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
Claim 20 is objected to because of the following informalities: the word “quiet” has been included following the end of the claim text in the last line. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 18-20 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 18 recites the limitation “cause the replacement motherboard to, when a previous motherboard is currently configured on the IHS: obtain the BIOS entitlements from the previous motherboard, and store the obtained BIOS entitlements in the recovery partition”. However, Applicant’s disclosure as originally filed does not provide any description of the replacement motherboard obtaining the BIOS entitlements from the previous motherboard, and storing them in the recovery partition, as it is a replacement for the previous motherboard and it is not installed in the system at the same time as the previous motherboard (See Paragraph 25). For the purposes of evaluating prior art with respect to patentability, the Examiner has interpreted this limitation as “cause the IHS to, when a previous motherboard is currently configured on the IHS: obtain the BIOS entitlements from the previous motherboard, and store the obtained BIOS entitlements in the recovery partition”.
Dependent claims inherit the lack of written description of their parent claims and are rejected under the same reasoning.
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) 18-20 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 18 recites the limitation “cause the replacement motherboard to, when a previous motherboard is currently configured on the IHS: obtain the BIOS entitlements from the previous motherboard, and store the obtained BIOS entitlements in the recovery partition”. It is unclear as to how the replacement motherboard can perform any actions while the previous motherboard is currently configured on the IHS, as it is a replacement for the previous motherboard and it is not installed in the system at the same time as the previous motherboard (See Paragraph 25). For the purposes of evaluating prior art with respect to patentability, the Examiner has interpreted this limitation as “cause the IHS to, when a previous motherboard is currently configured on the IHS: obtain the BIOS entitlements from the previous motherboard, and store the obtained BIOS entitlements in the recovery partition”.
Dependent claims inherit the indefiniteness of their parent claims and are rejected under the same reasoning.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim(s) 18-20 is/are rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks utility.
Claim 18 recites the limitation “cause the replacement motherboard to, when a previous motherboard is currently configured on the IHS: obtain the BIOS entitlements from the previous motherboard, and store the obtained BIOS entitlements in the recovery partition”. As the replacement motherboard is a replacement for the previous motherboard, it cannot perform functions such as obtaining the BIOS entitlements from the previous motherboard and storing them in the recovery partition, because it is not installed in the system at the same time as the previous motherboard (See Paragraph 25). For the purposes of evaluating prior art with respect to patentability, the Examiner has interpreted this limitation as “cause the IHS to, when a previous motherboard is currently configured on the IHS: obtain the BIOS entitlements from the previous motherboard, and store the obtained BIOS entitlements in the recovery partition”.
Dependent claims inherit the inoperativeness 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, 3-7, 9, 11-16, and 18-20 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-837”).
In reference to Claim 1, Sayyed-837 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 1 Number 137, Figure 4 Number 430, and Paragraphs 43-44, wherein the non-volatile storage system comprises a recovery partition (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, as any storage device has at least one partition]) that comprises one of multiple partitions (See Figure 1 Number 137, Figure 3 Numbers 318 and 320, Figure 4 Number 430, and Paragraphs 31, 37, and 48 [claims do not require that the multiple partitions all be on the non-volatile storage system]) and is configured to provide storage for recovery of at least one or applications or system settings of the IHS (See Paragraphs 45-46 [networking profiles, VM settings]) ); 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 3, Sayyed-837 discloses the limitations as applied to Claim 1 above. Sayyed-837 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 recovery partition (See Figure 5 Numbers 514-516 and Paragraphs 51-52).
In reference to Claim 4, Sayyed-837 discloses the limitations as applied to Claim 3 above. Sayyed-837 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-837 discloses the limitations as applied to Claim 3 above. Sayyed-837 further discloses that the program instructions, upon execution, further cause the IHS to encrypt the BIOS entitlements in the recovery partition (See Paragraph 52).
