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 .
1. This is in response to communication filed on 7/29/25 in which claims 2-21 are pending.
Double Patenting
2. 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 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,381838 to Mears. Although the claims at issue are not identical, they are not patentably distinct from each other because they both recite the same method and system of stateful email detection ushing schemaless data fragments.
U.S. Patent No. 12,381838
U.S. Application No. 19/264737
1. A computer-implemented method comprising: sending email scan requests to an email scanner, wherein each email scan request includes one or more emails of a plurality of emails;
receiving, from the email scanner, for each email of the plurality of emails, a verdict of suspicion and one or more data fragments, the one or more data fragments each including a count,
wherein the one or more data fragments for each email are generated by the email scanner based on content of the email;
storing the one or more data fragments for each email of the plurality of emails in a datastore, wherein the datastore is indexed by one or more keys that are derived from the email and wherein one or more respective counts for the one or more data fragments are incremented responsive to receiving the verdict of suspicion;
receiving a new email; deriving one or more new keys for the new email; retrieving one or more matching data fragments from the datastore by matching the one or more new keys with the one or more keys stored in the datastore;
providing, to the email scanner, the new email, the one or more matching data fragments, and the one or more respective counts for the one or more matching data fragments;
and receiving, from the email scanner, a new verdict of suspicion and one or more new data fragments, wherein the new verdict of suspicion is based on the one or more respective counts for the one or more matching data fragments.
2. A computer-implemented method comprising: sending email scan requests to an email scanner, wherein each email scan request includes one or more emails of a plurality of emails;
receiving, from the email scanner, for each email of the plurality of emails, a verdict of suspicion and one or more data fragments,
wherein the one or more data fragments for each email are generated by the email scanner based on metadata associated with the email;
storing the one or more data fragments for each email of the plurality of emails in a datastore, wherein the datastore is indexed by one or more keys that are derived from the email;
receiving a new email; deriving one or more new keys for the new email; retrieving one or more matching data fragments from the datastore by matching the one or more new keys with the one or more keys stored in the datastore;
providing, to the email scanner, the new email, the one or more matching data fragments;
and receiving, from the email scanner, a new verdict of suspicion and one or more new data fragments, wherein the new verdict of suspicion is based on the metadata associated with the one or more matching data fragments.
8. (New) The computer-implemented method of claim 2, further comprising storing a count of the verdict of suspicion as an additional data fragment in the datastore.
It would have been obvious to one with ordinary skill in the art to omit the recitation of the one or more data fragments each including a count, and wherein one or more respective counts for the one or more data fragments are incremented responsive to receiving the verdict of suspicion and providing, to and the one or more respective counts for the one or more matching data fragments from the recitation of the presented independent claim in order to broaden the claimed language.
Claim Rejections - 35 USC § 102
3. 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.
4. Claims 1-10 and 12-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. publication No. 2007/0214220 to Aslop et al.
a. As per claim 2, Aslop et al teaches a computer-implemented method comprising: sending email scan requests to an email scanner, wherein each email scan request includes one or more emails of a plurality of emails (See paragraph [0058 and 0060]);receiving, from the email scanner, for each email of the plurality of emails, a verdict of suspicion and one or more data fragments (See paragraph [0028 and 0029]), wherein the one or more data fragments for each email are generated by the email scanner based on metadata associated with the email (See paragraph [0029]); storing the one or more data fragments for each email of the plurality of emails in a datastore, wherein the datastore is indexed by one or more keys that are derived from the email (See paragraph [0039-0042]); receiving a new email (See paragraph [0046]); deriving one or more new keys for the new email (See paragraph [0047], creates fingerprints of the arrange fragments ); retrieving one or more matching data fragments from the datastore by matching the one or more new keys with the one or more keys stored in the datastore (See paragraph 0051]) ;providing, to the email scanner, the new email, the one or more matching data fragments (See paragraph [0053]) ;and receiving, from the email scanner, a new verdict of suspicion and one or more new data fragments, wherein the new verdict of suspicion is based on the metadata associated with the one or more matching data fragments (See paragraph [0053-0054]).
b. As per claim 12, Alsop et al teaches a device comprising: one or more processors; and one or more computer-readable media, having instructions stored thereon that, when executed by the one or more processors, cause the one or more processors to perform operations comprising: sending email scan requests to an email scanner, wherein each email scan request includes one or more emails of a plurality of emails (See paragraph [0058 and 0060]); receiving, from the email scanner, for each email of the plurality of emails, a verdict of suspicion and one or more data fragments, wherein the one or more data fragments for each email are generated by the email scanner based on metadata associated with the email (See paragraph [0029]); storing the one or more data fragments for each email of the plurality of emails in a datastore, wherein the datastore is indexed by one or more keys that are derived from the email (See paragraph [0039-0042]); receiving a new email (See paragraph [0046]); deriving a new key for the new email (See paragraph [0047]); retrieving one or more matching data fragments from the datastore by matching the new key with the keys stored in the datastore (See paragraph [0047]); providing, to the email scanner, the new email, the one or more matching data fragments (See paragraph [0053]); and receiving, from the email scanner, a new verdict of suspicion and one or more new data fragments, wherein the new verdict of suspicion is based on the metadata associated with the one or more matching data fragments (See paragraph [0053-0054]).
