NON-FINAL OFFICE ACTION
REISSUE OF U.S. PATENT NO. 11,709,944
TABLE OF CONTENTS
1. ACKNOWLEDGEMENTS 3
2. ADDITIONAL TERMS 3
3. REISSUE PROCEDURAL REMINDERS 4
4. OTHER PROCEEDINGS 5
5. STATUS OF CLAIMS 5
6. PRIORITY AND AIA STATUS 6
7. INFORMATION CONSIDERED 6
8. OWNERSHIP 7
9. DECLARATION 7
10. CLAIM OBJECTIONS 8
11. PRIOR ART CITED 9
12. BROADEST REASONABLE INTERPRETATION (BRI) 9
13. CLAIM INTERPRETATION UNDER 35 USC § 112(f) 11
13.1. Functional Phrase #1 or FP#1 13
13.1.1. Prong (A) 14
13.1.2. Prong (B) 17
13.1.3. Prong (C) 18
13.1.4. Corresponding Structure for FP#1 19
14. CLAIM REJECTIONS – 35 USC § 251 (Defective Declaration) 20
15. CLAIM REJECTIONS – 35 USC § 112(a) 21
15.1. No Algorithm To Satisfy The Written Description Requirement 21
16. CLAIM REJECTIONS – 35 USC § 112(b) 25
16.1. Insufficient Disclosure Of Corresponding Structure 25
16.2. Conclusion of 35 USC § 112(b) Rejection 26
17. CLAIM REJECTIONS – 35 USC § 102 26
17.1. Anticipated by Cohen 26
18. CONCLUSION 33
ACKNOWLEDGEMENTS
This non-final Office action addresses U.S. reissue application No. 18/244,004 (“Instant Application”). Based upon a review of the Instant Application, the actual filing date is 08 September 2023 (“Actual Filing Date”).
The Instant Application is a reissue application of U.S. Patent No. 11,709,944 (“Patent Under Reissue” or “’944 Patent”) titled “INTELLIGENT ADVERSARY SIMULATOR.”
An application for the Patent Under Reissue was filed on 27 August 2020 (“Base Application Filing Date”) and assigned by the Office non-provisional U.S. patent application number 17/004,392 (“Base Application” or “’392 Application”) and issued on 25 July 2023 with claims 1–20 (“Originally Patented Claims”).
ADDITIONAL TERMS
The following terms may appear in this Office action and, unless expressly noted otherwise, are defined as follows:
“POSITA” refers to a Person of Ordinary Skill in the Art.
“BRI” refers to Broadest Reasonable Interpretation.
“MPEP” refers to Manual of Patent Examining Procedure, Ninth Edition, Rev. 01.2024.
“IFW” refers to Image File Wrapper.
“35 USC” refers to Title 35 of the United States Code.
“37 CFR” refers to Title 37 of the Code of Federal Regulations.
“AIA ” refers to America Invents Act.
“Original Application” means the prosecution history of the Base Application, including the applications in the patent family’s entire prosecution history. See MPEP § 1412.02.
“Original Disclosure” means the substantive sections of the Base Application (i.e., the abstract, drawings, specification, and original claims) that were present in the Base Application on the Base Application Filing Date.
“Applicant” (uppercase) refers to the Applicant of the Instant Application.
“applicant” (lowercase) refers to an applicant(s) generally.
“patent owner” (lowercase) refers to a patent owner(s) generally and not the Applicant.
“Examiner” (uppercase) refers to the Examiner of the Instant Application.
“examiner” (lowercase) refers to an examiner(s) generally, e.g. the examiner of the Base Application, or any examiner(s) other than the Examiner.
REISSUE PROCEDURAL REMINDERS
Disclosure of other proceedings. Applicant is reminded of the continuing obligation under 37 CFR § 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. Applicant is further reminded of the continuing obligation under 37 CFR § 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue appli-cation.
These disclosure obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 CFR § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
OTHER PROCEEDINGS
Based upon Applicant’s statements as set forth in the Instant Application and/or the Examiner’s independent review of the Patent Under Reissue itself and its prosecution history, the Examiner cannot locate any concurrent proceedings before the Office, ongoing litigation, previous reexaminations (ex parte or inter partes), supplemental examinations, or certificates of correction regarding the Patent Under Reissue.
STATUS OF CLAIMS
Claims 1–20, as set forth in the preliminary amendment filed on 27 May 2025, are currently pending (“Pending Claims”) and currently examined (“Examined Claims”).
Regarding the Examined Claims, and as a result of this Office action:
Claims 1–20 are rejected under 35 USC § 112(a).
Claims 1–20 are rejected under 35 USC § 112(b).
Claims 1–20 are rejected under 35 USC § 251.
Claims 1–20 are rejected under 35 USC § 102.
Claims 1–20 are objected to.
PRIORITY AND AIA STATUS
Domestic Priority. Based upon a review of the Instant Application and the Patent Under Reissue, the Examiner finds that in the Instant Application there is a claim for benefit of domestic priority under 35 USC §§ 120 or 119(e) to provisional application no. 62/893,350, filed on 29 August 2019 (“Provisional Application”). To the extent the disclosure of the Provisional Application supports the Pending Claims under 35 USC § 112, the supported claims receive benefit of the filing date of the Provisional Application.
