Ex Parte Poisner

Patent Trial and Appeal Board

Jun 13, 2013

10609828 (P.T.A.B. Jun. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID I. POISNER
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Appeal 2010-011704
Application 10/609,828
Technology Center 2100
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Before ALLEN R. MacDONALD, JOHNNY A. KUMAR, and
LARRY J. HUME, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011704
Application 10/609,828

2
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-4, 6-12, 16, and 18-20. We have jurisdiction under 35 U.S.C.
§ 6(b).

Exemplary Claims
Exemplary claims 1 and 8 under appeal read as follows (emphasis
added):
Claim 1. A computer system comprising:
a central processing unit (CPU) to execute trusted software;
a chipset, coupled to the CPU via a first interface, including a
protected register, the protected register accessible only through cycles in a
special format, the chipset to respond to a cycle in the special format from
the trusted software to receive matrix data by forwarding the cycle to a
second interface; and
a micro-controller, coupled to the chipset via the second interface, to
respond to the cycle on the second interface by entering a trusted mode in
which the matrix data is transmitted only to the protected register.

Claim 8. The computer system of claim 1 wherein the second
interface is a low-pin count (LPC) interface.

Appeal 2010-011704
Application 10/609,828

3
Rejections
The Examiner rejected claims 1-4, 6, 7, 9-12, 16, and 18-20 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Angelo
(US 5,748,888) and Testa (US 5,265,218).1
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Angelo, Testa, and Wu (US
2003/0078984 Al). 2
Appellant’s Contentions 3
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
It is respectfully argued that a prima facie case of
obviousness has not been presented due to the lack of an
articulated reason why a person of ordinary skill in the art
would have combined the prior art element in the manner
claimed.
(App. Br. 11)(emphasis added).

1 Separate patentability is not argued for claims 2-4, 6, 7, 9-12, 16, and 18-
20. Except for our ultimate decision, these claims are not discussed further
herein.
2 The patentability of dependent claim 8 rejected under 103(a) is not
separately argued from that of its base claim 1 rejected on a separate basis
under 103(a). Except for our ultimate decision, claim 8 is not discussed
further herein.
3 In the Reply Brief, Appellant presents new arguments against the rejection.
These new arguments have not been considered because Appellant does not
explain what “good cause” there might be to consider these new arguments.
On this record, Appellant’s new arguments are belated. See Ex parte Borden,
93 USPQ2d 1473, 1474 (BPAI 2010)(Informative)(“The reply brief is not an
opportunity to make arguments that could have been made during
prosecution, but were not. Nor is the reply brief an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner's rejections, but were not.”).
Appeal 2010-011704
Application 10/609,828

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2. Appellant further contends that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
[A]ssuming for the sake of argument that “to relieve the
controller of service overhead associating with the accessing
functions and to permit a highly functional bus to be connected
to the computer system” may be the motivation for the bus
architecture of Testa, Testa does not describe is as being the
motivation for special cycles. Therefore, there is no motivation
to combine the special cycles of Testa with Angelo.
(App. Br. 11)(emphasis added).
Issue on Appeal
Did the Examiner err in rejecting claims 1-4, 6-12, 16, and 18-20 as
being obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
We disagree with Appellant’s conclusions as to all rejections. Except
as noted below, we adopt as our own (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken and (2) the
reasons set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief. We concur with the conclusions reached by the
Examiner. We highlight the following arguments for emphasis.
As to Appellant’s above contention 1, we disagree. Appellant’s
statement that there is a “lack of an articulated reason” is without merit as
the Examiner provided more than four pages explaining their rejection of
claim 1. (Final Rej. 4-8). Further, Appellant then argues (see contention 2)
the details of the Examiner articulated reasoning which Appellant had just
contended was lacking.
Appeal 2010-011704
Application 10/609,828

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As to Appellant’s above contention 2, we disagree. Contrary to
Appellant’s argument, the special cycles of Testa are a feature of the bus
architecture of Testa. Therefore, the motivation to use the bus architecture is
the motivation to use the special cycles. Appellant is mistaken in concluding
that “there is no motivation to combine the special cycles of Testa with
Angelo.”

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-4, 6-12, 16, and
18-20 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-4, 6-12, 16, and 18-20 are not patentable.

DECISION
The Examiner’s rejections of claims 1-4, 6-12, 16, and 18-20 are
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).

AFFIRMED

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