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 .
Information Disclosure Statement
Regarding the IDS, it is an applicant’s duty of disclosure of material and information, presenting a patent examiner with disclosing pertinent prior art references and to make not to "bury" it within other disclosures of less relevant prior art; See Golden Valley Microwave Foods Inc. v. Weaver PopcornCo. Inc., 24 USPQ2d 1801 (N.D. Ind. 1992); Molins PLC v. Textron Inc., 26 USPQ2d 1889, at 1899 (D.Del.1992); Penn Yan Boats, Inc. v. Sea Lark Boats, Inc. et al., 175 USPQ 260, at 272 (S.D.FI. 1972)
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 8-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8-13 of copending Application No. 18/884,243 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims significantly overlap in scope. By the way of illustration, consider the respective claim 8 from both applications:
Claim 8 of the 18/884,197 application
Claim 8 of the 18/884,243 application
8. A method for generating a honeypot for a
target system, comprising the following
steps:
ascertaining services provided and protocols
supported by a target system to be imitated
via a network interface by sending queries to
the target system for a plurality of services;
ascertaining a honeypot type and a
configuration for the selected honeypot type
that, when configured with the ascertained
configuration, can provide the ascertained
services and support the ascertained
protocols; and
generating a honeypot of the ascertained
honeypot type with the ascertained
configuration.
8. A method for generating a honeypot for a
target system, comprising the following
steps:
ascertaining by accessesing the target
system, using a honeypot generating
device which is granted access to the target
system:
the directory tree of a file system of the
target system, operating system shell
commands supported by on operating
system of the target device, and processes
running on the target system; and
generating, using the honeypot generating
device, a honeypot which contains a
file system with a copy of the ascertained
directory tree, imitates the ascertained operating system shell commands, and imitates execution of the ascertained processes.
The only difference of any note lay in the fact that the instant application allows for ascertained configuration provided for the honeypot and the copending application provide the details of the copy of the directory tree and the operating system shell commands (configuration) for the honeypot. Consequently, anything that would infringe the instant application would also necessarily infringe the copending application, resulting in two patents on the same invention. A terminal disclaimer is needed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 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 8 – 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent Number 10,938,854 issued to Strogov et al. “Systems and methods for preventive ransomware detection using file honeypots”.
Strogov discloses generating a honeypot in a directory in a filesystem, wherein the file
honeypot is included on a file list of contents of the directory, identifying the suspicious process to intercepting any requests to the modify the file system.
As per claims 8, 12 and 13, Strogov discloses "ascertaining services provided and protocols supported by a target system to be imitated via a network interface by sending queries to the target system for a plurality of services (Summary and Column 4 lines 28 - 35):
ascertaining a honeypot type and a configuration for the selected honeypot type that, when configured with the ascertained configuration, can provide the ascertained services and support the ascertained protocols(Column 4 lines 35 - 39), and
generating a honeypot of the ascertained honeypot type with the ascertained configuration (Column 4 lines 52 – 65 and Column 5 lines 5 – 34)
As per claim 9, Strogov discloses "method according to claim 8, wherein at least a portion of the queries are port scan packets (Summary; file processing; intercepting and identifying; Column 9 lines 24 - 34)”.
As per claim 10, Strogov discloses " method according to claim 8, wherein a secrecy criterion is checked for information about the target system and the honeypot is generated in such a way that it does not include information to be kept secret according to the secrecy criterion (Summary; Column 4 lines 52 – 65; Column 5 lines 5 – 34; Fig. 1 and associated text)”.
As per claim 11, Strogov discloses "method according to claim 8, wherein based on the ascertained services provided and the ascertained protocols supported by the target system to be imitated, a Boolean expression is ascertained which the honeypot is to fulfill and the honeypot type and the configuration are ascertained such that the Boolean expression is fulfilled (Column 7 lines 5 – 13; Column 8 lines 4 – 10 and lines 47 – 54)”.
Examiner has cited portions and particular paragraphs (or, columns and line numbers) from the prior art applied to the claims above for the convenience of the Applicant. Applicant is advised to review the prior art to incorporate all of the embodiments disclosed, background information provided in the reference, along with the related art description, in formulating a response to this office action. It is respectfully requested of the Applicant in preparing response, to fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
The examiner requests, in response to this office action, support be shown for language added to any original claims on amendment and any new claims. That is, indicate support for newly added claim language by specifically pointing to page(s) and line number(s) in the specification and/or drawing figure(s). This will assist the examiner in prosecuting the application. When responding to this office action, applicant is advised to clearly point out the patentable novelty which he or she thinks the claims present, in view of the state of art disclosed by the references cited or the objections made.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure as the listed prior art additionally discloses certain parts of the claim features (See PTO 892, Notice of References cited).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PRAMILA PARTHASARATHY whose telephone number is (571)272-3866. The examiner can normally be reached Mon-Fri: 7AM - 2PM EST.
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, Hadi Armouche can be reached at (571)270-3618. 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.
/PRAMILA PARTHASARATHY/Primary Examiner, Art Unit 2409
Prosecution Insights