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 .
Applicant's amendments and remarks, filed on 04/28/2026, are acknowledged. Applicant's arguments have been fully considered. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. Rejections and/or objections not reiterated from the previous office actions are hereby withdrawn.
Status of Claims
Claims 7 and 9-14 are under examination.
Claims 1-6 and 15-20 are withdrawn. Claim 8 is cancelled.
Priority
Applicant’s claim for the benefit of priority under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. This application claims the benefit of U.S. Provisional Application No. 63/161,500, filed March 16, 2021.
Withdrawn Rejection
The rejection of claims 7-14 under 35 U.S.C. 101 because the claimed invention is not supported by either a substantial asserted utility or a well-established utility is withdrawn in view of applicant’s amendments.
The rejection of claims 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over Lucius et al. (Limnol. Oceanogr.: Methods, September 2020, Volume 18, Issue 9, pp. 477-494) is withdrawn in view of applicant’s amendments and affidavit/declaration filed 04/28/2026.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The following rejection is modified in view of applicant’s amendments.
Claims 7 and 9-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
The United States Patent and Trademark Office published revised guidance on the application of 35 U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance (“Guidance”). Under the Guidance, in determining what concept the claim is “directed to,” we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (Guidance Step 2A, Prong 1); and
(2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)) (Guidance Step 2A, Prong 2).
Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim contains an “‘inventive concept’ sufficient to ‘transform’” the claimed judicial exception into a patent-eligible application of the judicial exception. Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 82). In so doing, we thus consider whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not “well-understood, routine and conventional in the field” (see MPEP § 2106.05(d)); or 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50-57 (January 7, 2019).
(4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.(Guidance Step 2B). See Guidance, 84 Fed. Reg. at 54-56.
Guidance Step 1:
The instant invention (claim 7 being representative) is directed to system that performs a series of processes. Thus, the claims are directed to one of the statutory categories of invention. MPEP 2106.03.
A. Guidance Step 2A, Prong 1
The Revised Guidance instructs us first to determine whether any judicial exception to patent eligibility is recited in the claim. The Revised Guidance identifies three judicially-excepted groupings identified by the courts as abstract ideas: (1) mathematical concepts, (2) certain methods of organizing human behavior such as fundamental economic practices, and (3) mental processes. Regarding claim(s) 1, the claimed steps that are part of the abstract idea are as follows:
an nonphotochemical quenching (NPQ) correction management module configured to receive input data, the input data including input NPQ data, the input NPQ data comprising daytime chlorophyll a fluorescence (Fchl) data and selected environmental data for the body of water, collected in vivo by a multiparameter sonde in the body of water, the NPQ correction module configured with a training module to calculate correction circuitry parameters during training of the machine learning system, wherein during training the input data includes reference Fchl data, the reference Fchl data comprising nighttime Fchl data for the body of water, the NPQ correction management module configured to provide output data corresponding to NPQ corrected daytime Fchl data;
an NPQ correction circuitry configured to receive the input NPQ data from the NPQ correction management module and to generate an estimated NPQ correction factor for each daytime Fchl value based, at least in part, on the input NPQ data, and on the correction circuitry parameters determined during training,
wherein the data store is configured to store one or more of the input data, the input NPQ data, the NPQ correction factor for each daytime Fchl value, the output data, the correction circuitry parameters, and data associated with NPQ correction management module and/or training module,
wherein the estimated NPQ correction factors for each daytime Fchl value, and the daytime Fchl data are used to determine NPQ corrected daytime Fchl data,
wherein the NPQ corrected daytime Fchl data provide a proxy to monitor phytoplankton biomass in the body of water.
Mental Processes
It is noted out the outset that intended use recitations or limitations that suggest a function (without positively reciting said function) are not given patentable weight.
