Ex Parte Wisor

Board of Patent Appeals and Interferences

Mar 17, 2004

08974971 (B.P.A.I. Mar. 17, 2004)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL T. WISOR
____________
Appeal No. 2002-1319
Application No. 08/974,971
____________
ON BRIEF
____________
Before BARRETT, BARRY, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 23-48, which are all of the
claims pending in this application.
BACKGROUND
Appellant's invention relates to a non-volatile memory
system having a programmably selectable boot code section. An
understanding of the invention can be derived from a reading of
exemplary claim 23, which is reproduced as follows:
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Application No. 08/974,971
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23. A non-volatile memory device, comprising:
a memory array comprising a plurality of memory blocks,
wherein a boot code section of the memory array is configured to
store boot code;
a storage unit, wherein a portion of the storage unit is
configured to store information indicating a size of the boot
code section; and
a control unit configured to control storage of data within
and retrieval of date from the memory array, wherein the control
unit is further configured to vary the size of the boot code
section by modifying the information indicating the size of the
boot code section.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Maher et al. 5,375,209 Dec. 20, 1994
(Maher)
Boehmer et al. 5,892,927 Apr. 6, 1999
(Boehmer) (filed Jan. 8, 1997)
Oh 5,961,611 Oct. 5, 1999
(filed May 30, 1997)
DeRoo et al. 6,009,495 Dec. 28, 1999
(DeRoo) (filed Nov. 8, 1995)
Claims 23-28 and 30-41 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by DeRoo.
Claims 23-41 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over DeRoo in view of either Oh or Boehmer.
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Claims 42-48 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Maher in view of DeRoo and either Oh or
Boehmer.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellant regarding the above-noted rejections,
we make reference to the examiner's answer (Paper No. 19, mailed
October 2, 2001) for the examiner's complete reasoning in support
of the rejections, and to appellant’s brief (Paper No. 18, filed
July 16, 2001) and reply brief (Paper No. 20, filed November 27,
2001) for appellant’s arguments thereagainst. Only those
arguments actually made by appellants have been considered in
this decision. Arguments which appellants could have made but
chose not to make in the brief have not been considered. See 37
CFR 1.192(a).
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of anticipation and obviousness
relied upon by the examiner as support for the rejections. We
have, likewise, reviewed and taken into consideration, in
reaching our decision, appellant's arguments set forth in the
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Application No. 08/974,971
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briefs along with the examiner's rationale in support of the
rejections and arguments in rebuttal set forth in the examiner's
answer.
Upon consideration of the record before us, we affirm-in-
part. We begin with the rejection of claims 23-28 and 30-41
under 35 U.S.C. § 102(e) as being anticipated by DeRoo.
To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or
inherently. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997).
We turn to claim 23. The examiner sets forth reasons
(answer, pages 4-6) as to why the examiner considers claim 23 to
be anticipated by DeRoo. Appellant assert (brief, page 6) that
DeRoo fails to disclose a non-volatile memory device where a boot
code section of the memory array is configured to store boot
code, as recited in claim 23, because common memory device 704
does not have built in boot block protection. Instead, DeRoo
uses a separate device (HUI 700) to "emulate boot block
protection." Appellant further argues (id.) that HUI 700 is not
“a control unit configured to control storage of data within and
retrieval of data from the memory array, wherein the control unit
is further configured to vary the size of the boot code section
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by modifying the information indicating the size of the boot code
section,” as recited in independent claim 23. Appellant
additionally asserts (brief, pages 6 and 7) that DeRoo teaches
that the boot block size is configured in hardware with either
pull-up or pull-down resistors, and that since HUI 700 is
hardware strapped, it does not allow software reconfiguration of
the protected memory; i.e., that the software is disabled from
writing to define non-volatile sectors. Appellant asserts
(brief, page 7) that “[t]hus, DeRoo clearly does not disclose a
control unit that is configured to vary the size of the boot code
section by modifying information indicating the size of the boot
code section.”
We begin our analysis with a determination of claim
construction. Analysis of whether a claim is patentable over the
prior art begins with a determination of the scope of the claim.
