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.
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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim(s) 11 and 13 is/are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 11 recites the limitation “performing a secure boot verification is to perform the secure boot verification by using a digital signature scheme”. Claim 1, from which Claim 11 depends, recites the limitation “performing a secure boot verification to verify the OS image based on the private key contained in the OS image and the public key thus selected”. As is known in the art, the use of public and private keys for verification is a type of digital signature scheme. Thus, the use of the public and private keys to perform the secure boot verification of Claim 1 necessarily results in the use of a digital signature scheme.
Claim 13 recites the limitation “performing a secure boot verification is to perform the secure boot verification by using a digital signature scheme”. Claim 1, from which Claim 13 depends via Claim 12, recites the limitation “performing a secure boot verification to verify the OS image based on the private key contained in the OS image and the public key thus selected”. As is known in the art, the use of public and private keys for verification is a type of digital signature scheme. Thus, the use of the public and private keys to perform the secure boot verification of Claims 1 and 12 necessarily results in the use of a digital signature scheme.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-9 and 11-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Number 9,122,501 to Hsu et al. (“Hsu”), US Patent Application Publication Number 2018/0365427 to Callaghan (“Callaghan”), and US Patent Application Publication Number 2005/0283606 to Williams et al. (“Williams”).
In reference to Claim 1, Hsu discloses a method of configuring Basic Input/Output System (BIOS) settings for a specific model of computer (See Column 2 Lines 1-38 and Column 6 Lines 56-67), a computer of the specific model comprising a processor (See Figure 3 Number 340) and a non-volatile random-access memory (NVRAM) device that are electrically connected to each other (See Figure 3 Number 312), the NVRAM device storing BIOS firmware (See Column 5 Lines 4-13), a plurality of BIOS configuration data sets that correspond respectively to a plurality of ordinary stock-keeping-unit (SKU) codes (See Column 6 Lines 56-67 and Column 7 Lines 20-30), the method being implemented by the processor and comprising steps of: obtaining an asserted SKU code that corresponds to the specific model of computer (See Column 7 Lines 25-27); determining whether the asserted SKU code conforms with a reference SKU code (See Column 7 Lines 27-30); in response to determining that the asserted SKU code does not conform with the reference SKU code, modifying a comparison flag to indicate an inconsistent state; in response to successfully verifying the OS image, determining whether the comparison flag indicates the inconsistent state; in response to determining that the comparison flag indicates the inconsistent state, replacing the reference SKU code with the asserted SKU code; selecting, from among the plurality of BIOS configuration data sets stored in the NVRAM device, a BIOS configuration data set that corresponds to one of the ordinary SKU codes which conforms with the asserted SKU code (See Column 7 Lines 27-29); and configuring the BIOS settings for the BIOS firmware stored in the NVRAM device with the BIOS configuration data set thus selected (See Column 5 Lines 26-39 and Column 7 Lines 27-29). However, Hsu does not explicitly disclosed that the NVRAM device storing a plurality of public keys that correspond respectively to the ordinary SKU codes; and selecting, from among the plurality of public keys stored in the NVRAM device, a public key that corresponds to one of the plurality of ordinary SKU codes which conforms with the asserted SKU code; obtaining an operating system (OS) image, the OS image containing a private key; performing a secure boot verification to verify the OS image based on the private key contained in the OS image and the public key thus selected. Callaghan discloses selecting a public key (See Paragraph 28), from among a plurality of public keys (See Paragraph 26) stored in an NVRAM device (See Paragraph 140); obtaining an operating system (OS) image from among multiple different OS images (See Paragraph 28), the OS image containing a private key (See Paragraph 28); performing a secure boot verification to verify the OS image based on the private key contained in the OS image and the public key thus selected (See Paragraph 28). Williams discloses the use of different OS images for different types of devices (See Paragraphs 4-5 and 15-26). Thus, in the combination with Hsu and Callaghan, each OS image corresponds to a particular type of device/SKU code, and each public key corresponds to a particular OS image, and thus each public key corresponds to a particular type of device/SKU code.
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 Hsu using the multiple OS images with public/private key verification of Callaghan and with each different OS image corresponding to a different type of device of Williams, resulting in the invention of Claim 1, in order to yield the predictable result of allowing the use of multiple different OS configurations with assurance that the configuration has not been modified, changed, or tampered with (See Paragraphs 3-5 of Callaghan); and allow the user to assign a particular OS image to a particular type of system and to ensure that every type of system has an appropriate OS image associated with it (See Paragraphs 4, 20, and 23 of Williams).
It is noted that Claim 1 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 2, Hsu, Callaghan, and Williams disclose the limitations as applied to Claim 1 above. Hsu, Callaghan, and Williams further disclose a step of, in response to determining that the asserted SKU code does not conform with the reference SKU code: disabling at least one shortcut key for the BIOS firmware, and stopping display of any manufacturer information that is related to computer manufacturers.
It is noted that Claim 2 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 3, Hsu, Callaghan, and Williams disclose the limitations as applied to Claim 1 above. Hsu, Callaghan, and Williams further disclose that selecting a public key from among the plurality of public keys is implemented in response to determining that the asserted SKU code conforms with the reference SKU code (See Column 7 Lines 54-58 of Hsu and Paragraph 28 of Callaghan).
It is noted that Claim 3 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 4, Hsu, Callaghan, and Williams disclose the limitations as applied to Claim 1 above. Hsu further discloses the steps of, prior to obtaining an asserted SKU code: determining whether the NVRAM device stores the reference SKU code (See Column 7 Lines 21-25 and 35-43); and in response to determining that the NVRAM device stores the reference SKU code, obtaining the reference SKU code from the NVRAM device (See Column 7 Lines 25-27 and 44-45).
