DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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.
Claims 1-4, 6-14 and 16-20 and 22-25 are pending, claims 5, 15, and 21 are canceled, claims 1, 7 and 17 have been amended, and claims 23-25 have been newly added.
In light of Applicant’s amendments, the rejection of claims under 35 USC § 101 has been withdrawn.
Response to Arguments
Applicant's amendments/arguments filed on 07-28-2026 have been fully considered.
Applicant argument with respect to the amended limitations of the claim have been fully considered but are moot in view of the new ground(s) of rejection.
Applicant’s argument with respect to rejection of claims under 35 USC §101 have been fully considered and are persuasive. The rejection has been withdrawn.
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 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, 7-9 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Brundridge et al. (US Publication No. 2017/0161471), hereinafter Brundridge, in view of Etchegoyen (US Patent No.8,239,852), hereinafter Etchegoyen, in view of Lai et al. (US Publication No. 2020/0401676), hereinafter Lai, and further in view of Wojcik et al. (US Publication No. 2015/0254072), hereinafter Wojcik.
As per claims 1, 7 and 17, Brundridge discloses, a computer program product comprising a non-transitory computer-readable storage medium storing instructions, which when performed by processing circuitry of a computing system, cause the computing system to conduct a firmware update on an external network management card (NMC) (paragraph [0004] and [0058]) by: transmitting a request for a license to install the firmware update on the NMC from a request device of the computing system to a remote licensing server, the request including an identifier of the NMC (paragraph [0017], [0040]; “the unique ID for the component is sent from the license manager subsystem to a license server to request the license for the components at block 310”); receiving the license by the request device from the licensing server (paragraph [0043], “At block 324, the license is sent to the license manager subsystem”);
verifying, by the installation device, that the license is cryptographically associated with the identifier of the NMC (paragraph[0044], [0046], “a determination is made that the license is bound to the particular component. The component is verified by comparing the unique ID of the component with the unique ID in the license”); and in response to verifying that the license is cryptographically associated with the identifier of the NMC, transmitting the firmware update from the installation device to the NMC (paragraph [0047], “The feature set is sent to the component”).
While Brundridge disclosing verifying that the license is cryptographically associated with the identifier (as shown above), Brundridge does not explicitly disclose, verifying step is in response to a user request to install the firmware update; and decrypting, by executing an NMC firmware update tool on the installation device, an encrypted version of the firmware update to output a decrypted version of the firmware, wherein the NMC firmware update tool is configured to decrypt the encrypted version of the firmware update by using an encryption key stored in a secure memory of the installation device; and transmitting, over a network, the decrypted version of the firmware to the NMC; and causing the NMC to replace the existing firmware stored on the NMC with the decrypted version of the firmware.
However, in an analogous art, Etchegoyen disclose the verifying is in response to user request to install the firmware update (claim 18, “send the unique device identifier and the unique software identifier to an update server… receive, from the update server, the updated program configuration if the user…is entitled to use features of the updated program configuration according to a license associated with the unique software identifier”. Sending the unique device identifier and unique software identifier is a request for the updated program configuration).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Brundridge with Etchegoyen. This would have been obvious because one of ordinary skill in the art would have been motivated to provide updates to a program in response to a request, in order to avoid automatic updates that may consume system resources or interfere with ongoing operations.
Brundridge in view of Echegoyen does not explicitly disclose, decrypting, by executing an NMC firmware update tool on the installation device, an encrypted version of the firmware update to output a decrypted version of the firmware, wherein the NMC firmware update tool is configured to decrypt the encrypted version of the firmware update by using an encryption key stored in a secure memory of the installation device; and transmitting, over a network, the decrypted version of the firmware to the NMC; and causing the NMC to replace the existing firmware stored on the NMC with the decrypted version of the firmware.
However, in an analogous art, Lai discloses, decrypting, by executing an NMC firmware update tool on the installation device, an encrypted version of the firmware update to output a decrypted version of the firmware, wherein the NMC firmware update tool is configured to decrypt the encrypted version of the firmware update ( paragraph [0026], “the encrypted updated file F6 performs decryption by using the second security module”) by using an encryption key stored in a secure memory of the installation device (paragraph [0005], decrypting using private key); and transmitting, over a network, the decrypted version of the firmware to the NMC; (paragraph [0027], “transfers the decrypted updated file to the chip C via the network N for updating”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Brundridge and Echegoyen with Lai. This would have been obvious because one of ordinary skill in the art would have been motivated to protect the software and firmware in the chip from illegal copying or cracking.
