DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This office action is in response to communication filed on 8/28/2026.
The instant application having application No. 18/471,863 filed on September 21, 2023, has no priority data.
Status of the Claims
Claims 1, 5, 11, and 15 are amended, claim 20 is canceled, claims 3, 6-7 and 16-17 were previously canceled, claims 21-26 are added. Accordingly, claims 1-2, 4-5, 8-15, 18-19, and 21-26 are currently pending in the application.
Response to Amendment
(A). Regarding 35 U.S.C. § 101 rejection: The amended claims are still abstract idea without significantly more, the 101 rejections are maintained as set forth in the office action below.
(B). Regarding art rejection: In regard to pending claims Applicant’s arguments are not persuasive; further, Applicant's amendments necessitated new grounds of rejections presented in the following art rejection.
Examiner Notes
Examiner cites particular columns, paragraphs, figures and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Objections
Claims 23 and 26 are objected to because of the following informalities:
Claim 23, line 2, “that needs to present”, suggestion: -that needs to be present-.
Claim 26 has the same issue as claim 23 and is objected to for the same reason.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2, 4-5, 8-15, 18-19, and 21-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
With respect to claim 1, This claim is within at least one of the four categories of patent eligible subject matter as it is directed to an information handling system claim under Step 1.
Under Prong 1, Step 2A:
However, the limitation of claim 1,
“resolve
modifying a condition of […];”
as drafted, is functions that, under its broadest reasonable interpretation, recites the
abstract idea of a mental process. The limitation encompasses a human mind carrying
out the functions through observation, evaluation, judgment and /or opinion, or even
with the aid of pen and paper. e.g. human can manually resolve a dependency such as building a hand-off data block with platform specific override data. Thus, the claim limitation falls within the “Mental Processes” grouping of abstract ideas under Prong 1 Step 2A.
Under Prong 2, Step 2A:
The judicial exception is not integrated into a practical application. The claim recites the following additional elements
“receive a firmware update for the firmware component, wherein the firmware
update includes firmware update code for the element and a firmware configuration
profile (FCP) file, the FCP file having a setting metadata for the element and ;
update the firmware component in the memory device with the firmware update
code without rebooting the information handling system in response to resolving the dependency;
write a setting described by the setting metadata to a non-volatile memory
associated with the element; and
in response to both updating the firmware component and writing the setting,
reboot the information handling system.”
“An information handling system”, “a memory device”, “a processor” and “a firmware update module”.
Wherein the information handling system, the memory device, the processor and the firmware update module are recited at a high-level of generality (i.e. as a generic computer/software component) such that it amounts to no more than mere instructions to apply the judicial exception using a generic computer with software. Accordingly, these computer/software components do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The “receive …”, “update …”, and “write …” processes are insignificant extra-solution activities such as gathering and transmitting/storing data, according to MPEP 2106.05(g); thus, not indicative of an integration into a practical application. The “reboot the information handling system” is merely using a computer system to implement the identified abstract idea, it does not integrate the judicial exception into a practical application.
Under Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements, the information handling system, the memory device, the processor and the firmware update module are recited at a high-level of generality (i.e. as a generic computer/software component) such that it amounts to no more than mere instructions to apply the judicial exception using a generic computer with software. Accordingly, these computer/software components do not constitute an inventive concept. The “receive …”, “update …”, and “write …” processes are insignificant extra-solution activities such as gathering and transmitting/storing data which are recognized as well-understood, routine, and conventional activity, see MPEP § 2106.05(d)(II), Versata Dev. Group, Inc. v. SAP Am., Inc. for retrieving and storing data. Symantec for receiving and transmitting data. The “reboot the information handling system” is merely using a computer system to implement the identified abstract idea, it does not integrate the judicial exception into a practical application and does not constitute an inventive concept. Accordingly, the claim does not appear to be patent eligible under 35 USC 101.
With respect to claim 11, This claim is within at least one of the four categories of patent eligible subject matter as it is directed to a method claim under Step 1.
This claim recites a method that is disclosed in claim 1 and therefore recites the same abstract idea as claim 1, please see the office action analysis regarding claim 1.
Claim 11 does not recite additional elements that are not recited in claim 1.
