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 .
DETAILED ACTION
Response to Arguments
In communications filed on 3/27/2026, claims 1-24 are presented for examination. Claims 1, 7, and 13 are independent.
Amended claim(s): 1, 7, 13, and 18.
New claim(s): 19-24.
Applicants’ arguments, see Applicant Arguments/Remarks filed 3/27/2026, with respect to claim(s) rejected under 35 USC 101 have been fully considered but are unpersuasive. The abstract idea to which claims 1, 7, 13 are directed to is mental process such as concepts performed in the human mind (including an observation, evaluation, judgement, opinion). The limitation recited in the claim are abstract concept of receiving, extracting, and analyzing data to make a judgement.
Applicants’ arguments, see Applicant Arguments/Remarks filed 3/27/2026, with respect to claim(s) rejected under prior art have been considered but are moot in view of new ground(s) of rejection necessitated by Applicants’ amendment to the claim(s).
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.
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. Claim(s) 1, 7, and 13 is/are directed to a method and system (apparatus). The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more. Based upon consideration of all of the relevant factors with respect to the claims as a whole, claims are held to claim an unpatentable abstract idea, and are therefore rejected as ineligible subject matter under 35 U.S.C. § 101.
Inventions for a “new and useful process, machine, manufacture, or composition of matter” generally constitute patent-eligible subject matter. 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ - i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217-18 (alteration in original).
The USPTO published revised guidance on January 7, 2019, for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the USPTO's examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50. 1
The first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. See 2019 Revised Guidance, 84 Fed. Reg. at 54; MPEP §§ 2106.04(II)(A)(l), 2106.04(a). If so, we next determine, in Step 2A, Prong Two, whether the claim as a whole integrates the recited judicial exception into a practical application of that exception, i.e., whether the additional elements recited in the claim beyond the judicial exception, apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. See 2019 Revised Guidance, 84 Fed. Reg. at 54-55; MPEP §§ 2106.04(II)(A)(2), 2106.04(d). Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 54-55; MPEP § 2106.04(II)(A)(2).
If the claim is determined to be directed to a judicial exception under Step 2A, we next evaluate the additional elements, individually and in combination, in Step 2B, to determine whether they provide an inventive concept, i.e., whether the additional elements or combination of elements amounts to significantly more than the judicial exception itself; only then, is the claim patent eligible. See 2019 Revised Guidance, 84 Fed. Reg. at 56; MPEP § 2106.05.
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
2019 Revised Guidance, Step 2A, Prong 1
The abstract idea to which claims 1, 7, 13 are directed to is mental process such as concepts performed in the human mind (including an observation, evaluation, judgement, opinion). In particular, the claims recite the following abstract concepts:
“(a) obtain configuration information indicating a configuration of a system that is an analysis target (hereinafter, "analysis target system"), the configuration information including types of devices, OS versions, hardware configurations, implemented software, communication protocols, and port states within the target system;” (i.e., abstract idea of collecting data/information as found abstract by the Courts in Internet Patents, Content Extraction, Digitech, CyberSource, Electric Power Group, Classen, FairWarning)
“(b) detect an attack route in a cyberattack and an attack technique that is used for the attack route based on the obtained configuration information and preset analysis rules that stipulate attack techniques usable for each type of vulnerability, and output the detected attack route and attack technique as an analysis result;” (i.e., abstract idea of mental process of analyzing data as found abstract by the Courts in TLI Comms, Digitech, SmartGene, Bancorp Servs, Electric Power Group, Classen, FariWarning, Cybersource)
“(c) extract with the use of the analysis result obtained in (b) that includes the detected attack route and an attack technique corresponding to the attack route, a case example in which the attack technique corresponding to the attack route appears, from a group of case examples of cyberattacks associated with attack techniques” (i.e., abstract idea of collecting data/information and abstract idea of mental process of analyzing data as found abstract by the Courts in TLI Comms, Digitech, SmartGene, Bancorp Servs, Electric Power Group, Classen, FariWarning, Cybersource)
“(d) output a visual representation of the extracted case example along with the detected attack route and attack technique overlaid on a network topology of the analysis target system, the network topology being specified based on the configuration information, to facilitate analysis for optimizing security countermeasures” (i.e., abstract idea of mental process of informing, notifying, displaying the result of data processing to an entity as found abstract by the Courts in FairWarning, Content Extraction. Court has noted “merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis.” See e.g., Electric Power Group, 830 F.3d 1350, 1351, 1353–54)
The Supreme Court and Federal Circuit have identified abstract ideas in patent claims by making comparisons to concepts found in past decisions to be judicial exceptions to eligibility. The 2019 IEG summarizes concepts the courts have considered to be abstract ideas by associating eligibility decisions with judicial descriptors (e.g., “an idea of itself,” “certain methods of organizing human activities”, “mathematical relationships and formulas”) based on common characteristics. These associations define the judicial descriptors in a manner that stays within the confines of the judicial precedent, with the understanding that these associations are not mutually exclusive, i.e., some concepts may be associated with more than one judicial descriptor.
