Ex Parte Knopf

Board of Patent Appeals and Interferences

Apr 28, 2005

09788636 (B.P.A.I. Apr. 28, 2005)

The opinion in support of the decision being entered today
was not written for publication in a law journal and
is not binding precedent of the Board.

Paper No. 17

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte MIZUHO TADOKORO and KAZUYA TSUKIZAWA
_____________

Appeal No. 2004-0545
Application No. 09/510,569
______________

ON BRIEF
_______________

Before BARRETT, FLEMING and NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 of the final rejection of
claims 1 through 8 and 17 through 20, which constitute all the claims remaining
in the application.
Invention

The invention relates to a method to set up the hardware settings in a data
processing system. A data processing system requiring the hardware settings is
connected to a server by a network. The server performs a hardware setup

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operation and data from the hardware setup is then transferred to the data
processing system. See page 5 of appellants’ specification.
Claim 1 is representative of the invention and reproduced below:
1. A method for performing a hardware setup operation on a data
processing system, said method comprising:
storing a hardware setup program and a plurality of dynamic link
modules in a server data processing system;
coupling data processing system to said server data processing
system via a data processing system network;
in response to a request to execute said hardware setup program
by said data processing system, executing said hardware setup program
within said server data processing system;
modifying hardware configuration data within said data processing
system according to instructions generated from said execution of said
hardware setup program within said server data processing system; and
de-coupling sad data processing system from said server data
processing system after a completion of said hardware setup operation.

References

The reference relied upon by the examiner is:

Rakavy et al. (Rakavy) 6,324,644 Nov. 27, 2001
(filed Jan 19, 1999)

Rejection at Issue
Claims 1 through 8 and 17 through 20 stand rejected under 35 U.S.C.
§ 102 as being anticipated by Rakavy. Throughout the opinion we make
reference to the Briefs1 and the answer for the respective details thereof.

1Appellants filed an Appeal Brief on June 12, 2003 (certified as being mailed on June 10,
2003, in accordance with 37 C.F.R. § 1.8(a)) and appellants filed a Reply Brief on
August 14, 2003 (certified as mailed on August 11, 2003, in accordance with 37 C.F.R. §
1.8(a)).

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Opinion

We have carefully considered the subject matter on appeal, the rejection
advanced by the examiner and the evidence of anticipation relied upon by the
examiner as support for the rejection. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellants’ arguments set forth in
the briefs along with the examiner’s rationale in support of the rejection and
arguments in rebuttal set forth in the examiner’s answer.
With full consideration being given to the subject matter on appeal, the
examiner’s rejection and the arguments of appellants and the examiner, for the
reasons stated infra we will not sustain the examiner’s rejection of claims 1
through 8 and 17 through 20 under 35 U.S.C. § 102. However in accordance
with 37 CFR § 41.50(b), we enter a new grounds of rejection against claims 1
through 8 and 17 through 20, under 35 U.S.C. § 112.
Appellants argue on page 5 of the brief that ”Rakavy does not teach or
suggest the hardware setup program and the dynamic link modules are stored in
a server data processing system (which seems to be management workstation
200 in Figure 1 of Rakavy according [to] the Examiner’s characterization).” On
page 6 of the brief, appellants argue “there is no basis to the Examiner’s
assertion that the hardware setup program and dynamic link modules have been
stored in workstation 200.” Further, on page 2 of the reply brief, appellants argue
that:

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Claim 1 also recites a step of “modifying hardware configuration
data within said data processing system according to instructions
generated from said execution of said hardware setup program
within said server data processing system. “ In other words,
instructions are initially generated within the server data processing
system via an execution of the above mentioned hardware setup
program within the server data processing system, and the
instructions generated within the server data processing system are
then utilized to modify the hardware configuration data within the
data processing system.

In response to these arguments, the examiner states, on page 8 of the
answer:
Rakavy patent teaches about a loader service that is used during the
setup period. This loader service causes a workstation (200) (server
processing system) (Column 10, lines 55-60) to transfer code and data
(hardware setup program and dynamic link modules) from its location to a
RAM located on a computer (400) (data processing system) (Col. 5, lines
30-60) For this operation to have taken place, it is inherent that the code
and data (hardware setup program and dynamic modules) had to be
stored in advance on the workstation (server data processing system for
this operation to be possible.

Before we consider the art applied, we must first determine the scope of
the claim. The appellants’ arguments do not provide any guidance on how the
limitations of a “hardware setup program” and “dynamic links” are to be
interpreted. Appellants’ specification on page 2, identifies that hardware setup is
required so that a “data processing system can recognize and drive” a device,
where devices include among other things, a display. Further, on page 9 of
appellants’ specification, dynamic links are described as including functions and
subroutines that are used by the hardware setup program.
We agree with the examiner’s analogy of the loader to the claimed
hardware setup program. We find that Rakavy teaches an embodiment where a

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computer loads from a remote server, a portion of the BIOS. The portion of the
BIOS downloaded from the server to the computer is the POST code. See
column 18, lines 10-25. Rakavy also teaches that the POST code is used to
“initialize the standard system components” including video hardware. See
column 2, lines 12 through 16. We consider those portions of the POST code as
meeting the claimed dynamic links. We consider the act of transmitting the post
code from the server to the computer as meeting the claimed step of modifying
hardware configuration data. Further, we find that since the loader program is
running on the server and the POST data is downloaded from the server, the
data must necessarily be stored on the server. Accordingly, we find that Rakavy
teaches the claimed step of storing a hardware setup program and the step of
modifying hardware configuration data.
Appellants argue on page 6 of the brief that:
After the hardware setup operation has been completed, the data
processing system is physically de-coupled to the server data processing
system. Hence, Claim 1 (and similarly claims 5 and 17) recites a step of
“de-coupling said data processing system from said server data
processing system after a completion of said hardware setup operation “
(lines 13-14). Even though the word “physically” was not explicitly recited
in Claims 1, 7, and 17, the data processing system cannot be coupled to
the server data processing system via any software means without first
being physically coupled to the server data processing system; hence the
word “physically” is implied. (emphasis original)

Further on page 3 of the reply brief, appellants argue:
The term “coupling” generally means being joined together, and the term
“de-coupling” generally means being separated apart. In the context of
claim 1, the recited step of “de-coupling said data processing system from
said server data processing system” means that the data processing
system is being separated apart from the server data processing system.

