DETAILED ACTION
Notice of 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 .
Response to Amendment
The amendment filed 2026-05-26 has been entered and fully considered.
Election/Restrictions
Applicant’s election without traverse of Invention III (claims 1, 4-5, and 11) in the reply filed on 2026-05-26 is acknowledged.
Priority
Receipt is acknowledged of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d) and of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2024-12-20 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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, 4-5, and 11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (35 U.S.C. 101 Judicial Exception) without significantly more. The claims recite determining whether an opened file contains a keyword or feature and then taking an action, a form of observation, evaluation, judgment, and/or opinion, which is a concept performed in the human mind and thus grouped as mental processes. This judicial exception is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered separately and in combination, do not add significantly more to the abstract idea, as they are well-understood, routine, conventional computer functions as recognized by the courts.
Based upon consideration of all the relevant factors with respect to the claimed invention as a whole, the claims are determined to be directed to an abstract idea without significantly more. The rationale for this determination is explained infra:
The following are Principles of Law:
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”; 35 U.S.C. § 101. The Supreme Court has consistently held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable; See Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, an application of these concepts may be deserving of patent protection; See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The test for determining subject matter eligibility requires a first step of determining whether the claims are directed to a process, machine, manufacture, or composition of matter. If the claims are directed to one of the four patent-eligible subject matter categories, then the Examiner must perform a two-part analysis to determine whether a claim that is directed to a judicial exception recites additional elements that amount to significantly more than the exception. The first part of the second step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second part of the second step in the analysis is to consider the elements of the claims “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, 132 S. Ct. at 1298, 1297). In other words, the second step in the analysis is to “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 on the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
In the “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), the USPTO has prepared revised guidance for use by USPTO personnel in evaluating subject matter eligibility based upon rulings by the courts.
The Examiner is bound by and applies the framework as set forth by the Court in Mayo and reaffirmed by the Court in Alice and follows the 2019 PEG for determining whether the claims are directed to patent-eligible subject matter.
Step 1: Are the claims at issue directed to a process, machine, manufacture, or composition of matter?
The Examiner finds that the claims are directed to one of the four statutory categories.
Step 2A – Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
The Examiner finds that the claims are directed to the abstract idea of determining whether an opened file contains a keyword or feature and then taking an action, a form of observation, evaluation, judgment, and/or opinion, which is a concept performed in the human mind and thus grouped as mental processes.
Step 2A – Prong Two: Does the claim recite additional elements that integrate the Judicial Exception into a practical application?
The abstract idea is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer.
In determining whether the abstract idea was integrated into a practical application, the Examiner has considered whether there were any limitations indicative of integration into a practical application, such as:
(1) Improvements to the functioning of a computer, or to any other technology or technical field; See MPEP § 2106.05(a)
(2) Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; See Vanda Memo (Recent Subject Matter Eligibility Decision: Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals)
(3) Applying the judicial exception with, or by use of, a particular machine; See MPEP § 2106.05(b)
(4) Effecting a transformation or reduction of a particular article to a different state or thing; See MPEP § 2106.05(c)
(5) Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception; See MPEP § 2106.05(e) and Vanda Memo
The Examiner notes that clam features of: determining whether an opened file contains a keyword or feature and then taking an action do not improve the functioning of a computer or technical field, do not effect a particular treatment or prophylaxis for a disease or medical condition, do not apply or use a particular machine, do not effect a transformation or reduction of a particular article to a different state or thing, and do not apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Instead of a practical application, the claim features of determining whether an opened file contains a keyword or feature and then taking an action merely use a general-purpose computer as a tool to perform the abstract idea (See MPEP § 2106.05(f)) and merely generally link the use of the abstract idea to a field of use (See MPEP § 2106.05(h)). Thus, the Examiner finds that the claimed invention does not recite additional elements that integrate the Judicial Exception into a practical application.
Step 2B: Is there something else in the claims that ensures that they are directed to significantly more than a patent-ineligible concept?
The claims, as a whole, require nothing significantly more than generic computer implementation or can be performed entirely by a human. The additional element(s) or combination of element(s) in the claims other than the abstract idea per se amount to no more than recitation of generic computer structure (e.g. processor, storage space, and display screen) that serves to perform generic computer functions (e.g. determining whether an opened file contains a keyword or feature and then taking an action) that are well-understood, routine, and conventional activities previously known to the pertinent industry. The claimed control commands, file, filename, specifiable keyword, and specifiable security feature are all numbers, data structures, or datum. Each of these elements are individually dispositive of patent eligibility because of the following legal holdings:
“Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.” Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014).
The Supreme Court has also explained that “[a]bstract software code is an idea without physical embodiment,” i.e., an abstraction. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
A claim that recites no more than software, logic, or a data structure (i.e., an abstract idea) – with no structural tie or functional interrelationship to an article of manufacture, machine, process or composition of matter does not fall within any statutory category and is not patentable subject matter; data structures in ethereal, non-physical form are non-statutory subject matter. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994); see Nuijten, 500 F.3d at 1357.
Furthermore, the claimed invention does not have a specific asserted improvement in computer capabilities, nor is it a specific implementation of a solution to a problem in the software arts; See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Rather, the claims are merely directed towards determining whether an opened file contains a keyword or feature and then taking an action, which is similar to ideas that the courts have found to be abstract, as noted supra, and the claims are without a “practical application” or anything “significantly more”.
