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 Interpretation
Under the broadest reasonable interpretation standard, the “or” language, the condition would also not occur and the step or function claimed would never be realized, hence the claim does not require to perform the step or function. See Ex parte Katz, 2011 WL 514314, at 4-5 (BPAI Jan. 27, 2011, 2011 WL 1211248 at 2 (BPAI Mar. 25, 2011); see also In re Johnston, 435 f.3d 1381, 1384 (Fed. Cir. 2006)("optional elements do not narrow the claim because they can always be omitted”). “Or” conditions are not limitations against which prior art must be found. Under the broadest scenario, the steps or functions dependent on the “or” condition would not be invoked, and such, the Examiner is not required to find these limitations in the prior art in order to render the claim anticipated. In re Am. Acad. Of Sci. Tech Ctr., 367 f.3d 1359, 1359 (Fed. Cir. 2004).
In the context of patent claims, "at least one of A and B" generally means "at least one of A and at least one of B," requiring the presence of at least one of each element, not just one or the other. Ex parte Jung, 2016-008290 PTAB Mar. 22, 2017 and SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004).
It has been held that to be entitled to weight in method claims, the recited structure limitations therein must affect the method in a manipulative sense, and not to amount to the mere claiming of a use or not the use of a particular structure. Ex parte Pfeiffer, 1962 C.D. 408 (1961).
During examination, a claim must be given its broadest reasonable interpretation consistent with the specification as it would be interpreted by one of ordinary skill in the art. Because the applicant has the opportunity to amend claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified. The focus of the inquiry regarding the meaning of a claim should be what would be reasonable from the perspective of one of ordinary skill in the art. See MPEP § 2111 for a full discussion of broadest reasonable interpretation. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. During examination of a patent application, a claim is given its broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal quotation marks omitted). Additionally, "[t]hough understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitation that are not a part of the claim." See SuperGuide Corp. v. DirecTVEnterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).See MPEP § 2111.01 for a full discussion of the plain meaning of claim language.
Drawings
The drawings were received on January 21, 2026. These drawings are approved.
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.
Claims 1-20 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.
The independent claims are in alternative form and there are antecedent problems. The claims state that there is a first MEC system OR the EDGEAPP, hence there can be only a first MEC or first EDGEAPP. For example, there is only a first MEC, there is no antecedent basis then for the first EDGEAPP, and vice vera. Also, there is only a first MEC, a second EDGEAPP, is confusing since there is no first EDGEAPP, and vice versa.
Regarding claims 10 and 20, the use of “protocols”, protocols and standards change over time, hence, it is inappropriate to have the scope of a claim change with time. Since organizations implementing standards meet regularly and have the authority to modify standards, any connection a claim may have to these standards may varying scope over time. The other aspect arising from this is enablement. If the standard changes, the disclosure may no longer support the limitation. If the scope of the invention sought to be patented cannot be determined from the language of the claims, a second paragraph rejection is appropriate (In re Wiggins, 179 USPQ 421). Note:ttp://www.uspto.gov/web/offices/dcom/bpai/decisions/fd970622.pdf. Also, The term “family” in claims 10 and 20 is a relative term which renders the claim indefinite. The term “family” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Applicant states, “new standards may be added to a family, but this merely means that implementations according to those new standards would also fall within the claim scope,” and “The claim deliberately uses standards family rather than a specific standard version precisely to encompass current and future standards in these families without being limited to a particular version that might become obsolete.” Applicant admits their claims will varying scope over time. The standard or family changes, the disclosure may no longer support the limitation. Hence the scope changes over time, as admitted by Applicant, the scope of the invention sought to be patented cannot be determined from the language of the claims, a rejection is appropriate.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 11-19, as understood, is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by United States Patent Application Publication 2023/0145165 (Lee).
The claims are confusing and unclear and are not fully understood The Examiner will try to apply art to these perplexing claims.
