Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
The response filed 2/24/2026 was received and considered.
Claims 1-5, 8-12 and 14-20 are pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/24/2026 has been entered.
Response to Arguments
Applicant's arguments filed 2/24/2026 have been fully considered but they are not persuasive.
Applicant’s remarks (p. 7, regarding rejections under 35 U.S.C. §103) asserts that the Office has not cited documentation for encryption at a field level. The Examiner notes the claimed encryption granularity is recited in alternative form in, for example, claims 11 and 20. Regarding claim 1, Cui teaches that it was known to encrypt data at the level of an individual field (¶27), enabling individual encryption of fields with different algorithms (¶28). It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Chen such that the encryption/decryption layer for encryption of data configurable for field level encryption to enable individual fields to be encrypted separately, as taught by Cui.
Applicant’s remarks (p. 7, regarding rejections under 35 U.S.C. §103) asserts that Chen lacks “any associated encryption algorithm based on said “level”, and that Chen, in view of Jaber does not “provide any association between data “level” and the determined/used encryption algorithm”. However, the claim 1 does not recite “associated encryption algorithm based on said “level””. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Regarding claims 9-10 and 14, Jaber teaches a database storage system (¶30) selecting an encryption algorithm from multiple algorithms (¶76) for secure, persistent data storage. In combination with Chen’s teaching of multiple levels/granularities of data encryption (further in view of Cui), the Examiner respectfully submits that the prior art teaches determine any associated encryption of the identified documents at a field level, document level, or chunk level, based on a plurality of configurable properties (Chen discloses logic to determine any encryption of the identified documents at a field level, document level (content may be in document form, col. 4, lines 27-29) or chunk (document can refer to a combination of files, col. 4, lines 36-43) level (results are returned, client is configured to utilize a decryption key to decrypt content, col. 20, lines 3-9, col. 20, lines 56-65) for enabling decryption at the client); and an encryption/decryption layer for selective, associated encryption of the data configurable for the field level, the document level, and the chunk level encryption (Chen teaches encrypted custom content, col. 10, lines 62-65, col. 14, lines 51-54 and col. 18, lines 44-50).
Applicant’s remarks (pp. 7-8, regarding rejections under 35 U.S.C. §103) asserts that “Chen and Jacob are silent as to the associated configurations of encryption based on each application level, which considers the type of data and speed, as currently claimed”. The Examiner assumes Applicant is referring to Chen and Jaber. However, “based on each application level” is not recited in the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The Examiner respectfully maintains that Chen’s teaching of encryption of data, at multiple potential granularities, in combination with Cui (field or record-level encryption, identifiable based on a flag, ¶¶27-28) teaches the claimed encryption/decryption layer commensurate with the scope of the claims.
Applicant’s remarks (p. 9) argues that Chen fails to teach an index that takes a snapshot, arguing that snapshots are known in the art, providing articles from the art (remarks, p. 9; “Continuously updating an index (alleged snapshot as claimed), as suggested by the Office would undermine the key concept of a snapshot's functionality. Thus, as currently alleged and interpreted by the Office, the "snapshot" of Chen defeats the purpose of understood "snapshots" in a database to one of ordinary skill in the art”). The Examiner cites Olsen, which in an analogous art (information search and retrieval), teaches a system generating indexes for searching data (database, ¶3, ¶28; index can be an inverted index, ¶39), where the system periodically makes index snapshots of the content present in the system at that time of the snapshot, serves queries based on the content of an index, indexer starts computing a new index based on more recent content that has been added to the system since the last indexing and the search application now starts serving new search queries from the new index (¶28). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to further modify Chen such that the index takes periodic snapshots of the current data stored in the database to enable searching on an updated database, as taught by Olsen.
Applicant’s remarks (p. 10, regarding rejections under nonstatutory double patenting) note that Applicant will address the rejection at the time of allowed claims. Applicant’s remarks are noted.
Claim Interpretation
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: “encryption/decryption layer for selective…” (claim 1, line 17).
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 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 1-5 and 8-10 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.
