DETAILED ACTION
This Office action is in response to the amendment submitted on December 23, 2025.
Claims 1-19 are pending.
Claims 1-3, 10, 12-15, and 17 are currently amended.
The 35 U.S.C. § 112(b) rejections of Claims 1-17 are withdrawn in view of the Applicant’s amendments to the claims.
The 35 U.S.C. § 101 rejections of Claims 1-19 directed to a judicial exception without significantly more are maintained in view of the Applicant’s arguments and further explained hereinafter.
Applicant has failed to address the 35 U.S.C. § 101 rejections of Claims 13-17 directed to non-statutory subject matter. Accordingly, these rejections are maintained and further explained hereinafter.
In the interest of facilitating compact prosecution, the Examiner kindly asks the Applicant’s representative to authorize Internet communications with the Examiner by submitting Form PTO/SB/439 using Patent Center.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
Claim Objections
Claims 1 and 13 are objected to because of the following informalities:
Claim 1 recites “address of direct call targets.” It should read -- addresses of direct call targets --.
Claim 1 recites “address of direct jump targets.” It should read -- addresses of direct jump targets --.
Claim 13 recites “addresses of end branch instruction.” It should read -- addresses of end branch instructions --.
Claim 13 recites “addresses of direct call target.” It should read -- addresses of direct call targets --.
Claim 13 recites “addresses of direct jump targest.” It should read -- addresses of direct jump targets --.
Appropriate correction is required.
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 1-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claim 1 is directed to a method, which is a process (a series of steps or acts), and falls within one of the statutory categories of invention.
Step 2A, Prong One: Claim 1 recites the limitations:
(a) distinguishing a text section and an exception handling section by parsing a binary code;
(b) disassembling the text section to determine addresses of end branch instructions, address of direct call targets, and address of direct jump targets;
(c) determining an indirect return function call address from the addresses of the end branch instructions;
(d) determining an exception handling block address from the addresses of the end branch instructions;
(e) excluding the indirect return function call address and the exception handling block address from the addresses of the end branch instructions; and
(f) determining a tail call corresponding to the binary function entry from the addresses of the direct jump targets.
These recited steps, under the broadest reasonable interpretation, cover performance of the steps in the human mind alone or with the aid of pen and paper. That is, nothing in the claim precludes these steps from practically being performed in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper. For example, the limitation (a) in the context of the claim encompasses a user mentally/manually distinguishing code/text sections using pen and paper as a physical aid. Similarly, the limitations (b) to (f) in the context of the claim encompass the user mentally/manually performing these steps using pen and paper as a physical aid as well.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the human mind alone or with the aid of pen and paper but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The claim does not recite additional elements that integrate the judicial exception into a practical application of the judicial exception. The claim is directed to an abstract idea. Furthermore, the claim does not recite additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
Claims 2-12 are rejected under 35 U.S.C. 101 as directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more for at least the reasons stated above. The claims are dependent on Claim 1, but do not add any feature or subject matter that would solve the judicial exception deficiencies of Claim 1. For instance, Claims 2-12 either recite further mental steps which fail to make the claims any less abstract or elements that do not integrate the judicial exception into a practical application of the judicial exception and thus are not significantly more than the abstract idea. Claims 2-12 do not add any steps or elements, when considered both individually and as a combination, that would convert Claim 1 into patent-eligible subject matter.
Claims 1-12 are therefore not drawn to patent-eligible subject matter as they are directed to an abstract idea without significantly more.
Step 1: Claim 13 is directed to an apparatus, which is a machine and/or manufacture, and falls within one of the statutory categories of invention.
Step 2A, Prong One: Claim 13 recites the limitations:
(a) […] parse a binary code to distinguish a text section and an exception handling section;
(b) […] disassemble the text section to determine addresses of end branch instruction, addresses of direct call target, and addresses of a direct jump targets;
(c) […] determine an indirect return function call address and an exception handling block address from the addresses of the end branch instructions, and exclude the indirect return function call address and the exception handling block address from the addresses of the end branch instructions; and
(d) […] determine a tail call corresponding to the binary function entry from the addresses of the direct jump targets.