A computing system (figure 8) comprising processing circuitry (#830) and a memory device (#810) including instructions embodied thereon. The instructions, which when executed by the processing circuitry (#830), configure the processing circuitry (#830) for coordinating operations between a multi-access edge computing (MEC) system and an EDGEAPP system (Figures 1 and 2, Abstract, ¶2), with operations to perform lifecycle management (LCM) operations of MEC and EDGEAPP applications in an Operator Platform instance in an Operator Platform domain, to enable coordination of the MEC and EDGEAPP applications in the MEC system and the EDGEAPP system respectively (¶73, 77-78, 87-92). Receive application data from an application client of a user equipment (UE)(FIGURE 1, #100, APPLICATION DATA TRAFFIC). The application client is associated with a first of the MEC system (figure 2, #2402) or the EDGEAPP system (¶73, 78, 87-92) and transmit the application data to an application host executed on the second of the MEC system (#2432) or the EDGEAPP system (#2402, ¶42-45, 47-49). The first of the MEC system (#2402) or the EDGEAPP system is different than the second of the MEC system (#2432) or the EDGEAPP system. Also, a first MEC system is inherently different than any EDGEAPP.
Claim 11, note performing lifecycle management (LCM) operations of MEC and EDGEAPP applications in an Operator Platform instance in an Operator Platform domain, to enable coordination of the MEC and EDGEAPP applications in the MEC system and the EDGEAPP system respectively (¶73, 77-78, 87-92). Receiving application data from an application client of a user equipment (UE)(FIGURE 1, #100, APPLICATION DATA TRAFFIC). The application client is associated with a first of the MEC system (figure 2, #2402) or the EDGEAPP system (¶73, 78, 87-92) and transmit the application data to an application host executed on the second of the MEC system (#2432) or the EDGEAPP system (#2402, ¶42-45, 47-49). The first of the MEC system (#2402) or the EDGEAPP system is different than the second of the MEC system (#2432) or the EDGEAPP system. Also, a first MEC system is inherently different than any EDGEAPP.
Regarding claims 12-19 note paragraph 4 above.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 4, 8, as understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication 2023/0145165 (Lee) in view of WO 2021062256.
The claims are confusing and unclear and are not fully understood The Examiner will try to apply art to these perplexing claims.
Lee discloses all subject matter, note the above paragraphs, except for the LCM operations are performed by a MEC Orchestrator of the MEC system, and wherein the MEC Orchestrator is connected via a reference point network connection to an Edge Configuration Server (ECS) of the EDGEAPP system. WO 2021062256 teaches the use of LCM operations are performed by a MEC Orchestrator of the MEC system, and wherein the MEC Orchestrator is connected via a reference point network connection to an Edge Configuration Server (ECS) of the EDGEAPP system for the purpose of deploy the relocatable application instance at a target, figure 3, ¶105-106. Hence, it whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains to incorporate the use of LCM operations are performed by a MEC Orchestrator of the MEC system, and wherein the MEC Orchestrator is connected via a reference point network connection to an Edge Configuration Server (ECS) of the EDGEAPP system for the purpose of deploy the relocatable application instance at a target, as taught by WO 2021062256, in the computing system of Lee in order for transparent relocatable application instance deployment.
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Regarding claim 8, note figure 3, ¶105-106.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Claim(s) 7, as understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication 2023/0145165 (Lee) in view of United States Patent Application Publication 2023/0229484 (Sinha, et al).
