DETAILED ACTION
This Office action is in response to the amendment filed on July 22, 2026.
Claims 1-15 are pending.
Claims 14 and 15 are currently amended.
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 .
Internet Communications
Without a written authorization for Internet communications by the Applicant in place, the USPTO cannot communicate with the Applicant via email and will not respond via email to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. § 122, such as claimed subject matter in an interview agenda or proposed claim amendments for an Examiner’s Amendment.
Therefore, in the interest of facilitating compact prosecution, the Examiner kindly asks the Applicant to authorize Internet communications with the USPTO by using Form PTO/SB/439 (available at https://www.uspto.gov/patents/apply/forms). The form may be submitted via the USPTO patent electronic filing system (Patent Center) using the document description “Internet Communications Authorized” to facilitate processing. The written authorization for Internet communications must be submitted on a separate paper to be entitled to acceptance in accordance with 37 CFR § 1.4(c). The separate paper will facilitate processing and avoid confusion. The written authorization for Internet communications may not be submitted via an email. See MPEP § 502.03(II).
Claim Interpretation
During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” See MPEP § 2111. Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the relevant time. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, the drawings, and the prior art. See MPEP § 2111.01(I).
Applicant is entitled to be their own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s) in the specification at the relevant time. Where an explicit definition is provided by the Applicant for a term, that definition will control interpretation of the term as it is used in the claim. See MPEP § 2111.01(IV)(A). Any such lexicographic definition for a term will be expressly noted by the Examiner in the prior art rejections of the claims.
Claim Mapping
For clarity of the prosecution history record, the Examiner has provided annotations in the prior art rejections of the claims to aid the Applicant in understanding the Examiner’s interpretations of the claimed invention and the prior art, such as emphasizing notable and relevant portions of the prior art citations, using item-to-item matching to the prior art citations, pairing exact claim language to particular language used in the prior art citations, and/or clearly explaining the Examiner’s interpretation as to how a prior art citation maps to the claim language, especially when there is no one-to-one matching of terms. Furthermore, the annotations are provided in the prior art rejections of the claims at the Examiner’s discretion where the Examiner deemed to be appropriate and necessary.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR § 1.55.
Response to Amendment
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Claim Objections
Claim 14 is objected to because of the following informalities:
Claim 14 recites “the plurality of first control devices includes the first control device.” It should read -- wherein the plurality of first control devices includes the first control device --.
Appropriate correction is required.
Claim Rejections - 35 U.S.C. § 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, 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, 3, 6, 7, and 9-11 are rejected under 35 U.S.C. § 103 as being unpatentable over US 2020/0174779 (hereinafter “David”) in view of US 2019/0227785 (hereinafter “Kanamori”).
EXAMINER’S REMARKS
In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. § 103, the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See MPEP § 2141.01(a)(I).
The claimed invention is generally directed to updating software of a control device at a low cost (specification, paragraph [0005]). As for the “same field of endeavor” test, David is generally directed to employing a local backup approach in which a backup software version, which has been previously stored on the vehicle and checked for validity, is automatically reinstalled in the event that errors or interruptions occur during over-the-air software updates (specification, paragraph [0018]). And Kanamori is generally directed to a distribution device with an electronic control unit configured to distribute a computer program and a communication device with an electronic control unit configured to mutually transmit/receive a communication signal and a new computer program (Abstract). Thus, David and Kanamori are both analogous art to the claimed invention (even if they address different problems).
