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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 10, 2026 has been entered.
Status of Claims
Claims 1, 15 and 21 have been amended.
Claims 1-21 are currently pending and have been examined.
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 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 1-14 and 21are drawn to methods while claim(s) 15-20 is/are drawn to an apparatus. As such, claims 1-21 are drawn to one of the statutory categories of invention (Step 1: YES).
Step 2A - Prong One:
Claim 1 (representative of independent claim(s) 15 and 21) recites the following steps:
receiving policy information relating to an entity, the policy information including information associated with a plurality of controls for implementing policies of the entity;
extracting the plurality of controls from the policy information;
identifying a first plurality of controls from the plurality of controls which are configurable by the entity to perform a first type of task relating to the policy information
identifying a second plurality of controls from the plurality of controls which are configurable by a service provider to perform a second type of task relating to the policy information, different from the first type of task
based on the identifying of the first plurality of controls and the identifying of the second plurality of controls, recommending the first plurality of controls from the plurality of controls configurable by the entity and the second plurality of controls from the plurality of controls configurable by the service provider;
providing, for presentation a user associated with the entity, one or more of the first plurality of controls to implement the policies of the entity:
receiving, information configuring one or more of the first plurality of controls to set at least one of permission or privilege rights associated with the entity:
applying, one or more of the second plurality of controls, to implement the policies of the entity.
These steps, under its broadest reasonable interpretation, encompass a human manually (e.g., in their mind, or using paper and pen) recommend controls by implementing policies of the entity and controls (i.e., one or more concepts performed in the human mind, such as one or more observations, evaluations, judgments, opinions), but for the recitation of generic computer components. If one or more claim limitations, under their broadest reasonable interpretation, covers performance of the limitation(s) in the mind but for the recitation of generic computer components, then it falls within the "mental processes" subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 1 recites an abstract idea (Step 2A - Prong One: YES).
Independent claim(s) 15 and 21 are determined to recite an abstract idea under the same analysis.
Step 2A - Prong Two:
This judicial exception is not integrated into a practical application. The claim(s) recite the additional elements/limitations of:
one or more computing devices of an information management system,
a machine learning resource associated with the one or more computing devices,
machine learning resource,
associated with the information management system
via a user computing device
a user interface screen comprising user interface elements
by the one or more computing devices, via an input to one or more of the user interface elements
one or more computing devices,
A server computing system, comprising: one or more processors; and one or more non-transitory computer-readable media that store instructions that, when executed by the one or more processors, cause the server computing system to perform operations,
server computing system,
a controls database
The requirement to execute the claimed steps/functions listed above is equivalent to adding the words ''apply it'' on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. This/these limitation(s) do/does not impose any meaningful limits on producing the abstract idea and therefore do/does not integrate the abstract idea into a practical application (see MPEP 2106.05(f)).
Additionally, “Step 2A - Prong 2”, the recited additional element(s) of “configure one or more computing infrastructure devices of the service provider" serve merely to generally link the use of the judicial exception to a particular technological environment or field of use. These limitations therefore do not integrate the abstract idea into a practical application (see MPEP 2106.05(h)).
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above in "Step 2A - Prong 2", the requirement to execute the claimed steps/functions listed above is equivalent to adding the words "apply it" on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as "significantly more" (see MPEP 2106.05 (f)).
As discussed above in “Step 2A - Prong 2”, the recited additional element(s) of ”configure one or more computing infrastructure devices of the service provider” serves merely to generally link the use of the judicial exception to a particular technological environment or field of use. These limitations therefore do not qualify as “significantly more5' (see MPEP 2106.05(g, h)).
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claim(s) amount to significantly more than the abstract idea identified above (Step 2B: NO).
Regarding Dependent Claims:
Dependent claims 2-4, 9, 10, 16 and 17 fail to include any additional elements and are further part of the abstract idea as identified by the Examiner.
Dependent claims 5-8, 11-14, 18-20 include additional limitations that are part of the abstract idea except for:
via the machine learning resource
a controls database
computing assets
by the one or more computing devices
a term frequency-inverse document frequency method
The additional elements of the dependent claims are equivalent to adding the words ''apply it'' on a generic computer and/or mere instructions to implement the abstract idea on a generic computer, as well as serving to merely generally link the use of the judicial exception to a particular technological environment or field of use, . Even in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
Claim Rejections - 35 USC § 103
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 1-21 are rejected under 35 U.S.C. 103 as being unpatentable over Adam (2020/0134190) in view of Murray (2021/0211472) and Alikhani (2021/0209294).
