DETAILED ACTION
Notice of 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 .
Response to Amendment
The amendment filed 2026-03-02 has been entered and fully considered.
Response to Arguments
Applicant’s arguments, see pages 9-10, filed 2026-03-02, with respect to the rejection of claims 1-2, 9-10, 17-18, and 25-33 under 35 U.S.C. § 101 have been fully considered but they are not persuasive.
In particular, applicant argues that the subject matter of independent claims 1, 9, and 17 provides a particular solution/improvement to computing system security, thereby providing a practical application as per Step 2A Prong Two of the §101 analysis; however, the Examiner respectfully disagrees. More particularly, applicant alleges that the claimed features of “replacing, by the compiler an indirect function call from the source code with a call to a wrapper function” and “collocating, by a linker the indirect function call candidate functions in at least one range of addresses of memory, wherein the wrapper function is configured to determine whether an address to be passed to the indirect function call is within the at least one range of addresses of memory” provide a solution to the problem for “preventing security vulnerabilities of forward edge CFI that could otherwise be exploited in attacks that attempt to change the configurable memory addresses to jump to other information” (e.g., Specification [0039]).
The Examiner first notes that passing Step 2A Prong Two for having a practical application requires evaluation as to whether “the claim as a whole integrates the recited judicial exception into a practical application”; See MPEP § 2106.04(d). More particularly, “the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification”; See MPEP § 2106.04(d)(1).
In this particular instance, the claimed invention is so generic and nebulous as to encompass numerous embodiments that significantly degrade computing function, as there’s no limitations whatsoever as to how the candidate functions are identified (e.g. could be the entirety of a computer’s address space), no limitation that restricts the range of address of memory to the candidate functions (e.g. address range can comprise other software such as malware), and the wrapper function does nothing beyond being configured to determine whether an address to be passed to the indirect function call is within the at least one range of addresses of memory (e.g. even if wrapper determines a jump to an unsafe address, no corrective action is taken). Because of the extreme breadth of the claimed invention, the claims aren’t limited in any fashion that would necessarily improve the functioning of a computer, let alone achieve “preventing security vulnerabilities of forward edge CFI that could otherwise be exploited in attacks that attempt to change the configurable memory addresses to jump to other information” as argued by applicant.
Thus, the Examiner respectfully submits that the rejection is proper.
Applicant’s arguments, see pages 10-12, filed 2026-03-02, with respect to the rejection of claims 1-2, 9-10, 17-18, and 25-33 under 35 U.S.C. § 102(a)(1) have been fully considered but they are not persuasive. Specifically:
Applicant first argues Tan fails to describe or suggest, at least, “replacing, by the compiler, an indirect function call from the source code with a call to a wrapper function” because Tan’s approach is “generally performed whenever code is loaded for execution” and thus “is performed at runtime and not by a compiler”. The Examiner first notes that the claims do not preclude performing the function at runtime. Rather, the claim only requires the function be performed “by a compiler”. In this instance, Tan clearly discloses that although the approach may occur at runtime, it is nonetheless performed by a “JIT compiler”. Since a Just-In-Time (JIT) compiler is a species of a generic compiler, the “JIT compiler” of Tan anticipates the generically claimed “compiler”; See MPEP § 2131.02(I).
Applicant then argues Tan fails to describe or suggest, at least, “replacing ...an indirect function call from the source code with a call to a wrapper function” because Tan discloses a “branch ID” and “target ID” that appear to be data structures (as opposed to a “wrapper function”). The Examiner respectfully submits, however, that the claimed wrapper function has no structural limitations and is instead defined by a single function – that it is “configured to determine whether an address to be passed to the indirect function call is within the at least one range of addresses of memory”. In this instance, applicant is correct that the “branch ID” is a data structure, but – when in combination with the other elements of the “Control-Flow Integrity (CFI)” instrumentation – the system both employs a “wrapper function” (e.g. [0136]) and uses “instrumentation code” to determine whether “the branch ID is the same as the target ID” (e.g. [0077]) (i.e. a simple comparison function performing a species of the more generically claimed “within in the range” limitation).
