DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Responsive to the communication dated 07/28/2025
Claims 1-3, 5, 7, 11-12, 14-17, and 19-23 are presented for examiner
Information Disclosure Statement
The IDS dated 08/24/2021 and 12/24/2024 have been reviewed. See attached.
Specification
The abstract dated 08/24/2021 has been reviewed. It has 117 words and 9 lines and no legal phraseology. It is accepted.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Finality
THIS ACTION IS MADE FINAL. 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 extension fee 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.
Response to Arguments -101
Applicant’s arguments, see Pages 7-10, filed 07/28/2025, with respect to the rejection of claims have been fully considered and are persuasive. The rejection of claims 1-3, 5, 7, 11-12, 14-17, and 19-23 under 101 has been withdrawn.
Response to Arguments -103
The 103 rejection is withdrawn in view of the present amendments, when given their BRI in view of MPEP 2143.03(II): "When evaluating claims for obviousness under 35 USC § 103 all the limitations of the claims must be considered and given weight, including limitations which do not find support in the specification as originally filed (i.e., new matter). Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983) aff’d mem. 738 F.2d 453 (Fed. Cir. 1984)"
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 5, 7, 11-12, 14-17, and 19-23 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
There does not appear to be support for the new amendment requiring “generating one or more code blocks that call the APIs corresponding to the SW representation blocks of the first block set without any changes to the designed model after the simulation process was executed on the computer”
The arguments point to paragraphs 25 and 28 of the specification and figure 1 of the drawings, but none of these disclose generation specifically without changes to the model after the simulation. A further review of the specification and figures did not find support anywhere else in the disclosure. See MPEP 2173.05(I): The mere absence of a positive recitation is not basis for an exclusion. However, a lack of literal basis in the specification for a negative limitation may not be sufficient to establish a prima facie case for lack of descriptive support. Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd. Pat. App. & Inter. 1993). "Rather, as with positive limitations, the disclosure must only 'reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.' ... While silence will not generally suffice to support a negative claim limitation, there may be circumstances in which it can be established that a skilled artisan would understand a negative limitation to necessarily be present in a disclosure." Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 2022 USPQ2d 569 (Fed. Cir. 2022) (quoting Ariad Pharm. Inc. v. Eli Lilly & Co., 589 F.3d 1336, 1351, 94 USPQ2d 1161, 1172). Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael P Mirabito whose telephone number is (703)756-1494. The examiner can normally be reached M-F 10:30 am - 6:30 pm.
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/M.P.M./Examiner, Art Unit 2187
/EMERSON C PUENTE/Supervisory Patent Examiner, Art Unit 2187
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