As per Claim 1, David discloses:
A second control device (Figure 1: 108, paragraph [0025], “The OTA updater device 108 performs actions for updating software within the vehicle 106.”) comprising a storage unit (Figure 2: 224) and a control unit (Figure 2: 222), and connected to a first control device (Figure 1: 110; paragraph [0031], “As an example, the updatable electronic component 110 may be an ECU.”) via a first communication network (Figure 1: 114),
the control unit (Figure 2: 222) includes:
an update processing unit configured to update software of the first control device (paragraph [0045], “At block 306, the OTA updater device 108 initiates installation of the software update in the updatable electronic component. This step may involve, for example, determining whether the updatable electronic component is ready to be updated, transmitting the software update from the OTA updater device 108 to the updatable electronic component (e.g., via a communication bus, such as a CAN bus), and executing the installation process on the updatable electronic component (emphasis added).”); and
a software acquisition processing unit configured to acquire the software of the first control device from the [remote computing system] before the update of the software of the first control device starts, and store the acquired software of the first control device to the storage unit (paragraph [0043], “Referring again to FIG. 3, at block 304, the OTA updater device 108 checks for a valid backup software version for the updatable electronic component in a storage medium in the on-board vehicle computer system, and updates the backup software version if necessary. An update of the backup software version at this stage may be necessary or desirable in several situations. For example, if the OTA updater device detects that there is no backup software version present, or if the backup software version is not compatible with a current vehicle configuration, the OTA updater device 108 may obtain and store an updated backup software version in the storage medium before initiating installation of the software update [before the update of the software of the first control device starts, and store the acquired software of the first control device to the storage unit] to facilitate reversion to a prior software version in the event of an error during installation of the new software update (emphasis added).”; paragraph [0044], “The OTA updater device 108 may obtain the updated backup software version in any suitable manner. For example, the OTA updater device 108 may transmit a request for a backup software version that is compatible with a present vehicle configuration to the server computing system 104 (or another computing system), and may receive the updated backup software version in response [acquire the software of the first control device from the [remote computing system]] (emphasis added).”).
David discloses “acquire the software of the first control device from the [remote computing system],” but David does not explicitly disclose:
[…] acquire the software of the first control device from the first control device […].
However, Kanamori discloses:
[…] acquire the software of the first control device from the first control device […] (paragraph [0040], “The program update system includes one or more ECUs 2 (corresponding to communication devices and the external devices) that control a vehicle-mounted device (not shown), and an ECU 1a (corresponding to a distribution device) communicably connected to the ECUs 2 via a communication line 4.”; paragraph [0047], “Next, the ECU 1a sequentially transmits update files 161, 162 … to the ECU 2 (steps 5, 6 …). The ECU 2, on one side, sequentially receives the update files 161, 162 and temporarily stores the update files in a buffer area (not shown) in the RAM 23 (emphasis added).”).
As pointed out hereinabove, David and Kanamori are both analogous art to the claimed invention. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Kanamori into the teaching of David to include “[…] acquire the software of the first control device from the first control device […].” The modification would be obvious because one of ordinary skill in the art would be motivated to transmit an update program received by a specific control device from the outside via wired or wireless communication to another control device to be updated (Kanamori, paragraph [0004]).
As per Claim 3, the rejection of Claim 1 is incorporated; and David further discloses:
wherein the control unit further includes an update data acquisition processing unit configured to, when another device has update data for the software of the first control device, acquire the update data and stores the acquired update data to the storage unit (paragraph [0029], “In some embodiments, the OTA updater device 108 also includes […] storage media 224 on which backup software 226 for the updatable electronic component(s) 110 may be stored. In some embodiments, the backup software 226 is a copy of software currently installed on the updatable electronic component(s) 110.”; paragraph [0040], “At block 302, the OTA updater device 108 of a vehicle 106 receives a software update package from a remote computer system (e.g., server computing system 104) via a wireless communication network according to a particular wireless communication protocol. The software update package includes a software update for an updatable electronic component (e.g., an ECU) of the vehicle.”),
when the update data acquisition processing unit acquires the update data, the software acquisition processing unit acquires the software of the first control device from the [remote computing system], and stores the acquired software of the first control device to the storage unit (paragraph [0026], “[…] the OTA updater device 108 stores backup software versions for the updatable electronic component(s) 110.”; paragraph [0029], “In some embodiments, the OTA updater device 108 also includes […] storage media 224 on which backup software 226 for the updatable electronic component(s) 110 may be stored. In some embodiments, the backup software 226 is a copy of software currently installed on the updatable electronic component(s) 110.”; paragraph [0044], “The OTA updater device 108 may obtain the updated backup software version in any suitable manner. For example, the OTA updater device 108 may transmit a request for a backup software version that is compatible with a present vehicle configuration to the server computing system 104 (or another computing system), and may receive the updated backup software version in response.”),
when the software of the first control device is stored to the storage unit, the update processing unit uses the update data acquired by the update data acquisition processing unit to start updating the software of the first control device (paragraph [0045], “At block 306, the OTA updater device 108 initiates installation of the software update in the updatable electronic component. This step may involve, for example, determining whether the updatable electronic component is ready to be updated, transmitting the software update from the OTA updater device 108 to the updatable electronic component (e.g., via a communication bus, such as a CAN bus), and executing the installation process on the updatable electronic component.”).