AIA Status. Because the Instant Application does not contain a claim having an effective date before March 16, 2013, the AIA provisions apply. In the event the determination of the status of the application as subject to AIA 35 USC §§ 102 and 103 is incorrect, any correction of the statutory basis 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.
INFORMATION CONSIDERED
The Information Disclosure Statements filed 08 September 2023 and 14 May 2025 have been considered. Initialed copies of the Form 1449 are enclosed herewith.
In accordance with MPEP § 1406, the Examiner has reviewed and considered the prior art cited or “of record” in the original prosecution of the Patent Under Reissue. Applicant is reminded that a listing of the information cited or “of record” in the original prosecution of the Patent Under Reissue has been considered in the Instant Application and need not be resubmitted.
OWNERSHIP
The Statement of Ownership under 37 CFR 3.73(c), filed 08 September 2023, is improper because it does not identify an application no./patent no., it includes incomplete reel/frame information, and it does not include a check mark in the last box (indicating, when checked, that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11).
DECLARATION
The reissue declaration filed on 06 May 2025 (“May 2025 Reissue Declaration”) is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR § 1.175 and MPEP § 1414.
Applicant is respectfully reminded, “the oath/declaration must specifically identify an error” and “[a]ny error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.” MPEP § 1414 II.C. (emphasis added).
Applicant is also respectfully reminded, “Thus, an error under 35 U.S.C. 251 has not been presented where the correction to the patent is one of spelling, or grammar, or a typographical, editorial or clerical error which does not cause the patent to be deemed wholly or partly inoperative or invalid for the reasons specified in 35 U.S.C. 251.” MPEP § 1402.
The reissue declaration states “The reason this application was submitted for reissue was for reasons of other errors. Applicant amended claims 1, 2, 4, 6, 10, 11, 14, 16, 19, and 20 from the language in granted US patent 11,709,944 to clear up antecedent basis errors, grammar issues, and term consistency errors in the granted claims. No new matter has been added. Applicant does not believe the amendments to be a broadening but is seeking a reissue of this granted patent to eliminate any third party from asserting the amendments sought to the granted claims was a broadening.” See May 2025 Reissue Declaration at page 2 of 2.
Therefore, the May 2025 Reissue Declaration appears to specify that the correction to the patent is one of spelling, or grammar, or a typographical, editorial or clerical error, and thus does not identify an appropriate error under § 251. Accordingly, the reissue declaration does not comply with 37 CFR § 1.175. Moreover, even if it were understood as a proper error, the reissue declaration does not identify the error by reference to specific claim language wherein lies the error. Accordingly, for this additional reason, the reissue declaration does not comply with 37 CFR § 1.175.
Furthermore, the May 2025 Reissue Declaration is by the assignee but does not indicate that the application for the original patent was filed under 37 CFR § 1.46 by the assignee of the entire interest. Although Applicant states “Applicant does not believe the amendments to be a broadening,” the claim amendments clearly broaden. Thus, the box indicating “The application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest” must be checked, if applicable, or, if not applicable, then a declaration by the inventor must be submitted instead.
A reissue declaration, properly identifying at least one error which is relied upon to support the reissue application, is required in response to this Office action.
CLAIM OBJECTIONS
37 CFR § 1.173(d) states:
(d) Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding “Large Tables” (§ 1.58(c)), a “Computer Program Listing Appendix” (§ 1.96(c)), a “Sequence Listing” (§ 1.821(c)), and a “Sequence Listing XML” (§ 1.831(a)) upon filing or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined.
Based upon a review of the preliminary amendment filed on 27 May 2025, and in light of 37 CFR § 1.173(d), the Examiner finds amended claims 1–20 are improperly marked up and include changes not relative to the patent being reissued. All matter to be added or deleted by reissue must be indicated by underlining and single bracketing, respectively, in accordance with Rule 173(d). Moreover, all changes to the claims must be made relative to the patent being reissued, in accordance with Rule 173(d). Appropriate correction is required.
PRIOR ART CITED
The following prior art patents and/or printed publications are cited below:
U.S. Patent 6,952,779 (“Cohen”).
The prior art made of record and considered pertinent to Applicant’s disclosure, but not relied upon to reject the claims in this Office action, is listed on the attached document titled “Notice of References Cited” (PTO-892). Unless expressly noted otherwise by the Examiner, all documents listed on the PTO-892 are cited in their entirety.
BROADEST REASONABLE INTERPRETATION (BRI)
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111, MPEP § 2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01 I. Moreover, it is improper to import claim limitations from the specification, e.g., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP § 2111.01 II. Therefore, unless otherwise noted below, the Examiner will interpret the limitations of the Pending Claims using the broadest reasonable interpretation.
After careful review of the original specification, the Examiner finds he cannot locate any lexicographic definitions (either express lexicographic definitions or implied lexicographic definitions) with the required clarity, deliberateness, and precision. Because the Examiner cannot locate any lexicographic definitions with the required clarity, deliberateness, and precision, the Examiner concludes that Applicant is not his own lexicographer. See MPEP § 2111.01 IV.
