Ex Parte Hobson et al

Patent Trial and Appeal Board

Apr 7, 2014

11689055 (P.T.A.B. Apr. 7, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LOUIS B. HOBSON, WAEL M. IBRAHIM, and
MANUEL NOVOA
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Appeal 2011-0133381
Application 11/689,055
Technology Center 2100
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Before JEAN R. HOMERE, CARLA M. KRIVAK, and
DANIEL N. FISHMAN, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Hewlett-Packard Development Co., LP. (App
Br. 4.)
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-22. App. Br. 6. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.
Appellants’ Invention
Appellants invented a computer system (100) having a Basic Input/
Output System (BIOS-130) for scrubbing the system memory (108) during a
boot process or a shutdown process. In particular, upon a user selecting from
a user interface (138) in the BIOS (130) the option to initiate a scrub
operation during a shutdown process, the operating system (OS-142) of the
computer sets a memory override bit causing the BIOS to selectively clear
the content of the memory system (108) during the shutdown process as
requested. Spec. ¶¶ [0011], [0020]; Fig. 1.
Representative Claim
Independent claim 1 represents the invention. It reads as follows:
1. A computer system, comprising:
a processor;
system memory coupled to the processor; and
a Basic Input/Output System (BIOS) in communication
with the processor; wherein the BIOS selectively scrubs the
system memory during a shutdown process of the computer
system.
Prior Art Relied Upon
Robinson US 5,544,356 Aug. 6, 1996
Grawrock US 2003/0196100 A1 Oct. 16, 2003
Wu US 2005/0144432 A1 Jun. 30, 2005
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Rejections on Appeal
Claims 1-6, and 10-13 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Grawrock.
Claims 7, 8, and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Grawrock and Robinson.
Claims 9, 14, 15, 17-19, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Grawrock and Wu.
Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Grawrock, Robinson, and Wu.

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 11-23, and the Reply Brief, pages 2-8.2
Regarding thr rejection of claim 1, Appellants argue Grawrock does
not describe a BIOS that selectively scrubs a system memory during a
shutdown process of the computer system. App. Br. 11-13; Reply Br. 2-6.
According to Appellants, while Grawrock discloses an SCLEAN module
that erases the content of a memory system, the SCLEAN module is not part
of the BIOS system. App. Br. 11-13; Reply Br. 2-5. Therefore, Appellants

2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed March 18, 2011), the Reply Brief (filed
August 8, 2011), and the Answer (mailed June 8, 2011) for the respective
details. We have considered in this decision only those arguments
Appellants actually raised in the Briefs. Any other arguments which
Appellants could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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argue, the SCLEAN module (not the BIOS) performs the memory
scrubbing. Further, Appellants argue Grawrock discloses performing the
memory scrubbing in response to (but not during) a shutdown process.
Consequently, Appellants submit Grawrock’s SCLEAN module does not
describe the disputed limitations. Id.
In response, the Examiner finds because the BIOS utilizes the
SCLEAN module as a tool to perform a scrubbing process initiated by the
BIOS module, the SCLEAN and BIOS modules work together as a single
unit (firmware-112) to perform the scrubbing process. Ans. 15-16. Further,
the Examiner finds Grawrock’s disclosure of performing the memory
scrubbing in response to a shutdown event describes that the scrubbing is
performed during the shutdown event. Ans. 18.
Based upon our review of the record before us, we find no error in the
Examiner’s anticipation rejection regarding claim 1. In particular, Grawrock
discloses a firmware containing a BIOS module and an SCLEAN module,
whereupon executing the BIOS module, the SCLEAN module is also
executed to erase confidential materials from the memory system. Grawrock
¶ [0031]. Further, Grawrock discloses the BIOS/SCLEAN execution can
take place during system startup (¶ [0031]) or in response to a system
shutdown event (¶¶ [0042], [0043]). We agree with the Examiner that
because the SCLEAN operation is tied to the execution of the BIOS within
the same firmware, the SCLEAN execution is imputed to the BIOS. We
further agree with the Examiner that Grawrock’s disclosure of executing the
BIOS/SCLEAN modules in response to a shutdown event can be reasonably
construed as such execution occurring during the shutdown event. We are
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therefore satisfied the cited disclosures of Grawrock describe the disputed
limitations. It follows that Appellants have not shown error in the
Examiner’s rejection of claim 1.
Regarding the rejection of claim 2, Appellants argue Grawrock does
not describe an operating system (OS) selectively setting a memory override
(MOR) bit to cause the BIOS to scrub the memory system. App. Br.14. We
agree with Appellants. While Grawrock discloses the BIOS provides low
level routines initiating the execution of the OS (¶ [0031]), and the
computing system sets a flag of the memory locked store (¶ [0048]), the OS
does not set a MOR to cause the BIOS to scrub the memory. We therefore
do not sustain the Examiner’s rejection of claim 2, as well as the rejections
of claims 3, 10-17, 19, and 22, which recite commensurate limitations.
Regarding the rejection of claim 5, Appellants argue Grawrock does
not describe an I/O bridge trapping a shutdown request to cause the BIOS to
scrub the system memory. App. Br. 15-16. We agree with Appellants. While
Grawrock discloses the BIOS/SCLEAN, upon being executed, triggers a
system reset to erase the system memory, we find no disclosure in Grawrock
indicating an I/O bridge trapping the BIOS/SCLEAN execution command to
perform the memory scrubbing. We therefore do not sustain the Examiner’s
rejection of claim 5, as well as the rejection of claim 6, which recites
commensurate limitations.
Regarding the rejection of claim 7, Appellants argue the combination
of Grawrock and Robinson does not teach or suggest a memory scrub
indicator. According to Appellants, while Robinson discloses using a light-
emitting diode (LED) indicator in a flash memory, the indicator is not taught
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for use in a memory scrub. App. Br. 19-20. We do not agree with
Appellants. We find only routine skill would be required to modify
Grawrock’s system by integrating therein Robinson’s LED memory
indicator to thereby provide a status indication regarding the memory scrub
operation. Therefore, because Grawrock and Robinson disclose prior art
elements that perform their ordinary functions to predictably result in a
system having an indicator to monitor a memory scrubbing operation
performed by a BIOS/SCLEAN module, the cited references are properly
combined to teach the disputed limitations. We therefore sustain the
Examiner’s rejection of claim 7, as well as the rejection of claim 20, which
recites commensurate limitations.
Regarding the rejection of claim 9, Appellants argue the combination
of Grawrock and Wu does not teach or suggest a user interface for setting
memory scrub options. According to Appellants, while Wu discloses a user
interface for a BIOS, the interface does not provide the memory scrubbing
options. App. Br. 20. We do not agree with Appellants. We find modifying
Grawrock’s disclosure of executing a BIOS/SCLEAN module at startup or
during system shutdown, with Wu’s interface, would predictably provide
Grawrock’s system with the options of selecting the BIOS/SCLEAN
execution at startup or during system shutdown. We therefore sustain the
Examiner’s rejection of claims 9 and 18.
Regarding the rejections of claims 4, 8, and 21, because Appellants
have not presented separate patentability arguments therefore, claims 4, 8,
and 21 fall with claims 1 and 18. See 37 C.F.R. § 41.37(c)(1)(vii).

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DECISION
We affirm the Examiner’s rejections of claims 1, 4, 7-9, 18, 20, and
21 as set forth above. However, we reverse the Examiner’s rejections of
claims 2, 3, 5, 6, 10-17, 19, and 22.
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

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