T 0227/21 (Device configuration/HEWLETT-PACKARD) 14-03-2023

1. The main request is based on the main request considered in the decision under appeal and was amended only to include reference signs. The board therefore has no objection to its admission into the appeal proceedings under Article 12(4) RPBA 2020.

2. The invention as defined by claim 1

2.1 Claim 1 is directed to a computing system comprising a device, a power circuit and a memory.

The power circuit is arranged to transmit standby power to the device.

The memory is associated with the device and is arranged to maintain configuration data.

The device includes an internal register which can be programmed with a value "corresponding to the configuration data, wherein the value indicates a functionality of a hardware component associated with the register".

2.2 The device is arranged to process the configuration data from the memory and configure itself based on the configuration data once it receives the standby power and prior to a CPU of the computing system being powered on.

3. Novelty over document D1

3.1 Document D1 relates to a mechanism for allowing a computing device to switch between operational contexts with minimal delay, computing resources and power (page 2, lines 1 to 4). An example of such a switch is a switch from one operating system to another operating system (page 1, lines 23 to 26).

3.2 The proposed mechanism involves the use of a low power state such as the ACPI "Standby or S3 sleep state" (page 3, lines 2 to 4; page 4, lines 12 and 13).

To switch operational context, the user closes the lid of a laptop or presses a hot key (page 5, lines 25 to 29; Figure 2, step 202). In response, an "OS switch flag" is set, and the S3 state is triggered (page 5, lines 31 and 32; Figure 2, steps 204 and 206).

When the computing device wakes up from the S3 state, it determines on the basis of the OS switch flag whether the OS is to be switched (page 5, lines 9 to 12; Figure 1, step 112). If not, a normal resume from the standby or S3 state is performed (page 5, lines 12 to 14; Figure 1, step 114). If the OS is to be switched, another OS is awakened or booted up (page 5, lines 15 to 24; Figure 1, steps 116 to 126).

3.3 The examining division referred to page 6, lines 9 to 15, for a disclosure of the features "a memory associated with the device to maintain configuration data" and "a register internal to the device to program a value corresponding to the configuration data".

The cited passage discloses that, when switching to the S3 state, the "S3 registers are saved to memory (i.e., RAM)". Hence, the examining division considered an S3 register, its value, and the RAM memory to correspond to the internal register, configuration data, and the memory to maintain configuration data of the claim.

3.4 According to the examining division, the claim features specifying that the device is arranged to process the configuration data from the memory and configure itself based on the configuration data once it receives the standby power and prior to a CPU of the computing system being powered on were disclosed on page 8, lines 22 to 33, and page 9, lines 6 to 13, and in Figure 7.

3.4.1 More specifically, for the feature "prior to powering on a CPU of the computing system", the examining division referred to page 8, lines 22 to 33, and the "NO" branch in step 704 of Figure 7, and argued that CPUs were not powered on in the S3 state in order to save energy.

Since the "NO" branch of step 704 in Figure 7 leads to step 706 and refers to the case where the computing device was powered on rather than awoken from the S3 state, the board is unsure whether the examining division indeed intended to refer to the "NO" branch or made a mistake.

Moreover, the passage on page 9, lines 1 to 5, explains that process 700 including step 704 "may be" implemented by the BIOS, which implies that the CPU, which executes the BIOS, at this point has already been powered on. Document D1 does not disclose any alternative implementation in which process 700 is carried out before a CPU is powered on.

3.4.2 The examining division argued that page 9, lines 6 to 9, together with steps 704, 706 and 720 of Figure 7 disclosed "(the device to ...) process the configuration data from the memory once receiving the standby power".

The board is again unsure why the examining division referred to steps 704, 706 and 720, none of which relate to reading out the content of the "S3 registers" from RAM. Those registers are read out either in the "Normal Resume Flow" step 724 (if no OS switch takes place) or in the "Save Context and Jump to Alternate OS Resume Vector" step 730 (if an OS switch is executed). The latter is further illustrated in Figure 5 and described on page 7, lines 8 to 12.

In any event, neither the passage cited by the examining division nor any other passage of document D1 discloses that the device is arranged to read or process the configuration data once it starts receiving standby power. Presumably, the examining division considered that the device receives "standby power" in the S3 "standby" state, but that means that standby power was received already before the event that triggered the resumption from the S3 state.

3.4.3 Hence, document D1 does not disclose the claim features "prior to powering on a CPU of the computing system: process the configuration data from the memory once receiving the standby power; and configure itself based on the configuration data".

