REISSUE PROCEDURAL REMINDERS
Disclosure of other proceedings. Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These disclosure obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 C.F.R. § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
Continued Examination Under 37 CFR 1.114
Receipt is acknowledged of a request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) and a submission, filed on February 9, 2026.
Claim Status
Claims 1, 5, 9, 13, 19 and 25 are rejected under 35 U.S.C 112(a) and 112(b). In addition, claims 1-30 are objected, as they would be allowed if the 112 rejections would be overcome. Claim 31 is withdrawn from the consideration.
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 1-30 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 (see MPEP 2163).
Claims 1, 5, 9, 13, 19 and 25 recite “determining, using a current value of a running counter associated with a third object and a previously recorded value of the running counter, when multiple uncompressed versions of the third object have been written to the in-memory, non-relational data store before a compressed form of a first version of the multiple uncompressed versions has been formed, and prevents the compressed form from overwriting a subsequent version of the third object written to the in-memory, non-relational data store” (emphasis added), however the original disclosure does not disclose this process in the manner as claimed.
The Examiner acknowledges the Applicant’s amendment directed to the “running counter”, however the original disclosure states “In some embodiments, to avoid a situation where an object's value was changed before the compressed object corresponding to the object's value arrived to the in-memory non-relational engine, a running counter for every object can be maintained. This running counter can be incremented by one for every change in the object's value. This counter can then be recorded when the compression process starts. If, at the end of the compression process and before that object is written back to the memory in a compressed format, it is found that the running counter is different from the recorded value, the compressed object is deleted. Otherwise, the uncompressed object is replaced with the compressed object when the running counter and the recorded value are equal”1.
It appears that this process ensures that the compressed object reflects the “latest version/value” of the uncompressed object and if it is not the case, the compressed object is deleted.
In contrast independent claims recite “ determining, using a current value of a running counter associated with a third object and a previously recorded value of the running counter, when multiple uncompressed versions of the third object have been written to the in-memory, non-relational data store before a compressed form of a first version of the multiple uncompressed versions has been formed, and prevents the compressed form from overwriting a subsequent version of the third object written to the in-memory, non-relational data store”. The cited portion of the specification does not teach determining when multiple uncompressed versions have been written before compression of the first version. In other words, based on the cited passage, the first version is compressed irrespectively of whether the uncompressed versions are available, but the compressed version will not be stored and replace the corresponding uncompressed object if the version of the uncompressed object is more current. Moreover, the original disclosure also does not appear to recite first, second and third objects.
If the Applicant maintains that the claimed limitations are supported by the original disclosure then clear support must be demonstrated and if the limitations are not recited verbatim, the Applicant is requested to explain how the claimed limitations are taught by the specification.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-30 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.
More specifically, the limitations “determining, using a current value of a running counter associated with a third object and a previously recorded value of the running counter, when multiple uncompressed versions of the third object have been written to the in-memory, non-relational data store before a compressed form of a first version of the multiple uncompressed versions has been formed, and prevents the compressed form from overwriting a subsequent version of the third object written to the in-memory, non-relational data store” (emphasis added), is deemed indefinite because metes and bounds of the claimed invention cannot be ascertained. The comparison of the counter values is supported by the specification and it is held definite. Similarly, permitting override of an older version with a newer version, however the disclosure about determining when multiple uncompressed versions of the third object have been written before a compressed form of a first version of the multiple uncompressed versions has been formed and preventing overwriting a subsequent version of the third object, is indefinite for the following reasons.
The disclosed scenario is not recited in the original specification and furthermore, significant portion of the independent claims is directed to first and second objects, thus it is unclear how first and second objects are related to the “third object” taught in the last paragraph of the independent claims.