It is noted that Claim 4 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 5, Hsu, Callaghan, and Williams disclose the limitations as applied to Claim 4 above. Hsu, Callaghan, and Williams further disclose that the computer of the specific model further comprising a field replace unit (FRU) that is electrically connected to the processor (See Column 8 Lines 25-64 [components of the computer can be removable/replaceable] of Hsu), the method further comprising steps of, subsequent to obtaining the reference SKU code: determining whether the FRU stores the asserted SKU code (See Column 7 Lines 46-53 of Hsu); and in response to determining that the FRU does not store the asserted SKU code, designating the reference SKU code as the asserted SKU code for the specific model of computer (See Column 7 Lines 27-30 of Hsu), and implementing the step of selecting a public key from among the plurality of public keys stored in the NVRAM device (See Paragraph 28 of Williams), wherein obtaining an asserted SKU code is implemented in response to determining that the FRU stores the asserted SKU code (See Column 7 Lines 44-45 of Hsu).
It is noted that Claim 5 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 6, Hsu, Callaghan, and Williams disclose the limitations as applied to Claim 5 above. Hsu further discloses that obtaining an asserted SKU code is to obtain the asserted SKU code from the FRU (See Column 7 Lines 44-45).
It is noted that Claim 6 is a method claim reciting limitations further limiting contingent limitations, and thus itself recites 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 7, Hsu, Callaghan, and Williams disclose the limitations as applied to Claim 4 above. Hsu, Callaghan, and Williams further disclose that the computer of the specific model further comprising a field replace unit (FRU) that is electrically connected to the processor (See Column 8 Lines 25-64 [components of the computer can be removable/replaceable]), the method further comprising steps of: in response to determining that the NVRAM device does not store the reference SKU code, determining whether the FRU stores the asserted SKU code (See Column 7 Lines 46-53 of Hsu); and in response to determining that the FRU stores the asserted SKU code, modifying the comparison flag to indicate the inconsistent state, wherein selecting a public key from among the plurality of public keys stored in the NVRAM device is implemented in response to determining that the FRU stores the asserted SKU code (See Paragraph 28 of Williams).
It is noted that Claim 5 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 8, Hsu, Callaghan, and Williams disclose the limitations as applied to Claim 7 above. Hsu, Callaghan, and Williams further disclose steps of, in response to determining that the FRU stores the asserted SKU code: disabling at least one shortcut key for the BIOS firmware; and stopping display of any manufacturer information that is related to computer manufacturers.
It is noted that Claim 8 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 9, Hsu, Callaghan, and Williams disclose the limitations as applied to Claim 7 above. Hsu, Callaghan, and Williams further disclose a step of: generating and outputting a request-failed message in response to determining that the NVRAM device does not store the reference SKU code and that the FRU does not store the asserted SKU code.
It is noted that Claim 9 is a method claim reciting contingent limitations. As indicated above, if the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.
In reference to Claim 11, Hsu, Callaghan, and Williams disclose the limitations as applied to Claim 1 above. Callaghan further discloses that performing a secure boot verification is to perform the secure boot verification by using a digital signature scheme (See Paragraph 28).
In reference to Claim 12, Hsu, Callaghan, and Williams disclose the limitations as applied to Claim 1 above. Callaghan further discloses that performing a secure boot verification is to determine whether an operator who is to configure the BIOS settings is qualified (See Paragraphs 2-4 and 28).
In reference to Claim 13, Hsu, Callaghan, and Williams disclose the limitations as applied to Claim 12 above. Callaghan further discloses that performing a secure boot verification is to perform the secure boot verification by using a digital signature scheme (See Paragraph 28).
In reference to Claim 14, Hsu, Callaghan, and Williams disclose the limitations as applied to Claim 1 above. Callaghan further discloses a step of generating and outputting an error message in response to a failure in verifying the OS image (See Paragraph 59).
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, Hsu, Callaghan, and Williams disclose the limitations as applied to Claim 1 above. Hsu, Callaghan, and Williams further disclose a step of: continuing a booting process in response to determining that the comparison flag does not indicate the inconsistent state (See Column 8 Lines 6-8 of Hsu).
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, Hsu, Callaghan, and Williams disclose the limitations as applied to Claim 1 above. Hsu further discloses a step of continuing a booting process subsequent to configuring the BIOS settings with the BIOS configuration data set (See Column 8 Lines 6-8).
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) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hsu, Callaghan, and Williams as applied to Claim 1 above, and further in view of US Patent Application Publication Number 2010/0287363 to Thorsen (“Thorsen”).
In reference to Claim 10, Hsu, Callaghan, and Williams disclose the limitations as applied to Claim 1 above. Hsu, Callaghan, and Williams are silent as to the particular interface used for obtaining the OS image, and do not explicitly disclose obtaining an OS image is to obtain the OS image via a universal serial bus (USB) interface. Thorsen discloses obtaining a public/private key verified OS image via a USB interface (See Paragraphs 12-14 and 106-107).
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 Hsu, Callaghan, and Williams using the USB interface for OS image retrieval of Thorson, resulting in the invention of Claim 10, because Hsu, Callaghan, and Williams are silent as to the particular interface used for obtaining the OS image, and the simple substitution of the USB interface for OS image retrieval of Thorson as the interface for OS image retrieval of Hsu, Callaghan, and Williams would have yielded the predictable result of retrieving the OS image using portable USB storage media that provides an inexpensive medium for booting procedures that are important for making computers highly available (See Paragraph 33 of Thorson).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 13 March 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Conclusion
The art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J CLEARY whose telephone number is (571)272-3624. The examiner can normally be reached Monday-Friday 8AM-5PM.
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/THOMAS J. CLEARY/ Primary Examiner, Art Unit 2175
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