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 .
Election/Restrictions
Applicant’s election with traverse of Invention V (claims 1, 7, and 12) in the reply filed on 2026-02-17 is acknowledged. The traversal is on the grounds that all the identified inventions are directed to techniques for detecting and preventing malicious or deceptive electronic communications and that the Examiner has allegedly not identified any group that would require searching a meaningfully different classification area or employing materially different search queries (i.e. no search burden). This is not found persuasive.
Although the restricted claims in the various inventive groups may share significant similarity or overlap (e.g. a same primary thrust of direction towards detecting and preventing malicious or deceptive electronic communications), the restriction requirement does not consider the shared subject matter (aside from determining whether the inventions are completely independent or related but distinct). Rather, the restriction requirement for related but distinct inventions analyzes whether the differences between the respective inventive groups cause them to be patentably distinct – differences that applicant acknowledges (“the claimed technique involves comparing links against known malware databases, analyzing attachment content, applying NLP to categorize message type, or detecting AI-generated text”, Remarks p. 2). More particularly, if, among any set of identified inventions, each identified invention has at least one distinct element that is not an “obvious variation” of the other inventions (regardless of how much overlap the inventions share), then the inventions are mutually-exclusive and hence demonstrate two-way distinction; (“Related inventions in the same statutory class are considered mutually exclusive, or not overlapping in scope, if a first invention would not infringe a second invention, and the second invention would not infringe the first invention”, MPEP § 806.05). The Examiner further notes that Applicant has merely asserted similarity between the restricted claims, but did not amend the claims to similar scope or make a clear admission on the record that the inventions are not patentably distinct because they are all “obvious variations”, which would have been sufficient to successfully traverse the restriction requirement; See MPEP § 1504.05(III).
Applicant further alleges a lack of search burden because of the similarity amongst the restricted claimed groups and asserts that a “single prior art reference disclosing an integrated communication security system would foreseeably be relevant to multiple groups simultaneously”; however, the Examiner respectfully submits that the patentably distinct variations in the non-overlapping subject matter of the inventions would require employing different search queries, applying potentially different prior art, and analyzing the claims separately for different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112. Further, the Examiner again notes that applicant has focused on the similarity amongst the claimed groups but has not addressed the burden that would arise from searching and examining the distinctions that exist amongst each of the restricted groups. Thus, the Examiner respectfully submits that a search burden exists and that the restriction is proper.
The Examiner additionally notes that a search and examination burden exists if the prior art applicable to one invention would not likely be applicable to another invention; however, the Examiner will readily concede this point and withdraw the restriction requirement for any non-elected subject matter that Applicant demonstrates or concedes to be anticipated or rendered obvious by the cited prior art of record.
The Examiner does note, however, that the presence of the linking claims does mean that the restriction requirement will be withdrawn with respect to all dependent claims of an allowed claim, though this is not germane to the propriety of the restriction requirement itself. Further, the Examiner notes that applicant is welcome to amend the independent claims during prosecution to include non-elected subject matter, as the restriction requirement is formed on the basis of the burden of determining patentability on the subcombinations separately. Thus, the Examiner respectfully submits that a search burden exists and that the restriction is proper.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) is acknowledged.
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, 7, and 12 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 generating a scam risk score based on an aggregation of deterministic checks and probabilistic analyses on attributes of a communication, 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 generating a scam risk score based on an aggregation of deterministic checks and probabilistic analyses on attributes of a communication, 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: generating a scam risk score based on an aggregation of deterministic checks and probabilistic analyses on attributes of a communication 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 generating a scam risk score based on an aggregation of deterministic checks and probabilistic analyses on attributes of a communication 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 and memory) that serves to perform generic computer functions (e.g. receive a communication, parse the communication, perform deterministic checks, perform probabilistic analyses, aggregate the results, generate a scam risk score and recommendations, and present the scam risk score and the recommendations) that are well-understood, routine, and conventional activities previously known to the pertinent industry. The claimed communication, communication information, attributes, machine learning models, known legitimate communications, known fraudulent communications, results, scam risk score, recommendations 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 generating a scam risk score based on an aggregation of deterministic checks and probabilistic analyses on attributes of a communication, 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, “receiving a communication” is merely receiving or transmitting data over a network, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). Further, “parsing the received communication information”, “performing a series of deterministic checks”, “performing a series of probabilistic analyses”, “aggregating the results”, and “generating recommendations” are merely forms 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.”).
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 affect 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 § 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, 7, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Leddy et al. (US Pre-Grant Publication No. 20200067861-A1, hereinafter “Leddy”).
With respect to independent claim 1, Leddy discloses a system for scam detection and prevention, the system comprising:
one or more processors {para. 0054: “a processor”}.
a memory storing instructions that, when executed by the one or more processors, cause the system to perform operations comprising {para. 0054: “instructions stored on and/or provided by a memory coupled to the processor”}:
receiving a communication comprising communication information {para. 0062: “Messages 162 are obtained”}.
parsing the received communication information to extract attributes of the communication information {para. 0063: “parsing incoming messages and extracting components/features/elements (e.g., phrases, URLs, IP addresses, etc.) from the message”}.
performing a series of deterministic checks on the attributes {paras. 0065-0114: “filter array includes multiple filters, such as URL filter 166 and phrase filter 168”, for example “Is an email internal (i.e., sent from a mail server associated with the same enterprise as the recipient)?”}.
performing a series of probabilistic analyses on the attributes {paras. 0065-0114: “a rule comprises one or more filters along with a threshold or other decision selection method” that can create “a distinct score”}, wherein the probabilistic analyses comprise using machine learning models trained on known legitimate communications and known fraudulent communications {paras. 1150-1158: “Supervised learning based on curated examples”, wherein “human reviewers can identify whether messages are scam or not scam”}.
aggregating the results of the deterministic checks and probabilistic analyses to generate a scam risk score {paras. 0065-0114 & 0329: “add a score for” the result of each analysis portion, such that “scores are generated based on the filtering” and the “scores can be used to indicate the likelihood that the message is scam”}.
generating recommendations specific based on the generated scam risk score, deterministic checks, and probabilistic analyses {paras. 0287-0291 & 1869-1888: “platform 1600 would classify message 2300 … based on the two likelihood scores” and “an action determination engine 2624 that generates one or more recommendations of what to do with messages”}.
presenting the scam risk score and the recommendations to a user {paras. 0287-0291 & 1869-1888: providing the alert that “The email you sent us appears to be a scam. Please be careful to *not* respond to scammers, and do not click on links in their emails”}.
With respect to dependent claim 7, Leddy discloses wherein the deterministic checks comprise opening and reading content of attachments from the communication to detect embedded scam messages {para. 0090: “scan the contents of the attachment and add a score related to the result”}.
With respect to claim 12, a corresponding reasoning as given earlier in this section with respect to claim 7 applies, mutatis mutandis, to the subject matter of claim 12; therefore, claim 12 is rejected, for similar reasons, under the grounds as set forth for claim 7.
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.
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/Kevin Bechtel/
Primary Examiner, Art Unit 2491