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 .
Claim Status
Claims 1 and 4-22 are pending. No claims have been amended and no new claims have been added.
Response to Arguments
Applicant's arguments filed 5/20/25 have been fully considered but they are not persuasive. The Applicant’s representative disagrees with the rejection of claims 1 and 4-22 under 35 USC 112(a) for lack of adequate written description. Specifically, the Applicant’s representative submits that i) the Office Action fails to establish a prima facie case because it is unclear as to how the Specification did not adequately describe a) the first identified set of features such as: i) ‘a base feature’ allocates a first computing resource of the computing resources to a task’ and ii) ‘the enhanced feature’ allocates at least one additional computing resource of the computing resources to the task in parallel’” and b) the second set of features as “i) a base feature to ‘determine a first output of the base feature by carrying out the first computational task serially’ and ii) an enhanced feature ‘allocates more than the computing resources to the client device than the base feature to carry out at least a portion of the second computation task in parallel’ (see Remarks, pg. 9-10). As stated by the Applicant’s representative, these sets of features are interrelated and that the claimed remote computing infrastructure would be understood to be describe by, and in possession of the inventors, in the Specification, as discussed in paragraphs [0062]-[0074], among other sections (see Remarks, pg. 10). As to the cited portions for support in the Specification, the Applicant’s representative asserts that i) “a remote computing infrastructure containing computing resources” may involve “persistent storage specifying: a base feature [and] an enhanced feature” (see Remarks, pg. 10-11). Additionally, the Specification discusses “public or private cloud-based computing infrastructure may consist of a number of computing resources (e.g., processors, memory, storage, and/or networking) that are provided for purposes of satisfying short-term or long-term computing needs of individuals or entities” which may be accessed by client devices 300 to use computing resources of the cloud infrastructure (see Remarks, pg. 10-11, wherein the Fig. 3 depicts a public or private cloud-based computing infrastructure which may allow for client devices to use computing resources). The Applicant further asserts that portions of the Specification, as explained in paragraph [0062]-[0063], [0068], discuss steps that the client device “may analyze this task” and “it is assumed that the computing tasks provided in step 404 cannot or should not be parallelized” then the task it to be perform serially and/or parallelized (see Remarks, pg. 11). Moreover, the Applicant’s representative asserts that these parallelization may provide “UPSIZER” options for parallelization so as to perform reductions in overall processing time by the system to perform the task (see Remarks, pg. 11). The Applicant’s representative concludes that, based at least on these portions of the Specification, that one of ordinary skill “would understand that the Specification disclosures that the remote computing infrastructure system provides a base feature and an enhanced feature, where ‘the base feature allocates a first computing resource of the computing resources to the task to carry out at least a portion of the task in parallel,” and further “that the Specification discloses that, when the base feature is used (that is, when the enhanced feature has not been activated), the remote computing infrastructure system determines ‘a first output of the base feature by carryout the first computational task serially’ and that, when the enhanced feature to carry out at least a portion of the second computational task in parallel,’ as recited in the pending claims (see Remarks, pg. 11-12). The Examiner respectfully disagrees. The lack of adequate written description is not whether the base feature is carrying out the first computational task serially and the second computations task of the enhanced feature wherein the enhanced feature to carry out at least a portion of the second computational task in, but “how the inventor intends to achieve the claimed function to satisfy the written description requirement” (see MPEP 2161.01). As explained in MPEP 2161.01, the claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For computer-implemented inventions, as is claimed in the instant application, the determination of the sufficiency of the disclosure will require an inquiry into the sufficiency of both the disclosed hardware and the disclosed software due to the interrelationship and interdependence of computer hardware and software (see MPEP 2161.01I). The MPEP further notes, that the critical inquiry is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. It follows that in this instance, the cited portions of the Specification disclose a highly-generalized cloud computing environment that is capable of performing task in serial and parallel as shown in Fig. 3 below:
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As can be seen in Fig. 3, the Drawings disclose a highly-generalized public cloud infrastructure such as (e.g., Amazon Web Services) which receives tasks from client devices (see Specification, 0056, 0063). At best, the claim recites a general trademark to a set of goods to a commercially available public cloud or private cloud infrastructure. However, the Specification does not appear to adequately describe how the “enhanced feature allocates more of the computing resources to the client device than the base feature to carry out at least a portion of the second computational task in parallel” as recited in the Claims. For instance, a review of the Specification provides the general statement that “[a]ccordingly, at step 618, access network 602 allocates the additional capacity specified by this UPSIZER option” which then results in the allocation of additional capacity (see Specification, 0097). The corresponding drawing, Fig 6 is provided below:
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As is evident from the cited portions above , the Specification discloses a general statement of the desired result that by executing an “Upsizer” feature, the desired result of additional network capacity is provided. However, it does not provide any detail as to how the enhanced feature is intended to allocate more of the computing resources to the client device than the base feature to carry out at least a portion of the second computational task in parallel as recited.
