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 .
This is in response to communications filed on 3/10/26.
Claims 1-6, 8-13 and 15-18 are pending.
Claim Interpretation
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent is not met. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed. See Ex Parte Schulhauser. For example, assume a method claim requires step A if a first condition happens and step Bif a second condition happens. If the claimed invention may be practiced without either the first or second condition happening, then neither step A or B is required by the broadest reasonable interpretation of the claim. If the claimed invention requires the first condition to occur, then the broadest reasonable interpretation of the claim requires step A. If the claimed invention requires both the first and second conditions to occur, then the broadest reasonable interpretation of the claim requires both steps A and B (MPEP 2111.04).
Claim 8 being a method claim recites the limitations “wherein BIOS presents the EC as a PnP device to the OS in response to occurrence of a trigger event selected from the group consisting of: a first power-on of the information handling system, a first boot of the OS, a recovery of the crash associated with the OS and a repair of the OS”, which are not required conditions to be occurred. The BRI does not include the conditions and associated functions based on the conditions when method can be practiced without conditions being met. BRI does not include BIOS presents the EC as a PnP device to the OS because this function is in response to occurrence of trigger signal, which is not required in the claim.
The broadest reasonable interpretation of a system (or apparatus or product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. The system claim interpretation differs from a method claim interpretation because the claimed structure must be present in the system regardless of whether the condition is met and the function is actually performed. Claims 1-6, 15-18 recite the system claim and the BRI includes structures corresponding to conditions “wherein BIOS presents the EC as a PnP device to the OS in response to occurrence of a trigger event selected from the group consisting of: a first power-on of the information handling system, a first boot of the OS, a recovery of the crash associated with the OS and a repair of the OS.”
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.
Claim(s) 8 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US Patent Application Publication 2025/0199817) in view of Gough et al (US Patent 2015/0185808), further in view of Beel et al (US Patent Application Publication 20150169477)
For claim 8, Wang teaches the following limitations: A method comprising: an information handling system (Fig 1 – Fig 6; notebook computer [0002]) that includes executing via a central processing unit (CPU) thereof (Fig 2; processor 110; [0016] – OS can execute power management, configuration of hardware elements; thus, OS is executed via the CPU 110U [0018]); the information handling system executing an OS device driver for an embedded controller (EC) thereof (Fig 4 and Fig 5; driver 150 is the OS device driver for the EC 120; Fig 6), wherein the OS device driver provides non-blocking input/output (I/O) operations on the EC (Fig 5 and Fig 6; non-blocking input outs are IRP, ORP and FRP; [0023]-[0024]) without the execution of a system management interrupt (SMI) ([0024] – without using WMI; hence avoiding SMI creating operation problems; [0004]; [0017];[0023]); and the information handling system allowing access to the EC from an application program via the device driver (Fig 4 Fig 5; [0016][0023]-[0025]; 130 and API is the application program, 150 is the device driver and 120 is the EC).
Wang teaches BIOS ([0003]), but does not explicitly mention that the BIOS is executing the OS. Gough et al teach a system where BIOS is executing the OS (Fig 1). It would have been obvious for one ordinary skill in the art before the effective filing date of the invention to have BIOS executing the OS, since BIOS can provide various services to OS. Wang uses ACPI technique to execute power management and configuration ([0016]), which can be facilitated by BIOS. Wang, in view of Gough does not explicitly mention that the OS device driver is a PnP driver. Wang’s driver comprises HID driver (Fig 4 and Fig 5; [0023]-[0027]). Beel et al teach that the HID driver can drive the plug and play device and therefore can be PnP diver (thus, the plug and play driver [0320] – HID driver transport over the plug and play interface – thus the OS driver can be PnP device driver). It would have been obvious for one ordinary skill in the art before the effective filing date to use the HID driver as the Plug as play driver, since that way the plug and play devices can be added and operated with the system. This increases system flexibility and operational capability.
For claim 12, wherein the EC is configured to return data to the application program via a device callback (Wang, Fig 4 and Fig 5; [0005] [0016] – EC is declared as a device by ACPI and OS; thus, the communication is a device callback to EC via a device driver; Wang et al).
