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 12/29/2025.
Response to Arguments
Applicant's arguments filed 12/29/2025 have been fully considered but are not entirely persuasive.
The applicants have amended via after final response entered with RCE filed on 12/29/2025. These amendments have overcome all of the direct issues but have introduced new issues.
The examiner pointed out in the advisory action that there was a 112 clarity issue with the amendments filed after final, in that the amendment introduced “the cloud based-system” to the claims which lacks antecedent basis in the claims. The applicants did not correct this issues upon filing of the RCE and as such the claims are rejected accordingly.
The applicants argue that support for the language of “continuously monitoring…traffic of the access to the cloud service and building a baseline” can be found in paragraphs 0019, 0022, and 0063. Paragraph 0019 includes the cloud-based system providing inline monitoring inspecting traffic between the users, the Internet, and cloud services, but does not teach, suggest, or imply doing so continuously. Paragraph 0022 includes continuously monitoring the users including compressed or encrypted traffic, but does not teach, suggest, or imply that this is traffic between the user and the cloud service that is being continuously monitored. Paragraph 0063 includes continuously monitoring access to the cloud service, but does not teach, suggest, or imply that the monitoring includes continuously monitoring traffic to the access of the cloud service. As none of the portions cited by the applicants actually teach the claimed limitation, the examiner does not find the arguments persuasive. As such, the rejection has been maintained.
Further, the applicants argue that support for the newly amended language of “querying user information via one or more third-party cloud service Application Programming Interfaces (APIs)” could be found in Paragraphs 0059-0062. Paragraph 0061 teaches disabling a user account and setting access to Aviatrix VPN to Inactive using APIs. This is not the same as querying user information via third-party cloud service APIs. Certainly does not teach querying the specifically claimed user information. The remaining portions cited do not mention APIs at all, let alone third party cloud service APIs being used to query user information, especially the specifically claimed user information. As none of the portions cited by the applicants actually teach the claimed limitation, the examiner does not find the arguments persuasive. As such, the rejection has been maintained.
That a person having ordinary skill in the art might realize from reading the disclosure that such a step is possible is not a sufficient indication to that person that the step 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).)
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 the above discussed particular limitations claimed 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.
All objections and rejections not set forth below have been withdrawn.
Claims 1-20 have been examined.
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:
Claims 1, 8, and 15 (and the remaining claims by virtue of their dependence) were amended to add the language “continuously monitoring…traffic of the access to the cloud service”. The applicants state that no new matter was added in the claims, however the examiner has reviewed the sections cited by the applicants as providing support and does not find proper support therein.
The applicants argue that support for the language of “continuously monitoring…traffic of the access to the cloud service and building a baseline” can be found in paragraphs 0019, 0022, and 0063. Paragraph 0019 includes the cloud-based system providing inline monitoring inspecting traffic between the users, the Internet, and cloud services, but does not teach, suggest, or imply doing so continuously. Paragraph 0022 includes continuously monitoring the users including compressed or encrypted traffic, but does not teach, suggest, or imply that this is traffic between the user and the cloud service that is being continuously monitored. Paragraph 0063 includes continuously monitoring access to the cloud service, but does not teach, suggest, or imply that the monitoring includes continuously monitoring traffic to the access of the cloud service. As such, the specification is objected to for failing to provide proper antecedent basis for the claimed subject matter.
Claims 1, 8, and 15 (and the remaining claims by virtue of their dependence) were amended to add the language “querying user information via one or more third-party cloud-service Application Programming Interfaces”. The applicants state that no new matter was added in the claims, however the examiner has reviewed the sections cited by the applicants as providing support and does not find proper support therein.
Further, the applicants argue that support for the newly amended language of “querying user information via one or more third-party cloud service Application Programming Interfaces (APIs)” could be found in Paragraphs 0059-0062. Paragraph 0061 teaches disabling a user account and setting access to Aviatrix VPN to Inactive using APIs. This is not the same as querying user information via third-party cloud service APIs. Certainly does not teach querying the specifically claimed user information. The remaining portions cited do not mention APIs at all, let alone third party cloud service APIs being used to query user information, especially the specifically claimed user information. As such, the specification is objected to for failing to provide proper antecedent basis for the claimed subject matter.
Claims 5, 12, and 19 were amended to add the language “the remediation is performed by the cloud-based system inline during the monitored session”. The applicants state that no new matter was added in the claims, however the examiner has reviewed the sections cited by the applicants as providing support and does not find proper support therein.
Further, the examiner has looked to the entire specification and is unable to find support for this language. As such, the specification is objected to for failing to provide proper antecedent basis for the claimed subject matter.
