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 .
DETAILED ACTION
This office action is in response to the communication filed on 11/10/2025.
The amendment filed 11/10/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The amendment adds language that the threshold recommendation engine [can be] located remotely on the Internet. This language is not supported by the original specification and as such the amendment is not permitted.
Response to Arguments
Applicant's arguments filed 11/10/2025 have been fully considered but they are not persuasive.
The applicants argue that paragraph 027 of the original specification supports the contested language of “a DDoS threshold recommendation engine located on the Internet remotely from a first network”. The examiner respectfully disagrees. Paragraph 027 is reproduced below with highlights of the relevant sections.
“[0027] A DDoS threshold recommendation engine 105 can provide network support to each of the DDoS attack mitigation appliances. In one implementation, residence on the protected network provides direct communication with network devices. In another implementation on the Internet, cloud-based support gathers experience from across many different protected networks. Rates are sent from 402,404 and thresholds are returned to 402,404.”
First, the above highlighted sentence does not indicate what is implemented on the Internet. For example, this language might imply that the DDoS threshold recommendation engine is implemented on the Internet, or it might imply that the DDoS attack mitigation appliances are implanted on the Internet. Because the language is vague, we cannot determine what is meant by the language, and therefore there is no support for specific language regarding what is implemented on the Internet.
Second, the above highlighted sentence does not indicate anything being “located on the Internet…”. Rather, being “implemented on the Internet” would include operation requiring transmission over the Internet. This is not the same as being “located on the Internet”. Because the language is vague, we cannot determine what is meant by the language, and therefore there is no support for specific language regarding what is implemented on the Internet.
That a person having ordinary skill in the art might realize from reading the disclosure that such a configuration is possible is not a sufficient indication to that person that the configuration is part of applicants’ invention. Such an indication is the least that is required for a description of the invention under §112(a). See In re Smythe, 480 F.2d 1376, 178 USPQ 279 (CCPA 1973). Claims added by amendment and drawn to an invention not so described in the specification are drawn to "new matter" and prohibited by §132. (See also for quote: In re Barker and Pehl, 194 USPQ 470 (CCPA 1977).)
The prevailing issue in this case appears to be regarding the addition by amendment of the limitations consisting of “a DDoS threshold recommendation engine located on the Internet remotely from a first network”. While there is no in haec verba requirement, newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure. The trouble is that there is no such disclosure, easy though it is to imagine it. Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1328, 56 USPQ2d 1481, 1487 (Fed. Cir. 2000). The Examiner does not question whether the claim language is inconsistent with, or contradictory to, the teachings of the specification. But, the Examiner believes that the specification does not clearly and concisely disclose to the skilled artisan that the inventors considered this particular configuration claimed, i.e., the DDoS recommendation engine being located on the Internet, to be part of their originally filed invention. There is therefore no force to the applicants’ or affiant’s arguments that the written description requirement was satisfied because the disclosure revealed a broad invention from which the later-filed claims carved out a patentable portion.
In response to the applicants' argument regarding " receiving…a plurality of traffic rate parameters from each of a plurality of DDoS attack mitigation appliances that share total traffic from a plurality of networks including the first network ", that support can be found in paragraph 027’s language “rates are sent from 402,404 and thresholds are returned to 402, 404”, the examiner points out that this does not appear to show support for the specific language being claimed. If the applicants insist that this line provides proper support for the contested language, the examiner requests the applicants to provide a proper explanation how each and every portion of the contested language specifically can be mapped to supposed portion of paragraph 027.
In response to the applicants' argument regarding " combining rates, from a history of the plurality of networks, …", that support can be found in paragraph 009’s language “rates of individual types of traffic parameters from the plurality of traffic rate parameters are combined”, the examiner points out that this does not appear to show support for the specific language being claimed. If the applicants insist that this line provides proper support for the contested language, the examiner requests the applicants to provide a proper explanation how each and every portion of the contested language specifically can be mapped to supposed portion of paragraph 009. Where is there support for “a history of the plurality of networks”?
In response to the applicants' argument regarding "multiplying the combined rates by a rate multiplier", the examiner points out that the specification never states what is multiplied by the rate multiplier. It could be the individual rates, it could be the combined rates, it could be anything. Original claim 8 (as well as all the original claims) stated "multiplying by a rate multiplier", but did not indicate what is multiplied. As such, the applicant’s argument is not persuasive. Further, the cited portion of paragraph 009, as pointed to by the applicants, further illustrates this issue as the language cited by the applicants does not state what is being multiplied by a rate multiplier.
The issue with the above limitation, as well as the newly addressed limitations discussed below is that the instant specification is vague and not specific in its description. This leads to ambiguity as to what exactly the applicants were in possession of and considered their invention at the time of filing. Thus, when limitations are added to the claims which are not directly supported, it is not clear whether the applicants actually possessed or considered these limitations to be their invention at the time of filing. As discussed below, adding these unsupported details to the claims is not permitted. The examiner suggests that the applicants carefully review the claims and amend them to ensure that each and every detail that is being claimed is explicitly supported by the specification, as well as every combination of these details is also supported. This will ensure that prosecution can move forward past these issues. The examiner will not allow language that is not supported by the specification to be patented.
The examiner notes that paragraph 0019 of the instant specification still lacks a terminating period.
When a specification is vague, it becomes unclear what the specification is actually disclosing, which raises questions as to what the applicants actually possessed at the time filing.
As such, the examiner does not find the arguments persuasive and has maintained the objection to the specification and rejection of the claims, as shown below.
Applicant is required to cancel the new matter, in both the specification as well as the claims, in the reply to this Office Action.
Claims 1, 11, and 12 have been examined.
