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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 16, 2026, has been entered.
Claims 1-4, 6-7, 9-18, and 20 are pending in this office action and presented for examination. Claims 1-3, 10-11, and 16-17 are newly amended by the RCE received March 16, 2026.
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 1-4, 6-7, 9-18, and 20 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.
Claim 1 recites the limitation “second circuitry coupled to the control registers, wherein, for each control register of the first one or more control registers and the second one or more control registers, the second circuitry is to maintain at the control register a respective count of instances each of a respective event type during an execution of a process by the processor” in lines 22-25. However, the original disclosure does not appear to provide support for this limitation. For example, the original disclosure (e.g., paragraph [0091]) does not appear to provide support for a given control register maintaining a count of instances, wherein each instance is of a respective event type (in contrast to each instance of the count of instances for a given control register being of a same event type).
Claims 2-4, 6-7, and 9 are rejected for failing to alleviate the rejection of claim 1 above.
Claim 2 recites the limitation “the respective one or more second fields of the control register comprise: a respective third field to identify whether a value of a respective counter is to be included in the PEBS record” in lines 2-5. However, the original disclosure does not appear to provide support for this limitation. For example, the original disclosure (e.g., FIG. 6C and paragraph [0099]) does not appear to provide support for a third field (which Examiner is taking to correspond to the 1-bit EVT field of FIG. 6C) “identify[ing] whether a value of a respective counter is to be included” (which Examiner submits has different metes and bounds than “determine a particular combination of PMC counters to be included”, as disclosed in paragraph [0099]). For example, the original disclosure (e.g., FIG. 6C and paragraph [0099]) does not appear to provide support for each second field (of the one or more second fields of a given control register) comprising a corresponding third field to identify (such that the number of second fields equals the number of third fields), which is what appears to be conveyed via the recited “the respective one or more second fields of the control register comprise: a respective third field” language.
Claim 3 recites the limitation “the respective one or more second fields of the control register comprise a respective one or more third fields to identify, for each of one or more register types, whether information from a respective one or more registers of the register type is to be included in the PEBS record” in lines 3-6. However, the original disclosure does not appear to provide support for this limitation. For example, the original disclosure (e.g., FIG. 6C and paragraph [0099]) does not appear to provide support for information from just one register of a register type being included in a PEBS record, which is a scenario encompassed by the claim language in view of the “one or more” language. For example, the original disclosure (e.g., FIG. 6C and paragraph [0099]) does not appear to provide support for each second field (of the one or more second fields of a given control register) comprising a corresponding one or more third fields to identify (such that the number of second fields equals the number of sets of one or more third fields), which is what appears to be conveyed via the recited “the respective one or more second fields of the control register comprise a respective one or more third fields” language.
Claim 10 recites the limitation “for each control register of the first one or more control registers and the second one or more control registers, maintaining at the control register a respective count of instances each of a respective event type during an execution of a process by the processor” in lines 20-22. However, the original disclosure does not appear to provide support for this limitation. For example, the original disclosure does not appear to provide support for a given control register maintaining a count of instances, wherein each instance is of a respective event type (in contrast to each instance of the count of instances for a given control register being of a same event type).
Claims 11-15 are rejected for failing to alleviate the rejection of claim 10 above.
Claim 11 recites the limitation “the respective one or more second fields of the control register comprise: a respective third field which identifies whether a value of a respective counter is to be included in the PEBS record” in lines 2-5. However, the original disclosure does not appear to provide support for this limitation. For example, the original disclosure (e.g., FIG. 6C and paragraph [0099]) does not appear to provide support for a third field (which Examiner is taking to correspond to the 1-bit EVT field of FIG. 6C) “identif[ying] whether a value of a respective counter is to be included” (which Examiner submits has different metes and bounds than “determine a particular combination of PMC counters to be included”, as disclosed in paragraph [0099]). For example, the original disclosure (e.g., FIG. 6C and paragraph [0099]) does not appear to provide support for each second field (of the one or more second fields of a given control register) comprising a corresponding third field which identifies (such that the number of second fields equals the number of third fields), which is what appears to be conveyed via the recited “the respective one or more second fields of the control register comprise: a respective third field” language.
Claim 12 is rejected for failing to alleviate the rejection of claim 11 above.
