Prosecution Insights
Last updated: August 17, 2026
Application No. 19/195,086

MALWARE ANALYSIS OF DATA/FILES PRIOR TO STORAGE IN ISOLATED SECURE ENVIRONMENT

Non-Final OA §102§112
Filed
Apr 30, 2025
Priority
Apr 22, 2021 — provisional 63/177,998 +1 more
Examiner
WADE-WRIGHT, SHAQUEAL D
Art Unit
Tech Center
Assignee
Palo Alto Networks Inc.
OA Round
1 (Non-Final)
85%
Grant Probability
Favorable
1-2
OA Rounds
1y 0m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 85% — above average
85%
Career Allowance Rate
386 granted / 454 resolved
+25.0% vs TC avg
Strong +18% interview lift
Without
With
+18.2%
Interview Lift
resolved cases with interview
Typical timeline
2y 4m
Avg Prosecution
20 currently pending
Career history
466
Total Applications
across all art units

Statute-Specific Performance

§101
15.9%
-24.1% vs TC avg
§103
48.7%
+8.7% vs TC avg
§102
7.8%
-32.2% vs TC avg
§112
18.1%
-21.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 454 resolved cases

Office Action

§102 §112
DETAILED ACTION 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 The information disclosure statement (IDS) submitted on 06/16/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. 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. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: 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 of carrying out his invention. Claims 11-15 are 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. The claim recite limitation “a non-transitory machine-readable medium having program code stored thereon”, however, applicant specification is void of any medium or program code. 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, 4, 4-6, 8-9, 11-12, 14-17 and 19-20 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. Claims 1, 4, 4-6, 8-9, 11-12, 14-17 and 19-20 use the term “and/or”. This term renders the scope of the claim language unclear because it is not clear whether all of the limitations are required or not, in order to fall within the scope of the claim. The use of "and" in the language would require all the limitations to be present in order to fall within the scope of the claim language. The use of "or" in the language would only require one of the limitations to be present in order to fall within the scope of the claim language. The use of "and/or" makes the applicants intended scope unclear because one of ordinary skill in the art would be unable to determine whether or not all of the listed limitations are required or not. Therefore, the claims are rejected for failing to specifically point out and distinctly claim the subject matter which the inventors regard as the invention. Claim Rejections - 35 USC § 102 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. 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. Claim(s) 1-7, 11-14 and 16-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kashyap et al. (US Pub No. 2017/0180427). Regarding independent claim 1, Kashyap teaches a method comprising: a browser at an endpoint obtaining data and/or a file prior to writing, opening, and/or executing the data and/or file to local storage and/or remote storage (Kashyap, page 11, paragraphs 0109-0110 and page 15,paragraphs 0152-0153; store digital content in intermediate location such as cache prior to storing); scanning the data and/or file to validate whether the data and/or file is benign at the endpoint and/or at a remote server (Kashyap, pages 15-16, paragraphs 0152-0154, page 17, paragraph 0164,page 12, paragraph 0113 and claim 1; verify any data prior to written to destination based on policy data; make sure data is not corrupt); and based on validating that the data and/or file is benign, writing, opening, and/or executing the data and/or file to disk and/or memory of the local storage and/or remote storage (Kashyap, page 17, paragraph 0164). Regarding claim 2, Kashyap teaches the method wherein writing, opening, and/or executing the data and/or file to the disk and/or memory of the local storage and/or remote storage comprises writing, opening, and/or executing the data and/or file with access restricted to the browser and/or a user of the browser (Kashyap, page 14, paragraphs 0134-0135 and page 6, paragraphs 0056 & 0059). Regarding claim 3, Kashyap teaches the method wherein scanning the file to validate whether the file is benign comprises downloading and scanning the file at the remote storage (Kashyap, page 15, paragraphs 0152-0153; copying object in clipboard and performing policy check). Regarding claim 4, Kashyap teaches the method wherein scanning the data and/or file to validate whether the data and/or file is benign comprises scanning the file according to a security policy (Kashyap, pages 15-16, paragraphs 0153-0154 and page 17, paragraph 0164). Regarding claim 5, Kashyap teaches the method further comprising, based on validating that the file is benign, configuring the file for storage at the endpoint and/or remote storage (Kashyap, pages 16-17, paragraph 0163; neutralize any threats). Regarding claim 6, Kashyap teaches the method wherein the data and/or the file comprises the file, wherein scanning the data and/or file to validate whether the data and/or file is benign comprises converting a format of the file (Kashyap, pages 16-17, paragraph 0163; neutralize any threats; converted simple format). Regarding claim 7, Kashyap teaches the method wherein converting the format of the file comprises at least one of, converting the file from a first Portable Document Format file to second Portable Document Format file, wherein the second Portable Document Format file comprises images of rendered content in the file; converting the file from a Microsoft® Word document to a text file; and removing Microsoft Office macros from the file (Kashyap, pages 16-17, paragraph 0163; neutralize any threats; converted simple format). Regarding independent claim 11, Kashyap teaches a non-transitory machine-readable medium having program code stored thereon, the program code comprising: first instructions to obtain data and/or a file prior to writing, opening, and/or executing the data and/or file to local storage and/or remote storage (Kashyap, page 11, paragraphs 0109-0110 and page 15,paragraphs 0152-0153; store digital content in intermediate location such as cache prior to storing); second instructions to scan the data and/or file to validate whether the data and/or file is benign at the endpoint and/or at a remote server (Kashyap, pages 15-16, paragraphs 0152-0154, page 17, paragraph 0164,page 12, paragraph 0113 and claim 1; verify any data prior to written to destination based on policy data; make sure data is not corrupt); and based on validating that the data and/or file is benign, third instruction to