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 .
Response to Arguments
Claim Objections
Applicant has amended the claims at issue and the previous objections have therefore been withdrawn.
Claim Rejections – 35 USC 112
Applicant's arguments filed 8/5/2026 have been fully considered but they are not persuasive.
Applicant asserts a person of actual skill in the art would understand what structures could be used to implement the claims “units” and would recognize that the inventor was in possession of the claimed invention at the time of filing the application, and has sufficiently overcome the rejection by “stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function” and discusses how the “units” are well-known in the art.
Examiner respectfully disagrees. The Applicant’s assertions rely on evidence not in the record in the Remarks. Applicant should include the references, and a copy when necessary. Furthermore, it is not clear that a single reference, that is not a textbook, would be sufficient to establish a term as well-known in the art.
Applicant further asserts a person of actual skill in the art would understand what structures could be used to implement the claims “units” and would recognize that the inventor was in possession of the claimed invention at the time of filing the application because there is no lack of enablement rejection under 35 U.S.C. 112(a).
Examiner respectfully disagrees. The written description requirement is separate and distinct from the enablement requirement. See MPEP 2161.
Applicant states that the claimed functions can be performed with hardware on an integrated circuit, such as any of the claimed functions, methods, techniques or components described can be implemented in software, firmware, hardware, or any combination thereof.
Applicant’s statement is insufficient in overcoming the 112(a) and 112(b) rejections because it has not discussed at least an algorithm, comprising steps, performing the claimed functions. See MPEP 2181(II)(B).
Prior Art Rejections
Applicant’s arguments, filed 8/5/2026, with respect to prior art have been fully considered and are persuasive. The prior art rejections have been withdrawn.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
element-wise operations unit in claims 3, 5, 16;
activation unit in claims 4, 5, 6;
local response normalisation (LRN) unit in claims 5, 16, 17; and
pooling unit in claims 16.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
As to claims 3, 5, 16’s element-wise operations unit, the examiner interprets the means plus function limitation to the corresponding structure: the algorithm for negation and division as disclosed in [00148], [00160], respectively of the applicant’s specification.
As to claims 4, 5’s activation unit, corresponding structure for the first and second lookup is not found in the specification.
As to claim 6’s activation unit, the examiner interprets the means plus function limitation to the corresponding structure: the algorithm for negation as disclosed in [00148] of the applicant’s specification.
As to claims 5, 16’s local response normalisation (LRN) unit, corresponding structure for performing local response normalization is not found in the specification.
As to claim 17’s local response normalisation (LRN) unit, the examiner interprets the means plus function limitation to the corresponding structure: the algorithm for calculating a reciprocal as disclosed in [00162]-[00164] of the applicant’s specification.
As to claim 16’s pooling unit, the examiner interprets the means plus function limitation to the corresponding structure: the algorithm for max pooling as disclosed in [00147] and Fig. 8 of the applicant’s specification.
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 4-5, 16-17 are 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.
Claims 4, 5’s limitation activation unit invokes 35 USC 112(f) or pre-AIA 35 USC 11, sixth paragraph. The activation unit is claimed to evaluate a sigmoid function by a first and evaluate a reciprocal by a second lookup, respectively. Applicant’s specification seems to merely restate the functions ([00176], [00181]). However, the written description fails to provide an adequate description of the structure, materials, or acts to perform the claimed functions of these limitations.
Claims 5, 16’s limitation local response normalisation (LRN) unit invokes 35 USC 112(f) or pre-AIA 35 USC 11, sixth paragraph. The local response normalisation unit is claimed to evaluate/perform local response normalisation. Applicant’s specification seems to merely restate the functions ([00120]). However, the written description fails to provide an adequate description of the structure, materials, or acts to perform the claimed functions of these limitations.
Claim 17 is rejected for depending on claim 16 without correcting the deficiencies.
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.
Claim limitations “activation unit” and “local response normalisation (LRN) unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Paragraphs [00176], [00181], [00120] of applicant’s specification describes the functions of the activation unit and local response normalisation unit. However, the disclosure is devoid of any structure that performs the function of the claim, as the specification merely restates the function and does not disclose physical structure or steps for performing the claimed functions. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Conclusion
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHAT N LE whose telephone number is (571)272-0546. The examiner can normally be reached Monday-Friday 8:30AM-5PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew T Caldwell can be reached at (571) 272-3702. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/P.N.L./
Phat LeExaminer, Art Unit 2182 (571) 272-0546
/ANDREW CALDWELL/Supervisory Patent Examiner, Art Unit 2182
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