DETAILED ACTION
This office action is in response to the application filed on 3/5/2025. Claim(s) 1-25 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/Benefit
Applicant’s priority claim is hereby acknowledged of CON of 18/888,967 09/18/2024 PAT 12273372, 18/888,967 is a CON of 18/647,876 04/26/2024 PAT 12401683, 18/647,876 is a CON of 18/584,659 02/22/2024 PAT 12003529, which papers have been placed of record in the file.
Information Disclosure Statement PTO-1449
The Information Disclosure Statement(s) submitted by applicant on 3/5/2025, 5/19/2025, and 6/24/2025 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 – Allowable Subject Matter
Claims 1-25 overcome the prior art and would otherwise be allowable if they overcome the double patenting rejection below.
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) 1-25 is/are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-3, 5, 7-9, 11-17, 19, 23, and 25-27 of U.S. Patent No. 12,273,372. Although the claims at issue are not identical in form, they are not patentably distinct from each other. Instant claim 1 is anticipated by patented claim 1. Instant claim 2 is anticipated by patented claim 11. Instant claims 3-4 is anticipated by patented claims 2-3, respectively. Instant claims 5-6 is anticipated by patented claims 7-8, respectively. Instant claim 7 is anticipated by patented claim 11. Instant claim 8 is anticipated by patented claim 5. Instant claim 10 is anticipated by patented claim 9. Instant claims 11-14 is anticipated by patented claims 12-15, respectively. Instant claim 15 is anticipated by patented claim 11. Instant claims 16-17 is anticipated by patented claims 16-17, respectively. Instant claims 18-19 is anticipated by patented claims 7-8, respectively. Instant claim 20 is anticipated by patented claim 25. Instant claim 21 is anticipated by patented claim 19. Instant claim 23 is anticipated by patented claim 23. Instant claim 24 is anticipated by patented claim 26. Instant claim 25 is anticipated by patented claim 27. In particular instant claims 9 and 22 are substantially similar to patented claims 1 and 14. The patented claims do not, but in related art, Ithal (US 2023/0094856 A1) ¶ 129-30 teaches detecting sensitive data in an AI environment and performing a static analysis. Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of the patented claims and Ithal, to modify the AI cyber security of the patented claims to include the method to detect sensitive data as taught in Ithal. 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) 1-25 is/are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,003,529. Although the claims at issue are not identical in form, they are not patentably distinct from each other.
In particular instant claims 1, 13 and 14 are substantially similar to patented claims 1, 9, and 10. The patented claims do not, but in related art, Ithal (US 2023/0094856 A1) ¶ 129 teaches detecting sensitive data in an AI environment. Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of the patented claims and Ithal, to modify the AI cyber security of the patented claims to include the method to detect sensitive data as taught in Ithal. The motivation to do so constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
In view of the above combination instant claims 1, 4-6, 10-13, 18-20, and 24-25 are substantially similar to patented claims 2-8 and 11-17, respectively. Regarding instant claims 2-3 and 16-17, the instant claims are substantially similar in leu of the combination above. The combination above does not, but in related art, Scott (US 2023/0120915 A1) ¶ 57 teaches a mechanism to detect and analyze the components of the AI pipeline. Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of the patented claims, Scott and Ithal, to modify the AI cyber security of the patented claims to include the method to detect AI components as taught in Scott. The motivation to do so constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Regarding instant claims 7-8 and 21-22, the instant claims are substantially similar in leu of the combination above. The combination above does not, but in related art, Sellars (US 2024/0223596 A1) ¶ 43 teaches a mechanism to detect and mitigate cyber threats resulting in misconfigurations. Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of the patented claims, Sellars and Ithal, to modify the AI cyber security of the patented claims to include the method to mitigate AI cyber threats as taught in Sellars. The motivation to do so constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Regarding instant claims 9 and 23, the instant claims are substantially similar in leu of the combination above. The combination above does not, but in related art, Kaligotla (US 2024/0356895 A1) ¶ 59 teaches encryption keys in an AI environment. Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of the patented claims, Kaligotla and Ithal, to modify the AI cyber security of the patented claims to include the method to use encryption keys as taught in Kaligotla. 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) 1-25 is/are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1, 3-11, and 13-19 of copending application 18/647,876. Although the claims at issue are not identical in form, they are not patentably distinct from each other.
In particular instant claims 1, 13 and 14 are substantially similar to patented claims 1, 10, and 11. The patented claims do not, but in related art, Ithal (US 2023/0094856 A1) ¶ 129 teaches detecting sensitive data in an AI environment. Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of the patented claims and Ithal, to modify the AI cyber security of the patented claims to include the method to detect sensitive data as taught in Ithal. The motivation to do so constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
In view of the above combination instant claims 1, 4-6, 10-13, 18-20, and 24-25 are substantially similar to patented claims 3-9 and 13-19, respectively. Regarding instant claims 2-3 and 16-17, the instant claims are substantially similar in leu of the combination above. The combination above does not, but in related art, Scott (US 2023/0120915 A1) ¶ 57 teaches a mechanism to detect and analyze the components of the AI pipeline. Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of the patented claims, Scott and Ithal, to modify the AI cyber security of the patented claims to include the method to detect AI components as taught in Scott. The motivation to do so constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Regarding instant claims 7-8 and 21-22, the instant claims are substantially similar in leu of the combination above. The combination above does not, but in related art, Sellars (US 2024/0223596 A1) ¶ 43 teaches a mechanism to detect and mitigate cyber threats resulting in misconfigurations. Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of the patented claims, Sellars and Ithal, to modify the AI cyber security of the patented claims to include the method to mitigate AI cyber threats as taught in Sellars. The motivation to do so constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Regarding instant claims 9 and 23, the instant claims are substantially similar in leu of the combination above. The combination above does not, but in related art, Kaligotla (US 2024/0356895 A1) ¶ 59 teaches encryption keys in an AI environment. Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of the patented claims, Kaligotla and Ithal, to modify the AI cyber security of the patented claims to include the method to use encryption keys as taught in Kaligotla. 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).
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, Amir Mehrmanesh can be reached at (571) 270-3351. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEPHEN T GUNDRY/Primary Examiner, Art Unit 2435
Prosecution Insights