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
This office action is in response to the communication filed on 5/21/2026.
Claims 1-20 have been examined.
Response to Arguments
Applicant's arguments filed 5/21/2026 have been fully considered but they are not persuasive.
The applicants have amended the claims to include the language “wherein the encrypted preprocessed strings are stored and searchable in a search index without decrypting the encrypted preprocessed strings to perform a search”, and argue that Defrawy does not meet this limitation. The examiner respectfully disagrees.
First, the claims do not actually recite performing a search in any particular manner, and as such Defrawy does not need to explicitly teach performing a search without decrypting the encrypted preprocessed strings to perform a search. Instead, it simply has to be possible to do so. Of course, any data set is searchable (i.e. a system with access to a set of data can perform a search on the data). And similarly, any encrypted data set is searchable without decrypting the data. The search results may not always be accurate in the case when decryption is not performed, but the data set is still searchable. So in Defrawy, the data can be searched without decryption (which is all the claim requires), and as such Defrawy still meets the claim language.
Further, Defrawy does teach performing such a search without decrypting the encrypted preprocessed strings as can be seen in the cited portions of Defrawy.
Because the examiner does not find the amendment and arguments persuasive, the rejection have been maintained as shown below.
All objections and rejections not set forth below have been withdrawn.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The claims have been amended to recite “wherein the encrypted preprocessed strings are stored and searchable in a search index without decrypting the encrypted preprocessed strings to perform a search”, and the applicants have not pointed to anything in particular in the instant specification as providing support for such language. The examiner has looked to the instant specification and has not been able to find such support. As such, the specification is objected to for failing to provide proper antecedent basis for the claimed subject matter.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claims have been amended to recite “wherein the encrypted preprocessed strings are stored and searchable in a search index without decrypting the encrypted preprocessed strings to perform a search”, and the applicants have not pointed to anything in particular in the instant specification as providing support for such language. The examiner has looked to the instant specification and has not been able to find such support.
The issue herein is regarding the addition by amendment of the negative claim limitations consisting of “the encrypted preprocessed strings are…searchable in a search index without decrypting the encrypted preprocessed strings to perform a search”. While there is no in haec verba requirement, newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure. The trouble is that there is no such disclosure, easy though it is to imagine it. Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1328, 56 USPQ2d 1481, 1487 (Fed. Cir. 2000). It is not a question of whether the claim language is inconsistent with, or contradictory to, the teachings of the specification, but rather that the specification does not clearly and concisely disclose to the skilled artisan that the inventors considered this particular search, i.e., not decrypting the encrypted preprocessed strings to perform a search, to be part of their originally filed invention. Further, the specification simply not showing, or being silent to, decryption of this manner is not sufficient support for claiming that decryption is not occurring. Therefore, the person having ordinary skill in the art would not be able to ascertain whether or not the applicants were in possession of the invention as claimed at the time of application. As such, the claims are rejected for failing to meet the written description requirement of 35 USC 112(a).
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 4 and 17 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.
Claim 4 recites “the single dimensional” which doesn’t make sense and lacks antecedent basis in the claim.
Claim 4 recites “the series of characters in the cleartext strings” which lacks antecedent basis in the claim.
Claim 17 recites “the single dimensional input data” which lacks direct antecedent basis and has indirect multiple antecedent basis.
All rejected dependent claims are rejected by virtue of their dependence upon one of the above addressed claims.
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.
(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 1-6 and 8-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by El Defrawy et al. (US Patent Number 9,009,089) hereinafter referred to as Defrawy.
Regarding claim 1, Defrawy disclosed a method for preprocessing cleartext strings, the method comprising:
creating dynamic multi-dimensional spaces based on a key (Defrawy Figs. 3 and 5 and Col. 9 Lines 14-22 and Col. 14 Line 43 – Col. 15 Line 26 for example – creating the zeroed vectors used to store the data of each CDV – the key being the pattern);
creating, based on the dynamic multi-dimensional spaces, a position specific variability for the cleartext strings to form preprocessed strings, wherein characters that appear in different positions within the cleartext strings are encoded differently in the preprocessed strings (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example – constructing matrix MCDV); and
applying encryption to the preprocessed strings to form encrypted preprocessed strings, wherein the encrypted preprocessed strings are stored (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example – E(CDV)) and searchable in a search index without decrypting the encrypted preprocessed strings to perform a search (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example – E(CDV) – wherein this is not precluded by the teachings of Defrawy).
Regarding claim 2, Defrawy disclosed applying the position specific variability and encryption on n-grams of the cleartext strings to execute partial match searches (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example – substring cases).
