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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 20 May 2026 has been entered.
Response to Arguments
The Examiner acknowledges Applicant’s amendments and remarks filed on 20 May 2026. They have been fully considered and are persuasive in part. The amendments are sufficient to overcome the rejection based on 35 U.S.C. 112(a) but have warranted new grounds of rejection under 112(b). Additionally, Applicant’s amendments are sufficient to overcome the rejection based on 35 U.S.C. 103 but have necessitated new grounds of rejection based on 35 U.S.C. 102(a)(1).
Claim Rejections - 35 USC § 112
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 4, 13, and 19 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 4 recites a step of detecting an external display storing the BIOS entitlements. Claim 1 has established that the BIOS entitlements are stored in an embedded controller (EC) mounted on a chassis of the information handling system (IHS) that is separate and distinct from a display device coupled to the IHS. The language of claim 4 conflicts with claim 1 and also makes it unclear where BIOS entitlements are stored in the IHS. Claims 13 and 19 are rejected on the same basis.
Claim Rejections - 35 USC § 102
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, 5-7, 9, 10, 14, 16, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miller et al., U.S. Patent Application Publication No. 2018/0060079. Miller was previously cited in the rejection set forth in the Final Office Action mailed on 27 March 2026.
Regarding claim 1, Miller discloses an IHS comprising [Fig. 1]:
a processor [CPU 102]; and
a memory [EFI firmware 136; 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.”] coupled to the processor, 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 501: system boots; step 502, replacement motherboard path]:
attach to an embedded controller (EC) that stores one or more Basic Input/Output System (BIOS) entitlements associated with the IHS [para. 0065: “At block 505, method 500 determines if the menu prefill data is present in any of a plurality of one or more memory devices that are not mounted on the motherboard.”], wherein the EC is mounted on a chassis of the IHS that is separate and distinct from a display device coupled to the IHS [para. 0057: “In various embodiments, block 406 may write the updated prefill data to two or more disparate memory devices outside of motherboard 100. For example, the prefill data may be stored in two or more HDDs, an HDD and a removable flash memory, a memory chip that is part of a video card or other circuit board slotted onto the motherboard, or any combination of any number of memory devices that are not directly mounted (e.g., via a CPU socket and/or soldered) on the motherboard.”]1;
configure a BIOS on the replacement motherboard using the BIOS entitlements [step 507: pre-fill the fields in the service menu and restore config information; 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).”]; and
complete booting of the IHS into a normal mode of operation [steps 509, 510: take system out of manufacturing mode and reboot].
Regarding claim 5, Miller teaches that the EC is not replaced with the motherboard is replaced [para. 0057].
Regarding claim 6, Miller teaches that the program instructions are stored in a BIOS portion of the replacement motherboard [para. 0064].
Regarding claim 7, Miller teaches that the BIOS entitlements are stored in the EC when the IHS is manufactured by a vendor [para. 0050: “The OEM manufacturer sets the SKU in the factory before shipping the IHS out to a customer, based on what the customer has ordered…”; para. 0051: “In sum, the service tag, SKU(s), and other configuration information are needed by BIOS/firmware 136 when motherboard 100 is replaced. This information is collectively referred to as ‘prefill data’ to the extent it may be saved, retrieved, and automatically entered into the BIOS's service menu.”].
Regarding claim 9, Miller teaches that the IHS comprises a workstation or desktop computer [para. 0024, 0026].
Claims 10, 14, 16, and 20 are rejected on the same basis as claims 1, 6, and 7.
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 8 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Miller in view of Tsao, U.S. Patent Application Publication No. 2021/0397459.
Regarding claim 8, Miller discloses the IHS of claim 1 but does not teach that the BIOS entitlements are encrypted on the EC.
Tsao discloses an invention that encrypts and stores BIOS setting information on a storage device [para. 0014: “In an embodiment, in step S03, the processing unit 13 may compress and encrypt the BIOS setting information, and then stores the BIOS setting information into the storage device 12.”].
It would have been obvious to one of ordinary skill in the art to combine the teachings of Miller and Tsao by modifying Miller to encrypt the BIOS entitlements, as suggested by Tsao. Both Miller and Tsao and directed to inventions that store BIOS data. The combination is motivated by Tsao’s teaching that encrypting BIOS data can ensure correctness and security of the data [para. 0022: “Moreover, the BIOS setting information is compressed and encrypted, so that a storage time of the storage device can be reduced, and correctness and security of the BIOS setting information can be ensured.”].
Claim 15 is rejected on the same basis as claim 8.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JI H BAE whose telephone number is (571)272-7181. The examiner can normally be reached Tuesday to Friday and every other Monday, 9 am to 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jaweed Abbaszadeh can be reached at 571-270-1640. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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
1 The broadest reasonable interpretation of “embedded controller” may include any of these elements disclosed by Miller. The claim language does not further limit the embedded controller beyond its stated function of storing the BIOS entitlements. Therefore, any and all disclosed elements that perform a function of storing BIOS entitlements may be construed as an embedded controller.
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