Claims 21, 1 and 15
Adam discloses a computer-implemented method, comprising:
receiving, by one or more computing devices of an information management system, policy information relating to an entity (Adam [0029]); See at least “The compliance engine 103 can use the regulation repository 112 to receive one or more compliance control documents 113 that are relevant to a particular client domain (e.g., 102(1)).”
extracting, via a machine learning resource associated with the one or more computing devices, keywords from the policy information (Adam [0031[0066]]); See at least “There may be a machine learning module 548 operative to learn from prior interactions with one or more client domains, during a training phase. The machine learning module 548 may also aid in identifying an appropriate source of an executable code for an auditable unit of a compliance control document.”
mapping, via the machine learning resource, the keywords extracted from the policy information with controls stored in a controls database to determine a plurality of controls for implementing policies of the entity (Adam [0031][0032][0044]); See at least [0044] “Based on the machine learning, patterns, trends, and key words that are consistent with features of an auditable unit are identified..”
providing, for presentation to a user associated with the entity, a user interface screen comprising user interface elements to configure one or more of the first plurality of controls to implement the policies of the entity (Adam [0042]); See at least “approval from an appropriate authority, such as an administrator of the client domain 204, would be solicited by the compliance engine 203 before the automatic update of the authentication protocol would be implemented.”
identifying, via the machine learning resource, a second plurality of controls from the plurality of controls which are configurable by a service provider associated with the information management system to perform a second type of task relating to the policy information, different from the first type of task (Adam [0051]). See “each compliance control document is decomposed into one or more auditable units. Each auditable unit is operative to provide one or more criteria for compliance for testing the corresponding auditable unit.”
Adam does not explicitly teach the details below. Murray teaches:
based on the identifying of the first plurality of controls and the identifying of the second plurality of controls, recommending, via the machine learning resource, the first plurality of controls from the plurality of controls configurable by the entity and the second plurality of controls from the plurality of controls configurable by the service provider (Murray [0060][0087]); See at least “Module 120 further monitors the compliance of the organization against security frameworks/standards and provides results 108 to the organization of its analysis containing the observed risks/gaps as well as recommendations and feedback on overcoming the same. [emphasis added]”
receiving, by the one or more computing devices, via an input to one or more of the user interface elements, information configuring one or more of the first plurality of controls to set at least one of permission or privilege rights associated with the entity (Murray [0215]-[0221]) See “Appropriate access control shall be provided…” See also [0366] for the interface ensuring account authorization for the employees.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included in the method of managing a compliance of a system, as taught by Adam, the recommendations of Murray, to ensure current compliance that include interdependencies on other entities (Murray [0015]).
Adam teaches collecting the latest regulations from various sources [0025] but neither Adam nor Murray disclose the entity or service provider. Alikhani teaches:
applying, by the one or more computing devices, to configure one or more computing infrastructure devices of the service provider, to implement the policies of the entity (Alikhani [0035]). See at least “one or more steps of the method disclosed herein may be initiated, maintained, controlled and/or terminated based on a control input received from one or more devices operated by one or more users such as, for example, but not limited to, an end user, an admin, a service provider, a service consumer, an agent, a broker and a representative thereof.”
identifying, via the machine learning resource, a first plurality of controls from the plurality of controls which are configurable by the entity to perform a first type of task relating to the policy information; (Alikhani [0094]); See at least “the regulatory authority [entity] may include an institution and an organization that may enforce regulations associated with occupation, health, safety, technology, etc. Further, a document source device of the plurality of document source devices may be associated with the regulatory authority that may include a document repository (such as a server, a database).”
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included in the method of managing a compliance of a system by issuing recommendations, as taught by Adam and Murray, the ability to receive controls from various sources, as in Alikhani, to streamline compliance requirements (Adam [0002]).
Claims 2 and 15
Modified Adam, Murray and Alikhani disclose the limitations above. Modified Adam further teaches:
wherein extracting the plurality of controls from the policy information includes parsing the policy information (Adam [0038]). See at least “the compliance engine 203 filters out auditable units that are not directly related and retains only those that are relevant.”
