Ex Parte O

Board of Patent Appeals and Interferences

Jan 27, 2012

10335020 (B.P.A.I. Jan. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/335,020 12/31/2002 David J. O'Shea 42P14639 5611
8791 7590 01/27/2012
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040
EXAMINER
RAHMAN, FAHMIDA
ART UNIT PAPER NUMBER
2116
MAIL DATE DELIVERY MODE
01/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte DAVID J. O’SHEA
_____________

Appeal 2009-012316
Application 10/335,020
Technology Center 2100
______________

Before, DAVID M. KOHUT, JASON V. MORGAN, and
MICHAEL R. ZECHER, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-2, 4-13, 15-22, and 24-25.1 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part the Examiner’s rejection of these claims.

1 The Examiner withdrew the rejection of claims 3, 14, 23, and 26 under 35
U.S.C. § 102(e) as being anticipated by Wang. Ans. 3.
Appeal 2009-012316
Application 10/335,020

2
INVENTION
The invention is directed to a method, computer readable medium,
and system for allowing code on firmware storage to execute when the
computer system is entering a lower power state. See Spec. 5. Claim 1 is
representative of the invention and is reproduced below:
1. A method comprising:
setting a signal to indicate that control of a computer
system is to be usurped on the next occasion of preparations
being made for the computer system to enter a lower power
state;
initiating preparations for the computer system to enter a
lower power state;
transferring control of the computer system from an
operating system being executed on the computer system to
enable power management code residing in a firmware storage
to be executed;
examining the signal to determine whether or not it was
set to indicate that control is to be usurped; and
usurping control of the computer system to being
executing code in the firmware storage that is unrelated to both
the operating system and to power management.

REFERENCES
Wang US 2003/0041273 A1 Feb. 27, 2003
(filed Jan. 16, 2002)

Sekine US 2004/0015941 A1 Jan. 22, 2004
(filed Dec. 12, 2001)

REJECTIONS AT ISSUE
Claims 1, 2, 4-8, 10-13, 15-19, 21, 22, 24, and 25 are rejected under
35 U.S.C. § 102(e) as being anticipated by Wang. Ans. 3-12.
Appeal 2009-012316
Application 10/335,020

3
Claims 9 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang in view of Sekine. Ans. 12-13.
ISSUES
Did the Examiner err in rejecting claims 1, 2, 4-7, 10, 12, 13, and 15-
18 as being anticipated by Wang because the reference fails to disclose
executing code in the firmware storage that is unrelated to both the operating
system and to power management, as recited in independent claims 1 and
12?
Did the Examiner err in rejecting claims 8 and 19 as being anticipated
by Wang because the reference fails to disclose executing diagnostics
software that is unrelated to both the operating system and to power
management, as required by claims 8 and 19?
Did the Examiner err in rejecting claim 11 as being anticipated by
Wang because the reference does not disclose aborting entry by a computer
system to a lower power state, as recited in the claim?
ANALYSIS
Claims 1, 2, 4-7, 10, 12, 13, and 15-18
Claim 1 recites “executing code in the firmware storage that is
unrelated to both the operating system and to power management.” Claim
12 contains similar limitations. We select claim 1 as representative of the
group comprising claims 1-2, 4-7, 10, 12, 13, and 15-18 since Appellant
does not separately argue these claims with particularity. See 37 C.F.R. §
41.37 (c)(1)(vii). The Examiner finds that Wang discloses this limitation
since step 307 executes a system RAM modulation routine in BIOS ROM,
which is unrelated to the operating system or power management. Ans. 8.
Appeal 2009-012316
Application 10/335,020

4
Appellant argues that the Examiner’s finding is in error. App. Br. 5.
Appellant contends that frequency inconsistency occurs as a result of the
power management process and since Wang’s step 307 corrects this
inconsistency, step 307 is related to power management. App. Br. 5. We
disagree.
Based upon Appellant’s Specification, the Examiner interprets the
limitation “unrelated to power management code” to include such things as
“software to alter the configuration, diagnostic test, debugging software,
[and] maintenance task[s] [that] may result in improved stability during [a]
power management process due to the nature of such code.” Ans. 16. We
find this interpretation to be reasonable. We, therefore, also agree with the
Examiner that even though step 307 solves a power management problem, it
is not related with power management since the code does not manage or
control the distribution of power or aid in carrying out the transition between
a high or low power state. Ans. 16-17.
For the reasons stated supra, we sustain the Examiner’s rejection of
claims 1, 2, 4-7, 10, 12, 13, and 15-18.
Claims 8 and 19
Appellant makes the same arguments with respect to claims 8 and 19
as with claim 1. App. Br. 8-9. Thus, we sustain the Examiner’s rejection of
these claims for the same reasons discussed supra with respect to claim 1.
Claims 9 and 20
Appellant makes the same arguments with respect to claims 9 and 20
as with claim 1. App. Br. 10. Thus, we sustain the Examiner’s rejection of
these claims for the same reasons discussed supra with respect to claim 1.
Appeal 2009-012316
Application 10/335,020

5
Claim 11
Claim 11 recites “aborting entry by the computer system to a lower
power state.” Appellant argues that the Examiner has not specified where
Wang discloses this limitation since the portion of Wang cited by the
Examiner describes a process that is performed after the wake-up event and
thereby after entry into the lower power state. App. Br. 8-9. In response,
the Examiner indicates that, even in that situation, entry into the low power
state is aborted since the system is entering into a sleeping state. Ans. 19.
However, the Examiner fails to show and we do not find how the sleeping
state is not a low power state. Thus, we cannot sustain the Examiner’s
rejection of claim 11.
Claims 21 and 22
Appellant makes the same arguments with respect to claims 21 and 22
as with claim 1. App. Br. 9. Thus, we sustain the Examiner’s rejection of
these claims for the same reasons discussed supra with respect to claim 1.
Claims 24 and 25
Appellant makes the same arguments with respect to claims 24 and 25
as with claim 1. App. Br. 9. Thus, we sustain the Examiner’s rejection of
these claims for the same reasons discussed supra with respect to claim 1.
CONCLUSION
The Examiner did not err in rejecting claims 1, 2, 4-7, 10, 12, 13, 15-
18, 21, 22, 24, and 25 as being anticipated by Wang because the reference
discloses executing code in the firmware storage that is unrelated to both the
operating system and to power management, as recited in independent
claims 1 and 12.
Appeal 2009-012316
Application 10/335,020

6
The Examiner did not err in rejecting claims 8 and 19 as being
anticipated by Wang because the reference discloses executing diagnostics
software that is unrelated to both the operating system and to power
management, as required by claims 8 and 19.
The Examiner erred in rejecting claim 11 as being anticipated by
Wang because the reference does not disclose aborting entry by a computer
system to a lower power state, as recited in the claim.
SUMMARY
The Examiner’s decision to reject claims 1, 2, 4-10, 12, 13, 15-22, 24,
and 25 is affirmed. However, the Examiner’s decision to reject claim 11 is
reversed.
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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