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 .
Claims 1-4, 6-7, 9-18, and 20 are pending in this office action and presented for examination. No claims are amended by the response received July 2, 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.
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 3 argues: ‘Applicants note that the word "respective" in the claimed "count of instances each of a respective event type" serves the purpose of allowing for there to be a distinction in independent claims 1, 10 and 16 between one event type, for which one control register is maintaining a count, and a different event type for which another control register is maintaining a count.’
Examiner agrees with Applicant that the instant application provides support for “one event type, for which one control register is maintaining a count, and a different event type for which another control register is maintaining a count”. However, Examiner submits that the limitation cited in the rejection does not reflect this subject matter.
Examiner submits that the respective language in the claimed "count of instances each of a respective event type" conveys that each instance is of a corresponding event type. As such, the claim language appears to be directed to a count (for example, at a point in time, this count could be three) of instances each of a respective event type (for example, the aforementioned count could be three due to a first instance corresponding to a first event type, a second instance corresponding to a second event type, and a third instance corresponding to a third event type; in other words, the aforementioned count would be counting all instances of multiple event types).
While Applicant may intend for the word “each” in the aforementioned claim language to apply to “count” rather than “instances”, Examiner notes that “each” is nevertheless recited adjacent to “instances”.
Applicant on page 4 argues: ‘However, Applicants respectfully note the difference between the following two features: (1) the currently claimed feature "...the respective one or more second fields of the control register comprise: a respective third field ...", and (2) the Office's above-suggested feature that "each of the respective one or more second fields of the control register comprise a corresponding third field, wherein the number of second fields equals the number of third fields." None of the pending claims is directed to the above feature (2). Due at least to the difference between the above features (1) and (2), the rejection of claims 2, 11 and 17 is improperly based on an unreasonable requirement that the Specification provide support for a feature which is not recited in any of claims 2, 11, and 17.’
However, Examiner submits that the claims are directed to (2) above via the recitation of (1). In other words, Examiner has merely paraphrased (1) into (2) to facilitate understanding of the written description rejection. In other words, Examiner submits that respective one of more second fields comprising a respective third field entails each second field comprising a third field (such that, for example, if there are four second fields, than there are four third fields). However, the original disclosure does not appear to provide support for this subject matter.
Applicant on page 5 argues: ‘However, Applicants respectfully submit that the term "metes and bounds" - as referred to in the above-quoted passage - is not relevant to any written description analysis under 35 U.S.C. § 112(a). Rather, the term is commonly used in relation to a definiteness analysis under 35 U.S.C. § 112(b). See, e.g., M.P.E.P. §2173.02. None of claims 2, 11, or 17 is currently rejected under 35 U.S.C. §112(b).’
Examiner first generally submits that the term may be relevant to written description analysis. For example, Examiner submits that the original disclosure defines the metes and bounds of the support for the invention; if the metes and bounds of the claim language encompasses subject matter outside the metes and bounds of the original disclosure, then Examiner submits that a written description rejection is appropriate.
Applicant on page 5 argues: “Applicants again note that 35 U.S.C. § 112(a) does not impose any requirement that the description be in ipsis verbis with (i.e., having exactly the same words as) the claims. See, e.g., M.P.E.P. §2163. Rather, the proper analysis under 35 U.S.C. §112(a) is whether the originally filed disclosure, taken as a whole, would have conveyed to a skilled artisan that Applicants were in possession of the claimed subject matter at the time of filing.”
While there is no requirement that the description be in ipsis verbis with (i.e., having exactly the same words as) the claims, Examiner notes that the claims must nevertheless still be wholly supported by the description, and different wording may inadvertently lead to claim language that is broader than that which is supported in the original disclosure.
Applicant on page 5 argues: “Applicants respectfully submit that one of ordinary skill in the art, with the benefit of the original disclosure of the instant application, would readily appreciate that a given third field, which is to determine a particular combination of PMC counters to be included when a PEBS record is generated, could (and arguably, must) identify - as part of such determining - whether a value of a respective counter is to be included in the PEBS record. For at least the foregoing reasons, Applicants respectfully submit that each of claims 2, 11 and 17 meets the requirements of 35 U.S.C. §112(a).”
