DETAILED ACTION
In response to the communication filed on 10/15/2024 and 03/24/2025, responded in following.
On this Office Action, claims 21-40, consisting of independent claims 21, 28, and 35.
Claims 21-40 are pending.
Claims 28 and 40 are objected to because of informalities.
Claims 21-40 are rejected under the 35 USC § 112.
Claims 28-34 are rejected under 35 USC § 101.
Claims 21-40 are rejected under the 35 USC § 103.
Claims 21-40 are Double Patent rejected.
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 03/24/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings were received on 10/15/2024. These drawings are accepted.
Priority
The benefit of 17/553,160 filed on 12/16/2021 has been acknowledged.
Claim Objections
Claims 28 and 40 are objected to because of the following informalities:
Claims 28 recites “re-tokenizing, by using the tokenizer, the sensitive data attribute using the token.” It should be “re-tokenize, by using the tokenizer, the sensitive data attribute using the token.”
Claim 40 recites “perform the final document composition process includes: generate an electronic document; and send the electronic document to an individual.” It should be “perform the final document composition process includes: generating an electronic document; and sending the electronic document to an individual.”
Appropriate correction is required.
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 21-40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
I. The independent claims 21, 28, and 35 recite “de-tokenizing, by a de-tokenizer, the sensitive data attribute,” and this limitation is unclear because de-tokenization logically applies to a token that was previously generated from the sensitive data attribute. As written, it is ambiguous whether the token is being de-tokenized to recover the sensitive data attribute, or whether the sensitive data itself is being transformed. Since the object of the de-tokenizing operation is unclear, the scope of the claimed transformation cannot be determined with reasonable certainty.
The respective dependent claims inherit the deficiencies of the claim from which they depend and are rejected for the same reasons.
II. Claim 35 is rejected under 35 U.S.C. 112(b) as indefinite because a non-transitory computer-readable medium cannot comprise a processing device. The claim improperly combines statutory classes.
The dependent claims 36-40 inherit the deficiencies of the claim from which they depend and are rejected for the same reasons.
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 28-34 are rejected under 35 USC § 101 because the claims are directed to a system comprising software only. The claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because independent claim 28 recites various engines, tokenizer and de-tokenizer, which appear to be software component (see paragraphs [0019], [0027],[0031] and [0033]). Upon review of the specification, there is no disclosure indicating that these components are implemented as hardware. Accordingly, the claimed invention appears to be software per se, which is non-statutory.
The examiner suggests amending the claims to include hardware components, such as a memory or a hardware processor, in order to overcome this rejection.
Dependent claims 29-34 inherit the deficiencies of the claim from which they depend and are rejected for the same reasons.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 21, 24-26, 28, 31-33, 35 and 38-40 are rejected under 35 U.S.C. 103 as being unpatentable over Lindsay (US 20220067207 A1) in view of Koduru et al. (US 20210256149 A1, hereinafter “Koduru”).
Regarding independent claim 21, Lindsay discloses a method for protecting sensitive data, the method comprising:
Examiner’s interpretation:
Lindsay states that, in paragraph [0226], “the functions of the invention can be achieved by any means as is known in the art. For example, distributed, or networked systems, components, and circuits can be used.” In view of this disclosure, the Examiner interprets Lindsay as teaching that each recited limitation may be performed by corresponding distributed or network components. Accordingly, each limitation discussed below is considered to be performed by the appropriate components as claimed.
