DETAILED ACTION
Notice of 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 Amendment
The amendment filed 2026-03-19 has been entered and fully considered.
In light of applicant’s amendment, filed 2026-03-19, the 35 U.S.C. § 101 rejection has been withdrawn.
In light of applicant’s amendment, filed 2026-03-19, the 35 U.S.C. § 112(a) rejection has been withdrawn.
Response to Arguments
Applicant’s arguments, see pages 15-17, filed 2026-03-19, with respect to the rejection of claims 28 and 31 under 35 U.S.C. § 112(b) have been fully considered but they are not persuasive.
In response to applicant’s argument that the Specification expressly recites and clearly links the structure, material, or acts that perform the claim functions that invoke 112(f), the Examiner respectfully disagrees. The Examiner notes that the paragraphs cited by applicant use language such as “for example” and/or describes the means for as “circuitry” that may be “hardware, software, and/or firmware” that may be implanted by “e.g., processor circuitry, discrete and/or integrated analog and/or digital circuitry, an FPGA, an ASIC, an XPU, a comparator, an operational-amplifier (op-amp), a logic circuit, etc”. However, the Examiner notes that the supporting structure cannot simply be a general-purpose computer by itself but instead must be a special-purpose computer as programmed to perform the disclosed algorithm” and that “the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer”; See MPEP § 2181(II)(B). That is, merely referencing a specialized computer (e.g., a ‘bank computer’), some undefined component of a computer system (e.g., ‘access control manager’), ‘logic,’ ‘code,’ or elements that are essentially a black box designed to perform the recited function, will not be sufficient because there must be some explanation of how the computer or the computer component performs the claimed function; See Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1383-85, 91 USPQ2d 1481, 1491-93 (Fed. Cir. 2009); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1366-67, 88 USPQ2d 1751, 1756-57 (Fed. Cir. 2008); Ex parte Rodriguez, 92 USPQ2d 1395, 1405-06 (Bd. Pat. App. & Inter. 2009).
In this instance, the claims recite various computer components and the desired function, but do not specify either an algorithm or particular design of the computer components that enables them to perform the corresponding claimed function. Further, the Examiner notes that if the Specification “discusses the implementation of the functionality of the invention through hardware, software, or a combination of both”, then “a question can arise as to which mode of implementation supports the means-plus-function limitation”. In this instance, the claim uses similar generic language and it is unclear which generic implementation(s) correspond to the means-plus-function limitations.
Based on the citations cited by Applicant, the Examiner respectfully submits that the citations do not provide sufficient structure (e.g. an algorithm that transforms a general-purpose microprocessor to the special purpose computer), nor does the specification clearly link the corresponding structure such that one of ordinary skill in the art would understand what are the equivalents thereof.
Thus, the Examiner respectfully submits that the 35 U.S.C. § 112(b) rejection is proper.
Applicant’s arguments, see pages 18-20, filed 2026-03-19, with respect to the claim amendments overcoming the cited prior art references of the rejection of claims 1, 10, and 28 under 35 U.S.C. § 102(a)(1) and of claims 4, 13, and 31 under 35 U.S.C. § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
35 USC § 112(f)
The following is a quotation of 35 U.S.C. 112(f):
ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” with functional language, and are thus being interpreted under 35 U.S.C. 112(f). Such claim limitations are: all the “means for” recitations in claims 28 and 31.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification is unclear as to the corresponding structure or acts described in the specification for the 35 U.S.C. 112(f) limitations.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
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.
Claims 1, 4, 10, 13, 28, and 31 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Specifically, Claim 1 recites the limitation “wherein the plurality of bitwise shift operations collectively multiply the product by an operand that is two times a value which is not expressed as a sum of powers of two”, and the limitation is unclear. In particular:
It’s unclear whether the “bitwise shift operations” of the “plurality of bitwise shift operations” are to be interpreted as dependent, independent, or both. That is, it is unclear whether the limitation is that the product is shifted and the result is shifted again, or whether the product is independently shifted by different bitwise shift operations. It appears the only supported embodiment that is functional requires a plurality of separate bitwise shift operations performed on the product that, when added together, produce a sum that is two times a whole number that is not expressible as a sum of whole-powers of two, and that such features are also unclaimed essential matter; See MPEP § 2172.01.
It’s unclear whether the limitation “which is not expressed as a sum of powers of two” is indicating that a number simply hasn’t been expressed as a sum of powers of two or indicating that the number cannot be expressed as a power of two. Further, because any number can be expressed as a power of two by solving (log2 x) to determine the appropriate power (even if a decimal value), it’s unclear what this limitation imparts.
Claims 10 and 28 are rejected under a similar rationale. The dependent claims included in the statement of rejection but not specifically addressed in the body of the rejection have inherited the deficiencies of their parent claim and have not resolved the deficiencies. Therefore, they are rejected based on the same rationale as applied to their parent claims above.
Claims 28 and 31 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Specifically, with regard to claim 28, all of the claim elements are limitations that invoke 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the functions. In particular, the Specification does not explicitly disclose what structure performs the claimed functions.
Applicant may:
(a) Amend the claim so that the claim limitations will no longer be interpreted as a limitation under 35 U.S.C. 112(f);
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed functions, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the functions recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the functions so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed functions, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed functions and clearly links or associates the structure, material, or acts to the claimed functions, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed functions. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Allowable Subject Matter
Claim 1, 4, 10, 13, 28, and 31 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
In interpreting the currently amended claims, in light of the specification as well arguments presented in the response) to the Office action, the Examiner finds the claimed invention to be patentably distinct from the prior art of record. First, Applicant’s arguments with respect to the claim amendments traversing the prior art of record are persuasive. In addition, based on an updated search and further consideration, the Examiner has been unable to locate prior art that would anticipate or render obvious the claimed invention as a whole.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Bechtel whose telephone number is 571-270-5436. The examiner can normally be reached Monday - Friday, 09:00 - 17:00 ET.
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/Kevin Bechtel/
Primary Examiner, Art Unit 2491