DETAILED ACTION
This Office action is in response to a Continuation application filed by Applicant on 4/13/2025.
A non-final Office Action was previously issued based upon the claims canceled by an overlooked preliminary amendment filed by application on the filing date. This Office Action supersedes that Action, restarting the period for reply and Examines the currently pending claims.
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 .
Information Disclosure Statement PTO-1449
The Information Disclosure Statement submitted by applicant on 4/13/2025 has been considered. The submission is in compliance with the provisions of 37 CFR § 1.97. Form PTO-1449 signed and attached hereto.
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 rejected on the ground of nonstatutory anticipatory-type double patenting
as being unpatentable over claims 1–20 of US 12,299,149 B2, issued May 13, 2025. Although the claims at issue are not identical, they are not patentably distinct from each other because at
least independent claims 21, 33, and 40 claim the same subject matter.
Claim Rejections - 35 USC § 101
The present application, as claimed, satisfies the requirements for patent-eligible subject matter under 35 U.S.C. 101.
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 21–24, 27–28, 33–36, 38, 40 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Banipal (US 2022/0358237 A1, published Nov. 10, 2022).
Regarding claims 21, 33, and 40, Banipal discloses: an apparatus, comprising: a communications interface; a memory storing instructions; and at least one processor coupled to the communications interface and to the memory, the at least one processor being configured to execute the instructions to: obtain configuration data associated with a source data table, the configuration data comprising an identifier of a column within the source data table (initial table includes identifiers of the contents or type of data stored in each column, which can be referenced for table manipulation. Banipal Figure 2 and ¶¶ 28–29.); access the source data table, and based on the configuration data, perform operations that apply a de-risking operation to elements of confidential data within the column of the source data table and that generate a de-risked column within the source data table (based upon the identification of sensitive/non-sensitive attributes, the data owner applies a masking technique to the initial source data and the resulting data set is the initial source data set with generated masked sensitive fields (columns). Banipal Figures 2–3 and ¶¶ 24, 26, and 29.); and transmit, via the communications interface, a de-risked data table that includes the de-risked column to a computing system (once the masked dataset has been produced, it is provided to the analytics provider. Banipal ¶ 30.), the computing system being configured to process the de-risked data table and generate an output data table that includes the de-risked column (the analytics provider uses the masked data to accomplish the requested analytics. Banipal ¶ 30.).
Regarding claims 22 and 34, Banipal discloses the limitations of claims 21 and 33, respectively, wherein the de-risked column maintains a referential integrity between the source data table and the output data table (the masked dataset includes a homomorphically encrypted version of the data fields that preserves the referential integrity of the relationships/mappings but without revealing personal information. Banipal ¶ 34.).
Regarding claims 23 and 35, Banipal discloses the limitations of claims 21 and 33, respectively, wherein: the at least one processor is further configured to execute the instructions to generate de-risked elements of confidential data based on the application of the de-risking operation to the elements of confidential data within the column of the source data table, the de-risked elements of confidential data establishing the de-risked column within the source data table (based upon the identification of sensitive/non-sensitive attributes, the data owner applies a masking technique to the initial source data and the resulting data set is the initial source data set with generated masked sensitive fields (columns). Banipal Figures 2–3 and ¶¶ 24, 26, and 29.); and the de-risked elements of confidential data preserve at least one of a format, a structure, or a composition of the elements of confidential data (the masking masks a data field by masking the attributes for each of the entities, in order words by changing the values of those attributes (for instance changing a 9-digit Social Security Number to be ' 111-11-1111' or 'XXX-XXXXXX'). Banipal ¶ 26.).
Regarding claims 24 and 36, Banipal discloses the limitations of claims 21 and 33, respectively, wherein the at least one computing system is configured to perform operations that at least one of (i) train adaptively a machine-learning or artificial-intelligence process based on portions of the output data table or (ii) apply the trained machine-learning or artificial-intelligence process to portions of the output data table (Banipal ¶ 45.).
Regarding claims 27 and 38, Banipal discloses the limitations of claims 21 and 33, respectively, wherein: the de-risked column within the source data table comprises an anonymized column; and the at least one processor is further configured to generate anonymized elements of confidential data based on the application of the de-risking operation to the elements of confidential data within the column of the source data table, the anonymized elements of confidential data establishing the anonymized column within the source data table (based upon the identification of sensitive/non-sensitive attributes, the data owner applies a masking technique to the initial source data and the resulting data set is the initial source data set with generated masked sensitive fields (columns). Banipal Figures 2–3 and ¶¶ 24, 26, and 29.).
Regarding claim 28, Banipal discloses the limitations of claim 27, wherein the anonymized elements of confidential data comprise at least one of an element of fully anonymized data or an element of partially anonymized data (the masking masks a data field by masking the attributes for each of the entities. Banipal ¶ 26.).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 25, 37 rejected under 35 U.S.C. 103 as being unpatentable over Banipal in view of Pomroy (US 2008/0065665 A1, published Mar. 13, 2008).