The Examiner hereby adopts the following interpretations under the broadest reasonable interpretation standard. In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), the Examiner points to these other sources to support his interpretation of the claims.1 Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language. Finally, the following list is not intended to be exhaustive in any way:
adversary “1. An opponent; an enemy. See Synonyms at opponent.” The American Heritage Dictionary of the English Language (3rd ed. 1992).
intelligent “5. Computer Science. Having certain data storage and processing capabilities: an intelligent terminal; intelligent peripherals.” The American Heritage Dictionary of the English Language (3rd ed. 1992).
simulator “(2) (modeling and simulation) (software) A device, computer program, or system that performs simulation. See also: emulator. (C) 610.3-1989w, 610.10-1994w, 610.12-1990.” The Authoritative Dictionary of IEEE Standards Terms (7th Ed. 2000).
CLAIM INTERPRETATION UNDER 35 USC § 112(f)
The following is a quotation of 35 USC § 112(f):
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
“Application of 35 U.S.C. 112(f) is driven by the claim language, not by applicant’s intent or mere statements to the contrary included in the specification or made during prosecution. See In re Donaldson Co., 16 F.3d at 1194, 29 USPQ2d at 1850 (stating that 35 U.S.C. 112, sixth paragraph ‘merely sets a limit on how broadly the PTO may construe means-plus-function language under the rubric of reasonable interpretation’).” MPEP § 2181 I.
“A claim limitation is presumed to invoke 35 U.S.C. 112(f) when it explicitly uses the term ‘means’ or ‘step’ and includes functional language. The presumption that 35 U.S.C. 112(f) applies is overcome when the limitation further includes the structure, material or acts necessary to perform the recited function.” MPEP § 2181 I.
“By contrast, a claim limitation that does not use the term ‘means’ or ‘step’ will trigger the rebuttable presumption that 35 U.S.C. 112(f) does not apply. […]. Even in the face of this presumption, the examiner should nonetheless consider whether the presumption is overcome. The presumption that 35 U.S.C. 112(f) does not apply to a claim limitation that does not use the term ‘means’ is overcome when ‘the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.’ Williamson[ v. Citrix Online, LLC], 792 F.3d [1339,] 1349[…] (Fed. Cir. 2015) (en banc) (quoting Watts v. XL Systems, Inc., 232 F.3d 877, 880, 56 USPQ2d 1836, 1838 (Fed. Cir. 2000).” MPEP § 2181 I. (internal quotations of Williamson removed).
However, “section 112, ¶ 6, […] with respect to steps, […] is implicated only when steps plus function without acts are present. […] claiming a step by itself, or even a series of steps, does not implicate section 112, ¶ 6.” O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir. 1997) (emphasis in original).
In other words, “[m]erely claiming a step without recital of a function is not analogous to a means plus a function.” O.I. Corp. v. Tekmar Co., id. (emphasis added).
Accordingly, examiners will apply 35 U.S.C. 112(f) to a claim limitation if it meets the following 3-prong analysis:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
MPEP § 2181 I.
“Each claim must be independently reviewed in order to determine if it is subject to the requirements of section 112, ¶ 6.” O.I. Corp. v. Tekmar Co., id.
In view of the above MPEP and Federal Circuit guidance, the Examiner has evaluated each claim under the 3-Prong Analysis set forth in MPEP § 2181 I. to determine whether any of the claim elements are subject to the requirements of § 112(f). In the sections that follow, the Examiner will identify each claim limitation that is subject to the requirements of § 112(f).
Functional Phrase #1 or FP#1
The first functional phrase to be considered is “during a simulation, the intelligent-adversary simulator is configured to calculate one or more paths of least resistance for a cyber threat in the cyber-attack scenario to compromise 1) a virtualized instance of a source device for the compromise by the cyber threat, 2) through to other virtualized instances of devices and their associated users of the virtualized instance of the network, 3) until reaching an end goal of the cyber-attack scenario in the virtualized instance of the network, where all of the above instances being based on historic knowledge of connectivity and behaviour patterns of the devices and associated users within the actual network under analysis […] wherein the intelligent-adversary simulator is configured to calculate the paths of least resistance from the virtualized instance of the source device of the compromise through to other virtualized instances of devices and their associated users of the virtualized instance of the network until reaching the end goal of the cyber-attack scenario without calculating every theoretically possible path to compromise the virtualized instances of devices and their associated users of the virtualized instance of the network to achieve the end goal of the cyber-attack scenario […].” Claim 1 and similarly claim 11 (“Functional Phrase #1” or “FP#1”).