Claims 7, 14, and 20 were amended to add the language “gathering the baseline….on a per user and per device basis”. The applicants state that no new matter was added in the claims, however the examiner has reviewed the sections cited by the applicants as providing support and does not find proper support therein.
Further, the examiner has looked to the entire specification and is unable to find support for this language. As such, the specification is objected to for failing to provide proper antecedent basis for the claimed subject matter.
Claims 7, 14, and 20 were amended to add the language “normalized behavior defined in the profile”. The applicants state that no new matter was added in the claims, however the examiner has reviewed the sections cited by the applicants as providing support and does not find proper support therein.
Further, the examiner has looked to the entire specification and is unable to find support for this language. As such, the specification is objected to for failing to provide proper antecedent basis for the claimed subject matter.
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 1-20 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 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.
Claims 1, 8, and 15 (and the remaining claims by virtue of their dependence) were amended to add the language “continuously monitoring…traffic of the access to the cloud service”. The applicants state that no new matter was added in the claims, however the examiner has reviewed the sections cited by the applicants as providing support and does not find proper support therein.
The applicants argue that support for the language of “continuously monitoring…traffic of the access to the cloud service and building a baseline” can be found in paragraphs 0019, 0022, and 0063. Paragraph 0019 includes the cloud-based system providing inline monitoring inspecting traffic between the users, the Internet, and cloud services, but does not teach, suggest, or imply doing so continuously. Paragraph 0022 includes continuously monitoring the users including compressed or encrypted traffic, but does not teach, suggest, or imply that this is traffic between the user and the cloud service that is being continuously monitored. Paragraph 0063 includes continuously monitoring access to the cloud service, but does not teach, suggest, or imply that the monitoring includes continuously monitoring traffic to the access of the cloud service. As such, the person having ordinary skill in the art would not have been able to ascertain whether or not the applicants were, at the time the application was filed, in possession of the invention as claimed.
Claims 1, 8, and 15 (and the remaining claims by virtue of their dependence) were amended to add the language “querying user information via one or more third-party cloud-service Application Programming Interfaces”. The applicants state that no new matter was added in the claims, however the examiner has reviewed the sections cited by the applicants as providing support and does not find proper support therein.
Further, the applicants argue that support for the newly amended language of “querying user information via one or more third-party cloud service Application Programming Interfaces (APIs)” could be found in Paragraphs 0059-0062. Paragraph 0061 teaches disabling a user account and setting access to Aviatrix VPN to Inactive using APIs. This is not the same as querying user information via third-party cloud service APIs. Certainly does not teach querying the specifically claimed user information. The remaining portions cited do not mention APIs at all, let alone third party cloud service APIs being used to query user information, especially the specifically claimed user information. As such, the person having ordinary skill in the art would not have been able to ascertain whether or not the applicants were, at the time the application was filed, in possession of the invention as claimed.
Claims 5, 12, and 19 were amended to add the language “the remediation is performed by the cloud-based system inline during the monitored session”. The applicants state that no new matter was added in the claims, however the examiner has reviewed the sections cited by the applicants as providing support and does not find proper support therein.
Further, the examiner has looked to the entire specification and is unable to find support for this language. As such, the person having ordinary skill in the art would not have been able to ascertain whether or not the applicants were, at the time the application was filed, in possession of the invention as claimed.
Claims 7, 14, and 20 were amended to add the language “gathering the baseline….on a per user and per device basis”. The applicants state that no new matter was added in the claims, however the examiner has reviewed the sections cited by the applicants as providing support and does not find proper support therein.
Further, the examiner has looked to the entire specification and is unable to find support for this language. As such, the person having ordinary skill in the art would not have been able to ascertain whether or not the applicants were, at the time the application was filed, in possession of the invention as claimed.
Claims 7, 14, and 20 were amended to add the language “normalized behavior defined in the profile”. The applicants state that no new matter was added in the claims, however the examiner has reviewed the sections cited by the applicants as providing support and does not find proper support therein.
Further, the examiner has looked to the entire specification and is unable to find support for this language. As such, the person having ordinary skill in the art would not have been able to ascertain whether or not the applicants were, at the time the application was filed, in possession of the invention as claimed.
Therefore, the claims are rejected for failing to meet the written description requirement of 35 U.S.C. 112(a).
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.
Claims 1, 8, and 15 recite “the cloud based-system” which lacks antecedent basis in the claims. The applicants may have intended this to recite “the cloud-based system”.
All claims depending from any of the above rejected claims are also rejected by virtue of their dependence upon their respective rejected parent claim(s).
Conclusion
Claims 1-20 have been rejected.
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.
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/MATTHEW T HENNING/ Primary Examiner, Art Unit 2491