Lastly, the limitation “determining, using a current value of a running counter associated with a third object and a previously recorded value of the running counter, when multiple uncompressed versions of the third object have been written to the in-memory, non-relational data store before a compressed form of a first version of the multiple uncompressed versions has been formed, and prevents the compressed form from overwriting a subsequent version of the third object written to the in-memory, non-relational data store”, one can conclude that that compressed form of the first version of the multiple uncompressed versions is created after it is determined when multiple uncompressed versions of the third object have been written. Thus, if it is known when uncompressed versions were written before compressing first version, it is prudent to conclude that if there is more than one version and the first version is compressed then the remaining versions would be version two, three and so on, making them a “newer” or more current versions, thus the step disclosing preventing overwriting would always take place. Accordingly, the Examiner maintains that in the current form, the step of determining does not yield any useful result.
It is advised to rewrite this portion of the claims and make it consistent with the language disclosed in the original disclosure. Additionally, it needs to be clear how the teaching about first and second objects relates to the last paragraph of those independent claims.
Claim Interpretation
Claim limitation “classifies the first object to a compression dictionary based on a value of the first object and/or the key of the first object; classifies the second object to a compression dictionary based on a value of the second object and/or the key of the first object … compresses the first object and the second object based on the compression dictionary to form a first object and a second compressed object, respectively … determines when multiple uncompressed versions of an object have been written to the in-memory, non-relational data store before a compressed form of a first of the versions has been formed, and prevents the compressed form from overwriting a subsequent version of the object written to the in-memory, non-relational data store” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph (see the 35 U.S.C. 112(b) rejection recited above).
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, 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 function 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 function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, 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 function and clearly links or associates the structure, material, or acts to the claimed function, 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 function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
The examiner finds several instances where the claim term explicitly includes functional language which would invoke 35 U.S.C. § 112, sixth paragraph.
The following is a quotation of 35 U.S.C. 112(f):
(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 following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
The following claim limitations have been interpreted under 35 U.S.C. § 112(f), because they use a generic placeholder coupled with functional language without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by structural modifier: in this instance “at least one hardware processor” recited in claims 9 and 25, performs multiple functions including
Limitation #1: “classifies the first object to a compression dictionary based on a value of the first object and/or the key of the first object; classifies the second object to a compression dictionary based on a value of the second object and/or the key of the first object”
Limitation #2: “compresses the first object and the second object based on the compression dictionary to form a first object and a second compressed object, respectively”
Limitation #3: “determines, using a current value of a running counter associated with a third object and a previously recorded value of the running counter, when multiple uncompressed versions of the third object have been written to the in-memory, non-relational data store before a compressed form of a first version of the multiple uncompressed versions has been formed, and prevents the compressed form from overwriting a subsequent version of the third object written to the in-memory, non-relational data store”
Since the claim limitations invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, limitation #1 has been interpreted to cover the corresponding structure described in the specification 8:58-65 and 10:58-67 and Figure 6, elements “learning engine” and “classification engine” and “compression dictionary space”, limitation #2 has been interpreted to cover the corresponding structure described in the specification 10:66-11:51, Figure 6, elements “learning engine” and “classification engine” and “compression dictionary space”. It is important to note that limitations #1 and #2 may have structures/steps which may overlap as both steps are related to one another. Limitation #3, in its entirety, does not appear to have a corresponding structure in the original disclosure, hence rejections under 35 U.S.C. 112(a) and 112(b) have been raised.
Please note, that as indicated in the 35 U.S.C. 112(a) rejection above, the original disclosure does not teach managing versions of data and compression of data as recited in the limitation above, however the closest disclosure pertaining to management of versions and compressing data has been discussed in (10:58 – 11:39). More specifically, cited passage teaches deleting uncompressed version which have been compressed, while claims 5,9, 19 and 25 recite persisting version even when compressed version is created.
In addition, claims 5 and 19 also invoke 112, sixth paragraph interpretation as explained below.
