DETAILED ACTION
This office action is in response to the application filed on 11/19/2024. Claim(s) 1-20 is/are pending and are examined.
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 .
Priority
This application claims priority as a CON of 18/627,890 04/05/2024 PAT 12189787, 18/627,890 is a CIP of 18/203,630 05/30/2023, 18/203,630 has PRO 63/457,671 04/06/2023, 18/203,630 has PRO 63/347,389 05/31/2022, however the claimed priority is deficient. A later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original non-provisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 18/203,630 05/30/2023, 18/203,630 has PRO 63/457,671 04/06/2023, 18/203,630 has PRO 63/347,389 05/31/2022, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claims 1-20 contain subject matter which is not supported in the above application and therefore, for the purposes of examination, these claims, each viewed as a whole, will not receive the priority claimed therein. Therefore claims 1-20 receive the claimed priority date of 4/5/2024.
Information Disclosure Statement PTO-1449
The Information Disclosure Statement(s) submitted by applicant on 11/19/2024, 7/28/2025, 10/6/2025, and 12/5/2025 has/have been considered. The submission is in compliance with the provisions of 37 CFR § 1.97. Form PTO-1449 signed and attached hereto.
Examiner’s Note – Distinct Subject Matter
The instant claims have an extensive patent family which has been thoroughly checked. Except where listed in the double patenting rejections below, the remaining family cases contain similar, yet patentably distinct subject matter.
Examiner’s Note – Allowable Subject Matter
Claims 3-7 and 13-17 overcome the prior art and would otherwise be allowable if incorporated into the base claims allowing with any intervening claims as well as overcoming double patenting rejections below.
Regarding the claims that overcome the prior art, Larhette (US 2024/0281472 A1) ¶ 33, and 98-99, teaches receiving unstructured data and using it to train a generative AI. The cited prior art does not teach the metadata tokenization processes of in claims 3-4 and 13-14. Blaikie (US 2024/0152645 A1) ¶ 44, 49 and 115 teaches smart contracts and a blockchain to store and execute the function portions of the data protection system. The cited prior art does not teach the steps updating the mapping and cross-validating cited in claims 5-7 and 15-17.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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:
http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-4, 8-9, 11-14, and 18-20 is/are rejected on the grounds of provisional nonstatutory double patenting as being unpatentable over claims 1, 3-4, 7-8, 11, 13-14, 17-18, and 20, of copending application 18/983,083. Although the claims at issue are not identical in form, they are not patentably distinct from each other. Independent claims 1, 11, and 20 are anticipated by copending claims 11, 1, and 20, respectively. Instant claims 2 and 12 are anticipated by copending claims 13 and 3, respectively. Instant claims 3 and 13 are anticipated by copending claims 14 and 4, respectively. Instant claims 4 and 14 are anticipated by copending claims 14 and 4, respectively. Instant claims 8 and 18 are anticipated by copending claims 17 and 7, respectively. Instant claims 9 and 19 are anticipated by copending claims 18 and 8, respectively.
Claim(s) 1-8, 11-18 and 20 is/are rejected on the grounds of provisional nonstatutory double patenting as being unpatentable over copending claims 1, 4-5, 8-11, 14-15, and 18-20 of copending application 18/983,101. Although the claims at issue are not identical in form, they are not patentably distinct from each other. Independent claims 1, 11, and 20 are anticipated by copending claims 1, 11, and 20, respectively. Instant claims 2 and 12 are anticipated by copending claims 4 and 14, respectively. Instant claims 3 and 13 are anticipated by copending claims 5 and 15, respectively. Instant claims 4 and 14 are anticipated by copending claims 5 and 15, respectively. Instant claims 5 and 15 are anticipated by copending claims 8 and 18, respectively.
Instant claims 6 and 16 are anticipated by copending claims 9 and 19, respectively.
Instant claims 7 and 17 are anticipated by copending claims 10 and 10, respectively.