In reference to Claim 6, Sayyed-837 discloses the limitations as applied to Claim 3 above. Sayyed-837 further discloses that the program instructions, upon execution, further cause the IHS to: determine whether the BIOS entitlements already exist in the recovery partition (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-837 discloses the limitations as applied to Claim 1 above. Sayyed-837 further discloses that the program instructions, upon execution, further cause the IHS to obtain the plurality of BIOS entitlements from the recovery partition 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-837 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 1 Number 137, Figure 4 Number 430, and Paragraphs 43-44) of an Information Handling System (IHS) (See Figure 1 and Paragraphs 5 and 23), wherein the non-volatile storage system comprises a recovery partition (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, as any storage device has at least one partition]) that comprises one of multiple partitions (See Figure 1 Number 137, Figure 3 Numbers 318 and 320, Figure 4 Number 430, and Paragraphs 31, 37, and 48 [claims do not require that the multiple partitions all be on the non-volatile storage system]) and is configured to provide storage for recovery of at least one or applications or system settings of the IHS (See Paragraphs 45-46 [networking profiles, VM settings]); configuring a BIOS on a 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 11, Sayyed-837 discloses the limitations as applied to Claim 9 above. Sayyed-837 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 recovery partition (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-837 discloses the limitations as applied to Claim 11 above. Sayyed-837 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-837 discloses the limitations as applied to Claim 11 above. Sayyed-837 further discloses encrypting the BIOS entitlements in the recovery partition (See Paragraph 52).
In reference to Claim 14, Sayyed-837 discloses the limitations as applied to Claim 11 above. Sayyed-837 further discloses determining whether the BIOS entitlements already exist in the recovery partition (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-837 discloses the limitations as applied to Claim 9 above. Sayyed-837 further discloses obtaining the plurality of BIOS entitlements from the recovery partition 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.
In reference to Claim 16, Sayyed-837 discloses an Basic Input/Output System (BIOS) entitlement retention system comprising: a replacement motherboard (See Figure 4 Number 442 and Paragraph 44), 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 replacement motherboard to (See Paragraphs 5 and 59), when booted (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 (See Figure 1 Number 137, Figure 4 Number 430, and Paragraphs 43-44) of an Information Handling System (IHS) (See Figure 1 and Paragraphs 5 and 23); configure a BIOS on the replacement motherboard using the BIOS entitlements (See Figure 6 Number 632 and Paragraph 57), wherein the non-volatile storage system comprises a recovery partition (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, as any storage device has at least one partition]) that comprises one of multiple partitions (See Figure 1 Number 137, Figure 3 Numbers 318 and 320, Figure 4 Number 430, and Paragraphs 31, 37, and 48 [claims do not require that the multiple partitions all be on the non-volatile storage system]) and is configured to provide storage for recovery of at least one or applications or system settings of the IHS (See Paragraphs 45-46 [networking profiles, VM settings]); and complete booting of the replacement motherboard into a normal mode of operation (See Figure 6 Number 610 and Paragraphs 55 and 57).
In reference to Claim 18, Sayyed-837 discloses the limitations as applied to Claim 16 above. Sayyed-837 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 recovery partition (See Figure 5 Numbers 514-516 and Paragraphs 51-52).
In reference to Claim 19, Sayyed-837 discloses the limitations as applied to Claim 4 above. Sayyed-837 further discloses that the program instructions, upon execution, further cause the replacement motherboard to obtain the BIOS entitlements and store the BIOS entitlements while the replacement motherboard 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 20, Sayyed-837 discloses the limitations as applied to Claim 18 above. Sayyed-837 further discloses that the program instructions, upon execution, further cause the IHS to: determine whether the BIOS entitlements already exist in the recovery partition (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).
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-837 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”) and admitted by Applicant to be prior art.
