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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/330,998
`
`05/26/2021
`
`Avi SHUA
`
`15635.0003-01000
`
`3062
`
`EIN
`
`EN
`
`ARAB
`
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
`LLP
`901 NEW YORK AVENUE, NW
`WASHINGTON,DC 20001-4413
`
`SAADOUN, HASSAN
`
`2435
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/30/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`regional-desk @ finnegan.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-4,6-15 and 17-21 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C] Claim(s)__ is/are allowed.
`Claim(s) 1-4,6-15 and 17-21 is/are rejected.
`(1 Claim(s)__is/are objectedto.
`C} Claim(s)
`are subjectto restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11) The drawing(s) filed on 05/26/2021 is/are: a)[¥) accepted or b)(. 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).
`
`Priority under 35 U.S.C. § 119
`12)Z) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)X) All
`1.2 Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
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`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220613
`
`Application No.
`Applicant(s)
`17/330,998
`SHUA, Avi
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`HASSAN SAADOUN
`2435
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 06/01/2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/330,998
`Art Unit: 2435
`
`Page 2
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`Notice of Pre-AlA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Response to Amendment
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`2.
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`The Amendment filed 06/01/2022 has been entered. Claims 1-2, 4, 11-12 have
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`been amended. Claims 5 and 16 are canceled. Claims 1-4, 6-15 and 17-21 are pending
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`in this application.
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`3.
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`Applicant's arguments with respect to Specification objection have been fully
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`considered and persuasive. The objection has been withdrawn.
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`Response to Argument
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`4.
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`Applicant's arguments filed on 06/01/2022 with respect to claims 1-21 Statutory
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`Double Patenting rejection with respect to claims 1-21 of copending application
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`16/585,967 have been fully considered and persuasive. The rejection has been
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`withdrawn.
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`Double Patenting
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`5.
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`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine groundedin public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory
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`obviousness-type double patenting rejection is appropriate where the conflicting claims
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`

`

`Application/Control Number: 17/330,998
`Art Unit: 2435
`
`Page 3
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`are not identical, but at least one examined application claim is not patentably distinct
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`from the reference claim(s) because the examined application claim is either anticipated
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`by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140
`
`F.3d 1428, 46 USPQe2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29
`
`USPQe2d 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); and In re Thorington, 418 F.2d 528, 163 USPQ
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`644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d)
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`may be used to overcome an actual or provisional rejection based on a nonstatutory
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`double patenting ground provided the conflicting application or patent either is shown to
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`be commonly ownedwith this application, or claims an invention made as a result of
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`activities undertaken within the scopeof a joint research agreement.
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`Effective January 1, 1994, a registered attorney or agent of record may signa
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`terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
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`37 CFR 3.73(b).
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`6.
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`Claims 1-4, 6-15 and 17-21 are rejected on the ground of nonstatutory
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`obviousness-type double patenting as being unpatentable over claims 1-4, 6-15 and
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`17-21 of copending application No 16/585,967.
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`7.
`
`Although the claims at issue are not identical, they are not patentably distinct
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`from each other becausethey are both claiming a common subject matter “determining
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`a location of a snapshotof at least one virtual disk of a protected virtual cloud asset,
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`accessing the snapshotof the virtual disk based on the determined location, analyzing
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`

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`Application/Control Number: 17/330,998
`Art Unit: 2435
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`Page 4
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`the snapshotof the protected virtual cloud asset to detect potential cyber threats risking
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`the protected virtual cloud asset and alerting detected potential cyber threats based on
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`a determined priority.”.
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`Allowable Subject Matter
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`8.
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`Claims 1-4, 6-15 and 17-21 would be allowable if they overcome the
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`nonstatutory double patenting r@jection, set forth in this office action.
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`9.
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`The following is an examiner’s statement of reasons for identifying allowable
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`subject matter.
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`10.
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`Theclosest prior arts made of records are, Golan et al. (U.S Patent No.
`
`10,944,778 B1, referred to as Golan), Derbeko et al. (U.S Patent No. 10,536,471 B1,
`
`referred to as Derbeko) and Deng et al. (U.S Pub No. 2017/0103212 A1, referred to as
`
`Deng).
`
`Golan discloses a method and system for implementing risk-based cyber
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`security. Specifically, the disclosed method and system entail evaluating risk as a
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`decision threshold for conducting cyber security assessments of system images within
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`cloud computing environments. Further, the disclosed method and system pivot on
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`intelligence pertaining to the latest cyber threats and/or vulnerabilities found worldwide.
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`