David discloses “acquires the software of the first control device from the [remote computing system],” but David does not explicitly disclose:
[…] acquires the software of the first control device from the first control device […].
However, Kanamori discloses:
[…] acquires the software of the first control device from the first control device […] (paragraph [0040], “The program update system includes one or more ECUs 2 (corresponding to communication devices and the external devices) that control a vehicle-mounted device (not shown), and an ECU 1a (corresponding to a distribution device) communicably connected to the ECUs 2 via a communication line 4.”; paragraph [0047], “Next, the ECU 1a sequentially transmits update files 161, 162 … to the ECU 2 (steps 5, 6 …). The ECU 2, on one side, sequentially receives the update files 161, 162 and temporarily stores the update files in a buffer area (not shown) in the RAM 23 (emphasis added).”).
As pointed out hereinabove, David and Kanamori are both analogous art to the claimed invention. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Kanamori into the teaching of David to include “[…] acquires the software of the first control device from the first control device […].” The modification would be obvious because one of ordinary skill in the art would be motivated to transmit an update program received by a specific control device from the outside via wired or wireless communication to another control device to be updated (Kanamori, paragraph [0004]).
As per Claim 4, the rejection of Claim 1 is incorporated; and David further discloses:
wherein when the software of the first control device has not been successfully updated, the update processing unit installs the acquired software stored in the storage unit to the first control device (paragraph [0058], “At block 406, the OTA updater device 108 determines whether any errors or interruptions have occurred during the installation process. For example, the OTA updater device 108 may determine that a vehicle state condition has changed such that the installation must be interrupted (e.g., the key has been turned off or the battery level has dropped below a threshold voltage), or that a user has interrupted the update manually.”; paragraph [0059], “At block 410, the OTA updater device 108 retrieves a backup software version from a storage medium in the on-board computer system. At block 412, the OTA updater device 108 installs the backup software version on the updatable electronic component.”).
EXAMINER’S REMARKS
Claim 4 only recites “the acquired software,” which David clearly discloses. If the Applicant asserts that the claimed “acquired software” is from the first control device, then the Examiner would like to point out that David discloses “acquire the software of the first control device from the [remote computing system].” And Kanamori discloses “acquire the software of the first control device from the first control device.” Thus, it’s the combination of David and Kanamori that discloses “the acquired software” from the first control device.
As per Claim 6, the rejection of Claim 3 is incorporated; and David further discloses:
wherein the first control device and the second control device are provided in a vehicle (Figure 1: 106, 108, and 110), and
the another device is provided outside the vehicle (Figure 1: 104 and 106).
As per Claim 7, David discloses:
A control system (Figure 1) comprising:
a plurality of first control devices (paragraph [0002], “Electronic control units (ECUs) and other devices associated with the vehicles may store or access updatable software, which may include computer-executable instructions, settings data, torque maps, or other software. ECUs are embedded devices that control electronic systems or subsystems in vehicles. ECUs provide many types of functionality for vehicle operation, including but not limited to engine control, auxiliary equipment control, presentation of information via an instrument panel, and infotainment services. ECUs can be implemented in a variety of hardware configurations.”); and
a second control device according to claim 1 connected to the plurality of first control devices via the first communication network (see 35 U.S.C. § 103 rejection of Claim 1 hereinabove).
Claim 9 is a control method claim corresponding to the second control device claim hereinabove (Claim 1). Therefore, Claim 9 is rejected for the same reason set forth in the rejection of Claim 1.
As per Claim 10, the rejection of Claim 9 is incorporated; and David further discloses:
[a] non-transitory computer-readable recording medium (Figure 5: 508) recorded with a control program (paragraph [0073], “In general, the word ‘module,’ as used herein, refers to logic embodied in hardware or software instructions, which can be written in a programming language, such as C, C++, COBOL, JAVA™, PHP, Perl, HTML, CSS, JavaScript, VBScript, ASPX, Microsoft .NET™, Swift, Go, and/or the like. A module may be compiled into executable programs or written in interpreted programming languages.”) for causing a computer to execute the control method of claim 9 (see 35 U.S.C. § 103 rejection of Claim 9 hereinabove).