write, open, and/or execute the data and/or file to disk and/or memory of the local storage and/or remote storage (Kashyap, page 17, paragraph 0164). Regarding claim 12, Kashyap teaches the non-transitory machine-readable medium wherein the instructions to write, open, and/or execute the data and/or file to the disk and/or memory of the local storage and/or remote storage comprise instructions to write, open, and/or execute the data and/or file with access restricted to the browser and/or a user of the browser (Kashyap, page 14, paragraphs 0134-0135 and page 6, paragraphs 0056 & 0059). Regarding claim 13, Kashyap teaches the non-transitory machine-readable medium wherein the instruction to scan the file to validate whether the file is benign comprises download and scan the file at the remote storage (Kashyap, page 15, paragraphs 0152-0153; copying object in clipboard and performing policy check). Regarding claim 14, Kashyap teaches the non-transitory machine-readable medium wherein the data and/or the file comprises the file, wherein scanning the data and/or file to validate whether the data and/or file is benign comprises instructions to convert a format of the file (Kashyap, pages 16-17, paragraph 0163; neutralize any threats; converted simple format). Regarding independent claim 16, Kashyap teaches a system comprising: a remote server; and an endpoint that obtains data and/or a file prior to writing, opening, and/or executing the data and/or file to local storage and/or remote storage (Kashyap, page 11, paragraphs 0109-0110 and page 15,paragraphs 0152-0153; store digital content in intermediate location such as cache prior to storing); at least one of the endpoint and the remote server that, scans the data and/or file to validate whether the data and/or file is benign at the endpoint and/or at a remote server (Kashyap, pages 15-16, paragraphs 0152-0154, page 17, paragraph 0164,page 12, paragraph 0113 and claim 1; verify any data prior to written to destination based on policy data; make sure data is not corrupt); and based on validating that the data and/or file is benign, writing, opening, and/or executing the data and/or file to disk and/or memory (Kashyap, page 17, paragraph 0164). Regarding claim 17, Kashyap teaches the system wherein the at least one of endpoint and remote server writing, opening, and/or executing the data and/or file to the disk and/or memory comprises the at least one of endpoint and remote server writing, opening, and/or executing the data and/or file with access restricted to the browser and/or a user of the browser (Kashyap, page 14, paragraphs 0134-0135 and page 6, paragraphs 0056 & 0059). Regarding claim 18, Kashyap teaches the system wherein the remote server scanning the file to validate whether the file is benign comprises the remote server downloading and scanning the file at the remote storage (Kashyap, page 15, paragraphs 0152-0153; copying object in clipboard and performing policy check). Regarding claim 19, Kashyap teaches the system wherein the data and/or the file comprises the file, wherein the at least one of endpoint and remote server scanning the data and/or file to validate whether the data and/or file is benign comprises the at least one of endpoint and remote server converting a format of the file (Kashyap, pages 16-17, paragraph 0163; neutralize any threats; converted simple format). Allowable Subject Matter Claims 8-10, 15 and 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st and paragraph 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Examiner’s Statement for indicating Allowable Subject Matter The following is a statement of reasons for the indication of allowable subject matter: The prior art Xu et al. (US Pub No. 2017/0262629) discloses cookies watermarking in malware analysis are disclosed. In some embodiments, a system, process, and/or computer program product for cookies watermarking in malware analysis includes receiving a sample at a cloud security service; detonating the sample in an instrumented virtual environment; and determining that the sample is malware based on detecting an attempt to access a watermark cookie during an automated malware analysis using the instrumented virtual environment. (Xu, Abstract), and Comstock et al. (US Pub No. 2017/0180497) discloses a system for monitoring online activities of users. A server of a link shortening system may include a cookie management engine and a resource identification engine. The cookie management engine may be configured to provide a cookie to a client device responsive to receiving from a client device, a first request from a first resource to access a first link that is encoded by the link shortening system and linked to a second resource. The resource identification engine may be configured to identify from the first request, the cookie, the first resource and the second resource, receive a second request to access a second link that is encoded by the link shortening system and linked to a third resource, identify from the second request, the same cookie provided to the client device by the cookie management engine and the third resource, and identify, via the cookie provided to the client device, that the client device has accessed the first resource, the second resource and the third resource. (Comstock, paragraph 0040), however, the prior art taken alone or in combination does not teach or suggest “modifying the data and/or file to include unique data; monitoring an environment external to the local storage and/or remote storage for attempts to access the unique data; and based on detecting unauthorized access of the unique data in the environment, evaluating a security policy to determine whether to trigger one or more remediation actions” (as recited in claims 8, 15 & 20), in combination with the remaining claim limitations. Prior Art The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Borkar et al. (US Pub No. 2020/0162471). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAQUEAL D WADE whose telephone number is (571)270-0357. The examiner can normally be reached M-F 8:00-5:00. 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, Catherine Thiaw can be reached at 571-270-1138. 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. /SHAQUEAL D WADE-WRIGHT/ Primary Examiner, Art Unit 2407
Read full office action

Prosecution Timeline

Apr 30, 2025
Application Filed
Jul 29, 2026
Non-Final Rejection mailed — §102, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
85%
Grant Probability
99%
With Interview (+18.2%)
2y 4m (~1y 0m remaining)
Median Time to Grant
Low
PTA Risk
Based on 454 resolved cases by this examiner. Grant probability derived from career allowance rate.

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