For purpose of discussion below, FP#1 is broken into the following three parts:
(1) “intelligent-adversary simulator” (“Introductory Phrase of FP#1);
(2) “configured to” (“Linking Phrase of FP#1); and
(3) “during a simulation, the intelligent-adversary simulator is configured to calculate one or more paths of least resistance for a cyber threat in the cyber-attack scenario to compromise 1) a virtualized instance of a source device for the compromise by the cyber threat, 2) through to other virtualized instances of devices and their associated users of the virtualized instance of the network, 3) until reaching an end goal of the cyber-attack scenario in the virtualized instance of the network, where all of the above instances being based on historic knowledge of connectivity and behaviour patterns of the devices and associated users within the actual network under analysis […] wherein the intelligent-adversary simulator is configured to calculate the paths of least resistance from the virtualized instance of the source device of the compromise through to other virtualized instances of devices and their associated users of the virtualized instance of the network until reaching the end goal of the cyber-attack scenario without calculating every theoretically possible path to compromise the virtualized instances of devices and their associated users of the virtualized instance of the network to achieve the end goal of the cyber-attack scenario […]” (“Function of FP#1”).
Prong (A)
In accordance with the MPEP, Prong (A) requires “the claim limitation uses the term ‘means’ […] or a term used as a substitute for ‘means’ that is a generic placeholder […] for performing the claimed function.”2 MPEP § 2181 I. (“Prong (A)”).3
As an initial matter, the Examiner finds that FP#1 does not use the term “means.” Therefore, the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112(f) is not invoked can be overcome. “Even in the face of this presumption, the examiner should nonetheless consider whether the presumption is overcome.” MPEP § 2181 I.
With respect to the presumption that 35 USC § 112(f) is not invoked, “[t]he question is not whether a claim term recites any structure but whether it recites sufficient structure—a claim term is subject to § 112 ¶ 6 if it recites ‘function without reciting sufficient structure for performing that function.’ Williamson, 792 F.3d at 1348 (emphasis added) (quoting Watts, 232 F.3d at 880). [Emphasis in original.]” Egenera, Inc. v. Cisco Systems, Inc., 972 F.3d 1367, 1374 (Fed. Cir. 2020).
“And, again, the question is not whether [the claim term] is utterly devoid of structure but whether the claim term recites sufficient structure to perform the claimed functions.” Egenera at 1374 (emphasis added).
To help understand the meaning of “sufficient structure,” the MPEP and the Federal Circuit have stated that:
Sufficient structure exists when the claim language specifies the exact structure that performs the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.
See MPEP § 2181 I. quoting TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008).
Moreover, in assessing whether or not FP#1 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#1 in isolation, but the entire FP#1 including the Function of FP#1. See MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1342 (Fed. Cir. 2019) (“In assessing whether the claim limitation is in means-plus-function format, we do not merely consider the introductory phrase (e.g., ‘mechanical control assembly’) in isolation, but look to the entire passage including functions performed by the introductory phrase.”).
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#1 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#1. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#1, the Examiner finds that the claim language itself within FP#1 does not recite an algorithm for accomplishing the Function of FP#1. The Examiner also finds that the remainder of claim 1 also does not recite an algorithm for accomplishing the Function of FP#1. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#1 is not expressly recited in claim 1.
Furthermore, the Examiner has looked to both general and subject matter specific dictionaries4 and finds no evidence that the Introductory Phrase of FP#1, i.e., the term “intelligent-adversary simulator,” has achieved recognition as a term denoting structure for performing the Function of FP#1. See above section titled “BROADEST REASONABLE INTERPRETATION (BRI).”
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “intelligent-adversary simulator” has achieved recognition as denoting structure for performing the Function of FP#1.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “intelligent-adversary simulator” is not an art-recognized structure to perform the Function of FP#1, and claim 1 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “intelligent-adversary simulator” is not an art-recognized structure to perform the Function of FP#1, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#1 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#1 does not include sufficient structure for performing the Function of FP#1. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “intelligent-adversary simulator” is a generic placeholder for performing the Function of FP#1, and therefore FP#1 meets Prong (A).
Prong (B)
In accordance with the MPEP, Prong (B) requires “the term ‘means’ […] or the generic placeholder is modified by functional language, typically, but not always linked by the transition word ‘for’ […] or another linking word or phrase, such as ‘configured to’ or ‘so that.’” MPEP § 2181 I. (“Prong (B)”).
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#1 (generic placeholder) is modified by the Function of FP#1 (functional language) linked by the Linking Phrase of FP#1. Therefore, the Examiner concludes that FP#1 meets Prong (B).
Prong (C)
In accordance with the MPEP, Prong (C) requires “the term ‘means’ […] or the generic placeholder is not modified by sufficient structure […] for performing the claimed function.” MPEP § 2181 I. (“Prong (C)”).
The recitations to “where one or more processing units are configured to execute software instructions associated with the intelligent-adversary simulator and the formatting module” and “where one or more non-transitory storage devices are configured to store at least software associated with the intelligent-adversary simulator” are not determined to be sufficient structure that modifies the Introductory Phrase of FP#1. In particular, these recitations do not include an algorithm for performing the Function of FP#1. Thus, based upon a review of FP#1, and for reasons already discussed above, the Examiner finds that FP#1 does not contain sufficient structure for performing the entire Function of FP#1. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#1 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#1 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#1.
Because FP#1 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#1 meets Prong (C). Because FP#1 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#1 invokes § 112(f).