With regards to functional limitations directed to receiving input data, receiving the input NPQ data, and storing one or more of the input data, the input NPQ data, the NPQ correction factor, these steps are recited at a high level of generality (without any technological details directed to how they are performed). In addition, scientists are capable of observing and/or storing data using their brains or a pencil and paper. As such, but for the recitation of a generic correction module and correction circuitry, this step encompasses a mental process of observing data and/or manipulating data. MPEP 2106.04(a)(2), section III.
With regards to functional limitations directed to a calculating correction circuitry parameters (during training of the machine learning system), this step is recited at a high level of generality (without any technological details directed to the structure of the training module or how the suggested training is being performed). In addition, scientists are capable of training a model or calculating model parameters using their brains or a pencil and paper (since training under the BRI is merely learning or adjusting model parameters). As such, this step encompasses a mental process of observing data and/or evaluating data. MPEP 2106.04(a)(2), section III.
With regards to functional limitations directed to generating an estimated NPQ correction factor and determining NPQ corrected daytime Fchl data, these steps are recited at a high level of generality (without any technological details directed to how they are being performed). In addition, scientists are capable of calculating correction factors or correction data using their brains or a pencil and paper. As such, these steps encompass a mental process of evaluating data and making a determination. MPEP 2106.04(a)(2), section III.
With regards to providing a proxy, it is unclear what limiting effect is intended by this phrase. See also rejection under 35 USC 112(b). However, to the extent that applicant intends for this to be monitoring phytoplankton biomass, this step encompasses a mental process of observing data. MPEP 2106.04(a)(2), section III.
It is important to note that a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016). In addition, “claims that recite performing information analysis as well as the collection and manipulation of information related to such analysis, have been determined by our reviewing court to be an abstract concept that is not patent eligible”. See SAP, 898 F.3d, 1165, 1167, 1168 (Claims reciting "[a] method for providing statistical analysis" (id. at 1165) were determined to be "directed to an abstract idea" (id. at 1168)); see also Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass 'n, 776 F.3d 1343, 1345, 1347 (Fed. Cir. 2014). [Step 2A, Prong 1: YES].
Mathematical Concept
With regards to functional limitations directed to a calculating correction circuitry parameters (during training of the machine learning system), this step is recited at a high level of generality (without any technological details directed to the structure of the training module or how the suggested training is being performed). In addition, to the extent that applicant intends for this step to encompass “training” a model, the artisan would recognize that such training is an explicit mathematical process of assigning and adjusting weights of model parameters. As such, this step recites mathematical correlations and/or calculations. MPEP 2106.04(a)(2) Section I. [Step 2A, Prong 1: YES].
With regards to functional limitations directed to generating an estimated NPQ correction factor and determining NPQ corrected daytime Fchl data, these steps are recited at a high level of generality (without any technological details directed to how they are being performed). In addition, the above italicized steps result in calculating values “based on” (i.e. as a function of) a plurality of different types of data and therefore amount to performing calculations. Notably, the instant specification also explicitly describes mathematical models/algorithms associated with at least some of the claimed functions [pages 5-6]. As such, this step recites mathematical correlations and/or calculations. MPEP 2106.04(a)(2) Section I. [Step 2A, Prong 1: YES].
B. Guidance Step 2A, Prong 2
This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception or whether the claim is “directed to” the judicial exception. This evaluation is performed by (1) identifying whether there are any additional steps/elements recited in the claim beyond the judicial exception, and (2) evaluating those additional steps/elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See MPEP 2106.04(d).
In this case, the additional steps/elements recited in the claim beyond the judicial exception are as follows:
a computing device comprising a processor, a memory, an input/output circuitry, and a data store; “correction…module”; “correction circuitry”
store one or more of the input data, the input NPQ data, the NPQ correction factor…;
wherein the NPQ corrected daytime Fchl data provide a proxy to monitor phytoplankton biomass in the body of water.