Regarding claim 1, the limitation “based on a plurality of configurable properties of the identified documents” (association of encryption at a particular level based on configurable document-specific properties) was not described in the original specification. Claims 2-5 and 8-10 inherit the deficiency.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 and 8-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitation “encryption/decryption layer for selective…” (claim 1, line 17) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification discloses an encryption /decryption layer at p. 2, but does not describe a corresponding structure, material or act such that the function is clearly linked, as required by pre-AIA 35 U.S.C. 112, sixth paragraph. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-2 and 4-5 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US 8,442,994 B1 to Chen et al. (Chen) in view of US 2008/0077806 A1 to Cui et al. (Cui), US 2007/0255698 A1 to Kaminaga et al. (Kaminaga) and US 2006/0282660 A1 to Varghese et al. (Varghese).
Regarding claim 1, Chen discloses system for secured searching, the system comprising: a user interface (web server interacting with web browser, col. 10, lines 32-35, col. 17, lines 35-42); a web layer configured for executing application logic and configured for interacting with a user via the user interface (content searching system interacting with user web browser, col. 10, lines 32-35, col. 17, lines 35-42), the web layer configured to perform user authentication (col. 17, lines 35-39, col. 18, lines 8-10); and a database layer in communication with and accessible by the web layer (database storing encrypted content, including encrypted content, col. 6, lines 48-51, accessible to the user via the browser, col. 10, lines 30-35), the database layer comprising: a database configured for storing data (storing encrypted content, including encrypted content, col. 6, lines 48-51); an index comprising impressions of searchable data contained in the database (index stores terms associated with a list of documents, col. 7, lines 8-11); a search engine configured for searching the index based on a search query (content searching system, col. 10, lines 50-58, where a user provides query to the search engine, col. 18, lines 28-46; query is matched against index, col. 9, lines 42-49 and col. 12, lines 58-90) and configured to return information to identify corresponding documents in the database (col. 12, lines 58-66) and to determine an associated encryption of the identified documents at a field level, document level (content may be in document form, col. 4, lines 27-29) or chunk (document can refer to a combination of files, col. 4, lines 36-43) level (results are returned, client is configured to utilize a decryption key to decrypt content, col. 20, lines 3-9, col. 20, lines 56-65), based on a plurality of configurable properties of the identified documents (custom content metadata may also include identifiers that identify the encryption scheme used to encrypt corresponding custom content, col. 15, lines 43-45); and an encryption/decryption layer for selective, associated encryption of the data configurable for the document level (content may be in document form, col. 4, lines 27-29), and the chunk (document can refer to a combination of files, col. 4, lines 36-43) level encryption (documents may include information within the document, alongside the document, or outside the document, information expresses directly or indirectly the security level of portions of a document; security level of the information determines the encryption key used to encrypt the information in the posting list, ¶28). Chen lacks the encryption/decryption layer for encryption of data configurable for field level encryption. However, Cui teaches that it was known to encrypt data at the level of an individual field (¶27), enabling individual encryption of fields with different algorithms (¶28). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Chen such that the encryption/decryption layer for encryption of data configurable for field level encryption. One of ordinary skill in the art would have been motivated to perform such a modification to enable individual fields to be encrypted separately, as taught by Cui. Chen lacks the index being encrypted when stored at rest in the database. However, Kaminaga, in an analogous art (query processing against an index, ¶3), teaches an index encrypted when stored at rest in a database (index data resides on persistent storage in encrypted form, ¶23) and teaches decryption of the index (¶34), the search engine evaluating the query against the index (¶34) to secure the database against unauthorized document recreation (¶10). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Chen such that the index is encrypted when stored at rest in the database. One of ordinary skill in the art would have been motivated to perform such a modification to secure the database against unauthorized document recreation, as taught by Kaminaga. As modified, Chen lacks wherein the application logic calculates a score correlating to a determined likelihood of fraud in progress. However, Varghese teaches that it was known in a service-provide application (online store, banking, etc.) to include functionality (as part of basic authentication services, ¶83) to calculate a fraud score indicating the likelihood that a current request is fraudulent (for example, based on a user’s location, or historical patterns of access, ¶88) to authenticate the request (¶88). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to further modify Chen such that the application logic calculates a score correlating to a determined likelihood of fraud in progress. One of ordinary skill in the art would have been motivated to perform such a modification to protect the content searching system from malicious intent and to assist in authenticating the user, as taught by Varghese.
