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 on 11/14/2025.
The instant application having application No. 18/538,863 filed on December 13, 2023, claims priority to TW112202134 Filed on 3/10/2023.
Status of the Claims
Claims 1, 4, and 9 are amended, claims 1-4, and 6-10 are currently pending in the application.
Response to Amendment
(A). Regarding spec objections: Applicant's amendment to the spec appropriately addressed the objections, the objections are withdrawn.
(B). Regarding claim objections: Applicant's amendment to claims appropriately addressed the objections, the objections are withdrawn.
(C). Regarding 35 U.S.C. § 101 rejection: The amended claims are still abstract idea without significantly more, the 101 abstract idea rejection is maintained as set forth in the office action below.
(D). Regarding art rejection: Applicant's amendment to claims overcomes art rejection, the art rejection is withdrawn.
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 1-4 and 6-10 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 1, This claim is within at least one of the four categories of patent eligible subject matter as it is directed to a network device claim under Step 1.
Under Prong 1, Step 2A:
However, the limitations of claim 1,
“ a processor, coupled to the communication circuit and configured to execute:
in response to determining a version of a first update file from the update server satisfies a predetermined condition, [controlling the communication circuit to obtain the first update file from the update server];
in response to determining the identification information in the first update file matches the network device, [updating a firmware of the network device based on the first update file,]”
as drafted, are functions that, under its broadest reasonable interpretation, cover performance of the limitation in the mind but for the recitation of a generic processor and communication circuit. That is, other than reciting “a processor, coupled to the communication circuit and configured to execute” nothing in the claim elements “determining a version …,” and “determining the identification information… “precludes the step from practically being performed in the mind. E.g. but for the “a processor, coupled to the communication circuit and configured to execute” language, “determining” in the context of this claim encompasses the user manually determining a version of a first update file from the update server satisfies a predetermined condition, or manually determining the identification information in the first update file matches the network device. 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 elements
“A network device” and
“a communication circuit, coupled to an update server; and
a processor, coupled to the communication circuit and configured to execute:
…, controlling the communication circuit to obtain the first update file from the update server;
reading identification information from at least one predetermined data location of the first update file; and
…, updating a firmware of the network device based on the first update file,
wherein the first update file is a binary (BIN) file, the BIN file comprises an interrupt service routine data string, and the at least one predetermined data location is located immediately after the interrupt service routine data string.”
Wherein the network device, a communication circuit, an update server, and a processor are recited at a high-level of generality (i.e. as a generic network device, communication circuit, update server, and processor performing generic computer functions) such that it amounts to no more than mere instructions to apply the judicial exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. “controlling the communication circuit to obtain the first update file from the update server” and “reading identification information from at least one predetermined data location of the first update file” are insignificant extra-solution activities such as gathering data, according to MPEP 2106.05(g); thus, not indicative of an integration into a practical application. “updating a firmware of the network device based on the first update file.” and the “wherein the first update file is a binary (BIN) file …” further specifies the update file, is insignificant extra-solution activity such as storing 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 elements, the network device, a communication circuit, an update server, and a processor, are mere use of generic computer or computer components to implement the abstract idea, thus, are not an inventive concept. “controlling the communication circuit to obtain the first update file from the update server” and “reading identification information from at least one predetermined data location of the first update file” are insignificant extra-solution data gathering activities which are recognized as well-understood, routine, and conventional activity, see MPEP § 2106.05(d)(II). “updating a firmware of the network device based on the first update file.” and the “wherein the first update file is a binary (BIN) file …” further specifies the update file, is insignificant extra-solution activity such as storing data which is recognized as well-understood, routine, and conventional activity, see MPEP § 2106.05(d)(II). Accordingly, even viewed as a whole, the claim does not appear to be patent eligible under 35 USC 101.
With respect to claim 2, “wherein the processor executes:
in response to determining the version of the first update file is newer than a current version of the network device, determining the version of the first update file satisfies the predetermined condition; and
in response to determining the version of the first update file is older than or equal to the current version of the network device, determining the version of the first update file does not satisfy the predetermined condition.” as drafted, are functions that, under its broadest reasonable interpretation, cover performance of the limitation in the mind but for the recitation of a generic processor. E.g. the user can manually perform the determining processes as defined in the claim. And the processor, is mere use of a generic computer or computer component to implement the abstract idea, thus, is not an inventive concept.