Brundridge in view of Echegoyen and Lai does not explicitly disclose, causing the NMC to replace the existing firmware stored on the NMC with the decrypted version of the firmware. However, in an analogous art, Wojcik (paragraph [0025]) discloses flashing the existing media with a new firmware image to replace the existing firmware image, and paragraph [0040]), discloses “The secondary instructions 720, being configured for communication with and data transfer to the peripheral device, require a physical (or at least logical) connection with the peripheral device 640, and when successfully executed cause one of the firmware images 730, 740 to be loaded to peripheral device 640 to be executed by peripheral device 640 instead of firmware previously executed by peripheral device 640”, corresponding to the limitation of replace the existing firmware stored on the NMC with the decrypted version of the firmware.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Brundridge, Echegoyen and Lai with Wojcik. This would have been obvious because one of ordinary skill in the art would have been motivated to do so in order to achieve the predictable result of replacing the existing firmware image with a new firmware.
As per claims 2, 8 and 18, Brundridge furthermore discloses, wherein the installation device is the request device and the NMC is connected to the installation device via a non-public local network (paragraph [0014], figure 1).
As per claims 3, 9 and 19, Brundridge furthermore discloses, wherein the instructions, when executed by the processing circuitry, further cause the request device to: request the identifier from the NMC via the non-public local network and in response, receive the identifier from the NMC via the non-public local network (paragraph [0016], “pursuant to the uniform protocol, the license manager subsystem 116 may send to the component a request for identification and the component may send a response pursuant to the uniform protocol. The response may provide a unique identification (ID) for the component”).
Claims 4, 10, 11, 20 and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Brundridge, Etchegoyen, Lai and Wojcik further in view of Koshi (US Publication No. 2025/0039962).
As per claims 4, 11 and 20, Brundidge further discloses wherein: the installation device connects to the NMC via a non-public local network, and does not connect to any public network (paragraph [0016] and figure 1, license manager subsystem communicated with the component over a uniform device independent protocol). Brundridge as modified does not explicitly disclose the request device is separate from the installation device; and the request device does not connect to the non-public local network. However, in an analogous art, Koshi discloses the request device connects to a public network via which the licensing server is reachable (paragraph [0066], “the internet connection controller 324 establishes connection to the internet 400”); and the request device does not connect to the non-public local network (paragraph [0065], “connection to the license target device is disconnected”) .
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the modified Brundidge with Koshi. This would have been obvious because one of ordinary skill in the art would have been motivated to prevent unauthorized use of control devices through public network.
Brundidge as modified does not explicitly disclose, the request device is separate from the installation device. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to including a separate request device and installation since constructing a formerly integral structure in various elements involves only routine skill in the art.
As per claim 10, Brundridge as modified does not explicitly disclose, but in an analogous art, Koshi discloses wherein the method further comprises: prior to requesting the identifier, disconnecting the request device from all public networks and connecting the request device to the non-public local network; subsequent to receiving the identifier and prior to sending the request, disconnecting the request device from the non-public local network and connecting the request device to a public network via which the licensing server is reachable; and subsequent to receiving the license and prior to receiving the user request, disconnecting the request device from all public networks and connecting the request device to the non-public local network (paragraph [0066]-[0068], “the license management system according to the present embodiment allows the license management server 100 and the mobile terminal 300 to transmit and receive information to and from each other through the Internet 400 unless the mobile terminal 300 and the license target device 200 are connected through NFC. The license management server 100 and the mobile terminal 300 cannot transmit or receive information to or from the license target device 200 through the Internet 400. The mobile terminal 300 can transmit and receive information to and from the license target device 200 through NFC. In this system, the license management server 100 receives issue request information from the mobile terminal 300 through the Internet 400 and issues license information. After the acquisition of the license information from the license management server 100, when the user places the mobile terminal 300 adjacent to the license target device 200, the mobile terminal 300 transmits the license information to the license target device 200 through NFC”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the modified Brundridge with Koshi. This would have been obvious because one of ordinary skill in the art would have been motivated to prevent unauthorized use of control devices through public network.
