DETAILED ACTION
This Office action is in response to a non-provisional utility patent application filed by Applicant on 9/6/2024.
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 .
Information Disclosure Statement PTO-1449
The Information Disclosure Statement submitted by applicant on 9/6/2024 has been considered. The submission is in compliance with the provisions of 37 CFR § 1.97. Form PTO-1449 signed and attached hereto.
Double Patenting
No conflicting application or issued patent was identified that would require a rejection under double patenting.
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 1–17 rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claim 1, the claim does not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
The analysis is guided by the Supreme Court’s two-step framework, described in Mayo and Alice (Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). Please see the Interim Guidance on Patent Subject Matter Eligibility (December 2014).
STEP 1: Are the claims directed to a process, machine, manufacture, or composition of matter? Yes. Independent claim 1 recites a series of acts for collecting data to generate the risk of a computer application. Thus, the claim is directed to a process, which is one of the statutory categories of invention.
STEP 2A: Are the claims directed to a law of nature, a natural phenomenon, or an abstract idea, i.e., judicially recognized exceptions (both individually and as an ordered combination)? Yes. The act of collecting data and generating a risk value amounts to an abstract idea beyond the scope of 101.
The Eligibility Guidance for Identifying Abstract Ideas provides a standard for analyzing claims in view of the Alice/Mayo framework and informed by concepts held to be abstract ideas in Supreme Court and Federal Circuit eligibility decisions based upon common characteristics. Under this analysis the claimed invention is analogous to “An Idea Of Itself”, specifically, “Collecting and comparing known information” (Classen).
The steps of defining parameters and variables, receiving parameters and variables, extracting (which amounts to collecting) parameters and variables, computing, estimating determining, calculating, and evaluating risk values are mental steps with the aid of pen and paper and amount to an abstract idea.
STEP 2A, Prong 2: (are there additional limitations that integrates the abstract idea into a practical application?) No. While the claim recites the limitations “via one or more hardware processors”, the claim merely includes instructions to implements an abstract idea on a computer/using a computer as a tool to perform an abstract idea.
STEP 2B: Do the claims recite additional elements that amount to significantly more than the judicial exception(s)? No. The claims do not transform the nature of the claim into a patent-eligible application of the abstract idea (i.e. significantly more than the abstract idea implemented using generic computer components).
Placing the claimed steps within a context of a machine (“a processor implemented method”) does no more than require a generic computer to perform a generic computer function (i.e. collecting data to generate the risk) and are therefore insufficient to transform an abstract idea into a patent-eligible invention.
Regarding claim 9, the claim does not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
The analysis is guided by the Supreme Court’s two-step framework, described in Mayo and Alice (Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). Please see the Interim Guidance on Patent Subject Matter Eligibility (December 2014).
STEP 1: Are the claims directed to a process, machine, manufacture, or composition of matter? Yes. Independent claim 9 recites a system with a memory and processors that carry out a series of acts for collecting data to generate the risk of a computer application. Thus, the claim is directed to a machine, which is one of the statutory categories of invention.
STEP 2A: Are the claims directed to a law of nature, a natural phenomenon, or an abstract idea, i.e., judicially recognized exceptions (both individually and as an ordered combination)? Yes. The act of collecting data and generating a risk value amounts to an abstract idea beyond the scope of 101.
The Eligibility Guidance for Identifying Abstract Ideas provides a standard for analyzing claims in view of the Alice/Mayo framework and informed by concepts held to be abstract ideas in Supreme Court and Federal Circuit eligibility decisions based upon common characteristics. Under this analysis the claimed invention is analogous to “An Idea Of Itself”, specifically, “Collecting and comparing known information” (Classen).
The steps of defining parameters and variables, receiving parameters and variables, extracting (which amounts to collecting) parameters and variables, computing, estimating determining, calculating, and evaluating risk values are mental steps with the aid of pen and paper and amount to an abstract idea.
STEP 2A, Prong 2: (are there additional limitations that integrates the abstract idea into a practical application?) No. While the claim recites the limitations “via one or more hardware processors”, the claim merely includes instructions to implements an abstract idea on a computer/using a computer as a tool to perform an abstract idea.
STEP 2B: Do the claims recite additional elements that amount to significantly more than the judicial exception(s)? No. The claims do not transform the nature of the claim into a patent-eligible application of the abstract idea (i.e. significantly more than the abstract idea implemented using generic computer components).
