12836806 (P.T.A.B. Feb. 13, 2017)

Ex Parte Peterson

Patent Trial and Appeal BoardFeb 13, 2017

12836806 (P.T.A.B. Feb. 13, 2017)

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. 12/836,806 07/15/2010 Harold L. Peterson 60843.300603 2974 103807 7590 02/15/2017 Intellectual Property Venture Group 3350 Shelby St., Ste. 200 Ontario, CA 91764-5556 EXAMINER MACKALL, LARRY T ART UNIT PAPER NUMBER 2131 NOTIFICATION DATE DELIVERY MODE 02/15/2017 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): pfiler @ ipvglaw .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HAROLD L. PETERSON Appeal 2015-004413 Application 12/836,806 Technology Center 2100 Before CAROLYN D. THOMAS, KEVIN C. TROCK, and AMBER L. HAGY, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1—22, all the pending claims in the present application. See Claim Appendix. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. The present invention relates generally to selectively accessing performance capacities in electronic devices. See Spec. 1:8—10. Appeal 2015-004413 Application 12/836,806 Claim 1 is illustrative: 1. A personal electronic device, comprising: a component unit having a total performance capacity including an enabled performance capacity and an additional performance capacity; a processor that controllably employs said enabled performance capacity; an access logic that is run in said processor; and wherein said additional performance capacity is prevented from being employed by the personal electronic device until enabled with said access logic with a key associated with said additional performance capacity. Appellant appeals the following rejections: Rl. Claims 1—16, 21, and 22 are rejected under 35 U.S.C. § 102(b) as being anticipated by Williams (US 6,094,702, July 25, 2000) (Final Act. 2— 9); R2. Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Williams and Welingkar (US 2008/0115226 Al, May 15, 2008) (Final Act. 10-11); and R3. Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Williams and Hansen (US 6,978,374 Bl, Dec. 20, 2005) (Final Act. 11). ANALYSIS Claims 1—20 Issue: Did the Examiner err in finding that Williams discloses an access logic that is run in the processor, as set forth in claim 1 ? 2 Appeal 2015-004413 Application 12/836,806 Appellant contends that “Williams does not read on the claim. . . . Williams would have to teach that its upgrade controller (124) is implemented in (and run in) its central processing unit (121)” (App. Br. 7). Appellant further contends “to one of ordinary skill in the art that statement ‘on the same chip as’ clearly means ‘not as part of and ‘not run in’ the central processing unit (121)” (id.). We agree with Appellant. Although we also agree with the Examiner that in Williams the “teachings provide a single chip housing a processor and whichever hardware logic is chosen to implement the upgrade controller” (Ans. 3; see also Williams 7:53—56), we disagree with the Examiner’s conclusion that “[i]n the embodiment where the processor and upgrade controller are located on the same chip, the entire chip is the processor” (id.). We find that one of ordinary skill in the art would know that a “single chip” entails integrating all components of an electronic system into a single chip substrate. However, just because a processor is one of the components on the single chip does not necessarily make the entire single chip a processor. In any case, the claims require an “access logic” (i.e., upgrade controller in Williams) that is run in the processor, the same processor that controllably employs the enabled performance capacity (see claim 1). The Examiner equates Williams’ CPU (121) to the claimed processor (see Final Act. 2), and Williams’ upgrade controller can be implemented as a program executed by CPU (121) (see Williams 5:22—24). We find that Williams’ upgrade controller being executed by the CPU is distinguishable from the claimed access logic being run in the CPU and simply placing both components on the same substrate does not cure this deficiency. 3 Appeal 2015-004413 Application 12/836,806 We are therefore constrained by the record before us to find that the Examiner erred in rejecting independent claim 1 as being anticipated by Williams, and also erred in rejecting claims 2—20 for similar reasons. The Examiner has not shown that any of the other references of record teach this feature. Claims 21 and 22 Appellant notes that claim 21 and 22 are withdrawn from consideration (see App. Br. 3), and fail to provide any arguments pertaining thereto in the Appeal Brief. However, the Examiner’s Advisory Action (dated Jan. 21, 2014) and the statement of rejection in the Answer (see Ans. 2) maintains the rejection of claims 21 and 22. In order to expedite matters, we shall treat the rejection of claims 21 and 22 as being maintained. We also highlight that claims 21 and 22 do not include the argued limitation, i.e., an access logic that is run in said processor, and Appellant fails to present any separate arguments for such claims. As such, no arguments have been presented with respect to claims that do not have the aforementioned limitation. Therefore, we summarily affirm the anticipation rejection of claims 21 and 22. DECISION We reverse the Examiner’s § 102(b) and § 103(a) rejections of claims 1-20. We affirm the Examiner’s § 102(b) rejection of claims 21 and 22. 4 Appeal 2015-004413 Application 12/836,806 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-IN-PART 5