DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
A Requirement for Information under 37 CFR 1.105 was made in the Non-Final Rejection mailed 04/03/2025. Applicant has not replied to the requirement in the response filed 10/09/2025. The current reply filed 10/09/2025 does not contain a response pertaining to the requirement. Since the current reply filed appears to be bona fide, the omission is considered inadvertent and the Applicant is hereby respectfully reminded that there is an outstanding Requirement for Information under 37 CFR 1.105. Applicant is respectfully reminded that the duty of candor and good faith under 37 CFR 1.56 applies to the applicant’s reply to a requirement under 37 CFR 1.105 with information reasonable and readily available.
Response to Arguments
Applicant's arguments, see pages 5-6, filed 10/09/2025, with respect to the rejection of the claims under 35 U.S.C. § 112(a), have been fully considered. The rejections have been withdrawn with respect to 112(a).
Applicant's arguments, see pages 5-6, filed 10/09/2025, with respect to the rejection of the claims under 35 U.S.C. § 112(b), have been fully considered, but they are not persuasive. Since Applicant does not give any further explanation as to how the newly introduced claims cure the previous deficiencies found in the Non-Final Rejection mailed 10/09/2025, the Examiner defers to the rejection below as a response to this argument.
Applicant's arguments, see pages 6-7, filed 10/09/2025, with respect to the rejection of the claims under 35 U.S.C. § 101, have been fully considered but they are not persuasive.
Applicant’s arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patent-eligible invention without distinctly and specifically pointing out the supposed errors or alleged deficiencies in the examiner’s action with respect to 35 U.S.C. § 101.
The Examiner however, responds to the following arguments made by the Applicant:
Applicant first attests that the claimed invention improves technology or a technical field and is therefore eligible.
The Examiner respectfully disagrees.
The claims, as currently drafted, still covers performance of the limitation in the mind but for the recitation of generic computer components under the broadest reasonable interpretation. The independent claims recite, inter alia, “tracking access frequency of files to determine hot spot maps; determining to redistribute one or more of the files within a hot spot; and redistributing one or more of the files within the hot spot to assist in detecting attacks”. The limitations “to determine hot spot maps” and “to assist in detecting attacks” are limitations that amount to desired results and do not further limit the independent claims. The limitation of redistributing one or more of the files based on the determined amount of use, as drafted, is a process that is considered adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g). Applicant’s argument that paragraph [0076] discloses an improvement “in the technical field of fake file detection systems” is moot, as the claims, as currently drafted, do not reflect the disclosed improvement under the broadest reasonable interpretation.
Applicant then attests that the “Apply It” consideration should make the claims eligible.
The Examiner respectfully disagrees for the reasons above that the broadest reasonable interpretation of the claims do not reflect the improvement to computer capabilities or technological improvement as discussed above. In particular the independent claims only recite the additional element for Independent claim 41 uses a computer-implemented method; independent claim 48 uses a system comprising a processor and program instructions stored on a media; and independent claim 55 uses a computer program product, instructions, and storage medium. These various computer elements are used to perform the determining and migrating steps. The computer elements are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of moving files based on a determined amount of use) such that it amounts no more than mere instructions to apply the exception using a generic computer component.
Applicant lastly attests that the independent claims are more likely than not eligible under 35 U.S.C. § 101.
The Examiner respectfully disagrees.
At least for the reasons set forth above, it is clear that the claims are more likely than not that the claims are ineligible.
Applicant’s argument simply relies on the August 4, 2025 USPTO “Reminders Memo,” asserting that the claims reflect a technological improvement in fake file detection systems and thus are eligible under 35 U.S.C. § 101. Applicant further contends that the specification describes such an improvement and that the claims “apply” any judicial exception in a manner that improves the technical field of unauthorized data access detection.
Since the applicant appears to focus solely on “Remind/Reminder” the examiner, it is then worth pointing out that the August 4, 2025 USPTO “Reminders Memo,” also sates “The attached memorandum serves as a reminder of the USPTO’s existing guidance on subject matter eligibility “ and “This memorandum does not change the subject matter eligibility framework as set forth in MPEP § 2106” (emphasis added).
