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 .
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 are not met. 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. See MPEP 2111.04(II). "[i]f 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" (quotation omitted). Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016).
Claim Objections
Applicant is advised that should Claims 1-4 and 6 be found allowable, Claims 16-20 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claims 1-4 and 6 differ from Claims 16-20 only in the recitation of a BIOS entitlement retention system comprising the IHS. However, no additional details of the BIOS entitlement retention system beyond the IHS are claimed in Claims 16-20. As all of the functionality of Claims 1-4 and 6 and Claims 16-20 is performed by the claimed IHS, the claimed IHS is, itself, a BIOS entitlement retention system. Thus Claims 1-4 and 6 are identical in scope to Claims 16-20.
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.
Claim(s) 10, 14, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent Application Publication Number 2024/0103837 to Sayyed et al. (“Sayyed”).
In reference to Claim 10, Sayyed discloses a BIOS entitlement retention method for a motherboard replacement (See Paragraphs 19, 45-46 and 56-57), the BIOS entitlement retention method comprising, when a replacement motherboard is booted for the first time: retrieving, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with an Information Handling System (IHS); configuring a BIOS on the replacement motherboard using the BIOS entitlements; and completing booting of the IHS into a normal mode of operation.
It is noted that Claim 10 is a method claim reciting contingent limitations. As indicated above, 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.
In reference to Claim 14, Sayyed discloses the limitations as applied to Claim 10 above. Sayyed further discloses storing the BIOS entitlements in the QR code when the IHS is manufactured.
It is noted that Claim 14 is a method claim reciting contingent limitations. As indicated above, 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.
In reference to Claim 15, Sayyed discloses the limitations as applied to Claim 10 above. Sayyed further discloses storing the BIOS entitlements in the QR code when the IHS is custom configured for use by a user of the IHS.
It is noted that Claim 15 is a method claim reciting contingent limitations. As indicated above, 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.
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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sayyed and US Patent Application Publication Number 2016/0110207 to Herzi (“Herzi”).
In reference to Claim 1, Sayyed discloses an Information Handling System (IHS) (See Figure 1 and Paragraphs 5 and 23), comprising: a processor (See Figure 1 Number 102 and Paragraphs 5 and 59); and a memory coupled to the processor (See Figure 1 Number 114 and Paragraphs 5 and 59), the memory having program instructions stored thereon that, upon execution, cause the IHS to (See Paragraphs 5 and 59), when a replacement motherboard (See Figure 4 Number 442 and Paragraph 44) is booted for the first time (See Paragraphs 54-55): retrieve, from a storage (See Figure 4 Number 430 and Paragraphs 43-44), one or more Basic Input/Output System (BIOS) entitlements associated with the IHS (See Figure 4 Number 432, Figure 6 Numbers 622-628, and Paragraphs 19, 45-46 and 56-57); configure a BIOS on the replacement motherboard using the BIOS entitlements (See Figure 6 Number 632 and Paragraph 57); and complete booting of the IHS into a normal mode of operation (See Figure 6 Number 610 and Paragraphs 55 and 57). However, Sayyed does not explicitly disclose that the storage is a QR code. Herzi discloses an Information Handling System (IHS) (See Figure 1 and Paragraphs 1 and 13), comprising: a processor (See Figure 2 Number 202A and Paragraphs 20--21); and a memory coupled to the processor (See Figure 2 Number 204 and Paragraphs 21-23 and 27), the memory having program instructions stored thereon that, upon execution, cause the IHS to retrieve, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with the IHS (See Figure 6 Numbers 610-612 and Paragraphs 40-43); configure a BIOS using the BIOS entitlements (See Figure 6 Number 614 and Paragraph 43); and complete booting of the IHS into a normal mode of operation (See Paragraphs 4 and 34).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to construct the device of Sayyed using the QR code for storing BIOS entitlements of Herzi as the BIOS entitlement storage, resulting in the invention of Claim 1, because the simple substitution of the QR code for storing BIOS entitlements of Herzi as the BIOS entitlement storage of Sayyed would have yielded the predictable result of recording the BIOS entitlements in a nonvolatile manner to enable easy, efficient, and fast transfer to the replacement motherboard without needing to install or execute a custom script or application (See Paragraphs 3, 13, 16, and 36 of Herzi and Paragraphs 5, 16, and 19 of Sayyed).
