DETAILED ACTION
This office action is in response to the application filed on 8/9/2024. Claim(s) 1-19 is/are pending and are examined.
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 .
Priority/Benefit
Applicant’s priority claim is hereby acknowledged of This application is a CON of 18/649,532 04/29/2024 PAT 12093374, 18/649,532 is a CON of 18/428,794 01/31/2024 PAT 12001549, 18/428,794 is a CON of 18/466,882 09/14/2023 PAT 12001550, 18/466,882 is a CIP of 18/457,054 08/28/2023 ABN, which papers have been placed of record in the file.
Applicant claims benefit as a CIP of 18/457,054 08/28/2023, which papers have been placed of record in the file. However the claimed priority is deficient. A later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original non-provisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 18/457,054 08/28/2023, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claims 1-19 contain subject matter which is not supported in the above application and therefore, for the purposes of examination, these claims, each viewed as a whole, will not receive the priority claimed therein. Therefore claims 1-19 receive the claimed priority date of 9/14/2023. Specifically, the parent application does not support “utilizing the generative AI to associate the received incident input with an incident response action of a plurality of incident response actions” in the independent claims.
Information Disclosure Statement PTO-1449
The Information Disclosure Statement(s) submitted by applicant on 8/9/2024, 1/16/2025, 10/17/2025 has/have been considered. The submission is in compliance with the provisions of 37 CFR § 1.97. Form PTO-1449 signed and attached hereto.
Examiner’s Note – Patentably Distinct Subject Matter
Copending application 19/304,164, 19/384,713 and 18/651,037 contains similar, yet patentably distinct subject matter. Similarly, patent family application 19/092,787 now US Patent 12,493,615 contains similar, yet patentably distinct subject matter.
Examiner’s Note – Allowable Subject Matter
Claims 1-19 overcome the prior art and would otherwise be allowable if made to must overcome the 35 USC 101 and double patenting rejections below.
The closest prior art is Kumar (US 2018/0137401 A1) and Lal (US 2024/0404328 A1). Kumar Fig. 3 and associated text teaches a process similar to the instant claims where a security bot creates receives incident information and creates a query for a natural language system which then interacts with a security database.
Lal Fig. 1 and associated teaches a generative AI system which preprocesses information in a security framework, but lacks much of the process information.
The two references do not combine in a logical way to arrive at the claimed invention.
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.
Claim(s) 11-19 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
As per independent claim 11, “A system for providing cybersecurity incident response comprising: one or more processors configured to” is recited. Instant specification ¶ 38 also refers to virtual devices which contain processors and as such it appears that one of ordinary skill in the art could interpret the claimed processor as software per se. Such language points to software per se when there is no language in the claim or specification by which the claim elements can be made functional and statutory. Therefore, a person of ordinary skill in the art would interpret the limitations to mean merely computer executable functions, rendering the claimed system comprising merely executable functions, which is non-statutory. As such, claim(s) 11 is/are drawn to non-statutory subject matter. See MPEP § 2106.01.
Dependent claim(s) 12-19 does/do not remedy the deficiencies of parent claims and is/are therefore also directed to the non-statutory subject matter.
Examiner recommends a processor coupled to a memory.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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:
http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-19 is/are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-19 of application 18/649,532 now US PAT 12093374. Although the claims at issue are not identical in form, they are not patentably distinct from each other. In particular, the patented claims anticipate the respective instant claims.
Claim(s) 1-19 is/are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-5, 7-8, 11-12, and 14-17 of application 18/428,794 now US Patent 12,001,549. In particular, instant claim 1 is anticipated by patented claim 1. Instant claim 5 is anticipated by patented claim 7. Instant claims 6-9 are anticipated by patented claims 2-5, respectively. Instant claims 10-11 are anticipated by patented claims 11-12. Instant claim 15 is anticipated by patented claim 17. Instant claims 16-19 are anticipated by patented claims 13-16, respectively.
Regarding instant claims 2-4 and 12-14, the patented claims do not, but in related art, DiCorpo (US 10,158,677 B1) Fig. 8 Col. 25 Ln. 33 – Col. 26 Ln. 50 teaches various mitigations based on the determined threat. Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of DiCorpo and the patented claims to modify the query mapping system of the patented claims to include the method to execute a security query and find a mitigation as taught in DiCorpo. The motivation to do constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Claim(s) 1-19 is/are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-12, and 14-15, of application 18/466,882 now US Patent 12,001,550. In particular, instant claim 1 is anticipated by patented claim 1. Instant claim 5 is anticipated by patented claim 6. Instant claims 6-9 are anticipated by patented claims 2-5, respectively. Instant claims 10-11 are anticipated by patented claims 9-10. Instant claim 15 is anticipated by patented claim 15. Instant claims 16-19 are anticipated by patented claims 11, 12, 15, and 14, respectively. Regarding instant claims 2-4 and 12-14, the patented claims do not, but in related art, DiCorpo (US 10,158,677 B1) Fig. 8 Col. 25 Ln. 33 – Col. 26 Ln. 50 teaches various mitigations based on the determined threat. Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of DiCorpo and the patented claims to modify the query mapping system of the patented claims to include the method to execute a security query and find a mitigation as taught in DiCorpo. The motivation to do constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Conclusion
In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure: See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Stephen T Gundry whose telephone number is (571) 270-0507. The examiner can normally be reached Monday-Friday 9AM-5PM (EST).
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/STEPHEN T GUNDRY/Primary Examiner, Art Unit 2435