Lee discloses all subject matter, note the above paragraphs, except for the LCM operations are integrated using an LCM aggregator, and the LCM aggregator is connected to a MEC Orchestrator of the MEC system and to the ECS of the EDGEAPP system. Sinha, et al teaches the use of the LCM operations are integrated using an LCM aggregator, and the LCM aggregator is connected to a MEC Orchestrator of the MEC system and to the ECS of the EDGEAPP system for the purpose of establishing trust between a cross-cluster control plane (xCCP) and a cluster control plane (CCP) of an autonomous cluster of hosts in a virtualized computing system, note ¶32. Hence, it whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains to incorporate the use of LCM operations are integrated using an LCM aggregator, and the LCM aggregator is connected to a MEC Orchestrator of the MEC system and to the ECS of the EDGEAPP system for the purpose of establishing trust between a cross-cluster control plane (xCCP) and a cluster control plane (CCP) of an autonomous cluster of hosts in a virtualized computing system, as taught by Sinha, et al in the computing system of Lee in order LCM does not manage cluster personality for autonomous clusters, rather, LCM delegates that responsibility to an LCM executing as part of CCP.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Allowable Subject Matter
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Claims 2, 3, 5, 6, , 9, 10, 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments and corrected drawings, see “REMARKS”, filed January 21, 2026, with respect to 35 USC §112(a) have been fully considered and are persuasive. The 35 USC §112(a) rejection of claims 1-20 has been withdrawn.
Applicant's arguments filed January 21, 2026 have been fully considered but they are not persuasive.
During prosecution, applicant has an opportunity and a duty to amend ambiguous claims to clearly and precisely define the metes and bounds of the claimed invention. The claim places the public on notice of the scope of the patentee’s right to exclude. The Court noted that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent Examiners demand that Applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation. A decision on whether a claim is indefinite under § 112(b) requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. Claim terms are typically given their ordinary and customary meaning as understood by one of ordinary skill in the pertinent art, and the generally understood meaning of particular terms may vary from art to art. Therefore, it is important to analyze claim terms in view of the application’s specification from the perspective of those skilled in the relevant art since a particular term used in one patent or application may not have the same meaning when used in a different application. The USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b). The satisfactory response by the applicant can take the form of a modification of the language identified as unclear, a separate definition of the unclear language, or, in an appropriate case, a persuasive explanation for the record of why the language at issue is not actually unclear. Indefiniteness rejections by the USPTO arise in a different posture from that of indefiniteness challenges to an issued patent. See Exxon Research v. US, 265 F.3d 1370 (Fed. Cir. 2001). It makes good sense, for definiteness and clarity as for other validity requirements, for the USPTO initially to reject claims based on a well-founded prima facie case of lack of clarity (in its several forms) based on the perspective of one of ordinary skill in the art in view of the entire written description and developing prosecution history. Then, if the Applicant does not adequately respond to that prima facie case, to confirm that rejection on the substantive basis of having failed to meet the requirements of § 112(b). The USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b). The satisfactory response by the Applicant can take the form of a modification of the language identified as unclear, a separate definition of the unclear language, or, in an appropriate case, a persuasive explanation for the record of why the language at issue is not actually unclear. The USPTO must be able to make the congressionally created examination process work so that it fulfills its purpose of producing patents whose claims meet the statutory standards. The USPTO thus meets its obligation to explain adequately the shortcomings it perceives so that the applicant is properly notified and able to respond. “Once the applicant is so notified, the burden shifts to the applicant to rebut the prima facie case with evidence and/or argument.” Indefiniteness rejections by the USPTO arise in a different posture from that of indefiniteness challenges to an issued patent. In re Packard (Fed. Cir. 2014).
The Examiner agrees with Applicant’s attorney first part of remarks to the “standards family” remarks. The USPTO can take that the “at least one standard from a 3GPP standards family” as of the filing date of the current application as definite. If Applicant’s attorney left it at that, the Examiner would have withdrawn the rejections. The for some reason, which the attorney only can explain, stated, “new standards may be added to a family, but this merely means that implementations according to those new standards would also fall within the claim scope,” and “The claim deliberately uses standards family rather than a specific standard version precisely to encompass current and future standards in these families without being limited to a particular version that might become obsolete.” Applicant admits their claims will varying scope over time. The standard or family changes, the disclosure may no longer support the limitation. Hence the scope changes over time, as admitted by Applicant, the scope of the invention sought to be patented cannot be determined from the language of the claims, a rejection is appropriate.
