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 .
DETAILED ACTION
Claims 21-40 are pending in this office action.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on February 21, 2025, February 28, 2026, March 18, 2026, and June 16, 2026, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities: the CROSS-REFERENCES TO RELATED APPLICATIONS section needs updated to reflect applications that have matured into patents. Appropriate correction is required.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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 1-20 of U.S. Patent No. 12,277,245. Although the claims at issue are not identical, they are not patentably distinct from each other because both application and patent claim a method for data protection and routing when using artificial intelligence models, comprising: storing provider restrictions that correspond to categories of restricted subject matter for providers of AI services, wherein the providers include a first provider and a second provider; receiving an input at a gateway, from an application executing on a user device, the application being configured to utilize a first model at the first provider; detecting, in the input, a first category of restricted subject matter; based on a management rule, modifying the input with a reversible transformation, including replacing a portion of the input with a contextual placeholder; injecting a prompt for inclusion with the input, the injected prompt related to the first category of restricted subject matter; routing the modified input and the injected prompt to the second provider; receiving an output from the second provider; modifying the output by at least: adding a message to the output related the injected prompt; and replacing the contextual placeholder with the portion of the input; causing the output to display on the user device.
The patent further claims wherein the first category corresponds to a first provider restriction of the first provider, and preventing transmission of a second input to the first provider; and causing the user device to receive an indication that the first provider does not allow the first category of restricted subject matter, wherein the indication also identifies the second provider as a destination for the second input as a result of the prevented transmission.
The instant application further claims wherein a first provider restriction of the first provider is received based on an API call to a first provider, wherein the first provider restriction corresponds to a first category of restricted subject matter.
It would have been obvious to add preventing transmission of a second input to the first provider; and causing the user device to receive an indication that the first provider does not allow the first category of restricted subject matter, wherein the indication also identifies the second provider as a destination for the second input as a result of the prevented transmission because the prevention step completes the method by routing the data.
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 21-29 and 31-40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ardhanari et al. (U.S. Patent Pub. No. 2021/0248268).
Regarding claims 21, 39, and 40, Replace1 teaches a method for data protection and routing when using artificial intelligence models, comprising: storing provider restrictions that correspond to categories of restricted subject matter for providers of AI services, wherein the providers include a first provider and a second provider, wherein a first provider restriction of the first provider is received based on an application programming interface (“API”) call to the first provider, wherein the first provider restriction corresponds to a first category of restricted subject matter (paragraph 0178 and 0194); receiving an input at a gateway, from an application executing on a user device, the application being configured to utilize a first model at the first provider (paragraph 0183); detecting, in the input, the first category of restricted subject matter (paragraph 0185); based on a management rule, modifying the input with a reversible transformation, including replacing a portion of the input with a contextual placeholder (paragraph 0185); injecting a prompt for inclusion with the input, the injected prompt related to at least one of the categories of restricted subject matter (paragraph 0156); routing the modified input and the injected prompt to the second provider (paragraph 0156); receiving an output from the second provider (paragraph 0294); modifying the output by at least: adding a message to the output related to the injected prompt (fig. 26A, ref. num 2620); and replacing the contextual placeholder with the portion of the input (paragraph 0306); and causing the output to display on the user device (fig. 26B).
Regarding claim 22, Replace1 teaches wherein the API call is made subsequent to receiving the input (paragraph 0230).
Regarding claim 23, Replace1 teaches wherein the API call is made in an instance where a date for the stored provider restrictions associated with the first provider exceeds an expiration threshold (paragraph 0198).
Regarding claim 24, Replace1 teaches wherein the API call is made in an instance where a new version of an artificial intelligence model is detected, the artificial intelligence model being executed by the first provider (paragraph 0212).
Regarding claim 25, Replace1 teaches wherein the API call is made as part of periodically polling the first and second providers (paragraph 0222).
Regarding claim 26, Replace1 teaches wherein the second provider is checked for new provider restrictions prior to routing the modified input and the injected prompt to the second provider (paragraph 0270).
Regarding claim 27, Replace1 teaches wherein a second provider restriction of the second provider is obtained by web scraping information from a website containing terms of service for the second provider, wherein the scraping is performed by a scraper process that executes periodically (paragraph 0038).
Regarding claim 28, Replace1 teaches wherein the injected prompt includes a disclaimer that addresses the second provider restriction (paragraph 0143).
Regarding claim 29, Replace1 teaches further comprising causing logging of the input, the first category of restricted subject matter, the routing, and the reversible transformation (paragraph 0041).
Regarding claim 31, Replace1 teaches wherein the routing of the modified input includes translating the modified input to meet an API format for the second provider, wherein the API format for the second provider differs from an API format for the first provider (paragraph 0230).
Regarding claim 32, Replace1 teaches wherein a second category of restricted subject matter applies to a second provider restriction from the second provider, wherein the second provider restriction is received based on scraping terms of service of the second provider (paragraph 0038).
Regarding claim 33, Replace1 teaches wherein a third category of restricted subject matter applies to a third provider restriction from a third provider, wherein the third provider restriction is received based on accessing a repository associated with the third provider (paragraph 0306).
Regarding claim 34, Replace1 teaches wherein sensitivities to the categories of restricted subject matter are adjustable on a user interface (“UI”) by an administrative user (fig. 20A).
Regarding claim 35, Replace1 teaches wherein the categories of restricted subject matter include restricted vocational advice that is medical, legal, or financial in nature (paragraph 0062).
Regarding claim 36, Replace1 teaches wherein the routing is based on determining which providers are eligible based on detecting the first category of restricted subject matter and an evaluation of multiple management rules (paragraph 0206).
Regarding claim 37, Replace1 teaches wherein the injected prompt includes an identifier that corresponds to at least one of a user, group, and tenant that submitted the input (paragraph 0199).
Regarding claim 38, Replace1 teaches wherein the replacing of the contextual placeholder with the portion of the input restores identical text to what was replaced by the contextual placeholder (paragraph 0183).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON HOFFMAN whose telephone number is (571)272-3863. The examiner can normally be reached Monday-Friday 8:30AM-5:00PM.
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, Jeffrey Pwu can be reached at (571)272-6798. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRANDON HOFFMAN/Primary Examiner, Art Unit 2433
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