With regards to the functional limitation of storing (various types of data), this limitation is recited at a high level of generality and results in gathering data for use by the abstract idea. Accordingly, this limitation amounts to insignificant extra-solution activity and is not indicative of an integration into a practical application. See MPEP 2106.05(g). With regards to providing a proxy to monitor biomass, it is unclear what limiting effect is intended by this phrase. See also rejection under 35 USC 112(b). However, to the extent that applicant intends for this to be outputting NPQ corrected data that represents phytoplankton biomass, this limitation amounts to insignificant extra-solution activity and is not indicative of an integration into a practical application. See MPEP 2106.05(g).
With regards to the additional elements directed to a processor, memory, input/output circuitry, data store, “correction…module”; “correction circuitry”, these elements are all recited at a high of generality (without any details regarding structure) and are interpreted as generic computer components (processor, memory, data store, circuitry) used as tools to perform the abstract idea and/or merely indicate instructions (module) to implement the abstract idea on a computer. See MPEP 2106.05(h) and MPEP 2106.05(f). As such, these additional elements fail to add an inventive concept to the claims. Moreover, applicant is reminded that “generic computer components such as a computer and database do not satisfy the inventive concept requirement.” See MPEP 2106.05(f) and 2106.05(h). Therefore, the additionally recited steps/elements amount to insignificant extra-solution activity that does not apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception. In summary, the claimed invention does not provide any objective evidence of an improvement to the technology, nor does the specification explain the details of an unconventional technical solution expressed in the claim, or identify technical improvements realized by the claim over the prior art. See MPEP 2106.04(d)(1) and MPEP 2106.05(a). Therefore, even when viewed in combination, these additional steps/elements do not integrate the recited judicial exception into a practical application. [Step 2A, Prong 2: NO].
C. Guidance Step 2B:
This part of the eligibility analysis evaluates whether the claim as a whole amount to significantly more than the recited exception i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. See MPEP 2106.05.
As discussed above, the non-abstract steps/elements amount to nothing more than insignificant extra-solution activity. Indeed, applicant’s own specification teaches conventional computer components for storing or outputting data [page 10]. In addition, the courts have explained that the use of generic computer elements do not alone transform an otherwise abstract idea into patent-eligible subject matter. See DDR Holdings (Fed. Cir. 2014). Therefore, even upon reconsideration, there is nothing unconventional with regards to the above non-abstract elements. See MPEP 2106.05(d)(Part II). Thus, the independent claim(s) as a whole do not amount to significantly more than the exception itself. Therefore, the claim(s) is/are not patent eligible. [Step 2B: NO].
D. Dependent Claims
Dependent claims 9-14 have also been considered under the two-part analysis but do not include additional steps/elements appended to the judicial exception that are sufficient to amount to significantly more than the judicial exception(s) for the following reasons. In particular, claims 9-14 are entirely directed to limitations that further limit the specificity of the abstract idea or the type of data being used by the abstract idea. Accordingly, these claims are also directed to an abstract idea for the reasons set forth above (Step 2A, prong 1, analysis). Therefore, the instantly rejected claims are not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
Response to Arguments
Applicant’s arguments, filed 04/28/2026, have been fully considered but are not persuasive for the following reasons.
Applicant argues that the amended claims are patent eligible as they recite a specific practical application/improvement to the technology directed to providing corrected daytime Fchl data as a proxy to monitor phytoplankton biomasss in a body of water. In response, the MPEP is clear that the word "improvements" in the context of this consideration is limited to improvements to the functioning of a computer or any other technology/technical field, whether in Step 2A Prong Two or in Step 2B. MPEP 2106.04(d)(1). In this case, applicant has not provided any objective evidence to support the case that the claims result in an improvement to the functioning of a computer and no such evidence is provided in the specification. To evaluate an improvement to a computer or technical field, the specification must set forth an improvement in technology and the claim itself must reflect the disclosed improvement. See MPEP 2106.04(d)(1) and 2106.05(a). Applicant has also failed to identify any steps/elements appended to the abstract idea that provide for a new technology (Step 2A, prong 2 or Step 2B) or provide any evidence of an unconventional combination of steps. In this case, applicant is essentially arguing that the improvement is entirely in the realm of abstract ideas and that abstract idea is providing the improvement (by providing “corrected data”). However, Applicant is reminded that the claimed invention’s use of the ineligible concept to which it is directed (i.e. the abstract idea) cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Similarly, the courts have also instructed that “[t]he different use of a mathematical calculation, even one that yields different or better results, does not render patent eligible subject matter.” Board Of Trustees Of Leland Stanford Junior University, 991 F.3d 1245, 1251 (Fed. Cir. 2021).
