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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4, 8-11, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Alon et al. (2021/0149681) in view of Nekoomaram et al. (2024/0312613).
Regarding claim 1:
Alon teaches:
A method comprising:
copying, by a memory device, a current firmware image to an archive location [par 24, 73-76 – copying of a current firmware image to backup location is performed after a firmware image has been authenticated and confirmed good. This image remains until a new image or updated image has been authenticated and confirmed successful];
booting, by the memory device, a firmware update [par 24, 30, 47, 59, 61-64 – new or updated firmware goes through a boot process including authentication and self-test to verify that it is authentic and is successfully installed and booted]; and
replacing, by the memory device, the firmware update with the current firmware image upon detecting an error during the booting of the firmware update [par 23, 61, 68-72 – if the authentication or self-test fails and the new or updated firmware is not successful, recovery is performed by copying current image from the backup location. These authentication and self-test steps are part of the boot process and thus and error detected during these steps is an error detected during booting of the update].
Alon does not explicitly teach copying a firmware image executing on a memory device before attempting to boot a firmware update. Alon does, however, teach copying a current firmware image to an archive location and teaches attempting to boot a firmware update.
Nekoomaram teaches copying a firmware image executing on a memory device before attempting to boot a firmware update [par 42, 43 – after a command for initiating upgrade of a firmware version and prior to completing any installation or booting of a firmware upgrade, copying the currently executing firmware to a second storage location in nonvolatile memory].
It would have been obvious to one of ordinary skill in the art prior the effective filing date to combine the firmware update method of Alon with the copying of Nekoomaram.
One of ordinary skill in the art prior to the effective filing date would have been motivated to make the combination because Nekoomaram teaches that the copying allows for replacement of a failed new version of firmware with the currently executing version, meeting a desire of Alon to recover from failure of a new firmware version [par 53].
Regarding claim 2:
The combination teaches:
The method of claim 1, wherein the firmware update comprises: a firmware update image and a corresponding version identifier [Alon par 62].
Regarding claim 3:
The combination teaches:
The method of claim 1, further comprising discarding the firmware update upon determining that a digital signature of the firmware update is invalid [Alon par 47].
Regarding claim 4:
The combination teaches:
The method of claim 1, wherein copying the current firmware image to the archive location comprises: writing the current firmware image to a write-protected region of non-volatile memory [Alon par 30, 31, 45 – the backup storage location is write protected/locked].
Regarding claims 8-11:
The claims are rejected as the devices for performing the methods of claims 1-4.
Alon further teaches non-volatile memory [par 48- Flash] and a controller [fig 1 – 104].
Regarding claims 15-17:
The claims are rejected as the non-transitory computer-readable medium storing instructions causing the method of claims 1, 3 and 4 to be performed.
Alon further teaches non-transitory computer-readable media storing instructions [par 90].
Claims 6, 13 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Alon-Nekoomaram in view of Hung (2022/0100489).
Regarding claims 6, 13, and 19:
See the teachings of Alon-Nekoomaram outlined above.
Alon-Nekoomaram does not explicitly teach iteratively executing a plurality of firmware images until no errors occur while booting a respective firmware image. Alon-Nekoomaram does, however, teach recovering with a backup firmware image when booting fails with one image.
Hung teaches iteratively executing a plurality of firmware images until no errors occur while booting a respective firmware image [par 40, 43 – stores multiple older firmware images in a backup and iterates through older images until booting succeeds].
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the multiple images and iterative boot of Hung with the recovery method of Alon-Nekoomaram.
One of ordinary skill in the art prior to the effective filing date would have been motivated to make the combination because the iterative teachings of Hung provide further protection from boot failure and provide uninterrupted, efficient and fault-tolerant services [Hung par 43, 44].
Claims 5, 12 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Alon-Nekoomaram-Hung as applied to claims 6, 13 and 19 above, and further in view of Gerhart et al. (20160210132).
Regarding claims 5, 12, and 18:
See the teachings of Alon-Nekoomaram-Hung above.
Alon-Nekoomaram-Hung do not explicitly teach updating a version map that associates version numbers with firmware images. Alon-Nekoomaram-Hung does, however, teach copying current firmware to backup and teaches storing multiple older firmware images.
Gerhart teaches updating a version map that associates version numbers with firmware images [par 47, 48, 50, 51 -firmware release table tracks every version of firmware stored in storage].
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the version map of Gerhart with the recovery method of Alon-Nekoomaram-Hung.
One of ordinary skill in the art prior to the effective filing date would have been motivated to make the combination because the firmware release table of Gerhart provides a fast, low overhead means to sort and easily access stored firmware images based on their versions [par 13].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11886592 in view of Nekoomaram.
Claims 1-20 of the ‘592 patent contain all limitations of the instant claim except copying a current firmware image executing on a memory device before attempting to boot the firmware update.
Nekoomaram teaches copying a current firmware image executing on a memory device before attempting to boot the firmware update [par 42, 43 – after a command for initiating upgrade of a firmware version and prior to completing any installation or booting of a firmware upgrade, copying the currently executing firmware to a second storage location in nonvolatile memory].
It would have been obvious to one of ordinary skill in the art prior the effective filing date to combine the teachings of the ‘592 patent claims with the copying of Nekoomaram because Nekoomaram teaches that the copying allows for replacement of a failed new version of firmware with the currently executing version [par 53].
Response to Arguments
Applicant's arguments filed 6/14/25 have been fully considered but they are not persuasive.
Regarding applicant’s arguments concerning the newly amended limitation reciting “copying, by a memory device, a current firmware image executing on the memory device to an archive location before attempting to boot a firmware update” and the temporal relationship established by the added claim language reciting “before attempting to boot a firmware update,” the arguments are moot in view of the new ground of rejection established above.
Regarding applicant’s argument concerning the newly recited limitation that states “upon detecting an error during the booting of the firmware update,” the examiner respectfully disagrees. As stated in the previous final rejection, as Alon replaces the code in Flash 0 with the last known good code from Flash 1 upon an error occurring in either authentication or a self-test, which are part of the boot procedure (see, for example, paragraph 0043), Alon teaches a boot error.
Regarding applicant’s argument that Alon’s “last known good firmware” could be from a much earlier time, the examiner respectfully disagrees. This argument was previous addressed. As stated in the previous final rejection, the name “last known good” explicitly means that no other good firmware has been executed after the storing of this code, thus applicant’s argument that the last known good version could be considerably older than current firmware is unpersuasive. A last known good version cannot, by definition, be “considerably older” than the last version used to successfully boot the system.
Further, the newly discovered and applied Nekoomaram reference explicitly teaches copying currently executing firmware.
Regarding applicant’s argument that “In Alon, if authentication fails, the system never attempts to boot the new firmware at all. In contrast, the claim specifically addresses errors that occur ‘during the booting’ process, which is a different technical approach than pre-boot authentication failures,” the examiner respectfully disagrees. The replacement of Alon does not occur only in response to an authentication failure, but also to errors that occur during self-test and verification of the stability of the update. These steps are part of the booting process and thus Alon teaches the newly recited “during the booting of the firmware update.”
Regarding the double patenting rejection, applicant has stated that applicant will defer substantive response until the claims are otherwise in condition for allowance. The rejection has been updated in light of the amendments to the claims. The claims remain rejected under double patenting.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC M DUNCAN whose telephone number is (571)272-3646. The examiner can normally be reached M-F: 730am-9am, 10am-4:30pm.
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/MARC DUNCAN/Primary Examiner, Art Unit 2113