DETAILED ACTION
The instant application having Application No. 18/714744 filed on May 30, 2024 is presented for examination 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.
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
Applicant is encouraged to submit a written authorization for Internet communications (PTO/SB/439, found at http:/www.uspto.gov/sites/default/files/documents/sb0439.pdf) in the instant patent application to authorize the examiner to communicate with the applicant via email. The authorization will allow the examiner to better practice compact prosecution. The written authorization can be submitted via one of the following methods only: (1) Central Fax, which can be found in the Conclusion section of this Office action; (2) regular postal mail; (3) EFS WEB; or (4) the service window on the Alexandria campus. EFS web is the recommended way to submit the form since this allows the form to be entered into the file wrapper within the same day (system dependent). Written authorization submitted via other methods, such as direct fax to the examiner or email, will not be accepted. See MPEP § 502.03.
Applicant is also encouraged to contact the Examiner for an Interview, should the Applicant determine that clarifying and further illustrating the distinguishing features of the instant application may further the prosecution.
Oath/Declaration
The applicant’s oath/declaration has been reviewed by the examiner and is found to conform to the requirements prescribed in 37 C.F.R. 1.63.
Information Disclosure Statement
As required by M.P.E.P. 609(C), the applicant’s submission of the Information Disclosure Statement is acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending. As required by M.P.E.P. 609(C), a copy of the PTOL-1449 initialed and dated by the examiner is attached to the instant office action.
Drawings
The applicant’s drawings submitted are acceptable for examination purposes.
Priority
As required by M.P.E.P. 201.14(c), acknowledgement is made of applicant’s claim for priority based on applications filed on December 27, 2021 (JP2021-212201).
Claim Analysis – 35 USC § 112 (f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a first authenticity determination processing unit”, “a code data generation unit”, “a second authenticity determination processing unit” in claims 1-15, “a processing selection unit” in claim 2, “a communication processing unit” in claim 4, “a key generation unit” in claims 5-6, “a communication processing unit” in claims 10-11, “an unalterdness determination processing unit” in claim 14, and “an update determination processing unit” in claim 15.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim(s) 1-15 has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof. A review of the specification and drawings does not appear to clearly show the corresponding structure of the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitations. Therefore, the claims are rejected under 112(b) for failing to clearly link or associate the disclosed structure to the claimed function such that one of ordinary skill in the art would recognize what structure is used to perform the claimed function. Please also see the 112(b) rejection below for further details.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim limitations “a first authenticity determination processing unit”, “a code data generation unit”, “a second authenticity determination processing unit” in claims 1-15, “a processing selection unit” in claim 2, “a communication processing unit” in claim 4, “a key generation unit” in claims 5-6, “a communication processing unit” in claims 10-11, “an unalterdness determination processing unit” in claim 14, and “an update determination processing unit” in claim 15 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
The examiner has cited particular examples of 35 U.S.C. 112 rejections above. It is respectfully requested that, in preparing responses, the applicant check the claims for further 35 U.S.C. 112 rejections in the event that it was inadvertently missed by the examiner to advance prosecution.
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 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 1 and 16 recite performing a first authenticity determination using a public key cryptosystem, generating code data using a common key cryptosystem, and performing a second authenticity determination using the generated code data.
These limitations, as drafted, are a process that, under its broadest reasonable interpretation, is an abstract idea drawn to performing mathematical calculations but for the recitation of generic computer components. That is, other than reciting “processing units” or “a computer apparatus” to perform the steps, nothing in the claim element precludes the steps from merely being the performance of mathematical calculations. For example, but for the “processing unit” or “computer apparatus” language, performing a first authenticity determination using a public key cryptosystem, generating code data using a common key cryptosystem, and performing a second authenticity determination using the generated code data in the context of the claims encompasses the performance of mathematical calculations. If a claim limitation, under its broadest reasonable interpretation, covers performing the abstract idea of mathematical calculations but for the recitation of generic computer components, then it falls within the “Mathematical Concepts” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites one additional element – using a processing unit or computer apparatus to perform the steps. The processing unit and computer apparatus in the steps is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of performing a first authenticity determination using a public key cryptosystem, generating code data using a common key cryptosystem, and performing a second authenticity determination using the generated code data) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
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 of using a processing unit or computer apparatus to perform the steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
Dependent claims 2-15 are also rejected for the same reason as cited above for not reciting any additional elements that amount to significantly more than the judicial exception.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 7-12, and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawabata (EP 3319266).
