DETAILED ACTION
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 Amendment
A preliminary amendment was received on 29 April 2025 concurrently with the filing of the present application. By this amendment, Claims 2, 6-10, and 13 have been amended. No claims have been added or canceled. The amendments to the claims have been entered. Claims 1-15 are currently pending in the present application.
The amendments to the specification do not clearly comply with the requirement of 37 CFR 1.121(b)(1)(i) that amendments to the specification must include an instruction which unambiguously identifies the location to delete, replace, or add paragraphs. The preliminary amendment merely states “Please amend the specification as follows” (page 2 of the preliminary amendment) without providing an indication of whether the paragraph is to be added or replaced or the location of such paragraph. The amendments to the specification have not been entered. Applicant is required to resubmit the amendments to the specification in a manner fully compliant with 37 CFR 1.121(b).
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The abstract of the disclosure is objected to because it includes the form and legal phraseology often used in patent claims (e.g. “comprising”), which is to be avoided in the abstract. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities:
The specification includes minor grammatical and other errors. For example, various terms are inconsistent as to whether the British or American spelling is used, such as both “neighbor” and “neighbour”, or “behavior” and “behaviour” (see throughout the specification).
Appropriate correction is required. The above is not intended as an exhaustive list of errors in the specification. The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The use of the term Wi-Fi, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) is permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 1, 9, 10, 12, 14, and 15 objected to because of the following informalities:
Claims 1, 9, 10, 12, 14, and 15 are inconsistent as to the spelling of “neighbor”, where Claims 1, 9, 14, and 15 use the British spelling “neighbour” and Claims 10 and 12 use the American spelling “neighbor”.
Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 10 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of Claim 8 of copending Application No. 19/125,642 (reference application). Pending Claim 10 recites the same limitations as copending Claim 1, and pending Claim 1 recites the same limitations as copending Claim 8. Because pending Claim 10 depends from (and includes all of the limitations of) pending Claim 1, and copending Claim 8 depends from (and includes all of the limitations of) copending Claim 1, these claims encompass the same subject matter. See also US Patent Application Publication 2026/0161779.
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented. However, it is noted that the copending claims have been allowed (see the notice of allowance in the copending application mailed 16 July 2026).
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 1-9, 12, 14, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-3 and 7-15 of copending Application No. 19/125,642 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims recite the same limitations with different dependent combinations and are anticipated by and/or are obvious variations of the disclosed and claimed limitations. In particular, pending Claim 1 recites all of the limitations of copending Claim 8. Pending Claim 2 recites limitations corresponding to the limitations of copending Claims 2 and 7. Pending Claims 3, 4, and 6-8 recite all of the limitations of copending Claims 9-13, respectively. Pending Claim 9 corresponds to portions of copending Claim 1. Pending Claim 12 recites all of the limitations of copending Claim 3. Pending Claim 14 is directed to a device having functionality corresponding to pending Claim 1, and similarly is an obvious variation on copending Claim 8, noting that copending Claim 14 also recites and suggests a device corresponding to the claimed methods. Pending Claim 15 is directed to a software implementation of the method of pending Claim 1, and similarly is an obvious variation on copending Claim 8, noting that copending Claim 15 also recites and suggests a software implementation of the claimed methods. See also US Patent Application Publication 2026/0161779.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. However, it is noted that the copending claims have been allowed (see the notice of allowance in the copending application mailed 16 July 2026).
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.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claim 15 does not fall within at least one of the four categories of patent eligible subject matter because the only structural element required by the claim is a computer-readable storage device. The broadest reasonable interpretation of a computer readable storage device typically covers both forms of non-transitory media and transitory propagating signals per se in view of the ordinary and customary meaning of computer-readable storage devices (for example, as defined by usage in issued patents and published patent applications), and although the present application excludes various carrier waves or signals from the definition of “computer storage media” (see page 24, lines 32-33). However, the claim uses the term “computer-readable storage device” rather than “computer storage media”, and the claimed terminology does not appear to have been explicitly defined to clearly exclude transitory signals per se. A signal does not constitute statutory subject matter, because it is neither a process, a machine, an article of manufacture, nor a composition of matter, and therefore does not fall within any of the statutory classes of invention. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007), and MPEP § 2106.03(I). See also “Subject Matter Eligibility of Computer Readable Media”, 1351 Off. Gaz. Pat. Office. When a claim encompasses both statutory and non-statutory subject matter, the claim as a whole is considered to be directed to non-statutory subject matter. See MPEP § 2106(II).
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 1-15 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 “the feature vector” in line 5. However, the claim previously recited plural feature vectors, and it is not clear to which of the plural vectors this limitation is intended to refer. The claim further recites “the known threat status” in line 11. It is not clear to which of the plural threat statuses this is intended to refer, although it appears that this may be intended to refer to a respective threat status of each application. The claim additionally recites “its at least one neighbouring application” in lines 12-13. The antecedent of the pronoun “its” is not clear in context. The claim also recites “the at least one neighbouring application” in lines 15-16. The antecedent of this limitation is not clear because there are potentially plural neighboring applications. The claim further recites “the application” in lines 17-18 and “the feature” in lines 18 and 21. It is not clear to which of the plural applications and features these limitations are intended to refer, although it appears that these may be intended to refer to respective applications and features of each application and feature. The claim additionally recites “the reputation score” and “the feature weight” in line 21. It is not clear to which of the plural scores and weights these limitations are intended to refer, although it appears that these may be intended to refer to respective scores and weights. The above ambiguities render the claim indefinite.