As per Claim 11, the rejection of Claim 1 is incorporated; and David further discloses:
wherein the software acquisition processing unit is further configured to acquire the software of the first control device from the [remote computing system] based on determining that the update of the software of the first control device is available to update the software of the first control device before the update of the software of the first control device starts (paragraph [0041], “The OTA updater device 108 may obtain the software update in any suitable manner. For example, the OTA updater device 108 may transmit a request for available updates to the server computing system 104 (or another computing system), and may receive the software update in response, or the OTA updater device 108 may receive an indication that a software update is available.”; paragraph [0044], “The OTA updater device 108 may obtain the updated backup software version in any suitable manner. For example, the OTA updater device 108 may transmit a request for a backup software version that is compatible with a present vehicle configuration to the server computing system 104 (or another computing system), and may receive the updated backup software version in response.”).
David discloses “acquire the software of the first control device from the [remote computing system],” but David does not explicitly disclose:
[…] acquire the software of the first control device from the first control device […].
However, Kanamori discloses:
[…] acquire the software of the first control device from the first control device […] (paragraph [0040], “The program update system includes one or more ECUs 2 (corresponding to communication devices and the external devices) that control a vehicle-mounted device (not shown), and an ECU 1a (corresponding to a distribution device) communicably connected to the ECUs 2 via a communication line 4.”; paragraph [0047], “Next, the ECU 1a sequentially transmits update files 161, 162 … to the ECU 2 (steps 5, 6 …). The ECU 2, on one side, sequentially receives the update files 161, 162 and temporarily stores the update files in a buffer area (not shown) in the RAM 23 (emphasis added).”).
As pointed out hereinabove, David and Kanamori are both analogous art to the claimed invention. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Kanamori into the teaching of David to include “[…] acquire the software of the first control device from the first control device […].” The modification would be obvious because one of ordinary skill in the art would be motivated to transmit an update program received by a specific control device from the outside via wired or wireless communication to another control device to be updated (Kanamori, paragraph [0004]).
Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable over David in view of Kanamori as applied to Claim 1 above, and further in view of US 2014/0101651 (hereinafter “Li”).
EXAMINER’S REMARKS
In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. § 103, the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See MPEP § 2141.01(a)(I).
The claimed invention is generally directed to updating software of a control device at a low cost (specification, paragraph [0005]). As for the “reasonably pertinent” test, Li is generally directed to running multiple software threads for software that needs an update for updating the software while mitigating service disruption (Abstract). Thus, Li is an analogous art to the claimed invention (even if it is not in the same field of endeavor as the claimed invention).
As per Claim 2, the rejection of Claim 1 is incorporated; and David discloses “the first control device,” but the combination of David and Kanamori does not explicitly disclose:
wherein the control unit includes a substitution processing unit that uses the software of the first control device stored in the storage unit to substitute for a function of the first control device while the software of the first control device is updated.
However, Li discloses:
wherein the control unit includes a substitution processing unit that uses the software […] stored in the storage unit to substitute for a function […] while the software […] is updated (Figure 16: 1602 and 1604; paragraph [0022], “In the modern routing and switching systems, the data plane software may run in multiple-core and/or multiple-thread environments. Software patches may be used to fix software bugs (i.e., software problems). The software patches may need to replace the bugged functions with new functions, but may not need to upgrade the entire software.”; paragraph [0023], “During a software patch installation, it may be desirable to achieve minimal service disruption.”; paragraph [0036], “At step 1, shown in FIG. 7, a control thread (not shown in FIG. 7) may download the new functions 708 into a synchronization code zone (e.g., patch zone) 704. An instruction may be added to the first line of an existing or bugged function 702 to jump to a patch zone 704. The patch zone 704 may comprise a copy of the existing (bugged) function 706 (e.g., the existing function 702 without the first line that points to the patch zone) and the new function 708 that will replace the existing function 702.”).
