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 § 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.
Claim(s) 9-15 is/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 9 recites the limitation "the replacement motherboard" in Line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the program instructions” in Lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Dependent claims inherit the indefiniteness of their parent claims and are rejected under the same reasoning.
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) 1-7 and 9-20 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 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 on the IHS (See Paragraphs 54-55): obtain a plurality of Basic Input/Output System (BIOS) entitlements (See Figure 4 Number 432, Figure 6 Numbers 622-628, and Paragraphs 19, 45-46 and 56-57) from a non-volatile storage system of the IHS (See Figure 4 Number 430 and Paragraphs 43-44); 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).
In reference to Claim 2, Sayyed discloses the limitations as applied to Claim 1 above. Sayyed further discloses that the program instructions, upon execution, further cause the IHS to obtain the plurality of BIOS entitlements from a recovery partition of the non-volatile storage system (See Figure 1 Number 137, Figure 4 Number 430, and Paragraphs 31, 37, and 48 [an NVME storage unit is a recovery partition in accordance with the broadest reasonable interpretation of the term]).
In reference to Claim 3, Sayyed discloses the limitations as applied to Claim 1 above. Sayyed further discloses that the program instructions, upon execution, further cause the IHS to, when a previous motherboard is currently configured on the IHS (See Paragraph 49): obtain the BIOS entitlements from the previous motherboard (See Figure 5 Number 512 and Paragraphs 50-52); and store the obtained BIOS entitlements in the non-volatile storage system (See Figure 5 Numbers 514-516 and Paragraphs 51-52).
In reference to Claim 4, Sayyed discloses the limitations as applied to Claim 3 above. Sayyed further discloses that the program instructions, upon execution, further cause the IHS to obtain the BIOS entitlements and store the BIOS entitlements while the IHS is being booted (See Paragraph 49 [context data updating can be performed during the PEI and/or DXE phase of a boot process]).
In reference to Claim 5, Sayyed discloses the limitations as applied to Claim 3 above. Sayyed further discloses that the program instructions, upon execution, further cause the IHS to encrypt the BIOS entitlements in the non-volatile storage system (See Paragraph 52).
In reference to Claim 6, Sayyed discloses the limitations as applied to Claim 3 above. Sayyed further discloses that the program instructions, upon execution, further cause the IHS to: determine whether the BIOS entitlements already exist in the non-volatile storage system (See Paragraphs 51-52 [determine whether there is no new context {entitlements exist} or whether context has changed {entitlements do not exist} and determine whether context binary object exists]); and obtain the BIOS entitlements and store the BIOS entitlements when they currently do not exist (See Paragraphs 51-52).
In reference to Claim 7, Sayyed discloses the limitations as applied to Claim 1 above. Sayyed further discloses that the program instructions, upon execution, further cause the IHS to obtain the plurality of BIOS entitlements from the non-volatile storage system of the IHS and configure the BIOS on the replacement motherboard when the IHS is booted with the replacement motherboard for the first time (See Figure 6 Number 606 and Paragraph 55).
In reference to Claim 9, Sayyed discloses a Basic Input/Output System (BIOS) entitlement retention method (See Paragraphs 19, 45-46 and 56-57) comprising: obtaining a plurality of BIOS entitlements (See Figure 4 Number 432, Figure 6 Numbers 622-628, and Paragraphs 19, 45-46 and 56-57) from a non-volatile storage system (See Figure 4 Number 430 and Paragraphs 43-44) of an Information Handling System (IHS) (See Figure 1 and Paragraphs 5 and 23); configuring a BIOS on the replacement motherboard (See Figure 4 Number 442 and Paragraph 44) 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).
In reference to Claim 10, Sayyed discloses the limitations as applied to Claim 9 above. Sayyed further discloses that the program instructions, upon execution, further cause the IHS to obtain the plurality of BIOS entitlements from a recovery partition of the non-volatile storage system (See Figure 1 Number 137, Figure 4 Number 430, and Paragraphs 31, 37, and 48 [an NVME storage unit is a recovery partition in accordance with the broadest reasonable interpretation of the term]).
In reference to Claim 11, Sayyed discloses the limitations as applied to Claim 9 above. Sayyed further discloses that when a previous motherboard is currently configured on the IHS (See Paragraph 49): obtaining the BIOS entitlements from the previous motherboard (See Figure 5 Number 512 and Paragraphs 50-52); and storing the obtained BIOS entitlements in the non-volatile storage system (See Figure 5 Numbers 514-516 and Paragraphs 51-52).