Claim 16 recites the limitation “second circuitry coupled to the control registers, wherein, for each control register of the first one or more control registers and the second one or more control registers, the second circuitry is to maintain at the control register a respective count of instances each of a respective event type during an execution of a process by the processor” in lines 23-27. However, the original disclosure does not appear to provide support for this limitation. For example, the original disclosure does not appear to provide support for a given control register maintaining a count of instances, wherein each instance is of a respective event type (in contrast to each instance of the count of instances for a given control register being of a same event type).
Claims 17-18 and 20 are rejected for failing to alleviate the rejection of claim 16 above.
Claim 17 recites the limitation “the respective one or more second fields of the control register comprise: a respective third field to identify whether a value of a respective counter is to be included in the PEBS record” in lines 2-5. However, the original disclosure does not appear to provide support for this limitation. For example, the original disclosure (e.g., FIG. 6C and paragraph [0099]) does not appear to provide support for a third field (which Examiner is taking to correspond to the 1-bit EVT field of FIG. 6C) “identify[ing] whether a value of a respective counter is to be included” (which Examiner submits has different metes and bounds than “determine a particular combination of PMC counters to be included”, as disclosed in paragraph [0099]). For example, the original disclosure (e.g., FIG. 6C and paragraph [0099]) does not appear to provide support for each second field (of the one or more second fields of a given control register) comprising a corresponding third field to identify (such that the number of second fields equals the number of third fields), which is what appears to be conveyed via the recited “the respective one or more second fields of the control register comprise: a respective third field” language.
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 3 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites the limitation “identify, for each of one or more register types, whether information from a respective one or more registers of the register type is to be included in the respective PEBS record … and the one or more register types comprise one of a general purpose register type, a vector register type, or a last branch register type” in lines 4-8. However, a Markush grouping is a closed group of alternatives. If a Markush grouping requires an element selected from an open list of alternatives (e.g., selected from the group “comprising” or “consisting essentially of” the recited alternatives), the claim is indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See MPEP 2173.05(h). (Note that MPEP 2173.05(h) recites: ‘Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as "a material selected from the group consisting of A, B, and C" or "wherein the material is A, B, or C".’)
(The following paragraphs are reproduced from the response to arguments section for convenience.)
Applicant across pages 11-12 argues: ‘Applicants respectfully submit that - in the absence of the Final Office Action providing any indication to the contrary - the rejection seems to presuppose that Applicants have intended for claim 3 to include a Markush-type claim construction, but that said construction is incorrectly presented. However, Applicants respectfully submit that no such Markush-type claim construction is intended. Rather, claim 3 instead uses a different claim construction which is commonly accepted as complying with the requirements of 35 U.S.C. § 112(b). More particularly, the claim construction in question (i.e., "the one or more register types comprise one of a general purpose register type, a vector register type, or a last branch register type") is of the type "wherein X comprises one of A, B or C." Applicants respectfully submit that such a claim construction is definite at least insofar as it is clear and unambiguous as to what at least one element of X must be - i.e., that element is A, or else it is B, or else it is C. This type of claim construction has previously been reviewed in case law without there being any question of some alleged indefiniteness under 35 U.S.C. § 112(b). See, e.g., SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870 (Fed. Cir. 2004).’
However, while Applicant may not have intended claim 3 to include a Markush-type claim construction, Examiner notes that MPEP 2173.05(h) conveys that ‘Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as "a material selected from the group consisting of A, B, and C" or "wherein the material is A, B, or C")’ and ‘Claims that set forth a list of alternatives from which a selection is to be made are typically referred to as Markush claims’. Examiner submits that claim 3 recites alternatives (“a general purpose register type, a vector register type, or a last branch register type”, as well as, implicitly, some other register type due to the open-ended “comprise” language) from which a selection is to be made (“identify, for each of one or more register types, whether information from a respective one or more registers of the register type is to be included in the respective PEBS record … and the one or more register types comprise one of a general purpose register type, a vector register type, or a last branch register type”).