Corresponding Structure for FP#1
“The next step in construing a means-plus-function claim limitation is to look to the specification and identify the corresponding structure for that function.” In re Aoyama, 656 F3d 1293, 1297 (Fed. Cir. 2011) quoting Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir. 2004). “Under this second step, structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Aoyama, 656 F3d at 1297 quoting Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003).
Furthermore, if the claimed phase is meant to cover software, “[i]t is well-established that the corresponding structure for a function performed by a software algorithm is the algorithm itself.” EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 621 (Fed. Cir. 2015). In other words, “[i]f special programming is required for a general-purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies.” Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012).
Based upon a review of the Patent Under Reissue and the Original Disclosure, the Examiner is unable to locate sufficient corresponding structure (e.g., a particular algorithm) that is clearly linked or associated with the Function of FP#1.
However, Applicant’s specification discloses,
Note, during a simulation, the intelligent-adversary simulator can calculate one or more paths of least resistance for a cyber threat in the cyber-attack scenario to compromise 1) a virtualized instance of a source device, previously compromised by the cyber threat, 2) through to other virtualized instances of components of the virtualized network, 3) until reaching an end goal of the cyber-attack scenario in the virtualized network. The simulation and compromising of the devices is all based on historic knowledge of connectivity and behaviour patterns of users and devices within the actual network under analysis.
See ’944 Patent at C1:L53–63.
Note, during a simulation, the intelligent-adversary simulator can be coded to calculate one or more paths of least resistance for a cyber threat in the cyber-attack scenario to compromise 1) a virtualized instance of a source device, originally previously compromised by the cyber threat, 2) through to other virtualized instances of components of the virtualized network, 3) until reaching an end goal of the cyber-attack scenario in the virtualized network. The graph, data, security, pathways, devices, user behaviour, etc. are all based on actual historic knowledge of connectivity and behaviour patterns of users and devices within the actual network under analysis.
See ’944 Patent at C4:L5–18.
The intelligent-adversary simulator can calculate the paths of least resistance from the virtualized instance of the source device through to other virtualized instances of components of the virtualized network until reaching an end goal of the cyber-attack scenario; but not calculate every theoretically possible path from the virtualized instance of the source device to the end goal of the cyber-attack scenario, each time a hop is made from one device in the virtualized network to another device in the virtualized network in order to reduce an amount of computing cycles needed by the one or more processing units as well as an amount of memory storage needed in the one or more non-transitory storage mediums.
See ’944 Patent at C2:L7–20.
This disclosure is insufficient because the specification merely reiterates the Function of FP#1 and does not describe sufficient corresponding structure, e.g., in the form of an algorithm, to achieve the Function of FP#1.
Because each of the Patent Under Reissue and the Original Disclosure fails to clearly link or associate the Function of FP#1 to some corresponding structure, claims 1–20 are indefinite under 35 USC § 112(b). A rejection under 35 USC § 112(b) is set forth below for claims 1–20.
CLAIM REJECTIONS – 35 USC § 251 (Defective Declaration)
Claims 1–20 are rejected as being based upon a defective reissue declaration under 35 USC § 251 as set forth above. See 37 CFR § 1.175.
The nature of the defects in the declaration is set forth in the discussion above in this Office action.
CLAIM REJECTIONS – 35 USC § 112(a)
The following is a quotation of 35 USC § 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.
Claims 1–20 are rejected under 35 USC § 112(a) 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, at the time the application was filed, had possession of the claimed invention.
No Algorithm To Satisfy The Written Description Requirement
Claim 11 does not comply with the written description requirement because it recites a computer-implemented feature without an algorithm disclosed for achieving the particular computer-implemented feature. This rejection applies regardless of whether § 112(f) is invoked.5
Particularly, claim 11 recites the following computer-implemented feature:
“wherein, during a simulation, the intelligent-adversary simulator is configured to calculate one or more paths of least resistance for the cyber threat in the cyber-attack scenario to compromise 1) a virtualized instance of a source device for the compromise by the cyber threat, 2) through to other virtualized instances of devices and their associated users of the virtualized instance of the network, 3) until reaching an end goal of the cyber-attack scenario in the virtualized instance of the network, where all of the above instances being based on historic knowledge of connectivity and behaviour patterns of the users and the devices within the actual network under analysis; […] calculating the paths of least resistance from the virtualized instance of the source device of the compromise through to other virtualized instances of devices and their associated users of the virtualized instance of the network until reaching the end goal of the cyber-attack scenario without calculating every theoretically possible path to compromise the virtualized instances of devices and their associated users of the virtualized instance of the network to achieve the end goal of the cyber-attack scenario to reduce an amount of computing cycles needed by one or more processing units and an amount of memory storage needed in one or more non-transitory storage devices thereby reducing a number of times a hop is made from one device in the virtualized instance of the network to another device in the virtualized instance of the network.”
Applicant is respectfully reminded, for computer-implemented claims, “examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.” MPEP § 2161.01 I.
Applicant’s specification does not describe an algorithm that performs the claimed calculation of one or more paths in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.