Finally, applicant then argues Tan fails to describe or suggest, at least, “collocating, by a linker, the indirect function call candidate functions in at least one range of addresses of memory”, because Tan discloses “[t]he branch ID data structure and target ID data structure can be a table or an array”, and a table and an array are not “functions”. The Examiner respectfully submits, however, that even if arguendo the target ID cannot be a function (which the Examiner disagrees with, as Tan discloses the “target ID data structure that maps an address to a target ID”, i.e., returns an output for an input – a type of function), Tan discloses that the address mapped to the target ID is the address of a function jumped to by the indirect branch (e.g. “indirect call via a function pointer can invoke a function as long as the types of the function pointer and the function match” [0084]). Thus, both the “target ID” and the function stored at its mapped address each separately anticipate the generically claimed “function”.
Thus, the Examiner respectfully submits that the rejection is proper.
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 1-2, 9-10, 17-18, and 25-33 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (35 U.S.C. 101 Judicial Exception) without significantly more. The claims recite replacing an indirect function call with a call to a wrapper function and determining if an address passed to the function call matches a candidate function, a form of observation, evaluation, and/or judgment, which is a concept performed in the human mind and thus grouped as Mental processes. This judicial exception is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered separately and in combination, do not add significantly more to the abstract idea, as they are well-understood, routine, conventional computer functions as recognized by the courts.
Based upon consideration of all the relevant factors with respect to the claimed invention as a whole, the claims are determined to be directed to an abstract idea without significantly more. The rationale for this determination is explained infra:
The following are Principles of Law:
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”; 35 U.S.C. § 101. The Supreme Court has consistently held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable; See Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, an application of these concepts may be deserving of patent protection; See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The test for determining subject matter eligibility requires a first step of determining whether the claims are directed to a process, machine, manufacture, or composition of matter. If the claims are directed to one of the four patent-eligible subject matter categories, then the Examiner must perform a two-part analysis to determine whether a claim that is directed to a judicial exception recites additional elements that amount to significantly more than the exception. The first part of the second step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second part of the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step in the analysis is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent on the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
In the “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), the USPTO has prepared revised guidance for use by USPTO personnel in evaluating subject matter eligibility based upon rulings by the courts.
The Examiner is bound by and applies the framework as set forth by the Court in Mayo and reaffirmed by the Court in Alice and follows the 2019 PEG for determining whether the claims are directed to patent-eligible subject matter.
Step 1: Are the claims at issue directed to a process, machine, manufacture, or composition of matter?
The Examiner finds that the claims are directed to one of the four statutory categories.
Step 2A – Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
The Examiner finds that the claims are directed to the abstract idea of replacing an indirect function call with a call to a wrapper function and determining if an address passed to the function call matches a candidate function, a form of observation, evaluation, and/or judgment, which is a concept performed in the human mind and thus grouped as Mental processes.
Step 2A – Prong Two: Does the claim recite additional elements that integrate the Judicial Exception into a practical application?
The abstract idea is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer.
In determining whether the abstract idea was integrated into a practical application, the Examiner has considered whether there were any limitations indicative of integration into a practical application, such as:
(1) Improvements to the functioning of a computer, or to any other technology or technical field; See MPEP § 2106.05(a)
(2) Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; See Vanda Memo (Recent Subject Matter Eligibility Decision: Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals)
(3) Applying the judicial exception with, or by use of, a particular machine; See MPEP § 2106.05(b)
(4) Effecting a transformation or reduction of a particular article to a different state or thing; See MPEP § 2106.05(c)
(5) Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception; See MPEP § 2106.05(e) and Vanda Memo
The Examiner notes that clam features of: replacing an indirect function call with a call to a wrapper function and determining if an address passed to the function call matches a candidate function do not improve the functioning of a computer or technical field, do not effect a particular treatment or prophylaxis for a disease or medical condition, do not apply or use a particular machine, do not effect a transformation or reduction of a particular article to a different state or thing, and do not apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Instead of a practical application, the claim features of replacing an indirect function call with a call to a wrapper function and determining if an address passed to the function call matches a candidate function merely use a general-purpose computer as a tool to perform the abstract idea (See MPEP § 2106.05(f)) and merely generally link the use of the abstract idea to a field of use (See MPEP § 2106.05(h)). Thus, the Examiner finds that the claimed invention does not recite additional elements that integrate the Judicial Exception into a practical application.