Alternatively, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to construct the device of Herzi using a replacement motherboard in the same IHS as the recipient of the saved BIOS entitlements, resulting in the claimed invention, in order to yield the predictable result of allowing a motherboard, which is the backbone of the IHS, to be replaced without needing to install or execute a custom script or application (See Paragraph 16 of Sayyed and Paragraphs 3, 13, 16, and 36 of Herzi).
In reference to Claim 2, Sayyed and Herzi disclose the limitations as applied to Claim 1 above. Sayyed further discloses that the program instructions, upon execution, further cause the IHS to receive user input for manually inputting the BIOS entitlements (See Paragraph 32). Herzi further discloses that the program instructions, upon execution, further cause the IHS to receive user input for manually inputting the BIOS entitlements (See Paragraphs 36, 38, and 43).
In reference to Claim 3, Sayyed and Herzi disclose the limitations as applied to Claim 1 above. Herzi further discloses that the program instructions, upon execution, further cause the IHS to receive the BIOS entitlements using a camera coupled to the IHS (See Figure 3 Number 338 and Paragraphs 32-33 and 43).
In reference to Claim 4, Sayyed and Herzi disclose the limitations as applied to Claim 1 above. Sayyed further discloses that the BIOS entitlements are encrypted on the storage (See Paragraph 52). Herzi further discloses that the BIOS entitlements are encrypted on the QR code (See Paragraph 30).
In reference to Claim 5, Sayyed and Herzi disclose the limitations as applied to Claim 1 above. Sayyed further discloses that the program instructions, upon execution, further cause the IHS to inhibit normal operation of the IHS until the BIOS entitlements are successfully configured on the motherboard (See Paragraphs 55-57 [booting does not continue until configuration completes]). Herzi further discloses that the program instructions, upon execution, further cause the IHS to inhibit normal operation of the IHS until the BIOS entitlements are successfully configured on the IHS (See Paragraph 34 [rebooting is not performed until configuration completes]).
In reference to Claim 6, Sayyed and Herzi disclose the limitations as applied to Claim 1 above. Sayyed further discloses that the program instructions, upon execution, further cause the IHS to store the BIOS entitlements in the storage when the IHS is manufactured (See Paragraphs 45 and 53).
In reference to Claim 7, Sayyed and Herzi disclose the limitations as applied to Claim 1 above. Sayyed further discloses that the program instructions, upon execution, further cause the IHS to store the BIOS entitlements in the storage when the IHS is custom configured for use by a user of the IHS (See Paragraphs 51-52). Herzi further discloses that the program instructions, upon execution, further cause the IHS to store the BIOS entitlements in the QR code when the IHS is custom configured for use by a user of the IHS (See Paragraphs 5, 16, 34, and 41).
In reference to Claim 8, Sayyed and Herzi disclose the limitations as applied to Claim 1 above. Sayyed further discloses that the wherein the program instructions are stored in a BIOS portion of the replacement motherboard (See Paragraphs 30-31 and 42). Herzi further discloses that the wherein the program instructions are stored in a BIOS portion of the IHS (See Paragraph 32).
In reference to Claim 9, Sayyed and Herzi disclose the limitations as applied to Claim 1 above. Sayyed further discloses that the IHS comprises at least one of a workstation or a desktop computer (See Paragraphs 21 and 23). Herzi further discloses that the IHS comprises at least one of a workstation or a desktop computer (See Paragraphs 17 and 19).
