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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: PMEM in Fig. 1. Examiner notes CMEM in specification, but no connection between PMEM and CMEM is made. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1 and 5 are objected to because of the following informalities:
- “each executable load file being associated with an application identifier” – line 6
- “checking whether this executable load file is associated with an application identifier identical” - lines 9 and 17
Both lines 9 and 17 are referring to the same “application identifier” as stated in line 6. Please amend to “the application identifier” in lines 9 and 17. Appropriate correction is required.
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.
Claims 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 and 5 recite:
method for updating multiple executable load files in a secure element (1 only)
secure element configured to perform an update of multiple executable load files (5 only)
receiving at least one command for performing an update session of multiple executable load files, each executable load file being associated with an application identifier;
checking whether this executable load file is associated with an application identifier identical to the one of an executable load file for which an update is already ongoing in this update session;
proceeding with the update of the executable load file if its application identifier is new in view of the application identifier of each executable load file for which an update is already ongoing in this update session;
rejecting the update of this executable load file if it is associated with an application identifier identical to the one of an executable load file for which an update is already ongoing in this update session.
Step 1: are the claims to a process, machine, manufacture, or a composition of matter?
Yes. Claim 1 is a method.
Yes. Claim 5 is a machine.
Step 2A, Prong I; Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Yes: (an) abstract idea(s).
The limitations of checking whether the application identifier is identical to another executable load file, as drafted in #4 above, under its broadest reasonable interpretation, covers performance of the mind, but for generic computer parts. That is, other than reciting a “computer-implemented method comprising” or “secure element comprising a memory”, nothing in the claim element precludes the step from practically being performed in the mind.
Step 2A Prong II: Does the claim recite additional elements that integrate the judicial exception
into a practical application?
No.
The “perform an update of software” limitation in #1 and #2 above. As claimed and under BRI, is an additional element that is mere instructions to apply an exception. For example, “perform an update of software” in the context of this claim encompasses merely updating software. See in the MPEP §§ 2106.05(f).
The “receiving” limitations in #3 above, as claimed and under BRI, is an additional element that is insignificant extra-solution activity. For example, “receiving a command” in the context of this claim encompasses mere data gathering. See in the MPEP §§ 2106.05(g).
The “proceeding” and “rejecting” limitations in #5 and #6 above. As claimed and under BRI, is an additional element that is mere instructions to apply an exception. For example, “proceeding with the update of the executable load file” and “rejecting the update of this executable load file” in the context of these claims encompass merely updating or not updating software. See in the MPEP §§ 2106.05(f).
Additionally, the claims recite the following additional element:
A secure element
The element that is recited in the claims are stated at a high level of generality (i.e. as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using generic computer component. See the MPEP §§ 2106.05(f). Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limitation on practicing the abstract idea(s).
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
No.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because mere instructions to apply an exception using generic computer components cannot provide the inventive step.
Additionally, with regards to #3 above, per MPEP 2106.05(d)(ll), the courts have recognized the following computer function(s) as well-understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity:
Testing a system for a response, the response being used to determine system malfunction, In re Meyers, 688 F.2d 789, 794; 215 USPQ 193, 196-97 (CCPA 1982);
Claims 2, 4, 6 and 8 recite:
checking is performed
upon receipt of said at least one command
for performing the update session of multiple executable load files
Step 1: are the claims to a process, machine, manufacture, or a composition of matter?
Yes. Claims 2 and 4 are a method.
Yes. Claims 6 and 8 are a machine.
Step 2A, Prong I; Do the claims recite an abstract idea, law of nature, or natural phenomenon?
Yes: (an) abstract idea(s).
The limitations of “checking”, as drafted in #7 above, under its broadest reasonable interpretation, covers performance of the mind, but for generic computer parts. That is, other than reciting a “computer-implemented method” or “secure element” nothing in the claim element precludes the step from practically being performed in the mind.
Step 2A Prong II: Does the claim recite additional elements that integrate the judicial exception into a practical application?