As per claim 23, 24 and 25, Brundridge furthermore discloses wherein the instructions, when executed by the processing circuitry, further cause: the installation device to connect to the NMC via a non-public local network and not connect to any public network(paragraph [0016] and figure 1, license manager subsystem communicated with the component over a uniform device independent protocol);
Brundridge as modified does not explicitly disclose, but in an analogous art, Kosi discloses
wherein the request device is separate from the installation device, the request device to connect to a public network via which the licensing server is reachable without connection to any non-public local network (Koshi [0066], “the internet connection controller 324 establishes connection to the internet 400”); and the request device does not connect to the non-public local network (paragraph [0065], “connection to the license target device is disconnected”);the request device and the installation device to not connect or communicate directly with one another (paragraph [0097], “The license target device 201 or 202 that has received the license information shares the license information with the other of the license target devices 201 and 202. For example, when the first license target device 201 receives the license information, the first license target device 201 transmits the license information to the second license target device 202 through the closed network 500”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the modified Brundidge with Koshi. This would have been obvious because one of ordinary skill in the art would have been motivated to prevent unauthorized use of control devices through public network.
Claims 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Brundridge, Etchegoyen, Lai and Wojcik further in view of Liu et al (US Publication No. 2024/0111512), hereinafter Liu.
As per claims 6 and 16, Brundridge as modified further discloses, the request device to send a query to a remote versioning server, the query including a globally unique identifier associated with the NMC (Etchegoyen, “send the unique device identifier and the unique software identifier to an update server”). Brundridge as modified does not explicitly disclose, but in an analogous art Liu discloses, the request device to receive, in response to the query, a list of all valid firmware versions for the NMC (paragraph [0074] and figure 4, “the system 102 may transmit a first API request to the one or more web-based sources 104 to retrieve the one or more versions of the first software package. Such versions of the first software package may be stored in a data structure (e.g., a list). The list may include the name of the first software package and the corresponding one or more versions”); and the request device to determine which firmware update to conduct with reference to the list of all valid firmware versions for the NMC (paragraph [0075] and figure 4, “At 408, a version may be selected from the one or more versions of the first software package…the system 102 may select a version of the one or more versions of the first software package from the list. The selection of versions from the list may be an iterative process that may be performed after a set of operations from 410 to 436 is performed for a selected version. For example, another version (i.e., a new version) of the first software package may be selected after the control is transferred back to 408 from 436”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the modified Brundridge with Liu. This would have been obvious because one of ordinary skill in the art would have been motivated to allow a user to determine which firmware version from the multiple available versions is appropriate for installation for a specific component.
Claims 12 -14 are rejected under 35 U.S.C. 103 as being unpatentable over Brundridge, Etchegoyen, Lai, Wojcik further and Koshi, further in view of Chen et al. (US Patent No. 7,552, 341).
As per claim 12, Brundridge discloses, the installation device requesting the identifier from the NMC via the non-public local network; in response, the installation device receiving the identifier from the NMC via the non- public local network (paragraph [0016], “pursuant to the uniform protocol, the license manager subsystem 116 may send to the component a request for identification and the component may send a response pursuant to the uniform protocol. The response may provide a unique identification (ID) for the component”).
Brundridge does not explicitly disclose in response, a user copying the identifier from the installation device to the request device; and subsequent to the request device receiving the license, the user copying the license from the request device to the installation device. However, a user copying the identifier from the installation device to the request device; and subsequent to the request device receiving the license, the user copying the license from the request device to the installation device is old and well known in art of computer security, as illustrated by Chen (column 6, line 65-column 7, line 20, “The user may provide the unique identifier and the product identifier to the activation control system either manually or via a telephone, kiosk, website, or other manual or electronic means. At step 330, the identifier of the computing device and the product identifier are signed with a private key…at the activation control system …. The signed code or data is then provided to the user, either publicly or privately, at step 340. For example, the signed data can be posted on a website, or emailed, phoned, or otherwise provided to the user…. At step 350, the user provides the signed data (e.g., a string of bits) to a computing device…”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the modified Brundridge with Chen. This would have been obvious because one of ordinary skill in the art would have been motivated to implement the well know method of manual user entry or copying of credentials to ensure human oversight and control in handling of sensitive information.