Considering each of the claim elements in turn, the function performed by the computer system at each step of the process does no more than require a generic computer to perform a well-understood, routine, and conventional activity at a high level of generality. For example, determining whether an opened file contains a keyword or feature and then taking an action is merely a generic form of performing repetitive calculations, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”). Further note that the abstract idea of determining whether an opened file contains a keyword or feature and then taking an action to which the claimed invention is directed has a prior art basis outside of a computing environment, e.g. redacting sensitive data in shared documents.
The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Viewed as a whole, the claims simply recite the steps of using generic computer components. The claims do not purport, for example, to improve the functioning of the computer system itself. Nor does it effect an improvement in any other technology or technical field. Instead, the claims amount to nothing significantly more than an instruction to implement the abstract idea using generic computer components. This is insufficient to transform an abstract idea into a patent-eligible invention.
The dependent claims likewise incorporate the deficiencies of a claim upon which they ultimately depend and are also directed to non-patent-eligible subject matter.
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.
Claims 1, 4-5, and 11 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Specifically, claim 1 is rejected on the basis that it contains an improper Markush grouping of alternatives; See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of “wherein the activation of the security mode means that at least one of the following steps is carried out: activating an audio warning signal, displaying a warning on the display screen, dimming the brightness of the display screen, switching on a warning light at the data processing device and/or at the display screen, and/or switching on an operating mode of the display screen in which the visibility is limited” is improper because the alternatives defined by the Markush grouping are of a physical or art class and do not share either a single structural similarity (e.g. audio generation, visual indication, and display limiting are different structural elements) nor a common use (even though all are a “security mode”, the elements each provide different types of security).
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Claim 5 is rejected under a similar rationale. The dependent claims included in the statement of rejection but not specifically addressed in the body of the rejection have inherited the deficiencies of their parent claim and have not resolved the deficiencies. Therefore, they are rejected based on the same rationale as applied to their parent claims above.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4-5, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lancioni et al. (US Pre-Grant Publication No. 20180082068-A1, hereinafter “Lancioni”).
With respect to independent claim 1, Lancioni discloses a method for activating a security mode of a data processing device with a display screen, comprising the following steps:
checking whether or not a file that has been opened or is to be opened in the data processing device, or the filename thereof, contains at least one specifiable keyword and/or a specifiable security feature {paras. 0021-0024 and 0032: “private data detection module 316 may be configured to detect privacy attributes associated with data input 312 to be displayed by the electronic display 322”}.
activating the security mode of the data processing device when the checking method step has a positive result {paras. 0032-0033: “If boundaries defining a sub-area of the electronic display 322 where the detected data will be displayed have been detected then, at operation 516, a privacy filter is dynamically generated to obscure the sub-area of the electronic display 322 where the detected data will be displayed so that the detected data cannot be discerned”; note that the limitation is a contingent limitation that has an optional precedent (i.e., “when the checking method step has a positive result”), and the broadest reasonable interpretation does not require the limitation (at least for process claim); See MPEP § 2111.04(II)}, wherein the activation of the security mode means that at least one of the following steps is carried out:
activating an audio warning signal, displaying a warning on the display screen, dimming the brightness of the display screen, switching on a warning light at the data processing device and/or at the display screen, and/or switching on an operating mode of the display screen in which the visibility is limited {para. 0033: “a privacy filter is dynamically generated to obscure the sub-area of the electronic display 322 where the detected data will be displayed so that the detected data cannot be discerned at a wide viewing angle (e.g., 45° or greater)”}.
With respect to dependent claim 4, Lancioni discloses wherein the operating mode of the display screen of the data processing device is switched on with limited visibility in the security mode, wherein the limited visibility is realized only on those areas of the display screen of the data processing device where the file that has been opened or is to be opened, or the filename thereof, containing at least one specifiable keyword and/or a specifiable security feature is displayed {para. 0033 & Figs. 2A-2B: “a privacy filter is dynamically generated to obscure the sub-area of the electronic display 322 where the detected data will be displayed so that the detected data cannot be discerned at a wide viewing angle (e.g., 45° or greater)”; note this modifies an element from a list of alternatives and is taught by a teaching of any another element; See MPEP §2143.03}.
With respect to claims 5 and 11, a corresponding reasoning as given earlier in this section with respect to claims 1 and 4 applies, mutatis mutandis, to the subject matter of claims 5 and 11; therefore, claims 5 and 11 are rejected, for similar reasons, under the grounds as set forth for claims 1 and 4.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
The reference Kim et al. (US Pre-Grant Publication No. US-20060221067-A1) discloses reducing the visibility of private information displayed on a screen.
The reference Ashbrook (US Pre-Grant Publication No. US-20130307870-A1) discloses obscuring private information displayed on a screen.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Bechtel whose telephone number is 571-270-5436. The examiner can normally be reached Monday - Friday, 09:00 - 17:00 ET.
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, William (“Bill”) Korzuch can be reached at 571-272-7589. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Kevin Bechtel/
Primary Examiner, Art Unit 2491
Prosecution Insights