It is noted that Claim 11 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 12, Sayyed discloses the limitations as applied to Claim 11 above. Sayyed further discloses obtaining the BIOS entitlements and storing the BIOS entitlements while the IHS is being booted (See Paragraph 49 [context data updating can be performed during the PEI and/or DXE phase of a boot process]).
In reference to Claim 13, Sayyed discloses the limitations as applied to Claim 11 above. Sayyed further discloses encrypting the BIOS entitlements in the non-volatile storage system (See Paragraph 52).
In reference to Claim 14, Sayyed discloses the limitations as applied to Claim 11 above. Sayyed further discloses determining whether the BIOS entitlements already exist in the non-volatile storage system (See Paragraphs 51-52 [determine whether there is no new context {entitlements exist} or whether context has changed {entitlements do not exist} and determine whether context binary object exists]); and obtaining the BIOS entitlements and store the BIOS entitlements when they currently do not exist (See Paragraphs 51-52).
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 9 above. Sayyed further discloses 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 (See Figure 6 Number 606 and Paragraph 55).
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.
Claim 20 recites limitations which are substantially equivalent to those of Claim 6 and is rejected under similar reasoning.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sayyed as applied to Claim 1 above, and further in view of knowledge commonly known in the art, as evidenced by US Patent Application Publication Number 20099/0292746 to Bricker et al. (“Bricker”).
In reference to Claim 8, Sayyed discloses the limitations as applied to Claim 1 above. Sayyed further discloses that the program instructions, upon execution, further cause the IHS to determine whether the BIOS entitlements are valid; and enable the IHS to complete booting to the normal mode of operation only when the BIOS entitlements are valid (See Figure 6 Numbers 624-630 and Paragraphs 56-57). However, Sayyed does not explicitly disclose that that the program instructions, upon execution, further cause the IHS to determine whether the BIOS entitlements are successfully transferred to the replacement motherboard; and enable the IHS to complete booting to the normal mode of operation only when the BIOS entitlements are successfully transferred to the replacement motherboard. Official Notice is taken that determining whether data is successfully transferred from one location to another and enabling a computer to continue normal operation only when the data is successfully transferred is well known in the art, as evidenced by Bricker (See Paragraph 22).
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 well-known successful data transfer determination, resulting in the invention of Claim 8, in order to yield the predictable result of ensuring that the BIOS entitlements transferred to the replacement motherboard are successfully received and match the BIOS entitlements stored in recovery partition, thus allowing the system to request a new copy of the BIOS entitlements when the transfer is unsuccessful (See Paragraph 22 of Bricker).
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) 1-2, 7, 9-10, 15-17 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 4, 8, and 11 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 4 (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
obtain a plurality of Basic Input/Output System (BIOS) entitlements from a non-volatile storage system of 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 2 (Instant Application)
Claim 1 (Sayyed-887)
obtain the plurality of BIOS entitlements from a recovery partition of the non-volatile storage system.
access context data associated with the previous motherboard from a NVMe storage unit that is deployed in the IHS independently of the replacement motherboard [an NVMe storage unit is a recovery partition in accordance with the broadest reasonable interpretation of the term]
Claim 7 (Instant Application)
Claim 4 (Sayyed-887)
cause the IHS to obtain the plurality of BIOS entitlements from the non-volatile storage system of the IHS and configure the BIOS on the replacement motherboard when the IHS is booted with the replacement motherboard for the first time.
cause the IHS to perform the acts of detecting, accessing, and updating only when the replacement motherboard is started for the first time.
Claim 9 (Instant Application)
Claim 10 (Sayyed-887)
A Basic Input/Output System (BIOS) entitlement retention method comprising:
A method comprising:
obtaining a plurality of BIOS entitlements from a non-volatile storage system of an Information Handling System (IHS);
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;
he 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 10 (Instant Application)
Claim 10 (Sayyed-887)
obtain the plurality of BIOS entitlements from a recovery partition of the non-volatile storage system.