As such, the claims do not recite an improvement to computer functionality and do not delineate steps through which the machine learning technology achieves an improvement. See, e.g. Ex Parte Desjardins. For example, "Ex parte Desjardins had claims drawn to the use of a machine learning model, trained on one task with a first set of data, and set parameter weights, then trained again using differing data on a different task, adjusting parameters and weights, while protecting performance of the first task. Further, in Desjardins, the retraining of the particular ML changed the structure of that ML in a way that provided "'[a]n improvement in the functioning of a computer, or an improvement to other technology or technical field,' as discussed in MPEP §§ 2106.04(d)(l) and 2106.05(a). Moreover, the independent claim in Ex parte Desjardins contained specific limitations as to how at least some aspects of the asserted improvements are achieved: "When evaluating the claim as a whole, we discern at least the following limitation of independent claim 1 that reflects the improvement: "adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task." We are persuaded that constitutes an improvement to how the machine learning model itself operates, and not, for example, the identified mathematical calculation." Ex parte Desjardins, p9. In contrast, the instant claims do not clearly set forth the link between the data gathered, the initial training of the models, the structure of the models, and how training affects the structure to obtain the desired results or asserted improvement. For at least these reasons, absent any evidence to the contrary, the rejection is maintained.
Claim rejections - 35 USC § 112, 2nd Paragraph
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 7 and 9-14 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 pre-AIA the applicant regards as the invention. Claims that depend directly or indirectly from claim(s) 7 are also rejected due to said dependency.
Claim 7 recites “wherein the estimated NPQ correction factors for each daytime Fchl value, and the daytime Fchl data are used to determine NPQ corrected daytime Fchl data”. Applicant is reminded no patentable distinction (i.e. no limit on the claim scope) is made by an intended use or result recitation unless some structural difference is imposed by the use or result on the structure or material recited in the claim. As a result, because this functional language merely recites the intended use of estimated correction factors, it imposes no patentable distinction on the claim (is not limiting). Therefore, it is unclear in what limiting effect is intended by the above “wherein” clause (as it suggests a step of “determining” NPQ corrected daytime Fchl data” without positively reciting such a step). Clarification is requested via amendment.
Claim 7 recites “configured to provide a proxy” and “wherein the NPQ corrected daytime Fchl data provide a proxy to monitor phytoplankton biomass in the body of water.” It is unclear what limiting effect is intended by the above “wherein” clause, e.g. outputting data or monitoring biomass. A review of the specification does not provide any limiting definition or examples that would serve to provide a discernable boundary on the functional limitations intended. Secondly, it is also unclear as to the metes and bounds of the term “proxy” as claimed. A review of the specification does not provide any limiting definition and while one of ordinary skill in the art of machine learning would understand that proxies serve as surrogate models, proxy variables, or proxy data (e.g. to improve efficiency), this is not commensurate in scope with what is being claimed. For these reasons, the claim is indefinite. Clarification is requested via amendment.
