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 .
2. The claim set of claims 1-20, filed on 7/23/2024, is acknowledged and considered. Claims 1, 10, and 17 are independent claims. Claims 1-20 are pending.
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.
3. Claims 4, 5, 13, 15, and 19-20 recites the limitation "a" in the claims. There is insufficient antecedent basis for this limitation in the claim.
Claim 4, line 2 recites “a previous motherboard”. A “previous motherboard” was addressed in independent claim 1, thus, the limitation “a previous motherboard” is an improper antecedent basis.
Claim 5, line 2 recites “a previous motherboard”. A “previous motherboard” was addressed in independent claim 1, thus, the limitation “a previous motherboard” is an improper antecedent basis.
Claim 13, line 1 recites “a previous motherboard”. A “previous motherboard” was addressed in independent claim 10, thus, the limitation “a previous motherboard” is an improper antecedent basis. In addition, on lines 4-5 recites “a non-volatile storage” and “an external device”, where a “non-volatile storage” was addressed in independent claim 10 and an “external device” in claim 12. Thus, the limitations “a non-volatile storage” and “an external device” are improper antecedent basis.
Claim 15, line 2 recites “a non-volatile storage” and “an external device”, where a “non-volatile storage” was addressed in independent claim 10 and an “external device” in claim 12. Thus, the limitations “a non-volatile storage” and “an external device” are improper antecedent basis.
Claim 19, line 2 recites “a previous motherboard”. A “previous motherboard” was addressed in independent claim 17, thus, the limitation “a previous motherboard” is an improper antecedent basis. In addition, on lines 5-6 recites “a non-volatile storage” and “an external device”, where a “non-volatile storage” was addressed in independent claim 17 and an “external device” in claim 19. Thus, the limitations “a non-volatile storage” and “an external device” are improper antecedent basis.
Claim 20, line 2 recites “a previous motherboard”. A “previous motherboard” was addressed in independent claim 17, thus, the limitation “a previous motherboard” is an improper antecedent basis.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
4. Claims 11-16 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 11-16 recites “the IHS of claim 10”, where independent claim 10 is a method claim. By reciting “the IHS of claim 10”, fails to properly limit the entirety of method from the parent independent claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 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.
5. Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chu, et al. [US 20070130434] in view of Waltermann, et al. [US .
As per claim 1: Chu, et al. teaches an Information Handling System (IHS), comprising:
a processor; and [Chu: para 0032]
a memory coupled to the processor, the memory having program instructions stored thereon that, upon execution, cause the IHS to [Chu: para 0032], when a replacement motherboard is booted on the IHS: [Chu: para 0053]
obtain a Basic Input/Output System (BIOS) password [Chu: para 0008; most password protection schemes store passwords in erasable memory on the motherboard. Many password methods are implemented at the basic input-output system (BIOS) level] associated with a previous motherboard that has been removed from the HIS [Chu: para 0055-0056; Recognizing that most components are the same and that only a couple of the parameters have changed, hard drive configured to accept this change as a normal upgrade of computer system. Accordingly, hard drive store the new parameters for motherboard and CPU, replacing the older parameters for motherboard and CPU. The hard drive may erase the stored information if encountering more than one parameter changes between consecutive boot cycles], **wherein the BIOS password is encrypted; [**rejected under a secondary reference, discussion below]
configure the BIOS password on the replacement motherboard [Chu: para 0053; to upgrade computer system by replacing motherboard and CPU, may end up with a computer system similar to the one shown in FIG. 6. The motherboard with a new serial number of "BOARD789" and CPU with a new serial number of "CPU789", as well as the associate hardware that may be embedded in motherboard. Para 0055; hard drive store the new parameters for motherboard 601 and CPU 605, replacing the older parameters for motherboard 401 and CPU 405. Consequently, on the next boot cycle, hard drive detect no system changes because the system parameters reported by BIOS will match those stored] **without providing a clear text version of the BIOS password; and [**rejected under a secondary reference, discussion below]
complete booting of the IHS into a normal mode of operation. [Chu: para 0056; hard drive continue to boot and store modified or changed system parameter changes, so long as at least one of the parameters from the previous boot cycle match]
However, Chu did not clearly teach “wherein the BIOS password is encrypted” and “without providing a clear text version of the BIOS password”.
