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
The information disclosure statement (IDS) submitted on September 17, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “computer-readable instructions, that when executed by the primary processor cause the computing device to execute” and “second computer-readable instructions, when executed by the secure processor, cause the computing device to cause execution/determine/replace” in claim 16; “health check further causes the computing device to scan” in claim 17; “health check further causes the computing device to scan” in claim 18; and “health check further causes the computing device to determine/compare” in claim 19.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 1-7 and 9-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8-20 of U.S. Patent No. 11,755,727. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by the earlier filed patented ‘727 claims in that the claims of the ‘727 patent contain all of the limitations of the instant application. Claims 1-7 and 9-20 of the instant application therefore are not patentable from the earlier filed ‘727 patented claims, and as such are unpatentable for obvious-type double patenting.
Claims 1 and 2 of the instant application corresponds to claim 14 of the ‘727 patent;
Claims 3 and 4 of the instant application corresponds to claims 15 and 16 of the ‘727 patent;
Claim 5 of the instant application corresponds to claim 17 of the ‘727 patent;
Claim 6 of the instant application corresponds to claim 18 of the ‘727 patent;
Claim 7 of the instant application corresponds to claim 20 of the ‘727 patent;
Claim 9 of the instant application corresponds to claim 8 of the ‘727 patent;
Claim 10 of the instant application corresponds to claim 9 of the ‘727 patent;
Claim 11 of the instant application corresponds to claim 10 of the ‘727 patent;
Claim 12 of the instant application corresponds to claim 11 of the ‘727 patent;
Claim 13 of the instant application corresponds to claim 12 of the ‘727 patent;
Claim 14 of the instant application corresponds to claim 13 of the ‘727 patent;
Claim 15 of the instant application corresponds to claim 13 of the ‘727 patent;
Claim 16 of the instant application corresponds to claims 1 and 2 of the ‘727 patent;
Claim 17 of the instant application corresponds to claim 3 of the ‘727 patent;
Claim 18 of the instant application corresponds to claim 5 of the ‘727 patent;
Claim 19 of the instant application corresponds to claim 4 of the ‘727 patent; and
Claim 20 of the instant application corresponds to claim 6 of the ‘727 patent.
Claims 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7 of U.S. Patent No. 11,755,727. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are recited by the earlier filed patented ‘727 claim in that the claim of the ‘727 patent contain the limitations of the instant application.
The ‘727 patented claim is directed towards a computing device for receiving authorized updates to health configuration information, receiving an authorized update to response configuration, and receiving an authorized update to a threat data store. It would have been obvious to a person of ordinary skill in the art at the time of the effective filing date of the claimed invention to substitute one statutory class of invention for another which would not affect the outcome of the claimed invention. The instant claim is directed towards a non-transitory computer readable media storing computer readable instructions executed by a processor causing a computing device to receive authorized updates to health configuration information, receive an authorized update to response configuration, and receive an authorized update to a threat data store, which is carried out by the computing device of the ‘727 patent. Claim 8 of the instant application therefore are not patentably distinct from the earlier filed ‘727 patented claim, and as such, is unpatentable for obvious-type double patenting.
Claim 8 of the instant application corresponds to claim 7 of the ‘727 patent.
Claims 9-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-20 of U.S. Patent No. 12,130,913. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by the earlier filed patented ‘913 claims in that the claims of the ‘913 patent contain all of the limitations of the instant application. Claims 9-20 of the instant application therefore are not patentable from the earlier filed ‘913 patented claims, and as such are unpatentable for obvious-type double patenting.
Claim 9 of the instant application corresponds to claim 9 of the ‘913 patent;
Claim 10 of the instant application corresponds to claim 10 of the ‘913 patent;
Claim 11 of the instant application corresponds to claim 11 of the ‘913 patent;
Claim 12 of the instant application corresponds to claim 12 of the ‘913 patent;
Claim 13 of the instant application corresponds to claim 13 of the ‘913 patent;
Claim 14 of the instant application corresponds to claim 14 of the ‘913 patent;
Claim 15 of the instant application corresponds to claim 15 of the ‘913 patent;
Claim 16 of the instant application corresponds to claim 16 of the ‘913 patent;
Claim 17 of the instant application corresponds to claim 17 of the ‘913 patent;
Claim 18 of the instant application corresponds to claim 18 of the ‘913 patent;
Claim 19 of the instant application corresponds to claim 19 of the ‘913 patent; and
Claim 20 of the instant application corresponds to claim 20 of the ‘913 patent.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,130,913. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are recited by the earlier filed patented ‘913 claims in that the claims of the ‘913 patent contain the limitations of the instant application.