Regarding claim 2, Chen discloses wherein the impressions of searchable data in the index is updated (content is obtained, col. 15, line 24-26, lines 46-50 and indexed, col. 16, lines 57-66).
Regarding claim 4, Chen discloses wherein the database layer further comprises a document authorization layer for controlling data access based on user credentials (access control data, col. 17, lines 54-57 and co. 18, lines 8-10, associating authorized users with data accessible by each user, col. 18, lines 13-16).
Regarding claim 5, Chen discloses wherein the document authorization layer allows a user to view a selected portion of the data on the database (access control data, col. 17, lines 54-57 and co. 18, lines 8-10, associating authorized users with data accessible by each user, col. 18, lines 13-16).
Claim 3 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Chen, Cui, Kaminaga and Varghese, as applied to claims 2 and 15, in view of US 2005/0154886 A1 to Birk et al. (Birk).
Regarding claim 3, Chen, as modified, lacks wherein communication to and from the database from and to the index is controlled by secure socket layer certificate authorization. However, Birk teaches that it was known for communication between two servers to be controlled by two-way secure socket layer certificate authentication over a computer network to establish a trust relationship between them (¶37). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to further modify Chen such that communication to and from the database from and to the index is controlled by secure socket layer certificate authorization. One of ordinary skill in the art would have been motivated to perform such a modification to establish a trusted secure channel between the network elements, as taught by Birk.
Claim 8 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Chen, Cui, Kaminaga and Varghese, as applied to claim 1, in view of US 2002/0019934 A1 to Ishizaki.
Regarding claim 8, Chen, as modified, lacks wherein the encryption /decryption layer is further configured for selective compression/decompression of the data. However, Ishizaki, in an analogous art (storage of secure information for retrieval, Fig. 14), teaches that it was known to store information in a database (¶134) in encrypted (¶172, Fig. 12) and compressed (¶146) form, where the encrypted and compressed data is searched using stored reciprocal relationships and decrypted (¶172-173) and decompressed (¶164) to access the data. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to further modify Chen such that the encryption /decryption layer is further configured for selective compression/decompression of the data. One of ordinary skill in the art would have been motivated to perform such a modification to secure the data and optimize storage use at the database itself, as taught by Ishizaki. 1
Claims 9-10 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Chen, Cui, Kaminaga and Varghese, as applied to claims 1 and 11, in view of Jaber.
Regarding claims 9-10, Chen, as modified, lacks wherein the encryption/decryption layer comprises a plurality of selective encryption algorithms for encrypting the data. However, Jaber teaches a database storage system (¶30) selecting an encryption algorithm from multiple algorithms (¶76) for secure, persistent data storage. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to further modify Chen such that the encryption/decryption layer comprises a plurality of selective encryption algorithms for encrypting the data. One of ordinary skill in the art would have been motivated to perform such a modification to support multiple encryption algorithms, as taught by Jaber.
Claims 11-12, 14-15 and 18-19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Chen, Kaminaga, Varghese, Jaber and Ishizaki.
Regarding claim 11, Chen discloses a system for secured searching, the system comprising: a user interface (web server interacting with web browser, col. 10, lines 32-35, col. 17, lines 35-42); a web layer configured for executing application logic and configured for interacting with a user via the user interface (content searching system interacting with user web browser, col. 10, lines 32-35, col. 17, lines 35-42); and a search engine configured for searching the database (content searching system, col. 10, lines 50-58, where a user provides query to the search engine, col. 18, lines 28-46; query is matched against index, col. 9, lines 42-49 and col. 12, lines 58-90); a database layer in communication with and accessible by the web layer (database storing encrypted content, including encrypted content, col. 6, lines 48-51, accessible to the user via the browser, col. 10, lines 30-35), the database layer comprising: a database configured for storing data, including documents (storing encrypted content, including encrypted content, col. 6, lines 48-51), the documents being encrypted when stored at rest in the database (encrypted content, col. 6, lines 48-51) ; an index comprising impressions of searchable data contained in the database (index stores terms associated with a list of documents, col. 7, lines 8-11); and an encryption/decryption layer for selective encryption of the data (encrypted custom content, col. 10, lines 62-65, col. 14, lines 51-54 and col. 18, lines 44-50) and configurable for field level, document level, and/or chunk level encryption (Chen stores the documents in an encrypted form, col. 6, lines 48-51; see also col. 5, lines 18-20) based on results from a search of the index using a search query (results are returned, client is configured to utilize a decryption key to decrypt content, col. 20, lines 3-9, col. 20, lines 56-65). Chen lacks the index being encrypted when stored at rest in the database. However, Kaminaga, in an analogous art (query processing against an index, ¶3), teaches an index encrypted when stored at rest in a database (index data resides on persistent storage in encrypted form, ¶23) and teaches decryption of the index (¶34), the search engine evaluating the query against the index (¶34) to secure the database against unauthorized document recreation (¶10). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Chen such that the index is encrypted when stored at rest in the database. One of ordinary skill in the art would have been motivated to perform such a modification to secure the database against unauthorized document recreation, as taught by Kaminaga. Chen lacks wherein the application logic calculates a score correlating to a determined likelihood of fraud in progress. However, Varghese teaches that it was known in a service-provide application (online store, banking, etc.) to include functionality (as part of basic authentication services, ¶83) to calculate a fraud score indicating the likelihood that a current request is fraudulent (for example, based on a user’s location, or historical patterns of access, ¶88) to authenticate the request (¶88). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to further modify Chen such that the application logic calculates a score correlating to a determined likelihood of fraud in progress. One of ordinary skill in the art would have been motivated to perform such a modification to protect the content searching system from malicious intent and to assist in authenticating the user, as taught by Varghese. Chen, as modified, lacks wherein the selective encryption associates a plurality of selective encryption algorithms for encrypting the data based on the field level, document level or chunk level encryption. However, Jaber teaches a database storage system (¶30) selecting an encryption algorithm from multiple algorithms (¶76) for secure, persistent data storage. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to further modify Chen such that the encryption/decryption layer comprises a plurality of selective encryption algorithms for encrypting the data. One of ordinary skill in the art would have been motivated to perform such a modification to support multiple encryption algorithms, as taught by Jaber. Chen, as modified, lacks wherein the documents are compressed. However, Ishizaki, in an analogous art (storage of secure information for retrieval, Fig. 14), teaches that it was known to store information in a database (¶134) in encrypted (¶172, Fig. 12) and compressed (¶146) form, where the encrypted and compressed data is searched using stored reciprocal relationships and decrypted (¶172-173) and decompressed (¶164) to access the data. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to further modify Chen such that the documents are compressed. One of ordinary skill in the art would have been motivated to perform such a modification to secure the data and optimize storage use at the database itself, as taught by Ishizaki.
Regarding claim 12, Chen, as modified, teaches wherein the encryption /decryption layer is further configured for selective compression/decompression of the data (as modified by Ishizaki, storing information in a database (¶134) in encrypted (¶172, Fig. 12) and compressed (¶146) form, where the encrypted and compressed data is searched using stored reciprocal relationships and decrypted (¶172-173) and decompressed (¶164) to access the data).
Regarding claim 14, Chen, as modified, lacks wherein the encryption/decryption layer comprises a plurality of selective encryption algorithms for encrypting the data. However, Jaber teaches a database storage system (¶30) selecting an encryption algorithm from multiple algorithms (¶76) for secure, persistent data storage. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to further modify Chen such that the encryption/decryption layer comprises a plurality of selective encryption algorithms for encrypting the data. One of ordinary skill in the art would have been motivated to perform such a modification to support multiple encryption algorithms, as taught by Jaber.
Regarding claim 15, Chen discloses wherein the web layer is configured to perform user authentication (col. 17, lines 35-39, col. 18, lines 8-10).
Regarding claim 18, Chen discloses wherein the database layer further comprises a document authorization layer for controlling data access based on user credentials (access control data, col. 17, lines 54-57 and co. 18, lines 8-10, associating authorized users with data accessible by each user, col. 18, lines 13-16).
Regarding claim 19, Chen discloses wherein the document authorization layer allows a user to view a selected portion of the data on the database (access control data, col. 17, lines 54-57 and co. 18, lines 8-10, associating authorized users with data accessible by each user, col. 18, lines 13-16).
Claims 16 and 17 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Chen, Kaminaga, Varghese, Jaber and Ishizaki, as applied to claim 15, in view of Birk.