No.
The limitation in #8 above, as claimed and under BRI, is an additional element that is insignificant extra-solution activity. For example, “receipt of said at least one command” in the context of this claim encompasses mere data gathering. See in the MPEP §§ 2106.05(g).
The “performing the update session” limitation in #9 above. As claimed and under BRI, is an additional element that is mere instructions to apply an exception. For example, “perform an update of software” in the context of this claim encompasses merely updating software. See in the MPEP §§ 2106.05(f).
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
No.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because mere instructions to apply an exception using generic computer components cannot provide the inventive step.
Additionally, with regards to #8 above, per MPEP 2106.05(d)(ll), the courts have recognized the following computer function(s) as well-understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity:
Testing a system for a response, the response being used to determine system malfunction, In re Meyers, 688 F.2d 789, 794; 215 USPQ 193, 196-97 (CCPA 1982);
Claims 3 and 7 recite:
storing in a list of the memory the application identifier of an executable load file of the update session if its application identifier is new in view of the application identifier of each executable load file for which an update is already ongoing in this update session
checking being performed by comparing the application identifier of the executable load file to each application identifier in the list
Step 1: are the claims to a process, machine, manufacture, or a composition of matter?
Yes. Claims 3 is a method.
Yes. Claims 7 is a machine.
Step 2A, Prong I; Do the claims recite an abstract idea, law of nature, or natural phenomenon?
Yes: (an) abstract idea(s).
The limitations of “checking”, as drafted in #11 above, under its broadest reasonable interpretation, covers performance of the mind, but for generic computer parts. That is, other than reciting a “computer-implemented method” or “secure element” nothing in the claim element precludes the step from practically being performed in the mind.
Step 2A Prong II: Does the claim recite additional elements that integrate the judicial exception into a practical application?
No.
The “storing” limitation in #10 above, as claimed and under BRI, is an additional element that is insignificant extra-solution activity. For example, “storing in a list” in the context of this claim encompasses mere data gathering. See in the MPEP §§ 2106.05(g).
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
No.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because mere instructions to apply an exception using generic computer components cannot provide the inventive step.
Additionally, with regards to #10 above, per MPEP 2106.05(d)(ll), the courts have recognized the following computer function(s) as well-understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity:
Consulting and updating an activity log, Ultramercial, 772 F.3d at 715, 112 USPQ2d at 1754;
For at least the reasoning above, claims 1-8 are patent ineligible.
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.
(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.
Claims 1-2, 5 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Executable Load File Upgrade - Card Specification v2.3 - Amendment H - Version 1.1 (hereinafter referred to as Global Platform).
With regards to claim 1, Global Platform teaches:
A computer-implemented method for updating multiple executable load files in a secure element (pg.8; Global Platform teaches the upgrade of multiple ELFs within the same ELF upgrade session), the computer-implemented method comprising:
- receiving at least one command for performing an update session of multiple executable load files (pg.11; Global Platform teaches if multiple ELFs must be upgraded within the same ELF upgrade session, the session shall start with multiple 'MANAGE ELF UPGRADE [start] commands), each executable load file being associated with an application identifier (pg.9; Global Platform teaches an Executable Load File is a java card package and each of these will be identified by an Application Identifier);
-wherein the method further comprises, before starting an update of an executable load file (pg.11; Global Platform teaches the ELF upgrade session starts upon receipt of a MANAGE ELF UPGRADE [start] command which triggers preliminary checks):
- checking whether this executable load file is associated with an application identifier identical to the one of an executable load file for which an update is already ongoing in this update session (pg.11; Global Platform teaches the MANAGE ELF UPGRADE [start] command shall be rejected with an error and the ELF upgrade process shall be aborted if any of the following conditions is satisfied: -An ELF Upgrade is already going; Once the ELF Upgrade session has been started (and until it is completed or aborted) the following rules shall apply: -Any unrelated operation involving an Application instance or ELF that is subject of the ELF Upgrade process shall be rejected. Examiner notes although Global Platform does not implicitly state using the Application Identifier to check if update is ongoing for another ELF, it would be obvious to a person of ordinary skill in the art to utilize an ID for this function);