The ‘913 patented claims are directed towards a system for receiving health check configuration, monitoring for event triggers, and initiating response measures. It would have been obvious to a person of ordinary skill in the art at the time of the effective filing date of the claimed invention to substitute one statutory class of invention for another which would not affect the outcome of the claimed invention. The instant is directed towards a non-transitory computer readable media storing computer readable instructions executed by a processor causing a computing device to additionally receive health check configuration, monitoring for event triggers, and initiating response measures, which is carried out by the system of the ‘913 patent. Claims 1-8 of the instant application therefore are not patentably distinct from the earlier filed ‘913 patented claims, and as such, is unpatentable for obvious-type double patenting.
Claim 1 of the instant application corresponds to claim 1 of the ‘913 patent;
Claim 2 of the instant application corresponds to claim 2 of the ‘913 patent;
Claim 3 of the instant application corresponds to claim 3 of the ‘913 patent;
Claim 4 of the instant application corresponds to claim 4 of the ‘913 patent;
Claim 5 of the instant application corresponds to claim 5 of the ‘913 patent;
Claim 6 of the instant application corresponds to claim 6 of the ‘913 patent;
Claim 7 of the instant application corresponds to claim 7 of the ‘913 patent; and
Claim 8 of the instant application corresponds to claim 8 of the ‘913 patent.
Allowable Subject Matter
Claims 1-20 would be allowable upon the submissions of terminal disclaimers to overcome the obvious-type double patenting rejections.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art teachings of Eliseev et al, U.S. Patent 9,230,106 are relied upon for disclosing of monitor the computing device for an event trigger (an application makes calls to API functions of the OS to perform certain actions on a computing device, col. 4, lines 23-28 and col. 5, lines 24-33); cause execution, based on identifying the event trigger and based on a health check configuration (monitors all levels of the architecture of the OS and environment for certain conditions of malicious activity) stored in the secure memory, of a health check of the computing device to identify one or more anomalies, wherein the one or more anomalies are associated with at least one security flaw at the computing device (col. 4, lines 35-41 and col. 5, lines 34-44); determine, based on identifying an anomaly of the one or more anomalies and based on a response configuration stored in the secure memory, one or more response measures (remedial actions dictate how to respond to detected harmful behavior, col. 5, lines 53-64 and col. 6, lines 9-13), wherein the anomaly is identified in the health check (col. 4, lines 35-41 and col. 5, lines 34-44); and cause execution, based on the determining the one or more response measures, of the one or more response measures at the computing device (col. 5, lines 53-64).
As per claim 1, it was not found to be taught in the prior art of receiving a health check configuration; monitor the computing device for an event trigger; initiate a health check of the computing device to identify one or more anomalies that are associated with a security flaw at the computing device; determine one or more response measures based on an identified anomaly and a response configuration; and initiate the one or more response measures at the computing device that include a replacement passcode with one or more characters that are inaccessible at an input of the computing device.
As per claim 9, it was not found to be taught in the prior art of executing a health check configuration of a computing device received from an update server; identifying an indication of one or more anomalies associated with a security flaw at the computing device; determining one or more response measures corresponding to an identified anomaly; and generating a replacement passcode data including one or more characters that are inaccessible at an input of the computing device based on an identified response measures.
As per claim 16, it was not found to be taught in the prior art of executing a health check of a computing device based on a health check configuration received from an update server; determine a response measure based on an anomaly identified during the health check and based on a response configuration stored in secure memory; and replace passcode data comprising one or more characters that are inaccessible at an input at the computing device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zhang et al, CN 118694570 A is relied upon for disclosing of an iterative program to cooperatively select the password string, which can make the password used by the user for security authentication to be different each time, avoiding being intercepted in the transmission process, causing the malicious user to connect with the server through the password, causing the server data leakage, after the connection is successful, the connection password is changed into a random character string, which can prevent the malicious user from storing the connection password for this time for re-use, causing data leakage, see machine translation.
Lee, KR 10-2021-0020464 is relied upon for disclosing of a configuration of a device for improving password recognition by using a change in a hidden symbol display pattern, see machine translation.
Kominar et al, US 2018/0248698 is relied upon for disclosing of prohibiting entered text from being passed to a target application by any suitable technique. In some examples, a display of the likely password in the non-password field is replaced with other characters (such as asterisks), is blurred or is obscured, see paragraph 0064.
Wang, US 2018/0189520 is relied upon for disclosing of a password string comprising multiple characters, and obscuring a portion of a hashed password to obtain a modified password comprising hiding one or more characters of the multiple characters, see claim 3.
Stuntebeck, US 2016/0094560 is relied upon for disclosing of configurations specifying settings for a client device that enable, disable and/or modify password features of the client device. Password features of the client device may be enabled, disabled and/or modified by the configuration: device-level password requirement, passcode timeout, alphanumeric password requirement, minimum device password complex characters, password history (e.g., maintenance of, prevention of using previous passwords, minimum changed characters for new passwords), see paragraph 0066.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER REVAK whose telephone number is (571)272-3794. The examiner can normally be reached 5:30am - 3:00pm.
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/CHRISTOPHER A REVAK/Primary Examiner, Art Unit 2407