Waltermann teaches a recovery mechanism for the SAM file encryption key in case the motherboard is replaced or the TPM security chip is cleared. For such purpose, the SAM file encryption key must also be encrypted. Thus, the SAM file encryption key is encrypted using an Advanced Encryption Standard (AES) key derived from the administrator password within the Windows.RTM. operating system to generate a second encrypted blob [Waltermann: para 0020]. An administrator performs a system boot after a motherboard replacement, boots the computer system via Windows PE. From Windows PE, the second encrypted blob (i.e., copy of the SAM file encryption key that was encrypted by the administrator password) is retrieved from its storage location and passed to the BIOS for retrieval on its next boot [Waltermann: para 0024]. Waltermann similarly to Chu, suggest motherboard replacement. Further, Waltermann discusses the BIOS reads the second encrypted blob, and since there is a flag indicating that the second encrypted key was encrypted with the administrator password, the BIOS prompts for the administrator password. The flag indicating that the BIOS is using a password-encrypted version of the key should be cleared so that the BIOS knows that it is using the TPM-protected version of the SAM file encryption key from this point on, so that the normal boot process can be executed during subsequent boots [Waltermann: para 0025-0027]. Waltermann suggest “the BIOS password is encrypted”, and as such, obviously suggest “without providing a clear text version of the BIOS password”, since the BIOS password is encrypted. One would be motivated to include “the BIOS password is encrypted” and “without providing a clear text version of the BIOS password”, the BIOS to know that it is using the protected version so that the normal boot process can be executed during subsequent boot.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Waltermann with Chu to teach “the BIOS password is encrypted” and “without providing a clear text version of the BIOS password” for the reason for the BIOS to know that it is using the protected version so that the normal boot process can be executed during subsequent boot.
Claim 2: Chu: para 0032 [suggest a proprietary device]; discussing the IHS of claim 1, wherein the program instructions, upon execution, further cause the IHS to obtain the BIOS password from an external device comprising at least one of a back-end database, a proprietary device, an External Display Identification Data (EDID) storage region of a display, a Power Supply Unit (PSU), a wireless local transport device, or a Joint Test Action Group (JTAG) servicing device.
Claim 3: Chu: para 0008; discussing the IHS of claim 1, wherein the program instructions, upon execution, further cause the IHS to obtain the password from a recovery partition of a non-volatile storage system of the IHS.
Claim 4: Chu: para 0008, 0055-0056 [password implemented at the basic input-output system (BIOS), hard drive store the new parameters for motherboard and CPU, replacing the older parameters for motherboard and CPU]; discussing the IHS of claim 1, wherein the program instructions, upon execution, further cause the IHS to, when a previous motherboard is currently configured on the IHS: obtain the BIOS password from the previous motherboard; and store the obtained BIOS password in at least one of a non-volatile storage system or an external device.
Claim 5: Chu: para 0055 [new parameters and related information of replaced motherboard suggest changes to password]; discussing the IHS of claim 4, wherein the program instructions, upon execution, further cause the IHS to, when a previous motherboard is currently configured on the IHS: detect that the BIOS password has been changed; and write the changed BIOS password to the non-volatile storage system or the external device.
Claim 6: Chu: para 0048; discussing the IHS of claim 1, wherein the program instructions, upon execution, further cause the IHS to obtain the BIOS password and store the BIOS password while the IHS is being booted.
Claim 7: Chu: para 0008 in view of Waltermann: para 0025-0027 [suggesting “encrypt the BIOS password”, under the same pretext and motivation as in claim 1]; discussing the IHS of claim 1, wherein the program instructions, upon execution, further cause the IHS to encrypt the BIOS password in at least one of a non-volatile storage system or an external device.
Claim 8: Chu: para 0008; discussing the IHS of claim 7, wherein the BIOS password is hidden in the non-volatile storage system or the external device.
Claim 9: Chu: para 0008, 0053; discussing the IHS of claim 1, wherein the program instructions, upon execution, further cause the IHS to obtain the BIOS password from the non-volatile storage system or the external device and configure the BIOS password on the replacement motherboard when the IHS is booted with the replacement motherboard for the first time.
As per claim 10: Chu, et al. teaches a Basic Input/Output System (BIOS) password retention method comprising:
obtaining a BIOS password associated with a previous motherboard [Chu: para 0008; most password protection schemes store passwords in erasable memory on the motherboard. Many password methods are implemented at the basic input-output system (BIOS) level] that has been removed from an Information Handling System (IHS) [Chu: para 0053; suggest information handling system. Para 0055-0056; Recognizing that most components are the same and that only a couple of the parameters have changed, hard drive configured to accept this change as a normal upgrade of computer system. Accordingly, hard drive store the new parameters for motherboard and CPU, replacing the older parameters for motherboard and CPU. The hard drive may erase the stored information if encountering more than one parameter changes between consecutive boot cycles], **wherein the BIOS password is encrypted; [**rejected under a secondary reference, discussion below]
configuring the BIOS password on the replacement motherboard [Chu: para 0053; to upgrade computer system by replacing motherboard and CPU, may end up with a computer system similar to the one shown in FIG. 6. The motherboard with a new serial number of "BOARD789" and CPU with a new serial number of "CPU789", as well as the associate hardware that may be embedded in motherboard. Para 0055; hard drive store the new parameters for motherboard 601 and CPU 605, replacing the older parameters for motherboard 401 and CPU 405. Consequently, on the next boot cycle, hard drive detect no system changes because the system parameters reported by BIOS will match those stored] **without providing a clear text version of the BIOS password; and [**rejected under a secondary reference, discussion below]
completing booting of the IHS into a normal mode of operation. [Chu: para 0056; hard drive continue to boot and store modified or changed system parameter changes, so long as at least one of the parameters from the previous boot cycle match]
However, Chu did not clearly teach “wherein the BIOS password is encrypted” and “without providing a clear text version of the BIOS password”.