That is, as in MPEP 2106, the Supreme Court’s two‑step framework for patent eligibility under 35 U.S.C. § 101 is set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), and Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) and the U.S. Patent and Trademark Office’s 2019 Revised Patent Subject Matter Eligibility Guidance (PEG) clarifies application of the Alice framework. See MPEP § 2106 and PEG ¶¶ 53–57.
The Specification Must Describe, and the Claims Must Recite, a Specific Technological Improvement:
1. The Reminders Memo invites the examiners to consult the specification for evidence of a technological improvement and to evaluate whether the claims themselves “reflect the disclosed improvement.” (Reminders Memo, p. 4.) While Applicant points to specification paragraph [0076] as describing an improvement in “fake file detection systems,” the claims as drafted do not recite any specific technical mechanism or unconventional process that implements such an improvement.
Claim 41 recites, at a high level:
Tracking access frequency of files to determine hot spot maps;
Determining to redistribute files within a hot spot;
Redistributing files within the hot spot to assist in detecting attacks.
These steps are generic data collection, analysis, and decision operations commonly performed in conventional file management and security systems. The claim does not specify how hot spot maps are generated, or how redistribution is triggered or performed, or how redistribution directly “assist” improves attack detection. The claim language is broad and lacks any recited technical details that would tie the claimed method to a particular improvement in computer technology or file system security.
2. “Apply It” Consideration Requires Concrete Technical Application, Not Mere Intended Use:
The Reminders Memo states that claims “determined to improve computer capabilities or improve technology or a technical field” support integration of a judicial exception into a practical application. (Reminders Memo, p. 5.) However, the claim must “apply” the asserted improvement via concrete, technical steps—not merely by stating a desired result or field of use.
Here, the claim’s recitation of “redistributing … to assist in detecting attacks” is a statement of intended purpose or benefit, not a concrete technical solution. The claim does not specify any unconventional way in which redistribution is performed, nor does it recite how such redistribution materially improves the functioning of the underlying computer system or file security technology. Without such recitation, the claim does not “apply” the judicial exception in a way that integrates it into a practical application as required by the Reminders Memo and the 2019 PEG.
3. Specification Support Alone Cannot Cure Claim-Level Deficiency:
MPEP 2103, Examiners must first determine the scope of a claim by thoroughly analyzing the language of the claim before determining if the claim complies with each statutory requirement for patentability. See In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998) ("[T]he name of the game is the claim.").
While the specification may describe technical details or improvements, eligibility is determined by the language of the claims themselves. If the claims do not recite the specific technical features, mechanisms, or unconventional steps described in the specification, those details cannot be read into the claims for eligibility purposes. See MPEP 2106.05(a); ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759 (Fed. Cir. 2019) (“the specification alone is not enough to transform a patent-ineligible abstract idea into a patent-eligible application”).
4. “Close Call” Standard Does Not Apply Where Claims Recite Only Abstract Data Analysis and Generic Computer Implementation:
The Reminders Memo invites examiners to make a rejection only when it is “more likely than not” that the claim is ineligible. In this case, because claim recites only conventional steps of data tracking, analysis, and redistribution on generic processors, without any recited concrete technical improvement, it is more likely than not that the claim is directed to an abstract idea implemented on generic computer hardware and does not integrate the exception into a practical application or supply an inventive concept.
Requirement for information
Applicant and the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application. The duty of candor and good faith under 37 CFR 1.56 applies to the applicant’s reply to a requirement under 37 CFR 1.105 with information reasonable and readily available.
The reason why the required information is necessary is because of the statement made in paragraph [0064] in Applicant’s originally filed disclosure which reads in part, “Traditional filesystems track file access time and their frequency (which denotes the importance)”. The Examiner has not seen in the current information disclosure statements filed by Applicant an example of traditional filesystems that “track file access time and their frequency (which denotes the importance)”. This information is necessary to observe how Applicant’s claimed invention constitutes an improvement over the prior art.
In response to this requirement, please state the specific improvements of the subject matter in claims 41, 43, 48, 50, 55, and 57 over the disclosed prior art and indicate the specific elements in the claimed subject matter that provide those improvements. For those claims expressed as means or steps plus function, please provide the specific page and line numbers within the disclosure which describe the claimed structure and acts.
This information is properly necessary to compel disclosure of information that the Examiner deems pertinent to patentability of Applicant’s claimed invention.
