DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This office action is in response to communication filed 11/13/2025.
The instant application having application No. 18/495,525 filed on October 26, 2023, claims foreign priority to JP2022-174743 filed on October 31, 2022.
Status of the Claims
Claims 1-3 and 6 have been amended, claims 4-5 are canceled. Accordingly, claims 1-3 and 6-7 are currently pending in the application.
Response to Amendment
(A). Regarding 112 (f) remarks, Applicant's amendment to claims appropriately addressed the 112 (f) issue, the amended claims do not invoke 112 (f).
(B). Regarding 112 (b) rejections, Applicant's amendment to claims appropriately addressed the 112 (b) issue, the 112 (b) rejections are withdrawn.
(C). Regarding 112 (a) rejections, Applicant's amendment to claims appropriately addressed the 112 (a) issue, the 112 (a) rejections are withdrawn.
(D). Regarding 35 U.S.C. § 101 rejection: The amended claims are still abstract idea without significantly more, the 101 abstract idea rejections are maintained as set forth below.
(E). Regarding art rejection: In regards to pending claims Applicant’s arguments are not persuasive; further, Applicant's amendments necessitated new grounds of rejections presented in the following art rejection.
Examiner Notes
Examiner cites particular columns, paragraphs, figures and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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 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 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 1-3 and 6-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
With respect to claim 6 (Currently Amended), This claim is within at least one of the four categories of patent eligible subject matter as it is directed to a method claim under Step 1.
Under Prong 1, Step 2A:
However, the limitations of claim 6,
“performing update processing on software; [[and]]
changing setting values and adding new setting values to the setting values, based on a specification or a function changed through the update processing of the software, wherein the setting values are related to security setting items; and
determining a setting value of a setting item that is newly added or changed based on the specification or the function changed through the update processing of the software, based on the stored setting values.”
as drafted, are functions that, under its broadest reasonable interpretation, cover performance of the limitation in the mind. E.g. human can manually perform update processing on software with aid of paper and pencil, can manually perform changing setting values and adding new setting values as defined in the claim, and can manually perform the determining limitation as defined in the claim element with aid of paper and pencil. Thus these claim limitations fall within the “Mental Processes” grouping of abstract ideas under Prong 1 Step 2A
Under Prong 2, Step 2A:
The judicial exception is not integrated into a practical application. The claim recites the following additional element
“storing a setting value for each of a plurality of security setting items;”
The storing limitation is insignificant extra-solution activity such as gathering data, according to MPEP 2106.05(g); thus, not indicative of an integration into a practical application.
Under Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element “storing a setting value for each of a plurality of security setting items;” is insignificant extra-solution data gathering activity which is recognized as well-understood, routine, and conventional activity, see MPEP § 2106.05(d)(II). Accordingly, the claim does not appear to be patent eligible under 35 USC 101.
With respect to claim 7, This claim is within at least one of the four categories of patent eligible subject matter as it is directed to A non-transitory storage medium under Step 1.
This claim recites A non-transitory storage medium to implement the method that is disclosed in claim 6 and therefore recites the same abstract idea as claim 6, please see the office action analysis regarding claim 6 above.
Claim 7 recites more additional elements that are not recited in claim 6, i.e. “A non-transitory storage medium”, “an information processing apparatus”, but these additional elements are cited as generic computer or computer components such that they amount to no more than mere instructions to apply the exception using a generic computer.
With respect to claim 1 (Currently Amended), This claim is within at least one of the four categories of patent eligible subject matter as it is directed to an apparatus under Step 1.
This claim recites An information processing apparatus to implement the method that is disclosed in claim 6 and therefore recites the same abstract idea as claim 6, please see the office action analysis regarding claim 6 above.
Claim 1 recites more additional elements that are not recited in claim 6, i.e. “An information processing apparatus”, “one memory”, and “one processor”, but these additional elements are cited as generic computer or computer/software components such that they amount to no more than mere instructions to apply the exception using a generic computer.
With respect to claim 2 (Currently Amended), “wherein the at least one memory and the at least one processor are configured to determine the setting value of the setting item that is newly added or changed in the specification or the function through the update processing, based on a relevance to each setting item.” The limitation recites same determining process as that in claim 1, and is the same mental process, and “at least one memory and the at least one processor” are cited as generic computer/software components such that they amount to no more than mere instructions to apply the judicial exception using a generic computer.
With respect to claim 3 (Currently Amended), “wherein the at least one memory and the at least one processor are configured to determine the setting value of the setting item that is newly added or changed in the specification or the function through the update processing, based on a security level of the setting values stored in the storage unit.” The limitation recites same determining process as that in claim 1, and is the same mental process, and “at least one memory and the at least one processor” are cited as generic computer/software components such that they amounts to no more than mere instructions to apply the judicial exception using a generic computer.