With respect to claims 2 and 12, “wherein the processor includes a baseboard management controller.” as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
With respect to claim 13, “wherein the baseboard management controller includes the firmware update module.” as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
With respect to claims 4 and 14, “wherein the baseboard management controller receives the firmware update from a remote management system.” as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
With respect to claims 5 and 15, “wherein the FCP file includes a setting file that includes the setting metadata.” as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
With respect to claims 8 and 18, “wherein the element of the information handling system includes a basic input/output system (BIOS) of the information handling system.” as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
With respect to claims 9 and 19, “wherein the BIOS includes the firmware update module.” as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
With respect to claim 10, “wherein the element of the information handling system includes a device of the information handling system.” as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
With respect to claims 21 and 24, “wherein the dependency metadata describes an attribute of the firmware update code that needs to be enabled together with the setting, and wherein resolving the dependency is further by enabling the attribute.” as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
With respect to claims 22 and 25, “wherein the dependency metadata describes an attribute of the firmware update code that needs to be disabled in order to write the setting, and wherein resolving the dependency is further by disabling the attribute.” as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
With respect to claims 23 and 26, “wherein the dependency metadata describes a basic input/output system (BIOS) version that needs to present on the information handling system before enabling the setting, and wherein resolving the dependency is further by updating a BIOS of the information handling system to the BIOS version.” as drafted, is merely indicating a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See MPEP § 2106.05(h).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-2, 4-5, 8-15, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. (US 20220197624 A1, hereinafter “Chiu”), in view of Xie et al. (US 20240134625 A1, hereinafter “Xie”) and Ganesan et al. (US 20200218527 A1, hereinafter “Ganesan”).
With respect to claim 1 (Currently Amended), Chiu discloses An information handling system (e.g. Fig. 1), comprising:
a memory device including a firmware component associated with an element of the information handling system (e.g. Fig. 1, 120, 140); and
a processor executing code to instantiate a firmware update module configured to:
receive a firmware update for the firmware component (e.g. Fig. 3, step 320), wherein the firmware update includes firmware update code for the element and [a firmware
configuration profile (FCP) file, the FCP file] having a setting metadata for the element (e.g. para [0032], “Override data 225, may also be referred to as a patch which is a piece of code used to provide a fix to the firmware for the difference between a base platform and a target platform. Generally, a BIOS update package may include a base BIOS firmware image and one or more patches. The patch may be used to disable certain components or devices of an information handling system. …” wherein the patch used to disable certain components or devices suggests a setting metadata) and metadata associated with the setting metadata (e.g. para [0042], “… Here, method 300 may compare the current platform's override data of the BIOS firmware, such as BIOS firmware 245 of FIG. 2 with the override data of the default platform, such as override data 225. …” comparing override data indicates a hardware dependency metadata associated with the setting metadata);
Chiu discloses updating firmware in response to resolving the dependency, see Fig. 3, steps 310-335, but does not appear to explicitly disclose
… (wherein the firmware update includes firmware update code for the element and) a firmware configuration profile (FCP) file, the FCP file…
resolve a dependency described by the dependency metadata by modifying a condition of the information handling system;
update the firmware component in the memory device with the firmware update code without rebooting the information handling system (in response to resolving the dependency);
write a setting described by the setting metadata to a non-volatile memory associated with the element; and
in response to both updating the firmware component and writing the setting,
reboot the information handling system.
However, in analogous art, Xie discloses
… (wherein the firmware update includes firmware update code for the element and) a firmware configuration profile (FCP) file, the FCP file… (e.g. Fig. 3A, Profile Configuration Table Information 312)
resolve a dependency described by the dependency metadata by modifying a condition of the information handling system (e.g. para [0019], “To illustrate, in one or more implementations, the firmware configuration system on a computing device (e.g., a server in a datacenter) receives a firmware profile configuration update patch
(e.g., a set of instructions that cause a portion of a firmware of a computing device associated with profile configurations to be changed) via a firmware profile capsule. …”);
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the invention of Chiu with the invention of Xie because it provides techniques for efficiently updating a firmware profile configuration of one or more computing devices by flexibly modifying a select firmware profile configuration portion of a BIOS on a computing device without needing to develop and deploy an entire new BIOS. A person having ordinary skill in the art would have been motivated to make this combination, with a reasonable expectation of success, for the purpose of providing techniques for efficiently updating a firmware profile configuration of one or more computing devices by flexibly modifying a select firmware profile configuration portion of a BIOS on a computing device without needing to develop and deploy an entire new BIOS as suggested by Xie (see para [0017]).
