UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`16/144,790
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`09/27/2018
`
`Ishaan Nerurkar
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`32552-39379/US
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`8547
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`FENWICK & WEST LLP
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`SILICON VALLEY CENTER
`801 CALIFORNIA STREET
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`MOUNTAIN VIEW, CA 94041
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`LEUNG~ ROBERT B
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`2494
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`10/17/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
`PTOC @ Fenwiek.eom
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`PTOL-90A (Rev. 04/07)
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`

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`0/7709 A0170” Summary
`
`Application No.
`16/144,790
`Examiner
`ROBERT B LEUNG
`
`Applicant(s)
`Nerurkar et al.
`Art Unit
`2494
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`AIA (FITF) Status
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
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`1)[:] Responsive to communication(s) filed on
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)C] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4):] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`[:1 Claim(s) _ is/are allowed.
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`Claim(s) 1,5—8,12—15 and 19—20 is/are rejected.
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`Claim(s) 2—4,9—11 and 16—18 is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`C] Claim(s)
`9
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.”smong/patents/init_event§/pph/index.'sp or send an inquiry to PPeredhack@g§ptg.ggv.
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`Application Papers
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`10)C] The specification is objected to by the Examiner.
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`11). The drawing(s) filed on 27 September 2018 is/are: a). accepted or b)E] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`12)C] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)C] All
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`b)C] Some**
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`c)C] None of the:
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`1C] Certified copies of the priority documents have been received.
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`2C] Certified copies of the priority documents have been received in Application No.
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`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper N0(S)/Mai| Date 11/7/18, 3/20/19, 6/20/19, 9/9/19_
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190930
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`

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`Application/Control Number: 16/144,790
`Art Unit: 2494
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013,
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`is being examined underthe
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`first inventorto file provisions ofthe AIA.
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`Continuation
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`This application is a continuation—in—part application of U.S. 15/203,797 (filed onJul. 7,
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`2016 — now U.S. Patent No. 10,192,069). The prosecution history and references cited inthe
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`above application have been fully considered.
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`Information Disclosure Statement
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`The information disclosure statements (IDS) submitted on 11/7/2018, 3/20/2019,
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`6/20/2019, and 9/9/2019 are in compliance with the provisions of 37 CFR 1.97. Accordingly,
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`the information disclosure statement is being considered by the examiner.
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`Claim Rejections - 35 USC § 112
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`The followingisa quotation of 35 U.S.C.112(b):
`(b) CONCLUSION—Thespecification shallcondudewithoneormore claims particularly pointing out
`a nd distinctly cl aimingthe s ubject matter which the inve ntor or a joint inventor regards as the
`invention.
`
`The followingisa quotation of 35 U.S.C.112 (pre—AIA), second paragraph:
`The s pecification s hall conclude with one or more claims particularly pointingout a nd distinctly
`cl a imingthe su bject matter which the applicant regards as his i nvention.
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`

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`Application/Control Number: 16/144,790
`Art Unit: 2494
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`Page 3
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`Claims 6, 7, 13, 14, 19, and 20 are rejected under 35 U.S.C.112(b) or 35 U.S.C. 112 (pre—
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`AIA), second paragraph, as being indefinite forfailing to particularly point out and distinctly
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`claim the subject matterwhich the inventoror a joint inventor, orfor pre—AIAthe applicant
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`regards as the invention.
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`Claims 6, 7, 13, 14, 19, and 20 dependentclaimsofindependentclaims 1, 8, and 15; and
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`20 recite: ”wherein performing the modified set of operations on the accessed set of data to
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`produce..." However, no limitationsfor”performing the modified set of operations on the
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`assessed set of data..." were found in the parent claims.Therefore it is unclearwhat these
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`limitationsin claims 6, 7, 13, 14, 19, and 20 are further defining.
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`Claim Rejections - 35 USC § 103
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`In the eventthe determination ofthe status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subjectto pre—AIA 35 U.S.C.102 and 103) is incorrect, any correction
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`of the statutory basis for the rejection will not be considered a new grou nd of rejection if the
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`prior art relied upon, and the rationale supporting the rejection, would be the same under
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`eitherstatus.
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`The followingisa quotation of 35 U.S.C.103 which forms the basis for all obviousness
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`rejections setforth in this Office action:
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`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, ifthe differences between the claimed inve ntion
`a nd the prior a rt are such that the claimed invention as a whole would have been obvious before the
`effective filingdate ofthe claimed invention to a person having ordinarys kill i n the art to which the
`claimed invention pertains. Pa tentabilityshall not be negated bythe manner in which the invention
`was made.
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`

