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 .
Claims 1-21 are pending, claims 1 and 17 have been amended, and claim 21 has been newly added.
Applicant’s argument with respect to rejection of claim under 35 USC 103 have been considered and are persuasive. Accordingly, the rejection of claims under 35 USC 103 have bas been withdrawn.
With respect to rejection of claims under 112 (b) Applicant asserts “The Office asserted that the phrase ‘preferred region’ is subjective. Applicant respectfully disagrees. A person of ordinary skill in the art, at the time of filing the application, would have understood the meaning of this phrase in the claims. In particular, the claims do not recite ‘preferred region’ alone, but rather ‘a preferred region for true query answers for the kernel differentially private mechanism’. Moreover, the Application as filed describes additional details of the preferred region including that ‘the preferred region [is] for the output values’ of the kernel differentially private mechanism, providing those with skill in the art a sufficient understanding of the scope of the claim”.
In response, Applicant’s assertion that one of ordinary skill in the art would understand the meaning of “preferred region” does not resolve the issue of whether the claim itself, when read in light of the specification, provides sufficient clarity and objective standard for determining the scoop and boundaries of the claimed “preferred region”. As explained in the office action, the claim does not specify boundaries, criteria, or other parameters for determining what constitutes the “preferred region”, nor does it specify how an output is determined to fall within or outside of the region. The specification’s examples of possible ways to select a preferred region do not establish reasonably certain claim boundaries.
Further, Applicant does not appear to address the separate concern regarding the phrase “true query answers” raised in the previous office action. Applicant’s response explains how a preferred region may be selected for output valued, but does not explain what constitutes a “true query answer” within the meaning of the claim or provide a basis by which one of ordinary skill in the art could determine the scope of this phrase with reasonable certainty. Thus, this aspect of the rejection remains unaddressed. Therefore, the rejections are maintained.
With respect to the added dependent claim 21, the added limitation clarifies that the “true query answers” comprise values generated by the one or more client devices and that the “preferred region” comprises a set of potential responses to the query. Accordingly, claim 21 addresses the previous issue and concern regarding the meaning of “true query answers”. However, the new claim 21 does not resolve the indefiniteness concern regarding the “preferred region”. The claim now defines the preferred region as a “set of potential responses to the query”, but does not provide objective criteria for determining what constitutes a “potential response” or which responses are included in or excluded from the claimed set. Neither the claim nor the Specification provide sufficient guidance of determine the boundaries of this set with reasonable certainty.
With respect to the rejection of claims under 35 USC 101, applicant refers to paragraphs 12 and 19 of the specification and asserts that “The Application as filed describes a number of advantages provided by the claimed solution…these advantages include enablement of message obfuscation with a
higher accuracy, increased security, and less privacy loss. All of these advantages are directly
related to computer differential privacy systems, e.g., the claimed ‘differential privacy message
obfuscation system’ recited by claim 1”.
Applicant’s argument is not persuasive. Although the specification identifies higher accuracy, increased security, and reduced privacy loss as advantages of the claimed system, these asserted advantages, by themselves, do not establish that the claimed invention is directed to eligible subject matter. The identified advantages concern the resulting characteristics of the generated noise data, such as higher probability of falling within a preferred output region and reduces privacy loss. These advantages do not demonstrate an improvement to the functioning of a computer or to another technology or technical filed. Moreover, applicant has not identify any particular claimed operation that improves underlying computer or technological process. Accordingly, the mere identification of improved accuracy, security, or privacy resulting from the claimed differential privacy operation does not establish that the claims integrate the recited judicial exception into a practical application. Thus applicant’s argument is not persuasive.
Applicant further argues that “The claims are also similar to claims found patent eligible by the Federal Circuit: ... Under Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), and related authorities, we conclude, the claims at issue here are not directed to ineligible subject matter. Rather, we hold, the claimed advance is a concrete assignment of specified functions among a computer's components to improve computer security, and this claimed improvement in computer functionality is eligible for patenting. As a result, the claims are not invalid under§ 101. Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1344 (Fed. Cir. 2018), as amended (Nov. 20, 2018) (underlining added). Improving security-here, against a computer's unauthorized use of a program-can be a non-abstract computer-functionality improvement if done by a specific technique that departs from earlier approaches to solve a specific computer problem. See Finjan, 879 F.3d at 1304-05. Id. at 1348 (underlining added). Similar to the claims at issue in Ancora Techs., the claimed solutions improve security (among other potential advantages) by reciting specific techniques that depart from earlier approaches. As a result, the claims in the present application provide "a non-abstract computer functionality improvement if done by a specific technique that departs from earlier approaches to solve a specific computer problem".
