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, see pages 14-15, filed 10/13/2025, with respect to the objection of claims 1 and 22 have been fully considered and are persuasive. The objection of claims 1 and 22 have been withdrawn.
Applicant's arguments, see pages 15-17, with respect to the rejection of claims 1, 3-4, 10, 12-17, 20-24 and 26-32 under 35 U.S.C. § 112(a) filed 10/13/2025 have been fully considered but they are not persuasive.
Applicant attests that paragraphs, [0040], [0074], [0104], [0113], and [0155] provide adequate written description support for the claim limitations at issue.
The Examiner respectfully disagrees.
The listed paragraphs of the published application comprise verbatim claim language repetition that do not provide any details with regard to the inventor having possession of the claimed invention. There was no intent within the Non-Final Rejection of making an enablement rejection, the written description requirement is separate and distinct from the enablement requirement. Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1341, 94 USPQ2d 1161, 1167 (Fed. Cir. 2010) (en banc) (If Congress had intended enablement to be the sole description requirement of § 112, first paragraph, the statute would have been written differently.) 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. As of the current record, there is no sufficient written description support in the originally filed disclosure for the claimed DeRM elements to perform two actions at the same time, and there is no sufficient written description to support the claimed invention establishing a side channel communication evidenced by the reasons set forth in the Non-Final Rejection. Applicant has not provided any explanation, aside from pointing to paragraphs that contain repetitions of claim language, as to how the originally filed disclosure supports the claim limitations at issue. Therefore, the rejection under 35 U.S.C. § 112(a) will be maintained.
Applicant’s arguments, see page 17, filed 10/13/2025, with respect to the rejection of claims 1, 3-4, 10, 12-17, 20-24 and 26-32 under 35 U.S.C. § 112(b) have been fully considered and are persuasive. The rejection of claims 1, 3-4, 10, 12-17, 20-24 and 26-32 under 35 U.S.C. § 112(b) have been withdrawn.
Applicant’s arguments, see page 17, filed 10/13/2025, with respect to the rejection of claims 27 and 32 under 35 U.S.C. § 112(d) have been fully considered and are persuasive. The rejection of claims 27 and 32 under 35 U.S.C. § 112(d) have been withdrawn.
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, 3-4, 10, 12-17, 20-24 and 26, 28-31 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.
Independent claims 1 and 22 recite “wherein the challenge causes each of the one or more DeRM elements to perform two actions at the same time: a. update the content of the DeRM element based on the content of the DeRM element and the challenge value; and b. output a 1-bit signal response based on the content of DeRM element before the update and the challenge value, the response indicating whether or not the new content is different in some particular way from the one that was there before the update”. There is no disclosure in the originally filed disclosure regarding how the claimed invention performs both of these actions “at the same time”.
Claims 28 and 29 recite “the sender establishing, via a side channel communication, that the recipient has received the container”. There is no disclosure in the originally filed disclosure regarding how the inventor intended to establish the side channel between the sender and recipient. The evidence for this lack of written description can be found on page 31 of the specification which recites in part, “It should be impossible or very improbable to read the content anywhere near 100% correctly - whether with or without leaving a noticeable trace - for any agent without engaging in a protocol with the Centre. Recall that we presume the existence of an authenticated side channel, so the requirement to engage in a protocol automatically assures that the protocol is with a legitimate counterparty”. The broadest reasonable interpretation of the claims include all conceivable ways of establishing a side channel communication, while the originally filed disclosure only presumes the existence of an authenticated side channel.
In MPEP 2161.01, "computer-implemented functional claim language must still be evaluated for sufficient disclosure under the written description". And MPEP 2161.01(I) "generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed." For computer-implemented inventions, the determination of the sufficiency of 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. 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.
As in MPEP 2161.01 (I), "The description requirement of the patent statute requires a description of an invention, not an indication of a result that one might achieve if one made that invention."). It 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, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015).
AS in MPEP 2161.01 “For instance, generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. Ariad, 598 F.3d at 1349-50, 94 USPQ2d at 1171 ("[A]n adequate written description of a claimed genus requires more than a generic statement of an invention' s boundaries.") (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1405-06); Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002) (holding that generic claim language appearing in ipsis verbis in the original specification did not satisfy the written description requirement because it failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d 1164, 1170, 25 USPQ2d 1601, 1606 (Fed. Cir. 1993) (rejecting the argument that "only similar language in the specification or original claims is necessary to satisfy the written description requirement").”
“The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 "merely by clearly describing one embodiment of the thing claimed." LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346, 76 USPQ2d 1731, 1733 (Fed. Cir. 2005). The issue is whether a person skilled in the art would understand applicant to have invented, and been in possession of, the invention as broadly claimed. In LizardTech, claims to a generic method of making a seamless discrete wavelet transformation (DWT) were held invalid under 35 U.S.C. 112, first paragraph, because the specification taught only one particular method for making a seamless DWT and there was no evidence that the specification contemplated a more generic method. "[T]he description of one method for creating a seamless DWT does not entitle the inventor . . . to claim any and all means for achieving that objective." LizardTech, 424 F.3d at 1346, 76 USPQ2d at 1733.”
The dependent claims fall together accordingly.
Conclusion
The prior art made of record in the submitted PTO-892 Notice of References Cited and not relied upon is considered pertinent to applicant’s disclosure.
The Examiner notes that there is no current rejection of the claimed invention with regard to prior art.
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 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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/M.A.L./ Examiner, Art Unit 2496
/HARESH N PATEL/ Primary Examiner, Art Unit 2496