DETAILED ACTION
Remarks
This office action is issued in response to communication filed on 11/22/2023. Claims 1-20 are pending in this Office 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 .
Claim Objections
Claim 7 is objected to because of the following informalities: claim 7 depends on itself (claim 7). 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1, 9 and 15:
Step 1: Statutory Category ?: Yes. claim 1 recites a computing platform (i.e., a “machine”) , claim 9 recites a method (i.e., a “process”) and claim 16 recites a non-transitory computer readable media (i.e., an article of manufacture) which are statutory categories.
Claim 1:
Step 2A-Prong 1: Judicial Exception Recited ?: Yes.
Claim 1 recites one or more limitations that can be performed in the human mind using observation, evaluation, judgment and opinion including with the help of a pen and paper:
“generate questions to be directed to a generative artificial intelligence platform, the generated questions having answers that indicate the presence of the embedded at least one unique identifying feature”;
“ determine whether the received answers include the at least one unique identifying feature”
Step 2A-Prong 2: Integrated into a practical application? No.
Claim 1 recites additional elements of “embed at least one unique identifying feature into a data file that includes confidential information; transmit, via the communication interface, to the generative artificial intelligence platform the generated questions; receive, via the communication interface, output from the generative artificial intelligence, the output including answers to the transmitted generated questions”
is simply data gathering and therefore are insignificant extra-solution activities. (See MPEP 2106.05(g)).
The additional element of “computing platform comprising memory and processor” which is recited at the very high level of generality such that it amounts no more than mere instructions to apply the exception using generic computer.
Step 2B: Recites additional elements that amount to significantly more than the judicial exception? No.
Claim 1 does not include additional elements that are sufficient to amount to significantly more than judicial exception. As indicates above, the data gathering is well-understood, routine conventional activities previously known to the industry and therefore do not amount to significantly more than the judicial exception. (See MPEP 2106.05(d)) and 2106.07(a)III) and the computing platform is at best an equivalent of adding the word “apply it” to the exception. Even when considered in combination, the additional elements do not provide an inventive concept, claim 1 therefore is ineligible.
Claim 2 recites additional element of “transmit, via the communication interface, to an administrative computing device, detection of the at least one unique identifying feature” which is data gathering and therefore are insignificant extra-solution activities. (See MPEP 2106.05(g)). Data gathering is well-understood, routine conventional activities previously known to the industry and therefore do not amount to significantly more than the judicial exception. (See MPEP 2106.05(d)) and 2106.07(a)III).
The additional element of “determine the compromised data file associated with the at least one unique identifying feature” which is a mental step that can be performed in human mind using observation, evaluation, judgment and opinion including with the help of a pen and paper. Even when considered in combination, the additional elements do not provide an inventive concept, claim 2 therefore is ineligible.
Claim 3 recites additional element of “wherein the memory stores additional computer-readable instructions that, when executed by the at least one processor, cause the computing platform to determine access history of the compromised data file” which is a mental step that can be performed in human mind using observation, evaluation, judgment and opinion including with the help of a pen and paper. The processor amounts to no more than mere instructions to apply the exception using a generic computer component and equivalent of merely adding the word “apply it” to the exception. Even when considered in combination, the additional elements do not provide an inventive concept, claim 3 therefore is ineligible.
Claim 4 recites additional element of “wherein the data file is tagged as restricted- access” which is a mental step that can be performed in human mind using observation, evaluation, judgment and opinion including with the help of a pen and paper. Even when considered in combination, the additional elements do not provide an inventive concept, claim 4 therefore is ineligible.
Claim 5 recites additional element of “wherein the data file that includes confidential information includes non-public priority information” which is simply data gathering and is well-understood, routine conventional activities previously known to the industry (See MPEP 2106.05(d)) and 2106.07(a)III). Even when considered in combination, the additional elements do not provide an inventive concept, claim 5 therefore is ineligible.
