DETAILED ACTION
This office action is responsive to claims 1 – 10 filed in this application Suchy, U.S. Patent Application No. 18/969,805 (Filed December 5, 2024) claiming priority to EP 23215318 (Filed 12/8/2023) (“Suchy”).
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement(s) (IDS) filed on December 5, 2024 is in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609. The references listed therein have been considered, and placed in the application file.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 and 8 - 10 are rejected on the ground of obviousness double patenting as being unpatentable over the combination of claims 1, 10, and 11 of U.S. Patent Application No. 18/969,911. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the Application anticipate the claims of the instant application with the exception of the limitations “wherein the container includes a number of container layers, and wherein the number of container layers includes at least a software application layer with a software application package installable at the platform;” which would be obvious to one having ordinary skill in the art before the effective filing date of the claimed invention in light of the teachings of prior art reference Ayres (see infra) which where the vehicle ECU updates are containers, each of which consist of layers such as the application code, libraries, and configuration information [manifest], which are transmitted to and installed at target ECUs of vehicles. Ayres at pgs. 2 & 7 (§ 4) – 11. One of ordinary skill the art would have been motivated to combine the teachings of the prior art references with the Application for the purpose of using an efficient vehicle ECU update container format for a method that requires updating vehicle ECUs.
Dependent claims 2 – 7 are rejected on the ground of obviousness double patenting as being unpatentable over claim 1 of, respectively, U.S. Patent Application No. 18/969,911. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are obvious in view of the Application and the art used infra to teach the dependent claims and associated motivation.
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 - 10 are rejected under 35 U.S.C. 101 because the claimed inventions are directed to non-statutory subject matter. The claimed inventions do not fall within a statutory category of invention because the claimed invention is directed to a “Mental Processes” abstract idea without significantly more.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a “Mental Processes” abstract idea without significantly more. The claim recites determining the at least one ECU using the platform among the number of ECUs, which covers performance of the limitations that can be performed in the mind or by pen and paper, but for the recitation of generic computer components.
The claims recite additional limitations describing the contents of the update, generic data gathering/transmission, generic computing components, and “initiating installing” which is at best an additional transmission step or a user clicking a button on a user interface and at worst an intended future use of the received container. MPEP 2106.05(g) & 2106.05(d). That is, other than reciting the generic data gathering/transmission and generic computing components nothing in the claim elements precludes the determining and performing steps from being performed in the mind of a developer. MPEP 2106.05(d). As drafted, the claimed process, under its broadest reasonable interpretation, covers the performance of the limitation in the mind but for the recitation of generic computer components, which falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application because the claims only recite generic computing components and routine data transmission. See MPEP 2106.05(d). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the courts have identified mere data gathering, displaying/outputting, transmitting, and storing, are well-understood, routine and conventional activity See MPEP 2106.05(d)(II) & (f).
Claims 2 - 10 contain the same abstract idea as claim 1 and do not contain any additional limitations that would integrate the judicial exception into a practical application or additional elements that are sufficient to amount to significantly more than the judicial exception.
35 USC § 112(f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a control unit”, in claim 8, which includes the generic placeholder “unit” couple to functional language “control.”
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections 35 U.S.C. § 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 of this title, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 – 6 and 8 - 10 are rejected under 35 U.S.C. 103 as being unpatentable over Ye et al., United States Patent Application Publication No. 2017/0060559 (Published April 2, 2017, filed August 25, 2015) (“Ye”) in view of Ayres et al., Applicant Provided Art, NPL reference #2 on IDS 12/5/2024 (Published 2021) (“Ayres”).
Claims 1 and 8 - 10
With respect to claims 1 and 8 - 10, Ye teaches the invention as claimed a method of installing software in a vehicle including a controller and a number of electronic control units (ECUs) of different platforms, the method comprising, at the controller:
receiving a [container] associated with a platform of the different platforms used by at least one electronic control unit (ECU) of the number of ECUs, … determining the at least one ECU using the platform among the number of ECUs; and initiating installing the software application package at the at least one ECU. {Software updates for a plurality of different platform ECUs, each update consisting of a plurality of subsections/partitions, may be transmitted from a manufacturer repository to vehicle telematics control units of target vehicles, where the telematics control units then distributes the updates to target ECUs for validation and subsequent installation. Ye at Abstract; id. at ¶¶ 0005, 0016, 0020, 0025 – 0027, 0030, 0033; id. at fig. 1.}
However, Ye doesn’t explicitly teach the limitation:
wherein the container includes a number of container layers, and wherein the number of container layers includes at least a software application layer with a software application package installable at the platform; {Ayres does teach this limitation. Ayres teaches that updating vehicle ECUs, as taught in Ye, may include where the vehicle ECU updates are containers, each of which consist of layers such as the application code, libraries, and configuration information [manifest], which are transmitted to and installed at target ECUs of vehicles. Ayres at pgs. 2 & 7 (§ 4) – 11.