Regarding claims 25 and 37, Banipal discloses the limitations of claims 21 and 33, respectively. Banipal does not disclose: wherein the at least one processor is further configured to execute the instructions to: obtain a delta table associated with the source data table, the delta table comprising data that identifies the de-risking operation associated with the column within the source data table; and based on the configuration data and the delta table, perform the operations that apply the de-risking operation to the elements of confidential data within the column of the source data table.
However, Pomroy does disclose: wherein the at least one processor is further configured to execute the instructions to: obtain a delta table associated with the source data table, the delta table comprising data that identifies the de-risking operation associated with the column within the source data table; and based on the configuration data and the delta table, perform the operations that apply the de-risking operation to the elements of confidential data within the column of the source data table (data masking is conducted for all required confidential data fields by populating the empty delta data records with the masked data according to the data transformation configured at steps 108 and 110 in the user selection process and are later used in the merge step 310 to ce3rate the masked primary data record 412. Pomroy ¶ 73.).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the identification of sensitive data in a data table and anonymizing the data when a new data table is rendered of the Banipal reference with updating a source table associated delta table with data related to the anonymizing operation of the source table based upon the teachings of Pomroy. The motivation being to enhance the performance with bulk loading of the original data as opposed to row-by- row updates. Pomroy ¶ 73.
Claims 30–31, 39 rejected under 35 U.S.C. 103 as being unpatentable over Banipal in view of Parthasarathy (US 2021/0209251 A1, published Jul. 8, 2021).
Regarding claims 30 and 39, Banipal discloses the limitations of claims 21 and 33, respectively. Banipal does not disclose: the de-risked column within the source data table comprises a tokenized column; and the at least one processor is further configured to generate tokenized elements of confidential data based on the application of the de-risking operation to the elements of confidential data within the column of the source data table, the tokenized elements of confidential data establishing the tokenized column within the source data table.
However Parthasarathy does disclose: the de-risked column within the source data table comprises a tokenized column (token mapping table demonstrates the use of tokenization of sensitive data in the database. Parthasarathy Figure 13 and ¶ 104.); and the at least one processor is further configured to generate tokenized elements of confidential data based on the application of the de-risking operation to the elements of confidential data within the column of the source data table, the tokenized elements of confidential data establishing the tokenized column within the source data table (tokenized columns. Parthasarathy Figures 12A–C and 13.).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the identification of sensitive data in a data table and anonymizing the data when a new data table is rendered of the Banipal reference with de-risking columns with tokenization and establishing a tokenized column based upon the teachings of Parthasarathy. The motivation being storing a mapping of the candidates and the generated tokens allows prospective retrieval of inactive sensitive data. Parthasarathy ¶ 104.
Regarding claim 31, Banipal in view of Parthasarathy discloses the limitations of claim 30, wherein the at least one processor is further configured to execute the instructions to: obtain elements of token-based mapping data that associate each of the elements of confidential data with a corresponding digital token; obtain, from the elements of token-based mapping data, the corresponding digital token associated with each of the elements of confidential data, and perform operations that replace each of the elements of confidential data within the column with the corresponding digital token, the digital tokens establishing the tokenized column within the source data table (token mapping table demonstrates the use of tokenization of sensitive data in the database. Parthasarathy Figure 13 and ¶ 104.).
Claims 32 rejected under 35 U.S.C. 103 as being unpatentable over Banipal in view of Avanes (US 2021/0157948 A1, published May 27, 2021).
Regarding claim 32, Banipal discloses the limitations of claim 21. Banipal does not disclose: wherein the at least one processor is further configured to execute the instructions to generate the de-risked data table based on an application of a join operation to the de-risked column within the source data table and to a corresponding anonymized column within one or more additional source data tables.
However, Avanes does disclose: wherein the at least one processor is further configured to execute the instructions to generate the de-risked data table based on an application of a join operation to the de-risked column within the source data table and to a corresponding anonymized column within one or more additional source data tables (masking column data and joining data from two tables. Avanes ¶ 86.).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the identification of sensitive data in a data table and anonymizing the data when a new data table is rendered of the Banipal reference with generating de-risk data based upon a join operation to the de-risked column corresponding one or more additional tables based upon the teachings of Avanes. The motivation being to implement various methods of masking based upon the type of sensitive data and who should be permitted to access the information. Avanes ¶ 86.
Allowable Subject Matter
Claim 26, 29 would be objected to as being dependent upon a rejected base claim were it not for the above double patenting rejection. If the double patenting rejection were to be overcome, these claims would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VANCE M LITTLE whose telephone number is (571) 270-0408. The examiner can normally be reached on Monday - Friday 9:30am - 5:30pm.
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/VANCE M LITTLE/Primary Examiner, Art Unit 2493
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