The above information as pertaining to the following is requested:
(i) Commercial databases: The existence of any particularly relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention, regarding the existing “traditional filesystems” as mentioned above.
(ii) Search: Whether a search of the prior art was made, and if so, what was searched with regard to filesystem tracking.
(iii) Information used to draft application: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used to draft the application, related to the above “traditional filesystems”.
(iv) Information used in invention process: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result, such as designing a method of tracking access frequency of files to determine hot spot maps.
(v) Improvements: Where the claimed invention is an improvement, identification of what is being improved, with relation to existing “traditional filesystems” mentioned above.
This requirement is an attachment of the enclosed Office Action. A complete reply to the enclosed Office action must include a complete reply to this requirement. The time period for reply to this requirement coincides with the time period for reply to the enclosed Office action.
Claim Rejections - 35 USC § 112
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 41-60 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.
The term “assist in detecting attacks” in claims 41, 48, and 55 is a relative term which renders the claim indefinite. The term “assist” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. While assisting in something is a desired result, the scope of “assist” is not ascertainable in the context of the claims and it is unclear what may constitute as an improvement in light of the specification.
The dependent claims fall together accordingly.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 41-60 are rejected under 35 U.S.C. 101 because the claimed invention is directed to and abstract idea without significantly more. The claim(s) recite(s) determining access frequency of files.
The limitation of determining access frequency of files, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “a computer-implemented method”, “A computer system comprising: a processor set; one or more computer-readable storage media; and program instruction stored on the one or more computer-readable storage media”, or “a computer program product… comprising a computer readable storage medium having program instructions embodied therewith”, nothing in the various claimed computer elements preclude the step from practically being performed in the mind. For example, but for the “a computer-implemented method” language, “determining” in this context of this claim encompasses the user manually calculating the amount of use of each file.
This judicial exception is not integrated into a practical application.
The limitation of distributing the files based on the determined amount of use, as drafted, is a process that is considered adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g). As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). Additionally, for example, the “a computer-implemented method” language, “distributing” and “redistributing” in the context of this claim encompasses the user determining that the files should be moved around based on (the abstract mental process) of determining how often they’re accessed. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
Similarly, in particular the independent claims only recite the additional element for Independent claim 41 uses a computer-implemented method; independent claim 48 uses A computer system comprising a processor set; one or more computer-readable storage media; and program instruction stored on the one or more computer-readable storage media; and independent claim 55 uses a computer program product, instructions, and storage medium. These various computer elements are used to perform the determining and migrating steps. The computer elements are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of moving files based on a determined amount of use) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional computer elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The independent claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional computer elements of using a computer-implemented method, computing apparatus, or computer program product to perform the determining and migrating steps amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims are not patent eligible.
Dependent claims 42-47, 49-54, and 56-60 do not add any additional elements than those already disclosed in the claims they depend upon, and merely add further abstract ideas. Furthermore, none of the claims integrate the judicial exception into a practical application.
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.
Claim(s) 41-60 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bedhapudi et. al. (US Publication No. US 2019/0109870 A1) hereinafter Bedhapudi.
Regarding Claims 41, 48, and 55:
Claim 48. Bedhapudi discloses a computer system comprising: a processor set; one or more computer-readable storage media; and program instruction stored on the one or more computer-readable storage media to cause the processor set to perform operations comprising (Bedhapudi [0406-0407] various disclosed embodiments of ransomware and information management systems may be combined and incorporated with one another): tracking access frequency of files to determine hot spot maps (Bedhapudi [0079-0083], [0222-0232] metadata including file access frequency is tracked; [0290-0293] may intercept data modification operations that include changes, updates and/or new information (e.g., file creation, file deletion, file modification, file renaming, etc.) such data may also be gathered from files across multiple storage systems within the client computing device); determining to redistribute one or more of the files within a hot spot (Bedhapudi [0220] “whether and how to synchronize or otherwise distribute files or other data objects across multiple computing devices or hosted services”); and redistributing one or more of the files within the hot spot to assist in detecting attacks (Bedhapudi [0069-0072], [0079-0083]; [0164]; [0220] “whether and how to synchronize or otherwise distribute files or other data objects across multiple computing devices or hosted services”).