Examiner notes that Applicant appears to acknowledge the possibility that the relevant claim language is not necessarily wholly supported by the original disclosure, in view of the “could” and “arguably” language above. Examiner maintains that “determining” “a particular combination of PMC counters” to be included does not necessarily provide support for, “identifying” “whether” “a value of a respective counter” is to be included. As one example, “determin[ing] a particular combination of PMC counters to be included” may not encompass the possibility that no PMC counters are included, whereas “identify[ing] ‘whether’ a value of a respective counter is to be included” may encompass such a possibility.
Applicant on page 6 argues: ‘Applicants further note that while paragraph [0099] of the instant application includes references to various register groups, the Specification does not state, imply, or otherwise indicate that a given register group cannot include only one register. Applicants again note that 35 U.S.C. § 112(a) does not impose any requirement that the description be in ipsis verbis with (i.e., having exactly the same words as) the claims. See, e.g., M.P.E.P. §2163. Rather, the proper analysis under 35 U.S.C. § 112(a) is whether the originally filed disclosure, taken as a whole, would have conveyed to a skilled artisan that Applicants were in possession of the claimed subject matter at the time of filing. Applicants respectfully submit that one of ordinary skill in the art, with the benefit of the original disclosure of the instant application, would readily appreciate that a register group - as with the "one or more registers" recited in claim 3 - might include only one register or, alternatively, multiple registers. For at least the foregoing reasons, Applicants respectfully submit that claim 3 meets the requirements of 35 U.S.C. § 112(a).’
However, Examiner submits that a specification not stating, implying, or otherwise indicating that a given register group cannot include only one register does not consequently mean that the specification has support for a given register group including only one register. Examiner also generally notes that instant paragraph [00174], for example, discloses multiple general-purpose registers, and generally submits that a person of ordinary skill in the art would expect a processor to have more than one general-purpose register.
Applicant on page 7 argues: ‘However, Applicants respectfully note the difference between: (1) the currently claimed feature "...the respective one or more second fields of the
control register comprise a respective one or more third fields ...", and (2) the Office's above-suggested feature that each of the respective one or more second fields of the control register comprise a corresponding one or more third fields, wherein the number of second fields equals the number of sets of one or more third fields." None of the pending claims is directed to the above feature (2). Due at least to the difference between the above features (1) and (2), the rejection of claim 3 is improperly based on an unreasonable requirement that the Specification provide support for a feature which is simply not currently recited in claim 3.’
However, Examiner submits that the claims are directed to (2) above via the recitation of (1). In other words, Examiner has merely paraphrased (1) into (2) to facilitate understanding of the written description rejection. In other words, Examiner submits that respective one of more second fields comprising a respective one or more third fields entails each second field comprising a third field (such that, for example, if there are four second fields, than there are four third fields). However, the original disclosure does not appear to provide support for this subject matter.
Applicant across pages 7-9 argues the indefinite rejection of claim 3.
In view of Applicant’s arguments, the aforementioned indefinite rejection of claim 3 is withdrawn.
Applicant on page 10 argues: “The above claim rejection is based on the Office's conclusion that - allegedly – the claims can be interpreted as software per se, and thus can be made without an actual hardware apparatus. Applicants respectfully submit that this conclusion is predicated upon an unreasonable interpretation of both the claim language and the passages of the Specification - i.e., paragraphs [00218], [0054], [00105] and [00213] - upon which the claim rejection relies. When read in accordance with their plain language and under the broadest reasonable interpretation consistent with the Specification, the current claims are plainly directed to a statutory machine comprising expressly recited structural hardware components. Nothing in the cited Specification supports interpreting those structural hardware limitations as software per se.” Applicant on page 11 argues: “The Office Action does not identify any claim language as allegedly reciting software, executable instructions, source code, object code, or any other software per se. Rather, the rejection appears to disregard the express structural language of the claims, and instead concludes that the recited hardware limitations should be interpreted as software based solely upon selected passages of the Specification. Applicants respectfully submit that neither the claims nor the Specification support such an interpretation.” Applicant on page 11 argues: “These decisions are significant because the Office Action effectively assumes that hardware terminology in a claim loses its structural significance merely because a specification discloses the possibility of software embodiments. However, structural claim terms remain structural unless the intrinsic evidence demonstrates otherwise. Here, neither the claim language nor the Specification redefines the recited hardware components as software or otherwise strips them of their structural meaning.”