The Examiner has concluded that the record, attorney’s remarks, is unable to support departure from the ordinary meanings of those words, whose descriptive properties are implicitly time-dependent. A claim cannot have different meanings at different times. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 986 (Fed. Cir. 1995), PC Connector Solutions, LLC v. SmartDisk Corp., No. 04-1180 (Fed. Cir. May 6, 2005).
Regarding remarks for 35 USC §102 rejections, anticipatory reference need not duplicate, word for word, what is in claims; anticipation can occur when claimed limitation is "inherent" or otherwise implicit in relevant reference (Standard Havens Products Incorporated v. Gencor Industries Incorporated, 21 USPQ2d 1321). “...a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all of the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, (Fed. Cir. 2015). Thus, “a reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.” This was an anticipation, without resort to obviousness, because the reference sufficiently disclosed making the combination, though not expressed a single embodiment or example, Blue Calypso, LLC v. Groupon, Inc. (Fed. Cir. Mar. 1, 2016). During examination before the Patent and Trademark Office, claims must be given their broadest reasonable interpretation and limitations from the specification may not be imputed to the claims (Ex parte Akamatsu, 22 USPQ2d, 1918; In re Zletz, 13 USPQ2d 1320, In re Priest, 199 USPQ 11). During examination of a patent application, a claim is given its broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal quotation marks omitted). Additionally, "[t]hough understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim." See SuperGuide Corp. v. DirecTVEnterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). In response to Applicant's argument, the law of anticipation requires that a distinction be made between the invention described or taught and the invention claimed. It does not require that the reference "teach" what the subject patent teaches. Assuming that a reference is properly "prior art," it is only necessary that the claims under consideration "read on" something disclosed in the reference, i.e., all limitations of the claim are found in the reference, or "fully met" by it. It was held in In re Donohue, 226 USPQ 619, that, "It is well settled that prior art under 35 USC §102(b) must sufficiently describe the claimed invention to have placed the public in possession of it...Such possession is effected if one of ordinary skill in the art could have combine the description of the invention with his own knowledge to make the claimed invention." Clear inference to the artisan must be considered, In re Preda, 159 USPQ 342. A prior art reference must be considered together with the knowledge of one of ordinary skill in the pertinent art, In re Samour, 197 USPQ 1. During patent examination, the pending claims must be “given the broadest reasonable interpretation consistent with the specification.” Claim term is not limited to single embodiment disclosed in specification, since number of embodiments disclosed does not determine meaning of the claim term, and applicant cannot overcome "heavy presumption" that term takes on its ordinary meaning simply by pointing to preferred embodiment (Teleflex Inc. v. Ficosa North America Corp., CA FC, 6/21/02, 63 USPQ2d 1374). Applicant always has the opportunity to amend the claims during prosecution and broad interpretation by the examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified. In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA1969). “Arguments that the alleged anticipatory prior art is nonanalogous art’ or teaches away from the invention’ or is not recognized as solving the problem solved by the claimed invention, [are] not germane’ to a rejection under section 102.” Twin Disc, Inc. v. United States, 231 USPQ 417, 424 (Cl. Ct. 1986) (quoting In re Self, 671 F.2d 1344, 213 USPQ 1, 7 (CCPA 1982)). A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. The question whether a reference “teaches away” from the invention is inapplicable to an anticipation analysis. Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir.1998).
It is clear from Applicant’s attorney remarks, that the attorney does not give the claims their broadest reasonable interpretation and limitations from the specification are imputed to the claims. The remarks expect the reference need to duplicate, word for word, what is in claim and one of skill in the art would not be able to implement the combination. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., Lifecycle management comprising creating, deploying, configuring, updating, and terminating the service or application itself.) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Also, Lee shows a management system that does creating, deploying, configuring, updating, and terminating an application or service, note ¶78, 85, 87, 88, 89, 92, etc.
