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 .
Response to Arguments
Applicant has overcome the old 112 rejection and introduced a new 112 rejection. The Double Patenting rejection and 103 rejection are overcome.
With respect to the 101 rejection, Applicant's arguments filed 6/4/2026 have been fully considered but they are not persuasive.
Applicant argues, “Further, Applicant submits that the claims do not recite mathematical operations as alleged in the Office Action…. To the extent that an encryption algorithm is a mathematical concept, Applicant notes that claim 2 does not recite executing an encryption algorithm.” Remarks 9. Encryption is a mathematical concept and Applicant admits as much. Applicant also claims encryption. The abstract idea is claimed. The elements of the claimed directed to executing a model and inferring risk are certainly capable of being performed in the mind, therefore a mental concept is also claimed.
Applicant argues,
The claims provide a technical solution to this technical problem which includes "training the machine learning models 140, at least in part, using encrypted training data such that, once trained, the models 140 are operable to run on encrypted input data. By running these models 140 on encrypted input data 142, the server system 102 is not revealing, to the user 154, the details of the input utilized by the machine learning models 140. Stated differently, by encrypting the input to the models 140, the public is unaware of what that input is and, therefore, cannot gain useful information that may be used to circumvent the model 140." See Spec. at [0024], [0025], and [0046]. Specifically, amended claim 2 captures this technical solution by reciting "executing, by the client device, at least one of the one or more machine learning models to generate model output data for the first operation based on encrypted input data values that are encrypted with a cryptographic key inaccessible to the client device…. The claims recite a technical solution to this additional technical problem which in turn provides a technical advantage in that "[w]hen viewed in the context of a high-scale server system that services a large number (e.g., millions) of requests per day, the computational resources saved, by the server system, by running the machine learning models at the client device are significant, while presenting little or negligible additional computational burden to the client device."
Remarks 10-11.
Applicant admits that running this operation on would add “additional computational burden…” Id. This burden does not improve the function of a computer. The elements of receiving data and using a computer to run the algorithm merely link the abstract idea to the field of computers, it does not improve computer functionality, and no other technical field is claimed outside of the abstract idea itself. Therefore the abstract idea is not integrated into a practical application.
Applicant argues,
amended claim 2 recites "executing, by the client device, at least one of the one or more machine learning models to generate model output data for the first operation based on one or more encrypted input data values that are encrypted with a cryptographic key inaccessible to the client device, wherein a first value of the encrypted input data values is encrypted using a first encryption algorithm and a second value of the encrypted
input data values is encrypted using a second encryption algorithm, and wherein the model output data corresponds to a level of risk associated with performing the first operation." Applicant submits that the execution of a machine learning model on encrypted data values is an additional element that is integral to the claimed techniques and that this additional element provides an inventive concept that amounts to significantly more than the abstract idea alleged in the Office Action at page 7.
Remarks 12.
The execution of an ML model on encrypted data is the abstract idea and therefore cannot amount to significantly more than an abstract idea.
Note on Prior art
There are no prior art rejections for claims 2-21. Because Applicant amended to incorporate material from dependent claim 8.
Claim Objections
Claim 8 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 1. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 2-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of a mental concept and mathematical operation without significantly more. The claims recite the abstract idea of determining a first operation is associated with a ML model, executing a ML model to infer risk, generating a response that indicates authorization, generating encrypted input data, using different encryption algorithms, and choosing ML models based on operation type. This judicial exception is not integrated into a practical application because additional element of transmitting and receiving data and models is insignificant extra solution activity. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because additional element such as computer-readable media, memory, and processors are generic computer parts.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 4 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 4 recites, “the homomorphic encryption prevents information regarding the operation of the one or more machine learning models from being accessed.” This is not described in the specification. Just claim homomorphic encryption, and cancel the bit about preventing access. The specification talks about “prevent[ing] a malicious user from gaining any useful information” (spec. 48), but the specification is not enabling of that sort of claim.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
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/AUSTIN HICKS/Primary Examiner, Art Unit 2142
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