Chiu as modified by Xie does not appear to explicitly disclose
update the firmware component in the memory device with the firmware update code without rebooting the information handling system (in response to resolving the dependency);
write a setting described by the setting metadata to a non-volatile memory associated with the element; and
in response to both updating the firmware component and writing the setting,
reboot the information handling system.
However, in analogous art, Ganesan discloses
update the firmware component in the memory device with the firmware update code without rebooting the information handling system (e.g. Fig. 5, step 504, para [0042], “Some PCI components or PCI component firmware updates may require a system reboot for application of the firmware updates to the components, while others may require a component reset without the need for a reboot.” Fig. 5 shows that installing firmware update without rebooting, and rebooting after saving register settings. See Fig. 5 steps 504-510);
write a setting described by the setting metadata to a non-volatile memory associated with the element (e.g. Fig. 5, step 508, para [0041], “An information handling system may also save register settings for components being updated, at step 508. For example, as PCI components being updated are logged in a memory of an information handling system, register settings for the components being updated may also be saved in the memory. …”); and
in response to both updating the firmware component and writing the setting,
reboot the information handling system (e.g. Fig. 5, step 510).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the invention of Ganesan because it provides an improved information handling system with reduced installation and reboot time of firmware updates by saving register settings. A person having ordinary skill in the art would have been motivated to make this combination, with a reasonable expectation of success, for the purpose of providing an improved information handling system with reduced installation and reboot time of firmware updates by saving register settings as suggested by Ganesan (see para [0005-0006]).
With respect to claim 2 (Previously Presented), Chiu discloses wherein the processor includes a baseboard management controller (e.g. Fig. 1, component 190).
With respect to claim 4, Chiu discloses wherein the baseboard management controller receives the firmware update from a remote management system (e.g. para [0021], “… In particular, BMC 190 includes a network interface 194 that can be connected to a remote management system to receive firmware updates, as needed or desired. Here, BMC 190 receives the firmware updates, stores the updates to a data storage device associated with the BMC, transfers the firmware updates to NV-RAM of the device or system that is the subject of the firmware update, thereby replacing the currently operating firmware associated with the device or system, and reboots information handling system, whereupon the device or system utilizes the updated firmware image.”).
With respect to claim 5, Xie discloses wherein the (e.g. Fig. 2, para [0046], “… To illustrate, an expanded version of the profile configuration table 214 is shown in FIG. 2. As shown, the profile configuration table 214 includes profile configurations. In many implementations, a profile configuration 230 includes a set of profile configuration settings (e.g., chip-set settings, hardware disk configurations, external device configurations) that accommodate the needs of different computing device clients.. …” For motivation to combine. Please refer to office action regarding claim 1).
With respect to claim 8, Chiu discloses wherein the element of the information handling system includes a basic input/output system (BIOS) of the information handling system (e.g. Fig. 3, step 320, para [0043], “… The method proceeds to block 320 wherein a BIOS firmware update for the information handling system is received. …”).
With respect to claim 9, Chiu discloses wherein the BIOS includes the firmware update module (e.g. para [0021], “… In particular, BMC 190 includes a network interface 194 that can be connected to a remote management system to receive firmware updates, as needed or desired. Here, BMC 190 receives the firmware updates, stores the updates to a data storage device associated with the BMC, transfers the firmware updates to NV-RAM of the device or system that is the subject of the firmware update, thereby replacing the currently operating firmware associated with the device or system, and reboots information handling system, whereupon the device or system utilizes the updated firmware image.” This paragraph indicates there is a firmware update module).
With respect to claim 10, Ganesan discloses wherein the element of the information handling system includes a device of the information handling system (e.g. para [0041], “… For example, as PCI components being updated are logged in a memory of an information handling system, register settings for the components being updated may also be saved in the memory. ...” wherein PCI reads on a device. For motivation to combine, please refer to office action regarding claim 1 above).
With respect to claim 11 (Currently Amended), it is directed to a method that is disclosed in claim 1, please see the rejections directed to claim 1 above which also cover the limitations recited in claim 11.
With respect to claim 12, it recites same features as claim 2, and is rejected for the same reason.
With respect to claim 13, it recites same features as claim 9, and is rejected for the same reason.
With respect to claim 14, it recites same features as claim 4, and is rejected for the same reason.
With respect to claim 15, it recites same features as claim 5, and is rejected for the same reason.