EXAMINER’S REMARKS
Li discloses that software patches may need to replace the bugged functions with new functions. Thus, one of ordinary skill in the art would readily comprehend that the software patches contain the new functions.
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Li discloses that during a software patch installation, it may be desirable to achieve minimal service disruption. Thus, one of ordinary skill in the art would readily comprehend that the replacements of the existing functions with the new functions take place in a patch zone during a software patching process.
As pointed out hereinabove, Li is an analogous art to the claimed invention. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Li into the combined teachings of David and Kanamori to include “wherein the control unit includes a substitution processing unit that uses the software of the first control device stored in the storage unit to substitute for a function of the first control device while the software of the first control device is updated.” The modification would be obvious because one of ordinary skill in the art would be motivated to achieve minimal service disruption during a software patch installation (Li, paragraph [0023]).
Claims 8, 14, and 15 are rejected under 35 U.S.C. § 103 as being unpatentable over David in view of Kanamori as applied to Claim 1 above, and further in view of US 2021/0258186 (hereinafter “Tokunaga”).
EXAMINER’S REMARKS
In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. § 103, the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See MPEP § 2141.01(a)(I).
The claimed invention is generally directed to updating software of a control device at a low cost (specification, paragraph [0005]). As for the “reasonably pertinent” test, Tokunaga is generally directed to providing a communication system in which start condition(s) can be easily changed (specification, paragraph [0004]). Thus, Tokunaga is an analogous art to the claimed invention (even if it is not in the same field of endeavor as the claimed invention).
As per Claim 8, the rejection of Claim 1 is incorporated; and David further discloses:
A control system (Figure 1) comprising:
a […] second control device[] according to claim 1 (see 35 U.S.C. § 103 rejection of Claim 1 hereinabove).
The combination of David and Kanamori does not explicitly disclose:
a plurality of second control devices; and
a third control device connected to the plurality of second control devices via a second communication network.
However, Tokunaga discloses:
a plurality of second control devices (paragraph [0017], “A communication system 10 shown in FIG. 1 includes a plurality of electronic control devices (hereinafter referred to as ‘ECUs’) 1a, 1b, 1c, 1d (hereinafter, also referred to collectively as ECU 1 when individual ECUs are not distinguished) mounted on a vehicle. The plurality of ECUs 1 are connected to a communication bus 9 to constitute an in-vehicle network, and perform mutual communication according to a CAN protocol via the communication bus 9.”; paragraph [0025], “Of the ECUs 1, a configuration of the ECU 1a, which is a master ECU, is described with reference to FIG. 1.”; paragraph [0114], “[…] the communication system 10 may be configured to include a plurality of master ECUs or may be configured to include one slave ECU.”); and
a third control device connected to the plurality of second control devices via a second communication network (Figure 9: 1, 1z, and 9).
As pointed out hereinabove, Tokunaga is an analogous art to the claimed invention. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Tokunaga into the combined teachings of David and Kanamori to include “a plurality of second control devices; and a third control device connected to the plurality of second control devices via a second communication network.” The modification would be obvious because one of ordinary skill in the art would be motivated to utilize a master ECU to control the operations of a plurality of slave ECUs.
As per Claim 14, the rejection of Claim 8 is incorporated; and David further discloses:
wherein the [first] control device is configured to obtain, over a network, the update of the software of the first control device (paragraph [0040], “At block 302, the OTA updater device 108 of a vehicle 106 receives a software update package from a remote computer system (e.g., server computing system 104) via a wireless communication network according to a particular wireless communication protocol. The software update package includes a software update for an updatable electronic component (e.g., an ECU) of the vehicle.”), and
wherein the second control device is configured to […] control a […] first control device[] connected to the second control device via a first communication network, the […] first control device[] includes the first control device (Figure 1; paragraph [0027], “[…] the OTA updater device 108 applies the software update(s) to the updatable electronic component 110 […].”).
The combination of David and Kanamori does not explicitly disclose:
the third control device;
[…] controlled by the third control device […]; and
a plurality of first control devices.