Claim 6 recites additional element of “wherein the at least one unique identifying feature embedded in the data file comprises a font change to one or more characters, one or more changes in spacing between adjacent characters, or one or more changes to spacing between adjacent lines of text” which is simply data gathering and is well-understood, routine conventional activities previously known to the industry (See MPEP 2106.05(d)) and 2106.07(a)III).. Even when considered in combination, the additional elements do not provide an inventive concept, claim 6 therefore is ineligible.
Claim 7 recites additional element of “wherein the at least one unique identifying feature embedded in data file is essentially undetectable by the human eye” which is simply data gathering and is well-understood, routine conventional activities previously known to the industry (See MPEP 2106.05(d)) and 2106.07(a)III).. Even when considered in combination, the additional elements do not provide an inventive concept, claim 7 therefore is ineligible.
Claim 8 recites additional element of “wherein the at least one unique identifying feature embedded in data file includes an injection command” which is simply data gathering and is well-understood, routine conventional activities previously known to the industry (See MPEP 2106.05(d)) and 2106.07(a)III).. Even when considered in combination, the additional elements do not provide an inventive concept, claim 8 therefore is ineligible.
Claim 9:
Step 2A-Prong 1: Judicial Exception Recited ?: Yes.
Claim 9 recites one or more limitations that can be performed in the human mind using observation, evaluation, judgment and opinion including with the help of a pen and paper:
“generating questions to be directed to a generative artificial intelligence platform, the generated questions having answers that indicate the presence of the embedded at least one unique identifying feature”;
“ determining whether the received answers include the at least one unique identifying feature”
Step 2A-Prong 2: Integrated into a practical application? No.
Claim 9 recites additional elements of “embedding at least one unique identifying feature into a data file that includes confidential information; transmitting, via the communication interface, to the generative artificial intelligence platform the generated questions; receiving, via the communication interface, output from the generative artificial intelligence, the output including answers to the transmitted generated questions” is simply data gathering and therefore are insignificant extra-solution activities. (See MPEP 2106.05(g)).
The additional element of “computing platform comprising memory and processor” which is recited at the very high level of generality such that it amounts no more than mere instructions to apply the exception using generic computer.
Step 2B: Recites additional elements that amount to significantly more than the judicial exception? No.
Claim 9 does not include additional elements that are sufficient to amount to significantly more than judicial exception. As indicates above, the data gathering is well-understood, routine conventional activities previously known to the industry and therefore do not amount to significantly more than the judicial exception. (See MPEP 2106.05(d)) and 2106.07(a)III) and the computing platform is at best an equivalent of adding the word “apply it” to the exception. Even when considered in combination, the additional elements do not provide an inventive concept, claim 9 therefore is ineligible.
Claim 10 recites additional element of “transmitting, via the communication interface, to an administrative computing device, detection of the at least one unique identifying feature” which is data gathering and therefore are insignificant extra-solution activities. (See MPEP 2106.05(g)). Data gathering is well-understood, routine conventional activities previously known to the industry and therefore do not amount to significantly more than the judicial exception. (See MPEP 2106.05(d)) and 2106.07(a)III).
The additional element of “determining the compromised data file associated with the at least one unique identifying feature” which is a mental step that can be performed in human mind using observation, evaluation, judgment and opinion including with the help of a pen and paper. Even when considered in combination, the additional elements do not provide an inventive concept, claim 10 therefore is ineligible.
Claim 11 recites additional element of “determining access history of the compromised data file” which is a mental step that can be performed in human mind using observation, evaluation, judgment and opinion including with the help of a pen and paper. Even when considered in combination, the additional elements do not provide an inventive concept, claim 11 therefore is ineligible.
Claim 12 recites additional element of “wherein the data file is tagged as restricted-access” which is a mental step that can be performed in human mind using observation, evaluation, judgment and opinion including with the help of a pen and paper. Even when considered in combination, the additional elements do not provide an inventive concept, claim 12 therefore is ineligible.