In reference to Claim 8, Sayyed-837 discloses the limitations as applied to Claim 1 above. Sayyed-837 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-837 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). This has been admitted by Applicant to be prior 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 Sayyed-837 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, 7, 9, and 15-16 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 Sayyed-837 and knowledge commonly known in the art and admitted by Applicant to be prior 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;
wherein the non-volatile storage system comprises a recovery partition
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]
that comprises one of multiple partitions
and is configured to provide storage for recovery of at least one or applications or system settings of the IHS;
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 7 (Instant Application)
Claim 4 (Sayyed-887)
cause the IHS to obtain the plurality of BIOS entitlements from the recovery partition 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
wherein the non-volatile storage system comprises a recovery partition
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 [an NVMe storage unit is a recovery partition in accordance with the broadest reasonable interpretation of the term]
that comprises one of multiple partitions
and is configured to provide storage for recovery of at least one or applications or system settings of the IHS;
configuring a BIOS on the replacement motherboard using the BIOS entitlements;
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 15 (Instant Application)
Claim 11 (Sayyed-887)
obtaining the plurality of BIOS entitlements from the recovery partition 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 4 (Sayyed-887)
A Basic Input/Output System (BIOS) entitlement retention system, comprising:
[Claim 1] An Information Handling System (IHS), comprising:
a replacement motherboard comprising:
[Claim 1] a replacement motherboard
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 replacement motherboard to, when booted:
[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 an Information Handling System (IHS);
[Claim 1] Information Handling System (IHS)…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;
wherein the non-volatile storage system comprises a recovery partition
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]
that comprises one of multiple partitions
and is configured to provide storage for recovery of at least one or applications or system settings of the IHS;
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 replacement motherboard into a normal mode of operation.
However, the aforementioned claims of Sayyed-887 do not explicitly disclose that the context data is BIOS entitlement data, that the recovery partition that comprises one of multiple partitions and is configured to provide storage for recovery of at least one or applications or system settings of the IHS; and completing the booting of the IHS or replacement motherboard into a normal mode of operation, as in Claims 1, 8, and 16. Sayyed-837 discloses the transferring of BIOS entitlement data to a replacement motherboard when transferring context information to the replacement motherboard (See Figure 4 Number 432, Figure 6 Numbers 622-628, and Paragraphs 19, 45-46 and 56-57), wherein the BIOS entitlement data is obtained from a recovery partition of a 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, as any storage device has at least one partition]), wherein the recovery partition that comprises one of multiple partitions (See Figure 1 Number 137, Figure 3 Numbers 318 and 320, Figure 4 Number 430, and Paragraphs 31, 37, and 48 [claims do not require that the multiple partitions all be on the non-volatile storage system]) and is configured to provide storage for recovery of at least one or applications or system settings of the IHS (See Paragraphs 45-46 [networking profiles, VM settings]). Official Notice is taken that completing booting of an IHS into a normal mode of operation is well known in the art. This has been admitted by Applicant to be prior 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 and recovery partition of Sayyed-837, 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 from a recovery partition of Sayyed-837 as the context data and storage of the aforementioned claims of Sayyed-887 would have yielded the predicable result of retraining the BIOS firmware on a replacement motherboard to the context of the previous motherboard (See Paragraph 19 of Sayyed-837); 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, 7-9, and 15-16 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim(s) 1, 2, and 9-11 of U.S. Patent No. 12,608,213 to McNulty et al. (“McNulty”) in view of Sayyed-837.
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;
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
wherein the non-volatile storage system comprises a recovery partition
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]
that comprises one of multiple partitions
and is configured to provide storage for recovery of at least one or applications or system settings 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 7 (Instant Application)
Claim 1 (McNulty)
cause the IHS to obtain the plurality of BIOS entitlements from the recovery partition 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
wherein the non-volatile storage system comprises a recovery partition
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]
that comprises one of multiple partitions
and is configured to provide storage for recovery of at least one or applications or system settings of the IHS;
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] configure a BIOS on the replacement motherboard with the BIOS entitlements;
A Basic Input/Output System (BIOS) entitlement retention method comprising:
[Claim 10] and complete booting of the IHS into a normal mode of operation.
Claim 15 (Instant Application)
Claim 10 (McNulty)
obtaining the plurality of BIOS entitlements from the recovery partition 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:
[Claim 1] An Information Handling System (IHS), comprising:
a replacement motherboard comprising:
[Claim 1] a replacement motherboard
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 replacement motherboard to, when booted:
[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 an Information Handling System (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
wherein the non-volatile storage system comprises a recovery partition
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]
that comprises one of multiple partitions
and is configured to provide storage for recovery of at least one or applications or system settings 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 replacement motherboard into a normal mode of operation.