3.5 Point 14.5 of the reasons for the decision deals with the appellant's submissions explaining that none of documents D1, D2 and D3 disclosed performing the configuration of a device prior to powering on a CPU of the computing system.

3.5.1 The examining division argued that claim 1 did not specify which processing entity other than the CPUs of the computing system should read the configuration data from the internal register (the board understands: from the memory) and use it for configuring the device. The examining division acknowledged that such tasks could be carried out by separate service processors instead of the CPU, but noted that such additional processing entities were not specified in "the broad wording" of claim 1.

3.5.2 The board does not see - and the examining division did not explain - how the alleged lack of a specification in claim 1 of a non-CPU entity which processes the configuration data "prior to powering on a CPU of the computing system" could refute the appellant's analysis of documents D1, D2 and D3 showing that those documents do not disclose the claim features requiring that the device configures itself "prior to powering on a CPU of the computing system".

3.5.3 The examining division may have considered these claim features to be not just broad but also unclear. However, for the purpose of assessing novelty, unclear features normally cannot be ignored but have to be interpreted. The examining division in fact acknowledged that the configuration could be carried out by a separate service processor, which means that the features cannot be discarded as being devoid of technical meaning.

3.5.4 Moreover, the board notes that claim 1 states that "the device" processes the configuration data. According to paragraph [0014] of the published application, the computing system 102 may include a CPU in addition to the device 108 and the power circuit 104. According to paragraph [0018], the device 108 is used in addition to the CPU on the motherboard of the computing system 102 and "may operate as an auxiliary processor while the CPU operates as the main processing unit".

Hence, claim 1, at least when interpreted in the light of the description, does specify the non-CPU entity which processes the configuration data: it is the device itself.

3.6 In sum, the board agrees with the appellant's argumentation in its statement of grounds of appeal in respect of novelty over document D1 and concludes that the subject-matter of independent system claim 1 and of the corresponding independent method claim 8 is new over document D1.

3.7 For independent claim 4, see point 5.4 below.

4. Novelty over documents D2 and D3

4.1 In its decision, the examining division stated that the subject-matter of claim 1 also lacked novelty over either of documents D2 and D3 because "both teach the concept of preserving a state in configuration variables when entering or leaving a standby state".

Since this argument is unsuitable to explain why each of documents D2 and D3 anticipates all the features of claim 1 in combination, these objections are insufficiently reasoned.

4.2 Moreover, no reasoned novelty or inventive-step objection based on either of documents D2 and D3 has been raised during the first-instance proceedings.

5. Remittal for further prosecution

5.1 Since the examining division's novelty objection was based on an incorrect interpretation of claim 1 of the main request, the board has doubt that document D1 is a suitable starting point for assessing inventive step.

5.2 In view of the appellant's argument that documents D2 and D3 (as well as D1) did not disclose performing the configuration of a device prior to powering on a CPU of the computing system and the examining division's treatment of this argument in point 14.5 of reasons for its decision (see point 3.5 above), the same might apply to documents D2 and D3.

5.3 Although the examining division did not raise any clarity objections against independent claim 1 of the main request, point 14.5 of the reasons for its decision suggests that it may have considered certain aspects of claim 1 to be unclear.

In addition, the board also has some prima facie doubts in respect of the clarity of claim 1 as currently worded, in particular as to how the "CPU of the computing system" relates to the "device".

5.4 Independent claim 4 of the main request is directed to a "non-transitory storage medium encoded with instructions executable by a processor of a computing system", including instructions to "configure the device ... prior to powering on a CPU of the computing system".

This claim wording raises, at least prima facie, the question how the processor can execute instructions to configure a device "prior to powering on a CPU of the computing system". This issue may require further investigation under Article 84 EPC.

5.5 Since the primary object of the appeal proceedings is to review the decision under appeal in a judicial manner (Article 12(2) RPBA 2020), in these circumstances special reasons within the meaning of Article 11 RPBA 2020 present themselves for remitting the case for further prosecution (see decisions T 1966/16, Reasons 2.2; and T 731/17, Reasons 7.2 and 7.3).

The case is therefore to be remitted to the examining division for further prosecution on the basis of the main request (Article 111(1) EPC).

5.6 Since the decision under appeal does not contain sufficient reasoning with respect to its objections based on documents D2 and D3, it fails to comply with the requirement that the written decision be reasoned (Rule 111(2) EPC).

However, the novelty objection based on document D1 is reasoned (even if not convincingly), and a lack of novelty over a single document is sufficient to refuse an application. The board therefore does not consider that the (partial) violation of Rule 111(2) EPC justifies the reimbursement of the appeal fee under Rule 103(1)(a) EPC.