Ex Parte Pereira

Patent Trial and Appeal Board

Oct 31, 2012

11071093 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID M. PEREIRA
____________________

Appeal 2010-003801
Application 11/071,093
Technology Center 2100
____________________

Before DEBRA K. STEPHENS, HUNG H. BUI, and LYNNE E.
PETTIGREW, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/071,093

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Appellant appeals under 35 U.S.C. § 134(a) (2002) from a non-final
rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Introduction
According to Appellant, the invention relates to a system and method
for managing optical drive features (Spec. 1, §Field of the Invention).

STATEMENT OF THE CASE

Exemplary Claims
Claims 1 and 6 are exemplary claims and are reproduced below:
1. An information handling system comprising:
a central processing unit operable to process information;
memory interfaced with the central processing unit and
operable to store information;
a component interfaced with the central processing unit,
the component operable to perform plural features, the
component having firmware, the features performed at least in
part with the firmware;
a feature set table associated with the component, the
feature set table having the plural features, each feature further
associated with an enabled or disabled status; and
a feature set modifier associated with the component and
operable to enable features of the component having an enabled
status and to disable features of the component having a
disabled status.

6. An optical disc drive comprising:
a spindle assembly operable to spin an optical medium;
an optical head proximate the optical medium and having
at least one laser and at least one optical pickup unit, the laser
operable to illuminate the optical medium to read and write
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information, the optical pickup unit operable to receive
reflections of the laser to read information;
firmware interfaced with the optical head and having
plural sets of instructions, each setof instructions associated
with one or more features; and
a feature set table associated with the firmware operable
to identify enabled features that the firmware is permitted to
perform and disabled features that the firmware is prohibited to
perform.

References
Dutta US 2002/0186845 Dec. 12, 2002
Tague US 2003/0101288 May 29, 2003
Newell US 6,668,319 B1 Dec. 23, 2003
Harada US 2004/0123161 Jun. 24, 2004
Hsu US 2004/0199687 Oct. 7, 2004
Holzapfel US 2007/0036356 Feb. 15, 2007

Rejections
(1) Claims 1-7 and 9-13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hsu, Tague, and Newell.
(2) Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hsu, Tague, Newell, and Holzapfel.
(3) Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hsu, Tague, Newell, and Dutta.
(4) Claims 16-19 and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hsu and Tague.
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(5) Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hsu, Tague, and Harada. 1

GROUPING OF CLAIMS

Based upon Appellant’s arguments, we select representative claim 1
to decide this appeal for the group consisting of claims 1-5. (See App. Br.
3).
Based upon Appellant’s arguments, we select representative claim 6
to decide this appeal for the group consisting of claims 6, 7, and 9-11. (See
App. Br. 4-5).
We address claim 8 independently.
Based upon Appellant’s arguments, we select representative claim 12
to decide this appeal for the group consisting of claims 12 and 13. (See App.
Br. 5).
We address claims 14 and 15 independently.
Based upon Appellant’s arguments, we select representative claim 16
to decide this appeal for the group consisting of claims 16-19 and 21. (See
App. Br. 3, §Grounds of Rejection).
Based upon Appellant’s arguments, we address claim 20 separately.
(See App. Br. 5-6).

1 The rejection of claims 12-21 under 35 U.S.C. §112, second paragraph
were withdrawn by the Examiner in the Answer of September 18, 2009
(Ans. 3).
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We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii)(2009).