- proceeding with the update of the executable load file if its application identifier is new in view of the application identifier of each executable load file (pg.11; Global Platform teaches once the ELF Upgrade session has been started (and until it is completed or aborted) the following rules shall apply: -Any unrelated operation involving an Application instance or ELF that is subject of the ELF Upgrade process shall be rejected) for which an update is already ongoing in this update session (pg.11; Global Platform teaches the MANAGE ELF UPGRADE [start] command shall be rejected with an error and the ELF upgrade process shall be aborted if any of the following conditions is satisfied: -An ELF Upgrade is already going); or
- rejecting the update of this executable load file if it is associated with an application identifier identical to the one of an executable load file (pg.11; Global Platform teaches once the ELF Upgrade session has been started (and until it is completed or aborted) the following rules shall apply: -Any unrelated operation involving an Application instance or ELF that is subject of the ELF Upgrade process shall be rejected) for which an update is already ongoing in this update session (pg.11; Global Platform teaches the MANAGE ELF UPGRADE [start] command shall be rejected with an error and the ELF upgrade process shall be aborted if any of the following conditions is satisfied: -An ELF Upgrade is already going);
With regards to claim 5, Global Platform teaches:
A secure element comprising a memory configured to store a plurality of executable load files (pg.6, Introduction; Global Platform teaches a secure element with Executable Load Files (hereinafter ELFs)), the secure element configured to perform an update of multiple executable load files (pg.8; Global Platform teaches the upgrade of multiple ELFs within the same ELF upgrade session), the update comprising:
- receiving at least one command for performing an update session of multiple executable load files (pg.11; Global Platform teaches if multiple ELFs must be upgraded within the same ELF upgrade session, the session shall start with multiple 'MANAGE ELF UPGRADE [start] commands), each executable load file being associated with an application identifier (pg.9; Global Platform teaches an Executable Load File is a java card package and each of these will be identified by an Application Identifier);
- wherein the method further comprises, before starting an update of an executable load file (pg.11; Global Platform teaches the ELF upgrade session starts upon receipt of a MANAGE ELF UPGRADE [start] command which triggers preliminary checks):
- checking whether this executable load file is associated with an application identifier identical to the one of an executable load file for which an update is already ongoing in this update session (pg.11; Global Platform teaches the MANAGE ELF UPGRADE [start] command shall be rejected with an error and the ELF upgrade process shall be aborted if any of the following conditions is satisfied: -An ELF Upgrade is already going; Once the ELF Upgrade session has been started (and until it is completed or aborted) the following rules shall apply: -Any unrelated operation involving an Application instance or ELF that is subject of the ELF Upgrade process shall be rejected. Examiner notes although Global Platform does not implicitly state using the Application Identifier to check if update is ongoing for another ELF, it would be obvious to a person of ordinary skill in the art to utilize an ID for this function);
- proceeding with the update of the executable load file if its application identifier is new in view of the application identifier of each executable load file (pg.11; Global Platform teaches once the ELF Upgrade session has been started (and until it is completed or aborted) the following rules shall apply: -Any unrelated operation involving an Application instance or ELF that is subject of the ELF Upgrade process shall be rejected) for which an update is already ongoing in this update session (pg.11; Global Platform teaches the MANAGE ELF UPGRADE [start] command shall be rejected with an error and the ELF upgrade process shall be aborted if any of the following conditions is satisfied: -An ELF Upgrade is already going); or
- rejecting the update of this executable load file if it is associated with an application identifier identical to the one of an executable load file (pg.11; Global Platform teaches once the ELF Upgrade session has been started (and until it is completed or aborted) the following rules shall apply: -Any unrelated operation involving an Application instance or ELF that is subject of the ELF Upgrade process shall be rejected) for which an update is already ongoing in this update session (pg.11; Global Platform teaches the MANAGE ELF UPGRADE [start] command shall be rejected with an error and the ELF upgrade process shall be aborted if any of the following conditions is satisfied: -An ELF Upgrade is already going);
With regards to claims 2, Global Platform teaches:
wherein checking is performed upon receipt of said at least one command for performing the update session of multiple executable load files. (pg.11; Global Platform teaches if multiple ELFs must be upgraded within the same ELF upgrade session, the session shall start with multiple 'MANAGE ELF UPGRADE [start] commands' each one specifying an ELF that shall be upgraded, and the above checks shall be performed)
With regards to claim 6, it is a system claim having similar limitations as cited in claim 2 above. Thus, claim 6 is also rejected under the same rationale as cited in the rejection of claim 2 above.
