DETAILED ACTION
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 .
Status of Claims
Claims 1-9,11-24,26-33,35 are pending in this application.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-9,11-24,26-33,35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,314,858. Although the claims at issue are not identical, they are not patentably distinct from each other (see table below).
Instant Application
U.S. Patent No. 11,314,858
Claim 1: A method comprising:
receiving, by a computing device, information indicating an occurrence of an event; and
based on an association between a location of a user device and a location associated with the event, causing, by the computing device:
the user device to perform an action to protect data accessible via the user device and
an action to protect one or more user accounts accessible via the user device.
Claim 1: A method comprising:
receiving, by a computing device and from a sensor, information indicating an occurrence of an event;
determining, based on the occurrence of the event, an action to protect data accessible via a user device;
determining an association between a location of the user device and a location associated with the event; and
causing, based on the association, the user device to perform the action.
Although the conflicting claims are not identical, they are not patentably distinct from each other because both are directed to a method for protecting user device data based on association between a location of the user device and a location associated with the event and is substantively-similar independent claims 8,16,23, said claims are merely a broader version of claim 1 of U.S. Patent No. 11,314,858 contains at least all of the limitations (or obvious equivalents) recited in claim 1 of the instant application.
With regard to claims of the 2-7,9-15,17-22 and 24-30, each depending from one of independent claims 1,8,16 and 23, said claims are rejected on the grounds of nonstatutory double patenting as being unpatentable over U.S. Patent No. 11,314,858 in view the foregoing nonstatutory double patenting rejection of claim 1.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5,7-9,11-20,22-24,26-33,35 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ullom(US 2018/0260567).
Claim 1: Ullom disclose receiving, by a computing device, information indicating an occurrence of an event and receiving occurrence of an event in (page 2[0015]: The system enable the user device to execute the security application to detect when a security operation is to be performed based on the occurrence of one or events. A trigger event may, in a non limiting example, occur when the user device is located in a prohibited geographic area, when biometric data of a user does not comply with a biometric parameter or when the user device cannot authenticate a user or when the user device detects a quantity of unsuccessful login events that is more than a login threshold). Ullom disclose based on an association between a location of a user device and a location associated with the event, causing by the computing device in (page 2[0015],[0016]: occur when the user device is located in a prohibited geographic area, when biometric data of a user does not comply with a biometric parameter or when the user device cannot authenticate a user or when the user device detects a quantity of unsuccessful login events that is more than a login threshold). Ullom disclose the user device to perform an action to protect data accessible via the user device and an action to protect one or more user accounts accessible via the user device in (page 2[0016];page 3[0022-0023]: Upon detecting that the trigger event has occurred or is about to occur, the user device may perform a security operation to protect the device and/or the sensitive data that is stored in a memory associated with the user, such as locking the user device, evaluating the data stored on the user device. Preparing sensitive data may include identifying and prioritizing the sensitive data based on a level of security such as top secret, secret, confidential etc. The security operations in response include locking the user device, preventing access without authentication, which directly protects user accounts).
Claim 2: Ullom disclose event comprises at least one of: a cyberattack, detecting malware, disconnecting a device from one or more networks, or unauthorized access to a premises in (page 3[0022]; page 7[0061]).
Claim 3: Ullom disclose action comprises preventing access to the data via the user device and providing access, via the user device, to second data different from the data in (page 3[0023]).
Claim 4: Ullom disclose sending by the computing device to a second computing device located remotely from the premises, a notification indicating the occurrence of the event in (fig.6).
Claim 5: Ullom disclose action comprises one or more of encrypting the data; deleting the data from the user device or logging out of one or more accounts that are accessible via the user device in (page 3[0023]).
Claim 7: Ullom disclose determining based on an alarm state of the computing device, a classification of the event in(page 3[0022-0023]).