As per claims 1 and 16, Kawabata discloses An electronic device comprising:
a first authenticity determination processing unit that performs, on target data, first authenticity determination with a public key cryptosystem (Kawabata, paragraphs 18 and 25-28, teaches using a verification key (defined as a public key in paragraph 18) to verify the electronic signature of updated firmware (target data).);
a code data generation unit that generates, from the target data determined to be true in the first authenticity determination, code data with a common key cryptosystem (Kawabata, paragraph 28, teaches attaching a new electronic signature to the updated firmware using a common key to generate re-signed updated firmware.)
a second authenticity determination processing unit that performs second authenticity determination on the target data by using the code data (Kawabata, paragraph 32, teaches verifying the new electronic signature of the resigned updated firmware using the common key.)
Claim 16 recites the additional limitations of “An information processing method, wherein a computer apparatus executes …” (Kawabata, paragraphs 18, 25-28, and 31-32, teaches the steps being performed by ECUs, CPUs, and HSMs.)
As per claim 2, Kawabata discloses The electronic device according to claim 1, further comprising a processing selection unit that performs the first authenticity determination at a time before the code data for the target data is generated, and does not perform the first authenticity determination but performs the second authenticity determination at a time after the code data for the target data is generated (Kawabata, paragraphs 18, 25-28, and 32, teaches verifying the original electronic signature of the updated firmware, then re-signing the updated firmware with a new electronic signature, and then verifying the new electronic signature. The original electronic signature is verified prior to generating the new electronic signature and after the new electronic signature is generated only the new electronic signature is verified as the original electronic signature has already been verified at this point.)
As per claim 3, Kawabata discloses The electronic device according to claim 1, further comprising a storage processing unit that stores, in a storage unit, a common key used for generation of the code data with the common key cryptosystem (Kawabata, paragraphs 28 and 32, teaches the “HSM_60 holds the common key for each ECU 30 in advance”. Kawabata, Figure 3, also teaches a key storage area.)
As per claim 4, Kawabata discloses The electronic device according to claim 3, further comprising a communication processing unit that receives the common key from another device (Kawabata, paragraphs 28 and 32, teaches the “HSM_60 holds the common key for each ECU 30 in advance”. Kawabata, Figure 3, also teaches a key storage area.)
As per claim 5, Kawabata discloses The electronic device according to claim 3, further comprising a key generation unit that generates the common key (Kawabata, paragraphs 28 and 32, teaches using the common key. Therefore, the common key must have been generated at some point prior to the use of the common key.)
As per claim 7, Kawabata discloses The electronic device according to claim 3, wherein the common key is unique to the electronic device (Kawabata, paragraphs 28 and 32, teaches the “HSM_60 holds the common key for each ECU 30 in advance”, which shows that each ECU has a different common key.)
As per claim 8, Kawabata discloses The electronic device according to claim 3, wherein the storage processing unit stores the code data in the storage unit (Kawabata, paragraphs 28-32, teaches attaching a new electronic signature to the updated firmware to generate re-signed updated firmware and transmitting the re-signed updated firmware to different devices where it is ultimately verified by HSM_60. Therefore, the re-signed updated firmware must be stored at least temporarily.)
As per claim 9, Kawabata discloses The electronic device according to claim 8, wherein the storage processing unit stores the target data in the storage unit (Kawabata, paragraphs 25-26, teaches receiving and verifying the updated firmware. Therefore, the updated firmware must be stored at least temporarily.)
As per claim 10, Kawabata discloses The electronic device according to claim 3, further comprising a communication processing unit that receives the target data from a host device every time the electronic device is activated (Kawabata, paragraphs 24-25, teaches receiving the updated firmware and signature from the management server when the ECU is activated with out of date firmware.)