Applicant’s reliance on Enfish and Ancora is not persuasive. In Enfish, the claimed self-referential table was a specific data structure that improve the way a computer stored and retrieved data, thereby, improving the computer’s functionality. Similarly, in Ancora, the claimed technique specifically improved computer security by changing the manner in which computer component performed software verification, thereby addressing a computer specific security problem.
Here, although claim 1 recites specific operations for computing a probability density function, determining a probability function and boosting rate, generating noise data using a privacy parameter, and providing a response including the noise data, these operations do not improve the manner in which computer itself performs processing, stores data, retrieves data, or communicates data. Rather, the claimed operations apply a particular differential privacy technique to generate noise data having desired privacy and accuracy characteristics.
Therefore, the alleged improvement appears to relate to the resulting noise data and privacy characteristics, rather than to the functioning of the computer or another computer technology. Accordingly, unlike Enfish and Ancora, the claim does not identify a comparable improvement to computer functionality or specific technological process.
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 1, 9 and 17 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.
Claim 1 recites “…a probability function that an output from the kernel differentially private mechanism does not fall in a preferred region for true query answers for the kernel differentially private mechanism”.
The phrase “preferred region” is a subjective term. The claim does not define what a preferred region is nor provides any standard for determining what constitutes the preferred region. Additionally, the claim does not define how an output is determined to not to fall within the preferred region, nor does it provide a guidance for making such determination. Moreover, “true query answers” lack boundaries and it is unclear what constitutes “true query answers for the kernel…” within the meaning of the claim 1.
Neither the claim nor the specification defines or clarifies these terms in a manner that would inform, with reasonable certainty, those skilled in the art of the scope of the claim.
In light of above ambiguity, the claim is interpreted and examined as it can be best understood.
Independent claims 9 and 17 include similar limitation and are rejected under 35 U.S.C. 112(b), as being indefinite.
Claim 21 recites “wherein…the preferred region comprises a set of potential responses to the query”. The claim does not provide standard for determining what constitutes a “potential response” or which responses are included in or excluded from the claimed set. Neither the claim nor the Specification provide sufficient guidance of determine the boundaries of this set with reasonable certainty.
Dependent claims 2-8, 10-16 and 18-21 are rejected under 35 U.S.C. 112(b), as being indefinite based on their dependency on the independent claims
Claim Rejections - 35 USC § 101
835 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 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims when analyzed under 2019 Revised Patent Subject Matter Eligibility Guidance, are directed to abstract idea. Claim 1 for example, recites a method and, therefore, is a process. The claim recites the limitation of: “…computing a probability density function for a kernel differentially private mechanism using a combination of the kernel differentially private mechanism, a probability function… and a boosting rate that increases variance in outputs for the kernel differentially private mechanism; computing, using the probability density function, a privacy parameter for generating noise data; maintaining a plurality of output data…receiving… a query for data from a dataset…generating a response to the query…and transmitting…the response to the query”. These limitations, under broadest reasonable interpretation are directed performance of the limitation in a human mind or by a human. That is, nothing in the claim element precludes the step from practically being performed in the mind or by human. For example, the claim encompasses a human simply by using pen and paper computes a mathematical function (probability density function) by using mathematical formula, tools and inputs. In the claim, the steps of: receiving… a query for data from a dataset…generating a response to the query…and transmitting…the response to the query also could be performed by a human. A human could receive a query for a dataset from another person and generate additional data by use of mathematical function (probability density function) and provide a response to the query to the other person. Thus, the claim recites steps that could be performed in human mind or by human when analyzed under step 2A prong 1.
Claim is further analyzed in step 2A prong 2, to evaluate whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by identifying whether there are any additional elements recited in the claim beyond the judicial exception, and evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. However, each of the remaining limitation appears to be generic computer functions which do not constitute meaningful limitations that would amount to significantly more than the abstract idea. The combination of these additional element is no more than generic computer functions. Thus, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limitations on practicing the abstract idea.