Claim 8: Ullom disclose receiving, by a computing device, information indicating an occurrence of a cyberattack; determining by the first computing device based on the occurrence of the cyberattack and a classification of the cyberattack, an action to protect data accessible via a second computing device and causing by the first computing device, the second computing device to perform the action in (page 2[0015],[0016]; page 3[0022-0023]: The system enable the user device to execute the security application to detect when a security operation is to be performed based on the occurrence of one or events. A trigger event may, in a non limiting example, occur when the user device is located in a prohibited geographic area, when biometric data of a user does not comply with a biometric parameter or when the user device cannot authenticate a user or when the user device detects a quantity of unsuccessful login events that is more than a login threshold. Upon detecting that the trigger event has occurred or is about to occur, the user device may perform a security operation to protect the device and/or the sensitive data that is stored in a memory associated with the user, such as locking the user device, evaluating the data stored on the user device. Preparing sensitive data may include identifying and prioritizing the sensitive data based on a level of security such as top secret, secret, confidential etc. The security operations in response include locking the user device, preventing access without authentication, which directly protects user accounts).
Claim 9: Ullom disclose classification comprises a severity of the cyberattack in (page 3[0022-0023]).
Claim 11: Ullom disclose Karta disclose determining based on the classification of the cyberattack, an action to protect data accessible via one or more other computing devices in (page 3[0023-0024]).
Claim 12: Ullom disclose action comprises one or more of: locking the second computing device; encrypting the data; deleting the data; disconnecting the second computing device from one or more networks; disconnecting the second computing device from one or more other computing devices or storing the data to one or more other computing devices in (page 2[0016]).
Claim 13: Ullom disclose action comprises protecting an account targeted by the cyberattack in (page 3[0022-0023]).
Claim 14: Ullom disclose protecting the account comprises one or more of: requesting authentication information associated with the account; logging out of the account on the second computing device; logging out of the account one or more other computing devices; limiting access to the data via the second computing device or limiting access to the data via one or more other computing devices in (page 2[0014-0015]).
Claim 15: Ullom disclose determining an association between a location of the second computing device and a location associated with the cyberattack wherein causing the second computing device to perform the action is further based on association in (page 2[0015]).
Claim 16: Ullom disclose one or processors and memory instructions executed by the one or more processors in (fig.2). Ullom disclose receiving, by a computing device, information indicating an occurrence of an event and receiving occurrence of an event and based on an association between a location of a user device and a location associated with the event, causing the user device to perform an action to protect data accessible via the user device and action to protect one or more user accounts accessible via the user device in (page 2[0015],[0016]; page 3[0022-0023]: The system enable the user device to execute the security application to detect when a security operation is to be performed based on the occurrence of one or events. A trigger event may, in a non limiting example, occur when the user device is located in a prohibited geographic area, when biometric data of a user does not comply with a biometric parameter or when the user device cannot authenticate a user or when the user device detects a quantity of unsuccessful login events that is more than a login threshold. Upon detecting that the trigger event has occurred or is about to occur, the user device may perform a security operation to protect the device and/or the sensitive data that is stored in a memory associated with the user, such as locking the user device, evaluating the data stored on the user device. Preparing sensitive data may include identifying and prioritizing the sensitive data based on a level of security such as top secret, secret, confidential etc. The security operations in response include locking the user device, preventing access without authentication, which directly protects user accounts).
Claim 17: Ullom disclose event comprises at least one of: a cyberattack, detecting malware, disconnecting a device from one or more networks, or unauthorized access to a premises in (page 3[0022]; page 7[0061]).
Claim 18: Ullom disclose action comprises preventing access to the data via the user device and providing access, via the user device, to second data different from the data in (page 3[0023]).
Claim 19: Ullom disclose sending to a second computing device located remotely from the premises, a notification indicating the occurrence of the event in (fig.6).
Claim 20: Ullom disclose action comprises one or more of encrypting the data; deleting the data from the user device or storing a copy of the data in a different location in (page 3[0023]).
Claim 22: Ullom disclose determine based on the occurrence of the event, the action to protect data accessible via the user device in (page 2[0015-0016].
