DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12 November 2025 has been entered.
By the above submission, Claims 1, 2, 5, 6, 8, 13, 15, 17, and 18 have been amended. No claims have been added or canceled. Claims 1-20 are currently pending in the present application.
Response to Arguments
Applicant’s arguments with respect to the rejections under 35 U.S.C. 103 have been considered but are moot in view of the new grounds of rejection set forth below.
Applicant's arguments filed 12 November 2025 have been fully considered but they are not persuasive.
Regarding the objection to Figure 15 as requiring a prior art label, Applicant merely argues that Figure 15 describes a computing environment and devices interconnected with the allegedly novel and non-obvious system described throughout the specification (see page 19 of the present response, citing paragraph 0035 of the present specification). However, the cited paragraph 0035 merely states that specific details are set forth and the disclosed techniques may be practiced without those details, and that well-known structures and devices are shown in block diagram form to avoid obscuring the disclosed techniques. This does not clearly relate to the depictions of Figure 15. The elements depicted in Figure 15 and described in paragraphs 0108-0114 are all shown and described as conventional computer components and are not clearly linked to the described invention.
Regarding the rejection of Claims 1-20 under 35 U.S.C. 101 as directed to abstract ideas without significantly more, and with reference to the amended independent claims relating to the analysis under Step 2A, Prong One, Applicant argues that determining that a second content item on a second client device contains a second type of sensitive information concurrently with determining that a first content item on a first client device contains a first type of sensitive information is not a process that can be practically performed in the human mind and therefore the claim does not recite an abstract mental process (see page 21 of the present response). However, as an example, if a person had two computers in front of them (or a computer and a phone, or a combination of two other client devices), the person could look at two different documents/images/webpages/files (i.e. content items) simultaneously on the two computers’ screens and easily visually discern that one document included an email address and that the other document included a phone number (to use two example types of sensitive information as recited in Claim 19). Therefore, there is not clear evidence that performing the two determinations concurrently with respect to first and second content items on the first and second client devices cannot practically be performed in the human mind, and it appears that such determinations would still fall into the abstract idea grouping of mental processes.
With respect to Step 2A, Prong Two, Applicant argues that the claims “are directed to specific technical steps to solve problems in a technical environment” and provide an improvement to a technology or technical field and asserts that concurrently determining that first and second types of sensitive information in first and second content items on first and second client devices provide increased information security (page 22 of the present response, citing paragraph 0036 of the specification). However, first, Applicant does not explain the nexus between the claim element and the asserted improvement; i.e. Applicant does not explain how the specific step increases security. Further, as shown above, the steps of determining (even concurrently) are part of the abstract mental processes, and as per MPEP § 2106.05(a), the judicial exception alone cannot provide the improvement; rather, the improvement must be provided by one or more additional elements. The steps of determining are not additional elements.
Regarding the rejection of Claims 3 and 4 under 35 U.S.C. 112(a) as failing to comply with the enablement requirement, Applicant merely alleges that paragraphs 0082-0084 provide sufficient detail to allow one of ordinary skill in the art to use a natural language processing model and binary classifier to detect different types of sensitive content (page 23 of the present response, citing paragraphs 0082-0084 of the specification). However, these paragraphs were considered and explicitly cited in the outstanding rejection, and it was noted that the specification only describes the classification techniques in similar terms as recited in the claims and does not provide sufficient detail to allow one of ordinary skill to train such natural language processing or binary classifiers to detect different types of sensitive content or determine how to train the classifiers. The scope of enablement of the specification is not commensurate with the broader scope of the claim language (see MPEP § 2164.08) and would not enable one of ordinary skill in the art to make and/or use the invention.
Therefore, for the reasons detailed above, the Examiner maintains the rejections as set forth below.
Drawings
The objection to Figure 15 as requiring a prior art label is not withdrawn for the reasons detailed above.
Figure 15 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The objection to the disclosure for informalities is withdrawn in light of the amendments to the specification. The objection to the specification for failure to provide proper antecedent basis for the claimed subject matter is NOT withdrawn, because the amendments to the claims have raised new issues, as detailed below.
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: Claims 1, 8, and 13 have been amended to recite “determining, concurrently with determining that the first content item contains a first type of sensitive information, that a second content item on a second client device contains a second type of sensitive information” or similar limitations. There appears to be no mention in the specification of making these determinations that content items contain types of sensitive information concurrently. Therefore, there is not clear antecedent basis for the claimed subject matter in the specification. For further detail, see below with respect to the rejection under 35 U.S.C. 112(a) for failure to comply with the written description requirement.
Claim Objections
It is acknowledged that Claim 18 has been amended and is no longer a substantial duplicate of Claim 17.