Alternatively, in reference to Claim 10, Sayyed discloses a BIOS entitlement retention method for a motherboard replacement (See Paragraphs 19, 45-46 and 56-57), the BIOS entitlement retention method comprising, when a replacement motherboard (See Figure 4 Number 442 and Paragraph 44) is booted for the first time (See Paragraphs 54-55): retrieving, from a storage (See Figure 4 Number 430 and Paragraphs 43-44), one or more Basic Input/Output System (BIOS) entitlements (See Figure 4 Number 432, Figure 6 Numbers 622-628, and Paragraphs 19, 45-46 and 56-57) associated with an Information Handling System (IHS) (See Figure 1 and Paragraphs 5 and 23); configuring a BIOS on the replacement motherboard using the BIOS entitlements (See Figure 6 Number 632 and Paragraph 57); and completing booting of the IHS into a normal mode of operation (See Figure 6 Number 610 and Paragraphs 55 and 57). However, Sayyed does not explicitly disclose that the storage is a QR code. Herzi discloses a BIOS entitlement retention method for a motherboard replacement (See Paragraphs 40-43), the BIOS entitlement retention method comprising: retrieving, from a QR code, one or more Basic Input/Output System (BIOS) entitlements (See Figure 6 Numbers 610-612 and Paragraphs 40-43) associated with an Information Handling System (IHS) (See Figure 1 and Paragraphs 1 and 13); configuring a BIOS using the BIOS entitlements (See Figure 6 Number 614 and Paragraph 43); and completing booting of the IHS into a normal mode of operation (See Paragraphs 4 and 34).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to construct the device of Sayyed using the QR code for storing BIOS entitlements of Herzi as the BIOS entitlement storage, resulting in the invention of Claim 10, because the simple substitution of the QR code for storing BIOS entitlements of Herzi as the BIOS entitlement storage of Sayyed would have yielded the predictable result of recording the BIOS entitlements in a nonvolatile manner to enable easy, efficient, and fast transfer to the replacement motherboard without needing to install or execute a custom script or application (See Paragraphs 3, 13, 16, and 36 of Herzi and Paragraphs 5, 16, and 19 of Sayyed).
Alternatively, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to construct the device of Herzi using a replacement motherboard in the same IHS as the recipient of the saved BIOS entitlements, resulting in the claimed invention, in order to yield the predictable result of allowing a motherboard, which is the backbone of the IHS, to be replaced without needing to install or execute a custom script or application (See Paragraph 16 of Sayyed and Paragraphs 3, 13, 16, and 36 of Herzi).
It is noted that Claim 10 is a method claim reciting contingent limitations. As indicated above, 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.
In reference to Claim 11, Sayyed and Herzi disclose the limitations as applied to Claim 10 above. Sayyed further discloses receiving user input for manually inputting the BIOS entitlements (See Paragraph 32). Herzi further discloses receiving user input for manually inputting the BIOS entitlements (See Paragraphs 36, 38, and 43).
In reference to Claim 12, Sayyed and Herzi disclose the limitations as applied to Claim 10 above. Herzi further discloses receiving the BIOS entitlements using a camera coupled to the IHS (See Figure 3 Number 338 and Paragraphs 32-33 and 43).
In reference to Claim 13, Sayyed and Herzi disclose the limitations as applied to Claim 10 above. Sayyed further discloses encrypting the BIOS entitlements on the storage (See Paragraph 52). Herzi further discloses encrypting the BIOS entitlements on the QR code (See Paragraph 30).
Alternatively, in reference to Claim 14, Sayyed and Herzi disclose the limitations as applied to Claim 10 above. Sayyed further discloses storing the BIOS entitlements in the QR code when the IHS is manufactured.
It is noted that Claim 14 is a method claim reciting contingent limitations. As indicated above, 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.
Alternatively, in reference to Claim 15, Sayyed and Herzi disclose the limitations as applied to Claim 10 above. Sayyed further discloses storing the BIOS entitlements in the QR code when the IHS is custom configured for use by a user of the IHS. Herzi further discloses storing the BIOS entitlements in the QR code when the IHS is custom configured for use by a user of the IHS (See Paragraphs 5, 16, 34, and 41).
It is noted that Claim 15 is a method claim reciting contingent limitations. As indicated above, 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.
Claim 16 recites limitations which are substantially equivalent to those of Claim 1 and is rejected under similar reasoning.
Claim 17 recites limitations which are substantially equivalent to those of Claim 2 and is rejected under similar reasoning.
Claim 18 recites limitations which are substantially equivalent to those of Claim 3 and is rejected under similar reasoning.
Claim 19 recites limitations which are substantially equivalent to those of Claim 4 and is rejected under similar reasoning.
In reference to Claim 20, Sayyed and Herzi disclose the limitations as applied to Claim 16 above. Sayyed further discloses that the program instructions, upon execution, further cause the IHS to store the BIOS entitlements in the storage when at least one of the IHS is manufactured (See Paragraphs 45 and 53) or when the IHS is custom configured for use by a user of the IHS (See Paragraphs 51-52). Herzi further discloses that the program instructions, upon execution, further cause the IHS to store the BIOS entitlements in the QR code when at least one of the IHS is manufactured or when the IHS is custom configured for use by a user of the IHS (See Paragraphs 5, 16, 34, and 41).