As per claim 13, Chen furthermore discloses wherein the user copying the identifier and the user copying the license are both performed by manually reading and typing (column 6, line 65-column 7, line 20, “The user may provide the unique identifier and the product identifier to the activation control system either manually… the user provides the signed data (e.g., a string of bits) to a computing device”). The motivation is similar to the motivation provided in claim 12.
As per claim 14, Chen furthermore the user copying the identifier includes the user copying the identifier [to a removable storage device and then copying the identifier from the removable storage device] to the request device and the user copying the license includes the user copying the license to [a removable storage device and then copying the license from the removable storage device] the installation device(column 6, line 65-column 7, line 20, “The user may provide the unique identifier and the product identifier to the activation control system either manually or via a telephone, kiosk, website, or other manual or electronic means. At step 330, the identifier of the computing device and the product identifier are signed with a private key…at the activation control system …. The signed code or data is then provided to the user, either publicly or privately, at step 340. For example, the signed data can be posted on a website, or emailed, phoned, or otherwise provided to the user…. At step 350, the user provides the signed data (e.g., a string of bits) to a computing device…”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the modified Brundridge with Chen. This would have been obvious because one of ordinary skill in the art would have been motivated to implement the well know method of manual user entry or copying of credentials to ensure human oversight and control in handling of sensitive information.
Although Nelson does not disclose the identifier and the license are first copied to a removable storage device before being copied from the removable storage device to the request device and installation device, respectively, the concept of storing information in a removable storage device to be copied and communicated later is old and well known and does not require an inventive concept.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to copy the identifier first to a removable storage device and then copying it from the removable storage to request device, and copy the license to a removable storage device and then copying it from the removable storage to installation device. This would have been obvious because one of ordinary skill in the art would have been motivated to do so in order to enable secure and controlled transfer of data between devices that are not directly connected.
References Cited, Not Used
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lin et al. (US Patent No. 10,997,297) discloses, a storage device comprising non-volatile storage and a controller. The non-volatile storage may comprise a firmware image, a known data pattern (KDP) in plaintext, and an encrypted KDP. The controller may be coupled to the non-volatile storage, and may be configured to update the firmware image of the non-volatile storage. For this update, the controller may first receive a symmetric key from a host by way of a public key encryption process. Next, the controller may decrypt the encrypted KDP using the symmetric key. If the decrypted KDP matches the KDP in plaintext, the symmetric key may be validated and the firmware image update may be downloaded. The firmware image update may then replace the firmware image in non-volatile storage.
Nelson et al. (US Patent No. 12,511,353) discloses, an electronic gaming machine ("EGM") includes a processor circuit, a port coupled to the processor circuit, and a memory coupled to the processor circuit. The port is configured to communicatively couple to a license dongle. The license dongle is configured to store a license associated with a game. The license is usable to allow the game to be played on the EGM. The memory includes machine-readable instructions that, when executed by the processor circuit, cause the EGM to perform operations. The operations include providing an identifier of the license dongle to a separate entity. The operations further include, responsive to providing the identifier of the license dongle, receiving an indicator of the license associated with the gan1e. The operations further include initiating the game on the EGM using the license.
Savage (US Patent No. 11,288,341) discloses, a portable information handling system having an NFC device obtains identifier information from information handling systems through NFC and applies the identifier information to obtain license keys for applications stored on the information handling system from a license server through a network interface. NFC transfer of license keys in a secure environment, such as to server information handling system management controller in a data center, provides the convenience of public license servers without the security risk of an open public network access to the management controller.
Ladkani et al. (US Patent No. 11,989,548) discloses, a host computing device includes a host processor, host memory in electronic communication with the host processor, and an auxiliary service controller. The host computing device also includes a communication interface and a messaging interface between the host processor and the auxiliary service controller. A message handler is stored in the host memory. The message handler is executable by the host processor in response to detecting a messaging interface signal on the messaging interface. Execution of the message handler by the host processor causes a firmware update patch to be read from a shared memory region in the auxiliary service controller via the communication interface.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ali Abyaneh whose telephone number is (571) 272-7961. The examiner can normally be reached on Monday-Friday from (8:00-5:00). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Lagor can be reached on (571) 270-5143. can be reached on (571) 272-4063. The fax phone numbers for the organization where this application or proceeding is assigned as (571) 273-8300 Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/ALI S ABYANEH/Primary Examiner, Art Unit 2437