Claim 13 recites additional element of “wherein the data file that includes confidential information includes non-public priority information” which is simply data gathering and is well-understood, routine conventional activities previously known to the industry (See MPEP 2106.05(d)) and 2106.07(a)III). Even when considered in combination, the additional elements do not provide an inventive concept, claim 13 therefore is ineligible.
Claim 14 recites additional element of “wherein the at least one unique identifying feature embedded in the data file comprises a font change to one or more characters, one or more changes in spacing between adjacent characters, or one or more changes to spacing between adjacent lines of text” which is simply data gathering and is well-understood, routine conventional activities previously known to the industry (See MPEP 2106.05(d)) and 2106.07(a)III).. Even when considered in combination, the additional elements do not provide an inventive concept, claim 14 therefore is ineligible.
Claim 15 recites additional element of “wherein the unique identifying feature of the data file is essentially undetectable by the human eye” which is simply data gathering and is well-understood, routine conventional activities previously known to the industry (See MPEP 2106.05(d)) and 2106.07(a)III).. Even when considered in combination, the additional elements do not provide an inventive concept, claim 15 therefore is ineligible.
Claim 16:
Step 2A-Prong 1: Judicial Exception Recited ?: Yes.
Claim 16 recites one or more limitations that can be performed in the human mind using observation, evaluation, judgment and opinion including with the help of a pen and paper:
“generate questions to be directed to a generative artificial intelligence platform, the generated questions having answers that indicate the presence of the embedded at least one unique identifying feature”;
“ determine whether the received answers include the at least one unique identifying feature”
Step 2A-Prong 2: Integrated into a practical application? No.
Claim 16 recites additional elements of “embed at least one unique identifying feature into a data file that includes confidential information; transmit , via the communication interface, to the generative artificial intelligence platform the generated questions; receive, via the communication interface, output from the generative artificial intelligence, the output including answers to the transmitted generated questions” is simply data gathering and therefore are insignificant extra-solution activities. (See MPEP 2106.05(g)).
The additional element of “computing platform comprising memory and processor” which is recited at the very high level of generality such that it amounts no more than mere instructions to apply the exception using generic computer.
Step 2B: Recites additional elements that amount to significantly more than the judicial exception? No.
Claim 16 does not include additional elements that are sufficient to amount to significantly more than judicial exception. As indicates above, the data gathering is well-understood, routine conventional activities previously known to the industry and therefore do not amount to significantly more than the judicial exception. (See MPEP 2106.05(d)) and 2106.07(a)III) and the computing platform is at best an equivalent of adding the word “apply it” to the exception. Even when considered in combination, the additional elements do not provide an inventive concept, claim 16 therefore is ineligible.
Claim 17 recites additional element of “transmit, via the communication interface, to an administrative computing device, detection of the at least one unique identifying feature” which is data gathering and therefore are insignificant extra-solution activities. (See MPEP 2106.05(g)). Data gathering is well-understood, routine conventional activities previously known to the industry and therefore do not amount to significantly more than the judicial exception. (See MPEP 2106.05(d)) and 2106.07(a)III).
The additional element of “determine the compromised data file associated with the at least one unique identifying feature” which is a mental step that can be performed in human mind using observation, evaluation, judgment and opinion including with the help of a pen and paper. Even when considered in combination, the additional elements do not provide an inventive concept, claim 17 therefore is ineligible.
Claim 18 recites additional element of “wherein the memory stores additional computer-readable instructions that, when executed by the at least one processor, cause the computing platform to determine access history of the compromised data file” which is a mental step that can be performed in human mind using observation, evaluation, judgment and opinion including with the help of a pen and paper. The processor amounts to no more than mere instructions to apply the exception using a generic computer component and equivalent of merely adding the word “apply it” to the exception. Even when considered in combination, the additional elements do not provide an inventive concept, claim 18 therefore is ineligible.