Step 2B: Is there something else in the claims that ensures that they are directed to significantly more than a patent-ineligible concept?
The claims, as a whole, require nothing significantly more than generic computer implementation or can be performed entirely by a human. The additional element(s) or combination of element(s) in the claims other than the abstract idea per se amount to no more than recitation of generic computer structure (e.g. computing device, processing device, and non-transitory processor-readable medium) that serves to perform generic computer functions (e.g. identifying functions, replacing calls, collocating (storing) functions in an address range, etc.) that are well-understood, routine, and conventional activities previously known to the pertinent industry. The claimed executable code, indirect function call candidate functions, source code, wrapper function, linker, etc. are all numbers, data structures, or datum. Each of these elements are individually dispositive of patent eligibility because of the following legal holdings:
“Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.” Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014).
The Supreme Court has also explained that “[a]bstract software code is an idea without physical embodiment,” i.e., an abstraction. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
A claim that recites no more than software, logic, or a data structure (i.e., an abstract idea) – with no structural tie or functional interrelationship to an article of manufacture, machine, process or composition of matter does not fall within any statutory category and is not patentable subject matter; data structures in ethereal, non-physical form are non-statutory subject matter. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994); see Nuijten, 500 F.3d at 1357.
Furthermore, the claimed invention does not have a specific asserted improvement in computer capabilities, nor is it a specific implementation of a solution to a problem in the software arts; See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Rather, the claims are merely directed towards replacing an indirect function call with a call to a wrapper function and determining if an address passed to the function call matches a candidate function, which is similar to ideas that the courts have found to be abstract, as noted supra, and the claims are without a “practical application” or anything “significantly more”.
Considering each of the claim elements in turn, the function performed by the computer system at each step of the process does no more than require a generic computer to perform a well-understood, routine, and conventional activity at a high level of generality. For example, identifying candidate functions, replacing indirect function calls with a call to a wrapper function, and determining whether an address to be passed to the indirect function call is within a range of addresses of memory are merely forms of performing repetitive calculations, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93. Further, “collocating the indirect function call candidate functions” and collocating of other data are merely forms of storing and retrieving information in memory, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”). Further note that the abstract idea of replacing an indirect function call with a call to a wrapper function and determining if an address passed to the function call matches a candidate function to which the claimed invention is directed has a prior art basis outside of a computing environment, e.g. a biologist isolating cells to monitor their behavior.
The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Viewed as a whole, the claims simply recite the steps of using generic computer components. The claims do not purport, for example, to improve the functioning of the computer system itself. Nor does it effect an improvement in any other technology or technical field. Instead, the claims amount to nothing significantly more than an instruction to implement the abstract idea using generic computer components. This is insufficient to transform an abstract idea into a patent-eligible invention.
The dependent claims likewise incorporate the deficiencies of a claim upon which they ultimately depend and are also directed to non-patent-eligible subject matter.
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)(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 1-2, 9-10, 17-18, and 25-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tan et al. (US Pre-Grant Publication No. 20150370560-A1, hereinafter “Tan”).