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.
Claim(s) 1, 3-4, 10, 13, 16, and 19 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 6-7, 10, 13, and 15 of U.S. Patent No. 12,204,887 to Sayyed et al. (“Sayyed-887”) in view of US Patent Application Publication Number 2016/0110207 to Herzi (“Herzi”) and knowledge commonly known in the art.
Although the claims at issue are not identical, they are not patentably distinct from each other because, as indicated below, the aforementioned claims of Sayyed-887 recite, in substantially equivalent form, all of the claim limitations of the aforementioned claims of the instant application.
Claim 1 (Instant Application)
Claims 1 and 6 (Sayyed-887)
An Information Handling System (IHS), comprising:
[Claim 1] An Information Handling System (IHS), comprising:
a processor;
[Claim 1] a processor;
and a memory coupled to the processor, the memory having program instructions stored thereon that, upon execution, cause the IHS to, when a replacement motherboard is booted on the IHS:
[Claim 1] and a memory coupled to the processor, the memory having program instructions stored thereon that, upon execution, cause the IHS to: when a previous motherboard is replaced with a replacement motherboard:
[Claim 4] perform the acts of detecting, accessing, and updating only when the replacement motherboard is started for the first time
retrieve, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with the IHS;
[Claim 1] access context data associated with the previous motherboard from a NVMe storage unit that is deployed in the IHS independently of the replacement motherboard, the context data comprising configuration settings of the previous motherboard;
configure a BIOS on the replacement motherboard using the BIOS entitlements;
[Claim 1] update the replacement motherboard according to the stored context information; and during an Operating System (OS) phase of the IHS, write the context data to the NVMe storage unit using a secure connection
and complete booting of the IHS into a normal mode of operation.
Claim 4 (Instant Application)
Claim 7 (Sayyed-887)
wherein the BIOS entitlements are encrypted on the QR code
encrypt the context data stored in the NVMe storage unit
Claim 10 (Instant Application)
Claims 10 and 13 (Sayyed-887)
A BIOS entitlement retention method for a motherboard replacement, the BIOS entitlement retention method comprising,
[Claim 10] A method comprising:
when a replacement motherboard is booted for the first time:
[Claim 13] perform the acts of detecting, accessing, and updating only when the replacement motherboard is started for the first time
retrieving, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with an Information Handling System (IHS);
[Claim 10] accessing context data associated with the previous motherboard from a NVMe storage unit that is deployed in an Information Handling System (IHS) independently of the replacement motherboard
configuring a BIOS on the replacement motherboard using the BIOS entitlements;
[Claim 10] the context data comprising configuration settings of the previous motherboard; and updating the replacement motherboard according to the stored context information;
and completing booting of the IHS into a normal mode of operation.
Claim 13 (Instant Application)
Claim 15 (Sayyed-887)
encrypting the BIOS entitlements on the QR code.
encrypting the context data stored in the NVMe storage unit;
Claim 16 (Instant Application)
Claims 1 and 6 (Sayyed-887)
A Basic Input/Output System (BIOS) entitlement retention system comprising: an Information Handling System (IHS), comprising:
[Claim 1] An Information Handling System (IHS), comprising:
a processor;
[Claim 1] a processor;
and a memory coupled to the processor, the memory having program instructions stored thereon that, upon execution, cause the IHS to, when a replacement motherboard is booted on the IHS:
[Claim 1] and a memory coupled to the processor, the memory having program instructions stored thereon that, upon execution, cause the IHS to: when a previous motherboard is replaced with a replacement motherboard:
[Claim 4] perform the acts of detecting, accessing, and updating only when the replacement motherboard is started for the first time
retrieve, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with the IHS;
[Claim 1] access context data associated with the previous motherboard from a NVMe storage unit that is deployed in the IHS independently of the replacement motherboard, the context data comprising configuration settings of the previous motherboard;
configure a BIOS on the replacement motherboard using the BIOS entitlements;
[Claim 1] update the replacement motherboard according to the stored context information; and during an Operating System (OS) phase of the IHS, write the context data to the NVMe storage unit using a secure connection
and complete booting of the IHS into a normal mode of operation.
