DETAILED 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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 11 March 2024, 3 June 2024, and 5 November 2024, has been considered by the examiner.
Double Patenting
The nonstatutory 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 nonstatutory 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 Longi, 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,960,807. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims in seen as broader, and the list of symbols is seen as well known, as outlined in the rejection below.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,467,953. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader than the patented claims, and the list of symbols is seen as well known, as outlined in the rejection below.
Claim Rejections - 35 USC § 102
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 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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 21-28 and 30-40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Flynn et al., USPN 2006/0230453.
With regard to claims 21 and 33, Flynn discloses a non-transitory computer-readable medium including instructions that, when executed by at least one processor, cause the at least one processor to perform operations for using a line-of-code behavior and relation model to determine software functionality changes (0007), including identifying a first portion of executable code (known program 0024-0025) associated with a first version of software for a controller (pre-morphing) and a second portion of executable code (suspect program, 0032) based on a change file configured to change software on the controller to a second version (morphing, 0003), accessing a first line-of-code behavior and relation model modeling first symbols and first symbol relationships of the first portion of executable code (0026-0028), accessing a second line-of-code behavior and relation model modeling second symbols and second symbol relationships of the second portion of executable code based on the change file configured to change the software on the controller (0032-0034), wherein at least one of the first symbols or the second symbols represents at least two of: a variable (0041, 0044, “x=3” in Fig. 4), a function (0041, “fun_A” in Fig. 4), a call (0043), an object (0024, 0076), a segment of code (0041, 0044, Fig. 4), or the controller (0041-0044, Fig. 4), and determining based on a functional differential comparison of the first line-of-code behavior and relation model to the second line-of-code behavior and relation model (0035), a status of functional equivalence between the first portion of executable code and the second portion of executable code (0035-0036).
With regard to claims 22, 24, 34, and 36, Flynn discloses the medium of claim 21, as outlined above, and further discloses the first portion of executable code and the second portion of executable code are configured for execution on the controller (0030, 0032, 0003), and at least one of the first line-of-code behavior and relation model or the second line-of-code behavior and relation model was generated by a device distinct from the controller (0040, 0006).
With regard to claims 23 and 35, Flynn discloses the medium of claim 21, as outlined above, and further discloses at least one of the first symbol relationships or the second symbol relationships includes at least one of a dependency relationship, an interdependency relationship, an iterative relationship, or a recursive relationship (0027, 0033).
With regard to claim 25, Flynn discloses the medium of claim 21, as outlined above, and further discloses the functional differential comparison triggers a determination that a third portion of executable code is dormant (uncalled functions 0053).
With regard to claims 26 and 37, Flynn discloses the medium of claim 21, as outlined above, and further discloses the status of functional equivalence between the first portion of executable code and the second portion of executable code includes determinations of equivalence between the first symbols and the second symbols (0035-0036, 0059-0061).
With regard to claims 27 and 38, Flynn discloses the medium of claim 21, as outlined above, and further discloses the operations further comprising sending a report identifying at least one instance of functionality drift (variant, 0035).
With regard to claims 28 and 39, Flynn discloses the medium of claim 21, as outlined above, and further discloses tagging at least one of the second portion of executable code, the second line-of-code behavior and relation model, or a unique identifier associated with the second line-of-code behavior and relation model (0026-0028, 0036).
With regard to claim 30, Flynn discloses the medium of claim 21, as outlined above, and further discloses the functional differential comparison includes determining whether functionality of the first portion of executable code falls within an operational envelope related to at least one of a central processing unit (CPU) cycle, a memory requirement, a speed of execution, or a functionality relationship (0026-0028, 0030).
With regard to claims 31 and 40, Flynn discloses the medium of claim 21, as outlined above, and further discloses the functional differential comparison is based on a difference of at least one of response time, sequence of function execution, or memory leakage (0047, 0010, 0006, 0035).
With regard to claim 32, Flynn discloses the medium of claim 21, as outlined above, and further discloses at least one of the first or second line-of-code behavior and relation models was generated using real-time data received from at least one device operating using at least one of the first portion of executable code or the second portion of executable code (0006, 0010).
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 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.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Flynn in view of examiner’s official notice.
With regard to claim 29, Flynn discloses the medium of claim 21, as outlined above, and further discloses the tagging includes identifying a virus (0023), but does not disclose at least one of disabling the second portion of executable code or sending a notification to a device to not permit execution of the second portion of executable code. The examiner takes official notice that it is well known in the art to disable a detected virus. It would have been obvious for one of ordinary skill in the art, prior to the instant effective filing date, to perform at least one of disabling the second portion of executable code or sending a notification to a device to not permit execution of the second portion of executable code, for the motivation of increased security and protection from malware.
Cited References
Venkatesan et al., USPN 2004/0225996, discloses a method of generating a delta that shows the difference between two programs (0049), but the method is using this difference to create a delta file to upgrade the source program (0050) into a target program, which is a newer version (0052). Venkatesan does not disclose how the initial source program became the initial target program, but seemingly it was not done by upgrade, but rather by a programmer improvement. If it was achieved by upgrade there would be no reason to create a delta file since the original upgrade file could be used.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB LIPMAN whose telephone number is (571)272-3837. The examiner can normally be reached 5:30AM-6:00PM.
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/JACOB LIPMAN/Primary Examiner, Art Unit 2434