DETAILED ACTION
Notice of Pre-AIA or AIA Status
1.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 Arguments
2. Applicant's arguments filed on 07/16/2025 with respect to 101 rejection have been fully considered but they are not persuasive.
3. Applicant argues that the computer is improved by making two distinctly different “protected application data” as recited in the claims from the same recited “source code”.
Applicant then states that claim 1 recites: “the first protected application data is different from the second protected application data, the difference including an order of one or a combination of functions, data, and call parameters of one or more of the functions” has the practical effect of watermarking the executable application in a way that is not easily discerned by a hacker. If such “hacked” code turns up, e.g., on some file sharing site, even if the hacker disables other security features (so that it will actually run on another computer) and/or overwrites any serial numbers, license numbers, etc., the hacker will have missed the watermark embedded in the order of data, code functions, and/or function calling parameters. In this manner, hacked code will be identifiable to the user who originally procured the code, and steps can then be taken by the software vendor to address that.
4. Examiner would like to point out that claims does not recites anything about “watermark” especially the first protected application data and the second protected application are watermarked from the source code. And watermark is embedded in the order of data, code functions, and/or function calling parameters, as argued by the applicant.
The claims merely recites the compiler on a first computer generates a first protected application data from a source code and a first identifier upon a first user command referencing the source code and the first identifier, the first protected application data including instructions executable by a second computer to implement a user application; the compiler generates a second protected application data from the source code and a second identifier upon a second user command referencing the source code and a second identifier, the second protected application data including instructions executable by the second computer to implement the user application. As such the claimed invention recites storing transmitting and executing mechanisms that are generic computing operations that do not enhance the functionality of the computer. Further, the claim does not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. According, the claim recites an abstract idea and is therefore rejected under 101.
5. Regarding 103 rejection, Applicant argues that the prior art Prakash and Arnon, do not teach, “the compiler generates a first protected application data from a source code and a first identifier upon a first user command referencing the source code and the first identifier, the first protected application data including instructions executable by a second computer to implement a user application” and also “the compiler generates a second protected application data from the source code and a second identifier upon a second user command referencing the source code and the second identifier, the second protected application data including instructions executable by the second computer to implement the user application” as recited in independent claim 1 because the combination of Prakash and Arnon does not operate on a single source code.
6. Examiner would like to point out that it’s not clear how would the compiled first and second applications be different if both the first and second source code are the same (Appropriate clarification is required).
As such the claim is also rejected under 112(b) (see, the 112(b) rejection below).
Claim Rejections - 35 USC §112
7. 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.
8.Claim 1 is 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.
9. In Claim 1, lines.3-4 recites: “the compiler generates a first protected application data from a source code and a first identifier upon a first user command referencing the source code and the first identifier”.
And lines.7-8 recites: " the compiler generates a second protected application data from the source code and a second identifier upon a second user command referencing the source code and the second identifier”.
It’s not clear how would the compiled first and second applications be different if both the first and second source code are the same. Appropriate correction is required.
Double Patenting
10. The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed.Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Long 759 F.2d 887,
225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438,164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321 (d) may be used to overcome an actual or provisional rejection based on a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with his application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
11. Claim 1 of this instant application are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-8 and 10 of the US patent no. 9,881,142. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the current application encompass the same subject matter as of the patent application claims [such as prevention of software piracy and investigation of the source of piracy by providing a mechanism to spawn an application on a computer without use of a file on the file system of the computer], but with obvious wording variations. Therefore, this is a non-statutory double patenting.
Claim Rejections - 35 USC § 101
12. 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.
13. Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more analyzed according to 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 PEG”). The claim recites using sensor manager to correlate anomalous behavior data from sensor(s) and determine an identifier for malware that may cause a behavior to occur.
Step 1: The claim 1 do fall into one of the four statutory categories of system claims. Nevertheless, the claims still is/are considered as abstract idea for the following prongs and reasons.