Claim 19 (Instant Application)
Claim 7 (Sayyed-887)
wherein the BIOS entitlements are encrypted on the QR code
encrypt the context data stored in the NVMe storage unit
However, the aforementioned claims of Sayyed-887 do not explicitly disclose that the storage is a QR code, that the context data is BIOS entitlement data, and completing the booting of the IHS into a normal mode of operation, as in Claims 1, 10, and 16; and cause the IHS to receive the BIOS entitlements using a camera coupled to the IHS, as in Claims 3, 12, and 18. Herzi discloses the transferring of BIOS entitlement data using a QR code to a replacement motherboard when transferring context information to the replacement motherboard (See Paragraph 5 and Claim 2). Official Notice is taken that completing booting of an IHS into a normal mode of operation is well known in the art. Herzi further discloses causing the IHS to receive the BIOS entitlements using a camera coupled to the IHS (See Figure 3 Number 338 and Paragraphs 32-33 and 43).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to construct the device of the aforementioned claims of Sayyed-887 using the QR code, camera, and BIOS entitlement data of Herzi as storage and the context data, and using the well-known boot completion into a normal mode of operation, resulting in the claimed inventions, because the simple substitution of the BIOS entitlement data of Herzi as the context data of the aforementioned claims of Sayyed-887 would have yielded the predicable result of adjusting the BIOS configuration settings when the replacement motherboard is installed (See Paragraphs 4-5 of Herzi); because the simple substitution of the QR code and camera for storing BIOS entitlements of Herzi as the storage of Sayyed-887 would have yielded the predictable result of recording the BIOS entitlements in a nonvolatile manner to enable easy, efficient, and fast transfer to the replacement motherboard without needing to install or execute a custom script or application (See Paragraphs 3, 13, 16, and 36 of Herzi); .and in order to yield the predictable result of allowing for normal use and operation of the computer system for its intended purpose.
Claim(s) 1, 3-4, 10, 12-13, and 16-19 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim(s) 1, 7, 10, and 15 of copending Application No. 18/788,257, published as US Patent Application Publication Number 2026/0037271, to McNulty et al. (“McNulty”), in view of Herzi.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Although the claims at issue are not identical, they are not patentably distinct from each other because, as indicated below, the aforementioned claims of Sayyed-887 recite, in substantially equivalent form, all of the claim limitations of the aforementioned claims of the instant application.
Claim 1 (Instant Application)
Claim 1 (McNulty)
An Information Handling System (IHS), comprising:
An Information Handling System (IHS), comprising:
a processor;
a processor;
and a memory coupled to the processor, the memory having program instructions stored thereon that, upon execution, cause the IHS to, when a replacement motherboard is booted on the IHS:
and a memory 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:
retrieve, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with the IHS;
attach to a device that stores one or more Basic Input/Output System (BIOS) entitlements associated with the IHS; configure a BIOS on the replacement motherboard with the BIOS entitlements
configure a BIOS on the replacement motherboard using the BIOS entitlements;
configure a BIOS on the replacement motherboard with the BIOS entitlements;
and complete booting of the IHS into a normal mode of operation.
and complete booting of the IHS into a normal mode of operation
Claim 4 (Instant Application)
Claim 7 (McNulty)
wherein the BIOS entitlements are encrypted on the QR code
the BIOS entitlements are encrypted on the device
Claim 10 (Instant Application)
Claim 10 (McNulty)
A BIOS entitlement retention method for a motherboard replacement, the BIOS entitlement retention method comprising,
A motherboard replacement method comprising:
when a replacement motherboard is booted for the first time:
when a replacement motherboard is booted for the first time:
retrieving, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with an Information Handling System (IHS);
attaching to a device that stores one or more Basic Input/Output System (BIOS) entitlements associated with an Information Handling System (HIS);
configuring a BIOS on the replacement motherboard using the BIOS entitlements;
configure a BIOS on the replacement motherboard with the BIOS entitlements;
and completing booting of the IHS into a normal mode of operation.
and complete booting of the IHS into a normal mode of operation.
