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 .
This office action is in response to amendments filed on December 16, 2025.
Claims 21-40 are amended.
Claims 21-40 are pending.
Response to Arguments
The objections to the claims have been withdrawn as the claims have been amended.
Applicant's arguments filed December 16, 2025 have been fully considered but they are not persuasive. In page 8 of Remarks, Applicant mainly argues that prior art references Noble and Liu do not teach the newly amended limitation of “second circuitry is physically and electronically isolated from first circuitry”. As argued below, Examiner argues that the new limitations are directed towards new matter and fails to comply with the written description requirement.
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 21-40 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.
Regarding Claim 21, the claim recites the additional limitation “the second circuitry is physically and electronically isolated from the first circuitry” in lines 14-15 of Claim 21. Regarding both physical and electronic isolation, the specification recites “the master topology partition 401 can be nearly completely isolated from needing access to the agent’s and the third party’s private data” (Page 22, lines 3-4). The specification further recites “By bisecting the circuitry 503, the host circuitry 501 and the client can be reasonably confident that nefarious third parties via malware laden applications cannot penetrate the physical circuit barrier established by the bisection” (Page 28, lines 1-4). However, in reading the specification further, what this bisection actually entails is a secure communication pathway controlling data being exchanged between the two regions with encryption for security. This is supported by Figures 5 and 6 in the Specification which show a communication linkage between the communication circuitry of one side with the input/output encryption/decryption circuitry of the other side, and further elaborated in Pages 28-30 of the specification. For example, the specification recites that “Encrypted flow destined for the host trusted client-side circuitry 507 is decrypted using a private key associated with the host trusted client-side circuitry 507 and outgoing communication to the host circuitry 501 is encrypted before passing into the communication circuitry 531 which may be multiport or a shared in and outflow with appropriate priority allocated” (Page 28, lines 13-17) and “Some or parts of input and output circuitry 685 may be configured to support secure communication flow via the multiport communication interface 687 to the host trusted creator side circuitry 603” (Page 30, lines 2-4). That is, security is achieved by restricting the amount of communication between the two circuitry sides and requiring encryption, but the two sides are still communicatively linked. No information is provided in the specification in how both physical and electronic isolation is achieved beyond what is claimed. That is, no information is provided in which one of ordinary skill in the art could predict to both physically and electronically isolate the first and second circuitry, when the specification describes the two circuitry side portions being linked. For this reason, a person of ordinary skill in the art would not view the applicant to have been in possession of the generic subject matter claimed based on the information disclosed in the specification.
Claims 22-30 are rejected for the same reasons as above by virtue of depending upon Claim 21.
Claim 31 is rejected for the same reasons as above in the rejection of Claim 21 as Claim 31 also recites “the second circuitry is physically and electronically isolated from the first circuitry” in lines 14-15 of Claim 31.
Claims 32-40 are rejected for the same reasons as above by virtue of depending upon Claim 31.
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 21-40 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 21 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are how the second circuitry is both physically and electronically isolated from the first circuitry as recited in lines 14-15 of Claim 21. As argued previously, the lack of written description in the specification, i.e. omission of these relationships, prevent one of ordinary skill in the art to predict how to both physically and electronically isolate the first and second circuitry, rendering the scope of the claim indefinite.
Claim 21 further recites the limitation “the topology partition is executed exclusively within the isolated second circuitry” in line 12 of Claim 21. There is insufficient antecedent basis for this limitation in the claim. There is no previous recitation of “isolated second circuitry” before this limitation, making it ambiguous as to what “the isolated second circuitry” refers to, rendering the claim indefinite.
Claims 22-30 are rejected for the same reasons as above by virtue of depending upon Claim 21.
Claim 31 is rejected for the same reasons as above in the rejections of Claim 21 as Claim 31 also recites “the second circuitry is physically and electronically isolated from the first circuitry” in lines 14-15 of Claim 31 and “the topology partition is executed exclusively within the isolated second circuitry” in line 12 of Claim 31.
Claims 32-40 are rejected for the same reasons as above by virtue of depending upon Claim 31.
Claim 27 recites the limitation "data nodes of the private population" in line 3 of Claim 27. There is insufficient antecedent basis for this limitation in the claim. “A private population” has not been previously recited, making it ambiguous to as to what “the private population” refers to, rendering the claim indefinite.
Claim 37 is rejected for the same reasons as above in the rejection of Claim 27 as Claim 37 also recites “data nodes of the private population” in line 3 of Claim 37.
Claim 31 recites the limitations “first circuitry” and “second circuitry” in lines 11-15 of Claim 31. There is insufficient antecedent basis for this limitation in the claim. While Claim 31 previously recites a “first processing circuitry portion” and “second processing circuitry portion”, Claim 31 initially recites “communication circuitry” and “bisected processing circuitry” beforehand, making it ambiguous as to what “first circuitry” and “second circuitry” refer to, rendering the claim indefinite. It is recommended by the Examiner to amend the limitations such that the first/second circuitry are consistently referred to with the same terms.
Claims 32-40 are rejected for the same reasons as above by virtue of depending upon Claim 31.
Related Art
The following prior art made of record and cited on PTO-892, but not relied upon, is considered pertinent to applicant’s disclosure:
Lu et al. (U.S. Pub. No. 2024/0073100 A1) – Includes methods regarding topology isolation
Conclusion
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.
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/E.V.V./Examiner, Art Unit 2431 /LYNN D FEILD/Supervisory Patent Examiner, Art Unit 2431
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