DETAILED ACTION
A response was received on 25 June 2026. By this response, Claims 1, 2, 4, 5, 11, 13, 15, 16, 18, 19, 21, and 23 have been amended. Claims 6 and 22 have been canceled. New Claims 24 and 25 have been added. Claims 1, 2, 4, 5, 9-21, and 23-25 are currently pending in the present application.
Response to Amendment
The amendments to the claims do not fully comply with the requirement of 37 CFR 1.121(c) that each claim must include the correct status identifier. In particular, Claim 14 is indicated as original, but does not match the original claim because it was amended in the response filed 04 March 2026. Claim 14 should therefore be indicated as “previously presented”. As a courtesy and for the purpose of advancing prosecution, the amendments have been treated as though they were fully compliant with 37 CFR 1.121(c). Applicant is again reminded that all future amendments must fully comply with the provisions of 37 CFR 1.121.
Response to Arguments
Applicant's arguments filed 25 June 2026 have been fully considered but they are not persuasive.
Regarding the rejection of Claims 1, 2, 4-6, 9-17, and 21-23 under 35 U.S.C. 112(b), and with particular reference to Claims 10 and 13, Applicant argues that the limitations related to converting data are supported by the hashing described in paragraph 0018 of the present specification (see pages 9-10 of the present response). However, without further processing, a hash function only takes input and provides output as binary data. Without further explanation of how the output data is processed, it is not clear how the data would be “mapped to a list of numeric values or strings” as in paragraph 0018. Without further processing, a hash function on a single input value does not provide a list of values or strings. Therefore, it remains unclear how the converting in Claims 10 and 13 is to be defined.
Regarding the rejection of Claims 1, 2, 4-6, and 9-23 under 35 U.S.C. 103 as unpatentable over Esmaeilzadeh et al, US Patent Application Publication 2023/0259786, in view of Yan et al, US Patent 11574069, and with particular reference to amended independent Claim 1, Applicant argues that Esmaeilzadeh, individually, does not teach making embedded original data inaccessible while making the noise-added data accessible with respect to an operator of the electronic database (pages 10-11 of the present response, citing Esmaeilzadeh, paragraph 0020). However, Esmaeilzadeh does disclose that embedded original data is not accessible to the operator of the database while the noise-added data is accessible to the operator of the database (see Esmaeilzadeh, paragraph 0025, where the obfuscated data, i.e. noise-added data as per paragraph 0021, is used to train the model and is therefore accessible to the database and the operator, and the un-obfuscated data is not accessible to the model and therefore not accessible to the operator of the database; see further paragraph 0021, where the input data cannot be re-created, i.e. is inaccessible).
Therefore, for the reasons detailed above, the Examiner maintains the rejections as set forth below.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: New Claim 24 recites “generating a plot that contains a visual representation of at least the plurality of first instances of the noise-added data, wherein each first instance of the plurality of first instances of the noise-added data is visually represented as a respective dot in the plot”. Similarly, new Claim 25 recites “generating a visual representation of the different instances of the noise-added embedded original data of the first type”. However, there appears to be no mention in the specification of operations of a system including generating such a plot or visual representation as claimed. Therefore, there is not clearly proper antecedent basis for the claimed subject matter in the specification. For further detail, see below with respect to the rejection under 35 U.S.C. 112(a) for failure to comply with the written description requirement.
Claim Objections
Claims 4 and 16 are objected to because of the following informalities:
In Claim 4, lines 2 and 4, “outputted” should read “output”.
In Claim 16, line 3, “outputted” should read “output”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The rejection of Claims 6 and 22 under 35 U.S.C. 112(b) as indefinite is moot in light of the cancellation of the claims. The rejection of Claims 1, 2, 4, 5, 9-17, 21, and 23 is NOT withdrawn, because not all issues have been addressed and/or because the amendments have raised new issues, as detailed below. See also the response to arguments above.
The following is a quotation of 35 U.S.C. 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 24 and 25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
New Claim 24 recites “generating a plot that contains a visual representation of at least the plurality of first instances of the noise-added data, wherein each first instance of the plurality of first instances of the noise-added data is visually represented as a respective dot in the plot”. However, there appears to be no mention in the specification of operations of a system including generating such a plot as claimed. Further, Applicant has not pointed out where the new claim is supported. See also MPEP § 2163.04. Therefore, there is not clearly sufficient written description of the claimed subject matter in the specification.
New Claim 25 recites “generating a visual representation of the different instances of the noise-added embedded original data of the first type”. However, there appears to be no mention in the specification of generating such a visual representation as claimed. Further, Applicant has not pointed out where the new claim is supported. See also MPEP § 2163.04. Therefore, there is not clearly sufficient written description of the claimed subject matter in the specification.
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, 2, 4, 5, 9-17, 21, and 23-25 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.