Claim 3 recites the limitation “identify, for each of one or more register types, whether information from a respective one or more registers of the register type is to be included in the respective PEBS record … and the one or more register types comprise one of a general purpose register type, a vector register type, or a last branch register type” in lines 4-8. Therefore, claim 3 effectively recites a group of “one or more register types”, which comprise a) one of a general purpose register type, a vector register type, or a last branch register type, and b) another potential register type, in view of the open-ended “comprise” language. However, MPEP 2173.05(h) conveys that ‘If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim.” As it is unclear as to what other register types are intended to be encompassed by the claim, Examiner submits that the claim is indefinite.
Examiner submits that it being clear what at least one register type of the one or more register types must be does not, by itself, necessarily make the associated limitation definite; for example, it remains indefinite as to what other register types of the one or more register types are intended to be encompassed by the claim.
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.
Claims 1-4, 6-7, 9, 16-18, and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claim(s) can be interpreted as software per se and thus can be made without an actual hardware apparatus. While the claims do recite circuitry, paragraph [00218] discloses “Accordingly, embodiments of the invention also include non-transitory, tangible machine-readable media containing instructions or containing design data, such as Hardware Description Language (HDL), which defines structures, circuits, apparatuses, processors and/or system features described herein”. Also see, for example, paragraph [0054], which discloses “In FIG. 2, the block diagram illustration should not be understood to represent a strictly confined hardware configuration, but rather, the blocks disclosed should be understood as logical blocks that include any suitable combination of hardware, software, and/or firmware to carry out the function of the block.” Also see, for example, paragraph [00105], which discloses “In some embodiments, one or more hardware components and/or instructions described herein are emulated as detailed below or implemented as software modules.” Also see, for example, paragraph [00213], which discloses “Embodiments of the mechanisms disclosed herein may be implemented in hardware, software, firmware, or a combination of such implementation approaches”.
Response to Arguments
Applicant on page 10 argues: ‘With respect to independent claims 1, 10, and 16, the Final Office Action alleges a lack of support for the variously-claimed count of instances of a respective one or more events during an execution of a process by the processor. See, e.g., Final Office Action, page 3, lines 6-10, page 5, lines 5-9, and page 6, lines 12-16. Claims 1, 10, and 16 are amended herein to variously recite a "...count of instances each of a respective event type during an execution of a process by the processor;..." (from claim 1). Applicants respectfully submit that such amendments are supported in the original disclosure at least by paragraph [0091] of the instant application.’
In view of the aforementioned amendments, the associated previously presented written description rejections are withdrawn.
Applicant on page 10 argues: ‘With respect to independent claims 1, 10, and 16, the Final Office Action further alleges a lack of support for the variously-claimed one or more second fields to specify a respective type of information which is to be provided in a respective PEBS record. See, e.g., Final Office Action, page 3, lines 13-17, page 5, lines 12-16, and page 6, line 19 to page 7, line 2. Claims 1, 10, and 16 are further amended herein to variously recite that the one or more second fields are "to specify a respective one or more types of information which are to be provided in a PEBS record which is to be based on a respective overflow by a performance counter which is provided by the corresponding control register of the first one or more control registers and the second one or more control registers" (from claim 1). Applicants respectfully submit that such amendments are supported in the original disclosure at least by FIGs. 5 and 6 and by paragraphs [0094], [0096], and [0099] of the instant application.’
In view of the aforementioned amendments, the associated previously presented written description rejections are withdrawn.
Applicant across pages 10-11 argues: ‘With respect to claims 2, 11, and 17, the Final Office Action further alleges a lack of support for the variously-claimed one or more third fields to identify whether a value of a respective counter is to be included in the respective PEBS record. See, e.g., Final Office Action, page 4, lines 1-5, page 5, line 21 to page 6, line 5, and page 7, lines 8-12. Claims 2, 11, and 17 are amended herein to variously recite that a respective third field is to "identify whether a value of a respective counter is to be included in the PEBS record which is to be based on the respective overflow by the performance counter which is provided by the corresponding control register of the first one or more control registers and the second one or more control registers" (from claim 2). Applicants respectfully submit that such amendments are supported in the original disclosure at least by FIG. 6C and by paragraph [0099] of the instant application.’
In view of the aforementioned amendments, various aspects of the associated previously presented written description rejections are withdrawn. However, other aspects of the associated previously presented written description rejections appear to remain applicable — see the Claim Rejections - 35 USC § 112 section above.