Claim 23: Ullom disclose one or processors and memory instructions executed by the one or more processors in (fig.2). Ullom disclose receiving, by a computing device, information indicating an occurrence of a cyberattack; determining by the first computing device based on the occurrence of the cyberattack and a classification of the cyberattack, an action to protect data accessible via a second computing device and cause the second computing device to perform the action in (page 2[0015],[0016]; page 3[0022-0023]: The system enable the user device to execute the security application to detect when a security operation is to be performed based on the occurrence of one or events. A trigger event may, in a non limiting example, occur when the user device is located in a prohibited geographic area, when biometric data of a user does not comply with a biometric parameter or when the user device cannot authenticate a user or when the user device detects a quantity of unsuccessful login events that is more than a login threshold. Upon detecting that the trigger event has occurred or is about to occur, the user device may perform a security operation to protect the device and/or the sensitive data that is stored in a memory associated with the user, such as locking the user device, evaluating the data stored on the user device. Preparing sensitive data may include identifying and prioritizing the sensitive data based on a level of security such as top secret, secret, confidential etc. The security operations in response include locking the user device, preventing access without authentication, which directly protects user accounts).
Claim 24: Ullom disclose classification comprises a severity of the cyberattack in (page 2[0016]).
Claim 26: Ullom disclose disclose determining based on the classification of the cyberattack, an action to protect data accessible via one or more other computing devices in (page 3[0023-0024]).
Claim 27: Ullom disclose action comprises one or more of: locking the second computing device; encrypting the data; deleting the data; disconnecting the second computing device from one or more networks; disconnecting the second computing device from one or more other computing devices or storing the data to one or more other computing devices in (page 2[0016]).
Claim 28: Ullom disclose action comprises protecting an account targeted by the cyberattack in (page 3[0022-0023]).
Claim 29: Ullom disclose protecting the account comprises one or more of: requesting authentication information associated with the account; logging out of the account on the second computing device; logging out of the account one or more other computing devices; limiting access to the data via the second computing device or limiting access to the data via one or more other computing devices in (page 2[0014-0015]).
Claim 30: Ullom disclose determining an association between a location of the second computing device and a location associated with the cyberattack wherein causing the second computing device to perform the action is further based on association in (pages 1-2[0004]).
Claim 31: Ullom disclose location of the user device is a first geographic location, and wherein the location associated with the event is a second geographic location in (pages 1-2[0004],[0015]).
Claim 32: Ullom disclose the location of the user device is a first geographic location, and wherein the location associated with the event is a second geographic location in (pages 1-2[0004],[0015]).
Claim 33: Ullom disclose causing the second computing device to transition to a protected state for a duration of the cyberattack in (page 3[0019],[0022-0023]).
Claim 35: Ullom disclose the action to protect the data accessbile via the user device comprises encrypting the data, and whereon the action to protect the one or more user accounts comprises limiting access to content on a user account of the one or more user accounts in (page 3[0023]).
Allowable Subject Matter
Claims 6,21 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Applicant’s Arguments
Claims 1-9,11-24,26-33,35 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,314,858 due to missing Terminal Disclaimer.
