FINAL REJECTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang (2018/0322013).
Regarding claim 1:
Yang teaches:
A method comprising:
copying, by a memory device, a current firmware image executing on the memory device to an archive location before attempting to boot a firmware update [fig 2 s84; par 40 – copies the current version of the BIOS image that was used to boot the computer to backup storage prior to an update process];
booting, by the memory device, the firmware update [fig 2 s90; par 47 – after a new firmware is installed the computer is rebooted with the new BIOS]; and
replacing, by the memory device, the firmware update with the current firmware image upon detecting an error during the booting of the firmware update [fig 2 s90, s92; par 44, 45, 47 – if a signal is not received in a predetermined period after booting with the new BIOS it signals a booting error and the current version of BIOS is restored from backup]; and
rebooting, by the memory device, the current firmware image after the replacing [par 45 – the computer is rebooted with the current version].
Regarding claim 8:
See the teachings above with respect to claim 1.
Yang further teaches a non-volatile storage area [par 19] and a controller [par 5].
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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2, 4, 9, 11, 15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Yang in view of Alon (2021/0149681).
Regarding claims 2 and 9:
Yang teaches:
The method of claim 1, wherein the firmware update comprises: a firmware update image [par 19 – new version of image file].
Yang does not explicitly teach the firmware update comprising a corresponding version identifier.
Alon teaches a firmware update comprising a corresponding version identifier [par 62].
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the version identifier of Alon with the update of Yang.
One of ordinary skill in the art prior to the effective filing date would have been motivated to make the combination because version identifiers such as those taught by Alon allow for accurate management of firmware images and determination of whether a firmware image is newer, older or the same [par 62, 63].
Regarding claims 4 and 11:
Yang does not explicitly teach wherein copying the current firmware image to the archive location comprises: writing the current firmware image to a write-protected region of non-volatile memory.
Alon teaches wherein copying the current firmware image to the archive location comprises: writing the current firmware image to a write-protected region of non-volatile memory [par 30, 31, 45 – the backup storage location is write protected/locked].
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the write-protected region of non-volatile memory of Alon with the update teachings of Yang.
One of ordinary skill in the art prior to the effective filing date would have been motivated to make the combination because Alon teaches that it is imperative to block writing to backup firmware memory because changing the contents of the backup memory may block any recovery option [par 45]. Alon further teaches that locking the backup memory to write increases security of the system and prevents attacks on recovery memory [par 63].
Regarding claims 15 and 17:
See the teachings of Yang above with respect to claim 1.
Yang does not explicitly teach non-transitory computer-readable storage medium for tangibly storing computer program instructions capable of being executed by a computer processor, the computer program instructions defining steps. Yang does, however, teach a method comprising the steps.
Alon teaches a non-transitory computer-readable storage medium for tangibly storing computer program instructions capable of being executed by a computer processor, the computer program instructions defining steps [par 90].
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the non-transitory computer-readable storage medium teachings of Alon with the method of Yang.
One of ordinary skill in the art prior to the effective filing date would have been motivated to make the combination because providing an article of manufacture for implementing a method such as that of Alon allows the benefits of the method, such as that of Yang, to be realized.
Claim 3, 10 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Yang in view of Landry (2012/0124567).
Regarding claims 3 and 10:
See the teachings of Yang above.
Yang does not explicitly teach discarding the firmware update upon determining that a digital signature of the firmware update is invalid.
Landry teaches discarding the firmware update upon determining that a digital signature of the firmware update is invalid [par 37, 38, 41, 60].
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the digital signature teachings of Landry with the update of Yang.
One of ordinary skill in the art prior to the effective filing date would have been motivated to make the combination because Landry teaches that performing signature verification prior to updating firmware increases security and prevents the installation of malicious or faulty firmware updates [par 38].