Claim 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US Patent Application Publication 2025/0199817 - the effective filing date is the foreign priority date), in view of Gough et al (US Patent 2015/0185808), further in view of Beel et al (US Patent Application Publication 20150169477), in view of Liu et al (US Patent Application Publication 2018/0225126).
For claim 9, Wang, in view of Gough, in view of Beel does not mention that BIOS is a UEFI BIOS. BIOS UEFI or UEFI BIOS is well known in the art for additional services provided by the BIOS (Liu et al [0009]). It would have been obvious for one ordinary skill in the art before the effective filing date of the invention to provide a UEFI BIOS since UEFI BIOS have many advanced features for the system, which enhances performance of the system.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US Patent Application Publication 2025/0199817) in view of Gough et al (US Patent 2015/0185808) in view of Beel et al (US Patent Application Publication 20150169477) further in view of Yamagata (US Patent Application Publication 2010/0312930).
For claim 10, Wang, in view of Gough, in view of Beel does not explicitly mention about OS configured to download the OS device driver via an automatic OS driver update mechanism. Yamagata et al teach OS to download the code for the HID driver via the Internet ([0081] – downloading OS driver via the Internet; downloading via Internet provisions automatic OS driver update mechanism, which sufficiently teaches download the OS device driver via an automatic OS driver update mechanism). It would have been obvious for one ordinary skill in the art before the effective filing date of the invention to download the HID driver via automatic driver update mechanism, since OS with the HID driver can communicate with the HID devices (as explained in [0081] of Yamagata). That way, the performance can be enhanced.
Claim 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US Patent Application Publication 2025/0199817 – the effective filing date is the foreign priority date), in view of Gough et al (US Patent 2015/0185808), in view of Beel et al (US Patent Application Publication 20150169477) in view of Minami et al (US Patent Application Publication 2003/0163620).
For claim 11, Wang, in view of Gough din view of Beel oes not explicitly mention that the input outputs are memory mapped IO. A memory mapped IO is well known for the art for its simplified and advantageous operation (Minami et al [0019]). It would have been obvious for one ordinary skill in the art before the effective filing date of the invention to provide memory mapped IO to have a faster and simpler operation. In Wang, the OS and EC communicates for application unit 130. It is usually the memory where the OS and the codes for API reside. Thus, the memory mapped IO can provide the effective communication method in desirable situations (Minami et al provides the beneficial use of memory mapped IO).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US Patent Application Publication 2025/0199817) in view of Gough et al (US Patent 2015/0185808), in view of Beel et al (US Patent Application Publication 20150169477) in view of He (US Patent Application Publication 2016/0202742)
For claim 13, Wang does not mention that the EC is configured to provide the keyboard processing, power management and lighting control. Gough mention that EC provides keyboard processing and power management ([0016][0019][0029]). It would have been obvious for one ordinary skill in the art before the effective filing date of the invention to include the keyboard processing and power management in EC functionality, since that would provide additional service in the system. Wang in view of Gough in view of Beel does not explicitly mention about lighting control; however, controlling lighting via EC is well known in the art (He [0026] – EC configured to control back light or LED). It would have been obvious for one ordinary skill in the art before the effective filing date of the invention to include the lighting control in EC functionality, since that would facilitate distributive control, which facilitates flexibility.
Allowable Subject Matter
Claims 1-6, 15-18 are allowed.
Response to Arguments
Applicant's arguments regarding claims 8-13 have been fully considered but they are not persuasive.
Applicant argues that Independent claims include the allowable subject matter of claim 20 and the claims are allowable because of the incorporation.
Examiner disagrees as method claims 8-13 do not recite the conditions positively and the BRI does not include the corresponding steps to be performed. BRI for claim 8 does not include “BIOS presents the EC as a PnP device to the OS” because claim does not require a trigger to be occurred that is necessary for this step.
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.
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/FAHMIDA RAHMAN/Primary Examiner, Art Unit 2175