c. As per claim 17, Alsop et al teaches a computer-program product that includes one or more non-transitory computer- readable media with instructions stored thereon that, when executed by one or more computers, cause the one or more computers to perform operations comprising: sending email scan requests to an email scanner, wherein each email scan request includes one or more emails of a plurality of emails (See paragraph [0058-0060]); receiving, from the email scanner, for each email of the plurality of emails, a verdict of suspicion and one or more data fragments, wherein the one or more data fragments for each email are generated by the email scanner based on metadata associated with the email (See paragraph [0029]);storing the one or more data fragments for each email of the plurality of emails in a datastore, wherein the datastore is indexed by one or more keys that are derived from the email (See paragraph [0039-0042]); receiving a new email (See paragraph [0046]); deriving one or more new keys for the new email (See paragraph [0047]); retrieving one or more matching data fragments from the datastore by matching the one or more new keys with the one or more keys stored in the datastore (See paragraph [0047]); providing, to the email scanner, the new email, the one or more matching data fragments (See paragraph [0053]); and receiving, from the email scanner, a new verdict of suspicion and one or more new data fragments, wherein the new verdict of suspicion is based on the metadata associated with the one or more matching data fragments (See paragraph [0053-0054]). .
d. As per claims 3, 13 and 18, Alsop teaches the claimed invention as described above. Furthermore, Alsop teaches wherein the email scanner further determines the new verdict of suspicion based on details associated with the one or more matching data fragments, wherein the details are selected from a group of a time span, respective counts, customer information, and combinations thereof (See paragraph [0056]).
e. As per claims 4, 14 and 19, Alsop teaches the claimed invention as described above. Furthermore, Alsop teaches wherein the one or more data fragments for each email are further generated by the email scanner based on content of the email (See paragraph [0012 and 0046], each incoming email received is processed to arrange its contents into fragments).
f. As per claims 5, 15 and 20, Alsop teaches the claimed invention as described above. Furthermore, Alsop teaches wherein the new verdict of suspicion indicates a threat level associated with the new email, and further comprising: performing one or more actions on the new email, wherein the one or more actions are based on the threat level associated with the new email (See paragraph [0026-0027]) and wherein the one or more actions are selected from the group of adding a banner to the new email, blocking the new email, archiving the new email, quarantining the new email, delivering the new email to a recipient with a warning, or combinations thereof, wherein the one or more actions are selected based on the threat level associated with the new email (See paragraph [0025-0027]).
g. As per claim 6, Alsop teaches the claimed invention as described above. Furthermore, Alsop teaches wherein receiving the verdict of suspicion and the one or more data fragments for each email comprises receiving a respective fragment name for each of the data fragments, wherein each fragment name is particular to a type of data fragment (See paragraph [0039], email message 100 has been arranged into six fragments, namely the above-mentioned "To" address data field 104, "From" address data field 108, "Subject" line data field 112, main message body data field 116; signature 120 and disclaimer 124. If the main body message field of email 100 included two or more paragraphs, it is contemplated that each paragraph can be arranged as a separate fragment, or portions of each paragraph can be arranged as separate fragments, etc).
h. As per claims 7, 16 and 21, Alsop teaches the claimed invention as described above. Furthermore, Alsop teaches wherein the one or more data fragments further include features that are selected from the group of: a unique identifier of the email scanner, a feature derived from the email, an email type that indicates whether the email is inbound or outbound, and combinations thereof (See paragraph [0014 and 0039]).
i. As per claim 8, Alsop teaches the claimed invention as described above. Furthermore, Alsop teaches further comprising storing a count of the verdict of suspicion as an additional data fragment in the datastore (See paragraph [0041, 0053 and 0061]).
j. As per claim 9, Alsop teaches the claimed invention as described above. Furthermore, Alsop teaches wherein each data fragment is associated with a timestamp, the method further comprising: detecting one or more expired data fragments based on a difference between a respective timestamp associated with the one or more data fragments and a current timestamp (see paragraph [0043], wherein a particular data fragment is determined to be expired if the difference meets a threshold difference (See paragraph [0043]); and deleting the one or more expired data fragments from the datastore (See paragraph [0013]).
k. As per claim 10, Alsop teaches the claimed invention as described above. Furthermore, Alsop teaches further comprising deriving the one or more keys from the email, wherein the one or more keys identify one or more email fields extracted from the email, wherein the one or more email fields are selected from the group of a sender address, a recipient address, a client Internet Protocol (IP) address, a conversation identifier, a customer identifier, and combinations thereof (See paragraph [0039 and 0043]).
Claim Rejections - 35 USC § 103
5. 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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
6. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. publication No. 2007/0214220 to Aslop et al in view of U.S. Patent No. 8,682964 to Brundage et al.
a. As per claim 11, Alsop teaches the claimed invention as described above. However, Alsop fails to teach wherein the one or more data fragments are in a JavaScript Object Notation (JSON) format, and wherein the datastore is a key value store or a relational database.
Brundage et al teaches wherein the one or more data fragments are in a JavaScript Object Notation (JSON) format, and wherein the datastore is a key value store or a relational database (See col. 3, lines 31-33).
It would have been obvious to one with ordinary skill in the art to incorporate the teaching of Brundage et al in the claimed invention of Aslop in order to provide an alternative standardized format for data fragments.
Conclusion
7. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Publication No. 2006/0168028 to Duxbury et al teaches System and Method for Confirming That the Origin of An Electronic Mail Message is Valid.
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DJENANE BAYARD whose telephone number is (571)272-3878. The examiner can normally be reached 9-5.
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, John Follansbee can be reached at (571)272-3964. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DJENANE M BAYARD/Primary Examiner, Art Unit 2444
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