Dell Products L.P.

Patent Trials and Appeals Board

Sep 11, 2020

14304276 - (D) (P.T.A.B. Sep. 11, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/304,276 06/13/2014 Stuart Allen Berke 102450.00145 4901
108431 7590 09/11/2020
Dell c/o Jackson Walker L.L.P.
100 Congress Avenue
Suite 1100
Austin, TX 78701
EXAMINER
KNOX, TYLER W
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
09/11/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STUART ALLEN BERKE and
MUKUND PURSHOTTAM KHATRI
____________

Appeal 2020-002713
Application 14/304,2761
Technology Center 3600
____________

Before BRUCE T. WIEDER, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–21. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Dell
Products, L.P. (Appeal Br. 2.)
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CLAIMED SUBJECT MATTER
Appellant’s invention relates “to information handling systems, and
more particularly to distinguishing, via a system license, information
handling resources that are supported by a provider (e.g., manufacturer,
vendor, etc.) of an information handling system from unsupported
information handling resources.” (Spec. 2, ll. 5–10.)
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. An information handling system comprising:
a processor;
at least one information handling resource
communicatively coupled to the processor, wherein the at least
one information handling resource is a hardware information
handling resource; and
a basic input/output system (BIOS) comprising a program
of instructions executable by the processor and configured to
cause the processor to initialize one or more information
handling resources of the information handling system, wherein
the BIOS is configured to:
record information regarding the at least one
information handling resource, wherein the information
identifies a manufacturer of the at least one information
handling resource;
compare the information to a license for the
information handling system to determine if the at least
one information handling resource is supported by a
provider of the information handling system; and
responsive to determining that the information
handling system is unsupported by the provider based on
the manufacturer being an unsupported manufacturer,
initiate a remedial action with respect to at least one
information handling resource to improve stability of the
information handling system to a greater stability level
than would be present in the absence of the remedial
action, wherein the remedial action includes disabling the
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at least one information handling resource from being used
by the information handling system such that the
information handling system is configured to continue
functioning without using the at least one information
handling resource.

REJECTIONS
Claims 1–21 are rejected under 35 U.S.C. § 103 as unpatentable in
view of Venkatachalam (US 2007/0143462 A1, pub. June 21, 2007) and
Nadon (US 2013/0111197 A1, pub. May 2, 2013).

ANALYSIS
Appellant does not separately argue claims 1–21. We select claim 1
as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).
With regard to the scope and content of the prior art, the Examiner
finds Venkatachalam discloses all of the limitations of claim 1 except
“Venkatachalam does not explicitly teach determining . . . the
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manufacturer being an unsupported manufacturer.” (Final Action
8–15.) Specifically, the “Examiner found Venkatachalam taught compliance
auditing measures in at least ¶¶0043-0045 to determine whether a system is
supported or not, but not explicitly in relation to a manufacturer.”
(Answer 3–4.) The Examiner finds that “Nadon teaches determining . . . the
manufacturer being an unsupported manufacturer.” (Id. at 15 (citing
Nadon ¶ 31); see also Answer 4–5 (citing Nadon ¶¶ 31, 64).)
Appellant argues that Nadon “describe[s] allowing for customization
of components in a way that differs from the standard configuration of the
OEM license. But this customization has nothing to do with a determination
that a manufacturer is an ‘unsupported manufacturer.’” (Appeal Br. 6.)
As an initial matter, we construe the claim term “unsupported
manufacturer.” The term is not defined or even used in Appellant’s
Specification. The Examiner “established the broadest reasonable
interpretation of the contested claim language by citing to [page 17, line 25
through page 18, line 13] of Applicant’s . . . Specification.” (Answer 4.)
Based on this, the Examiner determines that “[b]y broadest reasonable
interpretation of the claims, determining an unsupported manufacturer
requires steps of obtaining a licensed information handling system (‘IHS’)
configuration and comparing a manufacturer’s product with that permissible
(i.e., licensed) configuration.” (Id.) We disagree.
Claims are construed in light of the specification. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond,
910 F.2d 831, 833 (Fed. Cir. 1990) (“During examination, ‘claims . . . are to
be given their broadest reasonable interpretation consistent with the
specification, and . . . claim language should be read in light of the
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specification as it would be interpreted by one of ordinary skill in the
art.’”)). We are also mindful that “[t]he general rule . . . is that the claims of
a patent are not limited to the preferred embodiment.” Karlin Tech., Inc. v.
Surgical Dynamics, Inc., 177 F.3d 968, 973 (Fed. Cir. 1999).
In describing the problem to be addressed, Appellant’s Specification
recites in the “BACKGROUND” section:
A provider of an information handling system (e.g., a
manufacturer, vendor, seller, or other provider) may expend
significant amounts of time and financial resources to develop,
test, and validate information handling resources that are
installed in an information handling system, in order to ensure
compatibility and robustness of operation. However, some
customers of information handling systems may choose (e.g., to
save on cost) to install information handling resources which are
not validated or supported by the provider of the information
handling system. Such unsupported information handling
resources may cause instabilities in an information handling
system, or may lack robustness required to utilize advanced
capabilities of an information handling system.