[Claim 1] and complete booting of the IHS into a normal mode of operation
However, the aforementioned claims of McNulty do not explicitly disclose that the recovery partition that comprises one of multiple partitions and is configured to provide storage for recovery of at least one or applications or system settings of the IHS, as in Claims 1, 8, and 16. Sayyed-837 discloses the transferring of BIOS entitlement data to a replacement motherboard when transferring context information to the replacement motherboard (See Figure 4 Number 432, Figure 6 Numbers 622-628, and Paragraphs 19, 45-46 and 56-57), wherein the BIOS entitlement data is obtained from a recovery partition of a 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, as any storage device has at least one partition]), wherein the recovery partition that comprises one of multiple partitions (See Figure 1 Number 137, Figure 3 Numbers 318 and 320, Figure 4 Number 430, and Paragraphs 31, 37, and 48 [claims do not require that the multiple partitions all be on the non-volatile storage system]) and is configured to provide storage for recovery of at least one or applications or system settings of the IHS (See Paragraphs 45-46 [networking profiles, VM settings]).
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 McNulty using the BIOS entitlement data and recovery partition of Sayyed-837, resulting in the claimed inventions, because the simple substitution of the BIOS entitlement data from a recovery partition of Sayyed-837 as the BIOS entitlement data and storage of the aforementioned claims of McNulty would have yielded the predicable result of retraining the BIOS firmware on a replacement motherboard to the context of the previous motherboard (See Paragraph 19 of Sayyed-837).
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”), in view of Sayyed-837.
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.
wherein the non-volatile storage system comprises a recovery partition
that comprises one of multiple partitions
and is configured to provide storage for recovery of at least one or applications or system settings of the IHS;
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 recovery partition 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 15 (Instant Application)
Claim 10 (McNulty)
obtaining the plurality of BIOS entitlements from the recovery partition 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:
[Claim 1] attach to a system device that stores one or more Basic Input/Output System (BIOS) entitlements associated with the IHS;
a replacement motherboard comprising:
[Claim 1] a replacement motherboard
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 replacement motherboard to, when booted:
[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 an Information Handling System (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.
wherein the non-volatile storage system comprises a recovery partition
that comprises one of multiple partitions
and is configured to provide storage for recovery of at least one or applications or system settings 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 replacement motherboard into a normal mode of operation.
[Claim 1] and complete booting of the IHS into a normal mode of operation
However, the aforementioned claims of Dyson do not explicitly disclose that the non-volatile storage system comprises a recovery partition that comprises one of multiple partitions and is configured to provide storage for recovery of at least one or applications or system settings of the IHS, as in Claims 1, 8, and 16. Sayyed-837 discloses the transferring of BIOS entitlement data to a replacement motherboard when transferring context information to the replacement motherboard (See Figure 4 Number 432, Figure 6 Numbers 622-628, and Paragraphs 19, 45-46 and 56-57), wherein the BIOS entitlement data is obtained from a recovery partition of a 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, as any storage device has at least one partition]), wherein the recovery partition that comprises one of multiple partitions (See Figure 1 Number 137, Figure 3 Numbers 318 and 320, Figure 4 Number 430, and Paragraphs 31, 37, and 48 [claims do not require that the multiple partitions all be on the non-volatile storage system]) and is configured to provide storage for recovery of at least one or applications or system settings of the IHS (See Paragraphs 45-46 [networking profiles, VM settings]).
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 BIOS entitlement data and recovery partition of Sayyed-837, resulting in the claimed inventions, because the simple substitution of the BIOS entitlement data from a recovery partition of Sayyed-837 as the BIOS entitlement data and storage of the aforementioned claims of Dyson would have yielded the predicable result of retraining the BIOS firmware on a replacement motherboard to the context of the previous motherboard (See Paragraph 19 of Sayyed-837).
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”), in view of Sayyed-837.
