIOS setup utility that [sic] has a menu- based user interface or a graphical user interface." Ans. 3. The Examiner concludes that the claimed BIOS graphical setup engine is equivalent to Falik's BIOS image selection module ( 454). Ans. 3. We do not agree with the findings as articulated by the Examiner. Falik is directed to "selecting one of a plurality of BIOS images included in a computer system." Falik, Abstract. Falik describes the BIOS image as starting up the computer, checking that computer components are operational, locating the boot program to load the operating system, and passing control to the operating system. Falik, col. 1, 11. 10-17. Falik further discloses the BIOS image is executed. See, e.g., Falik, col. 3, 11. 4-- 45. Thus, we agree with Appellant that the BIOS "image" in Falik does not 2 Throughout this Decision, we have considered the Appeal Brief filed January 13, 2014 ("App. Br."); the Reply Brief filed July 30, 2014 ("Reply Br."); the Examiner's Answer mailed on June 6, 2014 ("Ans."); and the Final Office Action ("Final Act.") mailed on September 5, 2013, from which this Appeal is taken. 4 Appeal2014-008525 Application 12/747,828 refer to graphics or a graphical setup as reflected in claim 1, but rather to an instance or copy of a program or file. App. Br. 12. For the reasons discussed supra, we are persuaded of Examiner error. Accordingly, on this record, we do not sustain the Examiner's rejection of independent claim 1. For similar reasons, we do not sustain the rejection of independent claim 12, which contains a similar limitation. Further, we do not sustain the rejections of claims 2-11 and 13-17, which depend therefrom. Claims 18-20 Claim 18 recites, inter alia, "generat[ing] a Basic Input/Output System ("BIOS") graphical setup display from a setup image file." The Examiner finds Le teaches this limitation. Final Act. 15-16 (citing Le, col. 1, 11. 66----67, col. 7, 11. 42--48, and col. 37, 11. 44--45). Appellant contends none of the cited portions of Le teach or suggest generating a BIOS graphical setup display from a setup image file. App. Br. 18. Specifically, Appellant asserts: Le col. 1, lines 66----67 teach two computers are commonly used in disk imaging (one with the disk being captured, and a second with the generated disk image). Le col. 7, lines 42--48 teach that Symantec' s Ghost Explorer application provides a graphical user interface through which a user can view files in a disk image. Le col. 37, lines 44--45 teach that BIOS setup software may provide an option that allows booting from a pre-boot execution environment. App. Br. 18. Similar to Falik, Le's use of the term "image" does not relate to a graphical image, but rather an instance or copy of a disk's contents. See Le, col. 1, 11. 63---65 ("A disk image is a file that resides on a first computer and 5 Appeal2014-008525 Application 12/747,828 represents a snapshot of a second computer's disk. Image capture is the process of creating an image file from a computer's disk."); see also col. 2, 11. 23--43. Thus, after reviewing the cited portions of Le, we concur with Appellant that Le fails to teach or suggest generating a BIOS graphical setup display from a setup image file. For the reasons discussed supra, we are persuaded of Examiner error. Accordingly, on this record, we do not sustain the Examiner's rejection of independent claim 18. Further, we do not sustain the rejection of claims 19 and 20, which depend therefrom. 3 DECISION We reverse the Examiner's decision to reject claims 1-20. REVERSED 3 In the event of further prosecution, we note claims 19 and 20 are directed to "[t]he computer-readable medium of claim 17," but claim 17 is directed to a method and does not recite a computer readable medium. Independent claim 18, however, is directed to a "non-transitory computer readable medium." Thus, we invite the Examiner to determine whether claims 19 and 20, as written, comport with the requirements of 35 U.S.C. § 112, or if further amendments are necessary. 6 Copy with citationCopy as parenthetical citation