Claim is additionally analyzed under Step 2B to evaluates whether the claim as a whole amount to significantly more than the recited exception, whether any additional element, or combination of additional elements, adds an inventive concept to the claim. When claims evaluated under step 2B, it is no more than what is well-understood, routine, conventional activity in the field. The specification does not provide any indication anything other than a generic computer component. The mere “…computing a probability density function…computing, using the probability density function, a privacy parameter…receiving… a query for data from a dataset…generating a response to the query…and transmitting…the response to the query” is a well-understood, routing and conventional function when it is claimed in a merely generic manner as it is here.
Independent claims 9 and 17 and dependent claims 8 and 16 include limitations similar to the limitations of claim 1 and are rejected under 35 U.S.C. 101 as being directed to abstract idea for the same reasons discussed above with respect to claim 1.
Claims 2, 10 and 18 recite additional elements of “wherein the boosting rate has a non-zero value”, which is considered as insignificant extra solution activity. Insignificant extra solution activity does not amount to inventive concept. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose meaningful limits on practicing abstract idea.
Claims 3, 11 and 19 recite additional elements of “wherein the boosting rate has a value within a threshold distance of one”, which is considered as insignificant extra solution activity. Insignificant extra solution activity does not amount to inventive concept. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose meaningful limits on practicing abstract idea.
Claims 4, 12 and 20 recite the limitation of “ wherein computing the privacy parameter uses at least a first loss determined using the probability density function”, which is considered as insignificant extra solution activity. Insignificant extra solution activity does not amount to inventive concept. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose meaningful limits on practicing abstract idea.
Claims 5 and 13 recite the limitation of “ wherein computing the privacy parameter uses a combination of: the first loss … a second loss…a first weight…and one or more first bounds…and a second weight…and one or more second bounds…”, which is considered as insignificant extra solution activity of data gathering for user in the claimed process. Insignificant extra solution activity does not amount to inventive concept. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose meaningful limits on practicing abstract idea.
Claims 6 and 14 recites the limitation of “wherein computing the privacy parameter uses a combination of: the first loss… the second loss …the first weight…and the one or more first bounds…the second weight…and the one or more second bounds…and a third weight…”, which is considered as insignificant extra solution activity of data gathering for user in the claimed process. Insignificant extra solution activity does not amount to inventive concept. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose meaningful limits on practicing abstract idea.
Claims 7 and 15 recite the limitation of “reweighting the kernel differentially private mechanism using the probability density function, wherein computing the privacy parameter for generating the noise data uses the reweighted kernel differentially private mechanism”, which could be performed by human by use of a pen and paper and a mathematical function (probability density function). The claim does not recite additional element that amounts to significantly more than judicial exception.
Claim 21 recites the limitation of wherein the true query answers comprise values generated by one or more client device, which could be performed in human mind or by human. The claimed the preferred region comprises a set of potential responses toe the query, is considered as insignificant extra solution activity. Insignificant extra solution activity does not amount to inventive concept. Accordingly, this additional element do not integrate the abstract idea into a practical application because they do not impose meaningful limits on practicing abstract idea.
Claim 17-20 are further rejected under 35 U.S.C.101 for being directed to non-statutory subject matter.
Claim 17 is directed to “computer storage media”, which under the broadest reasonable interpretation could be interpreted as non-transitory media and transitory propagating signal. Applicant’s specification (paragraph 64) does limit the “computer storage media” to include only non-transitory media. Therefore, the claim is directed to non-statutory subject matter.
Claim could be amended to narrow the claim to cover only statutory embodiments to overcome a rejection under 35 U.S.C. § 101 by adding the limitation "non-transitory" to the claim.
Dependent claims 18-20 do not cure the deficiency of the independent claim 17 and are rejected under 35 USC 101 for being directed to non-statutory subject matter.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ali Abyaneh whose telephone number is (571) 272-7961. The examiner can normally be reached on Monday-Friday from (8:00-5:00). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Lagor can be reached on (571) 270-5143. The fax phone numbers for the organization where this application or proceeding is assigned as (571) 273-8300 Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/ALI S ABYANEH/Primary Examiner, Art Unit 2437
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