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
Claim 15 (Instant Application)
Claim 11 (Sayyed-887)
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.
performing the acts of detecting, accessing, and updating only when the replacement motherboard is started for the first time
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
obtain a plurality of Basic Input/Output System (BIOS) entitlements from a non-volatile storage system of 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 17 (Instant Application)
Claim 1 (Sayyed-887)
obtain the plurality of BIOS entitlements from a recovery partition of the non-volatile storage system.
access context data associated with the previous motherboard from a NVMe storage unit that is deployed in the IHS independently of the replacement motherboard [an NVMe storage unit is a recovery partition in accordance with the broadest reasonable interpretation of the term]
However, the aforementioned claims of Sayyed-887 do not explicitly disclose 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, 8, and 16. Herzi discloses the transferring of BIOS entitlement data 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.
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 BIOS entitlement data of Herzi as 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); 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) 1-2, 7-10, and 15-17 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim(s) 1, 2, and 9-11 of copending Application No. 18/788,257, published as US Patent Application Publication Number 2026/0037271, to McNulty et al. (“McNulty”).
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 McNulty 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 2 (McNulty)
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 replacement motherboard is booted for the first time:
obtain a plurality of Basic Input/Output System (BIOS) entitlements from a non-volatile storage system of the IHS;
[Claim 1] 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
[Claim 2] cause the IHS to attach to a USB flash drive to obtain the BIOS entitlements [USB flash is a type of nonvolatile storage
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 2 (Instant Application)
Claim 2 (McNulty)
obtain the plurality of BIOS entitlements from a recovery partition of the non-volatile storage system.
cause the IHS to attach to a USB flash drive to obtain the BIOS entitlements [USB flash is a recovery partition in accordance with the broadest reasonable interpretation of the term]
Claim 7 (Instant Application)
Claim 1 (McNulty)
cause the IHS to obtain the plurality of BIOS entitlements from the non-volatile storage system of the IHS and configure the BIOS on the replacement motherboard when the IHS is booted with the replacement motherboard for the first time.
when a replacement motherboard is booted for the first time: 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;
Claim 8 (Instant Application)
Claim 9 (McNulty)
cause the IHS to determine whether the BIOS entitlements are successfully transferred to the replacement motherboard;
cause the IHS to: determine whether the BIOS entitlements are successfully transferred to the motherboard;
and enable the IHS to complete booting to the normal mode of operation only when the BIOS entitlements are successfully transferred to the replacement motherboard.
and enable the motherboard to complete booting to the normal mode of operation only when the BIOS entitlements are successfully transferred.
Claim 9 (Instant Application)
Claims 10 and 11 (McNulty)
A Basic Input/Output System (BIOS) entitlement retention method comprising:
[Claim 10] A motherboard replacement method comprising:
obtaining a plurality of BIOS entitlements from a non-volatile storage system of an Information Handling System (IHS);
[Claim 10] attaching to a device that stores one or more Basic Input/Output System (BIOS) entitlements associated with an Information Handling System (IHS); configure a BIOS on the replacement motherboard with the BIOS entitlements;
[Claim 11] attach to a USB flash drive to obtain the BIOS entitlements [USB flash is a type of nonvolatile storage
configuring a BIOS on the replacement motherboard using the BIOS entitlements;
[Claim 10] configure a BIOS on the replacement motherboard with the BIOS entitlements;
and completing booting of the IHS into a normal mode of operation.
[Claim 10] and complete booting of the IHS into a normal mode of operation.
Claim 10 (Instant Application)
Claim 11 (McNulty)
obtain the plurality of BIOS entitlements from a recovery partition of the non-volatile storage system.
attach to a USB flash drive to obtain the BIOS entitlements [USB flash is a recovery partition in accordance with the broadest reasonable interpretation of the term]
Claim 15 (Instant Application)
Claim 10 (McNulty)
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.
when a replacement motherboard is booted for the first time: attaching to a device that stores one or more Basic Input/Output System (BIOS) entitlements associated with an Information Handling System (IHS); configure a BIOS on the replacement motherboard with the BIOS entitlements;
Claim 16 (Instant Application)
Claims 1 and 2 (McNulty)
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 replacement motherboard is booted for the first time:
obtain a plurality of Basic Input/Output System (BIOS) entitlements from a non-volatile storage system of the IHS;
[Claim 1] 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
[Claim 2] cause the IHS to attach to a USB flash drive to obtain the BIOS entitlements [USB flash is a type of nonvolatile storage
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 17 (Instant Application)
Claim 2 (McNulty)
obtain the plurality of BIOS entitlements from a recovery partition of the non-volatile storage system.
cause the IHS to attach to a USB flash drive to obtain the BIOS entitlements [USB flash is a recovery partition in accordance with the broadest reasonable interpretation of the term]
Claim(s) 1, 7, 9, and 15-16 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim(s) 1, 3, and 10 of copending Application No. 18/777,645, published as US Patent Application Publication Number 2026/0023571 to Dyson et al. (“Dyson”).