For example, Applicant’s specification discloses,
Note, during a simulation, the intelligent-adversary simulator can calculate one or more paths of least resistance for a cyber threat in the cyber-attack scenario to compromise 1) a virtualized instance of a source device, previously compromised by the cyber threat, 2) through to other virtualized instances of components of the virtualized network, 3) until reaching an end goal of the cyber-attack scenario in the virtualized network. The simulation and compromising of the devices is all based on historic knowledge of connectivity and behaviour patterns of users and devices within the actual network under analysis.
See ’944 Patent at C1:L53–63.
Note, during a simulation, the intelligent-adversary simulator can be coded to calculate one or more paths of least resistance for a cyber threat in the cyber-attack scenario to compromise 1) a virtualized instance of a source device, originally previously compromised by the cyber threat, 2) through to other virtualized instances of components of the virtualized network, 3) until reaching an end goal of the cyber-attack scenario in the virtualized network. The graph, data, security, pathways, devices, user behaviour, etc. are all based on actual historic knowledge of connectivity and behaviour patterns of users and devices within the actual network under analysis.
See ’944 Patent at C4:L5–18.
The intelligent-adversary simulator can calculate the paths of least resistance from the virtualized instance of the source device through to other virtualized instances of components of the virtualized network until reaching an end goal of the cyber-attack scenario; but not calculate every theoretically possible path from the virtualized instance of the source device to the end goal of the cyber-attack scenario, each time a hop is made from one device in the virtualized network to another device in the virtualized network in order to reduce an amount of computing cycles needed by the one or more processing units as well as an amount of memory storage needed in the one or more non-transitory storage mediums.
See ’944 Patent at C2:L7–20.
However, such disclosure is not an algorithm (e.g., the necessary steps and/or flowcharts) that performs the claimed feature in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.
Applicant is also reminded, “[i]f the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under 35 USC 112(a) or pre-AIA 35 USC 112, first paragraph, for lack of written description must be made.” MPEP § 2161.01 I. Phrased another way, “[i]t is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015) (reversing and remanding the district court’s grant of summary judgment of invalidity for lack of adequate written description where there were genuine issues of material fact regarding ‘whether the specification show[ed] possession by the inventor of how accessing disparate databases is achieved’).” MPEP 2161.01 I (last paragraph).
Therefore, because an algorithm for the computer-implemented feature is not disclosed in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter, and in accordance with MPEP § 2161.01, claim 11 is rejected for lack of written description.
Dependent claims 12–20 fail to cure this deficiency of independent claim 11 (set forth directly above) and are rejected accordingly.
Claims 1–10 contain language similar to claims 11–20 as discussed in the preceding paragraphs, and for reasons similar to those discussed above, claims 1–10 are also rejected under 35 USC § 112 as failing to comply with the written description requirement.
CLAIM REJECTIONS – 35 USC § 112(b)
The following is a quotation of 35 USC § 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.
Claims 1–20 are rejected under 35 USC § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Insufficient Disclosure Of Corresponding Structure
As noted above, FP#1 invokes 35 USC § 112(f). See above section titled “CLAIM INTERPRETATION UNDER 35 USC § 112(f).” However, for each functional phrase, the Original Disclosure fails to disclose the corresponding structure for performing the entire claimed function and to clearly link the structure to the function. See above section titled “Corresponding Structure for FP#1” for an explanation of why the Original Disclosure does not include the corresponding structure. Therefore, claims 1–20 are indefinite and are rejected under 35 USC § 112(b).
Conclusion of 35 USC § 112(b) Rejection
The Examiner has considered all limitations in the Examined Claims even though some claim limitations are indefinite. See MPEP § 2143.03 I. ¶1 noting that “[a] claim limitation which is considered indefinite cannot be disregarded.” However, the Examiner concludes that because claims 1–20 are indefinite under § 112(b), these claims, by definition, cannot be properly construed. See e.g. Honeywell International Inc. v. ITC, 341 F.3d 1332, 1342 (Fed. Cir. 2003) (“Because the claims are indefinite, the claims, by definition, cannot be construed.”). Therefore, in accordance with MPEP § 2173.06 and the USPTO’s policy of trying to advance prosecution by providing prior art rejections (or indicating allowance of the claims) even though certain claims are indefinite, these indefinite claims are construed and the prior art is currently applied as much as practically possible. Applicant is reminded that when a particular § 112(b) rejection is overcome by Applicant, and the claim limitation can then be properly construed, the Examiner will reevaluate the prior art using this proper claim construction and then reassess the patentability of the claim over the prior art.
CLAIM REJECTIONS – 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Anticipated by Cohen
Claims 1–20 are rejected under 35 USC § 102(a)(1) as being anticipated by Cohen.