Claim 3
Modified Adam, Murray and Alikhani disclose the limitations above. Modified Murray further teaches:
wherein extracting the plurality of controls from the policy information includes classifying each of the plurality of controls (Murray [0087]). See at least “machine-learning is also employed to determine/classify actionable items in new RFP 104.” Where the actionable items are the controls.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included in the method of managing a compliance of a system, as taught by Adam, the classifications of Murray, to ensure current compliance that include interdependencies on other entities (Murray [0015]).
Claims 4, 10 and 17
Modified Adam, Murray and Alikhani disclose the limitations above. Modified Murray further teaches:
wherein classifying each of the plurality of controls comprises classifying each of the plurality of controls into one or more of service provider controls which are configurable by the service provider, entity controls which are configurable by the entity, third party controls which are configurable by an authorized third party, or shared controls which are configurable by two or more of the service provider, the entity, or the authorized third party (Murray [0087]). See at least “machine-learning is also employed to determine/classify actionable items in new RFP 104.” Where the actionable items are the controls.
Although the limitation has been addressed in view of prior art, the Examiner notes that the particular type of classification (i.e. “classifying each of the plurality of controls into one or more of service provider controls which are configurable by the service provider, entity controls which are configurable by the entity, third party controls which are configurable by an authorized third party, or shared controls which are configurable by two or more of the service provider, the entity, or the authorized third party” as claimed) is considered non-functional descriptive material, of which does not explicitly alter or impact the steps of the method in such a way as to establish a new and unobvious functional relationship with the method as claimed. As such, the non-functional descriptive material limitation can be given little to no patentable weight. See MPEP 2111.05. The functional limitation is classifying each of the plurality of controls. The reference cited teaches this. Appropriate correction is required.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included in the method of managing a compliance of a system, as taught by Adam, the classifications of Murray, to ensure current compliance that include interdependencies on other entities (Murray [0015]).
Claim 5
Modified Adam, Murray and Alikhani disclose the limitations above. Modified Murray further teaches:
wherein extracting the plurality of controls from the policy information includes extracting keywords from the policy information via the machine learning resource (Murray [0077]). See at least “The documents are also processed with one or more available NER algorithms to extract named entities and/or keywords which are also stored in the metadata.”
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included in the method of managing a compliance of a system, as taught by Adam, extracting keywords, as taught by Murray, to reduce the otherwise laborious, time consuming and error-prone techniques of the prior art. (Murray [0031]).
Claims 6 and 18
Modified Adam, Murray and Alikhani disclose the limitations above. Modified Murray further teaches:
wherein extracting the keywords from the policy information via the machine learning resource includes implementing a term frequency-inverse document frequency method to measure a relevance of words in the policy information (Murray [0076]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included in the method of managing a compliance of a system, as taught by Adam, extracting keywords, as taught by Murray, to reduce the otherwise laborious, time consuming and error-prone techniques of the prior art. (Murray [0031]).
Claims 7 and 18
Modified Adam, Murray and Alikhani disclose the limitations above. Modified Murray further teaches:
wherein extracting the keywords from the policy information via the machine learning resource includes implementing a clustering method to classify words from the policy information (Murray [0076][0144]). See at least “Machine learning based classification. Machine learning based classification techniques are also employed by AI and insights engine 102 in determining similarity between the questions of the RFP and the questions/items of existing documents.”
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included in the method of managing a compliance of a system, as taught by Adam, the classifications of Murray, to ensure current compliance that include interdependencies on other entities (Murray [0015]).
Claims 8 and 19
Modified Adam, Murray and Alikhani disclose the limitations above. Modified Adam further teaches:
mapping the keywords extracted from the policy information to controls stored in a controls database; and obtaining candidate controls based on the mapping from the controls database (Adam [0031][0032][0044]); See at least [0031] “the natural language content may be provided as a text. In one embodiment, concept expansion, such as the IBM Watson concept expansion, can be used to identify the concept cues in the compliance control documents 113 and/or the internal parameters 119 to determine the intent thereof. In this regard, large sets of unstructured sets of data may be provided to the compliance engine 103, such that it can learn therefrom. The large sets of unstructured data may relate to prior compliance control documents 113 and/or internal parameters 119 that were successfully processed by the compliance engine 103, which now acts as a corpus of data to learn from.”
