DETAILED ACTION
Amendments and remarks submitted on May 21, 2026 for Application No. 18/714744 are 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.
Response to Arguments
Applicant’s arguments filed May 21, 2026 have been considered but they are not persuasive. In the remarks applicant argues:
I) On page 6, Applicant argues that the 35 USC 112(f) interpretation and the corresponding 35 USC 112(b) rejection should be withdrawn.
Applicant’s amendments have removed the potential 35 USC 112(f) interpretation; therefore, the 35 USC 112(f) interpretation and the corresponding 35 USC 112(b) have been withdrawn.
II) On pages 6-9, Applicant argues that the 35 USC 101 rejection should be withdrawn.
Applicant has argued that the invention is an improvement. This is also shown in the written description paragraphs 4-5. Applicant’s amendments and remarks are considered persuasive; therefore, the 35 USC 101 rejection has been withdrawn.
III) On pages 9-12, Applicant argues that the cited prior art does not teach the claim limitations of “performing a first authenticity determination that performs, on target data, first authenticity determination with a public key cryptosystem; performing code data generation that generates code data based on the target data determined to be authentic in the first authenticity determination, the code data being generated using a common key cryptosystem and being usable for a subsequent authenticity determination of the target data; and performing a second authenticity determination that performs second authenticity determination on the target data by using the code data”.
The Examiner disagrees and in no way concedes nor subscribes to Applicant's summarization or distillation of the art of record. It has been held "All of the disclosures in a reference must be evaluated for what they fairly teach one of ordinary skill in the art." In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968).
Kawabata, paragraphs 18 and 25-28, teaches transmitting the updated firmware (target data) and an electronic signature from the management server to the gateway ECU. The gateway ECU then sends the updated firmware and the electronic signature to the key management device. Then the key management device uses a verification key (defined as a public key in paragraph 18) to verify the electronic signature of updated firmware (target data). Therefore, Kawabata teaches performing a first authenticity determination on the updated firmware (target data) using the verification key (public key).
Kawabata, paragraph 28, teaches that after the first authenticity verification the key management device attaches a new electronic signature (code data) to the updated firmware using a common key to generate re-signed updated firmware. This new electronic signature (code data) will later be used to perform an additional signature verification (as shown in Kawabata paragraph 32). Therefore, Kawabata teaches generating a new electronic signature (code data) for the updated firmware (target data) that will later be used “for a subsequent authenticity determination of the target data”.
Kawabata, paragraphs 28-32, teaches the key management device then transmits the re-signed updated firmware to the gateway ECU 10 when then sends the re-signed updated firmware to ECU 30. Next, components of ECU 30 verify the new electronic signature of the re-signed updated firmware using the common key. Therefore, Kawabata teaches a second authenticity determination of the updated firmware (target data) using the new electronic signature (code data).
The Examiner would note that the messages containing the original signed updated firmware and the re-signed updated firmware may be different as the messages being sent to different devices, but the electronic signature and the new electronic signature are both being used to verify that the updated firmware has not been modified.
Therefore, Kawabata does teach the claim limitation in question. It has been held that a publication is good for all it teaches to persons of ordinary skill in the art. In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992). A reference is good for all it teaches. In re Meinhardt, 392 F.2d 273, 280 (CCPA 1968). Finally, it is well established that a reference is good for all it fairly teaches a person having ordinary skill in the art, even when the teaching is a cursory mention. E.g., In re Mills, 470 F.2d 649, 651 (CCPA 1972).
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 2, 15, and 17 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 2 recites “first authenticity determination”; however, it is unclear if this is referring to the same first authenticity determination as in claim 1 or a different authenticity determination. Claim 2 later recites “the first authenticity determination”; however, it is unclear if this is referring to the first authenticity determination of claim 1 or the other first authenticity determination of claim 2. The Examiner would recommend amending “performing first authenticity determination” to “performing the first authenticity determination” if the first authenticity determination of claim 2 is the same first authenticity determination as in claim 1.
Claim 15 recites “performing the first authenticity determination performs”; however, it is unclear what this limitation is intended to mean.
Claim 17 recites “the program being executable by a processor to perform operations …”; however, it is unclear if the program, and therefore, the operations, are actually executed/performed or not.
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 § 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 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawabata (EP 3319266).
As per claims 1 and 16-17, Kawabata discloses An electronic device comprising:
a memory storing a program, and at least one processor configured to execute the program to perform operations (Kawabata, paragraphs 18, 25-28, 31-32, and 72 teaches the steps being performed by a processor executing instructions stored on a memory.) comprising:
performing a first authenticity determination 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).);
performing code data generation that generates code data based on the target data determined to be authentic in the first authenticity determination, the code data being generated using a common key cryptosystem and being usable for a subsequent authenticity determination of the target data (Kawabata, paragraph 28, teaches attaching a new electronic signature to the updated firmware using a common key to generate re-signed updated firmware. The new electronic signature is later used to verify the updated firmware a second time as shown in Kawabata paragraph 32)
performing a second authenticity determination 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.)
Claim 17 recites the additional limitations of “A non-transitory computer readable medium storing a program, the program being executable by a processor to perform operations comprising …” (Kawabata, paragraph 72, teaches a medium storing instructions to be executed by a processor.)
As per claim 2, Kawabata discloses The electronic device according to claim 1, wherein the operations further comprise: performing first authenticity determination at a time before the code data for the target data is generated, and omitting performance of the first authenticity determination but performing 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, wherein the operations further comprise: storing, in a storage memory, 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, wherein the operations further comprise: receiving 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, wherein the operations further comprise: generating 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 operations further comprise: storing the code data in the storage memory (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 operations further comprise: storing the target data in the storage memory (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, wherein the operations further comprise: receiving 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 operations further comprise: receiving 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, wherein the operations further comprise: 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, wherein the operations further comprise: determining whether or not the target data is to be updated; and in a case where the target data is to be updated, performing the first authenticity determination performs the first authenticity determination on new, updated target data; and generating 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 common key is generated … (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, wherein the memory is a … ROM and the program includes a first program related to processing of the first authenticity determination and a second 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, wherein the operations further comprise: performing unalteredness determination processing on a first program related to processing of the first authenticity determination and a second 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
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to 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