DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments regarding claims 1 – 3, 6 – 12, and 14 – 20, filed 25 February 2026, have been fully considered and are persuasive. Therefore, the prior art rejections have been withdrawn.
The 35 U.S.C. 101 rejection has been maintained. A non-transitory computer readable storage medium is required to have a processor for executing instruction on the non-transitory computer readable storage medium, so it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized.
The 35 U.S.C. 112(b) rejections have been withdrawn, however new issues have occurred due to amendments.
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.
Claim 20 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Though claim 20 recite a “system” being “a non-transitory computer readable storage medium having stored thereon computer readable code”, it is nothing more than functional descriptive material per se, and hence is nonstatutory. Descriptive material can be characterized as either “functional descriptive material” or “nonfunctional descriptive material.” In this context, “functional descriptive material” consists of data structures and computer programs which impart functionality when employed as a computer component. (The definition of “data structure” is “a physical or logical relationship among data elements, designed to support specific data manipulation functions.” The New IEEE Standard Dictionary of Electrical and Electronics Terms 308 (5th ed. 1993).) “functional descriptive material” is nonstatutory when claimed as descriptive material per se. Warmerdam, 33 F.3d at 1360, 31 USPQ2d at 1759. When functional descriptive material is recorded on some computer-readable medium causing a processor to perform the instructions, it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized.
Claim Rejections - 35 USC § 112
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.
Clams 3, 4, 5, 9, and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 3, 4, 5, 9, and 18 recite the limitation "it". It is unclear what “it” is referencing to. Thus claims 12 is rejected under 35 U.S.C. 112(b) for being indefinite.
Allowable Subject Matter
Claims 1, 2, 4, 6 – 8, 10 – 17, 19, and 20 are allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY J CHOW whose telephone number is (571)272-8078. The examiner can normally be reached 11AM-7PM.
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/JEFFREY J CHOW/Primary Examiner, Art Unit 2618
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