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 Claims 7-24 have been withdrawn.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All objections and rejections not set forth below have been withdrawn.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 “…data comprising synthetic or non-real user behavioral patterns created to train the algorithm without using real user data”. 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 “an output structure comprising a multi-dimensional matrix of similarity scores, each corresponding to a different AAGU dimension”. 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 “without requiring storage or comparison of real user behavioral biometric patterns”. 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 added claim 27 recites that “the algorithm is pre-trained on the AAGU data”. 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 added claim 27 recites that “the algorithm…operates in a user-agnostic mode to authenticate new users without retraining on user-specific data”. 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 “…data comprising synthetic or non-real user behavioral patterns created to train the algorithm without using real user data”. 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 “synthetic” or “non-real” user behavioral patterns, let alone creating such patterns. The specification also seems to be silent with regards to training the algorithm “without using real user 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 “without using real user data”. 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 pattern creation claimed, i.e., patterns created to train the algorithm without using real user data, to be part of their originally filed invention. The mere lack of mentioning use of “real user data” is not sufficient support for claiming that real user data is not used. 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 “an output structure comprising a multi-dimensional matrix of similarity scores, each corresponding to a different AAGU dimension”. 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 a matrix is generally more than two dimensions (i.e. multi-dimensional), the only mention of the output being an output matrix containing scores, explicitly says that matrix is an array (single dimension structure) of AAGU matching scores. The examiner sees this is paragraph 0037 of the instant specification. The examiner notes that “similarity score” is not used in the instant specification. The examiner also notes that paragraph 0032 discusses that “the ML model will produce a set of scores (output matrices) with very high similarity for most BBP of NU”, but this is not with respect to generation of the output structure, and rather is with respect to utilizing the output structure for authentication.
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 “without requiring storage or comparison of real user behavioral biometric patterns”. 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 broadest reasonable interpretation of “real user data” would include raw user data that has been processed, and as such “real user behavioral biometric patterns” would include processed user behavioral biometric patterns. This would include the anonymized BBPs that are discussed in the instant specification. The examiner does not find any mention of “real user…” in the instant specification, let alone not storing 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 comparison of 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 comparison of 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 added claim 27 recites that “the algorithm is pre-trained on the AAGU data”. 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 examiner can find no mention of “pre-training” anything. The examiner suggests that the applicants simply use the language that is in the specification which is simply “training”.
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 added claim 27 recites that “the algorithm…operates in a user-agnostic mode to authenticate new users without retraining on user-specific data”. 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 operating in a “user-agnostic mode”, the examiner notes that this term has not been discussed in the instant specification. The phrase “user-agnostic” would be reasonably interpreted to include some form of knowledge, or lack thereof, about the user. In other words, no knowledge of the user. This may not be the intention of the usage by the applicant, but this interpretation would fall into the scope of this language, and the specification is silent to this scope.
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, which does not mention an algorithm, a user, or a mode. 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 different modes of operation or that the algorithm used to generate the output structure is “user-agnostic”. This language implies that the existing trained models are agnostic but gives no indication as to what the models are agnostic about. 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, a user, or a mode.
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 user-agnosticism of the algorithm. 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 algorithm claimed, i.e., the algorithm used to generate the output structure operating in a user-agnostic mode, to be part of their originally filed invention. The mere lack of mentioning “a user-gnostic mode” is not sufficient support for claiming operation in “a user-agnostic mode”. 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 added claim 27 recites that “the algorithm…operates in a user-agnostic mode to authenticate new users without retraining on user-specific data”. 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.
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 “operates…without retraining on user-specific data”. 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 algorithm claimed, i.e., the algorithm used to generate the output structure operating without retraining on user-specific data, to be part of their originally filed invention. The mere lack of mentioning “retraining on user-specific data” is not sufficient support for claiming operating “without retraining on user-specific data”. 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.
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.
Upon correction of the above issues, the application will require further search and consideration.
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.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW T HENNING/ Primary Examiner, Art Unit 2491