Ex Parte Jeansonne

Patent Trial and Appeal Board

Apr 1, 2014

11799184 (P.T.A.B. Apr. 1, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JEFFREY KEVIN JEANSONNE
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Appeal 2011-013169
Application 11/799,184
Technology Center 2400
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Before CARLA M. KRIVAK, JOHNNY A. KUMAR, and
DANIEL N. FISHMAN, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20 (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2011-013169
Application 11/799,184

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STATEMENT OF THE CASE
Appellant’s claimed invention is directed to a control system for
configuration changes of component devices through BIOS and for locking
the state of such component devices to prevent unauthorized
enabling/tampering (Spec. ¶ [0013]).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
l. A method of tamper-resistant configuration control for a
system, the method comprising:
reading a flag from a memory of an electronic device, the
flag indicating an enable/disable state of at least one component
device of the electronic device; and, in response to the flag
indicating a disabled state for the at least one component
device:
setting a register in memory to a disable state for the at
least one component device; and
locking the register.

REJECTION
The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as being
unpatentable over Kamepalli (US 6,647,434 B1, Nov. 11, 2003), in view of
Broyles (US 2004/0148499 A1, July 29, 2004). Ans. 4-12.

ISSUE AND ANALYSIS
Based on Appellant’s arguments in the Appeal Brief (App. Br. 6-9;
Reply Br. 1-3), the principal and dispositive issue as to whether the
Examiner erred in rejecting claims 1-20 turns on whether modifying
Kamepalli with the teachings of Broyles would effectively change
Kamepalli’s principle of operation.
Appeal 2011-013169
Application 11/799,184

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We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. 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.
Appellant admits in Kamepalli, various functions may be disabled
(App. Br. 8) but contends Kamepalli does not disclose disabling a device
because while “Kamepalli is directed to the configuration of a multifunction
device” and the “function of the multifunction device may be disabled, the
device itself remains enabled and operable.” App. Br. 7-8. Appellant’s also
contend “the functions of Kamepalli are simply not devices.” Reply Br. 2.
The Examiner finds (Ans. 4-5) Kamepalli discloses:
In system setup, monitor 132 displays a list of devices
(functions) implemented in multifunction device as shown in
FIG. 5. An “ON” next to the function name indicates that the
function is enabled. An “OFF” next to the function name
indicates that the function is disabled. To disable a function,
the user changes the adjacent “ON” designation to an “OFF”
designation . . . .

Kamepalli, col. 5, ll. 12-18; Fig. 5 (emphasis ours).
We agree with the Examiner’s explanation (Ans. 12), which finds
Kamepalli’s disabling meets the function of the disputed claim element
because claim 1 does not preclude such a reading. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
Next, the Examiner relies upon Broyles for teaching “a ‘write-protect
bit [which] may be enabled so that register 304 cannot be overwritten.’”
Appeal 2011-013169
Application 11/799,184

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Ans. 13 (citing Broyles, ¶ 0030). Appellant contends the Examiner’s
position for combining Kamepalli with Broyles would effectively change
Kamepalli’s principle of operation. App. Br. 8-9; Reply Br. 3. In other
words, Appellant contends the teachings of Kamepalli are not consistent
with the teachings of Broyles because:
Kamepalli provides for the user to adjust the configuration of
the multifunction device with the operating system. See
Kamepalli, Abstract, ll. 15-18; col. 5, ll. 16-18 and 62-64; col.
6, ll. 10-17. Even assuming, arguendo, that Broyles discloses
enabling a write-protect so that a register cannot be overwritten,
a modification of Kamepalli to lock the register storing the
configuration as proposed by the Examiner would clearly
change the principle of operation of the Kamepalli system.

App. Br. 9.
In response, the Examiner finds, and we agree, Kamepalli and Broyles
are properly combinable because “a person of ordinary skill in the art would
have found it obvious to lock the configuration register in response to an
administrators configuration of the multi function device to avoid
unauthorized users from making changes to the configuration register.”
Ans. 13.
The Examiner also finds:
For example, if a system administrator used Kamepalli’s
system to disable the Ethernet functionality of the multi
function device, it would be undesirable to allow a common
user to enable that particular device and without proper
authorization connect to a network. The same principle idea is
behind conventional BIOS passwords, to prevent users to
modify company resource, thus to restrict access to perform
modifications to system parameters. Likewise, a person of
ordinary skill in the art would find a similar motivation and
lock the configuration register of Kamepalli.
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Application 11/799,184

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Ans. 14.
We agree with the Examiner because Appellant’s citation to specific
sections of Kamepalli and Broyles amounts to challenging the references
individually which is not convincing of error in the Examiner's
position. That is, all of the features of the structure in the secondary
reference need not be bodily incorporated into the primary reference, but
consideration should be given to what the combined teachings, knowledge of
one of ordinary skill in the art, and the nature of the problem to be solved as
a whole would have suggested to those of ordinary skill in the art. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
In that regard, the Supreme Court has indicated:
[It is error to] assum[e] that a person of ordinary skill
attempting to solve a problem will be led only to those elements
of prior art designed to solve the same problem. . . . Common
sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (citation omitted).
Furthermore, the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984). As such, we find Kamepalli would be adjusted to
accommodate teachings from Broyles by one of ordinary skill in the art. As
correctly cited by the Examiner, one of ordinary skill would incorporate the
concepts of Broyles into Kamepalli without incorporating every feature of
the Broyles principle into Kamepalli.
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Application 11/799,184

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For the above reasons, the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claim 1, 8, and 18, and claims 2-7, 9-13, and 15-20, not
separately argued by Appellant (App. Br. 9), is sustained.

DECISION
The Examiner’s decision rejecting claims 1-20 is affirmed.
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

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