Claim Rejections - 35 USC § 101
The rejection of Claims 1-20 under 35 U.S.C. 101 as directed to abstract ideas without significantly more is NOT withdrawn for the reasons detailed above.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more.
Claim 1 recites a method that includes determining that first and second content items are sensitive, receiving first and second requests to perform first and second sensitive information exposing actions on the respective content items, determining to perform first and second types of sensitive information protective actions, and performing the first and second sensitive information protective actions. The steps of determining that the content items are sensitive and determining to perform the sensitive information protective actions only require simple comparisons of data, which could be performed visually, by hand, or mentally. These constitute mental processes, which are one of the groupings of abstract ideas set forth in MPEP § 2106.04(a)(2). Abstract ideas are judicial exceptions as per MPEP § 2106.04(I). See also Alice Corporation Pty. Ltd. v. CLS Bank, International, et al, 573 U.S. 208, 110 USPQ2d 1976 (2014).
The judicial exception is not integrated into a practical application because the claim does not recite substantial further action after determining to perform the protective action. Although the claim does recite performing the protective actions, such action could amount to displaying a prompt and warning message to a user (as per Claims 5-7, for example), and such a display is insignificant post-solution activity, i.e. necessary output, because performing the protective action is a necessary consequence of deciding to perform the protective action, as per MPEP § 2106.05(g). Similarly, the steps of receiving the requests to perform the exposing actions are simple data gathering, which is also insignificant extra-solution activity, as per MPEP § 2106.05(g). There is nothing that would result in a particular transformation, as per MPEP § 2106.05(c), nor does the claim require the use of the abstract ideas in conjunction with a particular machine or manufacture (noting that the content management system and processors are described in generic terms at a high level), as per MPEP § 2106.05(b). At most, the recitations of the content management system and processor constitute nothing more than mere instructions to implement the abstract ideas on a computer. See MPEP § 2106.05(f). The other recitations relating to the system only recite a field of use or technological environment for the abstract idea as per MPEP § 2106.05(h). There are no additional elements that apply or use the abstract ideas in a meaningful way beyond merely linking the use of the judicial exceptions to a particular technological environment. Therefore, the claim is not directed to a practical application of the abstract ideas.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exceptions for similar reasons as detailed above with respect to the question of a practical application of the judicial exception. The steps of receiving the request and potentially performing the protective action constitute sending and receiving data over a network, which have been recognized by the courts as well-understood, routine, and conventional functions. See MPEP § 2106.05(d)(II), citing Symantec, TLI, OIP Techs., and buySAFE. Therefore, the claim as a whole, whether the steps are considered individually or as an ordered combination, is not directed to significantly more than the abstract idea.
Claim 8 is directed to computer-readable storage media storing instructions, where the instructions, when executed, perform functions corresponding substantially to the method of Claim 1. While the claim is directed to a computer-readable storage medium, there is no particular structure recited in the claim; rather, the claim is limited only by its functionality. This functionality is directed to an abstract idea for similar reasons as detailed above with respect to Claim 1. That the claim recites computer instructions does not constitute anything more than mere instructions to implement the abstract idea on a computer. See MPEP § 2106.05(f). Therefore, the medium of Claim 8 is not directed to significantly more than the abstract ideas themselves.
Claim 13 is directed to a system having functionality corresponding to the method of Claim 1, and also recites an abstract idea for similar reasons as detailed above with respect to Claim 1. The recitations of the processor and computer-readable media storing instructions are at a generic level and constitute nothing more than mere instructions to implement the abstract idea on a computer. See MPEP § 2106.05(f). Therefore, the system claim is also not directed to significantly more than the abstract idea.
Dependent Claims 2-7, 9-12, and 14-20 only recite further detail of the abstract steps/functions of comparing data such as the types of data or content that are sensitive. Therefore, the dependent claims also do not provide a practical application or significantly more than the abstract ideas.
Based upon consideration of all of the relevant factors with respect to the claims as an ordered combination and as a whole, Claims 1-20 are determined to be directed to abstract ideas without a practical application and without significantly more, as detailed above. Therefore, based on the above analysis, the claimed inventions are not directed to patent eligible subject matter.
Claim Rejections - 35 USC § 112
The rejection of Claims 1-20 under 35 U.S.C. 112(a) for failure to comply with the written description requirement is NOT withdrawn, because the amendments have raised new issues, as detailed below. The rejection of Claims 3 and 4 under 35 U.S.C. 112(a) for failure to comply with the enablement requirement is NOT withdrawn for the reasons detailed above. The rejection of Claims 1-20 under 35 U.S.C. 112(b) as indefinite is NOT withdrawn because not all issues have been addressed and/or because the amendments have raised new issues, as detailed below.
The following is a quotation 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 1-20 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 claims contain 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.