These recited steps, under the broadest reasonable interpretation, cover performance of the steps in the human mind alone or with the aid of pen and paper. That is, other than reciting:
(1) a parser configured to […];
(2) a disassembler configured to […];
(3) a filter configured to […]; and
(4) a tail call selector configured to […].
Nothing in the claim precludes these steps from practically being performed in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper. For example, but for the (1) to (4) language, the limitation (a) in the context of the claim encompasses a user mentally/manually parsing a binary code using pen and paper as a physical aid. Similarly, the limitations (b) to (d) in the context of the claim encompass the user mentally/manually performing this step using pen and paper as a physical aid as well.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the human mind alone or with the aid of pen and paper but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A, Prong Two: This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements:
(1) a parser configured to […];
(2) a disassembler configured to […];
(3) a filter configured to […]; and
(4) a tail call selector configured to […].
The additional elements (1) to (4) are recited at a high-level of generality such that they amount to no more than mere instructions to apply the judicial exception using generic computer components. See MPEP § 2106.05(f). Accordingly, the additional 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 claim is directed to an abstract idea.
Step 2B: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as a combination do not amount to significantly more than the abstract idea. As discussed above with respect to integration of the abstract idea into a practical application, the claim recites the additional elements:
(1) a parser configured to […];
(2) a disassembler configured to […];
(3) a filter configured to […]; and
(4) a tail call selector configured to […].
The additional elements (1) to (4) amount to no more than mere instructions to apply the judicial exception using generic computer components. Mere instructions to apply a judicial exception using generic computer components cannot provide an inventive concept.
Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as a combination adds nothing that is not already present when looking at the additional elements taken individually. Even when considered in combination, the additional elements represent mere instructions to apply a judicial exception using generic computer components, and therefore do not provide an inventive concept. The claim is not patent eligible.
Claims 14-17 are rejected under 35 U.S.C. 101 as directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more for at least the reasons stated above. The claims are dependent on Claim 13, but do not add any feature or subject matter that would solve the judicial exception deficiencies of Claim 13. For instance, Claims 14-17 either recite further mental steps which fail to make the claims any less abstract or elements that do not integrate the judicial exception into a practical application of the judicial exception and thus are not significantly more than the abstract idea. Claims 14-17 do not add any steps or elements, when considered both individually and as a combination, that would convert Claim 13 into patent-eligible subject matter.
Claims 13-17 are therefore not drawn to patent-eligible subject matter as they are directed to an abstract idea without significantly more.
Step 1: Claim 18 is directed to a method, which is a process (a series of steps or acts), and falls within one of the statutory categories of invention.
Step 2A, Prong One: Claim 18 recites the limitations:
(a) generating an end branch instruction address from a binary code as a candidate set;
(b) excluding an indirect return function call address and an exception handling block address from the candidate set; and
(c) determining an address of a tail call function and including the address of the tail call function in the candidate set.
These recited steps, under the broadest reasonable interpretation, cover performance of the steps in the human mind alone or with the aid of pen and paper. That is, nothing in the claim precludes these steps from practically being performed in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper. For example, the limitation (a) in the context of the claim encompasses a user mentally/manually generating an instruction address using pen and paper as a physical aid. Similarly, the limitations (b) and (c) in the context of the claim encompass the user mentally/manually performing these steps using pen and paper as a physical aid as well.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the human mind alone or with the aid of pen and paper but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The claim does not recite additional elements that integrate the judicial exception into a practical application of the judicial exception. The claim is directed to an abstract idea. Furthermore, the claim does not recite additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
Claim 19 is rejected under 35 U.S.C. 101 as directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more for at least the reasons stated above. The claim is dependent on Claim 18, but does not add any feature or subject matter that would solve the judicial exception deficiencies of Claim 18. For instance, Claim 19 either recites further mental steps which fail to make the claim any less abstract or elements that do not integrate the judicial exception into a practical application of the judicial exception and thus are not significantly more than the abstract idea. Claim 19 does not add any steps or elements, when considered both individually and as a combination, that would convert Claim 18 into patent-eligible subject matter.
