DETAILED ACTION
This communication is responsive to the application, filed August 23, 2024. Claims 1-3 are pending in this application.
Examined under the first inventor to file provisions of the AIA
The present application was filed on August 23, 2024, which is on or after March 16, 2013, and thus is being examined under the first inventor to file provisions of the AIA .
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 1-3 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. As per claims 1-3, they are rejected because the applicant has provided evidence that the applicant intends the term "computer-readable memory device” to include non-statutory subject matter. The applicant describes a computer-readable memory device as including open ended language and thus it is reasonable to interpret it to include all possible mediums, including non-statutory mediums (see paragraph 0964 “memory device can be any device that stores digital information”). The words "storage" and/or "device" are insufficient to convey only statutory embodiments to one of ordinary skill in the art absent an explicit and deliberate limiting definition or clear differentiation between storage media and transitory media in the disclosure.
The Examiner suggests amending the claim(s) to read as a “non-transitory computer-readable memory device”.
Claims 1-3 are additionally rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 1-3 are directed to the abstract idea of a mental process, as explained in detail below. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional computer elements, which are recited at a high level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea.
Step 1: It is first noted that Claims 1-3 are directed towards a computer readable medium, which falls within the statutory category of manufactures.
Step 2A – Prong 1:
Claim 1-3 are characterized as organizing and evaluating information by identifying a system portion, policy, and analysis parameters, then generating a rating. These limitations, as drafted, are a process that, under their broadest reasonable interpretation, cover performance of the limitations in the mind but for the recitation of generic computer components. That is, other than reciting “memory sections”, “memory including instructions”, and “operational instructions” in claims 1-3; nothing in the claims preclude these steps from practically being performed in the human mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for recitation of generic computer components, then it falls within the “Mental Processes” grouping of an abstract ideas. These steps describe the concept of a mental process, which corresponds to concepts identified as abstract ideas by the courts. The concept described in claims 1-3 is not meaningfully different than those found by the courts to be abstract ideas.
Step 2A- Prong 2: This judicial exception is not integrated into a practical application. In particular, the claim only recites the additional elements of “memory sections” and “computing entity” in claims 1-3. These are recited at a high-level of generality (i.e. as a generic computer system with generic computer functions) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Thus, the claims are directed to an abstract idea.
Step 2B: As discussed with respect to Step 2A Prong Two, the additional elements in the claims amounts to no more than mere instructions to apply the exception using a generic computer components.
The claim(s) do/does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The claims include additional elements that are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. Generic computer components recited as performing generic computer functions amount to no more than implementing the abstract idea with a computerized system. The use of generic computer components does not impose any meaningful limit on the computer implementation of the abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. Mere instructions to apply an exception using a generic computer system cannot provide an inventive concept. Accordingly, the claims are not patent eligible.
The claims are not patent eligible.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-30 of U.S. Patent No. US 11,789,833 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of present application are fully anticipated by the claims of issued patent. The issued US patent and the instant application are claiming common subject matter. The one of ordinary skill in the art would recognize that they are obvious variants.
Claims 1 and 2 are compared to claims 16-30 of US patent US 11,789,833 B2 in the following table:
Instant Application
US Patent No : US 11,789,833 B2
Claim 1. A computer readable memory device comprises:
a first memory section that stores operational instructions, wherein, when a computing entity executes the operational instructions, the operational instructions cause the computing entity to:
identify a portion of a system for analysis, wherein the system includes a plurality of computing devices,
wherein a computing of the plurality of computing devices stores and executes, when activated, a plurality of software programs;
a second memory section that stores operational instructions, wherein, when the computing entity executes the operational instructions, the operational instructions cause the computing entity to:
identify a policy to be analyzed with respect to the identified portion of the system, wherein a policy sets out a strategic direction and includes high-level rules or contracts regarding issues and/or matters;
a third memory section that stores operational instructions, wherein, when the computing entity executes the operational instructions, the operational instructions cause the computing entity to:
identify one or more policy analysis parameters; and
a fourth memory section that stores operational instructions, wherein, when the computing entity executes the operational instructions, the operational instructions cause the computing entity to:
analyze the identified portion of the system compliance with the identified policy based on the one or more policy analysis parameters; and
generate a policy rating metric based on the analysis.
A computer readable memory comprises (claim 16).
a first memory section for storing operational instructions that, when executed by a computing entity, cause the computing entity to (claim 16).
determine a system aspect of a system for an issue recovery evaluation (claim 16).
system elements include device identifier, software identifier (claim 18).
a second memory section for storing operational instructions that, when executed by the computing entity, cause the computing entity to (claim 16).
obtain issue recovery data regarding the system aspect in accordance with the at least one evaluation perspective and the at least one evaluation viewpoint (claim 16); policy rating metric (claim 21).
a third memory section for storing operational instructions that, when executed by the computing entity, cause the computing entity to (claim 16).
evaluation rating metric being… a policy rating metric (claim 21).
a fourth memory section stores operational instructions that… (claim 29).
based on the issue recovery data and policy analysis parameters, generating a policy rating for the system aspect… (claim 27).
generating a policy rating… and generating the issue recovery rating based on… the policy rating (claim 27).
Claim 2. The computer readable memory device of claim 1,
wherein the fourth memory section further stores operational instructions, wherein, when the computing entity executes the operational instructions, the operational instructions cause the computing entity to analyze the identified portion of the system by:
retrieving data from a computing device of the plurality of computing devices regarding an asset of the computing device, wherein the policy pertains to an aspect of the asset.
The computer readable memory of claim 16 (claim 17),
wherein the second memory section further stores operational instructions…to obtain the issue recovery data by (claim 22); third memory section…calculate the issue recovery rating (claim 27).
obtain the issue recovery information from a system element…by: probing the system element…to obtain a system element data recovery (claim 26), wherein system modes are assets (claim 28).
Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-22 of U.S. Patent No. US 11,899,548 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of present application are fully anticipated by the claims of issued patent. The issued US patent and the instant application are claiming common subject matter. The one of ordinary skill in the art would recognize that they are obvious variants (similar rationale to the table shown above for ‘833).
Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-22 of U.S. Patent No. US 12,072,779 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of present application are fully anticipated by the claims of issued patent. The issued US patent and the instant application are claiming common subject matter. The one of ordinary skill in the art would recognize that they are obvious variants (similar rationale to the table shown above for ‘833).
Claim Rejections - 35 USC § 112
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.
Claim 3 is 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 3 recites the limitation "the number of policies" in line 4; “the size of the system” in line 10; and “the organization” in line 11. There is insufficient antecedent basis for these limitations in the claim. Appropriate corrections are required.
Conclusion
The following prior art made of record and not relied upon is cited to establish the level of skill in the applicant’s art and those arts considered reasonably pertinent to applicant’s disclosure. See MPEP 707.05(c).
· US 2007/0250932 A1 – Kothari discloses enterprise asset discovery, policy compliance analysis, and risk profile metric calculation using configuration checks, vulnerability scans, and organizational security policies
· US 10,536,478 B2 – Kirti discloses enterprise security system discovers applications from network logs, calculates risk scores using security parameters, generated weighted metrics with feed loops for model improvement.
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/JIGAR P PATEL/Primary Examiner, Art Unit 2114
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