Claims 41 and 55 disclose substantially the same content and are therefore rejected under the same rationales. Bedhapudi further discloses a computer-implemented method (Bedhapudi claim 1, [0079-0083], [0035] and [0406-0407] various disclosed embodiments of ransomware and information management systems may be combined and incorporated with one another), a computer program product comprising: one or more computer readable storage medium; and program instructions stored on the one or more computer readable storage medium to perform operations (Bedhapudi [0069-0070]; [0406-0407]; 223 frequency of which data has been used/accessed/modified).
Regarding Claims 42, 49, and 56:
Claim 49. Bedhapudi further discloses the computer system of claim 48 (Bedhapudi [0406-0407] various disclosed embodiments of ransomware and information management systems may be combined and incorporated with one another), wherein the files are canary files (Bedhapudi [0326] canary files contemplated).
Claims 42 and 56 disclose substantially the same content and are therefore rejected under the same rationales.
Regarding Claims 43, 50, and 57:
Claim 50. Bedhapudi further discloses the computer system of claim 48 (Bedhapudi [0406-0407] various disclosed embodiments of ransomware and information management systems may be combined and incorporated with one another), wherein the tracking includes identifying the hot spot maps based on rate of changes happening in filesystem journals of a distributed file system or number of flushes happening per logically marked segments (Bedhapudi [0290-0295] “For instance, the filter driver 314 may comprise a file system filter driver, an operating system driver, a filtering program, a data trapping program, an application, a module of one or more of the applications 310, an application programming interface (“API”), or other like software module or process that, among other things, monitors and/or intercepts particular application requests targeted at a file system, another file system filter driver, a network attached storage (“NAS”), a storage area network (“SAN”), mass storage and/or other memory or raw data. In some embodiments, the filter driver 314 may reside in the I/O stack of an application 310 and may intercept, analyze, and/or copy certain data traveling to or from the application 310 from or to a file system”; [0316]).
Claims 43 and 57 disclose substantially the same content and are therefore rejected under the same rationales.
Regarding Claims 44, 51, and 58:
Claim 51. Bedhapudi further discloses the computer system of claim 48 (Bedhapudi [0406-0407] various disclosed embodiments of ransomware and information management systems may be combined and incorporated with one another), wherein the tracking includes tracking per logical section (Bedhapudi [0080] boot sectors and partition layouts tracked, [0158]).
Claims 44 and 58 disclose substantially the same content and are therefore rejected under the same rationales.
Regarding Claims 45, 52, and 59:
Claim 52. Bedhapudi further discloses the computer system of claim 51 (Bedhapudi [0406-0407] various disclosed embodiments of ransomware and information management systems may be combined and incorporated with one another), wherein a size of the logical section is user configurable (Bedhapudi [0158], and [0280-0282] storage pools are configurable).
Claims 45 and 59 disclose substantially the same content and are therefore rejected under the same rationales.
Regarding Claims 46, 53, and 60:
Claim 53. Bedhapudi further discloses the computer system of claim 48 (Bedhapudi [0406-0407] various disclosed embodiments of ransomware and information management systems may be combined and incorporated with one another), wherein the tracking includes tracking a type of input/output (I/O) requests made and sensitivity of accessed content (Bedhapudi [0285-0286], [0209-0211]).
Claims 46 and 60 disclose substantially the same content and are therefore rejected under the same rationales. Bedhapudi further discloses the content comprises a keyword or contextual information (Bedhapudi [0194] metadata including context is tracked).
Regarding Claims 47 and 54:
Claim 54. Bedhapudi further discloses the computer system of claim 48 (Bedhapudi [0406-0407] various disclosed embodiments of ransomware and information management systems may be combined and incorporated with one another), wherein the content comprises a keyword or contextual information (Bedhapudi [0194] metadata including context is tracked).
Claim 47 recites substantially the same content and is therefore rejected under the same rationales.
Conclusion
The prior art made of record in the submitted PTO-892 Notice of References Cited and not relied upon is considered pertinent to applicant’s disclosure.
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 MIGUEL A LOPEZ whose telephone number is (703)756-1241. The examiner can normally be reached 8:00AM-5:00PM.
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/M.A.L./ Examiner, Art Unit 2496
/JORGE L ORTIZ CRIADO/Supervisory Patent Examiner, Art Unit 2496
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