The properly interpreted claim must then be compared with the
prior art. Claim interpretation must begin with the language of
the claim itself. See Smithkline Diagnostics, Inc. v. Helena
Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472 (Fed.
Cir. 1988). Accordingly, we will initially direct our attention
to appellant's claim 23 to derive an understanding of the scope
and content thereof.
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Before turning to the proper construction of the claim, it
is important to review some basic principles of claim
construction. First, and most important, the language of the
claim defines the scope of the protected invention. Yale Lock
Mfg. Co. v. Greenleaf, 117 U.S. 554, 559 (1886) ("The scope of
letters patent must be limited to the invention covered by the
claim, and while the claim may be illustrated it cannot be
enlarged by language used in other parts of the specification.");
Autogiro Co. of Am. v. United States, 384 F.2d 391, 396, 155 USPQ
697, 701 (Ct. Cl. 1967) ("Courts can neither broaden nor narrow
the claims to give the patentee something different than what he
has set forth [in the claim]."). See also Continental Paper Bag
Co. v. Eastern Paper Bag Co., 210 U.S. 405, 419 (1908); Cimiotti
Unhairing Co. v. American Furuya Ref. Co., 198 U.S. 399, 410
(1905).
Furthermore, the general claim construction principle that
limitations found only in the specification of a patent or patent
application should not be imported or read into a claim must be
followed. See In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15
(CCPA 1978). One must be careful not to confuse impermissible
imputing of limitations from the specification into a claim with
the proper reference to the specification to determine the
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Application No. 08/974,971
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meaning of a particular word or phrase recited in a claim. See
E.I. Du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d
1430, 1433, 7 USPQ2d 1129, 1131 (Fed. Cir.), cert. denied, 488
U.S. 986 (1988).
What we are dealing with in this case is the construction of
the limitations recited in the appealed claims. As stated by the
court in In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,
1529 (Fed. Cir. 1998) "[t]he name of the game is the claim."
Claims will be given their broadest reasonable interpretation
consistent with the specification, and limitations appearing in
the specification are not to be read into the claims. In re
Etter, 756 F.2d 852, 858, 225 USPQ 1, 5 (Fed. Cir. 1985).
We find that the claim language “wherein the control unit is
further configured to vary the size of the boot code section by
modifying the information indicating the size of the boot code
section” of claim 23 is not specific as to whether software or
hardware is used to vary the size of the boot code section. Nor
does the language of the claim preclude the varying of the size
of the boot code through the use of hardware. Nor does the claim
preclude the use of hardware for modifying the information
indicating the size of the boot code section. With this
interpretation of the claim in mind, we turn to the teachings of
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DeRoo. DeRoo discloses (col. 2, lines 10-16) that the invention
relates to providing non-volatile memory sectors in conventional
memory devices. Specifically, DeRoo is directed to providing
non-volatile "boot block" sectors in an EEPROM. From this
disclosure of DeRoo, we find that DeRoo discloses providing boot
block sectors in a non-volatile EEPROM memory.
DeRoo further discloses (col. 2, lines 57-60) that boot
block sectored EEPROMS are also referred to as flash ROMS. DeRoo
recognizes (col. 2, lines 65-57) that these devices typically
have a predefined protected memory area size, which limits their
flexibility in some applications. It is an object of the
invention (col. 3, lines 20-22) that the size of the non-volatile
sectors be selectable and automatically programmed at power on.
In addition, in an embodiment where the system reset is
deasserted immediately after power on, the size of the protected
EEPROM area is sensed on special strapping option pins and
automatically configures the non-volatile sector. "This allows
the size of the protected area to be changed on the manufacturing
line as needed for different applications. Once configured to
protect a specific size and location in the non-volatile memory,
the invention prevents the write control signal to the memory to
be asserted when the address of the data access requested by the
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1 Human User Interface.
