DETAILED ACTION
This action is in response to the application filed on 8/20/2024.
Claims 1-5 are pending in this application.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
As to claim 5, Applicant should please note that "The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. For example, assume a method claim requires step A if a first condition happens and step B if a second condition happens. If the claimed invention may be practiced without either the first or second condition happening, then neither step A or B is required by the broadest reasonable interpretation of the claim. If the claimed invention requires the first condition to occur, then the broadest reasonable interpretation of the claim requires step A. If the claimed invention requires both the first and second conditions to occur, then the broadest reasonable interpretation of the claim requires both steps A and B; See Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016) (precedential) for an analysis of contingent claim limitations in the context of both method claims and system claims. In Schulhauser, both method claims and system claims recited the same contingent step. When analyzing the claimed method as a whole, the PTAB determined that giving the claim its broadest reasonable interpretation, "[i]f the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed" (quotation omitted). Schulhauser at 10. When analyzing the claimed system as a whole, the PTAB determined that "[t]he broadest reasonable interpretation of a system claim having structure that performs a function, which only needs to occur if a condition precedent is met, still requires structure for performing the function should the condition occur." Schulhauser at 14. Therefore "[t]he Examiner did not need to present evidence of the obviousness of the [] method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim (e.g., instances in which the electrocardiac signal data is not within the threshold electrocardiac criteria such that the condition precedent for the determining step and the remaining steps of claim 1 has not been met);" however to render the claimed system obvious, the prior art must teach the structure that performs the function of the contingent step along with the other recited claim limitations. Schulhauser at 9, 14" - see MPEP 2114.04 (II). Therefore, the step of “when the hardware ID does not conform to the software ID for mass-production, further acquiring the software ID for development from the nonvolatile storage device, and collating the hardware ID with the software ID for development,” as recited in claim 5 is a contingent limitation, given its broadest reasonable interpretation, and is not required.
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 1-5 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 at line 12 recites “when the hardware ID does not conform to the software ID for mass-production.” It is unclear as to how the hardware ID would “conform” to the software ID for mass production and has been interpreted as “ when the hardware ID matches the software ID for mass production.” However, appropriate correction is required. Claim 5 has a similar issue.
Claims 2-4 do not overcome the deficiency of the base claims and, therefore, are rejected for the same reasons as the base claims.
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 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The analysis specific to Claim 5 is being presented below. However, the Applicant should please note that the analysis for claim 1 is similar to that of claim 5 and therefore rejected for the same reasons.
Claim 5 recites:
An authentication method executed by a processor of an electronic control device, the electronic control device comprising the processor, a nonvolatile storage device that is electrically data rewritable, and an interface that enables communication with an external data rewriting device, the nonvolatile storage device being set with a hardware ID unique to the electronic control device and a software ID associated with a software program, and the data rewriting device being permitted to rewrite data of the nonvolatile storage device depending on a result of collating the hardware ID with the software ID, the method causing the processor to perform the steps of:
acquiring, from the nonvolatile storage device in which a software ID for development used during development of the electronic control device and a software ID for mass-production used during mass-production of the electronic control device are set as the software ID, the hardware ID, and the software ID for mass-production, and collating the hardware ID with the software ID for mass-production; and
when the hardware ID does not conform to the software ID for mass-production, further acquiring the software ID for development from the nonvolatile storage device, and collating the hardware ID with the software ID for development.
Step 1:
The claim falls within a statutory category of being a method.
Step 2A- Prong 1:
The claim recites the limitations of:
acquiring, from the nonvolatile storage device in which a software ID for development used during development of the electronic control device and a software ID for mass-production used during mass-production of the electronic control device are set as the software ID, the hardware ID, and the software ID for mass-production, and collating the hardware ID with the software ID for mass-production; and
when the hardware ID does not conform to the software ID for mass-production, further acquiring the software ID for development from the nonvolatile storage device, and collating the hardware ID with the software ID for development;
These limitations, as drafted, are processes that, under their broadest reasonable interpretations, cover performance of the limitations in the mind. That is, nothing in the claim elements precludes the step from practically being performed in the mind or with a pen and paper, i.e. “acquiring” and “collating” can be performed in the human mind through observation, evaluation, judgement, opinion with the aid of pen and paper. As such, this limitation fall within the “Mental Processes” grouping of abstract ideas.
Step 2A Prong 2:
The claim recites the additional limitations of “a processor”, “an electronic control device” and “a nonvolatile storage device that is electrically data rewritable, and an interface that enables communication with an external data rewriting device, the data rewriting device being permitted to rewrite data of the nonvolatile storage device depending on a result of collating the hardware ID with the software ID,” which are all recited at a high level of generality, i.e., merely instructions to implement the abstract idea on a generic computer or merely uses a computer as a tool to perform the abstract idea and thus do not integrate the judicial exception into a practical application. Also, the additional elements of “the nonvolatile storage device being set with a hardware ID unique to the electronic control device and a software ID associated with a software program” merely recites insignificant extra solution activity such as storing data, which does not integrate the judicial exception into a practical application. See MPEP 2106.05(d). Accordingly, none of these additional elements integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Step 2B:
As discussed with respect to Step 2A Prong 2, the additional elements of “a processor”, “an electronic control device” and “a nonvolatile storage device that is electrically data rewritable, and an interface that enables communication with an external data rewriting device, the data rewriting device being permitted to rewrite data of the nonvolatile storage device depending on a result of collating the hardware ID with the software ID” merely recites generic computer and computer components, and thus do not amount to significantly more than the judicial exception. In addition, the courts have identified functions such as gathering, transmitting, and receiving data as well-understood, routine, conventional activity, as recited in the limitation “the nonvolatile storage device being set with a hardware ID unique to the electronic control device and a software ID associated with a software program” and thus these limitations do not amount to significantly more than the judicial exception. See MPEP 2106.05(d). Therefore, none of the additional elements recite an inventive concept and the claimed invention is patent ineligible under 35 USC 101.
Additionally claim 2 recites “wherein the hardware ID is set in a region of the nonvolatile storage device that is not rewritable from outside, and the software ID is set in a region of the nonvolatile storage device that is rewritable from outside”, which is insignificant extra solution activity such as storing data and does not integrate the judicial exception into a practical application. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally claim 3 recites “further comprising an interface that enables communication with an external debugging tool for development, wherein the processor collates the hardware ID with an ID input to the debugging tool for development, and permits rewriting of data of the nonvolatile storage device by the debugging tool for development on the basis of a result of the collation.”, wherein “collates …” and “permit …” mental processes (Step 2A prong 1) which can be done by human. Further, “interface” and “debugging tools” are recited at a high level of generality (Step 2A prong 2) does not integrate the judicial exception into a practical application. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 4 recites “wherein the hardware ID is generated using an output result of calculation performed with a predetermined calculation formula using, as an input, first information that is stored in the nonvolatile storage device and is readable from the outside and second information that is stored in the nonvolatile storage device and is unreadable from the outside”, which is an additional mental process, as discussed above, and does not integrate the judicial exception into a practical application. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Takasuna (US Patent Application Publication 2022/0066768 A1) discloses a software update device that is configured to control software update of an electronic control unit mounted on a vehicle. Nakamura et al. (US Patent Application Publication 20180300472 A1) discloses a vehicle data rewrite control device and a data rewrite authentication system which prevent unauthorized rewriting of data due to password leakage and/or by spoofing of a connected device.
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/CHENECA SMITH/Examiner, Art Unit 2192
/S. Sough/SPE, Art Unit 2192
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