Instant claims 8 and 18 are anticipated by copending claims 10 and 10, respectively.
Claim(s) 1-6, 8, 11-16, 18, and 20 is/are rejected on the grounds of provisional nonstatutory double patenting as being unpatentable over copending claims 1, 4-5, 8-11, 14-15, and 18-20 of copending application 18/983,070. Although the claims at issue are not identical in form, they are not patentably distinct from each other. Independent claims 1, 11, and 20 are anticipated by copending claims 1, 11, and 20, respectively. Instant claims 2 and 12 are anticipated by copending claims 4 and 14, respectively. Instant claims 3 and 13 are anticipated by copending claims 5 and 15, respectively. Instant claims 4 and 14 are anticipated by copending claims 5 and 15, respectively. Instant claims 5 and 15 are anticipated by copending claims 8 and 18, respectively.
Instant claims 6 and 16 are anticipated by copending claims 9 and 19, respectively.
Instant claims 8 and 18 are anticipated by copending claims 10 and 10, respectively.
Claim(s) 1-8, 11-18 and 20 is/are rejected on the grounds of provisional nonstatutory double patenting as being unpatentable over copending claims 1, 4-5, 8-11, 14-15, and 18-20 of copending application 18/983,125. Although the claims at issue are not identical in form, they are not patentably distinct from each other. Independent claims 1, 11, and 20 are anticipated by copending claims 1, 11, and 20, respectively. Instant claims 2 and 12 are anticipated by copending claims 4 and 14, respectively. Instant claims 3 and 13 are anticipated by copending claims 5 and 15, respectively. Instant claims 4 and 14 are anticipated by copending claims 5 and 15, respectively. Instant claims 5 and 15 are anticipated by copending claims 8 and 18, respectively.
Instant claims 6 and 16 are anticipated by copending claims 9 and 19, respectively.
Instant claims 7 and 17 are anticipated by copending claims 10 and 10, respectively.
Instant claims 8 and 18 are anticipated by copending claims 10 and 10, respectively.
Claim(s) 1-20 is/are rejected on the grounds of nonstatutory double patenting as being unpatentable over patented claims 1-2, 5-9, 13-14, and 16-20 of US Patent 12/189,787 formerly application 18/627,890. Although the claims at issue are not identical in form, they are not patentably distinct from each other. Independent claims 1, 11, and 20 are anticipated by patented claims 13, 1, and 20, respectively. Instant claims 2 and 12 are anticipated by patented claims 14 and 4, respectively. Instant claims 3 and 13 are anticipated by patented claims 13 and 1, respectively. Instant claims 4 and 14 are anticipated by patented claims 13 and 1, respectively. Instant claims 5 and 15 are anticipated by patented claims 16 and 5, respectively. Instant claims 6 and 16 are anticipated by patented claims 17 and 6, respectively. Instant claims 7 and 17 are anticipated by patented claims 18 and 7, respectively. Instant claims 8 and 18 are anticipated by patented claims 18 and 8, respectively. Instant claims 9 and 19 are anticipated by patented claims 19 and 9, respectively. Instant claim 10 is anticipated by patented claim 17.
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.
(a)(2) the claimed invention was described in a patent issued under section 151 , or in an application for patent published or deemed published under section 122(b) , in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 8, 10-11, 18, and 20, is/are rejected under AIA 35 U.S.C. 102(a)(2) as being anticipated by Murphy (US 2024/0289535 A1).
