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 1-22 are pending.
Information Disclosure Statement PTO-1449
The Information Disclosure Statement submitted by applicant on 04-22-2025 and 01-30-2025 have been considered. Please see attached PTO-1449. 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims when analyzed under 2019 Revised Patent Subject Matter Eligibility Guidance, are directed to an abstract idea. Claim 1 for example, recites a computer program product and, therefore passes the first step of Patent subject Matter Eligibility Guidance. Claim 1 recites the limitation of “…sending a request for a license to install the firmware update on the NMC from a request device o… to a remote licensing server…receiving the license by the request device from the licensing server; in response to a user request to install the firmware update on the NMC, verifying, by an installation device of the computing system, that the license is associated with the identifier of the NMC; and
in response to verifying that the license is associated with the identifier of the NMC, sending the firmware update from the installation device to the NMC.…”. These limitations, under broadest reasonable interpretation are directed performance of the limitation in a human mind or by human. That is, nothing in the claim element precludes the steps from practically being performed in the human mind or by human. For example, the claim encompasses a human requesting a license provider for a license for installing a firmware update on a device, receiving the license on a piece of paper, in response to a request from another person to install the firmware update on a device, verifying by a security person the license by determining that the paper license includes a number that matches the identifier of the device, and in response to verifying, providing the update firmware on a disk or on a piece of paper that includes some modified codes that could be manually entered into the device. Thus, the claim recites a mental process when analyzed under step 2A prong 1.
Claim 1 is further analyzed in step 2A prong 2, to evaluate whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by identifying whether there are any additional elements recited in the claim beyond the judicial exception, and evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. However, each of the remaining limitation (“processing circuitry”, “computing system ”) appears to be generic computer components and functions which do not constitute meaningful limitations that would amount to significantly more than the abstract idea. The combination of these additional element is no more than generic computer functions. Thus, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limitations on practicing the abstract idea.
Claim is additionally analyzed under Step 2B to evaluates whether the claim as a whole amount to significantly more than the recited exception, whether any additional element, or combination of additional elements, adds an inventive concept to the claim. When claims evaluated under step 2B, it is no more than what is well-understood, routine, conventional activity in the field. The specification does not provide any indication anything other than a generic computer component. The mere “…sending a request for a license to install the firmware update on the NMC from a request device o… to a remote licensing server…receiving the license by the request device from the licensing server; in response to a user request to install the firmware update on the NMC, verifying, by an installation device of the computing system, that the license is associated with the identifier of the NMC; and
in response to verifying that the license is associated with the identifier of the NMC, sending the firmware update from the installation device to the NMC.…”is a well-understood, routing and conventional function when it is claimed in a merely generic manner as it is here.
Independent claims 7 and 17 include limitations similar to the limitations of claim 1 and are rejected under 35 U.S.C. 101 as being directed to an abstract idea for the same reasons discussed above with respect to claim 1.
In claims 2, 8 and 18, wherein the installation device is the request device and the NMC is connected to the installation device via a non-public local network, is considered as Insignificant extra-solution activity. Insignificant extra-solution activity does not amount to an inventive concept. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose meaningful limits on practicing the abstract idea.
In claims 3, 9 and 19, 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, is considered as Insignificant extra-solution activity of gathering data for use in the claim. Insignificant extra-solution activity does not amount to an inventive concept. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose meaningful limits on practicing the abstract idea.
In claims 4, 11 and 20, the installation device connects to the NMC via a non-public local network; the installation device does not connect to any public network; the request device is separate from the installation device; the request device connects to a public network via which the licensing server is reachable; and the request device does not connect to the non-public local network, is considered as Insignificant extra-solution activity. Insignificant extra-solution activity does not amount to an inventive concept. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose meaningful limits on practicing the abstract idea.
In claims 5, 15 and 21, wherein sending the firmware update from the installation device to the NMC includes: decrypting an encrypted version of the firmware update to yield a decrypted version of the firmware update and sending the decrypted version of the firmware update to the NMC, could be perform in human mind or by human. A human could decrypt and encrypted version and writing the decrypted version on the piece of paper and sending it to another person. Claims do not recite additional element that amounts to significantly more than the judicial exception
In claims 6 and 16, cause: the request device to send a query to a remote versioning server, the query including a globally unique identifier associated with the NMC; the request device to receive, in response to the query, a list of all valid firmware versions for the NMC; and the request device to determine which firmware update to conduct with reference to the list of all valid firmware versions for the NMC, could be perform in human mind or by human. A human could cause/request another person to send a query including a unique identifier associated with a device, receive in response a list on a piece of paper including valid firmware versions and decide which firmware update within the list to select for the device. Claims do not recite additional element that amounts to significantly more than the judicial exception.
In claim 10, 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, could be perform by a human. A human could simply perform the task of connecting to one device, disconnection from the device and connecting to another device. Claim does not recite additional element that amounts to significantly more than the judicial exception.
In claim 12, 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, is considered as Insignificant extra-solution activity of gathering data for use in the claim. Insignificant extra-solution activity does not amount to an inventive concept. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose meaningful limits on practicing abstract idea. Also 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, could be perform by a human. A human could simply perform the task of copying form one device to another device to one device. Claim does not recite additional element that amounts to significantly more than the judicial exception.
In claim 13, wherein the user copying the identifier and the user copying the license are both performed by manually reading and typing, could be perform by a human. A human could simply perform the task of manually reading and typing. Claim does not recite additional element that amounts to significantly more than the judicial exception.
In claim 14, 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 to the installation device, could be perform by a human. A human could simply perform 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 to the installation device. . Claim does not recite additional element that amounts to significantly more than the judicial exception.
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.
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:
sending 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 an installation device of the computing system, that the license is 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 associated with the identifier of the NMC, sending 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 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. 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.
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 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Brundridge and Etchegoyen, 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 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.
Claims 5, 15 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Brundridge and Etchegoyen, further in view of Wysocki et ai (US Publication No. 2017/0142079).
As per claims 5, 15 and 21, Brundridge as modified does not explicitly disclose, but in an analogous art Wysocki discloses, wherein sending the firmware update from the installation device to the NMC includes: decrypting an encrypted version of the firmware update to yield a decrypted version of the firmware update and sending the decrypted version of the firmware update to the NMC (claim 1, “receiving the updated version of the software module from the server device, wherein the updated version of the software module is encrypted by a unique encryption key that is associated with the electronic device, decrypting the updated version of the software module to form an unencrypted updated version of the software module, and causing the unencrypted updated version of the software module to be installed at the electronic 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 Wysocki. This would have been obvious because one of ordinary skill in the art would have been motivated to update software in a secure and controlled manner using cryptography.
Claims 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Brundridge and Etchegoyen, further in view of Liu et al (US Publication No. 2024/0111512).
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 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.
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
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).
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, Alexander Lagor can be reached on (571) 270-5143. The fax phone numbers for the organization where this application or proceeding is assigned as (571) 273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALI S ABYANEH/Primary Examiner, Art Unit 2437
Prosecution Insights