Applicant on page 11 argues: ‘With respect to claim 3, the Final Office Action further alleges a lack of support for the variously-claimed one or more third fields to identify, for each of one or more register types, whether information from a respective one or more registers of the register type is to be included in the respective PEBS record. See, e.g., Final Office Action, page 4, line 10-22. Claim 3 is amended herein to recite that, for each of one or more register types, one or more third fields are to identify "whether information from a respective one or more registers of the register type is to be included in the PEBS record which is to be based on the respective overflow by the performance counter which is provided by the corresponding control register of the first one or more control registers and the second one or more control registers" (from claim 3). Applicants respectfully submit that such amendments are supported in the original disclosure at least by FIG. 6C and by paragraph [0099] of the instant application.’
In view of the aforementioned amendments, various aspects of the associated previously presented written description rejections are withdrawn. However, other aspects of the associated previously presented written description rejections appear to remain applicable — see the Claim Rejections - 35 USC § 112 section above.
Applicant on page 11 argues: “All other 35 U.S.C. § 112(a) rejections of the remaining dependent claims are based on the rejections addressed above.”
Examiner’s responses to arguments above are likewise applicable to the arguments directed to the aforementioned remaining dependent claims.
Applicant across pages 11-12 argues: ‘Applicants respectfully submit that - in the absence of the Final Office Action providing any indication to the contrary - the rejection seems to presuppose that Applicants have intended for claim 3 to include a Markush-type claim construction, but that said construction is incorrectly presented. However, Applicants respectfully submit that no such Markush-type claim construction is intended. Rather, claim 3 instead uses a different claim construction which is commonly accepted as complying with the requirements of 35 U.S.C. § 112(b). More particularly, the claim construction in question (i.e., "the one or more register types comprise one of a general purpose register type, a vector register type, or a last branch register type") is of the type "wherein X comprises one of A, B or C." Applicants respectfully submit that such a claim construction is definite at least insofar as it is clear and unambiguous as to what at least one element of X must be - i.e., that element is A, or else it is B, or else it is C. This type of claim construction has previously been reviewed in case law without there being any question of some alleged indefiniteness under 35 U.S.C. § 112(b). See, e.g., SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870 (Fed. Cir. 2004).’
However, while Applicant may not have intended claim 3 to include a Markush-type claim construction, Examiner notes that MPEP 2173.05(h) conveys that ‘Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as "a material selected from the group consisting of A, B, and C" or "wherein the material is A, B, or C")’ and ‘Claims that set forth a list of alternatives from which a selection is to be made are typically referred to as Markush claims’. Examiner submits that claim 3 recites alternatives (“a general purpose register type, a vector register type, or a last branch register type”, as well as, implicitly, some other register type due to the open-ended “comprise” language) from which a selection is to be made (“identify, for each of one or more register types, whether information from a respective one or more registers of the register type is to be included in the respective PEBS record … and the one or more register types comprise one of a general purpose register type, a vector register type, or a last branch register type”).
Claim 3 recites the limitation “identify, for each of one or more register types, whether information from a respective one or more registers of the register type is to be included in the respective PEBS record … and the one or more register types comprise one of a general purpose register type, a vector register type, or a last branch register type” in lines 4-8. Therefore, claim 3 effectively recites a group of “one or more register types”, which comprise a) one of a general purpose register type, a vector register type, or a last branch register type, and b) another potential register type, in view of the open-ended “comprise” language. However, MPEP 2173.05(h) conveys that ‘If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim.” As it is unclear as to what other register types are intended to be encompassed by the claim, Examiner submits that the claim is indefinite.
Examiner submits that it being clear what at least one register type of the one or more register types must be does not, by itself, necessarily make the associated limitation definite; for example, it remains indefinite as to what other register types of the one or more register types are intended to be encompassed by the claim.
Applicant on page 13 argues: “Accordingly, on their faces, each of independent claims 1, 10, and 16 is directed to respective hardware structures (or a method which utilizes hardware), and thus could not be directed to software per se.”
However, Examiner notes that the claims do not recite that the relevant structures are hardware, and submits that the broadest reasonable interpretation of the claim language, in light of the specification (e.g., the paragraphs cited by Examiner), encompasses software.