Regarding claim 16:
The combination further teaches a non-transitory computer-readable storage medium for tangibly storing computer program instructions capable of being executed by a computer processor, the computer program instructions defining steps [Landry par 11, 18]
Claims 6 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Yang in view of Hung (2022/0100489).
Regarding claims 6 and 13:
Yang does not does not explicitly teach iteratively executing a plurality of firmware images until no errors occur while booting a respective firmware image. Yang does, however, teach recovering with a backup firmware image when booting fails with one image.
Hung teaches iteratively executing a plurality of firmware images until no errors occur while booting a respective firmware image [par 40, 43 – stores multiple older firmware images in a backup and iterates through older images until booting succeeds].
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the multiple images and iterative boot of Hung with the recovery method of Yang.
One of ordinary skill in the art prior to the effective filing date would have been motivated to make the combination because the iterative teachings of Hung provide further protection from boot failure and provide uninterrupted, efficient and fault-tolerant services [Hung par 43, 44].
Claims 5, 12 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Yang-Hung as applied to claims 6 and 13 above, and further in view of Gerhart et al. (20160210132).
Regarding claims 5 and 12:
See the teachings of Yang-Hung above.
Yang-Hung do not explicitly teach updating a version map that associates version numbers with firmware images. Yang-Hung does, however, teach copying current firmware to backup and teaches storing multiple older firmware images.
Gerhart teaches updating a version map that associates version numbers with firmware images [par 47, 48, 50, 51 -firmware release table tracks every version of firmware stored in storage].
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the version map of Gerhart with the recovery method of Yang-Hung.
One of ordinary skill in the art prior to the effective filing date would have been motivated to make the combination because the firmware release table of Gerhart provides a fast, low overhead means to sort and easily access stored firmware images based on their versions [par 13].
Regarding claim 18:
The combination further teaches a non-transitory computer-readable storage medium for tangibly storing computer program instructions capable of being executed by a computer processor, the computer program instructions defining steps [Gerhart par 6].
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Yang-Hung as applied to claim 6 above, and further in view of Alon.
Regarding claim 19:
Yang-Hung does not explicitly teach a non-transitory computer-readable storage medium for tangibly storing computer program instructions capable of being executed by a computer processor, the computer program instructions defining steps. Yang does, however, teach a method comprising the steps.
Alon teaches a non-transitory computer-readable storage medium for tangibly storing computer program instructions capable of being executed by a computer processor, the computer program instructions defining steps [par 90].
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the non-transitory computer-readable storage medium teachings of Alon with the method of Yang-Hung.
One of ordinary skill in the art prior to the effective filing date would have been motivated to make the combination because providing an article of manufacture for implementing a method such as that of Alon allows the benefits of the method, such as that of Yang-Hung, to be realized.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11886592 in view of Yang.
Claims 1-20 of the ‘592 patent contain all limitations of the instant claim except copying a current firmware image executing on a memory device before attempting to boot the firmware update and rebooting the current firmware image after replacing.
Yang teaches copying a current firmware image executing on a memory device before attempting to boot the firmware update [fig 2 s84; par 40] and rebooting the current firmware image after replacing [par 45].
It would have been obvious to one of ordinary skill in the art prior the effective filing date to combine the teachings of the ‘592 patent claims with the copying of Yang because Yang teaches that the copying and rebooting allows for recovery of a BIOS image file with the latest version that existed just before attempting an updating procedure, avoiding inconvenience to a user of the computer [par 3, 59]. It is also not required to have a maintenance technician to manually recovery the BIOS image on site [par 59].
Response to Arguments
Applicant's arguments filed 5/11/26 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to claims 1, 8, and 15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant did not respond to the double patenting rejections except to state that applicant will not provide any substantive response until the claims are in condition for allowance.
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 MARC M DUNCAN whose telephone number is (571)272-3646. The examiner can normally be reached M-F: 730am-9am, 10am-4:30pm.
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/MARC DUNCAN/Primary Examiner, Art Unit 2113
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