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 .
The following is a final office action in response to communications received 04/15/2026. Claims 1-3, 8-10, 15-16 have been amended. Claims 1-20 are pending and addressed below.
Response to Amendment
Applicant’s amendments and response to the claims are sufficient to overcome the 35 USC 101 rejections under abstract idea. Examiner withdraws the interpretation of 35 USC 112(f) as the applicant has amended claims 1, 3, however claims 1-7 are rejected under the 35 USC 101 rejections for not citing a hardware.
Response to Arguments
Applicant’s arguments and amendments filed 04/15/2026 have been fully considered and they are persuasive. Examiner withdraws the rejection under prior arts.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11531765. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims of patent application contain every element of claims above instant application or vice versa, and as such they anticipate or anticipated by Instant Application. As to Claims 1, 10, 17, of the Pat. *765 anticipates the claims of the instant application. By way of illustration, consider the respective claim 1 from each disclosure:
Claim 1 of the instant application
Claim 1 of the ‘765 Patent
1. A computing system comprising: a classification model comprising a processor executing a machine learning algorithm associating a service deployed in a computing environment with a class of services using information related to one or more characteristics of the service, wherein the information is retrieved from at least one of a description or a review of the service; a privacy risk determination system comprising a processor determining a risk metric indicative of a type of data collected by the service in relation to the type of data collected by another service in the associated class of service, based on the class of services using a risk metric application; and a recommendation system comprising a processor determining a recommendation for an additional service using the risk metric, the additional service collecting the type of data collected by the service and having a lower risk than the service.
1. A method comprising: retrieving, via one or more computing devices and over a network, information related to one or more characteristics of a particular application stored or executing on the one or more computing devices; associating, via the one or more computing devices and based on the information, the particular application with a class of applications; determining, for one or more application in the associated class, a type of personal data collected; determining, for the particular application, a risk metric indicative of a type of personal data collected by the particular application in relation to the type of personal data collected by other applications in the associated class; and recommending, via the one or more computing devices and based on the risk metric, an additional application that collects the type of personal data collected by the particular application and has a lower risk than the particular application.
Independent claims 1, 8, 15 of the instant application are substantially similar to independent claims 1, 10, 17, of the Pat. *765 and are rejected for substantially similar reasons as discussed supra. Likewise, dependent claims 2-7, 9-14, 16-20 of the instant application are substantially similar to dependent claims 2-9, 11-16, 18-20 (respectively) of the Pat. *765 and are rejected for substantially similar reasons as discussed supra.
Claim Rejections - 35 USC § 101 (Non-Statutory)
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.
The claimed invention is directed to non-statutory subject matter. The claim 1 does not fall within at least one of the four categories of patent eligible subject matter because Claims 1 is directed to “A computer system … comprising: a processor…” (software per se) a non-statutory subject matter. The claim shall recite a ‘memory’ or a recite “hardware processor” for claim 1 to overcome this rejection. Therefore all corresponding dependent claims 2-7 are also rejected for the same rationale.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (see PTO-form 892).
The following Patents and Papers are cited to further show the state of the art at the time of Applicant’s invention with respect to identify applications or services with a low privacy risk profile.
Curcic et al (Pat. No. US 9582780); “Cloud Service Usage Risk Assessment”;
-Teaches the cloud service usage risk assessment system of the present invention is configured to collect network event data and logs and analyze the network event data to determine the risk exposure for cloud services usage for that enterprise data network…see col.3 lines 40-44.
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 GHAZAL B SHEHNI whose telephone number is (571)270-7479. The examiner can normally be reached Mon-Fri 9am-5pm PCT.
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, Philip Chea can be reached at 5712723951. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GHAZAL B SHEHNI/Primary Examiner, Art Unit 2499
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