Applicant on page 13 argues: ‘Paragraph [0054] of the instant application indicates that blocks illustrated in FIG. 2 should be understood as logical blocks that include any suitable combination of hardware, software, and/or firmware to carry out the function of the block. However, the scope of the phrase "any suitable combination of hardware, software, and/or firmware", in the relied-upon paragraph [0054], covers (for example) an entirely hardware implementation. Accordingly, paragraph [0054] provides support for claims which are directed to entirely hardware implementations of some embodiments.’
However, paragraph [0054] providing support for an entirely hardware implementation does not preclude the claim language, under the broadest reasonable interpretation, from encompassing an entirely software implementation. Examiner submits that “any suitable combination of hardware, software, and/or firmware” encompasses an embodiment which is just software. Therefore, paragraph [0054] supports an interpretation of a processor and a memory as software per se. Examiner notes that the claims do not recite that the relevant features are hardware.
Applicant on page 13 argues: ‘Applicants thus respectfully submit that "first circuitry", "second circuitry", "third circuitry", and other such hardware features - as variously recited in the current claims - are supported in the specification, and are directed to statutory subject matter under 35 U.S.C. § 101. Accordingly, the relied-upon paragraph [0054] is in no way probative as to whether or how the hardware features which are actually recited in the claims (e.g., the processor, the circuitry, the registers, etc.) could reasonably be interpreted as being software per se.’
Examiner first notes that the claims do not recite that the relevant features are hardware. Furthermore, instant paragraph [00218] discloses “containing instructions or containing design data, such as Hardware Description Language (HDL), which defines structures, circuits, apparatuses, processors and/or system features described herein”, and, for example, claim 1 is directed to a processor and comprises circuitry. Examiner submits that “containing instructions or containing design data, such as Hardware Description Language (HDL)” “defin[ing]” “structures, circuits, apparatuses, processors and/or system features described herein” reflects a software implementation of such “structures, circuits, apparatuses, processors and/or system features described herein”.
Applicant across pages 13-14 argues: ‘However, assuming arguendo that - as the Office alleges - "any suitable combination of hardware, software, and/or firmware" encompasses an embodiment which is just software, it must also be the case (in the absence of the Office providing any indication to the contrary) that "any suitable combination of hardware, software, and/or firmware" also encompasses an alternative embodiment which is just hardware. For at least this reason, paragraph [0054] itself provides support for claims to an embodiment which is just hardware (or, for example, which uses just hardware). The Office seems to acknowledge this, in further alleging that: '...paragraph [0054] providing support for an entirely hardware implementation does not preclude the claim language, under the broadest reasonable interpretation, from being an entirely software implementation. Examiner notes that the claims do not recite that the relevant features are hardware.' - from page 19, lines 16-19 of the Final Office Action) However, the exact relevance of one of the Office's above-quoted allegations - that support for an entirely hardware implementation does not preclude the claim language, under the broadest reasonable interpretation, from being an entirely software implementation - is not provided by the Office. Applicants respectfully submit that the allegation, even if correct, fails to justify the proposition that - in and of itself - some alleged additional support, for an entirely software implementation, necessitates that the claim language, under the broadest reasonable interpretation, must be an entirely software implementation. Applicants submit that any reliance on such a proposition by the Office would be unreasonable and improper.’
However, Examiner submits that a claim which can be (even if the claim does not have to be) interpreted as software per se is consequently directed to non-statutory subject matter. (As an analogy, a claim directed to a machine-readable medium, which may be interpreted to be either a non-transitory machine-readable medium or a transitory machine-readable medium, would still be rejected under 35 U.S.C. 101, because the broadest reasonable interpretation of the machine-readable medium encompasses the non-statutory subject matter of a transitory machine-readable medium.) While the instant disclosure may provide support for a hardware implementation, such does not preclude a rejection under 35 U.S.C. 101 based on the broadest reasonable interpretation of a claim encompassing a software implementation.
Applicant on page 14 argues: “The other of the Office's above-quoted allegations - that the claims do not recite that the relevant features are hardware - is simply unsupported, at least in that (as listed in the comments above) numerous hardware features are recited in the claims, and also in that each of the claims is devoid of any reference whatsoever to software. For at least the foregoing reasons, the Office's reliance on paragraph [0054] is an unreasonable basis for interpreting the pending claims as somehow being directed to software per se.”