(Spec. p. 3, l. 26–p. 4, l. 8.)
Appellant’s Specification further discloses that
during manufacturing of information handling system 102 (e.g.,
during factory configuration and testing), information handling
system 102 may record information regarding information
handling resources (e.g., memory system 104) installed in
information handling system 102 which are validated during
such configuration and testing, and store that information in a
per-system license for information handling system 102, which
may be maintained in license information 114 of information
handling system 102 . . . .
At step 202, licensing engine 116 may, for each memory
module 106 present in information handling system 102, record
information regarding memory modules 106. Such information
may include, without limitation, a unique identifier (e.g., a serial
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number) of each memory module 106, a manufacturer of each
memory module 106, version/revision information of each
memory module 106 . . . .
[L]icensing engine 116 may generate a memory license for
information handling system 102, wherein such memory license
may include some or all of the information collected in step 202.
. . . [L]icensing engine 116 may securely store such memory
license in license information 114, license information 134, or
supported resource database 136.

(Id. at p. 17, l. 25–p. 19, l. 24. (emphasis added).)
In view of the above, and applying a broadest reasonable
interpretation, we determine that the term “unsupported manufacturer”
includes a manufacturer of at least one information handling resource in an
information handling system where that manufacturer is not included in the
license information for that information handling system.2
Venkatachalam discloses a system and method for “monitor[ing]
computer system timer(s) relative to other timers to detect discrepancies . . . .
The invention may also provide a method to detect power source tampering
using a last known good time and may provide a means to securely initialize
system time using an encrypted time stamp.” (Venkatachalam, Abstract.)
Venkatachalam also discloses a license provision module (LPM) that “may
be incorporated to measure and authorize use of the computer in a pay-per-
use or pay-per-period configuration.” (Id. ¶ 33.) Venkatachalam also
discloses a “separately-booted isolated computing environment 125 [that]
may have configuration data that allows operation of the computer according
to its licensed capability” where “the isolated computing environment 125

2 We note that claim 1 recites both “a provider of the information handling
system” and “a manufacturer of the at least one information handling
resource.” (Emphasis added.)
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may assume the role of the LPM with respect to valid hardware
configuration of the computer.” (Id. ¶ 34.)
The Examiner does not point to any disclosure in Venkatachalam
regarding the LPM making a determination based on a manufacturer being
an unsupported manufacturer. However, the Examiner finds that “Nadon
teaches determining an unsupported manufacturer by determining how a
manufacturer (e.g., factory) configured an IHS and determining whether or
not it is what it should be (i.e., is supported or unsupported by the license).
(Answer 5; see also id. 4–5 (citing Nadon ¶¶ 31, 64).)
Nadon discloses “a method of configuring an information handling
system.” (Nadon, Abstract.) The method includes a personality module on
the base platform of the system wherein “[t]he personality module is
configured to store personality information associated with an information
handling resource of the information handling system.” (Id.) Nadon
discloses that “a configuration system 120 of the manufacturer or vendor
may be communicatively coupled to information handling system 100 and
may be configured to pre-install personality module 116 and one or more
information handling resources upon information handling system 100.” (Id.
¶ 31.) Nadon further discloses that “configuration system 120 may enable or
disable information handling resources associated with information handling
system 100 depending on the licensing of operation and use of those
resources by information handling system 100.” (Id. ¶ 62.) Nadon also
discloses that with respect to licensing information handling resources in the
information handling system,
a standard original equipment manufacture [sic] (OEM) license
may be applied to enable a default set of resources associated
with information handling system 100. In some instances,
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personality module 116 may include licensing information that
may enable or disable resources not enabled or disabled
according to the standard OEM license, such that personality
module 116 may customize the licensing of information handling
system 100 away from the standard OEM license.

(Id. ¶ 64.)
In short, the portions of Nadon cited by the Examiner disclose a
personality module in an information handling system that may contain
licensing information to enable or disable resources based on whether the
resource is licensed. And, Nadon discloses that the licensing information in
the personality module may be set by the manufacturer of the information
handling system. (Id.) Claim 1 recites that the licensing “information
identifies a manufacturer of the . . . information handling resource,” and the
“determin[ation] that the information handling system is unsupported by the
provider [is] based on the manufacturer [of the information handling
resource] being an unsupported manufacturer.” We do not find in the cited
portions of Nadon a disclosure of what is included in the licensing
information, e.g., we do not find a disclosure that the licensing information
includes identification of the manufacturer of the resource. Therefore, we
disagree with the Examiner’s finding that the cited portions of “Nadon
teach[] determining . . . the manufacturer being an unsupported
manufacturer.” (Id. at 15 (emphasis omitted) (citing Nadon ¶ 31).) In view
of the above, we are persuaded of reversible error.
Independent claims 8 and 15 contain similar language and for similar
reasons, we are persuaded of reversible error.

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CONCLUSION
The Examiner’s rejection of claims 1–21 under 35 U.S.C. § 103 is
reversed.
Specifically:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–21 103 Venkatachalam,
Nadon
1–21

REVERSED