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 12 argues: “However, the relied-upon passage of paragraph [00218] merely concerns one type of media by which some embodiments are realized. It does not address claim construction at all. Furthermore, paragraph [00218] inherently distinguishes each of the following from one another: (1) non-transitory, tangible machine-readable media, (2) instructions, (3) design data, and (4) structures, circuits, apparatuses, processors and/or system features. Far from equating circuitry with software, paragraph [00218] recognizes circuits (or circuitry) as a distinct structural concept. More particularly, paragraph [00218] acknowledges the fact that design data which defines circuitry (one type of hardware) is fundamentally different from an actual instance of such circuitry, which - in turn - is fundamentally different from executable software instructions. Consequently, paragraph [00218] reinforces rather than eliminates the distinction between hardware structures and software implementations.”
However, 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”. Examiner submits that paragraph [00218] conveying that “instructions or … design data, such as Hardware Description Language (HDL)” “defines structures, circuits, apparatuses, processors and/or system features described herein” does not preclude an interpretation of “structures, circuits, apparatuses, processors and/or system features described herein” from being software.
Applicant on page 12 argues: “However, the relied-upon passage of paragraph [0054] merely identifies alternative implementation techniques. It expressly encompasses embodiments implemented entirely in hardware, embodiments implemented entirely in software, embodiments implemented entirely in firmware, and mixed implementations employing combinations of those technologies. Paragraph [0054] therefore broadens the disclosure of possible embodiments. However, it does not redefine the meaning of any claim term.”
Examiner agrees that paragraph [0054] identifies that the disclosed blocks (e.g., processor 202, counter 204, PEBS 210, PEBS buffer 212, and memory 220) may be implemented entirely in software. Consequently, Examiner submits that the broadest reasonable interpretation of a processor (and therefore its constituent elements as well), a counter, PEBS (and therefore its constituent elements as well), a PEBS buffer, and memory, encompasses a software implementation, regardless of whether one considers the specification supporting the interpretation of a claim limitation as software to be “redefin[ing] the meaning” of the claim term.
Applicant across pages 12-13 argues: ‘For example, paragraph [0054] neither states nor implies that any, much less each, of the variously-claimed hardware structures - e.g., including "control registers," "first control register," "first one or more control registers," "second one or more control registers," "third one or more control registers," "fourth one or more control registers," "first circuitry," "second circuitry," and "third circuitry" - should somehow be interpreted as software, or that structural hardware terminology should be construed differently. In citing to paragraph [0054], the Office Action omits any reference whatsoever to these variously-claimed hardware structures.’
However, Examiner notes that the claims do not recite that the relevant structures are hardware, and, as noted above, paragraph [0054] identifies that the disclosed blocks (e.g., processor 202, counter 204, PEBS 210, PEBS buffer 212, and memory 220) may be implemented entirely in software. Consequently, Examiner submits that the broadest reasonable interpretation of a processor (and therefore its constituent elements as well), a counter, PEBS (and therefore its constituent elements as well), a PEBS buffer, and memory, encompasses a software implementation. Examiner notes that the relevant structures are disclosed as being part of the processor.
Applicant on page 13 argues: “In the absence of the Office Action providing any indication to the contrary, Applicants respectfully submit that paragraph [0054] simply does not purport to redefine any claim terms, much less each of the variously-recited hardware terms in independent claims 1, 10 and 16. Rather, paragraph [0054] merely acknowledges that different embodiments may be realized using different implementation techniques. Such implementation flexibility is commonplace in patent specifications, and does not alter the ordinary meaning of expressly recited hardware limitations.”
However, Examiner notes that the claims do not recite that the relevant structures are hardware, and, as noted above, paragraph [0054] identifies that the disclosed blocks (e.g., processor 202, counter 204, PEBS 210, PEBS buffer 212, and memory 220) may be implemented entirely in software. Consequently, Examiner submits that the broadest reasonable interpretation of a processor (and therefore its constituent elements as well), a counter, PEBS (and therefore its constituent elements as well), a PEBS buffer, and memory, encompasses a software implementation, regardless of whether one considers the specification supporting the interpretation of a claim limitation as software to be “redefin[ing] the meaning” of the claim term. Examiner submits that it is generally unclear as to how a processor (for example) that is disclosed to be able to be implemented in software would nevertheless not be able to be interpreted as software in the claims.
Applicant on page 13 argues: “As seen above, the relied-upon passage of paragraph [00105] merely identifies the possibility of some embodiments being implemented with software. However, it does not redefine the meaning of any claim term. For example, paragraph [00105] neither states nor implies that circuitry is software, or that a control register is software. Nor does paragraph [00105] otherwise indicate that any, much less each, of the variously-recited hardware structures of independent claims 1, 10 and 16 might instead be interpreted as software somehow. Instead, paragraph [00105] simply recognizes that software implementations are among several possible implementation alternatives. The mere disclosure of software embodiments cannot reasonably be construed as an implicit redefinition of structural hardware terminology.”