Applicant argues that Ullom fails to disclose the claimed step of “based on an association between a location of a user device and a location associated with the event, causing by the computing device: the user device to perform an action to protect data accessible via the user device. Rather, Ullom describes that the user device, on its own, detects a trigger event and performs a security operation based on said detection. In response: Examiner respectfully disagree. Applicant’s argument is not persuasive. Ullom specifically discloses additional embodiment in which an application server monitors state information, determines that a trigger event has occurred and causes a user device to perform a security operation. Examiner directs paragraph[0029] where Ullom specifically states “Application server may communicate with the user device to determine state information, such as the location of the user device; how the location of the user has changed over time the battery life of the user device the distance between the use device and another device; loss of a wireless connection between the user device and another device”. Further Ullom in paragraph[0029] specifically discloses “The application server may monitor state information to determine whether the user has violated or is about to violate a state threshold”. Therefore, Ullom teaches a computing device which can be application server 120 receiving information that indicates occurrence of a trigger event. Applicant argues that Ullom fails to disclose "causing, by the computing device: the user device to perform an action to protect data accessible via the user device." (Emphasis added). As discussed above, Ullom describes "the user device may perform a security operation when a first trigger event occurs based on the user device detecting that the user device is approaching and/or has entered a prohibited geographic area." (Ullom, 17). Ullom describes that its user device detects whether it has entered a prohibited geographic and performs a security operation based on said detection (Id.), but Ullom does not describe or suggest that a separate computing device causes the user device to perform the security operation. Accordingly, Ullom fails to disclose "causing, by the computing device: the user device to perform an action to protect data accessible via the user device," as recited in claim 1. (Emphasis added). Alternatively, to the extent that the Office relies on Ullom's user device to allegedly show the claimed "computing device," Applicant submits that Ullom fails to disclose "causing, by the computing device: the user device to perform an action to protect data accessible via the user device." (Emphasis added). As discussed above, Ullom's user device performs a security operation based on detecting a trigger event. (Ullom, 11 16-17). However, absent from the cited disclosure ofUllom is any teaching or suggestion that Ullom's user device (alleged by the Office to show the claimed "computing device"), based on detecting the trigger event, causes a different/second user device to perform the security operation. To the contrary, Ullom clearly states that "the user device may perform a security operation when a first trigger event occurs based on the user device detecting that the user device is approaching and/or has entered a prohibited geographic area" (emphasis added). (Ullom, 1 17; see also 1 16 ("Upon detecting that the trigger event has occurred or is about to occur, the user device may perform a security operation to protect the device")). Accordingly, Ullom fails to disclose the claimed "causing.”. In response: Examiner respectfully disagree and Applicant’s arguments is not persuasive. Claim recites “based on an association between a location of a user device and a location associated with the event”. Ullom discloses in paragraph [0060-0061] where the trigger events may be based on geographic relationships involving the location of the user device. Ullom in paragraph [0029-0030] specifically discloses “an application server connected to a user device containing sensitive data may transmit instructions to the user device to perform a security operation when the application server determines that a trigger event has occurred or is about to occur when the application server determines, based upon an analysis of state information”. Further, Ullom teaches the security function include uploading, deleting sensitive data or locking the user device in paragraph [0016], [0024], [0064]. These actions clearly define actions to protect data accessible via the user device. Examiner strongly disagree with Applicant’s assertion that rejection improperly reads Ullom’s user device onto both the claimed “computing device” and the claimed “user device”, the rejection does not rely on such a reading. Rather, the claimed computing device is met by Ullom’s application server 120 while the claimed user device is met by Ullom’s user device (see paragraph [0037] and fig.1). Ullom specifically discloses claimed “computing device” as application server 120 and claimed “user device” as user device 110 as separate devices communicating through network 130 in fig.1. Applicant argues that Ullom fails to disclose determining by a first computing device based on the occurrence of a cyberattack and a classification of the cyberattack, an action to protect data accessible via a second computing device and causing by the first computing device, the second computing device to perform the action. Examiner respectfully disagree and Applicant’s arguments are not persuasive. The claim merely recites a “classification of the cyberattack”. Under the broadest reasonable interpretation, the claim does not require any particular cyberattack, type, threat level etc. Examiner directs attention to paragraph [0015-0016], [0029], [0057], [0062] where Ullom specifically discloses pointing out different types of trigger events such as unsuccessful login attempts, user failed authentication or unauthorized device attempts for access. These represents different categories of security threats and therefore define as classifications of a cyberattack or security event under a broad interpretation of the claim language. Ullom discloses a first computing device as an application server detects security threats and determines a corresponding security action and causing a second computing device a user 110 device to perform the security action which fully met my Ullom reference. Further, throughout the Ullom’s disclosure or embodiments, it teaches an application server, user device and secondary device where one device determines that a trigger event has occurred and another device performs the security function. Therefore, the rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/HOSUK SONG/Primary Examiner, Art Unit 2435
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