Information Disclosure Statement
The applicants are reminded of their duty of disclosure under 37 CFR 1.56.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The claims have been amended to recite “a DDoS threshold recommendation engine located on the Internet remotely from a first network”. The applicants have not pointed to any particular section of the specification as providing support for this limitation. The examiner has looked to the specification and is unable to find such support. Rather, the specification seems to support the DDoS threshold recommendation engine “facing the Internet”. Paragraph 0027 of the instant specification is the only mention of something being “on the Internet” but only implies that “cloud-based support” is “on the Internet”. Further, the instant specification never mentions anything being remote from another network (or remote from anything as the word “remote” or “remotely” do not appear in the instant specification). As such, the specification is objected to for failing to provide proper antecedent basis for the claimed subject matter.
The claims have been amended to recite “receiving…a plurality of traffic rate parameters from each of a plurality of DDoS attack mitigation appliances that share total traffic from a plurality of networks including the first network”. The applicants have not pointed to any particular section of the specification as providing support for this limitation. The examiner has looked to the specification and is unable to find such support. As such, the specification is objected to for failing to provide proper antecedent basis for the claimed subject matter.
The claims have been amended to recite “combining rates, from a history of the plurality of networks, …”. The applicants have not pointed to any particular section of the specification as providing support for this limitation. The examiner has looked to the specification and is unable to find such support. As such, the specification is objected to for failing to provide proper antecedent basis for the claimed subject matter.
The claims have been amended to recite “multiplying the combined rates by a rate multiplier”. The applicants have not pointed to any particular section of the specification as providing support for this limitation. The examiner has looked to the specification and is unable to find such support. As such, the specification is objected to for failing to provide proper antecedent basis for the claimed subject matter.
Paragraph 0019 of the instant specification lacks a terminating period.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 11, and 12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claims have been amended to recite “a DDoS threshold recommendation engine located on the Internet remotely from a first network”. The applicants have not pointed to any particular section of the specification as providing support for this limitation. The examiner has looked to the specification and is unable to find such support. Rather, the specification seems to support the DDoS threshold recommendation engine “facing the Internet”. Paragraph 0027 of the instant specification is the only mention of something being “on the Internet” but only implies that “cloud-based support” is “on the Internet”. Further, the instant specification never mentions anything being remote from another network (or remote from anything as the word “remote” or “remotely” do not appear in the instant specification). As such, the person having ordinary skill in the art would be unable to ascertain whether, at the time the application was filed, were in possession of the claimed invention. Therefore, the claims are rejected for failing to meet the written description requirement of 35 USC 112(a).
The claims have been amended to recite “receiving…a plurality of traffic rate parameters from each of a plurality of DDoS attack mitigation appliances that share total traffic from a plurality of networks including the first network”. The applicants have not pointed to any particular section of the specification as providing support for this limitation. The examiner has looked to the specification and is unable to find such support. As such, the person having ordinary skill in the art would be unable to ascertain whether, at the time the application was filed, were in possession of the claimed invention. Therefore, the claims are rejected for failing to meet the written description requirement of 35 USC 112(a).
The claims have been amended to recite “combining rates, from a history of the plurality of networks, …”. The applicants have not pointed to any particular section of the specification as providing support for this limitation. The examiner has looked to the specification and is unable to find such support. As such, the person having ordinary skill in the art would be unable to ascertain whether, at the time the application was filed, were in possession of the claimed invention. Therefore, the claims are rejected for failing to meet the written description requirement of 35 USC 112(a).
The claims continue to recite “multiplying the combined rates by a rate multiplier”. The applicants have not pointed to any particular section of the specification as providing support for this limitation. The examiner has looked to the specification and is unable to find such support. As such, the person having ordinary skill in the art would be unable to ascertain whether, at the time the application was filed, were in possession of the claimed invention. Therefore, the claims are rejected for failing to meet the written description requirement of 35 USC 112(a).
That a person having ordinary skill in the art might realize from reading the disclosure that such a step or configuration is possible is not a sufficient indication to that person that the step or configuration is part of applicants’ invention. Such an indication is the least that is required for a description of the invention under §112(a). See In re Smythe, 480 F.2d 1376, 178 USPQ 279 (CCPA 1973). Claims added by amendment and drawn to an invention not so described in the specification are drawn to "new matter" and prohibited by §132. (See also for quote: In re Barker and Pehl, 194 USPQ 470 (CCPA 1977).)
The prevailing issue in this case appears to be regarding the addition by amendment of the claim limitations which are reciting limitations which are not expressly disclosed and are not inherent or sufficiently implied in the disclosure. While there is no in haec verba requirement, newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure. The trouble is that there is no such disclosure, easy though it is to imagine it. Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1328, 56 USPQ2d 1481, 1487 (Fed. Cir. 2000). The Examiner does not question whether the claim language is inconsistent with, or contradictory to, the teachings of the specification. But, the Examiner believes that the specification does not clearly and concisely disclose to the skilled artisan that the inventors considered this particular threshold recommendation system as claimed, i.e., see the above unsupported limitations, to be part of their originally filed invention. The lack of mentioning these specific details in the specification shows that there is not sufficient support for claiming these specific details. There is therefore no force to the applicants’ or affiant’s arguments that the written description requirement was satisfied because the disclosure revealed a broad invention from which the later-filed claims attempted to carved out a patentable portion.
Conclusion
Claims 1, 11, and 12 have been rejected.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2016/0337204 taught that network traffic analysis can be performed by a cloud based server.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW T HENNING whose telephone number is (571)272-3790. The examiner can normally be reached Monday-Friday 9AM-3PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Korzuch can be reached at (571)272-7589. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW T HENNING/ Primary Examiner, Art Unit 2491