However, Tokunaga discloses:
the third control device (Figure 9: 1z);
[…] controlled by the third control device […] (paragraph [0109], “The gateway ECU 1z connects a plurality of communication buses 9 to each other in order to relay transmission/reception of communication frames between the plurality of ECUs 1, that is, between the plurality of nodes 1.”); and
a plurality of first control devices (paragraph [0017], “A communication system 10 shown in FIG. 1 includes a plurality of electronic control devices (hereinafter referred to as ‘ECUs’) 1a, 1b, 1c, 1d (hereinafter, also referred to collectively as ECU 1 when individual ECUs are not distinguished) mounted on a vehicle. The plurality of ECUs 1 are connected to a communication bus 9 to constitute an in-vehicle network, and perform mutual communication according to a CAN protocol via the communication bus 9.”; paragraph [0025], “Of the ECUs 1, a configuration of the ECU 1a, which is a master ECU, is described with reference to FIG. 1.”; paragraph [0114], “[…] the communication system 10 may be configured to include a plurality of master ECUs or may be configured to include one slave ECU.”).
As pointed out hereinabove, Tokunaga is an analogous art to the claimed invention. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Tokunaga into the combined teachings of David and Kanamori to include “the third control device; […] controlled by the third control device […]; and a plurality of first control devices.” The modification would be obvious because one of ordinary skill in the art would be motivated to utilize a master ECU to control the operations of a plurality of slave ECUs.
As per Claim 15, the rejection of Claim 8 is incorporated; and David further discloses:
wherein the first control device (Figure 1: 110) and the second control device (Figure 1: 108) are provided in a vehicle (Figure 1: 106), and
wherein the another device (Figure 1: 104) is provided outside the vehicle (Figure 1: 106).
Claim 12 is rejected under 35 U.S.C. § 103 as being unpatentable over David in view of Kanamori as applied to Claim 1 above, and further in view of US 2022/0024472 (hereinafter “Hachisuwa”).
EXAMINER’S REMARKS
In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. § 103, the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See MPEP § 2141.01(a)(I).
The claimed invention is generally directed to updating software of a control device at a low cost (specification, paragraph [0005]). As for the “same field of endeavor” test, Hachisuwa is generally directed to update processing for updating a vehicle control software that is to be used for the vehicle control (Abstract). Thus, Hachisuwa is an analogous art to the claimed invention (even if it addresses a different problem).
As per Claim 12, the rejection of Claim 1 is incorporated; and the combination of David and Kanamori does not explicitly disclose:
wherein the control unit is further configured to erase, from the control unit, the acquired software of the first control device based on determining that the update of the software of the first control device has completed successfully.
However, Hachisuwa discloses:
wherein the control unit is further configured to erase, from the control unit, the acquired software of the first control device based on determining that the update of the software of the first control device has completed successfully (paragraph [0047], “[…] the electronic control device 90 includes a so-called microcomputer incorporating a CPU, a ROM, a RAM and an input-output interface.”; paragraph [0123], “[…] when the update processing of the current software 92 stored in the first storage device 91 has been successfully executed, the current software 92 subjected to the update processing and written into the second storage device 124 prior to execution of the update processing, is erased from the second storage device 124. Thus, after the update processing of the current software 92 has been successfully executed, the backed-up current software 92 is not kept stored in the second storage device 124, so that it is possible to appropriately ensure the free space of the second storage device 124.”).
As pointed out hereinabove, Hachisuwa is an analogous art to the claimed invention. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Hachisuwa into the combined teachings of David and Kanamori to include “wherein the control unit is further configured to erase, from the control unit, the acquired software of the first control device based on determining that the update of the software of the first control device has completed successfully.” The modification would be obvious because one of ordinary skill in the art would be motivated to ensure that there is free space available in a storage device when a software of a control device is no longer needed (Hachisuwa, paragraph [0123]).
Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over David in view of Kanamori as applied to Claim 2 above, and further in view of US 2010/0250787 (hereinafter “Miyata”).
EXAMINER’S REMARKS
In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. § 103, the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See MPEP § 2141.01(a)(I).
The claimed invention is generally directed to updating software of a control device at a low cost (specification, paragraph [0005]). As for the “reasonably pertinent” test, Miyata is generally directed to making an information processing device operate, which device is connected communicably via a network with a peripheral device that has specific identification information representing an address on the network (specification, paragraph [0003]). Thus, Miyata is an analogous art to the claimed invention (even if it is not in the same field of endeavor as the claimed invention).
