Ex Parte Madina et al

Patent Trial and Appeal Board

Jun 21, 2016

11583272 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111583,272 10/18/2006
22879 7590 06/23/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Shab H. Madina
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.
82225832 2859
EXAMINER
KYLE, TAMARA TESLOVICH
ART UNIT PAPER NUMBER
2453
NOTIFICATION DATE DELIVERY MODE
06/23/2016 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 SHAB H. MADINA, JAMES L. MONDSHINE,
JENNIFER E. RIOS, and V ALIUDDIN Y. ALI
Appeal2014-004992
Application 11/583,272
Technology Center 2400
Before JOHN A. JEFFERY, STEVEN D.A. McCARTHY, and KRISTEN
L. DROESCH, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants' invention manages trusted platform modules (TPMs). In
response to detecting an unavailable state setting, a computing system's
basic input and output system (BIOS) reports to the operating system that
the TPM is not present, despite the TPM residing on the computing system.
By so hiding the TPM, the computing system can be used in areas with
Appeal2014-004992
Application 11/583,272
restrictions on TPMs. See generally Abstract; Spec. iii! 1, 9. Claim 1 is
illustrative:
1. A trusted platform module (TPM) management system,
compnsmg:
a computing system having a basic input/output system (BIOS),
a TPM and an operating system, the BIOS configured to, in
response to detecting an unavailable state setting for the TPM,
report to the operating system a lack of presence of the TPM on
the computing system even though the TPM physically resides on
the computing system, wherein the unavailable state setting is set
in the BIOS during manufacturing of the computing system and is
not changeable by a user and is not changeable by an
administrator after being set during the manufacturing.
THE REJECTIONS
The Examiner rejected claims 1-3, 5-12, and 14--20 under 35 U.S.C.
§ 103(a) as unpatentable over Carr (US 7,681,043 Bl; Mar. 16, 2010) and
Tarkkala (US 2006/0242428 Al; Oct. 26, 2006). Final Act. 4--12. 1
The Examiner rejected claims 4 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Carr, Tarkkala, and Buer (US 2004/0019789 Al; Jan. 29,
2004). Final Act. 12-14.
THE OBVIOUSNESS REJECTION OVER CARR AND TARKKALA
The Examiner finds that Carr's system controls access to integrated
features (components) based on setting mode control bits, where the system
includes a BIOS and one-time programmable bits representing component
1 Throughout this opinion, we refer to (1) the Final Rejection mailed March
14, 2013 ("Final Act."); (2) the Appeal Brief filed September 16, 2013
("App. Br."); (3) the Examiner's Answer mailed November 21, 2013
("Ans."); and (4) the Reply Brief filed January 21, 2014 ("Reply Br.").
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Application 11/583,272
availability. Final Act. 4-5; Ans. 4-5. According to the Examiner, when
Carr's system sets a component's representative bit to indicate that a
component is unavailable, the device believes the component is absent
regardless of its availability, and signals that absence to the operating system
at startup to hide the component's presence. Ans. 5. The Examiner adds
that Carr's mode control bits can be programmed only once during
manufacture, and are, therefore, unchangeable by users and administrators.
Final Act. 5; Ans. 6. Although the Examiner acknowledges that Carr does
not teach explicitly a TPM and an operating system, the Examiner cites
Tarkkala for teaching these features in concluding that the claimed subject
matter would have been obvious. Final Act. 5---6; Ans. 5.
Appellants argue that Carr does not disclose a computing system with
a BIOS, TPM, and an operating system, let alone a BIOS that reports a
TPM's lack of presence to the operating system as claimed. App. Br. 7-8;
Reply Br. 2-3. Appellants add that Tarkkala teaches away from the recited
unchangeable TPM state setting because the TPM can be activated or
deactivated via owner authorization or by an operator physically present at
the platform. App. Br. 6-7; Reply Br. 3--4.
ISSUES
(1) Under§ 103, has the Examiner erred in rejecting claim 1 by
finding that Carr and Tarkkala collectively would have taught or suggested a
BIOS configured to report to an operating system a TPM's lack of presence
on a computing system responsive to detecting an unavailable state setting
for the TPM despite the TPM residing on the computing system, where the
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Application 11/583,272
unavailable state setting is set in the BIOS during computing system
manufacture and is unchangeable by a user and administrator?
(2) Does Tarkkala teach away from the recited unchangeable TPM
state setting?
ANALYSIS
We begin by noting a minor difference in the position articulated in
the Examiner's rejection as compared with the Answer. In the rejection, the
Examiner finds that Carr discloses a computing system with a BIOS, but
acknowledges that Carr does not teach explicitly an operating system, and
cites Tarkkala for this explicit teaching. Final Act. 5-6. Despite not
teaching an operating system expressly, the Examiner nonetheless finds that
Carr's device has an operating system that receives a signal indicating that a
particular component is absent based on the state of an associated one-time
programmable bit. See Ans. 5 ("By setting a component's representative bit
to indicate 'unavailable,' regardless of whether the feature is in fact
available or not, the device believes the component to be lacking and signals
to the operating system at startup its absence in order to hide its presence.")
(emphasis added).
Despite this difference, we see no error in the Examiner's findings, at
least to the extent that Carr reasonably suggests that the device 100 in Figure
1 can be a computing system with an operating system, at least as an obvious
variation. Although Carr's device can be a set top box, that implementation
