DETAILED ACTION
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 .
Response to Arguments
The Examiner acknowledges Applicant’s amendments and remarks filed on 9 March 2026. They have been fully considered and are persuasive in part. The amendments are sufficient to overcome the rejections set forth in the prior Office Action. However, they have also necessitated new grounds of rejection under 35 U.S.C. 112(a) and 112(b) as well as newly found prior art.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 is rejected because it has been amended to recite that the embedded controller is “configured in the IHS”. This language may be interpreted to indicate that the IHS carries out a function to configure the embedded controller. The specification fails to disclose any such function, and therefore fails to provide support for the amendment. Claims 10 and 16 are rejected on the same basis.
Claim 5 is rejected because it recites limitations that are not supported by claim 1 and the specification as originally filed. Claim 1 recites a “system device that comprises an embedded controller”. The specification as originally filed discloses an embedded controller as a “motherboard component” [para. 0043]. Claim 5 recites that the system device is “not replaced when the replacement motherboard is replaced, the system device comprising… an external display, and a Power Supply Unit (PSU)”. Claim 5 conflicts with both the recitation of claim 1 that the system device is an embedded controller, and the originally filed specification’s teaching that the embedded controller is a motherboard component. If the system device is an embedded controller (as in claim 1), and the embedded controller is a motherboard component (as in the specification para. 0043), then it conflicts with the limitation of claim 5 reciting that it is “not replaced when the replacement motherboard is replaced”. Additionally, a system device that is a motherboard component cannot also be a system device that is an external display or a PSU. Fig. 2 of the originally filed specification explicitly shows the embedded controller 220 as a separate component from the external display device 213. Additionally, the specification fails to disclose that either the external display or the PSU includes the embedded controller, with para. 0024 of the specification assigning the BIOS entitlement storage to “a processor and a memory”. The limitations of claim 5 appear to be directed to alternative embodiments wherein the system device that stores BIOS entitlements may be either the external display or the PSU. Consequently, claim 5 cannot further limit the embodiment wherein the system device is an embedded controller that resides on the motherboard, as recited in claim 1 and as taught in the specification.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is rejected as being indefinite because the limitation “an embedded controller configured in the IHS” is unclear. It may be interpreted as the IHS executing a function to configure the embedded controller. It may also be interpreted as an embedded controller that has been configured and exists within the IHS. The Examiner recommends amending the claim language to more clearly indicate the nature of the embedded controller. Claims 10 and 16 are rejected on the same basis.
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.
Claims 1-6, 9-13, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al., U.S. Patent Application Publication No. 2018/0060079, in view of Kim, U.S. Patent Application Publication No. 2005/0062735.
Regarding claim 1, Miller discloses an information handling system comprising:
a processor [Fig. 1: CPU 102]; and
a memory coupled to the processor [EFI firmware 136 and NVRAM 137], the memory having program instructions stored thereon that, upon execution, cause the IHS to, when a replacement motherboard is booted for the first time [Fig. 5: step 502 “Yes (replacement motherboard path”]:
attach to a system device [para. 0010, 0023, 0024: an external or integrated display device] that stores one or more Basic Input/Output System (BIOS) entitlements [para. 0010, 0054: EDID serial number] associated with the IHS;
configure a BIOS on the replacement motherboard [para. 0021: “When the service technician replaces a motherboard, the BIOS boots to a service menu. The BIOS then looks for the prefill data. If the information is present and passes validation, the BIOS pre-fills the corresponding fields in the service menu for the service technician and restores the configuration data (BIOS setup settings and boot options).”] using the BIOS entitlements [Fig. 5, step 506, para. 0054, the broadest reasonable interpretation of using the BIOS entitlements includes using the EDID serial number to facilitate validation of the prefill data and enabling the BIOS prefill operation after validating: “To validate the prefill data, the IHS may, for example, compare… an Extended Display Identification Data (EDID) serial number with a stored EDID serial number…”]; and
complete booting of the IHS into a normal mode of operation [Fig. 5, steps 509, 510: take system out of service menu manufacturing mode and reboot system].
Miller does not teach that the system device comprises an embedded controller configured in the IHS.
Kim discloses a system device [Fig. 1, para. 0032: display unit 1] comprising an embedded controller [controller 7] configured [para. 0040: controller 7 executes operations, indicating that it is “configured” according to BRI] in the IHS [Fig. 1: controller 7 is part of the IHS in Fig. 1].