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.
Claims 3-4 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Executable Load File Upgrade - Card Specification v2.3 - Amendment H - Version 1.1 (hereinafter referred to as Global Platform) in view of US 20150169311 A1 (hereinafter referred to as Dickerson).
With regards to claim 3, Global Platform teaches:
checking being performed by comparing the application identifier of the executable load file to each application identifier in the list (pg.11; Global Platform teaches the MANAGE ELF UPGRADE [start] command shall be rejected with an error and the ELF upgrade process shall be aborted if any of the following conditions is satisfied: -An ELF Upgrade is already going; Once the ELF Upgrade session has been started (and until it is completed or aborted) the following rules shall apply: -Any unrelated operation involving an Application instance or ELF that is subject of the ELF Upgrade process shall be rejected. Examiner notes although Global Platform does not implicitly state using the Application Identifier to check if update is ongoing for another ELF, it would be obvious to a person of ordinary skill in the art to utilize an ID for this function).
Global Platform does not explicitly disclose:
storing in a list of the memory the application identifier of an executable load file of the update session if its application identifier is new in view of the application identifier of each executable load file for which an update is already ongoing in this update session
However, in an analogous art to the claimed invention in the field of software update, Dickerson teaches:
storing in a list of the memory the application identifier of an executable load file of the update session if its application identifier is new in view of the application identifier of each executable load file for which an update is already ongoing in this update session (Fig.6E; Para.[62]; Dickerson shows there may be one record for each successful software update performed. Record 640 includes a VIN 641, a software update ID 642, and detailed information 643.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Dickerson into the teachings of Global platform to implement the checking function of Global Platform with the update record of Dickerson. The modification would have been obvious because one of ordinary skill in the art would be motivated to provide expected software update scheduling and can provide fleet wide information regarding software update capability requirements, which can be useful for rolling out updates (Dickerson, Para.[62]).
With regards to claim 7, it is a machine claim having similar limitations as cited in claim 3 above. Thus, claim 7 is also rejected under the same rationale as cited in the rejection of claim 3 above.
With regards to claims 4, Global Platform as modified teaches:
wherein checking is performed upon receipt of said at least one command for performing the update session of multiple executable load files. (pg.11; Global Platform teaches if multiple ELFs must be upgraded within the same ELF upgrade session, the session shall start with multiple 'MANAGE ELF UPGRADE [start] commands' each one specifying an ELF that shall be upgraded, and the above checks shall be performed)
With regards to claim 8, it is a machine claim having similar limitations as cited in claim 4 above. Thus, claim 8 is also rejected under the same rationale as cited in the rejection of claim 4 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Fukaya et Al. (JP-2019046211-A) goes into detail on how application identifiers are used during ELF updates
Boulanger et Al. (EP-3086254-A1) relevant for use of ELFs in updating
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZEERICK A MALIK whose telephone number is (571)272-8110. The examiner can normally be reached Mon-Thurs, 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chat Do can be reached at (571) 272-3721. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z.A.M./ Examiner, Art Unit 2193
/Chat C Do/ Supervisory Patent Examiner, Art Unit 2193