Ex Parte McDonald et alDownload PDFPatent Trial and Appeal BoardDec 30, 201311591687 (P.T.A.B. Dec. 30, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JULIE McDONALD and PETER K. LEE ____________ Appeal 2011-008767 Application1 11/591,687 Technology Center 2100 ____________ Before TONI R. SCHEINER, JEFFREY N. FREDMAN, and ULRIKE W. JENKS, Administrative Patent Judges. JENKS, Administrative Patent Judge DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims directed to accessing features on a touch screen device without booting up the operating system. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Hewlett-Packard Development Company, LP as the Real Party in Interest (App. Br. 1). Appeal 2011-008767 Application 11/591,687 2 STATEMENT OF THE CASE Claims 1-20 are on appeal, and can be found in the Claims Appendix of the Appeal Brief. Claim 1 is illustrative of the claims on appeal, and reads as follows: 1. A method of assisting user interaction with a touchscreen device having a bootable operating system, comprising: operating the touch-screen device having the bootable operating system under an always ready responsive state while in a power saving mode, wherein a touch-screen of said touch- screen device is capable of receiving user input without the bootable operating system having been booted; displaying while in the power saving mode, without the bootable operating system having been booted, a first user interface having a first list of user selectable items identifying stored accessible data; receiving, without the bootable operating system having been booted, a user selection of an item of said first list of user selectable items; and automatically transitioning to and displaying a second user interface having an associated list of user selectable items corresponding to said selected item without the bootable operating system having been booted. The following grounds of rejection are before us for review: The Examiner has rejected claims 1-2, 6-9, 12-16, and 18-19 under 35 U.S.C. § 103(a) as being obvious over Muschetto,2 in view of Bates,3 and further in view of Brakmo.4 2 Muschetto, US 2003/0160815 A1, published Aug. 28, 2003. 3 Bates et al., US 6,367,074 B1, issued Apr. 2, 2002. 4 Brakmo et al., US 2003/0105983 A1, published Jun. 5, 2003. Appeal 2011-008767 Application 11/591,687 3 The Examiner has rejected claims 1-5 and 10-20 under 35 U.S.C. § 103(a) as being obvious over Vallabh,5 in view of Bates, and further in view of Brakmo. DISCUSSION The Examiner has presented two obviousness rejections, and both rejections are premised on the teachings of Bates, so we will discuss them together. The Examiner takes the position that “Bates teaches an apparatus and corresponding method of executing one or more applications without the Operating System having been booted” (Ans. 5.) According to the Examiner, “the ‘Quicknote environment’ can be reasonably interpreted, in the broadest reasonable interpretation as a ‘power saving mode’” (id.). Furthermore, the Examiner finds that: the term “Operating System” as used in the claims is generally understood to mean a full-feature operating system. Therefore, in the broadest reasonable interpretation the limitations (A) “without the bootable operating system having been booted” (claim 1); (B) “prior to booting the operating system” (claims 12) or (C) “in the absence of an operating system having been booted” (claim 18), can be interpreted as referring to a full- feature Operating System. (Id. at 24-25.) Appellants, however, take the position that “Bates does NOT disclose a touch screen that displays and identifies stored accessible data while the touch screen is in a power saving mode and without an operating system having been booted” (Appeal Br. 9-10). “Nowhere does Bates disclose that the ‘Quick Note’ mode may be run without an at least partial boot.” 5 Vallabh et al., US 2006/0242259 A1, published Oct. 26, 2006. Appeal 2011-008767 Application 11/591,687 4 (Appeal Br. 9.) Appellants contend that Bates does not disclose a “touch- screen device that is capable of receiving user input without any (not necessarily a full-featured) bootable operating system having been booted” (Reply Br. 1). Claim interpretation is at the heart of patent examination because before a claim is properly interpreted, its scope cannot be compared to the prior art. Medichem, S.A. v. Rolabo, S. L., 353 F.3d 928, 933 (Fed. Cir. 2003) In this case, Appellants challenge the Examiner’s interpretation of the phrase “bootable operating system” as recited in claim 1, arguing that Bates does not disclose “a touchscreen device that is capable of receiving user input without any (not necessarily a full-featured) bootable operating system having been booted.” (Reply Br. 1; see also id. at 3.) During prosecution, claim terms are given their broadest reasonable interpretation as they would be understood by persons of ordinary skill in the art in the light of the Specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Therefore, we first turn to the Specification to determine whether the meaning of the phrase “bootable operating system” can be discerned. The Specification does not provide any guidance with respect to the term bootable operating system. To one of ordinary skill in the art the term “operating system”6 refers to the foundational software “that controls the allocation and usage of hardware resources such as memory, central processing unit (CPU) time, disk space, and peripheral devices.” “Bootable”7 refers to “[c]ontaining the system files necessary for booting a PC and running it.” Accordingly, we interpret the 6 “Operating system,” Microsoft Computer Dictionary 378 (5th ed. 2002). 