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 5/26/2026.
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.
Continued Examination Under 37 CFR 1.114
3. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/26/2026 has been entered.
Status of the Claims
Claims 1 and 6 are amended, claim 3 is canceled, claims 4-5 were previously canceled. Accordingly, claims 1-2 and 6-7 are currently pending in the application.
Response to Amendment
(A). 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.
(B). 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 1-2 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;
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
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, by using a correspondence table between a plurality of setting values of setting items and security levels of 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 storing activity which is recognized as well-understood, routine, and conventional activity, see MPEP § 2106.05(d)(II), Versata Dev. Group, Inc. v. SAP Am., Inc. for retrieving and storing data. 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”, “one processor”, and “stored in the storage unit”. but “An information processing apparatus”, “one memory”, “one processor”, and “storage unit” 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. And “stored in the storage unit” is insignificant extra-solution data storing activity which is recognized as well-understood, routine, and conventional activity, see MPEP § 2106.05(d)(II), Versata Dev. Group, Inc. v. SAP Am., Inc. for retrieving and storing data.
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.
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 DOENHOFF et al. (US 20210173938 A1, hereinafter “DOENHOFF”) and 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):
store a setting value for each of a plurality of security setting items (e.g. Fig. 66, security area 78a. para [0560], “… the CGW 13 includes a secure area 78a (corresponding to a decryption key storage unit), …”);
perform update processing on software stored in the information processing apparatus (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
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, [by using a correspondence table between a plurality of setting values of setting items and security levels of the setting values stored in the storage unit] (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;
(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), by using a correspondence table between a plurality of setting values of setting items and security levels of the setting values stored in the storage unit.
However, in analogous art, DOENHOFF discloses
(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), by using a correspondence table between a plurality of setting values of setting items and security levels of the setting values stored in the storage unit (e.g. para [0086], “…. In the analysis, the security analysis unit 112 accesses the service setting DB 104 (S608) and acquires information from the service setting DB 104 (S609) if necessary. The security analysis unit 112 identifies a security risk based on the analysis result, determines one or more security services including a security service that reduces the security risk, and generates an analysis result table representing each piece of information of the one or more security services (S610). Therefore, the security analysis unit 112 accesses the security management DB 113 (S611) and acquires information from the security management DB 113 (S612).” Wherein service setting DB 104 reads on a correspondence table. One or more security services suggest different security services, i.e. different levels of security services. Para [0087], “The application update unit 114 receives the analysis result table from the security analysis unit 112 (S613) and performs the application update process (S614). In the application update process, the application update unit 114 specifies one or more security services from the analysis result table, accesses the security management DB 113 for each of the one or more security services (S615), and acquires information from the security management DB 113 (S616). In the application update process, the application update unit 114 writes the meta information entity in the service setting DB 104 for each of the one or more security services (S617).” Wherein “writes the meta information entity in the service setting DB” reads on a setting value of a setting item is newly added).
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 DOENHOFF because it provides techniques for reducing security risk for updating applications. 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 reducing security risk for updating applications as suggested by DOENHOFF (see para [0007]).
HARATA as modified by DOENHOFF 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 incorporate 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).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over HARATA in view of DOENHOFF and 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 (Previously Presented), HARATA as modified by DOENHOFF and 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]).
Response to Arguments
Applicant's arguments filed 5/26/2026 have been fully considered but they are not persuasive.
At p6 last to p7 first paragraph of the Remarks, Applicant argued that “This functionality of Kleiba may work for its intended purpose of updating a client application with a current configuration of the client application that includes new parameters to fix bugs and to modify parameters associated with existing features, but this in no way discloses or suggests Applicant's amended independent claim features reciting: ...changing setting values and adding new setting values to the setting values stored in a storage unit, based on a specification or a function changed through update processing of software. There is absolutely no disclosure in Kleiba of changing and adding new setting values based on a specification or a function changed through update processing of software.”
Examiner respectfully disagrees, because, as set forth in the office action, Kleiba teaches (see, e.g. col 8, line 61 to col 9, line 10, as cited in the office action above) “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,” wherein adding new parameters associated with introducing new features or modifying parameters associated with fixing discovered errors and/or bugs reads on “changing and adding new setting values based on… a function changed through update processing of software.”
At p7 second to last paragraphs of the Remarks, Applicant argued with respect to newly added features. These arguments are moot upon new ground of rejections made in the office action above.
At p8 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 p8 last to p9 first 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 setting item that is newly added or changed based on the specification or the function changed through the update processing of the software by using a correspondence table between a plurality of setting values of setting items and security levels of the setting values stored in a storage unit.”
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 that is newly added or changed as defined in the claim.
At p9 second paragraph of the Remarks, Applicant argued that “For example, a human quite clearly cannot change/add setting values in a storage unit and/or determine them by using a correspondence table between a plurality of setting values of setting items and security levels of the setting values stored in a storage unit.”
Examiner respectfully disagrees, and the response in paragraph 23 also applies to this argument.
At p9 third paragraph of the Remarks, Applicant argued that “these functions are processor and memory 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 p9 fourth 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 p9 fifth 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, the office action was made following the 2019 Revised Guidance. 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 p9 sixth paragraph to p13 third 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 p10 third 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 by using a correspondence table between a plurality of setting values of setting items and security levels of the setting values stored in a 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 p10 fourth paragraph to p12 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 by using a correspondence table that matches setting values based on security levels that is stored in a storage unit.”
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 p12 second to p13 first 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, as explained above, 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 mental process does not change technology. 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. Applicant’s solution to prior art problem “setting items were not changed after changes to specifications and/or functions based on software updates” is abstract idea without significantly more. The solution does not affect technology.
At p13 second to third paragraphs 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 explained, and 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 p13 fourth paragraph to p15 of the Remarks, Applicant argued with respect to Step 2B by comparing the instant claims to those of DDR Holdings. Particularly, at p14 third and fourth paragraphs of the Remarks, Applicant argued that “Similar to DDR Holdings, Applicant's claim elements recite significantly more than routine and conventional processes. …. 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. As explained above, 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.
At p14 last to p15 first 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 second and third 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
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.
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/ZENGPU WEI/
Examiner, Art Unit 2197
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