Claims 1, 8, and 13 have been amended to recite “determining, concurrently with determining that the first content item contains a first type of sensitive information, that a second content item on a second client device contains a second type of sensitive information” or similar limitations. Although Applicant has cited paragraph 0048 as support for the claims as amended (see page 21 of the present response), this paragraph only states that the content management system can concurrently accept connections from and concurrently interact with multiple client devices. Although this is a general description of concurrent interactions with multiple client devices, this does not provide clear written description of the further details of concurrent determinations that first and second content items on first and second client devices contain first and second types of sensitive information. There appears to be no mention in the specification of making these determinations that content items contain types of sensitive information concurrently. Therefore, there is not clearly sufficient written description of the claimed subject matter in the specification.
Claims not explicitly referred to above are rejected due to their dependence on a rejected base claim.
Claims 3 and 4 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 enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
A determination of a failure to comply with the enablement requirement is made considering the undue experimentation factors set forth in MPEP § 2164.01(a). In the present application, the factors which appear to weigh most heavily are the breadth of the claims (MPEP § 2164.08), the amount of direction provided by the inventor (MPEP § 2164.03), and the existence of working examples (MPEP § 2164.02). Claim 3 broadly recites “applying a natural language processing technique” and Claim 4 broadly recites “utilizing a first binary classifier” in classifying the content items. There are no details in the claims of the steps used to actually apply the natural language processing technique or use the binary classifier. However, the specification only describes these classification techniques in similar terms as recited in the claims (see paragraphs 0082-0084 of the present specification). The specification does not provide sufficient detail to allow one of ordinary skill to train such natural language processing or binary classifiers to detect different types of sensitive content or to determine how to train these classifiers; rather, the specification merely recites the use of such classifiers already trained. The lack of details or examples in any detail suggests that there is little direction provided by the inventor. Combined with the broad scope of the claims, this suggests that the enablement of the description is not commensurate in scope with the claims (MPEP § 2164.08) and that undue experimentation would be required to make or use the invention based on the disclosure (MPEP § 2164.06).
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 1-20 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 1 recites “the first type of sensitive information item” in lines 4-5. There is insufficient antecedent basis for this limitation in the claim. The claim also recites “a second content item” in lines 22-23; it is not clear whether this is intended to refer to the same second content item recited in line 21 or a distinct item. The above ambiguities render the claim indefinite.
Claim 2 recites “a contractual content classification” twice in the list in lines 3-4.
Claim 5 recites “the first type of sensitive information protective action comprises one of:” several options in lines 1-2, where the first type of action is applied to the first content item. However, the claim recites “a requirement to confirm sharing the first content item or the second content item” in line 3 and “redacting the first type of sensitive information item or the second type of sensitive information item” in lines 7-8, it is not clear how the first protective action would be performed for the second content item or second type of sensitive information item.
Claim 6 recites “prompting to confirm sharing” in line 5. It is not clear who or what is prompted to make this confirmation.
Claim 8 recites “the first type of sensitive information item” in lines 6-7. There is insufficient antecedent basis for this limitation in the claim. The claim further recites “a second content item… contains a second content item contains a second type of sensitive information” in lines 25-26; this is grammatically unclear with respect to the sequential verbs “contains”. The above ambiguities render the claim indefinite.
Claim 9 recites determining “that the sharing user has not shared the first content item”. The tense of “has not shared” makes the timeframe unclear as to when the content is or is not shared.
Claim 10 recites “first invited user” in line 4. It appears that an article or other descriptor (e.g. “a” or “the”) is missing before this phrase. The claim further recites determining that the first content item “has not been shared”. The tense of “has not been shared” makes the timeframe unclear as to when the content is or is not shared. The claim additionally recites “the sensitive information protective action” in line 8. It is not clear whether this is intended to refer to the first or second protective actions.
Claim 12 recites “the sensitive information protective action” in line 4. It is not clear whether this is intended to refer to the first or second protective actions.
Claim 13 recites “the first type of sensitive information item” in line 8. There is insufficient antecedent basis for this limitation in the claim. The claim also recites “a second content item” in line 25; it is not clear whether this is intended to refer to the same second content item recited in line 24 or a distinct item. The above ambiguities render the claim indefinite
Claim 14 recites “the first type of sensitive information protective action…comprises displaying a graphical user interface for displaying the first type of sensitive information item” in lines 2-4. However, it is not clear how this would be a “protective” action as recited in the claim. The claim further recites “responsive to activation of a graphical user interface control, displaying, in the graphical user interface, the sensitive information item” in lines 5-6. First, it is not clear how this modifies or limits the claimed system, or it is not clear how the system itself would include this step. Further, it is not clear whether “the sensitive information item” is intended to refer to the first or second sensitive information item.