7 “Bootable,” Microsoft Computer Dictionary 69 (5th ed. 2002). Appeal 2011-008767 Application 11/591,687 5 phrase “bootable operating system” to be the software that controls the memory, central processing unit (CPU) time, disk space, and peripheral devices. Here, the Specification does not define the phrase bootable operating system to include systems that comprise less than a full operating system or to include alternative operating systems. Accordingly, we find that the Examiner’s interpretation of “operating system” as meaning a full-featured operating system is not unreasonable and is consistent with the Specification. Appellants contend that “Bates does NOT disclose a touch screen that displays and identifies stored accessible data while the touch screen is in a power saving mode and without an operating system having been booted” (Appeal Br. 9-10). According to Appellants Bates does not “disclose that the ‘Quick Note’ mode may be run without an at least partial boot.” (Appeal Br. 9.) We are not persuaded by Appellants’ contention. The Examiner provides sound fact-based reasoning for the combinations with Bates; we adopt the fact finding and analysis of the Examiner as set out in the Answer. Specifically, we agree with the Examiner’s finding that Bates disclosed a system that could startup from either a cold boot or alternately from some power saving state. When the system is turned on, the BIOS routine 404 is executed to boot or resume the system, depending on which off state the system was in. The BIOS routine 404 performs (at 202) certain tasks, which may include a cold boot sequence if the system is starting from a powered off state or restarting. However, if the off state is a low power state (e.g., sleep state, suspend state, etc.) from which the system 10 is able to resume, then the BIOS App App (Bat Exam from (Bat Fig. Quic (Ans Fig. 406 eal 2011-0 lication 11 reloads medium 202), th drive 12 es col. 4, l iner, if th the non-v The Qui informat containe the syste the Quic subset o memory es col. 5, l 4 of Bates knote env . 21 and 2 4 shows, “ (invoked b 08767 /591,687 certain sys during th e BIOS ro 0 or other . 62 to col. e Quickno olatile me cknote rou ion, referr d in the ha m 10. . . knote rou f the Qu 128. l. 29-41; se , reproduc ironment i 4). the Quick y the BIO tem settin e low pow utine 404 storage me 5, l. 9; see te environ mory (Ans tine 406 ed to as t rd disk dr . If the sto tine 406 i icknote D e also An ed below, s outside o note enviro S routine 4 6 gs saved er state. is also po dium. also Ans ment is se . 5; see al may have he Quickn ive 120 or rage medi n one emb B 209 st s. 5) The as showing f the oper nment in 04) contro in a non-v During in wering up . 5) Accor lected the so Bates c access to ote datab other stor um is not odiment m ored in th Examiner that the B ating syste which the ls access olatile sto itializatio the hard ding to th routine ma ol, 5, ll. 21 predeterm ase (DB) age mediu available, ay acces e non-vo further ref IOS cont m (OS) en Quicknote to certain rage n (at disk e y be run -25). ined 209, m in then s the latile ers to rol of the vironmen routine t Appeal 2011-008767 Application 11/591,687 7 information and features.” (Bates col. 4. ll. 1-3; Ans. 31) Specifically, “the Quicknote routine 406 in one embodiment may access the subset of the Quicknote DB 209 stored in the non-volatile memory 128. . . . [That] may contain the most recently updated information, such as a calendar list, address list, to do list, notes, electronic mail and the like.” (Bates col. 5. ll. 38-44; Ans. 5.) We agree with the Examiner’s position that, it becomes clear that the ‘reduced set of features’ provided by the “Quicknote” environment as mentioned by Bates in the excerpts above are not provided by partially booting the Operating System as appears to be alleged by the Appellant[s], but by the “Quicknote” environment which does not require loading any portion of the Operating System for initializing the device. (Ans. 31) We agree with the Examiner’s position that Bates disclosed operating a device without initializing or booting the full operating system. We agree with the Examiner that Bates’ device in some operations uses the Quicknote DB environment to retrieve certain updated information from the non-volatile memory before or during the time the hard disk is powering up meeting the claim limitation “without the bootable operating system having been booted.” We conclude that the Examiner has met the burden of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). Appellants, however, have not provided sufficient rebuttal or evidence of secondary considerations that outweighs the evidence supporting the prima facie case. As Appellants do not argue the claims separately, claims 2-20 fall with claim 1. Appeal 2011-008767 Application 11/591,687 8 SUMMARY We affirm the rejection of claims 1-2, 6-9, 12-16 and 18-19 under 35 U.S.C. § 103(a) over Muschetto, in view of Bates, and further in view of Brakmo. We affirm the rejection of claims 1-5, and 10-20 under 35 U.S.C. § 103(a) over Vallabh, in view of Bates, and further in view of Brakmo. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED lp Copy with citationCopy as parenthetical citation