The abstract functions of the claims in the case are claim(s) is/are directed to system and method of data extraction/processing based on analysis (i.e., abstract idea mental process) as defined by the claimed steps above.
The present claims, as a whole, and individual limitations, are reciting abstract concept of data data extraction/processing based on analysis (i.e., abstract idea mental process). As such the claims are analogous to FairWarning, 839 F.3d at 1093-94 (concluding claims directed to "collecting and analyzing information to detect misuse and notifying a user when misuse is detected" to be mental processes within the abstract-idea category); Electric Power Group; and TLI Comms. Note that merely using generic data processing algorithm to extract the data does not convert a known abstract idea (i.e., data processing) into an eligible subject matter. See, Bancorp Servs., L.L. C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1277-78 (Fed. Cir. 2012). Looking at the steps of the claims, for each of the claims, data is simply being analyzed to extract similar data example which was ruled abstract in:
a. Collecting and comparing known information (Classen);
b. Collecting and analyzing information to detect misuse and notifying a user when misuse is detected (FairWarning);
c. Data recognition and storage (Content Extraction);
d. Obtaining and comparing intangible data (Cybersource);
e. Collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group);
f. Virus Screening (Int. Ventures v. Symantec ‘610 patent);
Furthermore, the invention is nothing more than data analysis and extraction, as described in the claims that can be performed mentally (or with a pen and piece of paper). The steps are similar to concepts and ideas that have been identified as abstract by the courts. For example, collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group); collecting and analyzing information to detect misuse and notifying a user when misuse is detected (FairWarning); and obtaining and comparing intangible data (Cybersource). While the specific facts of the case differ from these cases, the claims are still directed to data analysis to extract similar data examples. Further, each and every step can be performed mentally and with pen and paper. A computer is not necessary to generate, receive and correlate/compare data. Even further still, any steps that deal with generating, receiving, analyzing are insignificant, extra solution activity because receiving, analyzing and transmitting data, analyzing and processing collected data to derive risk assessments, and announcing the risk assessments are all well-known in the computer network security arts.
2019 Revised Guidance, Step 2A, Prong 2
The 2019 Revised Guidance sets forth a non-exhaustive listing of considerations indicative that an additional element or combination of elements may have integrated a recited judicial exception into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55; MPEP § 2106.04(d). In particular, the Guidance describes that an additional element may have integrated the judicial exception into a practical application if, inter alia, the additional element reflects an improvement in the functioning of a computer or an improvement to other technology or a technical field. Id. At the same time, the Guidance makes clear that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra-solution activity to the judicial exception; or only generally linking the use of the judicial exception to a particular technological environment or field are not sufficient to integrate the judicial exception into a practical application. Id.
The abstract functions of the claims in the case are claim(s) is/are directed to system and method of data processing/analysis to extract similar data examples (i.e., abstract idea mental process) as defined by the claimed steps. The claims do not require an arguably inventive set of components, methods, or algorithms. The abstract idea is implemented using generic computing elements (“instructions, memory, program, medium”) that do not integrate a practical application of the abstract idea in the claims (step 2A, prong 2). Accordingly, even in combination, these additional generic computing elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims recite a mental process i.e., an abstract idea, and that the additional elements recited in the claim beyond the abstract idea are no more than generic computer components used as tools to perform the recited abstract idea and insignificant extra-solution activity. As such, they do not integrate the abstract idea into a practical application. See Alice Corp., 573 U.S. at 223-24 ("[W]holly generic computer implementation is not generally the sort of ‘additional featur[ e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)); 2019 Revised Guidance, 84 Fed. Reg. at 55 (identifying “an additional element adds insignificant extra-solution activity to the judicial exception” and “an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use” as examples in which a judicial exception has not been integrated into a practical application).
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
The relevant question under Step 2B is whether claim includes an additional element or combination of elements adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional activity” in the field or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception. Here, the additional elements of claim beyond the abstract idea, namely, a “memory”, “processor”, “instructions”, “medium” is a conventional computing equipment used in a well-understood, routine, and conventional manner. These additional elements do not provide an inventive concept; rather, they simply append well-understood, routine, conventional activities previously known to the industry to the judicial exception.