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`Application/Control Number: 16/144,790
`Art Unit: 2494
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`Page 4
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`Claims 1, 5—8, 12—15, 19, and 20 are rejected under35 U.S.C. 103 as being unpatentable
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`over A. PATIL et al. (hereinafter, ”PATIL"), ”Differential Private Random Forest", Se pt. 27, 2014
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`in view onhang et al. (hereinafter, ”ZHANG"), U.S. 2014/0283091. Both prior arts cited in the
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`IDS filed 11/7/2018.
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`As per claim 1: PATIL discloses: A method, comprising: Feeei-v-i-Hg-a—Fequest—frem—a-el-ient
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`to generate a differentially private random forest classifier trained using a set of restricted
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`data stored by a private database system (providinga differential privacy mechanism in
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`random forest classification, such that any private information may not be inferred [PATI L, I.
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`_ (
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`-I:-)-el-i-f-fe+=ent-ial-pi=i-vaey; generating the differentially private random forest classifier in
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`response-te—t-he-Fequest (makinga random forest algorithm private [PAT|L, IV. Differential
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`Private Random Forest, pg. 2625]), generating the classifier comprising: determining a number
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`of decision trees comprising the differentially private random forest classifier; generating the
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`determined number of decision trees, generating a decision tree comprising: generating a set
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`of splits based on features of the set of restricted data; determining an information gain for
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`each split of the set of splits; selectinga split from the set of splits using an exponential
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`mechanism based at least in part on the determined information gains of the splits in the set
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`and at least one of the privacy parameters; and adding the selected splitto the decision tree
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`at a node (see Algorithm 1 on pg. 2626 and C. Splitting Criteria on pg. 2626 of PATI L, which
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`Introduction, pg. 2623; Fig. 1])If'he'l‘eqaefl'ldent'lfuinga |
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`|
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`f
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`l'ff
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`,
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`

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`Application/Control Number: 16/144,790
`Art Unit: 2494
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`Page 5
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`discloses using an exponential mechanism with information gain to determine the splitting
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`criteria on private datasets); and-previding—the—differenthallypfivate—randenfierestdasafiefle
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`t-he—el-ient; wherein the differentially private random forest classifier is used to determine
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`whether an entity has a condition (the differentially private random forest can make a
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`prediction (e.g. a classification) while preserving privacy ofthe data used to train the classifier;
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`see [PAT|L, C. Random Forest on pg. 2625 and VII. Conclusion on pp. 2629—2630]).
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`PATIL does not disclose the st-Fi-leet-hreug-helements. Specifically, these elementsare
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`directed to putting the private differential random forest in PATIL into practice, inwhich a
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`”client” can requesta ”differentially private random forest classifier" on restricted/sensitive
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`data based on (e, 6)—diffe re ntial privacy. ZHANG is directed to techniquesfor protecting the
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`privacy of datasets responsive to linearqueries on histograms [ZHANG, 115]. Zhang disclosesan
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`environment, includinga dataset provider, a privacy protector, and a client device for
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`protecting the privacy of data in one or more databases [ZHANG, 1118; Fig. 1]. A query by the
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`client device is received to generate an answer with privacy, wherein the query results would
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`be guaranteed with (e, 6)—diffe re ntial privacy (”receivinga request from a client...identifyinga
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`level of differential privacy...comprising privacy parameters a and 5..."). See [ZHANG, 111123,
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`28— 31, 57]. The query results are provided havingthe desired (a, 6)—differential privacyto the
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`client [ZHANG, 111123, 60]. Therefore, when in combination with ZHANG, a practical system
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`would have been implemented to enable usersto request differentially private random forest
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`classifiers. See also [PAT|L,A. Differential Privacy, pp. 2624—2625] for additional background to
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`differential privacy.
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`

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`Application/Control Number: 16/144,790
`Art Unit: 2494
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`Page 6
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`Thus, it would have been obviousto a person havi ng ordinary skill in the art at the time
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`when the claimed invention was first effectivelyfiled to combine the teachings of PATIL and
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`ZHANG to create a system capable of requestinga random forest classifiergeneratedfrom
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`sensitive data.This would have allowed users to perform statistical analysis on healthcare and
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`financial data without revealing, orallowinginference of, the data being analyzed. See [Zhang,
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`11113, 20].
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`As perclaim 5: PATIL in view onHANG discloses all limitations ofclaim 1. Furthermore,
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`PATIL in view of ZHANG discloses: wherein generating the random forest classifier in response
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`to the request is based on one or more model parameters, including at least one of a number
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`of decision trees to be used in the classifier, a number of splits to include in the decision
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`trees, a maximum tree height, and a utility gain threshold, and wherein each of the one or
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`more model parameters is at least one of a default value and a value included in the request
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`(inputsinclude a private dataset, a set of attributes, class attribute, maximal tree depth,
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`numberof bootstrap sample, and differential privacy budget on the dataset [PATIL,AIgorithm
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`1, pg. 2626]).
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`As perclaim 6: PATILin view onHANG disclosesall limitationsofclaim 1. Furthermore,
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`PATIL in view of ZHANG discloses: wherein the restricted data stores records comprising rows
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`and columns; wherein the rows are associated with patients having a medical condition;
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`wherein the columns contain values describing health data for the patients; and wherein
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`performing the modified set of operations on the accessed set of data to produce the
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`

