DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-17 are presented for examination.
In view of the Appeal Brief filed on 03/23/2026, PROSECUTION IS HEREBY REOPENED. A new ground of rejection is set forth below.
If an appellant wishes to reinstate an appeal after prosecution is reopened, appellant must file a new notice of appeal in compliance with 37 CFR 41.31 and a complete new appeal brief in compliance with 37 CFR 41.37. Any previously paid appeal fees set forth in 37 CFR 41.20 for filing a notice of appeal, filing an appeal brief, and requesting an oral hearing (if applicable) will be applied to the new appeal on the same application as long as a final Board decision has not been made on the prior appeal. If, however, the appeal fees have increased since they were previously paid, then appellant must pay the difference between the current fee(s) and the amount previously paid. Appellant must file a complete new appeal brief in compliance with the format and content requirements of 37 CFR 41.37(c) within two months from the date of filing the new notice of appeal. See MPEP § 1205.
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 1, 11, 17 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 pre-AIA the applicant regards as the invention.
Referring to claim 1, recites
“registering, with a core of an operating system kernel, a hook corresponding to a file event and associating the file event with an event-driven module of the operating system kernel other than the core, wherein the core is associated with an integrity measurement architecture policy; and responsive to an occurrence of the file event,
“triggering execution of the event-driven module to extend a scope of the integrity measurement architecture policy, wherein executing the module comprises the operating system kernel”: determining a property of a file associated with the file event;
filtering a set of rules of an extended integrity measurement policy based on the property, wherein the filtering comprises identifying a given rule of the set of rules having a condition contingent on the file event being associated with the property;
identifying an integrity measurement-affiliated action of the given rule; and
performing the integrity measurement-affiliated action on the file”
Claim 1 is indefinite because it is unclear whether the hook is registered by the core, within the core, or with the core by another component. Further the recitation “associating the file event with an event-driven module” does not clearly define whether the associating is part of the registration operation, a separate method step, and fails to clearly define the metes and bounds of the claim.
Also, the limitation “wherein executing the module comprises the operation system kernel” followed by “determine a property…”, “filtering…”, “identifying…..” and “performing…” creates ambiguity because the examiner is unsure whether limitation ends and following steps are actions performed by the kernel or entire clause is one limitation? Therefore, claim does not clearly identify the actors performing the subsequent steps. Is the event driven module determining/filtering or identifying or is it the Operating System Kernel? Is the core doing it or is the module merely triggering the kernel. The ambiguity arises because “triggering execution of the event driven module” suggest module performs the later actions while “executing the module comprises the operating system kernel” suggests the kernel performs the later actions. Both are not the same things.
Furthermore, the claim recites “filtering set of rules” and followed by “the filtering comprises identifying a given rule….” The problem is that claim never clearly explains “what rules are removed…what rules remain… whether the filtering process produces a subset, whether filtering merely locates a matching rule and whether more than one rule can satisfy the condition? The claim steps go from filtering to “identifying a given rule of set of rules” but there is no explicit recitation of selecting the rule, choosing the rule, determining the rule applies or applying the rule? Also the limitation “the given rule” does it mean one matching rule, several matching rules, or all matching rules and claim provide no selection criteria and fails to mention how rules are enforced. If multiple rules satisfy the condition which one would be labeled as given rule and what happens if different rules specify different actions. Accordingly, the scope of filtering operation and the identity of the rule from which the integrity measurement-affiliated action is obtained cannot be determined with reasonable certainty.
Additionally, the claim fail to define what is “the integrity measurement-affiliated action”? The claims never defines what makes an action affiliated with integrity measurement. is it a hash file, measure the size of file, extend a PCR, store a measurement or log a measurement and claim fails objective boundary. Then a PHOSITA would be uncertain which actions are affiliated and which are not? It merely requires performing whatever action that is affiliated with integrity measurement and lacks functional boundary. Finally, the claims recites that the module is executed to extend the scope but recited operations appear only to evaluate rules and perform an action on a file. Appropriate clarifications and corrections are required.
Referring to claim 11, the claim recites limitation “whether the file is within a scope of an integrity measurement policy” explaining an outcome without reciting how scope is determined because it fails to mentions policy rules, policy criteria, policies entries, policy conditions, policy matching logic? The office is uncertain how does kernel determine scope or perform namespace matching, or perform rule lookup, is it whitelist or blacklist?