For a computer-implemented means-plus-function claim limitation invoking 35 U.S.C. § 112, sixth paragraph, a general purpose computer is usually sufficient for the corresponding structure for performing a general computing function (e.g., “means for storing data”), but the corresponding structure for performing a specific function is required to be more than simply a general purpose computer or microprocessor. In In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011), the court stated:
Those cases involved specific functions that would need to be implemented by programming a general purpose computer to convert it into a special purpose computer capable of performing those specified functions. … By contrast, in the seven claims identified above, Katz has not claimed a specific function performed by a special purpose computer, but has simply recited the claimed functions of ‘processing,’ ‘receiving,’ and ‘storing.’ Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ discussed below, those functions can be achieved by any general purpose computer without special programming. As such, it was not necessary to disclose more structure than the general purpose processor that performs those functions. Those seven claims do not run afoul of the rule against purely functional claiming, because the functions of ‘processing,’ ‘receiving,’ and ‘storing’ are coextensive with the structure disclosed, i.e., a general purpose processor.).
To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333. In this instance, the structure corresponding to a 35 U.S.C. § 112, sixth paragraph claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer. Aristocrat, 521 F.3d at 1338 (“Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. § 112 P 6. It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a ‘special purpose computer programmed to perform the disclosed algorithm.’ WMS Gaming, 184 F.3d at 1349.”) An algorithm is defined, for example, as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or “in any other manner that provides sufficient structure.” Finisar, 523 F.3d at 1340; see also Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003); In re Dossel, 115 F.3d 942, 946-47 (Fed. Cir.1997); Typhoon Touch Inc. v. Dell Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011); In re Aoyama, 656 F.3d 1293, 1306 (Fed. Cir. 2011).
In this instance claims 5 and 19 are directed to “a non-transitory computer-readable medium containing computer-executable instructions that, when executed by a processor, cause the processor to perform a method for” which is considered a general purpose computer which performs plurality of steps such as “classifying the first object to a compression dictionary based on a value of the first object and/or the key of the first object; classifying the second object to a compression dictionary based on a value of the second object and/or the key of the first object … compressing the first object and the second object based on the compression dictionary to form a first object and a second compressed object, respectively … determining when multiple uncompressed versions of an object have been written to the in-memory, non-relational data store before a compressed form of a first of the versions has been formed, and prevents the compressed form from overwriting a subsequent version of the object written to the in-memory, non-relational data store” (see the mapping to the specification as explained above).
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP §§ 2173 and 2181 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Allowable Subject Matter
Claims 1-30 recite allowable subject matter and would be allowed contingent upon resolving outstanding rejections as recited above.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claims 1, 5, 9, 13, 19 and 25, the prior art of record does not anticipate nor render obvious a system and method comprising the step of determining, using a current value of a running counter associated with a third object and a previously recorded value of the running counter, when multiple uncompressed versions of the third object have been written to the in-memory, non-relational data store before a compressed form of a first version of the multiple uncompressed versions has been formed, and prevents the compressed form from overwriting a subsequent version of the third object written to the in-memory, non-relational data store, along with the remaining elements/steps as recited by independent claims 1, 5, 9, 13, 19 and 25.
With respect to claims 2-4, 6-8, 10-12, 14-18, 20-24 and 26-30, those claims also recite allowable subject matter by the virtue of their dependency on claims 1, 5, 9, 13, 19, 25 respectively.
Response to Arguments
Applicant's arguments filed February 9, 2026 have been fully considered but they are not persuasive.
In the first argument on pages 11-12, the Applicant contends “Applicant respectfully submits that claims 1-30, both in their original form and in their current amended form, comply with the written description requirement. In one non-limiting example, the instant application in paragraph [86] explicitly discloses:
In some embodiments, to avoid a situation where an
object's value was changed before the compressed object
corresponding to the object's value arrived to the in-
memory non-relational engine, a running counter for
every object can be maintained. This running counter can
be incremented by one for every change in the object's value.
This counter can then be recorded when the compression
process starts. If, at the end of the compression process
and before that object is written back to the memory in
a compressed format, it is found that the running counter
is different from the recorded value, the compressed
object is deleted. Otherwise, the uncompressed object is
replaced with the compressed object when the running
counter and the recorded value are equal.