As per Claim 13, the rejection of Claim 2 is incorporated; and David discloses “the first control device,” but the combination of David and Kanamori does not explicitly disclose:
wherein the function of the first control device is unavailable from the first control device while the software of the first control device is updated.
However, Miyata discloses:
wherein the function of the [printer] is unavailable from the [printer] while the software of the [printer] is updated (paragraph [0064], “Since the printer 4 begins to update the current firmware after receiving the firmware from the controller 11, the printing function and the communication function of the printer 4 are not available during the updating.”).
As pointed out hereinabove, Miyata is an analogous art to the claimed invention. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Miyata into the combined teachings of David and Kanamori to include “wherein the function of the first control device is unavailable from the first control device while the software of the first control device is updated.” The modification would be obvious because one of ordinary skill in the art would be motivated to not allow a function of a control device to be used while the control device is updated and thus, preventing the control device from being shut down completely for the update.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim under 35 U.S.C. § 103, but would be allowable over the cited prior art if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and overcome any corresponding objections and/or rejections set forth hereinabove.
The following is an Examiner’s statement of reasons for the indication of allowable subject matter:
As per Claim 5, the closest cited prior art, the combination of David, Kanamori, and Li, fails to teach or suggest, among the other claimed limitations, “when the software of the first control device is stored to the storage unit, the substitution processing unit uses the software of the first control device stored in the storage unit to substitute for the function of the first control device, and when the substitution processing unit starts substitution for the function of the first control device, the update processing unit uses the update data acquired by the update data acquisition processing unit to start updating the software of the first control device.” These claimed limitations, in combination with the other claimed limitations, are neither taught nor suggested by the combination of David, Kanamori, and Li.
Response to Arguments
Applicant’s arguments filed on July 22, 2026 with respect to the 35 U.S.C. § 103 rejections of the claims have been fully considered, but they are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the Applicant’s arguments.
In the Remarks, the Applicant argues:
Claim 12: Claim 12 depends from claim 1 and recites that “the control unit is further configured to erase, from the control unit, the acquired software of the first control device based on determining that the update of the software of the first control device has completed successfully.” The rejection has cited Hachisuwa paragraph [0123] for the erase-on-success feature and has alleged that one of ordinary skill in the art would have been motivated to combine David with Hachisuwa “to ensure that there is free space available in a storage device when a software of a control device is no longer needed.” Office Action, page 21. Applicant respectfully submits that the proposed combination is improper because it would render David unsatisfactory for its intended purpose and would change David’s principle of operation.
As recognized by the MPEP, “[i]f a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, there may be no suggestion or motivation to make the proposed modification.” MPEP § 2143.01(V) (citing In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984)). Furthermore, “[i]f the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious.” MPEP § 2143.01(VI) (citing In re Ratti, 270 F.2d 810, 813, 123 USPQ 349, 352 (CCPA 1959)). Additionally, “[i]t is improper to combine references where the references teach away from their combination.” MPEP § 2145 (citing In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 779 (Fed. Cir. 1983)).
David’s system is designed around retaining the backup software version after a successful update so that it remains available for future rollback. At paragraph [0027], David explains that “after verifying that the updated software is valid and functioning properly, [the OTA updater device 108] stores the updated software on the vehicle 106 as backup software versions” and that “[t]hese backup versions can be used in the event of errors or interruptions in future updates that require reverting or ‘rolling back’ to a previous software version.” David, paragraph [0027].
Similarly, at paragraph [0049], David states that “in response to determining that the installation of the software update was successful, the OTA updater device 108 stores the software update as a backup software version in a storage medium in the on-board computer system.” David, paragraph [0049].
David’s principle of operation is thus to preserve the backup after a successful update, not to erase it. Modifying David to erase the acquired software upon successful completion of the update, as asserted by the rejection to be an obvious modification to David in view of Hachisuwa, would directly defeat David’s stated purpose of maintaining backup software versions for future rollback. The vehicle would lose its ability to revert to a known-good software version in the event of a future update failure, which is the very capability that David identifies as a core technical benefit. See David, paragraphs [0018], [0030]. This is not a mere design trade-off or preference; it is a fundamental frustration of David’s intended purpose that would render David’s system unsatisfactory for the operation it was designed to provide. Viewing the references as cited and overall does not remedy that deficiency. Accordingly, claim 12 is separately allowable.