Regarding claims 1, 11, and 20, Murphy teaches:
“A response system for modeling at least one requirement, attribute, parameter, or preference (RAPP), the response system comprising: one or more processing circuits comprising memory and at least one processor (Murphy, ¶ 9, 44, 46, and 802 teaches a processor, memory and medium) configured to: cyber resilience model, using an artificial intelligence (AI) or a machine-learning (ML) model, the at least one RAPP (Murphy, Fig. 34, steps 1900, 1910 and 1912, ¶ 401-403 teaches example of the types of protection information received by the system. Murphy, ¶ 104, 126 and 133 teaches that this is third party information. Murphy, Figs. 34 and 36, ¶ 491-495, the security event notification includes a large amount of information some of which is formatted, i.e., mapped, using generative AI into a human readable output summary.), wherein cyber resilience modeling comprises: generating, using the AI or ML model, at least one output corresponding with at least one field, section, or attribute based on the at least one RAPP and entity data of an entity, the at least one RAPP corresponding with a plan or protection provided by a third-party (Murphy, Figs. 34 and 36, ¶ 491-495, the security event notification includes a large amount of information some of which is formatted, i.e., mapped, using generative AI into a human readable output summary. Murphy, ¶ 104, 126 and 133 teaches that this is third party information); and provide, to an interface, the at least one output satisfying the at least one RAPP (Murphy, Figs. 34 and 36, ¶ 491-495 the human readable output summary containing the identified data types and the corresponding data satisfying the entries of the entries of the data types are presented to the user. Murphy, Fig. 5 presents an example of a graphical user interface of the cited method)”.
Regarding claims 8 and 18, (Murphy teaches the limitations of the parent claims as discussed above):
“The response system of claim 1 (Murphy teaches the limitations of the parent claims as discussed above), wherein the AI or ML model is a large language model (LLM) (Murphy, ¶ 483 and 613 teach using an LLM to process the information), and wherein the at least one processor is further configured to, in generating the at least one output: generate a prompt based on the at least one RAPP (Murphy, Fig. 36 and ¶ 489-507 depict and describe prompting the user for information regarding the human readable report); receive a response from the prompt (Murphy, Fig. 36 and ¶ 489-507 depict and describe prompting the user for information regarding the human readable report and receiving a response from the user); and provide the response for modeling by the AI or ML model (Murphy, Fig. 36 and ¶ 489-507 depict and describe prompting the user for information regarding the human readable report and receiving the response to the GAI model)”.
Regarding claim 10, Murphy teaches:
“The response system of claim 1 (Murphy teaches the limitations of the parent claims as discussed above), wherein the attribute of the plan or protection comprises at least one of a risk category (Murphy, ¶ 771 and 797 teaches risk levels of the information assessed)”.
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 of this title, 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) 2 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murphy in view of Siebel (US 2024/0202221 A1).
Regarding claims 2 and 12, Murphy teaches:
“The response system of claim 1 (Murphy teaches the limitations of the parent claims as discussed above)”. Murphy does not, but in related art, Siebel teaches:
“wherein the AI or ML model corresponds to a retrieval-based and generative-based (RAG) model (Siebel, ¶ 27 teaches the implementation of a generative and retrieval based AI system)”.
Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of Murphy, Siebel and Larhette, to modify the generative AI system of Murphy to include the RAG model as taught in Siebel. The motivation to do so constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Claim(s) 9 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murphy in view of Crabtree (US 2024/0171614 A1).
Regarding claims 9 and 19, Murphy teaches:
“The response system of claim 1 (Murphy teaches the limitations of the parent claims as discussed above)”. Murphy does not, but in related art, Crabtree teaches:
“wherein the at least one processor is further configured to: generate, using the AI or ML model, a structured format of tactics, techniques, and procedures (TTPs) and incident facts, wherein the structured format corresponds to human-readable instructions outputted by the AI or ML model (Crabtree, ¶ 125, 143-147 and 155 teaches implementing TPPs in a machine learning environment to develop an action plan for cyber threats)”.
Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of Murphy, and Crabtree, to modify the generative AI system of Murphy and Larhette to include the method utilize the tactics, techniques, and procedures process as taught in Crabtree. The motivation to do so constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Conclusion
In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure: See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Stephen T Gundry whose telephone number is (571) 270-0507. The examiner can normally be reached Monday-Friday 9AM-5PM (EST).
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/STEPHEN T GUNDRY/Primary Examiner, Art Unit 2435
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