Furthermore, the Specification provides several additional general statements that provide a desired result without adequate description such as: “upon result that a task can be parallelized it may reduce the overall processing time” (Specification, 0068) and “at step 412 the server device may provide the Upsizer options by way of a web interface listing each “Upsizer” option and an associated additional cost to the user so that they may make an informed decision regarding the performance of the task” (see Specification, 0070-0074). However, a general statement as to the benefit to perform a task in parallel of the Upsizer feature and/or options to select the Upsizer feature does not adequately describe to one of ordinary skill in the art how the interrelationship between the remote computing infrastructure and the base feature and enhanced features allocate a first computing resource of the computing resources to a task and how when the enhanced feature is selected, that any task of the Upsizer feature is carried out in at least parallel. Stated differently, the cited portions of the Specification recite a desired result for an enhanced feature to perform a task in parallel but does not adequately describe how the enhanced feature is programmed to allocate more of the computing resources to the client than the base feature to carry out at least a portion of the second computational task in parallel”. As stated in the MPEP, the “[i]t is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement” (see MPEP 2161.01 – citing Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683). It follows that upon review of the Applicant’s arguments and cited portions of the Specification, the claims recite a general commercially available technological environment (e.g., a remote public/private cloud infrastructure) without describe the interrelationship between the claimed software implemented functions to adequately describe the claimed invention. For at least these reasons, the Applicant’s arguments are not persuasive and the rejection under 35 USC 112(a) has been maintained below.
Moreover, as mentioned in the Interview on 6/27/25, the Examiner notes that the Applicant’s Remarks as to overcoming the rejection under 35 USC 101 were found persuasive because the Applicant submitted that the claims as a whole “improve[d] computer technology and technological processes – specifically, improved techniques for allocating computing resources for computational tasks in a remote computing infrastructure system, which integrates any judicial exception into a practical application” (see Remarks, dated 2/16/25, pg. 10). Stated differently, claimed directed to a specific and particular cloud computing environment in conjunction with the software (e.g., a base feature, an enhanced feature, and an overall ratio defining a proportionality between input provided by a user and output provided by the user) that can determine and allocate computing resources associated with a task of a base feature and a task of the enhanced feature in parallel could be found as an improvement to the functioning of the computer. The assertion of the rejection under 35 USC 112 was used to indicates that the Examiner was unable to find adequate support for the purported improvement to satisfy the written description requirement as to the particular algorithm and/or necessary steps taken by the software to implement the claimed computing function were not found. Furthermore, as was discussed above, a review of the Specification indicated that the details of the “remote computing infrastructure” were only identified by a Trademark (e.g., Amazon Web Services – Specification 0056). As noted in the MPEP 2173.05(u), “[i]t is important to recognize that a trademark or trade name is used to identify a source of goods, and is not the name of the goods themselves”. It follows that the Specification does not appear to provide sufficient disclosure to support a particular and specialized remote computing infrastructure. As was noted during the Interview, without adequate support for how the Inventor solved the technical solution to the technical problem, in this case, how the “enhanced feature allocates more of the computing resources to the client device than the base feature to carry out at least a portion of the second computational task in parallel” the claims as a whole appear to describe a base feature, enhanced feature, that when processed by the system provide outputs probabilistically proportional to overall ratio that would be re-evaluated.
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 and 4-22 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 claims 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. Specifically, the claims, as exemplified by independent Claims 1, 13, and 20 recites the limitations “wherein the base feature allocates a first computing resource of the computing resources to a task” and “wherein the enhanced feature allocates at least one additional computing resource of the computing resources to the task to carry out at least a portion of the task in parallel”. These limitations are not adequately described in the Specification to show possession of the claimed computer-implemented functions (see MPEP 2161.01). In particular, a review of the Specification does not appear to adequately describe or disclose how i) “the base feature allocates a first computing resource of the computing resources to a task” and ii) “wherein the enhanced feature allocates more of the computing resources to the client device than the base feature to carry out at least a portion of the second computational task in parallel” as recited in independent Claims 1, 13, and 20. Additionally, a review of the Specification does not adequately describe or teach how the inventor intended for the interrelationship between the remote computing infrastructure along with claimed software to cause i) the base feature “determine a first output of the base feature by carrying out the first computational task serially” and ii) the enhanced feature “allocates more of the computing resources to the client device than the base feature to carry out at least a portion of the second computation task in parallel”. It follows that the subject matter claimed is not adequately described to show possession at the time of filing of the invention. For at least these reasons, claims 1 and 4-22 are found to recite NEW MATTER.
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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/RYAN HSU/EXAMINER, Art Unit 3715