Applying the test to the claims in the application, the structural elements of the claims, which include a computer when taken in combination with the functional elements claim(s) is/are directed to system and method data processing/analysis to extract similar data examples, together do not offer “significantly more” than the abstract idea itself because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of any computer itself, or provide meaningful limitations beyond generally linking an abstract idea (collecting data from application URLs) to a particular technological environment (a general purpose computer and/or environment of the user). When considered as an ordered combination, the Examiner does not find any combination of the additional elements that amounts to more than the sum of the parts. The Examiner finds that the individual elements of the claims are performing their intended roles and functions. In most cases, the additional elements are applied merely to carry out data processing, as discussed above, fall under well-understood, routine, and conventional functions of generic computers – in our common day-to-day interactions. Note: Applicant’s disclosure states a generic hardware and/or software is used to execute the algorithms (Fig. 6, ¶49-52); note also cited art of record Kotenko discloses Fig: 1, 2, pages 13-16, i.e., the computer hardware and software implementing the algorithm to detect cyber attacks. Therefore, the claimed interactions of the various generically recited methods / devices lacks an unconventional step that confines the claim to a particular useful application in the sense that the result is equivalent to purely mental activity, e.g., data processing.
Dependent claims do not add an inventive step to the abstract idea of the independent claims and are therefore rejected based on the aforementioned rationale discussed in the rejection.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kotenko, Igor, and Andrey Chechulin. "A cyber attack modeling and impact assessment framework." 2013 5th International Conference on Cyber Conflict (CYCON 2013). IEEE, 2013 (hereinafter ‘Kotenko’) in view of US 20170244745 A1 (hereinafter ‘Key’).
As regards claim 1, Kotenko discloses: An information processing apparatus comprising: at least one memory storing instructions; and at least one processor configured to execute the instructions to: (Kotenko: Fig: 1, 2, pages 13-16, i.e., the computer hardware and software implementing the algorithm to detect cyber attacks)
(a) obtain configuration information indicating a configuration of a system that is an analysis target (hereinafter, "analysis target system"), the configuration information including types of devices, OS versions, hardware configurations, implemented software, communication protocols, and port states within the target system; (Kotenko: pages 4-5, last paragraph, i.e., the configuration information such as hardware and software installed)
However, Kotenko does not but in analogous art, Key (US 20170244745 A1) teaches configuration information includes type of device, OS, and software (Key: Figs. 5, 11, ¶19-¶25, ¶137-¶140, i.e., obtaining configuration information and performing attack analysis)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Kotenka to include system configuration information such as OS, software, device types as taught by Key with the motivation to detect cyber attacks (Key: Figs. 5, 11, ¶19-¶25, ¶137-¶140)
Kotenka et al combination further teaches: (b) detect an attack route in a cyberattack and an attack technique that is used for the attack route based on the obtained configuration information and preset analysis rules that stipulate attack techniques usable for each type of vulnerability, and output the detected attack route and attack technique as an analysis result; (Kotenko: Fig. 1, 2, pages 5-7, i.e., building cyber-attack graphs based on the sequence of attack to determine different vulnerabilities. See, also, Key: Figs. 5, 11, ¶19-¶25, ¶137-¶140)
(c) extract with the use of the analysis result obtained in (b) that includes the detected attack route and an attack technique corresponding to the attack route (Kotenko: Fig. 1, 2, pages 5-7, i.e., building cyber-attack graphs based on the sequence of attack (i.e., route)), a case example in which the attack technique corresponding to the attack route appears, from a group of case examples of cyberattacks associated with attack techniques; and (Kotenko: pages 7-10, i.e., monitoring real-time events in the system and applying the attack models to determine the correspondence between events and the cyber attack model. See, also, Key: Figs. 5, 11, ¶19-¶25, ¶137-¶140)
(d) output a visual representation of the extracted case example along with the detected attack route and attack technique overlaid on a network topology of the analysis target system, the network topology being specified based on the configuration information, to facilitate analysis for optimizing security countermeasures. (Kotenko: Figs. 2-3, pages 7-10, 17-18, i.e., the displaying attacks in a gui. See also, Key: Figs. 3, 5, 11, ¶19-¶25, ¶96-¶100, ¶137-¶140, i.e., displaying the attacks in the GUI)
Claims 7, 13 recite substantially the same features recited in claim 1 above, and are rejected based on aforementioned rationale discussed in the rejection.
As regards claim 2, Kotenko et al combination teaches the information processing apparatus according to claim 1, wherein the one or more processors further extracts, as the case example, a case example in which a plurality of attack techniques corresponding to the attack route appear. (Kotenko: Fig. 1, 2, pages 5-7, i.e., building cyber-attack graphs based on the sequence of attack (i.e., route) and type of attacks to build cyber-attack models. See also, page 11, i.e., attack models represent attack types and sequences of actions (i.e., route))
Claims 8, 14 recite substantially the same features recited in claim 2 above, and are rejected based on aforementioned rationale discussed in the rejection.