With respect to claim 3, “wherein the processor executes:
in response to determining the version of the first update file from the update server satisfies the predetermined condition, obtaining an indication signal from the update server during a handshake process with the update server, wherein the indication signal comprises the at least one predetermined data location.” as drafted, are functions that, under its broadest reasonable interpretation, cover performance of the limitation in the mind but for the recitation of a generic processor. This claim is similar to the limitation “in response to determining a version of a first update file from the update server satisfies a predetermined condition, controlling the communication circuit to obtain the first update file from the update server;” of claim 1, it recites the same abstract idea as claim1, please refer to analysis of claim 1 above.
With respect to claim 4, “wherein the first update file is [[a]] the BIN file, and each of the at least one predetermined data location is at least 1KB away from a beginning data location of the BIN file.” further specifies the update file, is the same insignificant extra-solution activity such as storing data which is recognized as well-understood, routine, and conventional activity, see MPEP § 2106.05(d)(II).
With respect to claim 6, “wherein the processor executes:
in response to determining the identification information does not match the network device, continuing monitoring the update server.” as drafted, are functions that, under its broadest reasonable interpretation, cover performance of the limitation in the mind but for the recitation of a generic processor. E.g. the user can manually perform the determining and monitoring processes as defined in the claim. And the processor, is mere use of a generic computer or computer component to implement the abstract idea, thus, is not an inventive concept.
With respect to claim 7, “wherein the identification information is an encrypted data string, and the network device is able to identify the encrypted data string.” Wherein data encrypting is mathematical concept, human can perform data encrypting and decrypting, i.e. human is able to identify the encrypted data string. And the network device is mere use of a generic computer or computer component to implement the abstract idea, thus, is not an inventive concept.
With respect to claim 8, “wherein the at least one predetermined data location at least comprises a first predetermined data location and a second predetermined data location in the first update file, and the processor executes:
attempting to read the identification information at the first predetermined data location;
in response to determining the identification information is not successfully read from the first predetermined data location, attempting to read the identification information from the second predetermined data location.” The limitation “wherein the at least one predetermined data location at least comprises a first predetermined data location and a second predetermined data location in the first update file” merely indicates a field of use or technological environment in which to apply a judicial exception, and does not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. The “determining the identification information is not successfully read from the first predetermined data location” is mental process, e.g. human can perform the determining process. The “attempting to read …” are insignificant extra-solution data gathering activities which are recognized as well-understood, routine, and conventional activities, see MPEP § 2106.05(d)(II). And the processor, is mere use of a generic computer or computer component to implement the abstract idea, thus, is not an inventive concept.
With respect to claim 9, “wherein the first update file is configured to update [[a]] the firmware of the network device.” further specifies the update file, is the same insignificant extra-solution activity such as storing data which is recognized as well-understood, routine, and conventional activity, see MPEP § 2106.05(d)(II).
With respect to claim 10, “wherein the processor further executes:
in response to determining a second update file appears on the update server and a version of the second update file is newer than the version of the first update file, controlling the communication circuit to obtain the second update file from the update server;
reading the identification information from at least one predetermined data location of the second update file, wherein the at least one predetermined data location of the second update file respectively corresponds to the at least one predetermined data location of the first update file; and
in response to determining the identification information in the second update file matches the network device, updating the network device based on the second update file.” Claim 10 recites similar limitations as claim 1, and recites same abstract idea as claim 1, please refer to analysis for claim 1 above.
Response to Arguments
Applicant's arguments regarding 101 rejections filed 11/14/2025 have been fully considered but they are not persuasive.
At p8 last paragraph of the Remarks, Applicant argued that “amended claim 1 does not recite a mental process because the above limitations of claim 1 are not practically performed in the human mind. Specifically, the firmware update requires machine-level operations such as writing to non-volatile memory, managing bootloaders, and ensuring data integrity are tasks that cannot be performed mentally. The firmware update is inherently electronic itself. In addition, since identification matching involves binary or encoded data, humans cannot mentally parse or compare binary strings or device-specific identifiers without computational tools. Furthermore, binary files are not human-readable because binary files consist of raw machine code or data that must be interpreted by specialized software or hardware. Thus, amended claim 1 is eligible because it does not recite a judicial exception. (Step 2A, Prong 1: No).”