`

`Application/Control Number: 17/330,998
`Art Unit: 2435
`
`Page 5
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`Derbekodiscloses a system and a method of detecting malwarein a virtual
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`machine (VM), the method comprising periodically creating snapshots of the VM,
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`analyzing each of the snapshots in comparison to one or more previous snapshots to
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`determine whether anomalies exist, and based on a threshold amount of anomalies
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`detected, scanning the VM to determine whether malwareis detected.
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`Deng discloses determining which snapshotdeltas tend to occur in: (i) healthy
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`virtual machines (VMs) that have been subject to an attack yet remained healthy, and/or
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`(ii) unhealthy VMs that have apparently been adversely affected by an attack. Snapshot
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`deltas that occur in at least some (or more preferably all) of the healthy VM subset
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`provide information about software changes (for example, updates, configuration
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`changes) that may be helpful. Snapshot deltas that occur in at least some (or more
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`preferably all) of the unhealthy VM subsets provide information about software changes
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`(for example, updates, configuration changes) that may be unhelpful.
`
`11.|However, regarding claims 1 and 11, the prior art of Golan, Derbeko and Deng
`
`when taken in the context of the claim as a whole do not disclose nor suggest,
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`determining a location of a snapshotof at least one virtual disk of a protected virtual
`
`cloud asset, wherein the virtual cloud assetis instantiated in the cloud computing
`
`environment; taking a new snapshotof the protected virtual cloud asset, when an
`
`existing snapshot cannot be located; accessing the snapshotof the virtual disk based
`
`on the determined location; analyzing the snapshotof the protected virtual cloud asset
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`to detect potential cyber threats risking the protected virtual cloud asset; and alerting
`
`detected potential cyber threats based on a determinedpriority.
`
`

`

`Application/Control Number: 17/330,998
`Art Unit: 2435
`
`Page 6
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`t2.
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`Regarding claim 12, the prior art of Golan, Derbeko and Deng when taken in the
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`context of the claim as a whole do not disclose nor suggest, “determine a location of a
`
`snapshotof at least one virtual disk of a protected virtual cloud asset, wherein the virtual
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`cloud assetis instantiated in the cloud computing environment; take a new snapshotof
`
`the protected virtual cloud asset, when an existing snapshot cannot be located; access
`
`the snapshotof the virtual disk based on the determined location; analyze the snapshot
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`of the protected virtual cloud asset to detect potential cyber threats risking the protected
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`virtual cloud asset; and alert detected potential cyber threats based on a determined
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`priority.”.
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`13.
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`Claims 2-4 and 6-10 depend on claim 1 and claims 13-15 and 17-21 depend
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`on claim 12, and are of consequence allowed.
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`14.|The prior art made of record and notrelied upon is considered pertinent to
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`applicant's disclosure: See PTO-892.
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`Conclusion
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`Applicant's amendment necessitated the new ground(s) of rejection presented in
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
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`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
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`CFR 1.136(a).
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`A shortenedstatutory period for reply to this final action is set to expire THREE
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`
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`MONTHS from the mailing date of this action. In the eventafirst replyis filed within
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`

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`Application/Control Number: 17/330,998
`Art Unit: 2435
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`Page 7
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`TWO MONTHS ofthe mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortenedstatutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to HASSAN SAADOUN whosetelephone number is
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`(571)272-8408. The examiner can normally be reached Mon-Fri 9:00-5:00.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Awww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Joseph Hirl can be reached on 571-272-3685. The fax phone number for the
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`organization where this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of published or unpublished applications may be
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`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:/Awww.uspto.gov/patents/apply/patent-
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`center for more information about Patent Center and
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`https:/Awww.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
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`

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`Application/Control Number: 17/330,998
`Art Unit: 2435
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`Page 8
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`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.
`
`/HASSAN SAADOUN/
`Examiner, Art Unit 2435
`
`/JOSEPH P HIRL/
`Supervisory Patent Examiner, Art Unit 2435
`
`