Waltermann teaches a recovery mechanism for the SAM file encryption key in case the motherboard is replaced or the TPM security chip is cleared. For such purpose, the SAM file encryption key must also be encrypted. Thus, the SAM file encryption key is encrypted using an Advanced Encryption Standard (AES) key derived from the administrator password within the Windows.RTM. operating system to generate a second encrypted blob [Waltermann: para 0020]. An administrator performs a system boot after a motherboard replacement, boots the computer system via Windows PE. From Windows PE, the second encrypted blob (i.e., copy of the SAM file encryption key that was encrypted by the administrator password) is retrieved from its storage location and passed to the BIOS for retrieval on its next boot [Waltermann: para 0024]. Waltermann similarly to Chu, suggest motherboard replacement. Further, Waltermann discusses the BIOS reads the second encrypted blob, and since there is a flag indicating that the second encrypted key was encrypted with the administrator password, the BIOS prompts for the administrator password. The flag indicating that the BIOS is using a password-encrypted version of the key should be cleared so that the BIOS knows that it is using the TPM-protected version of the SAM file encryption key from this point on, so that the normal boot process can be executed during subsequent boots [Waltermann: para 0025-0027]. Waltermann suggest “the BIOS password is encrypted”, and as such, obviously suggest “without providing a clear text version of the BIOS password”, since the BIOS password is encrypted. One would be motivated to include “the BIOS password is encrypted” and “without providing a clear text version of the BIOS password”, the BIOS to know that it is using the protected version so that the normal boot process can be executed during subsequent boot.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Waltermann with Chu to teach “the BIOS password is encrypted” and “without providing a clear text version of the BIOS password” for the reason for the BIOS to know that it is using the protected version so that the normal boot process can be executed during subsequent boot.
Claim 11: Chu: para 0032 [suggest a proprietary device]; discussing the IHS of claim 10, further comprising obtaining the BIOS password from an external device comprising at least one of a back-end database, a proprietary device, an External Display Identification Data (EDID) storage region of a display, a Power Supply Unit (PSU), a wireless local transport device, or a Joint Test Action Group (JTAG) servicing device.
Claim 12: Chu: para 0008, 0055-0056 [password implemented at the basic input-output system (BIOS), hard drive store the new parameters for motherboard and CPU, replacing the older parameters for motherboard and CPU]; discussing the IHS of claim 10, further comprising obtaining the password from a recovery partition of a non-volatile storage system of the IHS.
Claim 13: Chu: para 0048; discussing the IHS of claim 10, further comprising, when a previous motherboard is currently configured on the IHS: obtaining the BIOS password from the previous motherboard; and storing the obtained BIOS password in at least one of a non-volatile storage system or an external device.
Claim 14: Chu: para 0055 [new parameters and related information of replaced motherboard suggest changes to password]; discussing the IHS of claim 13, further comprising, when a previous motherboard is currently configured on the IHS: detecting that the BIOS password has been changed; and writing the changed BIOS password to the non-volatile storage system or the external device.
Claim 15: Chu: para 0008; discussing the IHS of claim 10, further comprising encrypting the BIOS password in at least one of a non-volatile storage system or an external device.
Claim 16: Chu: para 0008, 0053; discussing the IHS of claim 10, further comprising obtaining the BIOS password from the non-volatile storage system or the external device and configure the BIOS password on the replacement motherboard when the IHS is booted with the replacement motherboard for the first time.