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 of this title, 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 1, and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over HARATA et al. (US 20220179643 A1, hereinafter “HARATA”) in view of Kleiba (US 11489725 B1, hereinafter “Kleiba”).
With respect to claim 1 (Currently Amended), HARATA discloses An information processing apparatus (e.g. Fig. 1, CGW, also refer to Figs. 2, and 66), comprising:
at least one memory and at least one processor. wherein the at least one memory and the at least one processor are configured to (e.g. Fig. 2):
(e.g. Fig. 66, security area 78a. para [0560], “… the CGW 13 includes a secure area 78a (corresponding to a decryption key storage unit), …”);
(e.g. para [0315], “The CGW 13 has a data relay function, and, when the write data is acquired from the DCM 12, the CGW instructs a rewrite target ECU that is a rewrite target of an application program to write the acquired write data, and distributes the write data to the rewrite target ECU. …” wherein distributing the write data and instructing ECU to write the acquired write data suggests an update unit); and
based on the specification or the function changed through the update processing of the software (e.g. Fig. 224. para [1113], “… First, the CGW 13 collects vehicle information and acquires a software version and a configuration setting information version as the configuration information of each ECU 19 (S2701). The CGW 13 transmits causes the collected vehicle information from the DCM 12 to the center device 3 (S2702). …” para [1114], “The CGW 13 determines whether the application program is to be rewritten or the configuration setting information is to be rewritten on the basis of a write data type in the rewrite specification data for the rewrite target ECU 19 (S2706 and S2707). …” wherein rewritten suggests update process, and configuration setting information is to be written suggests a setting value of a setting item is newly added or changed).
HARATA does not appear to explicitly disclose
change setting values and add new setting values to the setting values stored in a storage unit, based on a specification or a function changed through the update processing of the software, wherein the setting values are related to security setting items;
However, this is taught in analogous art, Kleiba (e.g. col 8, line 61 to col 9, line 10, “…. In some aspects, configuring the client application may include configuring the client application to update parameters associated with a current configuration (e.g., configuration of a currently installed version) of the client application. The management device may configure the client application to update the current configuration by, for example, adding new parameters and/or modifying existing parameters associated with obtaining the network services. In an example, the configuration may enable the client application to add new parameters associated with introducing new features, to modify
parameters associated with fixing discovered errors and/or bugs, and/or to modify
parameters associated with existing features such as, for example, security features,
user interface features, or a combination thereof.” Wherein parameters associated with security features read on setting values related to security items.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the invention of HARATA with the invention of Kleiba because it provides techniques for facilitating provision of the network services to the user device. A person having ordinary skill in the art would have been motivated to make this combination, with a reasonable expectation of success, for the purpose of providing techniques for facilitating provision of the network services to the user device as suggested by Kleiba (see col 8, line 61 to col 9, line 10).
With respect to claim 6 (Currently Amended), it is directed to a method that is disclosed in claim 1, please see the rejections directed to claim 1 above which also cover the limitations recited in claim 6.
With respect to claim 7, it is directed to a non-transitory storage medium to implement claim 6, please see the rejections directed to claim 1 above which also cover the limitations recited in claim 6. Note that HARATA discloses A non-transitory storage medium storing a program that when executed on an information processing apparatus causes the information processing apparatus to execute the method (e.g. Fig. 2, microcomputer 24).
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over HARATA in view of Kleiba as applied claim 1, in further view of Hagiuda (US 20150020150 A1, hereinafter “Hagiuda” cited from IDS filed 4/1/2024).
With respect to claim 2 (Currently Amended), HARATA as modified by Kleida discloses The information processing apparatus according to claim 1, but does not explicitly disclose wherein the at least one memory and the at least one processor are configured to determine the setting value of the setting item that is newly added or changed in the specification or the function through the update processing, based on a relevance to each setting item. However, this is taught in analogous art, Hagiuda (e.g. Fig. 5, and corresponding text para [0105-0118], para [0112], “Next, the device management program 300 notifies the client PC 150 operated by the policy manager that the security information has been changed in S511. …” wherein security information is relevant setting item).
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 invention of Hagiuda because it can effectively manage the security policy of the network device under an environment where the network device having a policy setting function and the network device not having a policy setting function are mixed. A person having ordinary skill in the art would have been motivated to make this combination, with a reasonable expectation of success, for the purpose of effectively managing the security policy of the network device as suggested by Hagiuda (see para [0013-0014]).
With respect to claim 3 (Currently Amended), HARATA as modified by Kleida discloses The information processing apparatus according to claim 1, but does not explicitly disclose wherein the at least one memory and the at least one processor are configured to determine the setting value of the setting item that is newly added or changed in the specification or the function through the update processing, based on a security level of the setting values stored in the storage unit. However, this is taught in analogous art, Hagiuda (e.g. Fig. 6, and corresponding text para [0123-0133], para [0124], “… Then, in S609, the device management program 300 refers to a security level determination table so as to check a level of a changed portion of the security information,. …” For motivation to combine, please refer to office action regarding claim 2 above).