Ye and Ayres are analogous art because they are from the “same field of endeavor” and are both from the same “problem-solving area.” Specifically, they are both from the field of software deployment, and both are trying to solve the problem of how to transmit the updates.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine updating vehicle ECUs, as taught in Ye, with where the updates are containers with layers, as taught in Ayres. Ayres teaches that using containers with layer boots efficiency as containers can share common layer images. Id. at pgs. 10 - 11. Therefore, one having ordinary skill in the art would have been motivated to combine updating vehicle ECUs, as taught in Ye, with where the updates are containers with layers, as taught in Ayres, for the purpose of using an efficient vehicle ECU update container format for a method that requires updating vehicle ECUs.}
Claim 2
With respect to claim 2, Ye and Ayres teach the invention as claimed including:
wherein: the container layers further include an installation layer with an installation program configured to install the software application package at the at least one ECU, and the method further includes installing, using the installation program, the software application package at the at least one ECU. {The vehicle ECU updates are containers, each of which consist of layers such as the application code, libraries, and configuration information [manifest], which are transmitted to and installed at target ECUs of vehicles. Ayres at pgs. 2 & 7 (§ 4) – 11.}
Claim 3
With respect to claim 3, Ye and Ayres teach the invention as claimed including:
wherein the container layers further include a library layer with a library to run the container and a manifest with configuration information of the container. {The vehicle ECU updates are containers, each of which consist of layers such as the application code, libraries, and configuration information [manifest], which are transmitted to and installed at target ECUs of vehicles. Ayres at pgs. 2 & 7 (§ 4) – 11.}
Claim 4
With respect to claim 4, Ye and Ayres teach the invention as claimed including:
wherein the container is received from a software update repository holding software updates for the number of ECUs or from an original equipment manufacturer of the at least one ECU. {The vehicle ECU updates are containers, each of which consist of layers such as the application code, libraries, and configuration information [manifest], which are transmitted to and installed at target ECUs of vehicles. Ayres at pgs. 2 & 7 (§ 4) – 11; Ye at ¶ 0027 (manufacturer provided updates).}
Claim 5
With respect to claim 5, Ye and Ayres teach the invention as claimed including:
wherein the [container] is received over a communication interface of the vehicle configured for receiving [containerized] software updates for the number of ECUs. {Software updates for a plurality of different platform ECUs, each update consisting of a plurality of subsections/partitions, may be transmitted from a manufacturer repository to vehicle telematics control units of target vehicles, where the telematics control units then distributes the updates to target ECUs for validation and subsequent installation. Ye at Abstract; id. at ¶¶ 0005, 0016, 0020, 0025 – 0027, 0030, 0033; id. at fig. 1.}
container… containerized {The vehicle ECU updates are containers, each of which consist of layers such as the application code, libraries, and configuration information [manifest], which are transmitted to and installed at target ECUs of vehicles. Ayres at pgs. 2 & 7 (§ 4) – 11.}
Claim 6
With respect to claim 6, Ye and Ayres teach the invention as claimed including:
wherein the different platforms include at least one of different hardware platforms, different operating systems, different virtual runtime environments, or different application programming interfaces. {Software updates for a plurality of different platform ECUs, each update consisting of a plurality of subsections/partitions, may be transmitted from a manufacturer repository to vehicle telematics control units of target vehicles, where the telematics control units then distributes the updates to target ECUs for validation and subsequent installation. Ye at Abstract; id. at ¶¶ 0005, 0016, 0020, 0025 – 0027, 0030, 0033; id. at fig. 1.}
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Ayres in view of Ayres and Qureshi et al., United States Patent Application Publication No. 2018/0196741 (Published July 12, 2018, filed March 7, 2018) (“Qureshi”).
Claim 7
With respect to claim 7, Ye and Ayres teach the invention as claimed including:
before installing the software application package at the at least one ECU, performing a test {Software updates for a plurality of different platform ECUs, each update consisting of a plurality of subsections/partitions, may be transmitted from a manufacturer repository to vehicle telematics control units of target vehicles, where the telematics control units then distributes the updates to target ECUs for validation and subsequent installation. Ye at Abstract; id. at ¶¶ 0005, 0016, 0020, 0025 – 0027, 0030, 0033; id. at fig. 1.}
However, Ye and Ayres doesn’t explicitly teach the limitation:
test installation in a virtual system emulating the platform associated with the container; verifying the test installation; and installing the software application package at the at least one ECU if the verification is affirmative. {Qureshi does teach this limitation. Qureshi teaches that testing and installing ECU update containers, as taught in Ye and Ayres, may include where the update container is deployed to the target such that two containers are running on the target, one active and one test where the update is moved into the test container first, tested, and then if it passes the test container is designated as the active container to cause the installation of the update. Qureshi at ¶¶ 0022, 0016, 0017, 0018, 0028; id. at ¶¶ 0024, 0045, 0047, & 0045 (testing via simulation either on the target device or off the target device via a simulation of the target device itself).
Ye, Ayres, and Qureshi are analogous art because they are from the “same field of endeavor” and are both from the same “problem-solving area.” Specifically, they are both from the field of software deployment, and both are trying to solve the problem of how to transmit the updates.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine testing and installing ECU update containers, as taught in Ye and Ayres, with testing the update by simulating, as taught in Qureshi. Ayres teaches that using containers with layer boots efficiency as containers can share common layer images. Id. at pgs. 10 - 11. Therefore, one having ordinary skill in the art would have been motivated to combine testing and installing ECU update containers, as taught in Ye and Ayres, with testing the update by simulating, as taught in Qureshi, for the purpose of using a known container testing system with an update system that requires testing containers.}
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THEODORE E HEBERT whose telephone number is (571)270-1409. The examiner can normally be reached on Monday to Friday 9:00 a.m. to 6:00 p.m..
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//T.H./ September 28, 2026
Examiner, Art Unit 2199
/LEWIS A BULLOCK JR/Supervisory Patent Examiner, Art Unit 2199
