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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 10,778,633 in view of US 2016/0156595 (Wu) and US 2015/0365232 (Yang).
With regard to claims 1, 10, and 16, claim 1 of ‘633 discloses the instant claim. However, claim 1 of ‘633 fails to teach, but Wu teaches: applying, using a homomorphic encryption key, homomorphic encryption to each individual chunk in the set of chunks to generate a set of encrypted message chunks; transmitting the set of encrypted message chunks to an aggregation server; receiving encrypted message information from the aggregation server; decrypting the received encrypted message information to obtain message information (Wu: Figure 4 and Abstract. Wu teaches the use of homomorphic encryption to encrypt data to be sent to a server, the server performing functions on the data, and then sending encrypted results back to the client.).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to encrypt the data, in accordance with Wu, that is sent and received in ‘833 to ensure that privacy and security of the data is preserved and limited to only the intended recipient (Wu: Abstract).
Further, claim 1 of ‘633 fails to teach, but Yang teaches sending the homomorphic encryption key to the server (Yang: Paragraph [0182]. It was very well-known in the art to share encryption keys between a source and a destination, such as from the client to a server. Further, it is noted that the instant claim does not provide any requirement that the key is actually sent in the same communication as the message chunks (where if it did, this would not be supported by the instant specification, which only generically provides for the receipt of a key from a client as an alternative to the client receiving the key from the server (Specification: Paragraph [0029]).).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to have the client send the encryption key to the server to enable the server to properly access the encrypted data and properly encrypt a response in accordance with the shared key.
With regard to claims 2, 11, and 17, claim 1 of ‘633 fails to teach, but knowledge possessed by one of ordinary skill in the art at the time of filing teaches that the that the message is an e-mail (E-mail was very well-known in the art at the time of filing). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to have the electronic message be an e-mail to provide for the spam detection functions for a very commonly used type of communication that had a problem with spam.
With regard to claims 3, 12, and 18, claim 2 of ‘633 teaches the subject matter of the instant claim.
With regard to claims 4, 13, and 19, claim 3 of ‘633 teaches the subject matter of the instant claim.
With regard to claims 5, 14, and 20 claim 4 of ‘633 substantially teaches the subject matter of the instant claim.
With regard to claim 6, claim 7 substantially teaches the subject matter of the instant claim.
With regard to claim 7, the instant claim is addressed for similar reasons as claim 2, where an e-mail would be received from a server.
Double Patenting
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6, 8-11, 13-17, and 19-20 of U.S. Patent No. 11,290,411. Although the claims at issue are not identical, they are not patentably distinct from each other because they are within the scope of claims 1-7, and are thus deemed to be an obvious variation.
With regard to claims 2, 11, and 17, claim 1 of ‘411 fails to teach, but knowledge possessed by one of ordinary skill in the art at the time of filing teaches that the that the message is an e-mail (E-mail was very well-known in the art at the time of filing). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to have the electronic message be an e-mail to provide for the spam detection functions for a very commonly used type of communication that had a problem with spam.
With regard to claim 7, the instant claim is addressed for similar reasons as claim 2, where an e-mail would be received from a server.
Double Patenting
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6, 8-11, 13-17, and 19-20 of U.S. Patent No. 11,722,450. Although the claims at issue are not identical, they are not patentably distinct from each other because they are within the scope of claims 1-7, and are thus deemed to be an obvious variation.
With regard to claims 2, 11, and 17, claim 1 of ‘450 fails to teach, but knowledge possessed by one of ordinary skill in the art at the time of filing teaches that the that the message is an e-mail (E-mail was very well-known in the art at the time of filing). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to have the electronic message be an e-mail to provide for the spam detection functions for a very commonly used type of communication that had a problem with spam.
With regard to claim 7, the instant claim is addressed for similar reasons as claim 2, where an e-mail would be received from a server.
Double Patenting
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,120,083. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are within the scope of the claims of ‘083, and are thus deemed to be an obvious variation. For instance, claim 1 of ‘083 includes all of the details of claim 1 of the instant application, but also recites details of the receipt and use of a frequency vector. As such, claim 1 of ‘083 fully anticipates claim 1 of the instant application, while including additional details.
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 16-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With regard to claims 16-20, the claim limitation “processing system” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Specifically, the term “processing system” only appears in paragraphs [0009] and [0010] with no corresponding structure associated with the processing system. As a note, “processing system” is not disclosed as being the same as the processor in other portions of the instant specification, and thus there is no presumption that the terms are linked. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0080860 (Daniell) in view of US 2014/0201246 (Kim), US 2016/0156595 (Wu), and US 2015/0365232 (Yang).
With regard to claim 1, Daniell discloses a computer-implemented method performed by a client device, the method comprising:
transforming a message into a set of chunks (Daniell: Figure 4, 410-425, Paragraph [0019], and Abstract. Different portions of an e-mail are tokenized, where the tokens would be equivalent to chunks, as they represent portions of the e-mail.);
determining an action for processing the message based at least in part on the message information (Daniell: Figure 4 and Paragraph [0031]. The tokens (message information in isolation of the intervening steps) are used to determine an action.).
