Ex Parte Pierce et al

Patent Trial and Appeal Board

Feb 14, 2014

11535810 (P.T.A.B. Feb. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES R. PIERCE, ERIC H. WALKER, and
JOHN A. WAHL
___________

Appeal 2011-000741
Application 11/535,810
Technology Center 2100
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Before CARLA M. KRIVAK, JEFFREY S. SMITH, and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000741
Application 11/535,810

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This is an appeal under 35 U.S.C. § 134(a) of a final rejection of all
pending claims (1-26). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
THE INVENTION
Appellants’ invention relates to switching control of a computing
device from a first operating system to a second operating system. See
generally, Abstract.
Claim 13, reproduced below, is illustrative:
13. A computing device for minimizing the impact of
system abnormalities, comprising:
a first processor system having a first operating system;
a second processor system having a second operating
system, wherein control of the computing device is transferred
from the first processor system operating under control of the
first operating system to the second processor system operating
under control of the second operating system in response to
detection of a system abnormality, wherein the second
operating system is different from the first operating system.

THE REJECTIONS1
Claims 1-8, 13-20, and 25 are rejected under 35 U.S.C. § 102(b) as
anticipated by Okude (US 2003/0036843 A1). Ans. 4-8.
Claims 1, 2, 9-14, and 21-24 are rejected under 35 U.S.C. § 102(e) as
anticipated by Guo (US 7,409,536 B2). Ans. 9-11.

1 A rejection of claims 13-26 under 35 U.S.C. § 101 is withdrawn and thus
not before us in this appeal. Ans. 3.
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Application 11/535,810

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Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Okude and Guo. Ans. 12.
Claims 3 and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Guo and Lescouet (US 2004/0205755 A1). Ans. 13.

ISSUE
Rather than repeat the arguments here, we refer to Appellants’ Briefs
(“App. Br.” filed May 12, 2010 and “Reply Br.” filed September 29, 2010)
and the Examiner’s Answer (“Ans.” mailed July 29, 2010) for the respective
positions of Appellants and the Examiner.
Appellants’ arguments present us with the following dispositive issue:
Has the Examiner erred by interpreting the “first processor system” and the
“second processor system” as encompassing a single processor capable of
switching operation between two different operating systems as recited in
claim 13?

ANTICIPATION REJECTIONS
ANALYSIS
In both anticipation rejections (over Okude and over Guo), the
Examiner interprets the recited first and second processor systems as reading
on a single processor (“CPU”) capable of switching between either of two
different operating systems. See Ans. 6 (citing Okude figure 2, items 206
and 207); Ans. 10-11 (citing Guo figure 2, items 260 and 240). In reading
the claims on Okude, the Examiner explains, “The examiner submits that in
at least one interpretation, a ‘processor system’ includes a set of
components, e.g. CPU, memory, operating system (OS). Therefore, a first
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Application 11/535,810

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processor system can be, for example, CPU-1 and OS-1, and a second
processor system can be CPU-1 and OS-2.” Ans. 14-15. In like manner, in
reference to the rejection over Guo, “The examiner respectfully emphasizes
that the claimed ‘first processor system’ and ‘second processor system’ can
be interpreted as a single processor operating switchably under a first
operating system and a second operating system, as taught by Guo.” Ans.
20.
Appellants argue that the Examiner’s interpretation is inconsistent
with the Specification (including the figures) and the prosecution history
where “it is clear from the figures, specification, claims and file history that
the first and second processor systems are to be mutually exclusive
components and are not shared components.” App. Br. 6. We agree.
Appellants’ figure 2 clearly depicts separate microprocessors (214,
216) within each of the first and second processor systems (116, 118),
respectively. Specification paragraph 0016 clearly discloses, “Each of
processor systems 116 and 118 has at least one processor 214 and 216,
respectively.” Conversely, we find no disclosure in the Specification
supporting the Examiner’s interpretation suggesting that a single CPU may
be shared and “operating switchably under a first operating system and a
second operating system.” The Examiner is correct in asserting that to act as
one’s own lexicographer, the inventor must clearly define terms (Ans. 15-
16), that limitations of the Specification are not imported to the claims (Ans.
17-18), and that claims are to be given their broadest reasonable
interpretation during prosecution (Ans. 18). However, the claim language
should be read in light of the Specification as it would be interpreted by one
of ordinary skill in the art. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
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1359, 1364 (Fed. Cir. 2004) (citations omitted). “[D]uring examination
proceedings, claims are given their broadest reasonable interpretation
consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000). We find the Examiner’s interpretation unreasonably broad in
light of the Specification and inconsistent with the Specification.
In view of the above discussions, we are persuaded the Examiner
erred by interpreting the “first processor system” and the “second processor
system” as encompassing a single processor capable of switching operation
between two different operating systems. We therefore do not sustain the
anticipation rejection of claim 13. Whether claim 13 would be obvious in
view of the art of record or any other prior art, alone or in any combination,
is not an issue before us.
Independent claim 1 is a method claim including structural recitations
similar to the apparatus of claim 13. The Examiner’s rejection of claim 1 is
essentially identical to that of claim 13 (Ans. 4). Appellants argue claim 13
as representative of all claims.2 We are therefore similarly persuaded of
error and do not sustain the anticipation rejections of claims 1-12 and 14-25.

OBVIOUSNESS REJECTIONS
Claims 3, 15, and 26 depend (indirectly) from one of claims 1 and 13
and thus, for the same reasons as above, we do not sustain the Examiner’s
rejections under § 103.

2 Should this patent application proceed further in prosecution, we suggest
the Examiner consider whether the structural recitations of the method
claims meaningfully limit the scope of the methods.
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DECISION
For the above reasons, the rejections of claims 1-26 under 35 U.S.C.
§§ 102 and 103 are reversed.

REVERSED

msc