Also, the limitation “based on at least one of namespace…or file path associated with the event..” omits comparing matching, evaluating, selecting and applying the rule. The claim jumps directly from “input data” to “determination result” with no intermediate logic and there exist a gap between claim steps. Furthermore, the claim recites “whether the file is within a scope of an integrity measurement policy” and then mentions “selectively measures the file responsive to that determination” ….second step merely restates the results of first and it never explains measurement, is it measuring by hashing or PCR extension or logging, or TPM operations or digest generation? Corrections are needed.
Referring to claim 17, recites the limitation “cause a core….respective actions to execute the first files” applicant need to explain what are the actions its taking? Process launches, kernel events, open operations, execution requests.. metes and bounds of the triggering condition are unclear? Another issues arises from limitation of “first measurement policy” and “second measurement policy” but we don’t know if they are identical, partially overlapping, completely different because the claim does not establish the distinction that appears central to the invention. Another issue is with the limitation “determine a property of the second file” then “based on the property and a second measurement policy, determine whether to measure the second file” the claim never recites matching the property to a policy criteria, evaluating a rule, selecting a policy entry or resolving conflicts. Again there is a logical black box. Also same problem exist with first files and second files…the examiner is unclear how the first files are distinct from second files.
Dependent claims 2-10, 12-16, and 18-20 are rejected to as having the same deficiencies as the claims they depend from.
Claims 1, 11 and 17 are rejected under 35 USC § 112 (b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicant regards as invention. The claims are replete with ambiguous language, unclear action relationships, undefined functional interactions, and internally inconsistent decision logic, undefined functional interactions such that metes and bounds of the claimed subject matter cannot be determined with reasonable certainty. By way of example the claim fails to clearly identify which component performs several recited operation fail to define how policy determinations are made from the recited inputs, fails to explain how rules are selected and applied, and employ result-oriented language without sufficient accompanying structure. Consequently, the scope of the claimed invention cannot be reasonably ascertained. Because the claim language is insufficiently clear to permit a meaningful comparison with the prior art, no prior art rejection under 35 USC § 102 or 35 USC § 103 is applied at this time. Consideration of the patentability over the prior art is deferred pending amendments of the claims to clearly define the invention in a meaningful way.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant's future amendments need to comply with the requirements of MPEP §
714.02, MPEP § 2163.04 and MPEP § 2163.06.
"with respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims." See MPEP § 714.02 and § 2163.06 ("Applicant should * * * specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims."). See In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) In re Wertheim, 541 F.2d at 262,191 USPQ at 96 (emphasis added).
"The use of a confusing variety of terms for the same thing should not be permitted”.
New claims and amendments to the claims already in the application should be scrutinized not only for new matter but also for new terminology. While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure certainty in construing the claims in the light of the specification." Ex parte Kotler, 1901 C.D. 62, 95 O.G. 2684 (Comm'r Pat. 1901). See 37 CFR 1.75, MPEP § 608.01 (i) and § 1302.01.
Note that examiners should ensure that the terms and phrases used in claims presented late in prosecution of the application (including claims amended via an examiner's amendment) find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description, see 37 CFR 1.75(d)(1 ). If the examiner determines that the claims presented late in prosecution do not comply with 37 CFR 1.75(d)(1), applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the terms appearing in the claims provided no new matter is introduced."
"USPTO personnel are to give claims their broadest reasonable interpretation in light of the supporting disclosure." In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023,1027-28 (Fed. Cir. 1997). MPEP § 2106. "
The examiner also requests, when responding to this office action, support be shown for language added to any original claims on amendment and any new claims. That is, indicate support for newly added claim language by specifically pointing to page(s) and line no(s) in the specification and/or drawing figure(s). This will assist the examiner in prosecuting the application. Applicant is advised to clearly point out the patentable novelty which he or she thinks the claims present, in view of the state of the art disclosed by the references cited or the objections made. He or she must also show how the amendments avoid such references or objections See 37 CFR 1.111 (c).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AFTAB N. KHAN whose telephone number is (571)270-5172. The examiner can normally be reached on Monday-Friday 8AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Glenton Burgess can be reached on 571-272-3949. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AFTAB N. KHAN/
Primary Examiner, Art Unit 2454
Prosecution Insights