ISSUE 1
35 U.S.C. § 103(a): claims 1-5
Appellant asserts the invention is not obvious over Hsu, Tague, and
Newell because although Newell teaches a feature table to allow
communication between devices, Newell does not teach or suggest enabled
or disabled status (App. Br. 4). Additionally, Appellant contends Tague
does not teach a feature set modifier that enables features having an enabled
status and disables features having a disabled status (id.).
Issue 1: Has the Examiner erred in finding the combination of Hsu,
Tague, and Newell teaches or suggests “each feature further associated with
an enabled or disabled status” and “a feature set modifier… operable to
enable features of the component having an enabled status and to disable
features of the component having a disabled status” as recited in independent
claim 1?
ANALYSIS
With respect to Appellant’s arguments regarding Newell, we agree
with the Examiner that Appellant is arguing the references individually
when the Examiner has relied on the combination of references as teaching
or suggesting the recited limitation (see Ans. 4-6 and 25-26).
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As to Appellant’s assertion regarding Tague, we are not persuaded.
The Examiner has set forth detailed findings regarding the teachings and
suggestions of Tague (id.). Apart from merely alleging the differences
between the recited limitation and Tague, however, Appellant has not
presented any substantive arguments to distinguish the disputed limitation
from the portions of Tague relied upon by the Examiner.
Accordingly, the Examiner did not err in finding the combination of
Hsu, Tague, and Newell teaches or suggests the invention as recited in
independent claim 1 and dependent claims 2-5, not separately argued.
Therefore, the Examiner did not err in rejecting claims 1-5 under
35 U.S.C. § 103(a) for obviousness over Hsu, Tague, and Newell.

ISSUE 2
35 U.S.C. § 103(a): claims 6, 7, and 9-11
Appellant asserts the invention is not obvious over Hsu, Tague, and
Newell because of the reasons set forth with respect to claim 1 and further
because Tague does not prohibit features (App. Br. 4-5). Instead, Tague
decompresses features if the features are needed whereas the invention, as
recited in claim 6, defines that firmware is “prohibited” to perform disabled
features (App. Br. 5).
Issue 2: Has the Examiner erred in concluding the combination of
Hsu, Tague, and Newell teaches or suggests “a feature set table associated
with the firmware operable to identify … disabled features that the firmware
is prohibited to perform” as recited in independent claim 6?

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ANALYSIS
As set forth above in Issue 1, we are not persuaded by Appellant’s
arguments regarding the disputed limitation.
Further, Claim 6 recites identifying disabled features that the firmware
is prohibited to perform. We agree with the Examiner that Tague discloses
this feature (Ans. 10-11 and 27). Specifically, Tague discloses identifying
whether a feature is found to be disabled (pg. 3, [0037]). We agree with the
Examiner that if the feature is found to be disabled, it inherently is
prohibited from performing the feature (see Ans. 27). Additionally, Tague
indicates a user could receive activation information to enable the desired
feature (pg. 3, [0037]) – thus further supporting the Examiner’s finding that
Tague teaches or at least suggests this feature.
Accordingly, Appellant has not persuaded us the Examiner erred in
finding the combination of Hsu, Tague, and Newell teaches or suggests the
invention as recited in independent claim 6 and dependent claims 7 and 9-
11, not separately argued. Therefore, the Examiner did not err in rejecting
claims 6, 7, and 9-11 under 35 U.S.C. § 103(a) for obviousness over Hsu,
Tague, and Newell.

ISSUE 3
35 U.S.C. § 103(a): claims 12 and 13
Appellant asserts the invention is not obvious over Hsu, Tague, and
Newell because of the reasons set forth with respect to claim 1 and further
because Tague does not teach disabling firmware based on a disabled status
(App. Br. 5). Instead, according to Appellant, Tague disables features based
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on the need for the features, not on a status of the feature stored in a feature
set table (id.).
Issue 3: Has the Examiner erred in concluding the combination of
Hsu, Tague, and Newell teaches or suggests “disabling the firmware to
perform features having a disabled status” as recited in independent claim
12?