(See Remarks – pages 16-18, emphasis in original.)
Examiner’s response:
Examiner respectfully disagrees. With respect to the Applicant’s assertion that “[…] the proposed combination is improper because it would render David unsatisfactory for its intended purpose and would change David’s principle of operation,” the Applicant’s arguments are not persuasive for at least the following reasons:
First, the Examiner respectfully submits the relevant portions of MPEP § 2143.01(VI) with emphasis added for purposes of convenience in discussion and illustration:
MPEP § 2143.01(VI) THE PROPOSED MODIFICATION CANNOT CHANGE THE PRINCIPLE OF OPERATION OF A REFERENCE
If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d 810, 813, 123 USPQ 349, 352 (CCPA 1959) (Claims were directed to an oil seal comprising a bore engaging portion with outwardly biased resilient spring fingers inserted in a resilient sealing member. The primary reference relied upon in a rejection based on a combination of references disclosed an oil seal wherein the bore engaging portion was reinforced by a cylindrical sheet metal casing. The seal construction taught in the primary reference required rigidity for operation, whereas the seal in the claimed invention required resiliency. The court reversed the rejection holding the “suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principle under which the [primary reference] construction was designed to operate.”).
According to the portions of the MPEP provided hereinabove, the Examiner would like to point out that the Applicant has misapplied Ratti. A person of ordinary skill is “not an automaton,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), limited to physically combining references, see Mouttet, 686 F.3d at 1332 (citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc)). Hachisuwa teaches “provid[ing] a vehicle control apparatus capable of controlling a vehicle by reviving a current vehicle control software in the event of failure in update processing for updating the current vehicle control software while suppressing enlargement of a capacity of a storage device as a whole of a first control device” (paragraph [0005]), which is consistent with David’s principle of operation of “employ[ing] a local backup approach in which a backup software version, which has been previously stored on the vehicle and checked for validity, is automatically reinstalled in the event that errors or interruptions occur during over-the-air software updates” (paragraph [0018]). Unlike in Ratti, the Examiner does not believe that the “suggested combination of references would require a substantial reconstruction and redesign of the elements shown” in David, or a “change in [its] basic principles.” 270 F.2d at 813. Rather, David and Hachisuwa teach every element of the claimed invention and the combination of the references accords with their teachings. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416.
Furthermore, the Examiner would also like to point out that the proposed modification or combination of the prior art does not prevent David’s invention from saving backup software versions for future rollback. Instead, in view of David’s and Hachisuwa’s teachings, one of ordinary skill in the art would readily recognize that David’s invention could be modified to include the ability to erase a backup software version from a storage medium. Such modification would be beneficial to David’s invention because, as it should be well-understood by the Applicant, there would be a limited amount of storage space available in David’s storage medium for storing the backup software versions. And having the ability to erase would allow David’s invention to remove any outdated backup software versions from the storage medium and save the most recent backup software versions for future rollback. Thus, such proposed modification would still render David’s invention to operate as intended because including the ability to erase a backup software version from a storage medium would not change the principle of operation of David’s invention involving saving backup software versions for future rollback.
Moreover, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Furthermore, it is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements. See In re Mouttet, 686 F.3d 1322, 1332, 103 USPQ2d 1219, 1226 (Fed. Cir. 2012) (citing In re Etter, 756 F.2d 852, 859, 225 USPQ 1, 6 (Fed. Cir. 1985) (en banc)).
Therefore, for at least the reasons set forth above, the rejection made under 35 U.S.C. § 103 with respect to Claim 12 is proper.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to the Applicant’s disclosure. They are as follows:
US 2016/0325754 (hereinafter “Stahulak”) discloses altering the driving profile of a vehicle.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Qing Chen whose telephone number is 571-270-1071. The Examiner can normally be reached on Monday through Friday from 9:00 AM to 5:00 PM ET.
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/Qing Chen/
Primary Examiner, Art Unit 2191
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