Ex Parte Wen et al

Patent Trial and Appeal Board

Jun 3, 2013

10710097 (P.T.A.B. Jun. 3, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHIH-CHIANG WEN, YI-CHUAN CHEN, JENG-HORNG TSAI,
and PING-SHENG CHEN
____________

Appeal 2011-000751
Application 10/710,097
Technology Center 2100
____________

Before CAROLYN D. THOMAS, DENISE M. POTHIER, and
STACEY G. WHITE Administrative Patent Judges.

WHITE, Administrative Patent Judge.

DECISION ON APPEAL
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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3, 4, 6, 7, 9-14, and 24-31. Claims 2, 5, 8, and 15-23
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellants’ invention relates to an optical disc drive that downloads
operational firmware from an external host. (Spec. ¶ 0003). Claim 1 is
illustrative and is reproduced below (disputed limitation in italics):
1. An optical disc drive circuit comprising:
a storage medium;
a bus interface for communications with a host;
an interface unit electrically coupled to the bus interface for
receiving a first operational firmware from the host;
a control circuit electrically coupled to the interface unit for
transferring the first operational firmware to a volatile memory,
wherein the first operational firmware is not stored into the
storage medium;
a non-volatile memory distinct from the storage medium for
storing a second operational firmware; and
a microprocessor electrically coupled to the control circuit, the
volatile memory and the non-volatile memory;
wherein the microprocessor is configured to execute the first
operational firmware to control the control circuit to access the
storage medium; and
wherein, if the first operation firmware is not available, the
microprocessor is configured to execute the second operational
firmware to control the control circuit to access the storage
medium.

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The Rejections
1. Claims 1, 6, 7, 9-14, 24, and 27-31 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Scales (U.S. Pat. No. 5,535,355), Lewis
(U.S. Pub. No. 2003/0097552), and Hall (U.S. Pub. No.
2004/0122989).
2. Claims 3-4 and 25-26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Scales, Lewis, Hall, and Kamihara (U.S. Pub. No.
2002/0169904).
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants 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).

ISSUES
Appellants’ response to the Examiner’s positions presents the
following issues:
1) Did the Examiner err in finding that the cited art teaches “the first
operational firmware is not stored into the storage medium” as recited by
claim 1?
2) Did the Examiner err in concluding that Scales and Hall do not teach
away from each other?
ANALYSIS
We disagree with Appellants’ arguments and conclusions as to all
rejections. 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
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Appellants’ Appeal Brief. (see Ans. 4-24, 26-35) We also concur with the
conclusions reached by the Examiner and further highlight and address
specific findings and arguments for emphasis as follows.
Appellants argue that “[n]one of the cited prior art references teaches
the claimed feature ‘the first operational firmware is not stored into the
storage medium’, as is recited in independent claims 1, 7, 10, 24 and 28.”
(App. Br. 9) (emphasis in original). However, this argument is directly
contradicted by Appellants’ own brief which notes that “Hall teaches that the
first operational firmware is not stored in the storage medium.” (App. Br.
8-9) (emphasis in original); (see also Reply Br. 5) (“Hall does not store first
operational firmware in a storage medium (such as an optical disc or hard
disk).”) (emphasis in original). The Examiner relies on Hall to disclose a
device where firmware is received from a host and not permanently stored.
(Ans. 8, 27 (citing Hall ¶¶ 0007-8; Fig. 2)). We are not persuaded of error in
the Examiner’s finding that Hall teaches the disputed limitation.
In addition, we note that Appellants’ Reply Brief proffered some
additional arguments regarding the Lewis reference. (Reply Br. 4-5). “Any
bases for asserting error, whether factual or legal, that are not raised in the
principal brief are waived.” Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative); see also Optivus Tech., Inc. v. Ion Beam
Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by
an appellant in its opening brief . . . is waived.”) (citations and quotation
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marks omitted). Thus, any arguments regarding the Lewis reference are
waived.1
Appellants also argue that Hall and Scales teach away from each other
and as such, the references may not be properly combined. (App. Br. 6-7).
Appellants assert that Hall teaches downloading firmware on demand and
Scales teaches downloading firmware prior to receiving any commands.
(App. Br. 7). According to Appellants these differences would cause of one
ordinary skill in the art not to modify Scales to incorporate Hall’s on demand
firmware downloading scheme. (App. Br. 8). “A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellants
have not pointed us to evidence in either reference that would discourage
one of ordinary skill from combining the references in the manner set out by
the Examiner.
The Examiner provided the following rationale for combining the
older Scales reference and with the more recent Hall reference:
specifically, it would have been obvious to one having ordinary
skill in the art to modify the teachings of Scales where firmware
is downloaded from a host in advance as part of an update
procedure to further be able to provide the ability of
downloading necessary firmware to support additional
functions by only storing and running said firmware on the
RAM, without storing the firmware in any other storage device,
in the manner taught by Hall since doing so would provide the

1 In addition to being waived, the arguments are also unpersuasive. The
Examiner relied on Hall to teach the disputed limitation. (See Ans. 8).
Thus, Appellants’ argument regarding Lewis is inapposite.
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advantages of downloading the most up to date firmware, while
reducing storage requirements.

(Ans. 30). The mere fact that Scales and Hall each disclosed different ways
of downloading firmware is not sufficient to show teaching away. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“[T]he prior art’s mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternative because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed . . .”).
Appellants have not persuaded us of error in the Examiner’s
combination of Scales and Hall. Claims 6, 7, 9-14, 24, and 27-31 have not
been separately argued. App. Br. 6-9. Therefore, we sustain the Examiner’s
rejection of claims 1, 6, 7, 9-14, 24, and 27-31 under 35 U.S.C. § 103(a) as
unpatentable over Scales, Lewis, and Hall.
Appellants provided no additional arguments directed specifically to
claims 3-4 and 25-26, which stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Scales, Lewis, Hall, and Kamihara. Thus, the Appellants
have not persuaded us of error as to these claims and therefore, we sustain
the Examiner’s rejection of claims 3-4 and 25-26.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of claims 1, 3, 4, 6, 7, 9-14, and 24-31.

CONCLUSION
The Examiner did not err in rejecting claims 1, 6, 7, 9-14, 24, and 27-
31 under 35 U.S.C. § 103(a) as unpatentable over Scales, Lewis, and Hall.
We also find no error in the Examiner’s rejection of claims 3-4 and 25-26
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under 35 U.S.C. § 103(a) as unpatentable over Scales, Lewis, Hall, and
Kamihara.

DECISION
The Examiner’s decision rejecting claims 1, 3, 4, 6, 7, 9-14, and 24-31
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).

AFFIRMED

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