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
Election/Restriction
Applicant’s election without traverse of invention I in the reply filed on 6/16/2025 is acknowledged. Claims 7-24 have been withdrawn.
For brevity’s sake, the restriction requirement made on 5/15/2025 has not been repeated herein, but remains.
Claims 1-6, and 25-27 have been examined.
Response to Arguments
Applicant’s arguments with respect to claims 1-6 and 25-27 have been considered but are moot because the new grounds of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
All objections and rejections not set forth below have been withdrawn.
Specification
Regarding the below objection to the specification, a more detailed explanation can be found in the rejections under 35 USC 112 1st paragraph 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 and 5 have been amended to recite “…to train the algorithm only an artificially-generated users”. The examiner assumes this was meant to read “only on artificially-generated users”. The examiner has considered the portions of the specification cited by the applicant as provided antecedent basis, as well as the remainder of the instant specification, and is unable to find antecedent basis for the added language. As such, the specification is objected to for failing to provide proper antecedent basis for the claimed subject matter.
Claims 1 and 5 have been amended to recite “generating…an output structure comprising a multi-pattern matrix of comparison scores”. The examiner has considered the portions of the specification cited by the applicant as provided antecedent basis, as well as the remainder of the instant specification, and is unable to find antecedent basis for the added language. As such, the specification is objected to for failing to provide proper antecedent basis for the claimed subject matter.
Claims 1 and 5 have been amended to recite “utilizing the output structure to authenticate a new user providing new user BBP without requiring storage or use of original real user behavioral biometric patterns”. First, the way the claim is worded contradicts itself, in that “new user BBP” is used in the authenticating and also falls within the scope of “original real user behavioral biometric patterns”. This contradiction suggests that the specification would not provide proper support for this language. Second, the examiner has considered the portions of the specification cited by the applicant as provided antecedent basis, as well as the remainder of the instant specification, and is unable to find antecedent basis for the added language. As such, the specification is objected to for failing to provide proper antecedent basis for the claimed subject matter.
Newly amended claim 27 recites that “…authenticate new users without training and comparison using actual user algorithms”. The examiner has considered the portions of the specification cited by the applicant as provided antecedent basis, as well as the remainder of the instant specification, and is unable to find antecedent basis for the added language. The specification is silent with respect to “actual user algorithms”. As such, the specification is objected to for failing to provide proper antecedent basis for the claimed subject matter.
Newly amended claim 27 recites that “the algorithm is trained on anonymized or artificially generated users to obtain an agnostic trained algorithm”. The examiner has considered the portions of the specification cited by the applicant as provided antecedent basis, as well as the remainder of the instant specification, and is unable to find antecedent basis for the added 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 1-6 and 25-27 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 and 5 have been amended to recite “…to train the algorithm only an artificially-generated users”. The examiner assumes this was meant to read “only on artificially-generated users”. The examiner has considered the portions of the specification cited by the applicant as provided antecedent basis, as well as the remainder of the instant specification, and is unable to find antecedent basis for the added language. As far as the examiner can tell, the instant specification never mentions training only using artificially generated users/data.
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 applicant’s 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).)
One issue in this case appears to be regarding the addition by amendment of the negative claim limitations consisting of “only on artificially generated users”. While there is no in haec verba requirement, newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure. The trouble is that there is no such disclosure, easy though it is to imagine it. Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1328, 56 USPQ2d 1481, 1487 (Fed. Cir. 2000). The Examiner does not question whether the claim language is inconsistent with, or contradictory to, the teachings of the specification. But, the Examiner believes that the specification does not clearly and concisely disclose to the skilled artisan that the inventors considered this particular training claimed, i.e., train the algorithm only on artificially-generated users, to be part of their originally filed invention. There is therefore no force to the applicant’s statements that the written description requirement was satisfied because the disclosure revealed a broad invention from which the later-filed claims carved out a more specific version.
Claims 1 and 5 have been amended to recite “generating…an output structure comprising a multi-pattern matrix of comparison scores”. The examiner has considered the portions of the specification cited by the applicant as provided antecedent basis, as well as the remainder of the instant specification, and is unable to find antecedent basis for the added language. While there is mention of generating a comparison score by comparing matrices, there is no mention of a multi-pattern matrix of comparison scores. The specification is silent to a “multi-pattern matrix”.
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 applicant’s 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).)