Claims 18 and 19 are therefore not drawn to patent-eligible subject matter as they are directed to an abstract idea without significantly more.
Claims 13-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claim 13 is directed to an apparatus. However, the recited components of the apparatus appear to lack the necessary physical components (hardware) to constitute a machine or manufacture under § 101. The recited components of the apparatus can be construed to cover software under the broadest reasonable interpretation (often referred to as “software per se”). Therefore, the claimed apparatus is ineligible subject matter under § 101.
Claims 14-17 depend on Claim 13 and do not cure the deficiency of Claim 13. Therefore, Claims 14-17 are rejected for the same reason set forth in the rejection of Claim 13.
Allowable Subject Matter
Claims 1-19 are allowable over the cited prior art. However, the Applicant must overcome any corresponding objections and/or rejections of these claims set forth hereinabove in order to place these claims in condition for allowance.
Response to Arguments
Applicant’s arguments submitted on December 23, 2025 have been fully considered, but they are not persuasive.
In the Remarks, the Applicant argues:
The Examiner indicated that the elements of claim 1 fall within the “Mental Processes,” grouping of abstract ideas. Applicant respectfully disagrees. The current claims are directed towards a method for correctly identifying the beginning/ending of functions within machine code. Modern CPUs may use a security feature called Control-flow Enforcement Technology (“CET”), which is a hardware-based feature that protects against control-flow hijacking attacks (where a program's execution path is modified to perform unintended/malicious actions). As such, the CET feature automatically inserts a special 4-byte instruction called ENDBR right at the start of every “real function”. Theoretically, this means one can just reference each ENDBR instruction to find the beginning of a function, however this is not how it ends up working in practice. Instead, the CET feature inserts ENDBR into multiple extraneous locations that it believes are function starts (within exception-handlers, after some set-up call functions, etc.), which can lead to memory leakage and stalling/catching programs.
With this in mind, the disclosed technology cannot be accomplished by a human mind with pen and paper, since accurately identifying function entries in stripped binaries using CET-specific ENDBR markers cannot be performed mentally or with pen/paper due to the scale of machine code having millions of instructions. Like Enfish (self-referential database improving storage/retrieval), the claims improve computer functionality by identifying and generating precise control flows from code that is without proper boundaries (start and end points), which will help enable better decompiling of the machine code and security tools. See Enfish v. Microsoft Corp, 822 F.3d 1327 (Fed. Cir. 2016). Furthermore, as discussed in Ex Parte Desjardins, current USPTO Director Squires has referenced Enfish as a leading example of Federal Circuit cases to guide 101 rejections. That is, Director Squires indicates that “claims directed to an improvement in the functioning of a computer, or an improvement to other technology or technical field are patent eligible” and that “Enfish ranks among the Federal Circuit's leading cases on the eligibility of technological improvements … and [s]oftware can make non-abstract improvements to computer technology, just as hardware improvements can, the Federal Circuit held that the eligibility determination should turn on whether “the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.” See page 8 of Ex Parte Desjardins, Appeal 2024-00567, Patent Trial and Appeal Board (2024). Here, the claims are directed towards a non-abstract technological improvement both from a software and hardware perspective, by allowing for the identification of accurate machine code control flows to improve decompiling efforts and ensure that security tools which interact directly with machine code do not create unnecessary points of entry for control-flow injection attacks and correctly generate machine code that has been passed through the security tool.
(See Remarks – pages 10 and 11, emphasis added.)