is merely exemplary, as other types of devices are also contemplated by
Carr. Carr, col. 2, 11. 47-50. That the device includes a processor 120, a
memory array 130, and a one-time programmable non-volatile memory
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Application 11/583,272
150--components that are fundamental elements of computer systems-
only bolsters the Examiner's position that the "other types of devices"
contemplated by Carr reasonably include a computing system with an
operating system.
We reach the same conclusion regarding the Examiner's finding that
such a computing system contemplated by Carr would also include a BIOS.
A BIOS is another fundamental component of computer systems that is
typically stored in read-only memory (ROM)2-a memory that is at least
suggested by Carr's on-chip, one-time programmable non-volatile memory
150. See Carr, col. 1, 11. 65-67; col. 2, 11. 40-42.
Given this implementation, we see no error in the Examiner's position
that Carr at least suggests that a BIOS that reports a lack of presence of an
integrated feature or component to the operating system via mode control
bits, despite that component physically residing on the computing system.
Final Act. 4--5; Ans. 4--5. See Carr, col. 2, 11. 54--57 (noting that the mode
control bits are programmed which correspond to desired configurations of
device features or functions); see also id., col. 2, 1. 64- col. 3, 1. 12 (noting
that appropriate mode control bits can be programmed to enable or disable
certain device features or functions). In short, disabling device features,
including internal components, by setting certain mode control bits at least
suggests an unavailable state setting for those components as the Examiner
indicates. Ans. 4--5.
2 See Bryan Pfaffenberger & David Wall, QUE' s COMPUTER & INTERNET
DICTIONARY 47 (6th ed. 1995) (defining the term "BIOS" as a set of
programs that handle low-level hardware control and are encoded in a
computer's ROM).
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Application 11/583,272
Notably, these bits are not only programmed during manufacture, but
are also protected against future writing by a lockout mechanism that
prohibits the bits from changing states. Carr, col. 2, 11. 57---63; col. 3, 11. 13-
14. This functionality at least suggests providing an unavailable state setting
via these bits that cannot be changed by users or administrators after
manufacture as the Examiner indicates. Ans. 6.
That Carr lacks a TPM as Appellants contend (App. Br. 8; Reply Br.
2-3) is of no consequence here, for the Examiner cites Tarkkala-not
Carr-for that feature. Final Act. 5; Ans. 5 (citing Tarkkala i-f 81). To be
sure, the status of Tarkkala's TPM can be changed (1) upon TPM Owner
authorization, or (2) by an Operator physically present at the platform as
noted in paragraph 81 as Appellants indicate. App. Br. 7; Reply Br. 4.
Although Tarkkala permits changes under those conditions, Tarkkala
nevertheless does not criticize, discredit, or otherwise discourage
investigation into the invention claimed, including providing unchangeable
states as in Carr, as required for teaching away. See Norgren Inc. v. Int 'l
Trade Comm 'n, 699 F.3d 1317, 1326 (Fed. Cir. 2012); see also In re Kahn,
441 F.3d 977, 990 (Fed. Cir. 2006). In any event, the Examiner's rejection
is not based on Tarkkala alone, but rather the collective teachings of Carr
and Tarkkala. Therefore, Appellants' arguments based on Tarkkala's and
Carr's individual shortcomings do not persuasively rebut the Examiner's
rejection based on those collective teachings. See In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). Accord Ans. 4 (noting Appellants'
individual attacks on the cited references).
This is a significant point. As noted previously, Carr prohibits the
mode control bits from changing states and, therefore, at least suggests
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Application 11/583,272
providing an unavailable state setting via these bits that cannot be changed
by users or administrators after manufacture. See Carr, col. 2, 11. 57---63; col.
3, 11. 13-14. In light of this functionality, we see no reason why a TPM,
such as that in Tarkkala, could not be provided in Carr's system as the
Examiner proposes to render a TPM-based feature or component unavailable
after manufacture via an unchangeable state setting. Such an enhancement
uses prior art elements predictably according to their established functions-
an obvious improvement. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,
417 (2007). We, therefore, find the Examiner's reason to combine the
teachings of the cited references supported by articulated reasoning with
some rational underpinning to justify the Examiner's obviousness
conclusion.
We reach this conclusion despite Tarkkala's enabling changing a
TPM's status under the two conditions in paragraph 81. Nevertheless,
weighing the benefits and drawbacks of allowing or preventing changes to a
computing system component's status, including that of a TPM, amounts to
an engineering trade-off---considerations well within the level of ordinarily
skilled artisans. Accordingly, we are not persuaded that the Examiner erred
in rejecting claim 1, and claims 2, 3, 5-12, and 14-20 not argued separately
with particularity.
THE REMAINING OBVIOUSNESS REJECTION
We also sustain the Examiner's obviousness rejection of claims 4 and
13. Final Act. 12-14. Despite nominally arguing these claims separately,
Appellants reiterate similar arguments made in connection with claim 1
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which we find unpersuasive for the reasons previously discussed. See App.
Br. 9.
CONCLUSION
The Examiner did not err in rejecting claims 1-20 under§ 103.
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)(l )(iv).
AFFIRMED
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