Step 2A: Prong 1: The limitation of claim 1 recites: the compiler generates a first protected application data from a source code and a first identifier upon a first user command including the source code and the first identifier, the first protected application data including instructions executable by a second computer to implement a user application; the compiler generates a second protected application data from the source code and a second identifier upon a second user command including the source code and a second identifier, the second protected application data including instructions executable by a third computer to implement the user application. As such the claimed invention recites storing transmitting and executing mechanisms that are generic computing operations that do not enhance the functionality of the computer. Further, the claim does not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Accordingly, the claim recites an abstract idea.
Prong 2: This judicial exception is not integrated into a practical application. In particular, the claims do not recite any additional element to perform beyond routine steps . For. e.g., the first protected application data is different from the second application data, the difference including an order of one or a combination of functions, data, and call parameters of one or more of the functions. The steps are recited at a high-level of generality (i.e., generic computer functions using a processor such execution of first and second application data using source code and identifier) that it amounts no more than mere instructions to apply the exception using generic computer components. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, the claims 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 limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Mere instructions to apply an exception using a generic computer components cannot provide an inventive concept. The claim is not patent eligible.
Claim Rejections - 35 USC § 103
14.The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
15.Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Prakash (US Pub.No.2017/0063975) in view of Arnon (US Pat. No. 8, 966,211).
16. Regarding claim 1 Prakash teaches a non-transitory computer readable storage medium comprising instructions executable to implement a compiler on a first computer, wherein:
the compiler generates a first protected application data from a source code and a first identifier upon a first user command referencing the source code and the first identifier (Para:0043 teaches during compilation of application 112, the Java software layer 120 source code can be compiled using a Java complier such as Javac into Java class files. The C or C++ code headers which allow software layer 120 to call functions in software layer 130 can be generated by a header file generator such as Javah. The native C or C++ software layer 130 source code can be compiled and linked to the header files to form a shared object (.so) dynamic library file. The Java class files and the dynamic library file can be packaged and compressed into an application package file (e.g., an Android application package (.apk) file). This application package file can be downloaded from an application store onto communication device 100, and is used to install application 112 onto communication device 100.
Para:003 and Para:0052 teaches SDK 320 (or NDK 330) may obtain an application signature of application 312. For example, the application signature can be obtained by computing a hash value over the application file of application 312 (e.g., a hash of the application package file). The application signature [which is the identifier herein] may also include metadata associated with application 312 such as source, version number etc.).
the first protected application data including instructions executable by a second computer to implement a user application (Para:0043 teaches executing the application 112 in a virtual machine instance is the second computer herein);
the compiler generates a second protected application data from the source code and a second identifier upon a second user command referencing the source code and the second identifier, the second protected application data including instructions executable by the second computer to implement the user application (see, the 112(b) rejection above).
Prakash teaches all the above claimed limitations but does not expressly teach the first protected application data is different from the second application data, the difference including an order of one or a combination of functions, data, and call parameters of one or more of the function, and call parameters of one or more of the functions.
Arnon teaches the first protected application data is different from the second application data, the difference including an order of one or a combination of functions, data, and call parameters of one or more of the function, and call parameters of one or more of the functions
(Col. 2, lines. 8-14; lines 17-26 teaches a first device identifier is assigned to an application on a host, where the application's data is stored on a data storage system. The first device identifier [i.e. applicant’s second identifier] can be attached to a first data storage system that contains a first data set [i.e. applicant’s difference including an order of at least on of functions….data] for use with operations with the application, while not simultaneously, the first device identifier can be re - assigned to a second storage device that contains a second data set [i.e. applicant’s difference including an order of at least on of functions….data] for use with operation with the application. Col. 2, lines 26 – 31 teaches the first identifier can include a label [i.e., applicant’s input code] to that tells the location of the data storage device to which the first identifier is attached).
It would have been obvious to one of the ordinary skill in the art before the invention was filed to modify Prakash teaches to include the first protected application data is different from the second application data, the difference including an order of one or a combination of functions, data, and call parameters of one or more of the function, and call parameters of one or more of the functions as taught by Arnon such a setup would allow for the database server to experience little to no interruption to its internal configuration when dynamically binding user’s identifiers.
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 DEREENA T CATTUNGAL whose telephone number is (571)270-0506. The examiner can normally be reached Mon-Fri : 7:30 AM-5 PM EST.
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/DEREENA T CATTUNGAL/Primary Examiner, Art Unit 2431