Regarding claim 16, Chen, as modified, lacks wherein communication to and from the database from and to the index is controlled by secure socket layer certificate authorization. However, Birk teaches that it was known for communication between two servers to be controlled by two-way secure socket layer certificate authentication over a computer network to establish a trust relationship between them (¶37). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to further modify Chen such that communication to and from the database from and to the index is controlled by secure socket layer certificate authorization. One of ordinary skill in the art would have been motivated to perform such a modification to establish a trusted secure channel between the network elements, as taught by Birk.
Regarding claim 17, Chen, as modified, lacks wherein communication to and from the database from and to the index is controlled by secure socket layer certificate authorization. However, Birk teaches that it was known for communication between two servers to be controlled by two-way secure socket layer certificate authentication over a computer network to establish a trust relationship between them (¶37). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to further modify Chen such that communication to and from the database from and to the index is controlled by secure socket layer certificate authorization. One of ordinary skill in the art would have been motivated to perform such a modification to establish a trusted secure channel between the network elements, as taught by Birk.
Claim 20 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Chen, in view of Kaminaga, US 2007/0047013 A1 to Kawabuchi et al. (Kawabuchi), Birk, Varghese and US 2009/0043740 A1 to Olsen.
Regarding claim 20, Check discloses a system for secured searching, the system comprising: a web layer comprising: a user accessible web server, wherein the user logs-in to and is authenticated by the system in order to perform searches and receive results (web browser, col. 10, lines 32-35, col. 17, lines 35-42, col. 18, lines 8-10; data is accessible to the user via a web browser, col. 10, lines 32-35, col. 17, lines 35-42); and a database layer communicably coupled to the web layer, the database layer comprising: a search server including computer-executable instructions to perform searches of data based on a user's search query (content searching system, col. 10, lines 50-58, where a user provides query to the search engine, col. 18, lines 28-46) and authorization level (searching certain indexes based on the user authorization, col. 17, lines 54-65); an inverted index comprising impressions of searchable data contained in the database (index stores terms associated with a list of documents, col. 7, lines 8-11) communicably coupled to the search server (col. 7, lines 1-14); and a database containing encrypted data communicably coupled to the index (database including encrypted content, col. 6, lines 48-51), wherein the index takes a snapshot of the data stored in the database (content is obtained, col. 15, line 24-26, lines 46-50 and indexed, col. 16, lines 57-66). Chen lacks the index being encrypted when stored at rest in the database, the search engine searching the unencrypted index. However, Kaminaga, in an analogous art (query processing against an index, ¶3), teaches an index encrypted when stored at rest in a database (index data resides on persistent storage in encrypted form, ¶23) and teaches decryption of the index (¶34, ¶38), the search engine evaluating the query against the index (¶34) to secure the database against unauthorized document recreation (¶10). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Chen such that the index is encrypted when stored at rest in the database, the search engine searching the unencrypted index. One of ordinary skill in the art would have been motivated to perform such a modification to secure the database against unauthorized document recreation, as taught by Kaminaga. Chen, as modified, lacks an application server communicably coupled to the web server, wherein the application server authenticates the user's log-in information. However, Kawabuchi teaches a known configuration where a user, using a browser, logs in to a web server with credentials, the credentials are passed to an authentication server (application server) and the results are returned to the web server (¶¶139-143). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to further modify Chen to include an application server communicably coupled to the web server, wherein the application server authenticates the user's log-in information. One of ordinary skill in the art would have been motivated to perform such a modification to, for example, save resources on the web server, as taught by Kawabuchi. As modified, Chen lacks wherein the system requires SSL certificate authorization to access the database layer from the web layer, and wherein the system also requires SSL certificate authorization to send data from the database layer to the web layer. However, Birk teaches that it was known for communication between two servers to be controlled by two-way secure socket layer certificate authentication over a computer network to establish a trust relationship between them (¶37). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to further modify Chen such that the system requires SSL certificate authorization to access the database layer from the web layer, and wherein the system also requires SSL certificate authorization to send data from the database layer to the web layer. One of ordinary skill in the art would have been motivated to perform such a modification to establish a trusted secure channel between the network elements, as taught by Birk. As modified, Chen lacks wherein the application server comprises logic that calculates a score correlating to a determined likelihood of fraud in progress. However, Varghese teaches that it was known in a service-provide application (online store, banking, etc.) to include functionality (as part of basic authentication services, ¶83) to calculate a fraud score indicating the likelihood that a current request is fraudulent (for example, based on a user’s location, or historical patterns of access, ¶88) to authenticate the request (¶88). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to further modify Chen such that the application server comprises logic that calculates a score correlating to a determined likelihood of fraud in progress. One of ordinary skill in the art would have been motivated to perform such a modification to protect the content searching system from malicious intent and to assist in authenticating the user, as taught by Varghese. As modified, Chen lacks periodic snapshots. However, Olsen, in an analogous art (information search and retrieval), teaches a system generating indexes for searching data (database, ¶3, ¶28; index can be an inverted index, ¶39), where the system periodically makes index snapshots of the content present in the system at that time of the snapshot, serves queries based on the content of an index, indexer starts computing a new index based on more recent content that has been added to the system since the last indexing and the search application now starts serving new search queries from the new index (¶28). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to further modify Chen such that the index takes periodic snapshots of the current data stored in the database. One of ordinary skill in the art would have been motivated to perform such a modification to enable searching on an updated database, as taught by Olsen.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of US 9,449,178 B2 in view of US 8,442,994 to Chen et al. (Chen), US 2007/0255698 A1 to Kaminaga et al. (Kaminaga) and US 2006/0282660 A1 to Varghese et al. (Varghese), according to the table below.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims of US 9,449,178 B2 in view of US 8,442,994 to Chen et al. (Chen), US 2007/0255698 A1 to Kaminaga et al. (Kaminaga), US 2006/0282660 A1 to Varghese et al. (Varghese) and US 2009/0043740 A1 to Olsen, according to the table below.
Claims 1-7, 9-11, 13-15 and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of US 11,106,815 B2, in view of US 8,442,994 to Chen et al. (Chen), US 2007/0255698 A1 to Kaminaga et al. (Kaminaga) and US 2006/0282660 A1 to Varghese et al. (Varghese), according to the table below.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims of US 11,106,815 B2, in view of US 8,442,994 to Chen et al. (Chen), US 2007/0255698 A1 to Kaminaga et al. (Kaminaga) and US 2006/0282660 A1 to Varghese et al. (Varghese) and US 2009/0043740 A1 to Olsen, according to the table below.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims anticipate the instant claims. Further, it is noted that removing limitations from the patent claims would have been obvious for reasons of breadth.
17/385,302
US 9,449,178 B2
US 11,106,815 B2
1
8 -The patent claim lacks the index storing impressions, encryption of index data and decryption during a user-initiated search and lacks returning information in response to a search query. However, storing impressions in an inverted index was known, where a query is evaluated against the index and information is returned, as taught in Chen. Further, encryption of index data and decryption of the index data during a user-initiated search would have been obvious to a skilled artisan at the time the invention was made, in view of Kaminaga, as discussed in the rejections.
1 – The claim is directed to a system, where the patent claim is directed to a method. However, modification of a method performed by elements of a system to a system claim performing functions would have been obvious to a skilled artisan at the time the invention was made. Further, the patent claim lacks the index storing impressions, encryption of index data and decryption during a user-initiated search and lacks returning information in response to a search query. However, storing impressions in an inverted index was known, where a query is evaluated against the index and information is returned, as taught in Chen. Further, encryption of index data and decryption of the index data during a user-initiated search would have been obvious to a skilled artisan at the time the invention was made, in view of Kaminaga, as discussed in the rejections.
6 – The patent claim lacks user authentication at the web layer. However, US 8,442,994 to Chen teaches that it was known to authenticate a user to a search system (col. 18, lines 3-10), which can be a web server (client uses browser to search documents, co. 10, lines 32-35). Therefore, inclusion of the claimed user authentication at the web layer would have been an obvious modification to a skilled artisan. Further, the patent claim lacks the index storing impressions, encryption of index data and decryption during a user-initiated search and lacks returning information in response to a search query. However, storing impressions in an inverted index was known, where a query is evaluated against the index and information is returned, as taught in Chen. Further, encryption of index data and decryption of the index data during a user-initiated search would have been obvious to a skilled artisan at the time the invention was made, in view of Kaminaga, as discussed in the rejections. As modified, the patent claims lack logic that calculates a score correlating to a determined likelihood of fraud in progress. However, Varghese teaches that it was known in a service-provide application (online store, banking, etc.) to include functionality (as part of basic authentication services, ¶83) to calculate a fraud score indicating the likelihood that a current request is fraudulent (for example, based on a user’s location, or historical patterns of access, ¶88) to authenticate the request (¶88). Therefore, inclusion of the claimed fraud score calculation would have been an obvious variation over the patent claim to protect the content system.
