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 .
DETAILED ACTION
The present office action is responsive to communications received on 02/17/2026.
Examiner’s Note
The recited units in claims 1 and 17 do not invoke 112(f) because they are modified by a structure in the preamble which recites “An information processing apparatus comprising at least one memory and at least one processor which function as:”.
Response to arguments
The 112(b) applicant did not fix the claim 3 dependent claims in addition to presence of what seems to be indefinite language.
With respect to the 102 rejection, applicant arguments are not persuasive:
Katano Fig. 8 illustrates “controller firmware version 1.2” with assigned root first root certificate serial and second rootCA2 serial code in addition to “engine firmware version 1.1” with first and second root CA serials. See explained in details in corresponding section in Katano ¶¶86-95 and ¶125. The certificates are downloaded one after the other and when there is a new version the new version is installed.
Additionally, Katano ¶8-10, 44, 72-77 and 119 all teach the data is transferred over secure encrypted SSL connection so it is not non-encrypted as stated in the amended claims.
Status of Claims
Claim 14 was canceled.
Claims 21-22 are new.
Claims 1, 3 and 19-20 were amended.
Claims 1-13 and 15-22 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
Claims 2-3, 8 and 11 recites “in a case” this language is indefinite and would need to be revised.
With respect to claims 4, 6-8 and 10-11, it is not clear if the root certificate refers to the newer root certificate or the old root certificate.
The dependent claims 4-11 inherit the deficiencies of claim 3 upon which they depend and are therefore rejected under 112(b).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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) 1-9 and 11-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Katano et al. (US 20080120610 A1) hereinafter referred to as Katano.
With respect to claim 1, Katano discloses: An information processing apparatus comprising at least one memory and at least one processor which function as: a first acquisition unit configured to acquire a first root certificate for executing encrypted communication with a first server from the first server; (Katano ¶86-87 teach obtaining root certificate CA1 from a CA server wherein communication is secure and encrypted as can be understood from ¶8-10).
a second acquisition unit configured to acquire, after the first root certificate has been acquired by the first acquisition unit, (Katano Fig. 8 illustrates “controller firmware version 1.2” with assigned root first root certificate serial and second rootCA2 serial code in addition to “engine firmware version 1.1” with first and second root CA serials) via encrypted communication that is executable by using the first root certificate, and not via non-encrypted communication, a second root certificate for executing encrypted communication with a second server different from the first server; (Katano ¶86-87 teach obtaining root certificate CA2 from a CA server wherein communication is secure and encrypted and root certificates are used to establish communication with websites or authorities [servers] that issued each root certificate if they are “valid” as can be understood from Katano ¶8-10. Also, Katano ¶¶110 and 112 teach another interpretation of an updated [second] firmware which comprises root certificate(s)).
and a communication unit configured to communicate with the second server via encrypted communication that is executable by using the second root certificate. (Katano ¶8-10 teach communication is secure and encrypted and root certificates are used to establish communication with “valid” websites or authorities [servers] that issued each root certificate).
Claims 19-20 might have slight change in verbiage but essentially recite the same claimed matter as claim 1 and are therefore rejected based on the dame rationale as claim 1.
With respect to claim 2, Katano discloses: The apparatus according to claim 1, wherein in a case where the first server can provide the first root certificate of a version newer than a version of the first root certificate held in the information processing apparatus, the first root certificate is acquired from the first server. (Katano ¶86-87 teach updating a firmware from a certification authority server which comprises an updated root certificate).
With respect to claim 3, Katano discloses: The apparatus according to claim 1, wherein in a case where the first server can provide the first root certificate of a version newer than a version of the first root certificate saved in a first memory of the information processing apparatus, the newer first root certificate is acquired from the first server, (Katano ¶86-87 teach updating a firmware from a certification authority server which comprises an updated root certificate).
and the newer first root certificate acquired from the first server is saved in a second memory that is a memory different from the first memory and is a memory of the information processing apparatus. (Katano ¶112 “the flash ROM 312 in the controller unit 31 has the two firmware storage areas (the firmware storage area A 10 [first memory] and the firmware storage area B 11 [second memory]). Accordingly, the CPU 311 determines whether the updata is written in the firmware storage area A 10 or in the firmware storage area B 11.”).
