Ex Parte Wei et al

Patent Trial and Appeal Board

Feb 15, 2013

11048292 (P.T.A.B. Feb. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DONG WEI and JERRY HUCK
____________________

Appeal 2010-006885
Application 11/048,292
Technology Center 2100
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Before RICHARD E. SCHAFER, HUNG H. BUI, and LYNNE E.
PETTIGREW, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants
1
seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejections of claims 1-21. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
2

1
Real Party in Interest is Hewlett-Packard Development Company,
L.P.
2
Our decision refers to Appellants’ Appeal Brief filed July 15, 2009
(“App. Br.”); Reply Brief filed December 29, 2009 (“Reply Br.”);
Examiner’s Answer mailed October 30, 2009; Final Office Action mailed
March 19, 2009 (“FOA”); and the original Specification filed January 31,
2005 (“Spec.”).
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STATEMENT OF THE CASE
Appellants’ Invention
According to Appellants, their invention relates to a computer system
200, shown in FIG. 2, including firmware 210 and an operating system (OS)
240 and, more particularly, to a method for allowing one part of the
firmware 220 written in a language that is not native to the computer system
(e.g., advanced configuration and power interface (ACPI)
3
machine
language (AML) code) to communicate with another part of the firmware
230 written in a language that is native to the computer system (e.g., BIOS,
system abstraction layer (SAL), or extensible firmware interface (EFI)
4
).
Spec. 2:4-10, 6:1-5, and Abstract.

3
Advanced Configuration and Power Interface (ACPI) Specification
provides an open standard for device configuration and power management
by an operating system (OS). See ACPI Official website at
(http://www.acpi.info/DOWNLOADS/ACPIspec50.pdf).
4
Extensible Firmware Interface (EFI) is a specification that defines a
software interface between an operating system (OS) and platform firmware.
EFI is meant as a replacement for the Basic Input/Output System (BIOS)
firmware interface, present in all personal computers. See EFT Official
website at (http://www.uefi.org).
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FIG. 2 of Appellants’ disclosure is reproduced below:

FIG. 2 illustrates a computer system including firmware in native
language and non-language.
As shown in FIG. 2, code to call procedure (CCP) 224 written in a
non-native language (AML code) is interpreted by an interpreter 244
associated with an operating system (OS) to invoke a procedure 232 written
in a native language (BIOS, SAL, or EFI), via a call back routine 242. Id.
6:24-27, 7:27-30.
Claims on Appeal
Claims 1, 8, and 15 are independent. Claim 1 is representative of the
invention, as reproduced below with disputed limitations emphasized:

1. A method of using code that is written in a non-
native programming language to invoke a procedure that is
written in a native programming language, the method
comprising:

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creating the code to call the procedure in a manner that
cooperates with an operating system that the code executes on,
wherein the code is written in the programming language that is
not native to the computer system and the procedure is written
in the programming language that is native to the computer
system, and wherein the code and the procedure reside at the
computer system's firmware; and

enabling the execution of the code to call the procedure
through a call back routine by transmitting the code to an
interpreter that is enabled to interpret code written in the
programming language that is not native, wherein the
interpreter is associated with the operating system, wherein the
code invokes the procedure through the call back routine as a
result of the code being interpreted without requiring the call
back routine to be interpreted.

Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hills US 2003/0163599 A1 Aug. 28, 2003

Examiner’s Rejection
Claims 1-21 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Hills. Ans. 3-7.

I. ISSUE
Has the Examiner erred in rejecting claims 1-21 under 35 U.S.C.
§ 102(b) by finding that Hills discloses all the claim limitations as recited in
independent claim 1, 8, and 15? App. Br. 8-13; Reply Br. 1-2.

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III. ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
We disagree with Appellants’ contentions. 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 Appellants’ Appeal Brief. We also
concur with the conclusions reached by the Examiner. We further highlight
and address specific findings and arguments for emphasis as follows.

Independent Claims 1, 8, and 15
Appellants contend that they:
do not understand Hills to teach, among other things “... the
procedure is written in the programming language that is native
to the computer system ... the procedure resides at the computer
system’s firmware ... the interpreter is associated with the
operating system ... without requiring the call back routine to be
interpreted,”
as recited in independent claims 1, 8, and 15. App. Br. 8. Appellants further
argue the differences between Appellants’ independent claims 1, 8, and 15
relative to Hills as follows:
First, referring to Figure 3, Hills' SMBus driver resides
in Hills' operating system instead of in Hills' firmware,
therefore, Hills does not teach " ... the procedure reside at the
computer system's firmware." Second, Appellants were not
able to find a statement in Hills as to what language Hills'
SMBus driver is written in. Therefore, Appellants do not
understand Hills to teach "the procedure is written in the
programming language that is native to the computer system."
Second, Hills' Figure 4 depicts Hills' AML interpreter 430 to be
outside of Hills' operating system 410. Therefore, Appellants
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do not understand Hills to teach "the interpreter is associated
with the operating system." Third, all of Hill's _Qxx method,
AML event handler, and read and write access methods are
interpreted by Hill's AML Interpret, which is outside of Hill's
operating system 410 (Figure 4). Therefore, none of Hills'_
Qxx method, AML event handler, or read and write access
methods teach Appellant's code that executes on an operating
system. Fourth, since Appellants understand Hills' AML
interpreter to interprets (sic) Hills' AML event handler as well
as Hills' read/write access methods, Appellants do not
understand Hills to teach "without requiring the call back
routine to be interpreted."