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]
wherein the non-volatile storage system comprises a recovery partition
that comprises one of multiple partitions
and is configured to provide storage for recovery of at least one or applications or system settings of 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 7 (Instant Application)
Claim 1 (Molner)
cause the IHS to obtain the plurality of BIOS entitlements from the recovery partition 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]
wherein the non-volatile storage system comprises a recovery partition
that comprises one of multiple partitions
and is configured to provide storage for recovery of at least one or applications or system settings of 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 15 (Instant Application)
Claim 10 (Molner)
obtaining the plurality of BIOS entitlements from the recovery partition 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:
retrieve, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with the IHS
a replacement motherboard comprising:
a replacement motherboard
a processor;
a processor;
and a memory coupled to the processor, the memory having program instructions stored thereon that, upon execution, cause the replacement motherboard to, when booted:
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 an Information Handling System (IHS);
retrieve, from a QR code, one or more Basic Input/Output System (BIOS) entitlements associated with the 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]
wherein the non-volatile storage system comprises a recovery partition
that comprises one of multiple partitions
and is configured to provide storage for recovery of at least one or applications or system settings of 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 replacement motherboard into a normal mode of operation.
and complete booting of the IHS into a normal mode of operation.
However, the aforementioned claims of Molner do not explicitly disclose that the non-volatile storage system comprises a recovery partition that comprises one of multiple partitions and is configured to provide storage for recovery of at least one or applications or system settings of the IHS, as in Claims 1, 8, and 16. Sayyed-837 discloses the transferring of BIOS entitlement data to a replacement motherboard when transferring context information to the replacement motherboard (See Figure 4 Number 432, Figure 6 Numbers 622-628, and Paragraphs 19, 45-46 and 56-57), wherein the BIOS entitlement data is obtained from a recovery partition of a 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, as any storage device has at least one partition]), wherein the recovery partition that comprises one of multiple partitions (See Figure 1 Number 137, Figure 3 Numbers 318 and 320, Figure 4 Number 430, and Paragraphs 31, 37, and 48 [claims do not require that the multiple partitions all be on the non-volatile storage system]) and is configured to provide storage for recovery of at least one or applications or system settings of the IHS (See Paragraphs 45-46 [networking profiles, VM settings]).
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 Molner using the BIOS entitlement data and recovery partition of Sayyed-837, resulting in the claimed inventions, because the simple substitution of the BIOS entitlement data from a recovery partition of Sayyed-837 as the BIOS entitlement data and storage of the aforementioned claims of Molner would have yielded the predicable result of retraining the BIOS firmware on a replacement motherboard to the context of the previous motherboard (See Paragraph 19 of Sayyed-837).
Response to Arguments
Applicant's arguments filed 20 July 2026 have been fully considered but they are not persuasive.
Official Notice was taken in the previous Office Action. To adequately traverse such a finding, an Applicant must specifically point out the supposed errors in the Examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. If the Applicant does not traverse the Examiner’s assertion of Official Notice, the common knowledge or well-known in the art statement is taken to be admitted prior art. (See MPEP 2144.03 C). The Examiner’s assertion of Official Notice is hereby taken to be admitted prior art due to the Applicant’s failure to traverse the assertion.
Applicant has argued that Sayyed does not disclose obtaining a plurality of Basic Input/Output System (BIOS) entitlements from a non-volatile storage system of the IHS; configuring a BIOS on the replacement motherboard using the BIOS entitlements, wherein the non-volatile storage system comprises a recovery partition that comprises one of multiple partitions and is configured to provide storage for recovery of at least one or applications or system settings of the IHS (See Pages 9-10). In response, the Examiner notes that Sayyed discloses obtaining 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 1 Number 137, Figure 4 Number 430, and Paragraphs 43-44). Sayyed further discloses that the non-volatile storage system comprises a recovery partition (See Figure 1 Number 137, Figure 4 Number 430, and Paragraphs 31, 37, and 48) that comprises one of multiple partitions (See Figure 1 Number 137, Figure 3 Numbers 318 and 320, 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, as any storage device has at least one partition. It is noted that the claims do not require that the multiple partitions all be on the non-volatile storage system, and thus the recovery partition of the NVME storage unit is one of multiple partitions, as there are other partitions in the system, such as those shown in Figure 3 Numbers 318 and 320. Sayyed further discloses that the recovery partition is configured to provide storage for recovery of at least one or applications or system settings of the IHS (See Paragraphs 45-46 [networking profiles, VM settings]).
Conclusion
The art made of record and not relied upon is considered pertinent to applicant's disclosure.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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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.
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/THOMAS J. CLEARY/Primary Examiner, Art Unit 2175
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