With respect to claim 18, it recites same features as claim 8, and is rejected for the same reason.
With respect to claim 19, it recites same features as claim 9, and is rejected for the same reason.
Claims 21-22 and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. (US 20220197624 A1, hereinafter “Chiu”), in view of Xie et al. (US 20240134625 A1, hereinafter “Xie”) and Ganesan et al. (US 20200218527 A1, hereinafter “Ganesan”) as applied to claims 1 and 11 respectively, in further view of Teittinen et al. (US 20090305674 A1, hereinafter “Teittinen”).
With respect to claim 21, Chiu as modified by Xie and Ganesan discloses The information handling system of claim 1, but does not appear to explicitly disclose wherein the dependency metadata describes an attribute of the firmware update code that needs to be enabled together with the setting, and wherein resolving the dependency is further by enabling the attribute. However, this is taught in analogous art, Teittinen (e.g. para [0046], “… DM relates to provisioning the configuration of the device, including first time use, enabling and disabling features, etc., to allow changes to the settings and
parameters of the device. These changes can include, for example, software upgrades
to provide for new software and/or bug fixes to be loaded on the device, …” wherein enabling features reads on enabling attribute of the firmware update.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the invention of Teittinen because it provides techniques for device management allowing changes to settings and parameters of the device. A person having ordinary skill in the art would have been motivated to make this combination, with a reasonable expectation of success, for the purpose of providing techniques for device management allowing changes to settings and parameters of the device as suggested by Teittinen (see para [0046]).
With respect to claim 22, Chiu as modified by Xie and Ganesan discloses The information handling system of claim 1, but does not appear to explicitly disclose wherein the dependency metadata describes an attribute of the firmware update code that needs to be disabled in order to write the setting, and wherein resolving the dependency is further by disabling the attribute. However, this is taught in analogous art, Teittinen (e.g. para [0046], “… DM relates to provisioning the configuration of the device, including first time use, enabling and disabling features, etc., to allow changes to the settings and
parameters of the device. These changes can include, for example, software upgrades
to provide for new software and/or bug fixes to be loaded on the device, …” wherein disabling features reads on disabling attribute of the firmware update.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the invention of Teittinen because it provides techniques for device management allowing changes to settings and parameters of the device. A person having ordinary skill in the art would have been motivated to make this combination, with a reasonable expectation of success, for the purpose of providing techniques for device management allowing changes to settings and parameters of the device as suggested by Teittinen (see para [0046]).
With respect to claim 24, it recites same features as claim 21, and is rejected for the same reason.
With respect to claim 25, it recites same features as claim 22, and is rejected for the same reason.
Claims 23 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. (US 20220197624 A1, hereinafter “Chiu”), in view of Xie et al. (US 20240134625 A1, hereinafter “Xie”) and Ganesan et al. (US 20200218527 A1, hereinafter “Ganesan”) as applied to claims 1 and 11 respectively, in further view of Atur et al. (US 20250291605 A1, hereinafter “Atur”).
With respect to claim 23, Chiu as modified by Xie and Ganesan discloses The information handling system of claim 1, but does not appear to explicitly disclose wherein the dependency metadata describes a basic input/output system (BIOS) version that needs to present on the information handling system before enabling the setting, and wherein resolving the dependency is further by updating a BIOS of the information handling system to the BIOS version. However, this is taught in analogous art, Atur (e.g. para [0073], “Each of the RAN vendor DU profile 818, the RAN vendor CU profile 820, and the generic profile 822 is configured to configure the BIOS settings at 824, upgrade firmware for hardware components to relevant version at 826, ...” wherein the relevant version suggests that a relevant BIOS version need be present).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the invention of Teittinen because it provides techniques for consistent firmware version and BIOS version settings for a device. A person having ordinary skill in the art would have been motivated to make this combination, with a reasonable expectation of success, for the purpose of providing techniques for consistent firmware version and BIOS version settings for a device as suggested by Teittinen (see para [0073]).
With respect to claim 26, it recites same features as claim 23, and is rejected for the same reason.
Response to Arguments
Applicant's arguments filed on 8/28/2026 have been fully considered and are moot upon new ground of rejections made in the office action above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zengpu Wei whose telephone number is 571-270-1302. The examiner can normally be reached on Monday to Friday from 8:00AM to 5:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bradley Teets, can be reached on 571-272-3338. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZENGPU WEI/
Examiner, Art Unit 2197