With respect to independent claim 1, Tan discloses a method performed in a computing device for generating executable code to provide control flow integrity, comprising:
identifying, by a compiler, indirect function call candidate functions from a source code {paras. 0052-0058, 0165-0203: “the code can be parsed to identify indirect branches” including “indirect calls”, such that “a branch ID data structure is created”, the “code … can be separately compiled and/or instrumented prior to dynamic loading”; the system performing this with a “Just-In-Time (JIT)” “compiler”}.
replacing, by the compiler, an indirect function call from the source code with a call to a wrapper function {paras. 0060 & 0146-0147: The “Modular Control-Flow Integrity (MCFI)” “checks whether indirect branches are instrumented as required” and “The runtime does not allow modules to directly invoke native system calls. Instead, it wraps system calls as API functions and checks their arguments”}.
collocating, by a linker, the indirect function call candidate functions in at least one range of addresses of memory {paras. 0058 & 0084-0093: “The branch ID data structure and target ID data structure can be a table or an array” by “Module Linking”}.
wherein the wrapper function is configured to determine whether an address to be passed to the indirect function call is within the at least one range of addresses of memory {para. 0059: “In step S116, the branch ID and the target ID are compared (e.g., by bitwise XORing or other logical comparison). If the branch ID does not equal the target ID, the indirect branch is prevented from execution in step S118. If the branch ID does equal the target ID, execution of the indirect branch is permitted in step S120”}.
With respect to dependent claim 2, Tan discloses wherein collocating the indirect function call candidate functions in the at least one range of addresses of memory is based on collocation of a first set of functions of the indirect function call candidate functions and collocation of a second set of functions of the indirect function call candidate functions {para. 0069: “the set of indirect branch targets is partitioned into equivalence classes”, such that “indirect branch is allowed to jump to any destination in the same equivalence class” and there can be “two sets” of an equivalence class}.
With respect to dependent claim 25, Tan discloses collocating the first set of functions of the indirect function call candidate functions in a first range of addresses of a first memory {para. 0058: “branch ID data structure and target ID data structure can be a table or an array”}.
With respect to dependent claim 26, Tan discloses collocating the second set of functions of the indirect function call candidate functions in a second range of addresses of a second memory {para. 0058: “branch ID data structure and target ID data structure can be a table or an array”}.
With respect to dependent claim 27, Tan discloses wherein the wrapper function is configured such that determining whether the address to be passed to the indirect function call is within the at least one range of addresses of memory comprises determining whether the address to be passed to the indirect function call is within the at least one of the first range of addresses of the first memory and the second range of addresses of the second memory {paras. 0059 & 0069: “An indirect branch is allowed to jump to any destination in the same equivalence class. If two indirect branches target two sets of destinations and those two sets are not disjoint, the two sets are merged into one equivalence class”}.
With respect to claims 9-10, a corresponding reasoning as given earlier in this section with respect to claims 1-2 applies, mutatis mutandis, to the subject matter of claims 9-10; therefore, claims 9-10 are rejected, for similar reasons, under the grounds as set forth for claims 1-2.
With respect to claims 17-18, a corresponding reasoning as given earlier in this section with respect to claims 1-2 applies, mutatis mutandis, to the subject matter of claims 17-18; therefore, claims 17-18 are rejected, for similar reasons, under the grounds as set forth for claims 1-2.
With respect to claims 28-30, a corresponding reasoning as given earlier in this section with respect to claims 25-27 applies, mutatis mutandis, to the subject matter of claims 28-30; therefore, claims 28-30 are rejected, for similar reasons, under the grounds as set forth for claims 25-27.
With respect to claims 31-33, a corresponding reasoning as given earlier in this section with respect to claims 25-27 applies, mutatis mutandis, to the subject matter of claims 31-33; therefore, claims 31-33 are rejected, for similar reasons, under the grounds as set forth for claims 25-27.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 Kevin Bechtel whose telephone number is 571-270-5436. The examiner can normally be reached Monday - Friday, 09:00 - 17:00 ET.
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/Kevin Bechtel/
Primary Examiner, Art Unit 2491