Placing the claimed steps within a context of a machine (“a system, comprising a memory … interfaces … hardware processors”) does no more than require a generic computer to perform a generic computer function (i.e. collecting data to generate the risk) and are therefore insufficient to transform an abstract idea into a patent-eligible invention.
Regarding claim 17, the claim does not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
The analysis is guided by the Supreme Court’s two-step framework, described in Mayo and Alice (Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). Please see the Interim Guidance on Patent Subject Matter Eligibility (December 2014).
STEP 1: Are the claims directed to a process, machine, manufacture, or composition of matter? Yes. Independent claim 17 recites an information storage medium carrying out a series of acts for collecting data to generate the risk of a computer application. Thus, the claim is directed to a process, which is one of the statutory categories of invention.
STEP 2A: Are the claims directed to a law of nature, a natural phenomenon, or an abstract idea, i.e., judicially recognized exceptions (both individually and as an ordered combination)? Yes. The act of collecting data and generating a risk value amounts to an abstract idea beyond the scope of 101.
The Eligibility Guidance for Identifying Abstract Ideas provides a standard for analyzing claims in view of the Alice/Mayo framework and informed by concepts held to be abstract ideas in Supreme Court and Federal Circuit eligibility decisions based upon common characteristics. Under this analysis the claimed invention is analogous to “An Idea Of Itself”, specifically, “Collecting and comparing known information” (Classen).
The steps of defining parameters and variables, receiving parameters and variables, extracting (which amounts to collecting) parameters and variables, computing, estimating determining, calculating, and evaluating risk values are mental steps with the aid of pen and paper and amount to an abstract idea.
STEP 2A, Prong 2: (are there additional limitations that integrates the abstract idea into a practical application?) No. While the claim recites the limitations “via one or more hardware processors”, the claim merely includes instructions to implements an abstract idea on a computer/using a computer as a tool to perform an abstract idea.
STEP 2B: Do the claims recite additional elements that amount to significantly more than the judicial exception(s)? No. The claims do not transform the nature of the claim into a patent-eligible application of the abstract idea (i.e. significantly more than the abstract idea implemented using generic computer components).
Placing the claimed steps within a context of a machine (“non-transitory machine-readable information storage mediums”) does no more than require a generic computer to perform a generic computer function (i.e. collecting data to generate the risk) and are therefore insufficient to transform an abstract idea into a patent-eligible invention.
The dependent claims (2–8 and 10–16) inherit the deficiencies of the claims upon which they ultimate claim and provide only elaborating on the parameters and variables used in the calculations, which does not rise above the threshold of this step’s analysis. The analysis provided above applies to each of the claims and are rejected as well.
The Examiner suggests that Applicant might overcome this rejection if the claims were somehow to articulate some type of tangible improvement or useful result of the calculated risk. Of course, such a limitation would be required to have a previously disclosed basis in the application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Young (US 2020/0244706 A1, published Jul. 30, 2020), monitoring and collecting risk parameters from client devices connected across an enterprise network to assess future obsolescence of the cryptographic techniques relied upon by the network devices in order to initiate remedial actions; Shea ‘300 (US 11,218,300 B1, issued Jan. 4, 2022), migrating vulnerable computer systems from convention cryptographic systems to post-quantum cryptography systems and generating a risk profile to calculate a risk level of the data in the system. Shea ‘470 (US 11,223,470 B1, issued Jan. 11, 2022), cryptographic key management related to migrating non-PQC systems and data protections to PQC data protection protocols; NPL Ma (Chujiao Ma, et al., CARAF: Crypto Agility Risk Assessment Framework, Journal of Cybersecurity 2021, Oxford University Press, 1–11), determining when it is time to prepare for quantum threats using Mosca’s XYZ quantum risk model; NPL Houmb (Siv Hilde Houmb, and Virginia Franqueira, Estimating ToE Risk Level using CVS, 2009 International Conference on Availability, Reliability and Security, IEEE Computer Society, 718–725), constructing access value used to derive the risk level or risks to a system; and NPL Malina (Lukas Malina, et al., Post-Quantum Era Privacy Protection for Intelligence Infrastructures, IEEE Access Volume 9, 2021, Mar. 8, 2021, 36038–36077), .
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VANCE M LITTLE whose telephone number is (571) 270-0408. The examiner can normally be reached on Monday - Friday 9:30am - 5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jung (Jay) Kim can be reached on (571) 272-3804. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VANCE M LITTLE/Primary Examiner, Art Unit 2493