With respect to claim 4, Katano discloses: The apparatus according to claim 3, wherein the first root certificate acquired from the first server is saved in the second memory while being saved in the first memory. (Katano ¶110 “The updata sequentially acquired from the update server 4 is temporarily stored in the RAM 313.” Furthermore, Katano ¶112 “the flash ROM 312 in the controller unit 31 has the two firmware storage areas (the firmware storage area A 10 [first memory] and the firmware storage area B 11 [second memory]). Accordingly, the CPU 311 determines whether the updata is written in the firmware storage area A 10 or in the firmware storage area B 11.” Which means that the system can save the first root certificate in two memories RAM and ROM and also ROM and ROM).
With respect to claim 5, Katano discloses: The apparatus according to claim 3, wherein the first memory is a ROM, and the second memory is a nonvolatile memory. (Katano ¶112 “the flash ROM 312 in the controller unit 31 has the two firmware storage areas (the firmware storage area A 10 [first memory ROM] and the firmware storage area B 11 [second memory ROM aka nonvolatile memory]). Accordingly, the CPU 311 determines whether the updata is written in the firmware storage area A 10 or in the firmware storage area B 11.”).
With respect to claim 6, Katano discloses: The apparatus according to claim 3, wherein the first root certificate saved in the first memory of the information processing apparatus is incorporated in firmware of the information processing apparatus. (Katano Fig. 4 illustrates Root CA1 and Root CA2 incorporated in the firmware data).
With respect to claim 7, Katano discloses: The apparatus according to claim 3, wherein the first root certificate saved in the first memory of the information processing apparatus is updated by firmware of the information processing apparatus. (Katano Abstract recites “Specific information in the root certificate data is extracted from the update firmware”).
With respect to claim 8, Katano discloses: The apparatus according to claim 3, wherein in a case where the first server can provide the second root certificate of a version newer than a version of the second root certificate saved in the first memory, the second root certificate is acquired from the first server, and the second root certificate acquired from the first server is saved in a third memory that is a memory different from the first memory and the second memory and is a memory of the information processing apparatus. (Katano ¶91 teaches obtaining root certificate CA3 which is an updated certificate and stored on the CPU memory and it is understood that it would be part of the stored root certificates stored at different memory locations illustrated by the different blocks in Fig. 4)
With respect to claim 9, Katano discloses: The apparatus according to claim 8, wherein the first memory is a ROM, and the third memory is a RAM. (Katano ¶110 “The updata sequentially acquired from the update server 4 is temporarily stored in the RAM 313.” Wherein ¶112 teaches the other memory is a ROM for storage of the other root certificate(s)).
With respect to claim 11, Katano discloses: The apparatus according to claim 8, wherein in a case where the first server can provide the second root certificate of a version newer than the version of the second root certificate saved in the third memory, the second root certificate is acquired from the first server, and the second root certificate acquired from the first server is saved in the third memory to update the second root certificate saved in the third memory. (Katano ¶110 and 112 teach obtaining a new firmware comprising a new root certificate and it is loaded into the RAM which is then stored in the ROM with the other root certificate(s) that have not expired similar to the illustration in Fig. 4).
With respect to claim 12, Katano discloses: The apparatus according to claim 1, wherein the first root certificate is acquired from the first server based on power-on of the information processing apparatus. (Katano ¶58 “A boot program storage area 14 includes the boot program [power-on] used for activating the firmware operating in the controller unit 31. The boot program stored in the boot program storage area 14 refers to the information about the versions of the firmware, stored in the basic parameter storage area 13, to determine which firmware is to be activated. The boot program activates the determined firmware.” Wherein updating the firmware comprises the acquiring of the root certificate(s) as mapped above).