Examiner’s response:
Examiner disagrees. Applicant’s arguments are not persuasive for at least the following reasons:
First, with respect to the Applicant’s assertion that “[…] the disclosed technology cannot be accomplished by a human mind with pen and paper, since accurately identifying function entries in stripped binaries using CET-specific ENDBR markers cannot be performed mentally or with pen/paper due to the scale of machine code having millions of instructions,” the Examiner respectfully submits that the Applicant’s argument is not commensurate in scope with the claim language. In accordance with MPEP § 2106(II), “[i]t is essential that the broadest reasonable interpretation (BRI) of the claim be established prior to examining a claim for eligibility. The BRI sets the boundaries of the coverage sought by the claim and will influence whether the claim seeks to cover subject matter that is beyond the four statutory categories or encompasses subject matter that falls within the exceptions. See MyMail, Ltd. v. ooVoo, LLC, 934 F.3d 1373, 1379, 2019 USPQ2d 305789 (Fed. Cir. 2019)” (emphasis added). Thus, under the BRI, the scope of the claimed invention is not limited to accurately identifying function entries in stripped binaries using CET-specific ENDBR markers. The claims do not require any particular limitations pertaining to CET-specific ENDBR markers. Applicant is reminded that in order for such limitations to be considered, the claims are required to explicitly recite such limitations, otherwise broadest reasonable interpretations of the broadly claimed limitations are deemed to be proper.
Second, with respect to the Applicant’s assertion that “[l]ike Enfish (self-referential database improving storage/retrieval), the claims improve computer functionality by identifying and generating precise control flows from code that is without proper boundaries (start and end points), which will help enable better decompiling of the machine code and security tools,” the Examiner respectfully submits that, in Enfish, it was clear that the claims at issue could not be performed without the use of a computer because they require the manipulation of computer functionalities, such as storing and retrieving data in memory. In contrast, it is clear in the present case that one could mentally/manually perform (with the aid of pen and paper) the distinguishing, disassembling, determining, and excluding steps of Claim 1, for example, because the claim consists of only the general approach of disassembling a text section of a binary code and determining addresses of binary function entries. Under the BRI, one could, as a practical matter, disassemble a text section of a binary code and determine addresses of binary function entries. These steps do not require any manipulation of underlying computer operations/functionalities. The claim presumably uses a computer executing some software for performing the recited steps of Claim 1. Thus, unlike Enfish, the limitations of Claim 1, considered individually or as an ordered combination, improve the technique of determining addresses of binary function entries, not the technology involved in providing it and therefore, are not indicative of improving underlying computer operations/functionalities.
Third, with respect to the Applicant’s assertion that “[…] as discussed in Ex Parte Desjardins, current USPTO Director Squires has referenced Enfish as a leading example of Federal Circuit cases to guide 101 rejections. That is, Director Squires indicates that ‘claims directed to an improvement in the functioning of a computer, or an improvement to other technology or technical field are patent eligible’ and that ‘Enfish ranks among the Federal Circuit's leading cases on the eligibility of technological improvements […] and [s]oftware can make non-abstract improvements to computer technology, just as hardware improvements can, the Federal Circuit held that the eligibility determination should turn on whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea,’” the Examiner respectfully submits that, regarding Ex Parte Desjardins, Director Squires’ decision contained more of a general guidance for the examination of artificial intelligence (AI)-related patent applications based on § 101 subject matter eligibility. The decision pointed to disclosures in the patent application at issue indicating memory savings and “reduced system complexity” related to the claimed subject matter. The decision analogized to Enfish, which held that claims directed to “an improvement to computer functionality” could be patent eligible. In contrast, to the best of the Examiner’s understanding of the disclosed invention, no AI or machine learning technology of any kind is involved in the Applicant’s invention. Thus, Director Squires’ decision in Ex Parte Desjardins should have no precedential effect on the claims of the instant application because it is not an AI-related invention.
Therefore, for at least the reasons set forth above, the rejections made under 35 U.S.C. § 101 with respect to Claims 1-19 directed to a judicial exception without significantly more are proper and therefore, maintained.