Claim 13 (Instant Application)
Claim 15 (McNulty)
encrypting the BIOS entitlements on the QR code.
encrypting the BIOS entitlements on the device
Claim 16 (Instant Application)
Claim 1 (McNulty)
A BIOS entitlement retention system for a motherboard replacement, the BIOS entitlement retention system comprising: an Information Handling System (IHS) comprising
An Information Handling System (IHS), comprising:
a processor;
a processor;
and a memory coupled to the processor, the memory having program instructions stored thereon that, upon execution, cause the IHS to, when a replacement motherboard is booted on the IHS:
and a memory 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:
retrieve, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with the IHS;
attach to a device that stores one or more Basic Input/Output System (BIOS) entitlements associated with the IHS; configure a BIOS on the replacement motherboard with the BIOS entitlements
configure a BIOS on the replacement motherboard using the BIOS entitlements;
configure a BIOS on the replacement motherboard with the BIOS entitlements;
and complete booting of the IHS into a normal mode of operation.
and complete booting of the IHS into a normal mode of operation
Claim 19 (Instant Application)
Claim 7 (McNulty)
wherein the BIOS entitlements are encrypted on the QR code
the BIOS entitlements are encrypted on the device
However, the aforementioned claims of Sayyed-887 do not explicitly disclose that the storage is a QR code, as in Claims 1, 10, and 16; and cause the IHS to receive the BIOS entitlements using a camera coupled to the IHS, as in Claims 3, 12, and 18. Herzi discloses the transferring of BIOS entitlement data using a QR code to a replacement motherboard (See Paragraph 5 and Claim 2). Herzi further discloses causing the IHS to receive the BIOS entitlements using a camera coupled to the IHS (See Figure 3 Number 338 and Paragraphs 32-33 and 43).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to construct the device of the aforementioned claims of Sayyed-887 using the QR code and camera of Herzi as storage, resulting in the claimed inventions, because the simple substitution of the QR code and camera for storing BIOS entitlements of Herzi as the storage of Sayyed-887 would have yielded the predictable result of recording the BIOS entitlements in a nonvolatile manner to enable easy, efficient, and fast transfer to the replacement motherboard without needing to install or execute a custom script or application (See Paragraphs 3, 13, 16, and 36 of Herzi).
Claim(s) 1, 3-4, 10, 12-13, and 16-19 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim(s) 1, 7, 10, and 15 of copending Application No. 18/780,264, published as US Patent Application Publication Number 2026/0030029 to Kemp et al. (“Kemp”), in view of Herzi.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Although the claims at issue are not identical, they are not patentably distinct from each other because, as indicated below, the aforementioned claims of Kemp recite, in substantially equivalent form, all of the claim limitations of the aforementioned claims of the instant application.
Claim 1 (Instant Application)
Claims 1 and 7 (Kemp)
An Information Handling System (IHS), comprising:
[Claim 1] An Information Handling System (IHS), comprising:
a processor;
[Claim 1] a processor;
and a memory coupled to the processor, the memory having program instructions stored thereon that, upon execution, cause the IHS to,
[Claim 1] and a memory 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:
[Claim 7] configure the BIOS on the replacement motherboard when the IHS is booted with the replacement motherboard for the first time.
retrieve, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with the IHS;
[Claim 1] obtain a plurality of Basic Input/Output System (BIOS) entitlements from a non-volatile storage system of the IHS;
configure a BIOS on the replacement motherboard using the BIOS entitlements;
[Claim 1] configure a BIOS on the replacement motherboard with the BIOS entitlements;
and complete booting of the IHS into a normal mode of operation.
[Claim 1] and complete booting of the IHS into a normal mode of operation
Claim 4 (Instant Application)
Claim 5 (Kemp)
wherein the BIOS entitlements are encrypted on the QR code
encrypt the BIOS entitlements in the non-volatile storage system
Claim 10 (Instant Application)
Claims 9 and 15 (Kemp)
A BIOS entitlement retention method for a motherboard replacement, the BIOS entitlement retention method comprising,
[Claim 9] A Basic Input/Output System (BIOS) entitlement retention method comprising:
when a replacement motherboard is booted for the first time:
[Claim 15] obtaining the plurality of BIOS entitlements from the non-volatile storage system of the IHS and configuring the BIOS on the replacement motherboard when the IHS is booted with the replacement motherboard for the first time
retrieving, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with an Information Handling System (IHS);
[Claim 9] obtaining a plurality of BIOS entitlements from a non-volatile storage system of an Information Handling System (IHS);
configuring a BIOS on the replacement motherboard using the BIOS entitlements;
[Claim 9] configuring a BIOS on the replacement motherboard using the BIOS entitlements;
and completing booting of the IHS into a normal mode of operation.