Claim 19 recites additional element of “wherein the data file is tagged as restricted- access” which is a mental step that can be performed in human mind using observation, evaluation, judgment and opinion including with the help of a pen and paper. Even when considered in combination, the additional elements do not provide an inventive concept, claim 19 therefore is ineligible.
Claim 20 recites additional element of “wherein the at least one unique identifying feature embedded in the data file comprises a font change to one or more characters, one or more changes in spacing between adjacent characters, or one or more changes to spacing between adjacent lines of text” which is simply data gathering and is well-understood, routine conventional activities previously known to the industry (See MPEP 2106.05(d)) and 2106.07(a)III).. Even when considered in combination, the additional elements do not provide an inventive concept, claim 20 therefore is ineligible.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2,4-5,9-10,12-13,16-17 and 19 rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wagh et al.,(US Patent Application Publication 2025/0117480 A1, hereinafter “Wagh”)
As to claim 1, Wagh teaches a computing platform, comprising: at least one processor; a communication interface communicatively coupled to the at least one processor; and memory storing computer-readable instructions that, when executed by the at least one processor (Wagh Fig.1 and par [0036] ) , cause the computing platform to:
embed at least one unique identifying feature into a data file that includes confidential information; ( Wagh par [0030] teaches one or more dataset may include sensitive data. Wagh par [0033] teaches operating on data sets include reading insight data such as obfuscated or redacted information (unique feature))
generate questions to be directed to a generative artificial intelligence platform, the generated questions having answers that indicate the presence of the embedded at least one unique identifying feature;(Wagh par [0046] teaches receiving input data comprising a prompt that may be used to directly prompt machine learning model(s) to respond in a certain manner during code analysis)
transmit, via the communication interface, to the generative artificial intelligence platform the generated questions; (Wagh par [0046] teaches receiving input data comprising a prompt that may be used to directly prompt machine learning model(s) to respond in a certain manner during code analysis)
receive, via the communication interface, output from the generative artificial intelligence, the output including answers to the transmitted generated questions; and determine whether the received answers include the at least one unique identifying feature. (Wagh par [0055]-[0066] teaches generate output via the one or more machine learning model, the output data comprising or more of an indication of whether privacy constraints as specified by one or more prompts are satisfied. Wagh par [0099] teaches the explainability/reasoning output “This code appears to be obfuscated in an attempt to hide the logic and make it difficult to analyze”. (obfuscated is interpreted as unique identifying feature))
As to claim 2, Wagh teaches the computing platform of claim 1, wherein the memory stores additional computer-readable instructions that, when executed by the at least one processor, cause the computing platform to: transmit, via the communication interface, to an administrative computing device, detection of the at least one unique identifying feature ; and determine the compromised data file associated with the at least one unique identifying feature. (Wagh par [0060] teaches the decision and reporting module may transmit information regarding any code including the code itself that is determined to be malicious to one or more systems and/or administrators of system)
As to claim 4, Wagh teaches the computing platform of claim 1, wherein the data file is tagged as restricted- access. (Wagh par [0035] teaches data owners may use data owner systems 108a-108c to execute inputs that define (e.g., create and/or modify) access control rules and/or privacy constraints for determining what users may access their data, when their data may be accessed, the manner in which their data may be accessed, and how their data may (or may not) be operated on)
As to claim 5, Wagh teaches the computing platform of claim 1, wherein the data file that includes confidential information includes non-public priority information. (Wagh par [0042] teaches the privacy customization inputs specifying that all or certain JSON files are private (sensitive) for data controlled by a data owner)
Claims 9-10 and 12-13 merely recite a method to performed by the computing platform of claims 1-2 and 4-5 respectively. Accordingly, Wagh teaches every limitation of claims 9-10 and 12-13 as indicates in the above rejection of claims 1-2 and 4-5 respectively.