Examiner submits that paragraph [00105]’s disclosure that hardware components can be emulated or implemented as software modules supports Examiner’s position that the relevant claimed components can be interpreted as software, even if each and every relevant claimed component is not explicitly listed in paragraph [00105].
Applicant across pages 13-14 argues: ‘As seen above, the relied-upon passage of paragraph [00213] - like paragraph [0054] - merely identifies alternative implementation techniques. It expressly encompasses embodiments implemented entirely in hardware, embodiments implemented entirely in software, embodiments implemented entirely in firmware, and mixed implementations employing combinations of those technologies. Paragraph [00213] therefore broadens the disclosure of possible embodiments. However, it does not redefine the meaning of any claim term. For example, paragraph [00213] neither states nor implies that circuitry is software, or that a control register is software. Nor does paragraph [00213] otherwise indicate that any, much less each, of the variously-recited hardware structures of independent claims 1, 10 and 16 might instead be interpreted as software somehow. Instead, paragraph [00213] simply recognizes that software implementations are among several possible implementation alternatives. The mere disclosure of software embodiments cannot reasonably be construed as an implicit redefinition of structural hardware terminology.’
Applicant appears to argue that the claimed structures are necessarily hardware, despite not reciting “hardware”. However, the cited portions of the specification support Examiner’s position that the claimed structures do not necessarily have to be interpreted as hardware.
Applicant on page 14 argues: ‘Read as a whole, the Specification consistently describes multiple implementation alternatives, including hardware embodiments, firmware embodiments, software embodiments, and combinations thereof. The purpose of these disclosures is to provide implementation flexibility and to ensure that the Specification adequately supports multiple implementation techniques. However, disclosure of implementation alternatives is fundamentally different from redefining claim language. Nothing in the cited portions of the Specification states that the ordinary meaning of "control registers," "first control register," "first one or more control registers," "second one or more control registers," "third one or more control registers," "fourth one or more control registers," "first circuitry," "second circuitry," or "third circuitry" should be abandoned. Nothing in the Specification states that such terms encompass software per se. Nothing instructs the reader that whenever those hardware terms appear in the claims they should instead be interpreted as software. The Office's interpretation therefore has no support in the Specification itself.’
Applicant appears to argue that the claimed structures are necessarily hardware, despite not reciting “hardware”. However, the cited portions of the specification support Examiner’s position that the claimed structures do not necessarily have to be interpreted as hardware. It is unclear as to how the relevant claim terms could not be interpreted to encompass software under the broadest reasonable interpretation in light of the specification, when the specification, as acknowledged by Applicant, describes software embodiment implementations.
Applicant on page 14 argues: “The Office Action also appears to conflate the disclosure of software embodiments with the scope of the pending claims. Patent applicants routinely disclose numerous alternative embodiments in order to satisfy the written description and enablement requirements of 35 U.S.C. §112. It is equally routine for specifications to state that disclosed functionality may be implemented using hardware, software, firmware, or combinations thereof. Such implementation language expands the range of disclosed embodiments, but it does not redefine claim terms or alter the statutory category of claims that expressly recite hardware.”
Examiner submits that the claims do not expressly recite hardware. Examiner also submits that the subject matter of the cited paragraphs goes beyond merely stating that disclosed functionality may be implemented using hardware, software, firmware, or combinations thereof.
Applicant on page 15 argues: ‘Should the claim rejection nevertheless be maintained for some reason, Applicants respectfully request that the Office identify the specific disclosure in the Specification that expressly defines or otherwise requires construing the recited "control registers," "first control register," "first one or more control registers," "second one or more control registers," "third one or more control registers," "fourth one or more control registers," "first circuitry," "second circuitry," and "third circuitry" as software per se.’
Examiner generally notes that claim rejection is not based on the specification “requir[ing]” construing the aforementioned elements as software per se. 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 further submits that the paragraphs cited in the rejection (and discussed above) provide sufficient support for the broadest reasonable interpretation in light of the specification of the aforementioned listed claim elements to encompass software implementations.
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.
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/KEITH E VICARY/Primary Examiner, Art Unit 2183
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