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)
Claims 1 and 3 (Dyson)
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 replacement motherboard is booted for the first time:
obtain a plurality of Basic Input/Output System (BIOS) entitlements from a non-volatile storage system of the IHS;
[Claim 1] attach to a system device that stores one or more Basic Input/Output System (BIOS) entitlements associated with the IHS;
[Claim 3] cause the IHS to access the BIOS entitlements from an Extended Display Identification Data (EDID) region of memory in the external display.
configure a BIOS on the replacement motherboard using the BIOS entitlements;
[Claim 1] configure a BIOS on the replacement motherboard using 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 7 (Instant Application)
Claim 1 (Dyson)
cause the IHS to obtain the plurality of BIOS entitlements from the non-volatile storage system of the IHS and configure the BIOS on the replacement motherboard when the IHS is booted with the replacement motherboard for the first time.
when a replacement motherboard is booted for the first time: 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;
Claim 9 (Instant Application)
Claim 10 (Dyson)
A Basic Input/Output System (BIOS) entitlement retention method comprising:
[Claim 10] A bios entitlement retention method comprising:
obtaining a plurality of BIOS entitlements from a non-volatile storage system of an Information Handling System (IHS);
[Claim 10] 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;
[Claim 12] accessing the BIOS entitlements from an Extended Display Identification Data (EDID) region of memory in the external display
configuring a BIOS on the replacement motherboard using the BIOS entitlements;
[Claim 10] configuring a BIOS on the replacement motherboard using the BIOS entitlements;
and completing booting of the IHS into a normal mode of operation.
[Claim 10] and completing booting of the IHS into a normal mode of operation.
Claim 15 (Instant Application)
Claim 10 (Dyson)
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.
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;
Claim(s) 1, 7, 9, and 15-16 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim(s) 1 and 10 of copending Application No. 18/777,654, published as US Patent Application Publication Number 2026/0023572 to Molner et al. (“Molner”).
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 (Molner)
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:
obtain a plurality of Basic Input/Output System (BIOS) entitlements from a non-volatile storage system of the IHS;
retrieve, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with the HIS [a QR code stores data in a nonvolatile manner, and is thus a non-volatile storage system in accordance with the broadest reasonable interpretation of the term]
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 7 (Instant Application)
Claim 1 (Molner)
cause the IHS to obtain the plurality of BIOS entitlements from the non-volatile storage system of the IHS and configure the BIOS on the replacement motherboard when the IHS is booted with the replacement motherboard 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; configure a BIOS on the replacement motherboard using the BIOS entitlements
Claim 9 (Instant Application)
Claim 10 (Molner)
A Basic Input/Output System (BIOS) entitlement retention method comprising:
A BIOS entitlement retention method for a motherboard replacement, the BIOS entitlement retention method comprising,
obtaining a plurality of BIOS entitlements from a non-volatile storage system of an Information Handling System (IHS);
retrieving, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with an Information Handling System (IHS) [a QR code stores data in a nonvolatile manner, and is thus a non-volatile storage system in accordance with the broadest reasonable interpretation of the term]
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 15 (Instant Application)
Claim 10 (Molner)
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.
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;
Claim 16 (Instant Application)
Claim 1 (Molner)
A Basic Input/Output System (BIOS) entitlement retention system comprising: an Information Handling System (IHS)
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:
obtain a plurality of Basic Input/Output System (BIOS) entitlements from a non-volatile storage system of the IHS;
retrieve, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with the HIS [a QR code stores data in a nonvolatile manner, and is thus a non-volatile storage system in accordance with the broadest reasonable interpretation of the term]
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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Jung can be reached at 571-270-3779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THOMAS J. CLEARY/Primary Examiner, Art Unit 2175
Prosecution Insights