As per claim 11, Kawabata discloses The electronic device according to claim 10, wherein the communication processing unit receives the code data from the host device every time the electronic device is activated (Kawabata, paragraphs 24-32, teaches receiving the updated firmware and signature from the management server when the ECU is activated with out of date firmware and then receiving the re-signed updated firmware with the new electronic signature after the original electronic signature has been successfully verified.)
As per claim 12, Kawabata discloses The electronic device according to claim 1, inseparably executing processing of the first authenticity determination and processing of generating the code data (Kawabata, paragraphs 18, 25-28, and 32, teaches verifying the original electronic signature of the updated firmware, then re-signing the updated firmware with a new electronic signature, and then verifying the new electronic signature. The new electronic signature is generated only after the original electronic signature is verified.)
As per claim 15, Kawabata discloses The electronic device according to claim 1, further comprising an update determination processing unit that determines whether or not the target data is to be updated, wherein, in a case where the target data is to be updated, the first authenticity determination processing unit performs the first authenticity determination on new, updated target data, and the code data generation unit generates the code data for the new target data (Kawabata, paragraphs 18, 25-28, and 32, teaches verifying the original electronic signature of the updated firmware, then re-signing the updated firmware with a new electronic signature, and then verifying the new electronic signature. As shown in paragraph 25, the original electronic signature and updated firmware are only received when the current firmware is old and needs to be updated.)
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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kawabata.
As per claim 6, Kawabata discloses The electronic device according to claim 5, wherein the key generation unit generates the common key … (Kawabata, paragraphs 28 and 32, teaches using the common key to generate and verify the re-signed updated firmware after the original electronic signature has been verified. Therefore, the common key must have been generated at some point prior to the generation and verification of the new electronic signature of the re-signed updated firmware.)
However, Kawabata does not specifically teach “after performing the first authenticity determination on the target data for a first time”. However, it would have been an obvious design choice to generate the common key after the first electronic signature has been verified, but before the second electronic signature using the common key was generated as the common key is not needed until it is used to generate the second electronic signature for the re-signed updated firmware.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kawabata in view of Kato (US 2013/0091324).
As per claim 13, Kawabata discloses The electronic device according to claim 12, further comprising a storage unit as a … ROM that stores a program related to processing of the first authenticity determination and a program related to processing of generating the code data (Kawabata, paragraphs 27-28, teaches verification part 21 performing the verification of the original electronic signature of the updated firmware and signature part 22 generating the new electronic signature for the re-signed updated firmware. Kawabata, paragraph 15, teaches the storage media being a ROM or RAM. Kawabata, paragraph 41, teaches storing programs on a ROM.)
However, Kawabata does not specifically teach “a mask ROM”.
Kato discloses a mask ROM (Kato, paragraph 20, teaches a mask ROM to store data and programs.)
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined the teachings of Kato with the teachings of Kawabata. Kawabata teaches storing programs in a ROM. Kato teaches storing programs in a mask ROM. Therefore, it would have been obvious for the programs of Kawabata to be stored in a mask ROM as in Kato as this would have been a simple substitution of one known memory format for another to yield the predictable results of storing the program.
As per claim 14, Kawabata in view of Kato discloses The electronic device according to claim 12, further comprising an unalteredness determination processing unit that performs unalteredness determination processing on a program related to processing of the first authenticity determination and a program related to processing of generating the code data (Kawabata, paragraphs 41-44, teaches generating a CMAC of the program and comparing to an expected CMAC to determine if the program has been altered. Kato, paragraph 30, teaches a validity verification program.)
Related Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure includes:
Okana (US 2021/0184844) – teaches encrypting and decrypting data using a common key cryptosystem.
Ito (US 2006/0253714) – teaches using a mask ROM or a flash ROM depending on the needs of the system and manufacturer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN B KING whose telephone number is (571)270-7310. The examiner can normally be reached on Monday-Friday 10AM-6PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yin-Chen Shaw can be reached on 5712728878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John B King/
Primary Examiner, Art Unit 2498
Prosecution Insights