Claims 9 and 19
Modified Adam, Murray and Alikhani disclose the limitations above. Modified Adam further teaches:
selecting a subset of the candidate controls to obtain the plurality of controls, based on a relevance of each of the candidate controls (Adam [0045]). See “an auditable unit ( e.g., auditable unit 4) can be decomposed into six smaller sub-units, five of which have suitable code in the technology stack to be mapped to. In this way, even though not all aspects of the auditable unit can be accommodated, a substantial compliance can be achieved, thereby reducing compliance risk.”
Claim 11
Modified Adam, Murray and Alikhani disclose the limitations above. Modified Adam further teaches:
the one or more computing infrastructure devices include at least one of purpose-built chips, purpose-built servers, purpose built-networks, or purpose-built data centers (Adam [0098]). See at least “These computer readable program instructions may be provided to a processor of an appropriately configured computer, special purpose computer, or other programmable data processing apparatus to produce a machine, such that the instructions, which execute via the processor of the computer or other programmable data processing apparatus, create means for implementing the functions/acts specified in the flowchart and/or block diagram block or blocks.”
Modified Alikhani discloses:
wherein the second type of task includes a network security task (Alikhani [0094]); See at least “the layout may be associated with a text indentation of the regulatory document. Further, the regulatory authority may include an institution and an organization that may enforce regulations associated with occupation, health, safety, technology, etc.”
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included in the method of managing a compliance of a system by issuing recommendations, as taught by Adam and Murray, the ability to receive controls from various sources, as in Alikhani, to streamline compliance requirements (Adam [0002]).
Claim 12
Modified Adam, Murray and Alikhani disclose the limitations above. Modified Adam further teaches:
wherein at least one of the first plurality of controls recommended via the machine learning resource includes an operational control (Adam [0026]). See “Additional rules of a compliance control document 113 may be "access to designated facilities require additional biometric information," or "the temperature of a facility cannot go below a predetermined threshold, which is to be confirmed at eight-minute intervals," "surveillance information must be stored for at least 90 days at a remote repository," etc.”
Claims 13 and 20
Modified Adam, Murray and Alikhani disclose the limitations above. Modified Adam further teaches:
receiving, by the one or more computing devices, entity information relating to the entity, the entity information including at least one of jurisdiction information of the entity, a type of industry associated with the entity, a type of workload performed by the entity, a type of entity, a type of service requested by the entity, or a type of product requested by the entity (Adam [0035]). See at least “the compliance engine 203 receives internal parameters 206 of the client domain 204. Internal parameters 206 may include, without limitation, a type of industry, geographical location, physical attributes (sometimes referred to as hardware infrastructure), software infrastructure used in the client domain 204, internal interpretation of regulations or internal regulations.”
Claims 14 and 20
Modified Adam, Murray and Alikhani disclose the limitations above. Modified Murray further teaches:
wherein recommending, via the machine learning resource, the first plurality of controls from the plurality of controls configurable by the entity from the plurality of controls configurable by the service provider, is based on the entity information relating to the entity (Murray [0060]); See at least “Module 120 further monitors the compliance of the organization against security frameworks/standards and provides results 108 to the organization of its analysis containing the observed risks/gaps as well as recommendations and feedback on overcoming the same.”
EXAMINER NOTE: The reference does not explicitly teach “and a second plurality of controls from the plurality of controls configurable by a service provider,” however Examiner notes that this step is a mere Duplication of Parts. See MPEP 2144.04 VI. B: Duplication of Parts
In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a "web" which lies in the joint, and a plurality of "ribs" projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.).
Murray discloses making recommendations to comply with security frameworks and standards. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further incorporate in addition to the first recommendation, a second recommendation can be made using the same methods. One of ordinary skill in the art would have been motivated under MPEP 2144.04.VI.B rationale directed to common practices considered routine expedients that support an obviousness rationale, such as duplication of parts, which provide a first recommendation as in Murray, to provide multiple recommendations.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included in the method of managing a compliance of a system, as taught by Adam, the recommendations of Murray, to ensure current compliance that include interdependencies on other entities (Murray [0015]).
Response to Arguments
Applicant's arguments with respect to the rejection under 35 USC 101 have been fully considered but they are not persuasive.