Claim 7 again recites “an NPQ correction management module configured to receive input data…”. It remains unclear as to the metes and bounds of an “NPQ correction management module” such that the artisan would know what structural limitation is intended. A review of the specification does not provide any limiting definition for this term that would serve to provide a discernable boundary on the intended structure, and there is nothing in the specification to suggest it is a physical hardware element such as a processor or an integrated circuit (i.e. the term module broadly encompasses a program or algorithm). Therefore, the claim remains indefinite. Clarification is requested via amendment. This rejection is maintained, as Applicant the amendments further clarify the function of the claimed module but do not clarify the intended structure.
Claim 7 recites “…a training module to calculate correction circuitry parameters during training of the machine learning system, wherein during training the input data includes reference Fchl data, the reference Fchl data comprising nighttime Fchl data for the body of water.” In this case, it is unclear as to the metes and bounds of the claimed “training module” such that the artisan would recognize what structural limitation is intended. A review of the specification does not define the term “MODULE" such that it is interpreted to be an actual structural element of the claimed system, and there is nothing in the specification to suggest it is a physical hardware element such as a processor or integrated circuit. In other words, the term broadly encompasses a program or algorithm. Accordingly, the claim is indefinite. Clarification is requested via amendment. Secondly, while the above step suggests a functional limitation of “training” is performed, the only positively recited limitation is “to calculate correction circuitry parameters” (i.e. training is implied but not explicitly required to be performed and training a “machine learning system” is different from calculating parameters). It is a subtle point but one worth noting, as Applicant is reminded that claim language that suggests but do not explicitly require positive process limitations is indefinite. MPEP 2111.04. Clarification is requested via amendment.
Claim 7 recites “…a training module to calculate correction circuitry parameters.” It is unclear as to the metes and bounds of the claimed “correction circuitry parameters”. A review of the specification generates discloses a “circuitry parameter” [Figure 1] but does not provide any limiting definition for this term that would serve to clarify the scope. The specification does disclose an equation for determining NPQ% that includes various parameters [page 5]. However, this is not commensurate in scope with what is claimed and it is improper to import narrowing limitations into the claims. MPEP 2111.01. Clarification is requested via amendment.
Claim 7 again recites “a data store”. It is unclear as to the metes and bounds of a “data store”. A review of the specification does not provide any limiting definition for this term that would serve to provide a discernable boundary on the intended structure. Therefore, the claim is indefinite. Clarification is again requested via amendment. For purposes of examination, this term is interpreted to mean a database. This rejection is maintained, as Applicant has not provided any illuminating arguments or clarifying amendments.
Claim 7 recites “an NPQ correction circuitry configured to receive input NPQ data and to generate an estimated NPQ correction factor”. Firstly, it is unclear as to the metes and bounds of “NPQ correction circuitry”. A review of the specification does not define the term “CIRCUITRY" such that it is interpreted to be an actual structural element of the claimed system, and there is nothing in the specification to suggest it is a physical hardware element such as a processor or an integrated circuit. In other words, the term broadly encompasses a program or algorithm. Moreover, the specification teaches an embodiment wherein the “circuitry” corresponds to an algorithm (random forest regression) [page 2], which is clearly not a structural limitation. Therefore, the claim is indefinite. Clarification is requested via amendment. Secondly, there is no structural or functional relationship between the claimed “correction circuitry” and any of the other elements of the claimed system (e.g. processor, memory, input/output circuitry, and data store), i.e. claimed circuitry is not associated with or embodied on a specific machine. As a result, it is unclear in what way “circuitry” alone can function to perform the claimed functions. Is this circuitry embodied on a machine such that it can carry out a process? If so, what machine. Therefore, it remains unclear in what way the above circuitry is “configured” to achieve the claimed functions. Clarification is requested via amendment.
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: “correction management module”, “training module”, and “correction circuitry”. 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.
Conclusion
No claims are allowed.
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 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PABLO S WHALEY whose telephone number is (571)272-4425. The examiner can normally be reached between 1pm-9pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Anita Coope can be reached at 571-270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PABLO S WHALEY/Primary Examiner, Art Unit 3619
Prosecution Insights