Claims 1 and 5 have been amended to recite “utilizing the output structure to authenticate a new user providing new user BBP without requiring storage or use of original real user behavioral biometric patterns”. First, the way the claim is worded contradicts itself, in that “new user BBP” is used in the authenticating and also falls within the scope of “original real user behavioral biometric patterns”. This contradiction suggests that the specification would not provide proper support for this language. Second, the examiner has considered the portions of the specification cited by the applicant as provided antecedent basis, as well as the remainder of the instant specification, and is unable to find antecedent basis for the added language. The specification is silent to “original real user behavioral biometric patterns”. In fact, the word “real” is not found in the specification. The examiner does not find any mention of “real user…” in the instant specification, let alone not storing or using real user BBP.
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 applicant’s 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).)
One issue in this case appears to be regarding the addition by amendment of the negative claim limitation of “…without requiring storage or use of original real user behavioral patterns”. While there is no in haec verba requirement, newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure. The trouble is that there is no such disclosure, easy though it is to imagine it. Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1328, 56 USPQ2d 1481, 1487 (Fed. Cir. 2000). The Examiner does not question whether the claim language is inconsistent with, or contradictory to, the teachings of the specification. But, the Examiner believes that the specification does not clearly and concisely disclose to the skilled artisan that the inventors considered this particular authentication claimed, i.e., utilizing the output structure to authenticate a new user…without requiring storage or use of original real user behavioral biometric patterns, to be part of their originally filed invention. The mere lack of mentioning this storage or comparison is not sufficient support for claiming that real user BBP is not stored or compared. There is therefore no force to the applicant’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 more specific version.
Newly amended claim 27 recites that “…authenticate new users without training and comparison using actual user algorithms”. The examiner has considered the portions of the specification cited by the applicant as provided antecedent basis, as well as the remainder of the instant specification, and is unable to find antecedent basis for the added language. The specification is silent with respect to “actual user algorithms”.
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 applicant’s 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).)
Newly amended claim 27 recites that “the algorithm is trained on anonymized or artificially generated users to obtain an agnostic trained algorithm”. The examiner has considered the portions of the specification cited by the applicant as provided antecedent basis, as well as the remainder of the instant specification, and is unable to find antecedent basis for the added language.
First, “the algorithm” claimed is used to generate the output structure, not to authenticate a user. The examiner does not find support in the specification for using “the algorithm” for both.
Further, regarding the newly added language of the algorithm being trained on AAGU to obtain an agnostic trained algorithm, the examiner notes that the term “agnostic trained algorithm” has not been discussed in the instant specification. The examiner does find “agnostic existing trained models” but there is no discussion as to how these are generated.
Further, the examiner has looked for mentions of “agnostic” in the instant specification. There are three uses of the word “agnostic” in the instant specification. One is in the title of the invention. The second mention is in paragraph 0035, stating that “the idea is that instead of training and comparing actual user models, the system uses agnostic existing trained models that identify different users based on the same type of input (biometric pattern/BBP or other type of data)”, which does not mention how the agnostic existing trained models are obtained/generated. The third and final mention is in Paragraph 0042, stating that “the behavioral biometrics pattern (BBP) can be agnostic in terms of what a behavioral biometrics pattern is”, which doesn’t mention an algorithm or how it would be obtained.
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 applicant’s 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).)
Due to the above issues, the person having ordinary skill in the art would be unable to ascertain whether or not the applicant was in possession of the invention at the time of filing. Therefore, the claims are rejected for failing to meet the written description requirement of 35 USC 112 1st Paragraph.
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).
The examiner suggests that the applicants use language that is explicitly support by the specification. Doing so will avoid these issues as well as help create a strong foundation for any patents that may issue from this application. In other words, using directly quoted limitations from the specification would help avoid these issues we keep running into.
Upon correction of the above issues, the application will require further search and consideration.
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 1-6, and 25-27 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 and 5 have been amended to recite “utilizing the output structure to authenticate a new user providing new user BBP without requiring storage or use of original real user behavioral biometric patterns”. The way the claim is worded contradicts itself, in that “new user BBP” is used in the authenticating and also falls within the scope of “original real user behavioral biometric patterns”. As such, the scope of the claim does not appear possible.
Claim 27 has been amended to recite that “the algorithm is trained on anonymized or artificially generated users to obtain an agnostic trained algorithm operates to authenticate new users…” which does not appear to be grammatically correct and appears to be incomplete.
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 1-6, and 25-27 have been rejected.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 12,271,456 briefly mentions the idea of utilizing synthesized user behavioral data for training authentication models to avoid violating user privacy.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW T HENNING whose telephone number is (571)272-3790. The examiner can normally be reached Monday-Friday 9AM-3PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Korzuch can be reached at (571)272-7589. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW T HENNING/ Primary Examiner, Art Unit 2491
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