Examiner respectfully disagrees, because, as set forth in the office action, the determining processes of claim 1 are identified as mental processes under Step 2A, Prong 1. Human can parse, identify, and compare binary strings with aid of paper and pencil. Ensuring data integrity may involve mathematical concept which can be performed by human manually. Managing bootloader is merely using computer as a tool to implement the judicial exception. Examiner would like to point out that managing bootloader and ensuring data integrity are not recited in the claim. In Step 2A, Prong 2, “updating a firmware of the network device based on the first update file.” is analyzed as insignificant extra-solution activity such as storing data, e.g. writing data to memory, which is recognized as well-understood, routine, and conventional activity, see MPEP § 2106.05(d)(II).
At p9 of the Remarks, Applicant argued that “the presented claim 1 as a whole is integrated into a practical application.” Particularly, at p9 second paragraph of the Remarks, Applicant argued that “To solve the above problems, the claimed invention proposes a technical approach that an improved network device obtains the identification information from the predetermined data location of the update file after obtaining the update file satisfying the predetermined condition from the update server, and when the identification information matches the network device, the firmware of the network device is updated based on the update file. It is noted that the update file is a binary (BIN) file, the BIN file comprises an interrupt service routine data string, and the at least one predetermined data location is located immediately after the interrupt service routine data string.”
Examiner respectfully disagrees, because, as set forth in the office action, obtaining the identification information is insignificant extra-solution activity such as data gathering which is recognized as well-understood, routine, and conventional. The determination of satisfying the predetermined condition and matching the network device are mental processes, as human can manually perform the tasks with aid of paper and pencil. Updating firmware is insignificant extra-solution activity like storing data, e.g. writing data into memory, which is recognized as well-understood, routine, and conventional activity. Human can arrange and/or format the update file as defined in the claim and as argued by the applicant.
At p9 third paragraph of the Remarks, Applicant argued that “In this way, the claimed invention can achieve the technical effect of "it is ensured that the network device may be updated based on the correct update file, thereby avoiding malfunctions of the network device caused by updating based on an incorrect update file" (see paragraph [0048] of the as-filed specification). Thus, the invention leads to an improvement over the current state of the art of the network devices (i.e., improvement to the technical field). The claim as a whole is limited to a practical application and is eligible because it is not directed to the judicial exception. (Step 2A, Prong 2: Yes)”.
Examiner respectfully disagrees, because, as explained above, the processes that Applicant argued about are all mental processes or insignificant extra-solution activities which are recognized as well-understood, routine, and conventional. Thus, the processes do not integrate the judicial exception into a practical application, and no technology is affected.
At p10 first paragraph of the Remarks, Applicant argued that “since none of the existing network devices have provided the specific technical approach to achieve the technical effect of avoiding malfunctions of the network device caused by updating based on an incorrect update file as stated in the claimed invention, thus the claimed invention as a whole is not a well-understood, routine, and conventional function in the field and is an inventive concept. (Step 2B: Yes)”.
Examiner respectfully disagrees, because, as set forth in the office action and as explained above, the additional elements are analyzed as either mere use of generic computer or computer components to implement the abstract idea, or insignificant extra-solution activities which are recognized as well-understood, routine, and conventional activities, even viewed as a whole, the claim does not appear to be patent eligible under 35 USC 101.
At p10 second paragraph of the Remarks, Applicant argued that “Based on the foregoing rationales, Applicant respectfully submits that claim 1 overcomes the rejection under 35 U.S.C. 101 and is thus allowable. All other claims 2-4 and 6-10, depending on the outcome of claim 1, are allowable as a matter of law. Reconsideration and withdrawal of the rejections under 35 U.S.C. 101 are respectfully requested.”
Examiner respectfully disagrees, because, as explained above, claim 1 is abstract idea without significantly more, and does not appear to be patent eligible under 35 USC 101. The 101 abstract idea rejection to all other claims are similarly maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. E.g. Moon et al., US 20080250403 A1, teaches method and apparatus for generating firmware update file and updating firmware by using the firmware update file.
THIS ACTION IS MADE FINAL. 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.
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/ZENGPU WEI/
Examiner, Art Unit 2197
/BRADLEY A TEETS/Supervisory Patent Examiner, Art Unit 2197