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
Response to Arguments
Applicant's arguments filed 10/29/2025 have been fully considered, and are persuasive. While the arguments and corresponding claim amendments have persuasively claimed beyond the previously relied upon prior art, they also raise issues regarding claim scope and clarity, necessitating the rejections under 35 USC 112 presented below.
Claim Rejections - 35 USC § 112
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 9 – 11 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.
Regarding claim 9, on page 3: line 7 of said claim recites: “configured to store each list of specifications”. The claim lacks antecedent basis for a “list of specifications”, making the scope of “each” indefinite, as it is unclear how “each” is further limiting or otherwise impacting the “list of specifications” (as no such lists have yet been referenced by this point in the claim).
line 8 of said claim recites: “data representing each state of the control target”. The claim recites acquiring “a state of the control target” in line 5. However, that is the only recitation relevant to “state of the control target” (and it is a singular recitation). Thus it is similarly unclear what “each” state is intended to specify, and as a result “each state of the control target” is rendered indefinite.
line 11 and lines 16-17 of said claim recites: “the state acquired one time before”. This limitation raises the issue regarding the scope of “before” (i.e., before what, exactly?). The “state acquired one time before” requires understanding of what “before” is modifying in order for this language as a whole to be clear and definite.
lines 11 - 13 of said claim recites: “. . . to another state, and when having determined that the state transferred from the state acquired the one time before to the other state”. This language requires a clear and definite understanding of both the “state acquired one time before”, which has issues itself (noted above). In addition, the scope of “the other state” is unclear and indefinite as it is unclear what “the other state” is intended to reference (i.e., the state is “other” in reference to which state, precisely?)
lines 14 - 15 of said claim recites: “to the state acquired this time”. By this point in the claim, there has been reference to: 1) “acquire a state” (line 5), 2) “each state” (line 8), 3) “the state acquired” (line 10), 4) “the state acquired one time before” (line 11), 5) “the other state” (line 13),
6) and the finally, on lines 14 – 15 “the state acquired this time”.
The numerous references to a state and the interconnected nature of the references (which one state is recited in reference to another, such as being “other”, or “before”) renders the language indefinite given how broadly each “state” is recited. No particular “initial” state acquisition can readily be ascertained and exactly which stage in the claim each of the above 6 references are referencing is unclear and indefinite. The number of unique states being referenced in the 6 recitations listed above is unclear, much less how each recitation may (or may not) relate to one another.
lines 13 - 17 of said claim recites: to “determine . . . a list of a monitoring target”, which on page 4 lines 1 – 3 is further referenced as being monitored by “communications monitoring circuitry”, with lines 8 – 11 on page 4 referencing a determination “of comparing the communications data monitored by the communications monitoring circuitry with the . . . data included in the list of the monitoring target”. Thus, the “data included in the list of the monitoring target” appears to correspond to what the “communications monitoring circuitry” monitors. This renders the entirety of this language indefinite, as this implies that the determination noted on lines 8 – 11 of page 4 is comparing data to itself in order to “determine a presence or absence of unauthorized data”. Comparing data to itself would appear to always return the same result (a match) and thus would not achieve the functionality implied by the claim (a determination of unauthorized data). This raises issue as to the scope of each of the above quoted items, along with the claim as a whole. To summarize, claim 9 contains numerous grammatical irregularities, which individually are unclear and indefinite. When combined and considered together (as is required to determine the scope of the claim as a whole), the entirety of claim 9 is rendered indefinite.
Regarding claims 10 – 12, each of said claims depends on claim 9 (either directly or indirectly) and fails to clarify the issues noted above in their parent claim. Each of claims 10 – 12 thus inherits the deficiencies of claim 9. Further regarding claims 11 and 12, each of said claims recites “monitoring determination circuitry” which performs a determination regarding overlapping “when combining as a priority monitoring list part”. This language is unclear and indefinite. For example, it is unclear what “combining” is intended to specify (i.e., what is being “combined” to create the “priority monitoring list part”?).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. This includes: Matsumoto et al. English translation of JP2017047835. (Year: 2017).
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 JOHN M MACILWINEN whose telephone number is (571)272-9686. The examiner can normally be reached Monday - Friday, 9:00 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Glenton B Burgess can be reached at (571) 272 - 3949. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JOHN MACILWINEN
Primary Examiner
Art Unit 2442
/JOHN M MACILWINEN/Primary Examiner, Art Unit 2454
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