In the Remarks, the Applicant argues:
Unlike ineligible claims in Electric Power Group (which was just mere data collection/display), here the parsing/filtering is CET-tailored, not generic computer elements. That is, the use of CET is a specific process to defend against control flow hijacking attacks using memory vulnerabilities. See Electric Power Group v. ALSTOM SA, 830 F.3d 1530 (Fed. Cir. 2016). As stated in ¶50 of the published application: “Specifically Indirect Branch Tracking (IBT), which forces specially predefined end branch instructions into an indirect branch target, and then checking to see if there is an end branch instruction in the indirect branch target. This process is performed at a hardware level.”
(See Remarks – page 11, emphasis added.)
Examiner’s response:
Examiner disagrees. With respect to the Applicant’s assertion that “[u]nlike ineligible claims in Electric Power Group (which was just mere data collection/display), here the parsing/filtering is CET-tailored, not generic computer elements,” the Examiner respectfully submits that, as pointed out in the Examiner’s response (a) hereinabove, the Applicant’s argument is not commensurate in scope with the claim language. The claims do not require any particular limitations pertaining to CET. Thus, the Applicant’s argument is, at best, moot. Furthermore, the Examiner would like to point out that, as pointed out in the 35 U.S.C. § 101 rejections of the claims hereinabove, no limitations are indicated as generic computer components under Step 2A, Prong Two of the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG). Thus, the Applicant’s argument is also, at best, moot.
Therefore, for at least the reason set forth above, the rejections made under 35 U.S.C. § 101 with respect to Claims 1-19 directed to a judicial exception without significantly more are proper and therefore, maintained.
In the Remarks, the Applicant argues:
Even if the claims are found to abstract, the claims integrate the idea into a practical application by applying it to CET hardware for ‘reducing false positives in binary vulnerability detection’ (Published Application, ¶12), akin to Example 42’s eligible network filtering improving content delivery. That is, claim 1 recites a combination of additional elements, including (but not limited to) excluding the indirect return function call addresses and the exception handling block address from the addresses of the end branch instructions and determining a tail call corresponding to the binary function entry from the addresses of the direct jump targets. The claim as a whole integrates the mental processes into a practical application. Specifically, the additional elements recite a specific improvement over prior art systems by performing advance filtering operations to ensure that the control flow of various programs is secure and executed correctly.
(See Remarks – pages 11 and 12.)
Examiner’s response:
Examiner disagrees. With respect to the Applicant’s assertion that “[e]ven if the claims are found to abstract, the claims integrate the idea into a practical application by applying it to CET hardware for ‘reducing false positives in binary vulnerability detection,’” the Examiner respectfully submits that, as pointed out in the Examiner’s response (a) hereinabove, the Applicant’s argument is not commensurate in scope with the claim language. The claims do not require any particular limitations pertaining to CET. Thus, the Applicant’s argument is, at best, moot. Also, Example 42 is directed to “Method for Transmission of Notifications When Medical Records Are Updated” and does not appear to be related to eligible network filtering improving content delivery. Thus, the Examiner will not provide a response to this example comparison. Furthermore, the Examiner would like to point out that, as pointed out in the 35 U.S.C. § 101 rejection of Claim 1 hereinabove, for example, the recited steps of “excluding the indirect return function call addresses and the exception handling block address from the addresses of the end branch instructions” and “determining a tail call corresponding to the binary function entry from the addresses of the direct jump targets” are treated under Step 2A, Prong One of the 2019 PEG as mental processes and not under Step 2A, Prong Two and Step 2B of the 2019 PEG as additional elements that would integrate the judicial exception into a practical application of the judicial exception. Thus, the Applicant’s argument is also, at best, moot.
Therefore, for at least the reason set forth above, the rejections made under 35 U.S.C. § 101 with respect to Claims 1-19 directed to a judicial exception without significantly more are proper and therefore, maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 Qing Chen whose telephone number is 571-270-1071. The Examiner can normally be reached on Monday through Friday from 9:00 AM to 5:00 PM ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, the Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at https://www.uspto.gov/interviewpractice.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Wei Mui, can be reached at 571-272-3708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Qing Chen/
Primary Examiner, Art Unit 2191