As per claim 17: Chu, et al. teaches a Basic Input/Output System (BIOS ) password retention system comprising:
an Information Handling System (IHS) comprising a processor and a memory coupled to the processor, the memory having program instructions stored thereon that, upon execution [Chu: para 0032], cause the IHS to, when a replacement motherboard is booted on the IHS: [Chu: para 0053]
obtain a BIOS password associated with a previous motherboard [Chu: para 0008; most password protection schemes store passwords in erasable memory on the motherboard. Many password methods are implemented at the basic input-output system (BIOS) level] that has been removed from the IHS [Chu: para 0055-0056; Recognizing that most components are the same and that only a couple of the parameters have changed, hard drive configured to accept this change as a normal upgrade of computer system. Accordingly, hard drive store the new parameters for motherboard and CPU, replacing the older parameters for motherboard and CPU. The hard drive may erase the stored information if encountering more than one parameter changes between consecutive boot cycles], **wherein the BIOS password is encrypted; [**rejected under a secondary reference, discussion below]
configure the BIOS password on the replacement motherboard [Chu: para 0053; to upgrade computer system by replacing motherboard and CPU, may end up with a computer system similar to the one shown in FIG. 6. The motherboard with a new serial number of "BOARD789" and CPU with a new serial number of "CPU789", as well as the associate hardware that may be embedded in motherboard. Para 0055; hard drive store the new parameters for motherboard 601 and CPU 605, replacing the older parameters for motherboard 401 and CPU 405. Consequently, on the next boot cycle, hard drive detect no system changes because the system parameters reported by BIOS will match those stored] **without providing a clear text version of the BIOS password; and [**rejected under a secondary reference, discussion below]
complete booting of the IHS into a normal mode of operation. [Chu: para 0056; hard drive continue to boot and store modified or changed system parameter changes, so long as at least one of the parameters from the previous boot cycle match]
However, Chu did not clearly teach “wherein the BIOS password is encrypted” and “without providing a clear text version of the BIOS password”.
Waltermann teaches a recovery mechanism for the SAM file encryption key in case the motherboard is replaced or the TPM security chip is cleared. For such purpose, the SAM file encryption key must also be encrypted. Thus, the SAM file encryption key is encrypted using an Advanced Encryption Standard (AES) key derived from the administrator password within the Windows.RTM. operating system to generate a second encrypted blob [Waltermann: para 0020]. An administrator performs a system boot after a motherboard replacement, boots the computer system via Windows PE. From Windows PE, the second encrypted blob (i.e., copy of the SAM file encryption key that was encrypted by the administrator password) is retrieved from its storage location and passed to the BIOS for retrieval on its next boot [Waltermann: para 0024]. Waltermann similarly to Chu, suggest motherboard replacement. Further, Waltermann discusses the BIOS reads the second encrypted blob, and since there is a flag indicating that the second encrypted key was encrypted with the administrator password, the BIOS prompts for the administrator password. The flag indicating that the BIOS is using a password-encrypted version of the key should be cleared so that the BIOS knows that it is using the TPM-protected version of the SAM file encryption key from this point on, so that the normal boot process can be executed during subsequent boots [Waltermann: para 0025-0027]. Waltermann suggest “the BIOS password is encrypted”, and as such, obviously suggest “without providing a clear text version of the BIOS password”, since the BIOS password is encrypted. One would be motivated to include “the BIOS password is encrypted” and “without providing a clear text version of the BIOS password”, the BIOS to know that it is using the protected version so that the normal boot process can be executed during subsequent boot.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Waltermann with Chu to teach “the BIOS password is encrypted” and “without providing a clear text version of the BIOS password” for the reason for the BIOS to know that it is using the protected version so that the normal boot process can be executed during subsequent boot.
Claim 18: Chu: para 0032 [suggest a proprietary device]; discussing the BIOS password retention system of claim 17, wherein the program instructions, upon execution, further cause the IHS to obtain the password from a recovery partition of a non-volatile storage system of the IHS.
Claim 19: Chu: para 0008, 0055-0056 [password implemented at the basic input-output system (BIOS), hard drive store the new parameters for motherboard and CPU, replacing the older parameters for motherboard and CPU]; discussing the BIOS password retention system of claim 17, wherein the program instructions, upon execution, further cause the IHS to, when a previous motherboard is currently configured on the IHS: obtain the BIOS password from the previous motherboard; and store the obtained BIOS password in at least one of a non-volatile storage system or an external device.
Claim 20: Chu: para 0055 [new parameters and related information of replaced motherboard suggest changes to password]; discussing the BIOS password retention system of claim 19, wherein the program instructions, upon execution, further cause the IHS to, when a previous motherboard is currently configured on the IHS: detect that the BIOS password has been changed; and write the changed BIOS password to the non-volatile storage system or the external device.
Conclusion
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Leynna Truvan
Examiner
Art Unit 2435
/L.TT/Examiner, Art Unit 2435
/EDWARD ZEE/Primary Examiner, Art Unit 2435
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