Regarding claim 3, Defrawy disclosed that the dynamic multi-dimensional spaces are used in the position specific variability to convert a series of characters in a first cleartext string from the cleartext strings to a multi-dimensional output (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example).
Regarding claim 4, Defrawy disclosed that each character in the series of characters in the cleartext strings comprises input data that is single dimensional, and the single dimensional has a position that is specified by a single coordinate (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example).
Regarding claim 5, Defrawy disclosed that each character in the multi-dimensional output has a position that is no longer specified by a single coordinate, and is instead specified by a set of coordinates (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example).
Regarding claim 6, Defrawy disclosed that the key comprises a cryptographic key (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example – the examiner contends that this limitation is non-limiting because the claimed “cryptographic key” is never used in any manner to perform cryptography or cryptographic operations. As such, the claim limitation is a “cryptographic key” in name only and the system of Defrawy is functionally equivalent to the claimed system.).
Regarding claim 8, Defrawy disclosed that the position specific variability preserves character positional information and character context information from the cleartext strings in the preprocessed strings (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example).
Regarding claim 9, Defrawy disclosed that the encrypted preprocessed strings are searchable in the search index based on the character positional information and character context information in the preprocessed strings (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example).
Regarding claim 10, Defrawy disclosed that the position specific variability when applied to a first cleartext string from the cleartext strings produces a preprocessed string with a larger number of characters than the first cleartext string (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example).
Regarding claim 11, Defrawy disclosed a method for preprocessing cleartext strings, the method comprising:
creating, with a cryptographic key, dynamic multi-dimensional spaces (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example);
creating preprocessed strings from the cleartext strings by using the dynamic multi-dimensional spaces to convert each series of characters in a cleartext string to a multi-dimensional output so that a resulting preprocessed string has more characters than the input cleartext string (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example); and
applying encryption to the preprocessed strings or to preprocessed string fragments to form encrypted preprocessed strings, wherein the encrypted preprocessed strings are stored (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example – E(CDV)) and searchable in a search index without decrypting the encrypted preprocessed strings to perform a search (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example – E(CDV) – wherein this is not precluded by the teachings of Defrawy).
Regarding claim 12, Defrawy disclosed that creating the preprocessed strings comprises encoding characters that appear in different positions within the cleartext string differently in the resulting preprocessed string (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example).
Regarding claim 13, Defrawy disclosed that creating the preprocessed strings comprises preserving character positional information and character context information from the cleartext string (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example).
Regarding claim 14, Defrawy disclosed that the encrypted preprocessed strings are searchable in the search index based at least on the character positional information (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example).
Regarding claim 15, Defrawy disclosed that the encrypted preprocessed strings are searchable in the search index based at least on the character context information (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example).
Regarding claim 16, Defrawy disclosed that the encrypted preprocessed strings are searchable in the search index based at least on the character positional information and the character context information (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example).
Regarding claim 17, Defrawy disclosed that each character in the series of characters in the cleartext string comprises input data that is single dimensional, and the single dimensional input data has a position that is specified by a single coordinate (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example).
Regarding claim 18, Defrawy disclosed that each character in the resulting preprocessed string has a position that is no longer specified by a single coordinate, and is instead specified by a set of coordinates (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example).
Regarding claim 19, Defrawy disclosed that creating the preprocessed strings from the cleartext strings comprises a confusion process that re-arranges the series of characters in the cleartext string multiple times (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example).
Regarding claim 20, Defrawy disclosed that creating the preprocessed strings from the cleartext strings comprises a diffusion process that alters the series of characters in the cleartext string to different characters multiple times (Defrawy Figs. 3 and 5 and Col. 14 Line 43 – Col. 15 Line 26 for example).
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 of this title, 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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Defrawy.
Regarding claim 7, Defrawy taught pattern matching being used in many areas including text processing, searching databases, etc. but did not explicitly teach that the encrypted preprocessed strings represent one or more of a file name, file identification, or a file path of a file system.
Official Notice: It was well known in the art, before the effective filing date of the application, to use pattern matching to search file systems for file names, file identification, or file paths. As such, it would have been obvious to the person having ordinary skill in the art to have used the teachings of Defrawy in a manner to search file systems for file names, file identification, or file paths. This would have been obvious because the person having ordinary skill in the art would have been motivated to provide a secure means for pattern matching in a file system.
Conclusion
Claims 1-20 have been rejected.
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 MATTHEW T HENNING whose telephone number is (571)272-3790. The examiner can normally be reached Monday-Friday 7AM-2PM ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Korzuch can be reached at (571)272-7589. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW T HENNING/ Primary Examiner, Art Unit 2491
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