As regards claim 3, Kotenko discloses the information processing apparatus according to claim 2, wherein the one or more processors further extracts case examples in descending order of the number of attack techniques corresponding to the attack route, from case examples in which a plurality of attack techniques corresponding to the attack route appear. (Kotenko: Fig. 2, pages 7-11, 15, i.e., the hierarchical, prioritized attack model based on the sequence of attack)
Claims 9, 15 recite substantially the same features recited in claim 3 above, and are rejected based on aforementioned rationale discussed in the rejection.
As regards claim 4, Kotenko et al combination teaches the information processing apparatus according to claim 2, wherein, when the analysis result includes a plurality of attack techniques corresponding to the attack route, and an order in which the attack techniques are used, the one or more processors further extracts, from the group of case examples, case examples in descending order of the degree to which an order of attack techniques corresponding to the attack route matches the order included in the analysis result. (Kotenko: Fig. 2, pages 7-11, 15, i.e., the hierarchical, prioritized attack model based on the sequence of attack and matching and displaying the attack)
Claims 10, 16 recite substantially the same features recited in claim 4 above, and are rejected based on aforementioned rationale discussed in the rejection.
As regards claim 5, Kotenko et al combination teaches the information processing apparatus according to claim 1, wherein the one or more processors further extracts a case example in which an attack technique designated in advance appears, preferentially to another case example, from case examples in which an attack technique corresponding to the attack route appears. (Kotenko: Fig. 1, 2, pages 5-7, i.e., building cyber-attack graphs based on the sequence of attack (i.e., route) and type of attacks to build cyber-attack models in advance. See also, page 11, i.e., attack models represent attack types and sequences of actions (i.e., route))
Claims 11, 17 recite substantially the same features recited in claim 5 above, and are rejected based on aforementioned rationale discussed in the rejection.
As regards claim 6, Kotenko et al combination teaches the information processing apparatus according to claim 1, wherein the one or more processors further detects: an attack route in a cyberattack and an attack technique that is used for the attack route, based on configuration information indicating a configuration of a system, and outputs the detected attack route and attack technique as the analysis result. (Kotenko: Fig. 1, 2, pages 5-7, 13-15, i.e., building cyber-attack graphs based on the sequence of attack (i.e., route) and type of attacks to build cyber-attack models in advance. See also, page 11, i.e., attack models represent attack types and sequences of actions (i.e., route) wherein system configurations are taken into account)
Claims 12, 18 recite substantially the same features recited in claim 6 above, and are rejected based on aforementioned rationale discussed in the rejection.
As regards claim 19, Kotenko et al combination teaches the information processing apparatus according to claim 1, wherein the processor is further configured to extract a case example in which an attack technique designated in advance appears, preferentially to another case example, from case examples in which an attack technique corresponding to the attack route appears, wherein the designated attack technique is determined based on an evaluation result of risk, importance of assets, attack frequency, technical capabilities required for an attack, threat level, fullness of countermeasures, or vulnerability level for each attack step. (Kotenko: Fig. 1, 2, pages 5-7, i.e., building cyber-attack graphs based on the sequence of attack (i.e., route) and type of attacks to build cyber-attack models in advance. See also, page 11, i.e., attack models represent attack types and sequences of actions (i.e., route). See also, Key: Figs. 3, 5, 11, ¶19-¶25, ¶96-¶100, ¶137-¶140)
Claims 21, 23 recite substantially the same features recited in claim 19 above, and are rejected based on aforementioned rationale discussed in the rejection.
As regards claim 20, Kotenko et al combination teaches the information processing apparatus according to claim 1, wherein the processor is further configured to convert the detected attack technique from a first expression format to a second expression format with reference to a pre-prepared table that correlates the first expression format used in the analysis result and the second expression format used in the group of case examples of cyberattacks, before extracting the case example. (Kotenko: Fig. 1, 2, pages 5-7, i.e., building cyber-attack graphs based on the sequence of attack (i.e., route) and type of attacks to build cyber-attack models in advance. See also, page 11, i.e., attack models represent attack types and sequences of actions (i.e., route). See also, Key: Figs. 3, 5, 11, ¶19-¶25, ¶96-¶100, ¶137-¶140)
Claims 22, 24 recite substantially the same features recited in claim 20 above, and are rejected based on aforementioned rationale discussed in the rejection.
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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/SYED A ZAIDI/Primary Examiner, Art Unit 2432
1 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the revised guidance and subsequent updates at § 2106 (9th ed. Rev. 10.2019, rev. June 2020).
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