[Claim 9] and completing booting of the IHS into a normal mode of operation.
Claim 13 (Instant Application)
Claim 15 (Kemp)
encrypting the BIOS entitlements on the QR code.
encrypting the BIOS entitlements in the non-volatile storage system
Claim 1 (Instant Application)
Claims 1 and 7 (Kemp)
A BIOS entitlement retention system for a motherboard replacement, the BIOS entitlement retention system comprising: an Information Handling System (IHS) comprising
[Claim 1] An Information Handling System (IHS), comprising:
a processor;
[Claim 1] a processor;
and a memory coupled to the processor, the memory having program instructions stored thereon that, upon execution, cause the IHS to,
[Claim 1] and a memory 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:
[Claim 7] configure the BIOS on the replacement motherboard when the IHS is booted with the replacement motherboard for the first time.
retrieve, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with the IHS;
[Claim 1] obtain a plurality of Basic Input/Output System (BIOS) entitlements from a non-volatile storage system of the IHS;
configure a BIOS on the replacement motherboard using the BIOS entitlements;
[Claim 1] configure a BIOS on the replacement motherboard with the BIOS entitlements;
Claim 19 (Instant Application)
Claim 5 (Kemp)
wherein the BIOS entitlements are encrypted on the QR code
cause the IHS to encrypt the BIOS entitlements in the non-volatile storage system
However, the aforementioned claims of Kemp do not explicitly disclose that the storage is a QR code, as in Claims 1, 10, and 16; and cause the IHS to receive the BIOS entitlements using a camera coupled to the IHS, as in Claims 3, 12, and 18. Herzi discloses the transferring of BIOS entitlement data using a QR code to a replacement motherboard (See Paragraph 5 and Claim 2). Herzi further discloses causing the IHS to receive the BIOS entitlements using a camera coupled to the IHS (See Figure 3 Number 338 and Paragraphs 32-33 and 43).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to construct the device of the aforementioned claims of Kemp using the QR code and camera of Herzi as storage, resulting in the claimed inventions, because the simple substitution of the QR code and camera for storing BIOS entitlements of Herzi as the storage of Kemp would have yielded the predictable result of recording the BIOS entitlements in a nonvolatile manner to enable easy, efficient, and fast transfer to the replacement motherboard without needing to install or execute a custom script or application (See Paragraphs 3, 13, 16, and 36 of Herzi).
Claim(s) 1, 3-4, 6, 8-10, 12-14, 16, and 18-20 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim(s) 1, 7-10, and 15 of copending Application No. 18/777,645, published as US Patent Application Publication Number 2026/0023571 to Dyson et al. (“Dyson”), in view of Herzi.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Although the claims at issue are not identical, they are not patentably distinct from each other because, as indicated below, the aforementioned claims of Dyson recite, in substantially equivalent form, all of the claim limitations of the aforementioned claims of the instant application.
Claim 1 (Instant Application)
Claim 1 (Dyson)
An Information Handling System (IHS), comprising:
An Information Handling System (IHS), comprising:
a processor;
a processor;
and a memory coupled to the processor, the memory having program instructions stored thereon that, upon execution, cause the IHS to,
and a memory 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:
when a replacement motherboard is booted for the first time:
retrieve, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with the IHS;
attach to a system device that stores one or more Basic Input/Output System (BIOS) entitlements associated with the IHS;
configure a BIOS on the replacement motherboard using the BIOS entitlements;
configure a BIOS on the replacement motherboard using the BIOS entitlements;
and complete booting of the IHS into a normal mode of operation.
and complete booting of the IHS into a normal mode of operation.
Claim 4 (Instant Application)
Claim 8 (Dyson)
wherein the BIOS entitlements are encrypted on the QR code
wherein the BIOS entitlements are encrypted on the system device.
Claim 6 (Instant Application)
Claim 7 (Dyson)
cause the IHS to store the BIOS entitlements in the QR code when the IHS is manufactured.
the BIOS entitlements are stored in the system device when the IHS is manufactured by a vendor.