Daniell fails to disclose, but Klein teaches transmitting the set of message chunks to an aggregation server; receiving message information from the aggregation server; extracting the received message information to obtain message information; and that determining an action is based at least in part on the message information received from the server (Kim: Paragraph [0063]. The client can implement a local database, where when detecting spam, the client can perform a local check. If the client does not have the information locally stored, it can then query the server. When combined with Daniell, this would allow for a determining by both the client and the server contemplated by Daniell (Daniell: Paragraph [0067]).).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to have provide message chunks to an aggregation server, receive message information (e.g. a determination, in accordance with Kim), and determine the action based on this message information to reduce the processing requirements of a server that is performing the functions by allowing some local determinations by the client while still leveraging aggregated knowledge of the server for cases where the client does not have enough information without requiring complete mirroring of the database (thus reducing network resources and client storage needed to implement the system, while still leveraging some benefits of local processing.).
Daniell fails to teach, but Wu teaches: applying, using a homomorphic encryption key, homomorphic encryption to each individual chunk in the set of chunks to generate a set of encrypted message chunks; transmitting the set of encrypted message chunks to an aggregation server; receiving encrypted message information from the aggregation server; decrypting the received encrypted message information to obtain message information (Wu: Figure 4 and Abstract. Wu teaches the use of homomorphic encryption to encrypt data to be sent to a server, the server performing functions on the data, and then sending encrypted results back to the client.).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to encrypt the data, in accordance with Wu, that is sent and received in Daniell in view of Kim to ensure that privacy and security of the data is preserved and limited to only the intended recipient (Wu: Abstract).
Daniell fails to teach, but Yang teaches sending the homomorphic encryption key to the server (Yang: Paragraph [0182]. It was very well-known in the art to share encryption keys between a source and a destination, such as from the client to a server. Further, it is noted that the instant claim does not provide any requirement that the key is actually sent in the same communication as the message chunks (where if it did, this would not be supported by the instant specification, which only generically provides for the receipt of a key from a client as an alternative to the client receiving the key from the server (Paragraph [0029]).).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to have the client send the encryption key to the server to enable the server to properly access the encrypted data and properly encrypt a response in accordance with the shared key.
With regard to claim 2, Daniell teaches that the message is an email (Daniell: Abstract).
With regard to claim 3, Daniell in view of Kim and Wu teaches determining whether a sender of the email is known, wherein determining the action for processing the email is based at least in part on the sender not being known (Daniell: Paragraphs [0031] and [0041]. In Daniell, unknown tokens would result in different processes taking place, such as new determinations of probabilities or manual action by a user.).
With regard to claim 4, Daniell fails to teach expressly, but knowledge possessed by one of ordinary skill in the art at the time of filing teaches that the sender is known when an address of the sender is found in a contacts database on the client device or the address of the sender is found in a sender or receiver field of a message in a message database on the client device (More specifically, Official Notice is taken that the use of a contact list in SPAM detection, such as determining that a contact in the list should be trusted, was well-known to one of ordinary skill in the art at the time of filing.). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to utilize a contact list such that a message from a contact is less likely (or impossible) to be classified as SPAM to reduce the likelihood of false positives from trusted contacts.
With regard to claim 5, Daniell fails to disclose expressly, but knowledge possessed by one of ordinary skill in the art at the time of filing teaches decrypting the message prior to applying the homomorphic encryption to each individual chunk in the set of chunks of the message (More specifically, Official Notice is taken that the use of encrypted e-mails, and the need to decrypt such e-mails prior to viewing or processing, was well-known to one of ordinary skill in the art at the time of filing.). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to decrypt an [encrypted] e-mail to leverage the benefits of encryption for the e-mail (e.g. preventing unauthorized users from viewing the content of the e-mail) while still allowing the e-mail to be viewed and/or processed.
With regard to claim 6, Daniell fails to teach expressly, but Kim teaches receiving the message information from the aggregation server includes receiving an encrypted message score from the aggregation server and decrypting the encrypted message score to obtain a message score (Kim: Paragraph [0063] and Daniell: Abstract. A spam probability (score) can be determined, where the probability is then used to determine the action. In Kim, the results of the determination would be sent to the client from the server, where there would be two logical options from the combination of Daniell and Kim: receiving the probability or receiving the binary result of SPAM or not-SPAM. With such a finite list of options, one of ordinary skill in the art would have pursued each and every option within his/her technical grasp.). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to receive the spam probability in the combination of Daniell with Kim to allow for the treatment of the message based on the probability to be locally determined by the client, thus reducing the burden on the server with regard to determining a final disposition for each and every client while providing more control to the client over how the e-mail is treated, such as allowing a user to configure thresholds, review the probability of spam, etc.
With regard to claim 7 Daniell teaches that the message is received from a message server (Daniell: Figures 1 and 4. When the e-mail is received, it is received from some message server, such as an e-mail server.).
With regard to claims 8-9, the instant claims are within the scope of claim 6, and are rejected for similar reasons.
With regard to claims 10-20, the instant claims are similar to one or more of claims 1-9, and are rejected for similar reasons.
Conclusion
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SCOTT B. CHRISTENSEN
Examiner
Art Unit 2444
/SCOTT B CHRISTENSEN/Primary Examiner, Art Unit 2444