However, the claims do not appear to recite the word “hardware”. While Applicant may be taking certain elements of the claims to necessarily be hardware, Examiner submits that the broadest reasonable interpretation of these elements encompasses software.
For example, paragraph [0054] is cited as disclosing “In FIG. 2, the block diagram illustration should not be understood to represent a strictly confined hardware configuration, but rather, the blocks disclosed should be understood as logical blocks that include any suitable combination of hardware, software, and/or firmware to carry out the function of the block.” FIG. 2 can be readily seen to include a block labeled “Processor” and a block labeled “Memory”. Examiner submits that “any suitable combination of hardware, software, and/or firmware” encompasses an embodiment which is just software. Therefore, paragraph [0054] supports an interpretation of a processor and a memory as software per se.
Furthermore, instant paragraph [00218] discloses “containing instructions or containing design data, such as Hardware Description Language (HDL), which defines structures, circuits, apparatuses, processors and/or system features described herein”, and, for example, claim 1 is directed to a processor and comprises circuitry. Examiner submits that “containing instructions or containing design data, such as Hardware Description Language (HDL)” “defin[ing]” “structures, circuits, apparatuses, processors and/or system features described herein” reflects a software implementation of such “structures, circuits, apparatuses, processors and/or system features described herein”.
While the claims may not explicitly recite the word software, such does not preclude the claims from being interpreted to nevertheless encompass a software implementation under the broadest reasonable interpretation.
Applicant across pages 14-15 argues: ‘Paragraph [00105] of the instant application indicates that, in some embodiments, one or more hardware components and/or instructions are emulated or implemented as software modules. However, this indication is made in the instant application with respect to "some embodiments" (from paragraph [00105]), rather than for all embodiments, for example. Other passages of the instant application (e.g., including the paragraph [0054] addressed above) variously provide support for some embodiments being implemented partially or even entirely with hardware. Therefore, Applicants again respectfully submit that "first circuitry", "second circuitry", "third circuitry", and other such terms variously recited in the current claims, are directed to statutory subject matter under 35 U.S.C. § 101. Accordingly, the relied-upon paragraph [00105] is in no way probative as to whether or how the hardware features which are actually recited in the claims (e.g., the processor, the circuitry, the registers, etc.) could reasonably be interpreted as being software per se.’
However, Examiner submits that a claim which can be (even if the claim does not have to be) interpreted as software per se is consequently directed to non-statutory subject matter. (As an analogy, a claim directed to a machine-readable medium, which may be interpreted to be either a non-transitory machine-readable medium or a transitory machine-readable medium, would still be rejected under 35 U.S.C. 101, because the broadest reasonable interpretation of the machine-readable medium encompasses the non-statutory subject matter of a transitory machine-readable medium.) While the instant disclosure may provide support for a hardware implementation, such does not preclude a rejection under 35 U.S.C. 101 based on the broadest reasonable interpretation of a claim encompassing a software implementation. Examiner notes that the claims do not recite that the relevant features are hardware.
Applicant on page 15 argues: “With respect to paragraph [00105], the Office alleges that: '...support for an entirely hardware implementation in some embodiments does not preclude the claim language, under the broadest reasonable interpretation, from being an entirely software implementation. Examiner notes that the claims do not recite that the relevant features are hardware.' - from page 20, lines 12-15 of the Final Office Action However, this is merely a repetition of the above-quoted allegations made regarding paragraph [0054] of the instant application. Applicants have addressed these allegations above. For at least the foregoing reasons, the Office's reliance on paragraph [00105] is an unreasonable basis for interpreting the pending claims as somehow being directed to software per se.”
Examiner’s responses to arguments above are likewise applicable to the aforementioned argument.