1 – The patent claim lacks a “web layer” configured for interacting with the user via the user interface. However, US 8,442,994 to Chen teaches that it was known to authenticate a user to a search system (col. 18, lines 3-10), which can be a web server (client uses browser to search documents, co. 10, lines 32-35). Therefore, inclusion of the claimed web layer would have been an obvious modification to a skilled artisan at the time the invention was made. Further, the patent claim lacks the index storing impressions, encryption of index data and decryption during a user-initiated search and lacks returning information in response to a search query. However, storing impressions in an inverted index was known, where a query is evaluated against the index and information is returned, as taught in Chen. Further, encryption of index data and decryption of the index data during a user-initiated search would have been obvious to a skilled artisan at the time the invention was made, in view of Kaminaga, as discussed in the rejections. As modified, the patent claims lack logic that calculates a score correlating to a determined likelihood of fraud in progress. However, Varghese teaches that it was known in a service-provide application (online store, banking, etc.) to include functionality (as part of basic authentication services, ¶83) to calculate a fraud score indicating the likelihood that a current request is fraudulent (for example, based on a user’s location, or historical patterns of access, ¶88) to authenticate the request (¶88). Therefore, inclusion of the claimed fraud score calculation would have been an obvious variation over the patent claim to protect the content system.
2
6
3
6
1
4
6
1
5
11
1
8
6
9
6
2
10
7
2
11
6 -The patent claim lacks the index storing impressions, encryption of index data and decryption during a user-initiated search and lacks returning information in response to a search query. However, storing impressions in an inverted index was known, where a query is evaluated against the index and information is returned, as taught in Chen. Further, encryption of index data and decryption of the index data during a user-initiated search would have been obvious to a skilled artisan at the time the invention was made, in view of Kaminaga, as discussed in the rejections. As modified, the patent claims lack logic that calculates a score correlating to a determined likelihood of fraud in progress. However, Varghese teaches that it was known in a service-provide application (online store, banking, etc.) to include functionality (as part of basic authentication services, ¶83) to calculate a fraud score indicating the likelihood that a current request is fraudulent (for example, based on a user’s location, or historical patterns of access, ¶88) to authenticate the request (¶88). Therefore, inclusion of the claimed fraud score calculation would have been an obvious variation over the patent claim to protect the content system.
1 – The patent claim lacks a “web layer” configured for interacting with the user via the user interface. However, US 8,442,994 to Chen teaches that it was known to authenticate a user to a search system (col. 18, lines 3-10), which can be a web server (client uses browser to search documents, co. 10, lines 32-35). Therefore, inclusion of the claimed web layer would have been an obvious modification to a skilled artisan at the time the invention was made. Further, the patent claim lacks the index storing impressions, encryption of index data and decryption during a user-initiated search and lacks returning information in response to a search query. However, storing impressions in an inverted index was known, where a query is evaluated against the index and information is returned, as taught in Chen. Further, encryption of index data and decryption of the index data during a user-initiated search would have been obvious to a skilled artisan at the time the invention was made, in view of Kaminaga, as discussed in the rejections. As modified, the patent claims lack logic that calculates a score correlating to a determined likelihood of fraud in progress. However, Varghese teaches that it was known in a service-provide application (online store, banking, etc.) to include functionality (as part of basic authentication services, ¶83) to calculate a fraud score indicating the likelihood that a current request is fraudulent (for example, based on a user’s location, or historical patterns of access, ¶88) to authenticate the request (¶88). Therefore, inclusion of the claimed fraud score calculation would have been an obvious variation over the patent claim to protect the content system.
12
6
14
7
2
15
8
1 – See modification above.