As per claim 1, Cohen discloses:
An apparatus (e.g., see Fig. 2), comprising:
an intelligent-adversary simulator configured to construct a graph of a virtualized instance of a network including: i) devices connecting to the virtualized instance of the network and one or more users associated with a respective device and ii) connections and pathways through the virtualized instance of the network (C2:L54–C3:L45; C5:L22–26; C6:L4–47);
wherein the virtualized instance of the network is based on an actual network with the devices and associated users under analysis, wherein the graph of the virtualized instance of the network is constructed to run in a simulated cyber-attack scenario on the virtualized instance of the network to identify one or more critical devices connecting to the virtualized instance of the network from a security standpoint (C2:L54–C3:L45; C5:L22–26; C6:L4–47);
wherein the critical devices connecting to the virtualized instance of the network are configured to have priority to allocate security resources, at least based on information from a report and based on the simulated cyber-attack scenario (C8:L31–C9:L6; see also C2:L54–C3:L45; C5:L22–26; C6:L4–47);
wherein, during a simulation, the intelligent-adversary simulator is configured to calculate one or more paths of least resistance for a cyber threat in the cyber-attack scenario to compromise 1) a virtualized instance of a source device for the compromise by the cyber threat, 2) through to other virtualized instances of devices and their associated users of the virtualized instance of the network, 3) until reaching an end goal of the cyber-attack scenario in the virtualized instance of the network, where all of the above instances being based on historic knowledge of connectivity and behaviour patterns of the devices and associated users within the actual network under analysis (Fig. 1; C7:L1–C9:L43; C10:L43–59);
a formatting module configured to generate the report with the identified critical devices connecting to the virtualized instance of the network that should have the priority to allocate the security resources, based upon the cyber-attack scenario in the virtualized instance of the network (C8:L31–C9:L6; C10:L60–C11:L16);
where one or more processing units are configured to execute software instructions associated with the intelligent-adversary simulator and the formatting module (C9:L44–62);
where one or more non-transitory storage devices are configured to store at least software associated with the intelligent-adversary simulator (C9:L44–62); and
wherein the intelligent-adversary simulator is configured to calculate the paths of least resistance from the virtualized instance of the source device of the compromise through to other virtualized instances of devices and their associated users of the virtualized instance of the network until reaching the end goal of the cyber-attack scenario without calculating every theoretically possible path to compromise the virtualized instances of devices and their associated users of the virtualized instance of the network to achieve the end goal of the cyber-attack scenario to reduce an amount of computing cycles needed by the one or more processing units and an amount of memory storage needed in the one or more non-transitory storage devices thereby reducing a number of times a hop is made from one device in the virtualized instance of the network to another device in the virtualized instance of the network (Fig. 1; C7:L1–C9:L43; C10:L43–59).
As per claim 2, Cohen discloses:
The apparatus of claim 1, further comprising: wherein the intelligent-adversary simulator is configured to create the graph of the virtualized instance of the network, where the graph is constructed to include nets and subnets, wherein two or more of the devices connecting to the virtualized instance of the network are assigned with different weighting resistances to malicious compromises from the cyber threat being simulated in the cyber-attack scenario during the simulation (C9:L7–22).
As per claim 3, Cohen discloses:
The apparatus of claim 1, further comprising: wherein the intelligent-adversary simulator is configured to search and query two or more of i) a data store, ii) modules, and iii) one or more Artificial Intelligence (AI) models making up a cyber security appliance protecting the actual network under analysis from cyber threats, on what, i) the data store, ii) the modules, and iii) the one or more AI models in the cyber security appliance, already know about the network, and its devices and associated users, under analysis to create the graph of the virtualize instance of the network, wherein the graph of the virtualize instance of the network is created with two or more of 1) known characteristics of the actual network itself, 2) the pathway connections between the devices on that network, 3) security features and credentials of the devices and/or their associated users, and 4) behavioural characteristics of the devices and/or their associated users connecting to that network, which all of this information is obtained from what was already know about the actual network from the cyber security appliance (see at least Fig. 1; C2:L54–C3:L45; C5:L22–26; C6:L4–47; C7:L1–C9:L43; C10:L43–59).
As per claim 4, Cohen discloses:
The apparatus of claim 1, further comprising: wherein the intelligent-adversary simulator is configured to create the virtualized instance of the network and its network devices thereby does not degrade or compromise the actual network, or its actual network devices, under analysis when running the simulation, and wherein the virtualized instance of the network, and its network components connecting to the network, being tested during the simulation are up to date and accurate for a time the actual network under analysis is being tested and simulated because the intelligent-adversary simulator is configured to obtain actual network data collected by two or more of 1) modules, 2) a data store, and 3) one or more AI models of a cyber security appliance protecting the actual network under analysis from the cyber threat (see at least Fig. 1; C2:L54–C3:L45; C5:L22–26; C6:L4–47; C7:L1–C9:L43; C10:L43–59).
As per claim 5, Cohen discloses:
The apparatus of claim 1, further comprising: wherein the intelligent-adversary simulator is configured to simulate the compromise of a spread of the cyber threat being simulated in the simulated cyber-attack scenario on connections between the devices connected to the virtualized instance of the network, and wherein the intelligent-adversary simulator is configured to then perform a calculation on an ease of transmission of the cyber threat between the devices, including key network devices (see at least Fig. 1; C2:L54–C3:L45; C5:L22–26; C6:L4–47; C7:L1–C9:L43; C10:L43–59).