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`Application/Control Number: 16/144,790
`Art Unit: 2494
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`Page 7
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`differentially private result set comprises estimating whether a new patient has the medical
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`condition (rows and columns of healthcare related data [ZHANG, 111120—21]; fine—grained data
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`about individuals in healthcare were common in the industry [ZHANG, 11111, 3]; therefore,
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`differential privacy is applicable to prese rving the privacy of healthcare data, wherein in view of
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`PATI L, machine learning algorithms, such as random forest classifier, can predict an
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`outcome/condition from known data).
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`As per claim 7: PATILin view onHANG disclosesall limitations ofclaim 1. wherein the
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`set of data stores records comprising rows and columns; wherein the rows are associated
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`with customers having a financial account; wherein the columns contain values describing
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`financial data for the customers; and wherein performing the modified set of operations on
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`the accessed set of data to produce the differentially private result set comprises estimating
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`whether a new customer can perform a financial transaction (fine—grained data about
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`individualsin finance [ZHANG, 111]; rows and columns of collected data related to finance
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`[ZHANG, 1120]; furthermore, PATIL puts a differentially private random forest classifierinto
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`practice on a credit approval dataset [PATI L, TABLE ll—V, pg. 2629]).
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`As perclaim 8: Claim 8 is differentin overall scope from claim 1 but recites substantially
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`similarsubject matter as claim 1. Claim 8 is directed to a non—transitorycomputer—readable
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`storage medium storing computer program instructions corresponding to the method of claim
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`1. Thus, the response provided above for claim 1 is equally applicable to claim 8.
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`

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`Application/Control Number: 16/144,790
`Art Unit: 2494
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`Page 8
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`As perclaim 12: Claim 12 incorporates all limitationsofclaim 8 and isa non—transitory
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`compute r—readable storage medium storing computer program instructions corresponding to
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`the method of claim 5. Therefore, the arguments set forth above with respect to claims 5 and 8
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`are equallyapplicable to claim 12 and rejectedfor the same reasons.
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`As perclaim 13: Claim 13 incorporates all limitationsofclaim 8 and isa non—transitory
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`compute r—readable storage medium storing computer program instructions corresponding to
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`the method of claim 6. Therefore, the arguments set forth above with respect to claims 6 and 8
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`are equallyapplicable to claim 13 and rejectedfor the same reasons.
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`As perclaim 14: Claim 14 incorporates all limitationsofclaim 8 and isa non—transitory
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`compute r—readable storage medium storing computer program instructions corresponding to
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`the method of claim 7. Therefore, the arguments set forth above with respect to claims 7 and 8
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`are equallyapplicable to claim 12 and rejectedfor the same reasons.
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`As perclaim 15: Claim 15 is differentin overall scope from claim 1 but recites
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`substantially similarsubject matter as claim 1. Claim 15 is directed to a system corresponding to
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`the method of claim 1. Thus, the response provided above for claim 1 is equally applicable to
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`claim 15.
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`

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`Application/Control Number: 16/144,790
`Art Unit: 2494
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`Page 9
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`As perclaim 19: Claim 19 incorporates all limitationsofclaim 15 and is a system
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`corresponding to the method of claim 6. Therefore, the arguments set forth above with respect
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`to claims 6 and 15 are equallyapplicable to claim 19 and rejectedfor the same reasons.
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`As perclaim 20: Claim 20 incorporates all limitationsofclaim 15 and is a system
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`corresponding to the method of claim 7. Therefore, the arguments set forth above with respect
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`to claims 7 and 15 are equally applicable to claim 20 and rejected for the same reasons.
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`Allowable Subject Matter
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`Claims 2—4, 9—11, and 16—18 objected to as being dependent upon a rejected base claim,
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`but would be allowable if rewritten in independent form includingall of the limitations ofthe
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`base claim and any intervening claims.
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinenttoapplicant's
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`disclosure.
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`.
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`.
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`U.S. 2011/0238611: Differential privacyapplied to medical data and records.
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`U.S. 2014/0088989: Using distributed learning of patient data to preserve
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`privacy when creating a predictive model of medical knowl edge.
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`

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`Application/Control Number: 16/144,790
`Art Unit: 2494
`
`Page 10
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`Any inquiryconcerning this communication or earliercommunications from the
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`examinershould be directed to ROBERT B LEUNG whose telephone numberis (571)270—1453.
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`/ROBERT B LEUNG/
`
`Primary Examiner, Art Unit 2494
`10— 11—2019
`
`