16
6
17
6
1
18
6
1
19
11
1
20
6 – The patent claim lacks a user accessible web server. However, US 8,442,994 to Chen teaches that it was known to authenticate a user to a search system (col. 18, lines 3-10), which can be a web server (client uses browser to search documents, co. 10, lines 32-35). Therefore, inclusion of the claimed user accessible web server would have been an obvious modification to a skilled artisan. Further, the patent claim lacks the index storing impressions, encryption of index data and decryption during a user-initiated search and lacks returning information in response to a search query. However, storing impressions in an inverted index was known, where a query is evaluated against the index and information is returned, as taught in Chen. Further, encryption of index data and decryption of the index data during a user-initiated search would have been obvious to a skilled artisan at the time the invention was made, in view of Kaminaga, as discussed in the rejections. As modified, the patent claims lack logic that calculates a score correlating to a determined likelihood of fraud in progress. However, Varghese teaches that it was known in a service-provide application (online store, banking, etc.) to include functionality (as part of basic authentication services, ¶83) to calculate a fraud score indicating the likelihood that a current request is fraudulent (for example, based on a user’s location, or historical patterns of access, ¶88) to authenticate the request (¶88). Therefore, inclusion of the claimed fraud score calculation would have been an obvious variation over the patent claim to protect the content system. As modified, the patent claim teaches snapshots, but not periodic snapshots. However, Olsen, in an analogous art (information search and retrieval), teaches a system generating indexes for searching data (database, ¶3, ¶28; index can be an inverted index, ¶39), where the system periodically makes index snapshots of the content present in the system at that time of the snapshot, serves queries based on the content of an index, indexer starts computing a new index based on more recent content that has been added to the system since the last indexing and the search application now starts serving new search queries from the new index (¶28). Therefore, inclusion of periodic snapshots in the patent claim would have been obvious to a skilled artisan, in view of Olsen.
1 – The patent claim lacks a “web layer” comprising a user accessible web server, as claimed. However, US 8,442,994 to Chen teaches that it was known to authenticate a user to a search system (col. 18, lines 3-10), which can be a web server (client uses browser to search documents, co. 10, lines 32-35). Therefore, inclusion of the claimed web layer would have been an obvious modification to a skilled artisan at the time the invention was made. Further, the patent claim lacks the index storing impressions, encryption of index data and decryption during a user-initiated search and lacks returning information in response to a search query. However, storing impressions in an inverted index was known, where a query is evaluated against the index and information is returned, as taught in Chen. Further, encryption of index data and decryption of the index data during a user-initiated search would have been obvious to a skilled artisan at the time the invention was made, in view of Kaminaga, as discussed in the rejections. As modified, the patent claims lack logic that calculates a score correlating to a determined likelihood of fraud in progress. However, Varghese teaches that it was known in a service-provide application (online store, banking, etc.) to include functionality (as part of basic authentication services, ¶83) to calculate a fraud score indicating the likelihood that a current request is fraudulent (for example, based on a user’s location, or historical patterns of access, ¶88) to authenticate the request (¶88). Therefore, inclusion of the claimed fraud score calculation would have been an obvious variation over the patent claim to protect the content system. As modified, the patent claim teaches snapshots, but not periodic snapshots. However, Olsen, in an analogous art (information search and retrieval), teaches a system generating indexes for searching data (database, ¶3, ¶28; index can be an inverted index, ¶39), where the system periodically makes index snapshots of the content present in the system at that time of the snapshot, serves queries based on the content of an index, indexer starts computing a new index based on more recent content that has been added to the system since the last indexing and the search application now starts serving new search queries from the new index (¶28). Therefore, inclusion of periodic snapshots in the patent claim would have been obvious to a skilled artisan, in view of Olsen
Conclusion
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/Michael Simitoski/ Primary Examiner, Art Unit 2493
April 13, 2026
1 Encryption at the database side is also discussed in: US 2008/0133935 A1 to Elovici et al. (Fig. 2, ¶139), “A Practical Implementation of Transparent Encryption and Separation of Duties in Enterprise Databases” by Mattsson, “Database Encryption - How to Balance Security with Performance”, by Mattson and “Designing Secure Indexes for Encrypted Databases” by Shmueli et al.
Compression is also discussed in US 2013/0159694 A1 (¶20)
Prosecution Insights