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 teachings of Miller and Kim by modifying Miller to include an embedded controller, as taught by Kim. Miller and Kim both discloses display devices that store and supply EDID information to a computer. Kim additionally teaches that a controller within the display device may be used to detect errors in the EDID information while it being stored in the memory of the display device, or while it is provided to the computer [para. 0040: “The controller 7 detects errors that may occur in an operation of storing EDID information in the non-changeable or changeable memory 3 or 5 and in an operation of supplying the EDID information to the computer main body 11, and detects errors of the EDID information and supplies correct EDID information to an external device to display video information on the display unit 1.”]. It would have been obvious to apply the teachings of Kim to the invention of Miller based on Kim’s suggestion that an embedded controller could detect errors in the EDID information stored in a display device of Miller.
Regarding claim 2, Miller discloses further causing the IHS to access the BIOS entitlements from an external display configured with the IHS [para. 0023, 0024: EDID from external monitor or integrated display (integrated display may be considered an “external display” with respect to the motherboard].
Regarding claim 3, Miller discloses further causing the IHS to access the BIOS entitlements from an Extended Display Identification Data (EDID) region of memory in the external display [para. 0023, 0024].
Regarding claim 4, Miller discloses detecting that the external display has been replaced with another external display, and access the BIOS entitlements from another system device configured on the IHS [para. 0023: “For example, Extended Display Identification Data (EDID) of an external monitor may change because the monitor used at a service hub may be different than the monitor used by the customer.”].
Regarding claim 5, Miller discloses that the system device comprises one that is not replaced when the replacement motherboard is replaced, the system device comprising at least one of an external display [para. 0023, 0024], and a Power Supply Unit (PSU) [para. 0054: “To validate the prefill data, the IHS may, for example, compare… a power supply identification information with stored power supply identification information, etc.”].
Regarding claim 6, Miller discloses that the program instructions are stored in a BIOS portion of the replacement motherboard [para. 0064: “FIG. 5 is a flowchart of an example of a method for retrieving service menu prefill data for initializing and reconfiguring replacement motherboards. In some embodiments, method 500 may be performed through the execution of instructions stored in BIOS/firmware 136.”].
Regarding claim 9, Miller discloses that the IHS is a workstation or desktop computer [para. 0024: “Desktop/Workstation-appropriate values may include…”].
Claim 10-13 and 16-20 are rejected on the same basis as claims 1-4 and 6.
Claims 7 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Miller in view of Kim, and further in view of Choi, U.S. Patent Application Publication No. 2022/0345773.
Regarding claim 7, Miller discloses the IHS of claim 1, but does not teach that the BIOS entitlements are stored in the system device when the IHS is manufactured by a vendor.
Choi discloses BIOS entitlements that are stored in the system device when the IHS is manufactured by a vendor [para. 0093: “The EDID storage 170 may be a memory storing EDID, and store EDID including a manufacturer/product identifier, an EDID format version, and display characteristics information such as display parameters (e.g., supported resolutions and color formats) and audio formats. The EDID may be stored in the EDID storage 170 by a manufacturer when the display device 100 is produced.”].
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 teachings of Miller and Choi by modifying Miller to store BIOS entitlements (i.e., EDID information) in the system device (i.e., display device) when the IHS is manufactured by a vendor, as taught by Choi. Miller and Choi both disclose display devices that include EDID data. Miller’s invention does not explicitly disclose the source of the EDID information, whereas Choi discloses a display device with EDID information, and further teaches that this information may be stored by a manufacturer when the display device is manufactured. It would therefore have been obvious to one of ordinary skill in the art to apply the teachings of Choi to Miller based on Choi’s teaching that a manufacturer can provide the EDID information at the time of manufacture.
Claim 14 is rejected on the same basis as claim 7.
Claims 8 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Miller in view of Kim, and further in view of Desai et al., U.S. Patent Application Publication No. 2020/0312005.
Regarding claim 8, Miller discloses the IHS of claim 1, but does not teach BIOS entitlements are encrypted on the system device.
Desai teaches a system device with an encrypted memory [Fig. 5: display device 100 with memory 530; para. 0078: “For example, SE 540 may maintain one or more cryptographic keys that are used to encrypt data stored in memory 530 in order to improve the security of display device 100.”].
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 teachings of Miller and Desai by modifying Miller to encrypt the BIOS entitlements on the system device, as taught by Desai. Both Miller and Desai are directed to display devices with a memory. Miller teaches that the display device stores an EDID, but does not teach that it is encrypted. Desai discloses a display device of a memory that is encrypted, teaching that such encryption improves the security of the display device. It would therefore have been obvious to one of ordinary skill in the art to apply the teachings of Desai to Miller based on Desai’s teaching that encrypting the memory contents of a display device would improve the security of the display device.
Claim 15 is rejected on the same basis.
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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/JI H BAE/Primary Examiner, Art Unit 2176 U.S. Patent and Trademark Office
Phone: 571-272-7181
Fax: 571-273-7181
ji.bae@uspto.gov
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