Claim 16 recites determining “that the sharing user has not shared the first content item” in lines 4-5. The tense of “has not shared” makes the timeframe unclear as to when the content is or is not shared.
Claim 17 recites determining that the first content item “has not been shared” in line 5. The tense of “has not been shared” makes the timeframe unclear as to when the content is or is not shared.
Claim 18 recites the phrase “has rarely been shared” in lines 6 and 12. The term “rarely” is a relative term which is not clearly defined in the claims or specification, nor does the specification provide a clear standard of comparison for how infrequently sharing must occur to be rare. See MPEP § 2173.05(b).
Claim 20 recites that the instructions “cause the computing system to cause a graphical user interface to be displayed” in lines 3-4. The repetition of causing is unclear as to what the computing system causes to display the GUI.
Claims not specifically referred to above are rejected due to their dependence on a rejected base claim.
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 2, and 5-20 are rejected under 35 U.S.C. 103 as being unpatentable over Mohamed, US Patent 10380075, in view of Byrne et al, US Patent 8732853, and McCorkendale, US Patent 9614826.
In reference to Claim 1, Mohamed discloses a method that includes determining that a first content item contains a first type of sensitive information by classifying the content item with a content item classification based on detecting a first type of sensitive information in the first content item (Figure 3, step 45; see also column 3, lines 19-40, and column 6, lines 10-33); receiving a request to perform a first sensitive information exposing action on the first content item (Figure 3, step 55; see also column 7, lines 3-10); and based on the content item corresponding to the first type of sensitive information item, determining to perform and subsequently performing a first sensitive information protective action (see Figure 3, step 98; see also column 7, lines 11-41, prompting the user; column 7, line 55-column 8, line 30, notification and restriction). However, Mohamed does not explicitly disclose determining to perform a second type of protective action based on a second content item corresponding to a second type of sensitive content information contained in a second content item.
Byrne discloses a method for sharing sensitive content (throughout; see, for example, column 12, lines 11-61) that includes different content protective actions being available for different types of sensitive content (see column 12, lines 1-10). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Mohamed to include different types of content protective actions for different types of content, in order to allow for greater flexibility (see Byrne, column 11, line 50-column 12, line 10).
However, neither Mohamed nor Byrne explicitly discloses making two determinations of types of sensitive content concurrently. McCorkendale discloses a method for protecting sensitive data that includes concurrent performance of functions (see column 5, lines 38-42) and determining whether content from multiple devices contains different types of sensitive content concurrently (column 11, line 52-column 12, line 3, where content from plural cloud storage systems can be viewed simultaneously to determine which files are protected, i.e. sensitive). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Mohamed and Byrne to include the simultaneous determinations of McCorkendale, in order to increase security (see McCorkendale, column 3, lines 14-42).
In reference to Claim 2, Mohamed, Byrne, and McCorkendale further disclose photo, contractual, tax or medical content (Mohamed, column 3, lines 19-40).
In reference to Claims 5-7, Mohamed and Byrne further disclose that the exposing action is sharing the content item and the protective action includes prompting a user to confirm sharing in a GUI based on display of details about the sensitive content or a type thereof (Mohamed, column 7, lines 11-41, and column 7, line 55-column 8, line 30, notification and restriction; column 8, line 52-column 9, line 11, redaction).
Claim 8 is directed to a software implementation of the methods of Claims 1 and 2, and is rejected by a similar rationale, mutatis mutandis. Claims 9-12 recite limitations similar to those of Claim 2 and 5-7, and are rejected by a similar rationale.
Claim 13 is directed to a system having functionality corresponding to the methods of Claim 1, and is rejected by a similar rationale, mutatis mutandis. Claims 14-20 are similarly directed to systems having functionality corresponding to the software of Claims 9-12, and are rejected by a similar rationale.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Mohamed in view of Byrne and McCorkendale as applied to Claim 1 above, and further in view of Jaiswal, US Patent 8688601.
Mohamed, Byrne, and McCorkendale disclose everything as detailed with respect to Claim 1 above; however, none of Mohamed, Byrne, or McCorkendale explicitly discloses the use of natural language processing or binary classifiers. Jaiswal discloses a method that uses natural language processing and binary classifiers to classify the type of sensitive content in textual components of content items (see column 2, lines 21-33). Therefore, it would have been obvious to one of ordinary skill in the art before the effective date of the claimed invention to further modify the method of Mohamed, Byrne, and McCorkendale to include the classifiers of Jaiswal, in order to provide improvements in classifying the data (see Jaiswal, column 1, lines 46-54).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zachary A Davis whose telephone number is (571)272-3870. The examiner can normally be reached Monday-Friday, 9:00am-5:30pm, Eastern Time.
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/Zachary A. Davis/Primary Examiner, Art Unit 2492