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The examiner responds to these arguments on page 9 of the answer,
arguing that Rakavy teaches an electronic connection between the computer and
server. The examiner states:
The act of passing control to the CPU 110, shows that the computer (400)
is able to operate on its own and no longer need to be electronically
connected with the remote workstation (200) as indicated by the network
enhanced BIOS ceasing to function (Col 11, lines 20-30). By ceasing to
function, computer (400) is disconnected electronically from the
workstation (200) which means that it is decoupled from the network.

Further, the examiner argues that the appellants’ arguments directed to
“physically” connecting and disconnecting, are not considered, as the claim does
not contain such a limitation.
We concur with the examiner that Rakavy teaches coupling between the
computer and the server, and that the claim is not limited to physically coupling
and decoupling the computer to the server. However, we disagree with the
examiner that the act of passing control to the CPU meets the claimed step of
decoupling. We find that the plain meaning of the claim limitation of decoupling,
as argued by appellants, is “the data processing system is separated apart from
the server.”2 However, we do not construe the limitation as narrowly to only
include physical separation, but rather to be broad enough to include electrical
separation. Thus, we do not find that Rakavy teaches the claim step of

2 We note, for the reasons stated infra, appellants’ specification provides no assistance
in interpreting this limitation as it is devoid of any disclosure related to decoupling.

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decoupling as claimed in independent claim 1, 5 and 17.3 Accordingly we will not
sustain the examiner’s rejection of claims 1 through 8 and 17 through 20 under
35 U.S.C. § 102.
New grounds of rejection under accordance with 37 CFR § 41.50(b).
We find that appellants specification, as originally filed does not provide
support for the limitation of “decoupling said data processing system from said
server data processing system after a completion of a hardware setup operation”
as is claimed in each of independent claim 1, 5 and 17. Thus, we now reject
claims 1 through 8 and 17 through 20 under 35 U.S.C. § 112, first paragraph.
The written description requirement serves "to ensure that the inventor
had possession, as of the filing date of the application relied on, of the specific
subject matter later claimed by him; how the specification accomplishes this is
not material." In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA
1976). In order to meet the written description requirement, the appellant does
not have to utilize any particular form of disclosure to describe the subject matter
claimed, but "the description must clearly allow persons of ordinary skill in the art
to recognize that [he or she] invented what is claimed." In re Gosteli, 872 F.2d
1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Put another way, "the
applicant must . . . convey with reasonable clarity to those skilled in the art that,
as of the filing date sought, he or she was in possession of the invention."

3 We note the issue of whether the decoupling may be obvious in light of a secondary
reference is not before us.

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Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117
(Fed. Cir. 1991). Finally, "[p]recisely how close the original description must
come to comply with the description requirement of section 112 must be
determined on a case-by-case basis." Eiselstein v. Frank, 52 F.3d 1035, 1039,
34 USPQ2d 1467, 1470 (Fed. Cir. 1995) (quoting Vas-Cath, 935 F.2d at 1561,
19 USPQ2d at 1116).
Appellants’ originally filed specification, on pages 9 through 10 and 14
through 15, describe an operation whereby the data processing system accesses
a server data processing system through a network. We consider these sections
of the specification to provide support for the claim limitation of coupling the data
processing system and the server data processing system. However, we see no
support for the decoupling the data processing system from the server data
processing system upon completion of the hardware setup program.
The operation of the hardware setup program is depicted in the flowcharts
of appellants’ figures 4 and 5 and described on pages 15 through 17 of
appellants’ originally filed specification. The final step in the flow chart of figure
4, step S44, is described, on page 15 of appellants’ originally filed application, as
“ [t]he small program 34 executes the hardware setup program 31 on the
memory of the client data processing system 23, while storing the program itself
on the server data processing system 22 (stepS44).” The final steps in the
hardware setup flow chart of figure 5, steps S53 and S55, are described on page

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16 of appellants’ originally filed application, as “transfers control to the OS 25 of
the client data processing system 23.” We do not find that one of ordinary skill in
the art would recognize these steps as including, or necessarily anteceded by a
step of, decoupling the data processing system from the server data processing.
As stated supra we find that the scope of the decoupling limitation is “the data
processing system is separated apart from the server.” Accordingly, we now
enter a rejection of independent claims 1, 5, and 17 under the written description
requirement of 35 U.S.C. § 112, first paragraph.
Conclusion

We will not sustain the examiner’s rejection of claims 1 through 8 and 17
through 20 under 35 U.S.C. § 102 as being unpatentable over Rakavy.
In accordance with 37 CFR § 41.50(b), we have entered a new rejection of
claims 1 through 8 and 17 through 20 under 35 U.S.C. § 112, first paragraph
This decision contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CFR § 41.50(b)
provides "[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review."
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:

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(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with this

appeal may be extended under 37 CFR ' 1.136(a) (1) (iv).

Reversed
37 CFR § 41.50(b)

LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

REN/vsh

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