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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a data extraction module,” “an identity definition module,” “a privacy risk calculation module,” “an export module,” “a risk mitigation module” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 1 and 13 are objected to because of the following informalities:
In Claim 1, Line 25, “…mitigated data of the at least obe identity space…” should read “…mitigated data of the at leastone identity space…”
In Claim 13, Line 4, “…extract data from the data objects…” should read “…extracting data from the data objects…” and Line 14, …”export the calculated privacy risk…” should read “exporting the calculated privacy risk…”
Appropriate correction is required.
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.
Claims 1-15 are 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 pre-AIA the application regards as the invention.
Regarding claim 1, it is unclear due to the lack of antecedent basis for “data objects” in line 7, as to whether these data objects comprised within the at least one identity space are the same data objects being extracted in the earlier limitations. It is also unclear due to the lack of antecedent basis for “the contained individuals” in line 13, as to what contained individuals the claim is referring to. It is further unclear due to the lack of antecedent basis for “the data of the at least one identity space” in lines 20-21, as to whether this data is referring to the extracted data or a different set of data. The claim is therefore rendered indefinite.
Regarding claim 4, it is unclear due to the lack of antecedent basis for “the data format,” as to what data format the claim is referring to. The claim is therefore rendered indefinite.
Regarding claim 8, it is unclear due to the lack of antecedent basis for “all extracted data” in line 3, as to whether this extracted data is the same extracted data recited in the independent claims. The claim is therefore rendered indefinite.
Regarding claim 9, it is unclear due to the lack of antecedent basis for “extracted data elements” in line 3, as to whether these extracted data elements are the same as the extracted data elements recited in the independent claims. The claim is therefore rendered indefinite.
Regarding claim 12, it is unclear due to the lack of antecedent basis for “the data elements of semantic types to be transformed” in line 3, as to what data elements of semantic types the claim is referring to. The claim is therefore rendered indefinite.
Regarding claim 13, it is unclear due to the lack of antecedent basis for “data objects” in line 6, as to whether these data objects comprised within the at least one identity space are the same data objects being extracted in the earlier limitations. It is also unclear due to the lack of antecedent basis for “the contained individuals” in lines 10-11, as to what contained individuals the claim is referring to. It is further unclear due to the lack of antecedent basis for “the data of the at least one identity space” in line 16, as to whether this data is referring to the extracted data or a different set of data entirely. The claim is therefore rendered indefinite.
Regarding claim 14, it is unclear due to the lack of antecedent basis for “the digital computer,” as to what digital computer the claim is referring to. The claim is therefore rendered indefinite.
Regarding claim 15, it is unclear due to the lack of antecedent basis for “a system according to claim 1,” as to whether the method of claim 15 is utilizing the same system as the system in claim 1. The claim is therefore rendered indefinite.
Regarding claims 2-3, 5-7 and 10-11, the claims are rejected because they are dependent to a previous rejected claim.
Appropriate correction(s) is/are required.
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 14 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claim 14, the claim is rejected due to being directed to non-statutory subject matter.
The claim recites “a computer readable hardware storage device…,” which in the broadest reasonable interpretation (BRI), could comprise transmission media and transitory signals.
Appropriate correction is required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODMAN ALEXANDER MAHMOUDI whose telephone number is (571)272-8747. The examiner can normally be reached on M-F 11:00am – 7:00pm.
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/RODMAN ALEXANDER MAHMOUDI/Examiner, Art Unit 2499