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 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 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.
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 39 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claim 39 is directed to a system that when interpreted in light of the specification may read on software alone which is non-statutory. In order to comply, the claimed system must explicitly comprise hardware (e.g. a processor, memory) so they may not be reasonably interpreted as software alone.
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 21-40 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 pre-AIA the applicant regards as the invention.
Claim 21 recites, “accessing a data collection including identified information to generate a de-identified copy of the data collection; determining a first amount of residual identified information of a first type of residual identified information in the generated de-identified copy.” Such recitation is incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are what is the basis for the residual identified information. Further the omitted steps create a clarity issue.
Specifically, the claim language only positively recites, “accessing a data collection including identified information” that in turn is “to generate a de-identified copy of the data collection,” but “to generate” is only an intention, the “de-identified copy” may not be actually generated. Then the claim follows with “residual identified information in the generated de-identified copy.” which simply begs questions. Is this residual information from the accessing? From the maybe happened “generation”? The claim could likely solve this issue by more clearly establishing whether the generating actually occurs and how and when the “residual identified information” is actual determined or generated.
Further still, stating, “residual identified information in the generated de-identified copy” contradicts itself because how could there be “residual identified information” in a “de-identified copy.”
Claims 39 and 40 recite similar limitations to that recited in claim 21 and are similarly rejected.
Allowable Subject Matter
Claims 21-40 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and 35 U.S.C. 101 set forth in this Office action provided such amendments do not necessitate any new grounds of rejection(s).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure are listed on the attached PTO 892 and their relevance can be seen in the parent case of this application, US Pat. 12,321,484.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J DAILEY whose telephone number is (571)270-1246. The examiner can normally be reached 9:30am-6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Umar Cheema can be reached on 571-270-3037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS J DAILEY/ Primary Examiner, Art Unit 2458
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