receiving, by a data loading and tokenization engine, a data file including a sensitive data attribute (Lindsay: [0152] a method 800 for securing data can include receiving, by a tokenization system from a first client computing system, a request for data anonymization, the request referencing a single field of data, file, record, or document (“a data file including a sensitive data attribute”) with unstructured or semi-structured content that contains values of interest for the data anonymization (801));
generating, by a tokenizer, a token to anonymize and visually represent the sensitive data attribute (Lindsay: [0152] The tokenization system can perform a tokenization operation on the input single field of data, file, record, or document (803));
replacing, by the tokenizer, the sensitive data attribute with the token in a tokenized data file (Lindsay: [0152] the tokenization operation produces an anonymized version of the single field of data, file, record, or document with self-describing tokens, each anonymizing and corresponding to one or more of the values of interest in the unstructured or semi-structured content);
determining, by a composition and scripting engine, whether the sensitive data attribute is required for execution of a data service (Lindsay: [0152] the tokenization operation can include generating a self-describing token for replacing a value of interest in the unstructured or semi-structured content. In some embodiments, the self-describing token can have a preconfigured pattern, an indication of a protection strategy, and a token value);
in response to determining that the sensitive data attribute is required for execution of the data service:
de-tokenizing, by a de-tokenizer, the sensitive data attribute (Lindsay: [0153] In response, the tokenization system can perform a reveal operation on the anonymized version of the single field of data, file, record, or document (811));
using, by the composition and scripting engine, the sensitive data attribute in executing the data service (Lindsay: [0152] the tokenization operation can include generating a self-describing token for replacing a value of interest in the unstructured or semi-structured content. In some embodiments, the self-describing token can have a preconfigured pattern, an indication of a protection strategy, and a token value); and
performing, by a composition and finalization engine, a final document composition process including the sensitive data attribute (Lindsay: [0152] the tokenization system can return the anonymized version of the single field of data, file, record, or document to the first client computing system (807)).
However, Lindsay does not disclose, Koduru, in a same field of endeavor, teaches the method, re-tokenizing, by the tokenizer, the sensitive data attribute using the token, thereby resulting in a re-tokenized sensitive data attribute (Koduru: [0090] To implement a re-tokenization process, the re-tokenization service controller 1206 may generate tokens itself for the decrypted sensitive values in the de-tokenized file 1130. Or the re-tokenization service controller 1206 may instruct a token generator 1212 to generate tokens. … After receiving the tokens, the re-tokenization service controller 1206 may generate a re-tokenized data file 1230 with the same format as the de-tokenized file 1130, by replacing the decrypted sensitive values with the re-tokenized values (“re-tokenizing, by the tokenizer, the sensitive data attribute using the token”)).
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to have modified the tokenization system disclosed by Lindsay with the teachings of Koduru to re-tokenize, by the tokenizer, the sensitive data attribute using the token, thereby resulting in a re-tokenized sensitive data attribute. One of ordinary skill in the art would have been motivated to make this modification because it may accelerate inference speed and improves model throughput for LLMs and also enhances security through data masking and improves NLP precision by refining how models understand language.
Regarding claim 24, the combination of Lindsay and Koduru teaches all elements of the current invention as stated above. Lindsay discloses the method of claim 21, wherein the sensitive data attribute includes unstructured data (Lindsay: [0152] the tokenization operation can include generating a self-describing token for replacing a value of interest in the unstructured or semi-structured content).
Regarding claim 25, the combination of Lindsay and Koduru teaches all elements of the current invention as stated above. Lindsay discloses the method of claim 24, wherein the token comprises a same number of characters as the sensitive data attribute (Lindsay: [0152] the tokenization operation produces an anonymized version of the single field of data, file, record, or document with self-describing tokens, each anonymizing and corresponding to one or more of the values of interest in the unstructured or semi-structured content (“a same number of characters”, also See para. 0088 regarding “a piece of text in whitespace”)).
Regarding claim 26, the combination of Lindsay and Koduru teaches all elements of the current invention as stated above. Lindsay further discloses the method of claim 21, wherein performing the final document composition process includes:
generating an electronic document; and sending the electronic document to an individual (Lindsay: [0153] The reveal operation produces a detokenized version of the anonymized version of the single field of data, file, record, or document (“generate an electronic document”). The tokenization system can then return or otherwise communicate the detokenized version of the anonymized version of the single field of data, file, record, or document to the first client computing system or to the second client computing system (813) (“send the electronic document”)).
Regarding independent claims 28 and 35, they are a system and a non-transitory readable storage medium having a plurality of computer executable instructions that respectively corresponds to claim 21. Therefore, the claims are rejected for at least the same reasons as the system of claim 21.
Regarding claims 31 and 38, they are a system and a non-transitory readable storage medium having a plurality of computer executable instructions that respectively corresponds to claim 24. Therefore, the claims are rejected for at least the same reasons as the system of claim 24.
Regarding claims 32 and 39, they are a system and a non-transitory readable storage medium having a plurality of computer executable instructions that respectively corresponds to claim 25. Therefore, the claims are rejected for at least the same reasons as the system of claim 25.