Again, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which Applicant relies (i.e., Operator Platform, being specific architectural construct designed to federate edge computing resources across multiple operators. An OP includes three primary functions or devices being Federation Manager for coordinating with other OP instances in a federation, Service Resource Manager (for managing edge computing resources, and Capabilities Exposure (for exposing network capabilities to application and manages federation, resources, and capabilities in a coordinated manner across MEC and EDGEAPP systems and a logical domain separate from the mobile network operator's PLMN domain, where OP instances provide coordinated edge computing services across multiple operators, the OP device providing overarching coordination between the systems. MEC applications are coordinated in how they operate within the MEC system, EDGEAPP applications are coordinated in how they operate within the EDGEAPP system, and the OP instance or device coordinates between the two systems) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Again and again, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., coordination involves managing how applications are deployed, configured, and operated in a unified manner across both systems thereby ensuring that applications in both systems work together effectively through coordinated lifecycle management.) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The specification is not the measure of the invention. Therefore, limitations contained therein cannot be read into the claims for the purpose of avoiding the prior art (In re Sporck, 155 USPQ 687). "[t]hough understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim." See SuperGuide Corp. v. DirecTVEnterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Attempt to invoke limitations present in the preferred embodiment but absent from the claims themselves violates the established claim construction principles.
Regarding Applicant’s attorney’s remarks about 35 USC §103 rejections, these remakes take the references in total isolation from each other. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents. The diversity of inventive pursuits and of modern technology counsels against limiting the analysis in this way. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility. One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103. KSR INTERNATIONAL CO. v. TELEFLEX INC. 82 USPQ2d 1385.
The reference is proper for use in an obviousness rejection under 35 U.S.C.§ 103 the reference is analogous art to the claimed invention. In re Bigio, 381 F.3d1320, 1325 (Fed. Cir. 2004). This does not require that the reference be from the same field of endeavor as the claimed invention, in light of the Supreme Court's instruction that "[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,402 (2007). Rather, a reference is analogous art to the claimed invention if:
(1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or
(2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See Bigio, 381 F.3d at 1325.
The reference is "reasonably pertinent" to the problem, it "logically have commended itself to an inventor's attention in considering his problem." In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656,658 (Fed. Cir. 199)). See generally MPEP 2141.01(a).
A decision from the U.S. Court of Appeals for the Federal Circuit, In re Klein, 98 USPQ2d 1991 (Fed. Cir. June 2011), is instructive as to the "reasonably pertinent" prong for determining whether a reference is analogous art. In determining whether the reference is reasonably pertinent, the Examiner has considered the problem faced by the inventor, as reflected - either explicitly or implicitly - in the specification.
The reference is from the same field of endeavor as the claimed invention, both the claimed invention and the reference are computer systems.
Again, again and again, In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e. the LCM aggregator integrates lifecycle management operations across the MEC Orchestrator, ECS, and potentially third-party orchestrators, actively coordinates how applications are instantiated, deployed, configured, and managed across heterogeneous edge computing systems) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Because the reasons stated above, this application is not in any condition for allowance.
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 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.
The USPTO will not accept requests for consideration under the AFCP 2.0 filed after December 14, 2024.
If applicants wish to request for an interview, an "Applicant Initiated Interview Request" form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed. This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed. A copy of the completed "Applicant Initiated Interview Request" form should be attached to the Interview Summary form, PTOL-413 at the completion of the interview and a copy should be given to applicant or applicant's representative.
If applicants request an interview after this final rejection, prior to the interview, the intended purpose and content of the interview should be presented briefly, in writing. Such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration. Interviews merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search will be denied.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM D CUMMING whose telephone number is (571)272-7861. The examiner can normally be reached Monday - Friday 12 noon to 6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony S. Addy can be reached at (571) 272-7795. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
WILLIAM D. CUMMING
Primary Examiner
Art Unit 2645
/WILLIAM D CUMMING/Primary Examiner, Art Unit 2645
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