CPU is in the protected area of the memory. This has the effect
of preventing modification of the protected area by a sector
modification algorithm.” (Col. 3, lines 31-40.) From these
disclosures of DeRoo, we find that the size of the protected area
can be changed on the manufacturing line as needed, but that once
configured to protect a specific size and location in the non-
volatile memory, modification of the protected area by a sector
modification algorithm is prevented.
DeRoo further discloses (col. 76, Table LXVIII) under the
title of "HUI1 HARDWARE CONFIGURATION STRAPS REGISTER 1" a
listing of various boot block sizes ranging from 2K to 32K.
DeRoo further discloses (col. 87, lines 18-44) that:
The HUI 700 provides non-volatile sector protection
allowing a standard electrically erasable programmable
read-only memory (EEPROM) to be used as the common
memory device 704 and utilized as a functional
equivalent to a protected “boot block” memory device.
In effect, the HUI 700 acts as front-end to the common
memory device 704. As such, it captures protected
address ranges to block data writes. And, since the
HUI 700 is hardware strapped, it does not allow
software reconfiguration of memory protection.
Thus, as described below, where the programmable
memory provides for global erasure, the HUI 700
front-end hardware traps the command, rendering
it inoperable. Moreover, the software is completely
disabled from writing to define non-volatile sectors.
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In particular, the memory address bus FA[0:17]
is compared in a boot block protect decoder 2050
(FIGS. 25 and 26), part of the control logic 720,
with a predetermined address range forming the
protected boot block. The boot block size bit
HUICFG_1[0:3] and flash size bit HUICFG_1[7] may
be specified in a configuration register HUICFG_1[0:17]
to define the non-volatile sector. In order to block
writes to the protected sector, the output of the
comparator 2052 is ORED by way of an OR gate 2054
with a write enable signal WE to create a
non-volatile sector.
From this disclosure of DeRoo, we find that HUI 700
provides a non-volatile sector protection for an EEPROM to be
used as the common memory device (See figure 20), and that since
HUI 700 is hardware strapped, it does not allow software
reconfiguration of memory protection. Thus, the software is
disabled from writing to define non-volatile sectors. Memory
address bus FA[0:17] is compared in a boot block protection
decoder 2050 (figures 25 and 26) with a predetermined address
range forming the protected boot block. We further find that the
boot block size bit HUICFG_[0:3] may be specified in a
configuration register HUICFG_1[0:17] to define the non-volatile
sector (see figure 25).
DeRoo further discloses (col. 87, lines 46-49) that various
sector sizes are possible as illustrated in Table LXVIII, and
that several of the bits in the HUICFG_1[0:3,7] may be configured
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in hardware with either pull-up or pull-down resistors (not
shown) to provide any of the sizes shown in Table LXVIII. From
this disclosure of DeRoo, we find that sizes of the boot block
sector are configured in hardware using pull-up or pull-down
resistors.
DeRoo further discloses (col. 88, lines 1-5) that “[t]hus,
as described, the HUI 700 can be configured to emulate boot block
protection to enable memory device such as the common memory
device 704 which do not have built-in boot block protection
capability to be used for storage of the boot block protected
code non-volatile sector.” Although DeRoo discloses that memory
704 does not have built-in boot block protection, and that HUI
700 emulates boot block protection, we find from all of the
teachings of DeRoo provides boot block protection, irrespective
of whether it is emulated. Moreover, DeRoo discloses (col. 88,
lines 10-15) that the protected boot block range should start on
a 1 kilobyte memory boundary and finish at the top of the memory
as shown in figure 27. The size, as defined in Table LXVIII, and
therefore the starting address of the protected range, can be
determined from the hardware configuration register HUICFG_[0:7].
The remaining memory space is used for SCP (system control
processor) non-volatile areas and BIOS.
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From this disclosure of DeRoo, we find that the protected
boot block size should start at the 1K memory boundary and finish
at the top of the memory boundary.