Applicant respectfully requests withdrawal of the rejection and allowance of claims 1-30 in light of the explanation above”.
The Examiner’s Response: The Examiner did not find the above argument persuasive. For the clarity purposes and to also address newly added limitation, the Examiner has amended explanation of the rejections under 35 U.S.C. 112(a) and 112(b) above.
The Examiner acknowledges the Applicant’s incorporation of the counter however the limitations recited in the last paragraph of the independent claims, are not supported by the original disclosure. More specifically, the cited passage above or remaining part of the specification does not appear to teach the underlined limitations: “determining, using a current value of a running counter associated with a third object and a previously recorded value of the running counter, when multiple uncompressed versions of the third object have been written to the in-memory, non-relational data store before a compressed form of a first version of the multiple uncompressed versions has been formed, and prevents the compressed form from overwriting a subsequent version of the third object written to the in-memory, non-relational data store”.
For those reasons, the Examiner maintains the 112(a) rejection.
In the second argument, the Applicant submits “As noted above, without conceding to the merits of the rejection and solely in the interests of advancing prosecution, Applicant has amended the feature at issue in claims 1, 5, 9, 13, 19 and 25 to recite "determining, using a current value of a running counter associated with the third object and a previously recorded value of the running counter, when multiple uncompressed versions of the third object have been written to the in-memory, non-relational data store before a compressed form of a first version of the multiple uncompressed versions has been formed, and preventing the compressed form from overwriting a subsequent version of the third object written to the in-memory, non-relational data store."
As further noted above, Applicant respectfully submits that the instant application in paragraph [086] explicitly discloses:
In some embodiments, to avoid a situation where an
object's value was changed before the compressed object
corresponding to the object's value arrived to the in-
memory non-relational engine, a running counter for
every object can be maintained. This running counter can
be incremented by one for every change in the object's value.
This counter can then be recorded when the compression
process starts. If, at the end of the compression process
and before that object is written back to the memory in
a compressed format, it is found that the running counter
is different from the recorded value, the compressed
object is deleted. Otherwise, the uncompressed object is
replaced with the compressed object when the running
counter and the recorded value are equal.
As such, Applicant respectfully submits that it is clear how the determining step is carried out”.
The Examiner’s Response: The Examiner did not find the above argument persuasive. For the clarity purposes and to also address newly added limitation, the Examiner has amended explanation of the rejections under 35 U.S.C. 112(a) and 112(b) above.
The cited passage does not support, let alone explain the underlined limitations: “determining, using a current value of a running counter associated with a third object and a previously recorded value of the running counter, when multiple uncompressed versions of the third object have been written to the in-memory, non-relational data store before a compressed form of a first version of the multiple uncompressed versions has been formed, and prevents the compressed form from overwriting a subsequent version of the third object written to the in-memory, non-relational data store”2.
The Applicant is advised to ensure that the wording in the claims is consistent with the original disclosure. In this instance, the Applicant introduced first, second and third objects and it appears that first and second objects are unrelated to the third object and if this is the case then the claim lacks proper flow and instead is recitation of random steps. Lastly, as explained above, the Examiner recognizes that the running counter is utilized to keep track of file versions and to ensure that the compressed version of a file is current, but the manner in which the independent claims are written now, does not clearly disclose that.
Accordingly, the rejections under 112(b) are maintained.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA M LIE whose telephone number is (571)272-8445. The examiner can normally be reached on M-F, 6:00 am - 2:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Fischer can be reached on 571-272-6779.
All correspondence relating to this reissue proceeding should be directed:
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/ANGELA M LIE/Primary Examiner, Art Unit 3992
Conferees:
/LUKE S WASSUM/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 US Patent No. 10,984,018 (11:27-40)
2 For detailed reasons, please see the rejection under 35 U.S.C. 112(b) above
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