App. Br. 11 (emphasis added).

At the outset, we note that the Examiner has made extensive specific
fact findings with respect to each of the argued claims. See FOA. 2-5; Ans.
3-5. In response thereto, Appellants simply assert that Hills does not teach
features of Appellants’ independent claims 1, 8, and 15. App. Br. 8.
Appellants do not contest the Examiner’s factual findings regarding Hills.
Nor do Appellants present any arguments to explain why the Examiner’s
factual findings are in error. As such, we will not review those uncontested
aspects of the rejection. See App. Br. passim; see also Ex Parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (the BPAI “reviews the
obviousness rejection[s] for error based upon the issues identified by
appellant, and in light of the arguments and evidence produced thereon,” and
treats arguments not made as waived). See, e.g., Ex parte Cabral, No. 2010-
001572, 2012 WL 683718, at *3 (BPAI 2012) (non-precedential), and In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
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brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”).
Regarding the alleged differences between Appellants’ independent
claims 1, 8, and 15 relative to Hills, we find none of Appellants’ arguments
persuasive to demonstrate reversible error in the Examiner’s position. See In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
First, and as correctly found by the Examiner, Hills discloses an ACPI
specification that defines an interface between an operating system (OS) and
an ACPI device for device configuration and power management, and that
BIOS native code and ACPI AML code are both stored in a computer
system’s flash BIOS. FOA 5-6; Ans. 6-7; see also Hills ¶0018-¶0022. In
considering Hills, it is proper to take into account not only specific teachings
of Hills but also the inferences which one skilled in the art would reasonably
be expected to draw therefrom. See In re Preda, 401 F.2d 825, 826-27
(CCPA 1968). In this regard, an inference can be drawn from Hills that the
computer system’s flash BIOS corresponds to Appellants’ claimed
“firmware”, and that the BIOS native code corresponds to Appellants’
claimed “code written in a programming language that is native to the
computer system” while the AML code corresponds to Appellants’ claimed
“code written in a programming language that is not native to the computer
system.” More importantly, an inference can also be drawn from Hills that
the BIOS native code is used by the BIOS for communication with system
interfaces at boot up time while the AML code is stored into RAM by BIOS
start up code to be interpreted by an AML interpreter to enable the OS to
communicate with the system interfaces. FOA 6; Ans. 7. As such, we agree
with the Examiner’s findings that the AML code and the procedure invoked
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by such an AML code reside at the computer system’s flash BIOS (system
firmware).
Second, and as correctly found by the Examiner, Hills describes that
the AML code in the BIOS can invoke device-specific operations, via ACPI
operation regions, that depend on the configuration of the driver and the host
system. FOA 6; Ans. 7; see also Hills ¶0020. Since BIOS is written in a
programming language that is native to the computer system, any device
specific operation (or procedure) invoked by an AML code in such BIOS is
also considered to be written in the same native language.
5
FOA 6; Ans. 7.
Third, and contrary to Appellants’ arguments, FIG. 4 of Hills does
depict that Hills’ AML interpreter 430 is associated with Hills’ operating
system (OS) 410 in order to interpret and execute AML control methods.
Ans. 7-8.
FIG. 4 of Hills is reproduced below.

5
See Appellants’ Admitted Prior Art in FIG. 1, Specification 1:15-24
where BIOS is described as an example firmware code written in a language
that is native to the computer system, and AML code is described as an
example firmware code written in a language that is not native to the
computer system.

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FIG. 4 illustrates a control flow between OS and AML interpreter.
As shown in FIG. 4, the AML interpreter 430 is located outside of the
operating system (OS); however, we agree with the Examiner’s findings
that: (1) the AML interpreter 430 interprets the AML code to enable the
operating system (OS) to communicate with the ACPI device and that (2)
such an AML interpreter 430 is still associated with the operating system
(OS) and can execute on such an operating system (OS) in the manner as
recited in Appellants’ claims 1, 8, and 15. Ans. 7-8.
Fourth, we agree with the Examiner’s findings that Appellants’
claimed “call back routine” can encompass Hills’ “operation region handler
in the function driver” and that, absent of evidence to the contrary, the
handler in Hills is not required to be interpreted by the AML interpreter 430.
Ans. 8-9.
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For the reasons set forth above, Appellants have not persuaded us of
error in the Examiner’s rejection of independent claims 1, 8, and 15.
Accordingly, we sustain the Examiner’s rejection of claims 1, 8, and 15
under 35 U.S.C. § 102(b) as being anticipated by Hills.

Dependent Claims 2-7, 9-14, and 16-21
Appellants present no arguments for patentability of these claims
separately from claims 1, 8, and 15. App. Br. 13. As such, claims 2-7, 9-14,
and 16-21 stand or fall together with independent claims 1, 8, and 15. See
37 C.F.R. § 41.37(c)(1)(vii) (stating that “the failure of Appellant to
separately argue claims which Appellant has grouped together shall
constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately”). Therefore, we also sustain
the Examiner’s rejection of claims 2-7, 9-14, and 16-21 under 35 U.S.C.
§ 102(b) as being anticipated by Hills.

V. CONCLUSION
On the record before us, we conclude that the Examiner has not erred
in rejecting claims 1-21 under 35 U.S.C. § 102(b).

VI. DECISION
We affirm the Examiner’s final rejection of claims 1-21.
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) (2011).

AFFIRMED