Response to Arguments
Applicant's arguments with respect to art 102 and 103 rejections filed 11/13/2025 have been fully considered and are moot upon new grounds of rejections made in the office action above.
At p9 under the title “Claim Rejections - 35 USC § 101” to p15 of the Remarks, Applicant argued with respect to the 101 abstract idea rejections. Particularly at p10 second full paragraph, Applicant argued that “… it is clear that a human cannot in any realistic implementation change and/or add new setting values to setting values stored in a storage unit that is based upon the human identifying specification or function changes in software that has been updated. Further, a human, cannot in any realistic implementation thereafter determine a setting value of a newly added and/or changed setting stored in the storage unit that was based on the specification or functional change of the software that was updated. …”
Examiner respectfully disagrees, because, the change, add, and determine processes may involve storing and reading the setting values to and from a storage, but the storing and reading processes are insignificant extra-solution activities which are recognized as well-understood, routine, and conventional activities, see MPEP § 2106.05(d)(II). Human can manually change and/or add new setting values, then store the setting values in a storage. Similarly, once the setting values are read out from a storage, human can manually determine a setting value as defined in the claim.
At p10 third full paragraph of the Remarks, Applicant argued that “these functions are processor- implemented functions (and statutory) and cannot be considered to be a "Mental Process" implementable by a human.”
Examiner respectfully disagrees, because, as set forth in the office action above, the processor is merely used as a tool to implement the identified abstract idea, it does not integrate the judicial exception into a practical application and does not constitute an inventive concept.
At p10 fourth full paragraph of the Remarks, Applicant argued that “For at least these reasons, Applicant respectfully requests withdrawal of the §101 rejection of the claims.”
Examiner respectfully disagrees, because, as explained above, and as set forth in the office action above, the claims are abstract idea without significantly more, the 101 abstract idea rejections are maintained.
At p10 fifth full paragraph of the Remarks, Applicant argued that “Further, it is respectfully submitted that all of the pending claims recite patent eligible subject matter, especially in light of the 2019 Revised Patent Subject Matter Eligibility Guidance (the "Revised Guidance") issued by the USPTO on January 7, 2019.”
Examiner respectfully disagrees, because, as explained above, and as set forth in the office action, the claims are abstract idea without significantly more, the 101 abstract idea rejections are maintained.
At p10 last paragraph to p14 second paragraph of the Remarks, Applicant argued “even assuming for the sake of argument that the claims recite a judicial exception under prong one of revised step 2A, the judicial exception (an abstract idea) is integrated into a practical application under prong two of the revised step 2A”. Particularly, at p11 second from the last paragraph of the Remarks, Applicant argued that “The specific elements/features of amended independent claim 1 are practical applications for: An information processing apparatus, comprising: ...at least one processor...configured to: store a setting value for each of a plurality of security setting items...perform update processing on software stored in the information processing apparatus... change setting values and add new setting values to the setting values stored in a storage unit, based on a specification or a function changed through the update processing of the software, wherein the setting values are related to security setting items...and...determine a setting value of a setting item that is newly added or changed based on the specification or the function changed through the update processing of the software, based on the setting values stored in the storage unit.”
Examiner respectfully disagrees, because, as set forth in the office action, information processing apparatus and one processor are cited as generic computer or computer components such that they amount to no more than mere instructions to apply the judicial exception using a generic computer. Storing process is insignificant extra-solution data gathering activity which is recognized as well-understood, routine, and conventional activity, see MPEP § 2106.05(d)(II). The perform update processing, change setting values and add new setting values, and determine a setting value as defined in the claim are mental processes. Even viewed as whole, these processes do not integrate the identified judicial exception into a practical application.
At p12 first full paragraph to p12 last and p13 first paragraph of the Remarks, Applicant compared the instant claims to Bascom and Enfish, and argued that “Applicant's amended independent claim provides these types of improvements to computer functionality that are clear practical applications and that are not abstract ideas, similar to Bascom and Enfish. Applicant's amended independent claim provides an information processing apparatus that under the control of a processor provides a clear practical application to: ...change setting values and add new setting values to setting values stored in a storage unit, in which, the setting values are related to security setting items. Further, based on a specification or a function changed through the update processing of the software, the information processing apparatus determines a setting value that has been newly added or changed based the changes to the updated software.”
Examiner respectfully disagrees, because, Bascom and Enfish are not applicable to the instant claims. In Bascom, the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user was found as inventive concept. Regarding Enfish, its self-referential data table was a data table of the memory controller of the computer itself and thus the improvement was to the computer itself. The instant claims do not recite any feature similar to Bascom or Enfish. As explained above, information processing apparatus and one processor are cited as generic computer or computer components such that they amount to no more than mere instructions to apply the judicial exception using a generic computer, and do not integrate the judicial exception into a practical application. The change setting values and add new setting values, and determine a setting value as defined in the claim are mental processes. Even viewed as whole, these processes do not integrate the identified judicial exception into a practical application.
