DETAILED ACTION
This Action is in consideration of the Applicant’s response on August 20, 2026. Claims 1, 4, 10, and 14 are amended by the Applicant. Claims 1 – 18, where Claims 1 and 10 are in independent form, are presented for examination.
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 .
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 – 18 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.
1. Regarding Claims 1 and 10, the amendment recites “wherein constructing the prompt package comprises retrieving candidate contextual data elements from a data store…evaluating each retrieved candidate contextual data element of the plurality of candidate contextual data elements against the security decision record, and excluding from the prompt package each candidate contextual data element not authorized by the security decision record[.]” However, it is not clear how “the plurality of candidate contextual data elements” are applied within the claim. Are the plurality of candidate contextual data elements referring to the elements in the data store or the retrieved candidate contextual data elements. Likewise, it is not clearly indicated that the candidate contextual data element(s) that are excluded are from the same “retrieved candidate contextual data elements.”
2. Claims 1 and 10 recite the limitation " the plurality of candidate contextual data elements " in which the plurality is not previously recited. There is insufficient antecedent basis for this limitation in the claim.
3. Regarding Claims 1 and 10, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claims recite the broad recitation of various enforcement actions to produce a compliant output, and the claim also recites that one of the enforcement actions is to block the candidate output, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
4. Regarding Claims 1 and 10, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claims recite “analyzing…the candidate output to detect whether the candidate output violates a security constraint, a privacy constraint, or a regulatory constraint,” and the claim also recites that “releasing…only an output that satisfies the security constraint, the privacy constraint, and the regulatory constraint,” which is the narrower statement of the range/limitation. The released output is claimed to satisfy all three (3) constraints, whereas the analyzing requires only one of the constraints. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
5. Regarding Claims 2 – 9 and 11 – 18, the claims are rejected based on their dependency of Claims 1 and 10 and under the same rationales indicated above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contacts
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE K KIM whose telephone number is (571)270-1979. The examiner can normally be reached M-F 9:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jorge Ortiz-Criado can be reached at 5712727642. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAE K KIM/Primary Examiner, Art Unit 2496