ANALYSIS
As set forth above in Issue 1, we are not persuaded by Appellant’s
arguments regarding the disputed limitation.
Appellant argues features are disabled based on a status of a feature
stored in a feature set table (id.). However, the invention as recited does not
specify the firmware is disabled based on a status of a feature stored in a
feature set table. Instead, claim 12 recites “disabling the firmware to
perform features having a disabled status.” Therefore, Appellant is arguing
limitations not recited in the claim.
As such, Appellant has not persuaded us the Examiner’s findings are
in error (see Ans. 14-16 and 27-28). We further note, as recited, Appellant’s
method claim does not require a specific order of steps.
Accordingly, Appellant has not persuaded us the Examiner erred in
finding the combination of Hsu, Tague, and Newell teaches or suggests the
invention as recited in independent claim 12 and dependent claim 13, not
separately argued. Therefore, the Examiner did not err in rejecting claims
12 and 13 under 35 U.S.C. § 103(a) for obviousness over Hsu, Tague, and
Newell.
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ISSUE 4
35 U.S.C. § 103(a): claims 8 and 14-15
Appellant does not present any arguments regarding claim 8, rejected
under 35 U.S.C. §103 (a) as being unpatentable under Hsu, Tague, Newell,
and Holzapfel, and claims 14 and 15, rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hsu, Tague, Newell, and Dutta. Thus, claims 8 and
14-15 fall with their respective independent claims 6 and 12.

ISSUE 5
35 U.S.C. § 103(a): claims 16-19 and 21
Appellant does not present any arguments for claims 16-19 and 21.
Therefore, Appellant has not persuaded us the Examiner erred in finding the
combination of Hsu and Tague teaches or at least suggests the invention as
recited in claims 16-19 and 21. Accordingly, the Examiner did not err in
rejecting claims 16-19 and 21 under 35 U.S.C. § 103(a) for obviousness over
Hsu and Tague.

ISSUE 6
35 U.S.C. § 103(a): claim 20
Appellant asserts the invention is not obvious over Hsu, Tague, and
Harada because the combination fails to teach or suggest “locking one or
more features to prohibit enabling of the one or more features at the
customer premise” (App. Br. 5). Specifically, Appellant contends Tague
compresses a feature in firmware and allows decompression and use of
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feature without restriction but does not suggest securing or locking a feature
from use (id.). Appellant further argues Harada performs a system lock on a
complete system but also does not suggest locking features on a system
component (id.).
Issue 6: Has the Examiner erred in concluding the combination of
Hsu, Tague, and Harada teaches or suggests “locking one or more features to
prohibit enabling of the one or more features at the customer premise” as
recited in claim 20?
ANALYSIS
We agree with the Examiner that Appellant appears to be arguing the
references individually while the Examiner is relying on the combination of
Hsu and Tague as teaching or at least suggesting the invention as recited in
claim 20 (see Ans. 24 and 28-29). Additionally, we note Appellant has not
provided sufficient evidence or argument to persuade us of error in the
Examiner’s findings. Instead, Appellant provides conclusory statements as
to what the relied upon references teach and further, do not indicate where in
the references these teachings are disclosed.
Accordingly, Appellant has not persuaded us the Examiner erred in
finding the combination of Hsu, Tague, and Harada teaches or suggests the
invention as recited in claim 20. Therefore, the Examiner did not err in
rejecting claim 20 under 35 U.S.C. § 103(a) for obviousness over Hsu,
Tague, and Harada.

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DECISION
The Examiner’s rejection of claims 1-7 and 9-13 under 35 U.S.C.
§ 103(a) as being unpatentable over Hsu, Tague, and Newell is affirmed.
The Examiner’s rejection of claim 8 under 35 U.S.C. § 103(a) as
being unpatentable over Hsu, Tague, Newell, and Holzapfel is affirmed.
The Examiner’s rejection of claims 14 and 15 under
35 U.S.C. § 103(a) as being unpatentable over Hsu, Tague, Newell, and
Dutta is affirmed.
The Examiner’s rejection of claims 16-19 and 21 under
35 U.S.C. § 103(a) as being unpatentable over Hsu and Tague is affirmed.
The Examiner’s rejection of claim 20 under 35 U.S.C. § 103(a) as
being unpatentable over Hsu, Tague, and Harada 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) (2010).

AFFIRMED

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