Claims 16-17 and 19 merely recite a non-transitory computer readable media storing instructions executed by the platform of claims 1-2 and 4 respectively. Accordingly, Wagh teaches every limitation of claims 16-17 and 19 as indicates in the above rejection of claims 1-2 and 4 respectively.
Claims 3, 11 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Wagh and further in view of Liao et al., (US Patent 8,677,132 B1, hereinafter “Liao”)
As to claim 3, Wagh teaches the computing platform of claim 2 but fails to expressly teach wherein the memory stores additional computer-readable instructions that, when executed by the at least one processor, cause the computing platform to determine access history of the compromised data file.
However, Liao teaches wherein the memory stores additional computer-readable instructions that, when executed by the at least one processor, cause the computing platform to determine access history of the compromised data file. (Liao col 7, lines 55-67 teaches the digital watermark is human indiscernible and represents the security policy extracted from the secured document as well as access history of the secured document)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to combine the teaching of Wagh and Liao to achieve the claimed invention. One would have been motivated to make such combination to detect unauthorized distribution of content (Liao col 20, lines 20-23)
As to claims 11 and 18 see the above rejection of claims 2-3.
Claims 6-7,14-15 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Wagh and further in view of Muriqui, ( US Patent Application Publication 2024/0046318 A1, hereinafter “Muriqui”)
As to claim 6, Wagh teaches the computing platform of claim 1 but fails to teach wherein the at least one unique identifying feature embedded in the data file comprises a font change to one or more characters, one or more changes in spacing between adjacent characters, or one or more changes to spacing between adjacent lines of text.
However, Muriqui teaches wherein the at least one unique identifying feature embedded in the data file comprises a font change to one or more characters, one or more changes in spacing between adjacent characters, or one or more changes to spacing between adjacent lines of text. (Muriqui par [0345] teaches embedding watermarks in audio and images, pseudoramdom dot patterns in scanned page images , random insertion of spaces between words, formatting information or the like in text record)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to combine the teaching of Wagh and Muriqui to achieve the claimed invention. One would have been motivated to make such combination to provide further security for the records and the use of the system . (Muriqui par [0345])
As to claim 7, Wagh teaches the computing platform of claim 7 but fails to teach wherein the at least one unique identifying feature embedded in data file is essentially undetectable by the human eye.
However, Muriqui teaches wherein the at least one unique identifying feature embedded in data file is essentially undetectable by the human eye. (Muriqui par [0345] teaches embedding watermarks in audio and images, pseudoramdom dot patterns in scanned page images , random insertion of spaces between words, formatting information or the like in text record)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to combine the teaching of Wagh and Muriqui to achieve the claimed invention. One would have been motivated to make such combination to provide further security for the records and the use of the system . (Muriqui par [0345])
As to claims 14-15, see the above rejection of claims 6-7.
As to claim 20, see the above rejection of claim 6.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Wagh and further in view of Padgett et al., (US Patent Application Publication 2024/0160902 A1, hereinafter “Padgett”)
As to claim 8, Wagh teaches the computing platform of claim 1 but fails to teach wherein the at least one unique identifying feature embedded in data file includes an injection command.
However, Padgett teaches wherein the at least one unique identifying feature embedded in data file includes an injection command. (Padgett par [0065] teaches the rerunning of the generative AI model may use the same input prompt with a slight adjustment. The adjustment to the input prompt may include injection of a random seed or nonce)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to combine the teaching of Wagh and Padgett to achieve the claimed invention. One would have been motivated to make such combination to improve the generative AI models in a manner that avoids or reduces problematic outputs.(Padgett par [0037])
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ben David et al., US PGpub 2020/0218804 A1. Par [0071] discloses marking or augmenting an original document with a marker and searching the computer network to determine the discovered location of the marked document according to the encoded marker.
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/HIEN L DUONG/Primary Examiner, Art Unit 2147
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