Claim 8 (Instant Application)
Claim 7 (Dyson)
wherein the program instructions are stored in a BIOS portion of the replacement motherboard.
the program instructions are stored in a BIOS portion of the replacement mb.
Claim 9 (Instant Application)
Claim 9 (Dyson)
the IHS comprises at least one of a workstation or a desktop computer.
wherein the IHS comprises at least one of a workstation or a desktop computer.
Claim 10 (Instant Application)
Claim 10 (Dyson)
A BIOS entitlement retention method for a motherboard replacement, the BIOS entitlement retention method comprising,
A bios entitlement retention method comprising:
when a replacement motherboard is booted for the first time:
attaching, when a replacement motherboard is booted on an Information Handling System (IHS) for the first time, to a system device that stores one or more Basic Input/Output System (BIOS) entitlements associated with the IHS;
retrieving, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with an Information Handling System (IHS);
attaching, when a replacement motherboard is booted on an Information Handling System (IHS) for the first time, to a system device that stores one or more Basic Input/Output System (BIOS) entitlements associated with the IHS;
configuring a BIOS on the replacement motherboard using the BIOS entitlements;
configuring a BIOS on the replacement motherboard using the BIOS entitlements;
and completing booting of the IHS into a normal mode of operation.
and completing booting of the IHS into a normal mode of operation.
Claim 13 (Instant Application)
Claim 15 (Dyson)
encrypting the BIOS entitlements on the QR code.
encrypting the BIOS entitlements on the system device.
Claim 14 (Instant Application)
Claim 7 (Dyson)
storing the BIOS entitlements in the QR code when the IHS is manufactured.
the BIOS entitlements are stored in the system device when the IHS is manufactured by a vendor.
Claim 16 (Instant Application)
Claim 1 (Dyson)
A BIOS entitlement retention system for a motherboard replacement, the BIOS entitlement retention system comprising: an Information Handling System (IHS) comprising
An Information Handling System (IHS), comprising:
a processor;
a processor;
and a memory coupled to the processor, the memory having program instructions stored thereon that, upon execution, cause the IHS to,
and a memory 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:
when a replacement motherboard is booted for the first time:
retrieve, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with the IHS;
attach to a system device that stores one or more Basic Input/Output System (BIOS) entitlements associated with the IHS;
configure a BIOS on the replacement motherboard using the BIOS entitlements;
configure a BIOS on the replacement motherboard using the BIOS entitlements; and complete booting of the IHS into a normal mode of operation.
Claim 19 (Instant Application)
Claim 8 (Dyson)
wherein the BIOS entitlements are encrypted on the QR code
wherein the BIOS entitlements are encrypted on the system device.
Claim 20 (Instant Application)
Claim 7 (Dyson)
cause the IHS to store the BIOS entitlements in the QR code when at least one of the IHS is manufactured or when the IHS is custom configured for use by a user of the IHS.
the BIOS entitlements are stored in the system device when the IHS is manufactured by a vendor.
However, the aforementioned claims of Dyson do not explicitly disclose that the storage is a QR code, as in Claims 1, 10, and 16; and cause the IHS to receive the BIOS entitlements using a camera coupled to the IHS, as in Claims 3, 12, and 18. Herzi discloses the transferring of BIOS entitlement data using a QR code to a replacement motherboard (See Paragraph 5 and Claim 2). Herzi further discloses causing the IHS to receive the BIOS entitlements using a camera coupled to the IHS (See Figure 3 Number 338 and Paragraphs 32-33 and 43).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to construct the device of the aforementioned claims of Dyson using the QR code and camera of Herzi as storage, resulting in the claimed inventions, because the simple substitution of the QR code and camera for storing BIOS entitlements of Herzi as the storage of Dyson would have yielded the predictable result of recording the BIOS entitlements in a nonvolatile manner to enable easy, efficient, and fast transfer to the replacement motherboard without needing to install or execute a custom script or application (See Paragraphs 3, 13, 16, and 36 of Herzi).
Conclusion
The art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J CLEARY whose telephone number is (571)272-3624. The examiner can normally be reached Monday-Friday 8AM-5PM.
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/THOMAS J. CLEARY/Primary Examiner, Art Unit 2175
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