INTEL CORPORATION

Patent Trials and Appeals Board

Feb 25, 2022

2021000021 (P.T.A.B. Feb. 25, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/396,014 12/30/2016 MURUGASAMY K. NACHIMUTHU P108837 3592 120376 7590 02/25/2022 Compass IP Law PC 4804 NW Bethany Blvd, Ste. I-2 #237 Portland, OR 97229 EXAMINER HUDA, MOHAMMED NURUL ART UNIT PAPER NUMBER 2191 NOTIFICATION DATE DELIVERY MODE 02/25/2022 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): admin@compassiplaw.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MURUGASAMY K. NACHIMUTHU, MOHAN J. KUMAR, and VASUDEVAN SRINIVASAN ____________ Appeal 2021-000021 Application 15/396,014 Technology Center 2100 ____________ Before CAROLYN D. THOMAS, JAMES B. ARPIN, and MICHAEL J. ENGLE, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-24. See Claims App. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Intel Corporation. Appeal Br. 2. Appeal 2021-000021 Application 15/396,014 2 The present invention relates generally to determining an access level of operation based on an indication received from a management controller. See Spec. Abstr. Claim 1, reproduced below with disputed limitations emphasized, is representative: 1. An apparatus, comprising: processing circuitry; memory storing instructions operable on the processing circuitry, the instructions, when executed, cause the processing circuitry to: determine an access level of operation based on an indication received from a pod management controller; and enable or disable a firmware update capability for a firmware device based on the access level of operation, the firmware update capability to change firmware for the firmware device. REFERENCES The references relied upon by the Examiner are: Name Reference Date Hormuth US 2013/0325998 A1 Dec. 5, 2013 Nguyen US 2017/0199746 A1 July 13, 2017 REJECTIONS R1. Claims 1-11 and 13-23 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Nguyen. Final Act. 2-17. R2. Claims 12 and 24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Nguyen and Hormuth. Final Act. 17- 19. We review the appealed rejections for error based upon the issues Appeal 2021-000021 Application 15/396,014 3 identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). ANALYSIS Rejection under § 102 Claims 1-11 and 13-23 Appellant contends that because the Examiner is relying on Nguyen’s “processor 104” to teach the claimed “processing circuitry” (see Final Act. 3), Appellant contends that “[r]egardless of whether Nguyen teaches that the ‘management controller 122’ has such a feature, [i.e., determining an access level of operation,] the [E]xaminer did not explain how the ‘processor 104’ of Nguyen might have such a feature.” Appeal Br. 7. Similarly, Appellant contends that the Examiner “did not explain how the ‘processor 104’ of Nguyen updates the system firmware 222” based on an indication received. Id. Appellant also contends that “[e]ven if, arguendo, the ‘management controller 122’ ‘determines an access level of operation,’ the [E]xaminer did not establish that it does so ‘based on an indication received from a pod management controller,’ as recited in claim 1.” Id. at 8. In other words, Appellant contends that the Examiner does not show that Nguyen discloses “determine an access level of operation based on an indication received from a pod management controller,” as set forth in the claims because the Examiner does not clearly show that processor 104 nor management controller 122 receives this indication. In response, the Examiner finds that “[t]he management controller 122 . . . receives system health and status information from system resources. . . .’ which inherently teaches the claim 1 feature ‘determine an Appeal 2021-000021 Application 15/396,014 4 access level of operation based on an indication received from a pod management controller.’” Ans. 7. We disagree with the Examiner. Claim 1 requires the processing circuitry to “determine an access level . . . based on an indication received from a . . . controller.” See claim 1; see also claims 8, 13, and 20. Because the Examiner equates Nguyen’s processor 104 to the recited processing circuitry (see Final Act. 3), it is Nguyen’s processor 104 that must receive an indication, and use this indication to determine an access level. The Examiner’s findings fail to demonstrate this requirement. Additionally, even if we interpret Nguyen’s management controller 122 as the recited processing circuitry, the Examiner merely shows that controller 122 “receives system health and status information from system resources.” Nguyen ¶ 24. However, the Examiner does not show how this health and status information is an indication that is used to determine an access level, i.e., there is no nexus between the received health/status information and determining access privileges. Therefore, regarding the Examiner’s inherency conclusion, it is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted). When relying upon a theory of inherency, the Examiner must provide a basis in fact and/or technical reasoning to reasonably support the Examiner’s determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. Appeal 2021-000021 Application 15/396,014 5 Ex parte Levy, 17 USPQ2d 1461, 1463-64 (BPAI 1990). Here, the Examiner does not provide sufficient factual findings to support the conclusion that access determinations necessarily flows from receiving health/status information. Therefore, we disagree with the Examiner’s finding that Nguyen anticipates the claimed invention, as recited in each of the independent claims 1, 8, 13, and 20. Accordingly, we do not sustain the Examiner’s anticipation rejection of claims 1-11 and 13-23. Rejection under § 103 Claims 12 and 24 The Examiner has not found any of the other references of record, i.e., Hormuth, teach the aforementioned limitation missing from the independent claims. Because we agree with at least one of the arguments advanced by Appellant, the issue addressed above is dispositive regarding our reversal, and we do not reach the merits of Appellant’s other arguments. Accordingly, we do not sustain the Examiner’s obviousness rejection of dependent claims 12 and 24. CONCLUSION The Examiner’s rejection of claims 1-11 and 13-23 as being anticipated under 35 U.S.C. § 102 is reversed. The Examiner’s rejection of claims 12 and 24 as being unpatentable under 35 U.S.C. § 103 is reversed. Appeal 2021-000021 Application 15/396,014 6 In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-11, 13-23 102 Nguyen 1-11, 13-23 12, 24 103 Nguyen, Hormuth 12, 24 Overall Outcome 1-24 REVERSED