As per claim 6, Cohen discloses:
The apparatus of claim 1, further comprising: wherein the intelligent-adversary simulator is configured to construct the graph of the virtualized instance of the network from knowledge known and stored by modules, a data store, and one or more AI models of a cyber security appliance protecting the actual network under analysis, wherein the knowledge known and stored is obtained at least from ingested traffic from the actual network under analysis, and wherein the intelligent-adversary simulator is configured to model the compromise by the cyber threat through the virtualized instance of the network based upon how likely it would be for the cyber-attack to spread to achieve the end goal of either 1) a programmable end goal of that cyber-attack scenario set by a user, or 2) a set by default end goal scripted into a selected cyber-attack scenario (see at least Fig. 1; C2:L54–C3:L45; C5:L22–26; C6:L4–47; C7:L1–C9:L43; C10:L43–59).
As per claim 7, Cohen discloses:
The apparatus of claim 1, further comprising: wherein the intelligent-adversary simulator is configured to integrate with a cyber security appliance and cooperate with components within the cyber security appliance installed and protecting the actual network from cyber threats by using outputs, data collected, and functionality from two or more of a data store, other modules, and one or more AI models already existing in the cyber security appliance, and wherein the comprise of the source device is an infection spread to and from the source device in the virtualized instance of the network under analysis, wherein a likelihood of the compromise is tailored and accurate to an actual device being simulated because the cyber-attack scenario is based upon security credentials and behaviour characteristics from actual traffic data fed to the other modules, data store, and AI models of the cyber security appliance (see at least Fig. 1; C2:L54–C3:L45; C5:L22–26; C6:L4–47; C7:L1–C9:L43; C10:L43–59).
As per claim 8, Cohen discloses:
The apparatus of claim 1, further comprising: a profile manager module configured to communicate and cooperate with the intelligent-adversary simulator, wherein the profile manager module is configured to maintain a profile tag on one or more of the devices connecting to the actual network under analysis based on their behaviour and security characteristics and supply, when the construction of the graph occurs, the profile tag for any of the devices connecting to the virtualized instance of the network (see at least Figs. 1–2; C2:L54–C3:L45; C5:L22–26; C6:L4–47; C7:L1–C9:L43; C10:L43–59).
As per claim 9, Cohen discloses:
The apparatus of claim 1, further comprising: wherein a profile manager module is configured to maintain a profile tag for each device before the simulation is carried out thereby eliminating a need to search and query for known data about each device being simulated during the simulation, and wherein the profile manager module is configured to maintain the profile tag on each device based on their behaviour as detected by a network module cooperating with network probes ingesting traffic data for network devices and network users in the actual network under analysis as well as cooperation and analysis with AI models modelling a normal pattern of life for entities in that actual network under analysis (see at least Figs. 1–2; C2:L54–C3:L45; C5:L22–26; C6:L4–47; C7:L1–C9:L43; C10:L43–59).
As per claim 10, Cohen discloses:
The apparatus of claim 1, further comprising: wherein the intelligent-adversary simulator is configured to search and query i) ingested network traffic data as well as ii) analysis on that network traffic data from one or more AI models within a cyber security appliance, wherein the intelligent-adversary simulator has access to and obtains actual network data from the actual network under analysis from a data store and the AI models of normal pattern of life for entities in the actual network under analysis, wherein the paths of least resistance through possible routes in the virtualized instance of the network can be computed during the simulation even when a first possible route of least resistance 1) is not previously known or 2) has not been identified by a human before to determine a spread of the cyber threat from device-to-device (see at least Figs. 1–2; C2:L54–C3:L45; C5:L22–26; C6:L4–47; C7:L1–C9:L43; C10:L43–59).
As per claims 11–20, these claims contain language similar to claims 1–10 as discussed in the preceding paragraphs, and for reasons similar to those discussed above, claims 11–20 are also rejected under 35 USC § 102 as anticipated by Cohen.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jacob Coppola whose telephone number is 571-270-3922.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer can be reached at 571-272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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.
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/JACOB C. COPPOLA/Primary Examiner, Art Unit 3992
Conferees:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 While at least one definition, of a term, is cited because the term is found in the Examined Claims, the Examiner may have provided an additional definition(s) to help interpret a word(s), a phrase(s), or a concept(s) found in a definition itself, in the prior art, or in the Patent Under Reissue.
2 “In [112 ¶ 6], structure and material go with means, acts go with steps.” O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir. 1997).
3 See also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed Cir. 2000) where the CAFC set forth the standard for determining if a functional phase overcomes the presumption that § 112 ¶ 6 is not invoked (i.e., invokes 112 ¶ 6) when a phrase does not use the word “means.”
4 Microsoft Computer Dictionary (5th ed. 2002) (Microsoft Press); Electrical Engineering Dictionary (CRC Press, 2000); The Authoritative Dictionary of IEEE Standards Terms (7th Ed. 2000); The American Heritage Dictionary of the English Language (3rd ed. 1992).
5 This rejection does not rely on 35 USC § 112(f) being invoked. See MPEP § 2161.01 (“[C]laims with computer-implemented functional claim limitations may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. […]. Even if a claim is not construed as a means-plus-function limitation under 35 U.S.C. 112(f), computer-implemented functional claim language must still be evaluated for sufficient disclosure under the written description and enablement requirements of 35 U.S.C. 112(a).” (emphasis added)).
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