Claim 2 recites “the application-related entity” in line 2. It is not clear to which of the plural entities this is intended to refer.
Claim 4 recites steps of receiving, determining, and inputting in lines 2-6; however, these steps are not joined by a conjunction (e.g. “and” or “or”) and therefore it is not clear whether all of the steps are required or if any are alternatives.
Claim 6 recites that the “entities are measurable at release of an application” in line 2. It is not clear how the various entities are to be “measured”, and it is not clear to which of the plural applications “an application” is intended to refer.
Claim 7 recites “the application within the plurality of applications” in lines 2-3; however, it is not clear to which particular application of the plural applications this is intended to refer. It appears that a delimiter such as “first” or “particular” or similar language may be appropriate to clearly define which application is being referenced.
Claim 8 recites “the reputation score” and “the application” in lines 1-2. It is not clear to which of the plural scores and applications these limitations are intended to refer.
Claim 9 recites “the application” in lines 4, 7, and 10. It is not clear to which of the plural applications these limitations are intended to refer, although it appears they may be intended to refer to a respective application of each application.
Claim 10 recites “a plurality of features” in line 2. It is not clear whether this is intended to refer to the same plurality of features as in Claim 1 or distinct features. Claim 10 further recites “a third application” in lines 16-17. It is not clear whether this is intended to refer to the same third application recited in line 8 or a distinct application.
Claim 12 recites “the third second application” in lines 10-11. This is grammatically unclear. The claim further recites “a neighbor association” in line 14. It is not clear whether this is intended to refer to the same neighbor association as in Claim 10 or a distinct association.
Claim 14 recites “the feature vector” in line 8. However, the claim previously recited plural feature vectors, and it is not clear to which of the plural vectors this limitation is intended to refer. The claim further recites “the known threat status” in line 13. It is not clear to which of the plural threat statuses this is intended to refer, although it appears that this may be intended to refer to a respective threat status of each application. The claim additionally recites “its at least one neighbouring application” in lines 14-15. The antecedent of the pronoun “its” is not clear in context. The claim also recites “the at least one neighbouring application” in lines 17-18. The antecedent of this limitation is not clear because there are potentially plural neighboring applications. The claim further recites “the application” in lines 19-20 and “the feature” in lines 20 and 23. It is not clear to which of the plural applications and features these limitations are intended to refer, although it appears that these may be intended to refer to respective applications and features of each application and feature. The claim additionally recites “the reputation score” and “the feature weight” in line 23. It is not clear to which of the plural scores and weights these limitations are intended to refer, although it appears that these may be intended to refer to respective scores and weights. The above ambiguities render the claim indefinite.
Claim 15 recites “the feature vector” in line 6. However, the claim previously recited plural feature vectors, and it is not clear to which of the plural vectors this limitation is intended to refer. The claim further recites “the known threat status” in line 11. It is not clear to which of the plural threat statuses this is intended to refer, although it appears that this may be intended to refer to a respective threat status of each application. The claim additionally recites “its at least one neighbouring application” in lines 12-13. The antecedent of the pronoun “its” is not clear in context. The claim also recites “the at least one neighbouring application” in lines 15-16. The antecedent of this limitation is not clear because there are potentially plural neighboring applications. The claim further recites “the application” in lines 17-18 and “the feature” in lines 18 and 21. It is not clear to which of the plural applications and features these limitations are intended to refer, although it appears that these may be intended to refer to respective applications and features of each application and feature. The claim additionally recites “the reputation score” and “the feature weight” in line 21. It is not clear to which of the plural scores and weights these limitations are intended to refer, although it appears that these may be intended to refer to respective scores and weights. The above ambiguities render the claim indefinite.
Claims not explicitly referred to above are rejected due to their dependence on a rejected base claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 12 recites that “the set of candidate features is determined to be invalid”; however, Claim 11, from which Claim 12 depends, recites that “the set of candidate features is determined to be valid”. Claim 12 therefore contradicts and fails to include all the limitations of Claim 11 from which it depends.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Das et al, US Patent 8774192, discloses a system that performs threat detection using neighbors for nodes.
Hamilton, II et al, US Patent 9600320, discloses a method for detecting and mitigating threats in a determined neighborhood.
Evans et al, US Patent 9652617, discloses detecting malicious applications using nearest neighbors.
Oprea et al, US Patent 10122742, discloses analyzing software modules based on a neighborhood distance.
Chen et al, US Patent 10503902, discloses a method for detecting an attack using k-nearest neighbors.
Krasnik, US Patent Application Publication 2007/0250476, discloses threat scanning using nearest neighbor searches.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zachary A Davis whose telephone number is (571)272-3870. The examiner can normally be reached Monday-Friday, 9:00am-5:30pm, Eastern Time.
Examiner interviews are available via telephone 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, Rupal D Dharia can be reached at (571) 272-3880. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Zachary A. Davis/Primary Examiner, Art Unit 2492
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