DeRoo further discloses (col. 92, lines 15-30) that the
protection of the critical information can be turned on or off,
by latching the value of pin 6 of HUI 700, to allow a system
designer to elect to use the present invention or not without
changing the design of the HUI 700 and preventing the software
control of this feature. DeRoo additionally discloses (col. 100,
lines 47-50) "means for programmably disabling said preventing
means, said disabling means including means for allowing reads
and writes to said protected address range in said memory
device." Similar language can be found in col. 101, lines 29-31;
col. 103, lines 1-3; and col. 104, lines 4-7 and 35-37. From
these disclosures of DeRoo, we find that the protection of the
protected address range may be disabled, allowing for writing to
the protected address.
Turning back to claim 23, we find that the HUI 700 of DeRoo
is configured to vary the size of the boot code section by
modifying the information indicating the size of the boot code
section; i.e., if the boot block range starts at the 1K memory
boundary, and the user selects an 8K boot block size from the
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hardware configuration register 1 shown in Table LXVIII, the boot
block will take up the top 8K of space in memory 704. Although
the size of the boot block space will be configured in hardware,
it is still set by the user. Whether this is the size of the
protected area to be changed on the manufacturing line as needed
for different applications, or whether it is a change in size of
the boot block after disabling of the preventing means which
protects the non-volatile memory, in either instance, the
language "wherein the control unit is further configured to vary
the size of the boot code section by modifying the information
indicating the size of the boot code section" as recited in claim
23," is met by DeRoo. Although DeRoo discloses (col. 100, lines
65-67) that the boot block size is defined by hardware, claim 23
does not recite that the control unit is configured by software
to vary the size of the boot code section.
We are not persuaded by appellant's assertion that “[t]hus,
DeRoo clearly does not disclose a control unit the is configured
to vary the size of the boot code section by modifying
information indicating the size of the boot code section” because
the information regarding the boot code size, whether it is from
the 1K boundary or whether it is a selected configuration that is
changed upon disabling of the prevention means, the information
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indicating the size of the boot code section is modified.
Because DeRoo discloses that the memory address bus FA[0:17] is
compared with a predetermined address range forming the protected
boot block (col. 87, lines 34-37), we find that the size of the
boot code section is stored by DeRoo. In addition, because DeRoo
discloses (col. 87, lines 37-40) that the boot block size bit may
be specified in a configuration register, we additionally find
that the size of the boot code section is stored.
Nor are we persuaded by appellant's assertion (brief, page
7) that “[t]he Examiner contends that DeRoo nevertheless
anticipates the claimed invention if the Examiner includes the
mechanism used by DeRoo to modify the contents of the HUICFG_1
register to read on the claimed ‘control unit.’ However, the
DeRoo mechanism cannot be construed to read upon the claimed
control unit since the DeRoo mechanism is not part of the memory
device . . . ” because HUI 700 acts as front-end to the common
memory device 704 (col. 87, lines 22-24).
We find the examiner's assertion (answer, page 6) that "the
person or machine that would have been necessary to modify the
content of the HUICFG_1 register would have met the limitation of
the claim when the said person or machine is considered part of
the claimed 'control unit'" to be misstated, and consider the
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examiner's position to be that in the operation of HUI 700 of
DeRoo, the size of the boot code section is varied.
From all of the above, we find that DeRoo anticipates claim
23. Accordingly, the rejection of claim 23 under 35 U.S.C.
§ 102(e) is affirmed. As claims 24-28 and 30-41 stand or fall
together (brief, page 5) the rejection of claims 24-28 and 30-41
under 35 U.S.C. § 102(e) is affirmed.
We turn next to the rejection of claims 23-41 under 35
U.S.C. § 103(a) as being unpatentable over DeRoo in view of
either Oh or Boehmer. We begin with claims 23-28 and 30-41 as
claim 29 was not rejected under 35 U.S.C. § 102(e), supra, and
has been separately argued. As we found, supra, that claim 23 is
anticipated by DeRoo, we similarly find that claim 23 would have
obvious over DeRoo in view of Oh or Boehmer, as anticipation is
the epitome of obviousness. The Board may rely on one reference
alone in an obviousness rational without designating it as a new
ground of rejection. In re Bush, 296 F.2d 491, 496, 131 USPQ
263, 266-67 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2, 150
USPQ 441, 444 n.2 (CCPA 1966). Lack of novelty is the ultimate
of obviousness. See In re Fracalossi, 681 F.2d 792, 794, 215
USPQ 569, 571 (CCPA 1982). Accordingly, we find the reference to
Oh and Boehmer to be cumulative to DeRoo, and affirm the
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rejection of claims 23-28 and 30-41 under 35 U.S.C. § 103(a) as
being unpatentable over DeRoo in view of either of Oh or Boehmer.
