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
The Examiner acknowledges Applicant’s amendments and remarks filed on 26 May 2026. They have been fully considered and are persuasive in part. The amendments are sufficient to overcome the rejection based on 35 U.S.C. 101. However, they do not fully address the issues raised with respect to 35 U.S.C. 112(b).
With respect to claim 1, the amendment has substituted “circuitry to execute the machine-readable instructions” with “circuit to be programmed by the machine-readable instructions”. The same reasoning applied in rejecting the original language also applies to the new language. Although programming confers structure capable of executing the claimed function, a circuit that is “to be programmed” implies a circuit that is yet to be programmed. A circuit “to be programmed” may include generic circuits that are capable of being programmed but have not been programmed in the manner claimed. The Examiner recommends amending claim 1 to recite a “circuit programmed by” the instructions, and notes that the dependent claims do not employ “to be programmed” language.
With respect to claim 7, the amendments fail to fully address the issues raised in the rejection. Claim 7 recites that the allocation of resources is coordinated to “increase resource usage, increase energy efficiency, or increase performance”. While the amendment to claim 1 includes “increasing or decreasing” cooling and power resources (and therefore increases “resource usage”), it does not address the recited outcomes of increasing energy efficiency or increasing performance. Merely increasing cooling or power resources does not, in and of itself, increase efficiency or performance. In some circumstances, increasing those resources could potentially result in decreased efficiency or performance depending on the criteria employed to make that judgment. Without further recitation of steps that indicate how the increased cooling or power resources are used to increase efficiency or performance, or recitation of criteria that may be used to judge an increase in efficiency or performance, this language may be understood as merely a desired result or outcome (and possibly non-limiting).
The rejection of claims 1 and 7 based on 35 U.S.C. 112(b) is therefore maintained.
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 1-7 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.
Claim 1 recites “at least one programmable circuit to be programmed by the machine-readable instructions to” perform a series of actions. This language is indefinite because it may be interpreted as a statement of intended use for the circuitry rather than an explicit limitation. Recitation of an intended use may be non-limiting, making it unclear how much the subsequent functional language further limits the invention. The Examiner recommends amending the claims to more clearly indicate an explicit limitation rather than a possible intended use. For example, claim 1 could be amended to recite circuitry configured or programmed by the machine-readable instructions to perform claimed operations,
Claim 7 also recites a step to coordinate resources to “increase resource usage, increase energy efficiency, or increase performance per watt”. This language represents a desired result or outcome without explicit recitation of how the outcome is necessitated by the steps, and is therefore indefinite.
Allowable Subject Matter
Claim 8-20 are allowed.
Conclusion
THIS ACTION IS MADE FINAL. 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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/JI H BAE/Primary Examiner, Art Unit 2176 U.S. Patent and Trademark Office
Phone: 571-272-7181
Fax: 571-273-7181
ji.bae@uspto.gov
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