Claim 1 recites “the embedded original data of the first type is inaccessible” in line 8. It is not clear whether it is the data in embedded form or the underlying original data (that has been embedded) which is intended to be inaccessible. Similarly, the references to “the embedded original data” in line 13 is unclear as to which form of the data is actually queried and “the noise-added embedded original data” in line 16 is unclear as to which form of the data is accessible. The claim further recites “accessible to operator user” in line 17. This is grammatically unclear, although it appears that this may be intended to refer to the operator. The above ambiguities render the claim indefinite.
Claim 4 recites “the outputted noise-added embedded original data” in lines 2-3 and 4, which makes it unclear which form of the data is actually being referred to because once it is embedded and the noise is added, the data is no longer the original data.
Claim 5 recites “the noise-added embedded original data” in lines 1-2. It is unclear which form of the data is actually being referred to because once it is embedded and the noise is added, the data is no longer the original data.
Claim 10 recites “converting the original data of the first type in the electronic file from the non-numeric-vector format into a numeric-vector format” in lines 4-5. There does not appear to be an algorithm defined in the claims or specification for what this conversion might encompass. Although Applicant has pointed to the hash function in paragraph 0018 of the specification, a hash does not convert into a vector without further processing.
Claim 13 recites “converting… the first data from the first format into a second format that is different” in lines 8-10. There does not appear to be an algorithm defined in the claims or specification for what this conversion might encompass. Although Applicant has pointed to the hash function in paragraph 0018 of the specification, a hash does not convert between formats without further processing. The above ambiguities render the claim indefinite.
Claim 25 recites “the noise-added embedded original data” in lines 3 and 5-6. It is unclear which form of the data is actually being referred to because once it is embedded and the noise is added, the data is no longer the original data.
Claims not explicitly referred to above are rejected due to their dependence on a rejected base claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1, 2, 4, 5, 9-21, and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Esmaeilzadeh et al, US Patent Application Publication 2023/0259786, in view of Yan et al, US Patent 11574069.
In reference to Claims 1 and 12, Esmaeilzadeh discloses a method that includes, on a computer system of a first entity, accessing an electronic file containing data of a first type meeting one or more specified sensitivity criteria (see paragraph 0042, for example); embedding the data into an electronic database (dataset D’ 112), where the embedded data is inaccessible to an operator of the database (paragraph 0025, un-obfuscated data not accessible to model, see also paragraph 0021); accessing a request to query the data (paragraph 0064); and adding noise to the embedded data based on the request and outputting the data after the noise has been added, where the noise-added data is accessible to the operator of the database (see paragraphs 0020-0023 and 0025). However, although Esmaeilzadeh discloses an autoencoder and pruning the decoder (paragraph 0020), and although pruning the decoder could potentially be interpreted to encompass deleting the entire decoder, Esmaeilzadeh does not explicitly disclose discarding the decoder after training.
Yan discloses a method that includes training an autoencoder including an encoder and decoder (column 3, line 43-column 4, line 13) and discarding the decoder after training the autoencoder (column 4, lines 14-30). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Esmaeilzadeh to include discarding the autoencoder, in order to impede the restoration of the input (Yan, column 4, lines 14-30).
In reference to Claim 2, Esmaeilzadeh and Yan further disclose a batching technique and adding different amounts or types of noise so that different data is output (Esmaeilzadeh, paragraph 0028).
In reference to Claims 4 and 8, Esmaeilzadeh and Yan further disclose performing machine learning to analyze the data and using an autoencoder (Esmaeilzadeh, paragraph 0025; Yan, column 3, line 43-column 4, line 30).
In reference to Claims 5 and 10, Esmaeilzadeh and Yan further disclose a numeric vector format and non-numeric vector format and converting formats (Esmaeilzadeh, paragraph 0069).
In reference to Claim 9, Esmaeilzadeh and Yan further disclose that the embedding obfuscates the data (Esmaeilzadeh, paragraph 0020).
In reference to Claims 11 and 21, Esmaeilzadeh and Yan further disclose first and second partitions storing different portions of the data (see Esmaeilzadeh, paragraph 0042).
In reference to Claim 25, Esmaeilzadeh and Yan further disclose repeating the adding of noise to output different instances of noise-added data (Esmaeilzadeh, paragraph 0028) and generating a visual representation of the noise-added data (see Esmaeilzadeh, paragraph 0075, visualization).
Claims 13-17, 23, and 24 are directed to systems having functionality corresponding to the methods of Claims 1, 2, 4, 10, 11, and 25, and are rejected by a similar rationale, mutatis mutandis.
Claims 18-20 are directed to software implementations of methods similar to those recited in Claims 1, 4, 6, 8, and 10, and are rejected by a similar rationale.
Conclusion
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 Zachary A Davis whose telephone number is (571)272-3870. The examiner can normally be reached Monday-Friday, 9:00am-5:30pm, Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rupal D Dharia can be reached at (571) 272-3880. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Zachary A. Davis/Primary Examiner, Art Unit 2492
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