We turn next to claim 29. The examiner's position is that
the references render the claims obvious and relies upon a
Doctrine of Equivalents analysis based upon the known interchange
ability between a jumper-based approach and a software approach
of configuring digital equipment (answer, page 7). The examiner
relies upon Boehmer for a teaching that a register may be
reprogrammed by the user by the use of jumpers or through
software. The examiner additionally relies upon OH for a
teaching of setting options in a configuration control register,
instead of the hardware jumper method, by means of a software
program (answer, pages 7 and 8). In the examiner's opinion, it
would have been obvious to use commands for the purpose of
modifying the contents of the HUICFG_1 register. Appellant's
assert (brief, page 11) that the prior art does not teach or
suggest that the control unit is configured to modify the
information in response to receiving a predeterminer sequence of
bus write cycles. We agree. As we found, supra, DeRoo teaches
modifying the boot code section information through the use of
hardware, using pull-up and pull-down resistors. We find no
teaching or suggestion in DeRoo, and none has been pointed to by
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the examiner, that would teach or suggest using a predetermined
sequence of write cycles to modify the size of the boot block
code section. We find that although Oh and Boehmer disclose the
interchange ability of using hardware and software for changing
options in a reconfiguration register (Boehmer) or a delay
compensation register (OH), that because DeRoo is directed to a
hardware-based approach to prevent reconfiguring the memory with
software, we agree with appellant (brief, page 11) that “DeRoo
purposefully uses the hardware-based approach so that the memory
cannot be reconfigured by software. Thus, DeRoo explicitly
teaches away from the Examiner’s proposed modification.
Modifying DeRoo to use a software-based approach would clearly
undermine DeRoo’s express purpose of preventing software
reconfiguration of the memory.” Accordingly, we find that the
examiner has failed to establish a prima facie case of
obviousness of claim 29. The rejection of claim 29 under 35
U.S.C. § 103(a) is therefore reversed.
We turn next to the rejection of claims 42-48 under 35
U.S.C. § 103(a) as unpatentable over Maher in view of DeRoo, and
further in view of Oh or Boehmer. We begin with claim 42. We
reverse the rejection of claim 42 for the following reasons.
Maher is relied upon to show the CPU, expansion bus adapter,
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video and disk controllers, memory bus and chip set logic. The
combined teachings of Maher, DeRoo, Oh, and Boehmer fail to teach
or suggest varying the size of the boot code section by modifying
the information stored in the boot section size field in response
to signals on the memory bus. As we found, supra, with respect
to claim 29, the combined teachings of DeRoo, Oh and Boehmer do
not teach or suggest that the size of the boot code section may
be modified in response to signals on the memory bus, but rather
is modified using the pull-up and pull-down resistors.
Accordingly, we find that the examiner has failed to establish a
prima facie case of obviousness of claim 42. The rejection of
claim 42, and claims 43-48, dependent therefrom, under 35 U.S.C.
§ 103(a) is therefore reversed.
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CONCLUSION
To summarize, the decision of the examiner to reject claims
23-28 and 30-41 under 35 U.S.C. § 102(e) is affirmed. The
decision of the examiner to reject claims 23-28 and 30-41 under
35 U.S.C. § 103(a) is affirmed. The decision of the examiner to
reject claims 29 and 42-48 under 35 U.S.C. § 103(a) is reversed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR § 1.136
(a).
AFFIRMED-IN-PART
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
SSL/kis
Appeal No. 2002-1319
Application No. 08/974,971
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B. NOEL KIVLIN
CONLEY, ROSE & TAYON, P.C.
P. O. BOX 398
AUSTIN, TX 78767-0398