Applicant on page 15 argues: ‘Paragraph [00213] of the instant application indicates that some embodiments may be implemented in hardware, software, firmware, or a combination of such implementation approaches. Applicants note that the scope of the phrase "hardware, software, firmware, or a combination of such implementation approaches", in the relied-upon paragraph [00213], covers (for example) an entirely hardware implementation. Accordingly, the relied-upon paragraph [00213] provides support for claims which are directed to entirely hardware implementations of some embodiments. Therefore, Applicants again respectfully submit that "first circuitry", "second circuitry", "third circuitry", and other such terms, as variously recited in the current claims, are directed to statutory subject matter under 35 U.S.C. § 101. Accordingly, the relied-upon paragraph [00213] is in no way probative as to whether or how the hardware features which are actually recited in the claims (e.g., the processor, the circuitry, the registers, etc.) could reasonably be interpreted as being software per se.’
However, Examiner submits that a claim which can be (even if the claim does not have to be) interpreted as software per se is consequently directed to non-statutory subject matter. (As an analogy, a claim directed to a machine-readable medium, which may be interpreted to be either a non-transitory machine-readable medium or a transitory machine-readable medium, would still be rejected under 35 U.S.C. 101, because the broadest reasonable interpretation of the machine-readable medium encompasses the non-statutory subject matter of a transitory machine-readable medium.) While the instant disclosure may provide support for a hardware implementation, such does not preclude a rejection under 35 U.S.C. 101 based on the broadest reasonable interpretation of a claim encompassing a software implementation. Examiner notes that the claims do not recite that the relevant features are hardware.
Applicant across pages 15-16 argues: “With respect to paragraph [00213], the Office again alleges that: '...support for an entirely hardware implementation in some embodiments does not preclude the claim language, under the broadest reasonable interpretation, from being an entirely software implementation. Examiner notes that the claims do not recite that the relevant features are hardware.' - from page 21, lines 6-9 of the Final Office Action However, this is another mere repetition of the above-quoted allegations made regarding paragraph [0054] (and made again regarding paragraph [00213]) of the instant application. Applicants have addressed these allegations above. For at least the foregoing reasons, the Office's reliance on paragraph [00213] is an unreasonable basis for interpreting the pending claims as somehow being directed to software per se.”
Examiner’s responses to arguments above are likewise applicable to the aforementioned argument.
Applicant on page 16 argues: “Paragraph [00218] of the instant application indicates that some embodiments include non-transitory, tangible machine-readable media containing instructions or containing design data which defines circuits. However, none of current claims 1-4, 6, 7, 9-18, and 20 make any reference whatsoever to a non-transitory machine-readable media, much less to a non-transitory tangible, machine-readable media which contains instructions or design data. Accordingly, the relied-upon paragraph [00218] is in no way probative as to whether or how the hardware features which are actually recited in the claims (e.g., the processor, the circuitry, the registers, etc.) could reasonably be interpreted as being software per se.”
However, the claims not reciting machine-readable media does not preclude the disclosure of paragraph [00218] of instructions or design data which defines circuits from being pertinent to claim interpretation.
Applicant on page 16 argues: ‘With respect to paragraph [00218], the Office alleges that: "'containing instructions or containing design data, such as Hardware Description Language (HDL)""defin[ing]""structures, circuits, apparatuses, processors and/or system features described herein" - as disclosed in paragraph [0218] - reflects a software implementation of such "structures, circuits, apparatuses, processors and/or system features described herein"' - from page 17, lines 6-10 of the Final Office Action However, Applicants respectfully submit that this allegation ignores the fact that the claims do not actually refer to either instructions or design data, much less to any instructions or design data that might somehow define structures, circuits, or the like. Moreover, this allegation seems to improperly conflate, or ignore the distinction between, (1) a circuit, and (2) mere information (such as design data or instructions) which includes a definition of a circuit. For at least the foregoing reasons, the Office's reliance on paragraph [00218] is an unreasonable basis for interpreting the pending claims as somehow being directed to software per se.’
However, the claims not explicitly reciting “instructions or design data, such as Hardware Description Language (HDL), which define structures, circuits, apparatuses, processors and/or system features described in the disclosure” does not preclude the disclosure of paragraph [00218] of instructions or design data which defines circuits (or, in other words, circuits that are defined by instructions or design data) from being pertinent to claim interpretation. Examiner further submits that instructions or design data, such as Hardware Description Language (HDL), which define a circuit can be reasonably considered to be a software implementation of a circuit.
Conclusion
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/KEITH E VICARY/Primary Examiner, Art Unit 2183
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