Regarding claims 33 and 40, they are a system and a non-transitory readable storage medium having a plurality of computer executable instructions that respectively corresponds to claim 26. Therefore, the claims are rejected for at least the same reasons as the system of claim 26.
Claims 22, 29 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Lindsay (US 20220067207 A1) in view of Koduru et al. (US 20210256149 A1, hereinafter “Koduru”) as applied to claims above, and further in view of SCHENK et al. (US 20170093812 A1, hereinafter “Schenk”).
Regarding claim 22, the combination of Lindsay and Koduru teaches all elements of the current invention as stated above. However, the combination does not disclose, Schenk, in a same filed of endeavor, teaches the method of claim 21, further comprising storing the sensitive data attribute in a digital vault, and mapping the sensitive data attribute to:
the data file; an attribute field in the data file that includes the sensitive data attribute; and the token (Schenk: [0036] data vaulting (“stored in a digital vault”) and tokenization server 36 has the ability to generate token values (“token”) using a named pattern such as payment card (e.g. credit or debit card, loyalty card, or the like (“the sensitive data attribute”)), or by using a pattern or string representing the format that the token should follow).
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to have modified the tokenization system disclosed by Lindsay with the teachings of Schenk to include the sensitive data attribute is stored in a digital vault and to includes a mapping to the data file, an attribute field in the data file that includes the sensitive data attribute and the token. One of ordinary skill in the art would have been motivated to make this modification because the data vaulting and tokenization server runs vault processing software, which provides data tokenization and data vaulting capability (para. 0245). Thus, it allows auditing such as a history of all changes and load times and record sources.
Regarding claims 29 and 36, they are a system and a non-transitory readable storage medium having a plurality of computer executable instructions that respectively corresponds to claim 22. Therefore, the claims are rejected for at least the same reasons as the system of claim 22.
Claims 23, 30 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Lindsay (US 20220067207 A1) in view of Koduru et al. (US 20210256149 A1, hereinafter “Koduru”) in view of SCHENK et al. (US 20170093812 A1, hereinafter “Schenk”) as applied to claims above, and further in view of in view of ARDHANARI et al. (US 20210248268 A1, hereinafter “Ardhanari”).
Regarding claim 23, the combination of Lindsay, Koduru and Schenk teaches all elements of the current invention as stated above. However, the combination does not disclose, Ardhanari, in a same filed of endeavor, teaches the method of claim 22, wherein the token comprises:
a document identifier corresponding to the data file; and an attribute field identifier corresponding to the attribute field (Ardhanari: [0245] In some embodiments, the inverted list 1731-1739 may identify a document identifier corresponding to the document in which the token occurs, an offset within the document to the occurrence of the token, or the like (“document identifier corresponding to the data file”). In some embodiments, each entry in the inverted list 1731-1739 may include a plurality of location identifiers for each occurrence of each token (“attribute field identifier corresponding to the attribute field”)).
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to have modified the tokenization system disclosed by Lindsay with the teachings of Ardhanari to include a document identifier corresponding to the data file; and an attribute field identifier corresponding to the attribute field. One of ordinary skill in the art would have been motivated to make this modification because the plurality of identifiers may be stored in an appropriate data structure (para. 0245). Thus, the plurality of identifiers in an appropriate data structure are used to distinguish fields from each other.
Regarding claims 30 and 37, they are a system and a non-transitory readable storage medium having a plurality of computer executable instructions that respectively corresponds to claim 23. Therefore, the claims are rejected for at least the same reasons as the system of claim 23.
Claims 27 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Lindsay (US 20220067207 A1) in view of Koduru et al. (US 20210256149 A1, hereinafter “Koduru”) as applied to claims above, and further in view of in view of Cordery et al. (US 6157919 A, hereinafter “Cordery”).
Regarding claim 27, the combination of Lindsay and Koduru teaches all elements of the current invention as stated above. However, the combination does not teach, In a same field of endeavor, Cordery discloses the method of claim 21, wherein performing the final document composition process includes:
printing a document (Cordery: Col. 12 LN.03-04, PC meter system 12 can print an open system indicia on a letter itself);
inserting the document in an envelope (Cordery: Clm. 23, inserting the document into an envelope such that the indicia is visible through a windowed portion of the envelope); and
mailing the document to an individual (Cordery: Col. 12 LN.16-19,The present invention is also suitable for printing indicia on a one piece mailer. The foregoing method of mailing a letter with indicia printed directly on the letter).