With respect to claim 13, Katano discloses: The apparatus according to claim 1, wherein the second root certificate is acquired from the first server based on at least one of power-on of the information processing apparatus and execution of a predetermined operation for communication with the second server in the information processing apparatus. (Katano ¶58 teaches updating the firmware comprises the acquiring of the root certificate(s) which can be any number of root certificates as understood from ¶86-87,110 and 112).
With respect to claim 14, Katano discloses: The apparatus according to claim 1, wherein the second root certificate is acquired from the first server after the first root certificate is acquired from the first server. (Katano ¶110 and 112 teach updated [second] firmware which comprises root certificate(s) instead of an existing certificate obtained previously from a server).
With respect to claim 15, Katano discloses: The apparatus according to claim 1, wherein the second root certificate includes a root certificate for executing encrypted communication with the second server, and a root certificate for executing encrypted communication with a third server different from the first server and the second server. (Katano ¶10 teaches that if a root certificate is valid this means that websites/servers are trusted for communication therefore it is understood that an updated root certificate can result in communication with different trusted websites/servers).
With respect to claim 16, Katano discloses: The apparatus according to claim 1, wherein the first root certificate is acquired from the first server by communication different from encrypted communication. (Katano ¶72 teaches the communication is also HTTP communication which is interpreted as another different layer from the encrypted SSL/TLS communication).
With respect to claim 17, Katano discloses: The apparatus according to claim 1, further comprising a print unit configured to execute printing. (Katano Fig. 1 illustrates the apparatus comprising “Printer Apparatus 3”).
With respect to claim 18, Katano discloses: The apparatus according to claim 17, wherein printing is executed based on information acquired from the second server via encrypted communication that is executable by using the second root certificate. (Katano Fig. 3 illustrates the configuration of the printer apparatus which comprises the firmware storage that obtains the updated firmware to establish encrypted communication with the issuing website or authority as understood from Katano ¶8-10).
With respect to claim 21, Katano discloses: The apparatus according to claim 1, wherein the first server is a root certificate distribution server, and the second server is a content server that provides information to the information processing apparatus. (Katano Fig. 10 illustrates the “content server” and “update server” and information processing apparatuses illustrated that perform the recited functionalities in the claim as per Katano specifications).
With respect to claim 22, Katano discloses: The apparatus according to claim 1, wherein the first root certificate is used for verifying a server certificate of the first server. (Katano Abstract teaches "root certificate data necessary for a printer apparatus to establish [verify] secure communication with a content server.")
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katano as applied to claims 1-9 and 11-22 above, and further in view of Rhee et al. (US 20140181498 A1) hereinafter referred to as Rhee.
With respect to claim 10, Katano discloses: The apparatus according to claim 8,
Katano does not explicitly disclose: wherein a data capacity of the second root certificate is larger than a memory capacity of the second memory.
However, Rhee in an analogous art discloses: wherein a data capacity of the second root certificate is larger than a memory capacity of the second memory. (Rhee ¶76 and 93 teach booting image comprising root certificate. Additionally, Rhee 85 teaches “The fourth memory 330 is a volatile memory outside of the chipset and may provide a space for loading and executing at least a part of the code of the boot loader or kernel stored in the first memory dynamically. For example, the fourth memory 330 may have greater capacity than the third memory 313 and, in this case, the code that is relatively small among the boot loads is loaded on the third memory 313 and the code that is relative large on the fourth memory 330”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Katano wherein a data capacity of the second root certificate is larger than a memory capacity of the second memory as disclosed by Rhee to allow data to be loaded into memory regions that can handle the required capacity (see Rhee ¶76, 85 and 93).
Conclusion
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 HANY S GADALLA whose telephone number is (571)272-2322. The examiner can normally be reached Mon to Fri 8:00AM - 4:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Carl Colin can be reached at (571) 272-3862. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANY S. GADALLA/Primary Examiner, Art Unit 2493
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