At p13 second paragraph of the Remarks, Applicant argued that “The amended independent claims provide a clear practical application by an information processing apparatus that: determines setting values (related to security items) that are newly added or changed based on a specification or a function being changed from software being updated. These functions provide an improvement in the functioning of information processing apparatuses and an improvement to this technical field, in the same manner, as Bascom and Enfish.”
Examiner respectfully disagrees, because, as explained above in paragraph 32, Bascom and Enfish are not applicable as the instant claims do not recite any feature similar to those of Bascom and Enfish. “determine setting values” as defined in the claims is mental process because human can manually determine setting values as defined in the claims. The information processing apparatus is cited as generic computer to implement the identified abstract idea, it does not integrate the judicial exception into a practical application. These functions do not affect technology, the computer/apparatus functions the same as it would before the instant case.
At p13 third and fourth paragraphs of the Remarks, Applicant argued that “Therefore, as identified in Applicant's Specification, the amended independent claims provide a clear practical application of an improvement to prior art implementations, in which, setting items were not changed after changes to specifications and/or functions based on software updates.”
Examiner respectfully disagrees, because, Applicant’s solution to prior art problem “often setting items are not changed before and after updates of software which can present problems” is abstract idea without significantly more. The solution does not affect technology.
At p13 last to p14 second paragraph of the Remarks, Applicant argued that “…. In particular, these practical applications set forth in the amended claims are significantly more than an abstract idea. …. For at least these reasons, Applicant respectfully requests withdrawal of the §101 rejection of the claims.”
Examiner respectfully disagrees, because, as set forth in the office action above, the additional elements of the claims are either generic computer and/or computer components that are merely used as tools to implement the identified abstract idea, or insignificant extra-solution activities which are recognized as well-understood, routine, and conventional activities, and do not integrate the judicial exception into a practical application. The claims do not appear to be patent eligible under 35 USC 101.
At p14 third paragraph to p15 sixth paragraph of the Remarks, Applicant argued with respect to Step 2B by comparing the instant claims to those of DDR Holdings. Particularly, at p15 third paragraph of the Remarks, Applicant argued that “Similar to DDR Holdings, Applicant's claim elements recite significantly more than routine and conventional processes. Applicant's claimed non-routine and non-conventional additional elements/functions relate to an information processing apparatus that determines setting values for setting items that are newly added or changed based on a specification or a function being changed from software being updated. This functionality provides significantly more than current implementations provided by current information processing apparatuses that update software, as previously described.”
Examiner respectfully disagrees, because, DDR Holdings is not applicable. In DDR Holdings, the claims were directed to systems and methods of generating a composite webpage that combines certain visual elements of a host website with the content of a third-party merchant. The instant claims do not recite any feature similar to that of DDR Holdings. In the instant claims, the information processing apparatus is cited as a generic computer which amounts no more than merely used as a tool to implement the identified abstract idea. Determining setting values for setting items as defined in the claims is mental process because human can manually determine the setting value as defined in the claims. This functionality does not affect technology, the computer functions the same as it would before the instant case.
At p15 fourth paragraph of the Remarks, Applicant argued that “Accordingly, in view of MPEP 2106.05(d), Step 2B of the Revised Guidelines, and the foregoing reasons, Applicant respectfully submits that amended independent claims 1 and 6 recite significantly more than routine and conventional processes currently used in this technical area for information processing apparatuses that update software.”
Examiner respectfully disagrees, because, as explained and as set forth in the office action above, the independent claims 1 and 6 recite additional elements, but the additional elements are either generic computer and/or computer components used as tools to implement the identified abstract idea, or well-understood, routine and conventional processes. The additional elements do not integrate the judicial exception into a practical application, and do not constitute an inventive concept. Thus, the claims are abstract idea without significantly more.
At p15 fifth and sixth paragraphs of the Remarks, Applicant argued that “Accordingly, Applicant respectfully submits that all of the claims are clearly patently eligible under the Revised Guidelines under Step 2A and 2B and the rejection of claims should be withdrawn.”
Examiner respectfully disagrees, because, as explained above, the claims are abstract idea without significantly more. The 101 abstract idea rejections are maintained.
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 Zengpu Wei whose telephone number is 571-270-1302. The examiner can normally be reached on Monday to Friday from 8:00AM to 5:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bradley Teets, can be reached on 571-272-3338. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZENGPU WEI/
Examiner, Art Unit 2197
/BRADLEY A TEETS/Supervisory Patent Examiner, Art Unit 2197