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to have modified the tokenization system disclosed by Lindsay with the teachings of Cordery to print the document; insert the printed document in an envelope and mail the printed document to the individual. One of ordinary skill in the art would have been motivated to make this modification because it has been a challenge to insert a letter to the corresponding envelope when the letters and envelopes are printed separately. Thus the present invention simplifies and eliminates errors in the mail preparation process (Col. 12 LN.22-26).
Regarding claim 34, they are a system that corresponds to claim 27. Therefore, the claims are rejected for at least the same reasons as the system of claim 27.
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 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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-8 of U.S. Patent No. US 12147573 B2 (hereinafter “Pat-573”).
As per independent claims 21, 28, and 35, Pat-573’s claim 1 teaches all elements of the independent claims of the instant application. Although the claims are not identical, they are not patentably distinct from each other. For example, claim 1 of Pat-573 contains every elements of the claims 1 and 4 of the instant application (See the table below).
Pat-573
Instant Application 18/916416
1
receiving, by a data loading and tokenization engine, a data file including a sensitive data attribute;
identifying, by the data loading and tokenization engine, the sensitive data attribute;
generating, by a tokenizer, a token to anonymize and visually represent the sensitive data attribute;
replacing, by the tokenizer, the sensitive data attribute with the token in a tokenized data file;
performing, by a composition and scripting engine, a document composition process for composing a document using the tokenized data file, wherein the document composition process comprises:
determining, by the composition and scripting engine, whether the sensitive data attribute is required for execution of a data service in relation to the document composition process;
in response to the determination that the sensitive data attribute is required for execution of the data service;
de-tokenizing, by a de-tokenizer, the sensitive data attribute;
using, by the composition and scripting engine, the sensitive data attribute in executing the data service as part of the document composition process; and
re-tokenizing, by the tokenizer, the sensitive data attribute using the token, thereby resulting in a re-tokenized sensitive data attribute;
de-tokenizing, by the de-tokenizer, the re-tokenized sensitive data attribute; and
performing, by a composition and finalization engine, a final document process, wherein the document includes the sensitive data attribute.
21
receiving, by a data loading and tokenization engine, a data file including a sensitive data attribute;
generating, by a tokenizer, a token to anonymize and visually represent the sensitive data attribute;
replacing, by the tokenizer, the sensitive data attribute with the token in a tokenized data file;
determining, by a composition and scripting engine, whether the sensitive data attribute is required for execution of a data service;
in response to determining that the sensitive data attribute is required for execution of the data service:
de-tokenizing, by a de-tokenizer, the sensitive data attribute;
using, by the composition and scripting engine, the sensitive data attribute in executing the data service;
re-tokenizing, by the tokenizer, the sensitive data attribute using the token, thereby resulting in a re-tokenized sensitive data attribute; and
performing, by a composition and finalization engine, a final document composition process including the sensitive data attribute.
As per respective claims of the independent claims above, they are respectively identical to claims 3-8 of Pat-573.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Thayer et al. (US 20180285591 A1): [0020] If the obfuscator/de-obfuscator 108 determines that the document 104 is to be secured then the obfuscator/de-obfuscator 108 proceeds with various other procedures such as determining the sensitive values contained in the document 104, generating obfuscation values, generating keys, and substituting the sensitive values with the obfuscation values. The obfuscator/de-obfuscator 108 determines the sensitive values through various means. For example, the obfuscator/de-obfuscator 108 may use at least one obfuscation criterion which specifies which data fields contain the sensitive values. The obfuscation criterion can be defined by an administrator of the client 102 and/or through a configuration setting or file. For example, a social security number field and residential address field may be defined as data fields that contain sensitive values. With a structured document like the document 104, the obfuscator/de-obfuscator 108 can select an obfuscation criterion based on a data field (e.g., data field identifier) or a tag that identifies a type of data value (e.g., PII) or a location or position (e.g., positional identifier) of the data value within the document 104.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW SUH whose telephone number is (571)270-5524. The examiner can normally be reached 9:00 AM- 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Carl Colin can be reached at (571) 272-3862. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW SUH/Examiner, Art Unit 2493