Applicant Argues: The claims recite using a machine learning resource to identify the first and second plurality of controls from policy information, providing a user interface screen for configuring the first plurality of controls, configuring the first plurality of controls to set permission and/or privilege rights associated with the entity and applying the second plurality of controls to configure computing infrastructure devices. For example, a human cannot mentally set permission or privilege rights associated with an entity or configure computing infrastructure devices..
Examiner respectfully disagrees. The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer,” and that “courts have found requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The Examiner also notes that “both product claims (e.g., computer system, computer-readable medium, etc.) and process claims may recite mental processes (see p. 8 of the October 2019 Update: Subject Matter Eligibility).
Here the claims recite steps that are merely executed using the machine. The human can provide input to the machine that controls access, and therefore there is no technical improvement nor is it significantly more than the abstract idea itself.
Applicant Argues: Furthermore, independent claim 1 is directed to an improvement in the technology of information management systems. The disclosed technology provides machine learning resources to extract controls from policy information which "greatly reduces the time currently required to perform such processes.
Examiner respectfully disagrees. The Examiner notes that this claim of an improvement to the technology is not representative of an "actual" improvement to the technology itself, but at best is an improvement to the business method or abstract idea itself. Applicant can provide no tangible findings that there was actually anything different and/or improved in the instant system compared to prior "conventional systems", other than a mere allegation and unsubstantiated, conclusory statement that the instant invention improves existing systems. However, the Examiner respectfully notes that the features of the claimed invention does not represent an improvement, it is merely performing operations with a device. The Applicant cannot point to anything that was specifically done either in the claimed subject matter, the specification, or provided reasoning to show how this is significantly more or provides an improvement to the technology of the conventional system implementation. Moreover, the Examiner respectfully notes that the needed "improvement" in terms of patent eligibility is not one resulting from programming a generic processor to perform a different (or even improved) function, but rather a specific and actual improvement to the machine itself is needed. Based on these findings of fact, the Examiner contends the claims are indeed directed towards an abstract idea and Applicant's arguments to the contrary are considered to be non-persuasive.
The claims at issue extract information using the broadly cited machine learning resource, and identifies controls and provides a way for a user to select if they want to configure the controls. The claims merely represent mere instructions to implement an abstract idea on a computer.
Applicant Argues: the features of independent claim 1 results in an improvement to the information management system itself by reciting the application and setting of appropriate controls which are accurately identified by the machine learning resource and thereby improve and enhance the security use of the information management system.
Examiner has not found support for Applicant’s claims of an improvement to the system. The claims Applicant’s alleged improvement is not directed to an improvement to computer functionality/capabilities, an improvement to a computer-related technology or technological environment, and do not amount to a technology-based solution to a technology-based problem. A showing that a claim is directed to any improvement does not automatically mean a claim is patent eligible (e.g., an improved business function or an improved idea itself is not patent eligible). In this case, extracting controls using the broadly cited machine learning resource and requiring a user to input their decision to implement the control is an abstract idea, and an “improved” way of is, if anything, an improvement to the idea itself.
Applicant's arguments with respect to the rejection under 35 USC 103 have been fully considered but they are not persuasive.
Applicant Argues: Duplication of parts.
Examiner has relied on Adam to teach multiple auditable units (first and second controls) from a document. See “each compliance control document is decomposed into one or more auditable units. Each auditable unit is operative to provide one or more criteria for compliance for testing the corresponding auditable unit.”
Applicant Argues: None of the references disclose or suggest "receiving, by the one or more computing devices, via an input to one or more of the user interface elements, information configuring one or more of the first plurality of controls to set at least one of permission or privilege rights associated with the entity; and applying, by the one or more computing devices, one or more of the second plurality of controls to configure one or more computing infrastructure devices of the service provider, to implement the policies of the entity," as recited in amended independent claim 1.
Examiner respectfully disagrees and has relied on Murray for the disclosure. See [0215]-[0221]“Appropriate access control shall be provided…” See also [0366] for the interface ensuring account authorization for the employees.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RASHIDA R SHORTER whose telephone number is (571)272-9345. The examiner can normally be reached Monday- Friday from 9am- 530pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Lemieux can be reached at (571) 270-3445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RASHIDA R SHORTER/Primary Examiner, Art Unit 3626
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