DETAILED ACTION
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 Rejections - 35 USC § 112
Claims 1 and 4-19 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.
Claim 1 recites, “a processor configured to …”, which is directed to controlling software that is only nominally disclosed and does not comply with the written description requirement in accordance with MPEP 2161.
MPEP 2161 states: “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) (reversing and remanding the district court’s grant of summary judgment of invalidity for lack of adequate written description where there were genuine issues of material fact regarding "whether the specification show[ed] possession by the inventor of how accessing disparate databases is achieved"). If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made.” (emphasis added)
In the instant case, the “processor” of Claim 1 is not properly described in the application as filed because no algorithm is described which is capable of performing the recited functions of the limitations. For example, the instant specification describes in para. 214 “the term related to a control device such as ‘controller’ … refers to a hardware device including a memory and a processor configured to execute one or more steps interpreted as an algorithm structure. The memory stores algorithm steps, and the processor executes the algorithm steps to perform one or more processes of a method,” and therefore describes a system which is capable of being programmed with a specific algorithm, but the disclosure is otherwise entirely devoid of any algorithm, steps, procedure, or flowchart which would lend detail to the described “algorithm” sufficient to satisfy the Written Description requirements (see above quotation of MPEP 2161). Therefore, “the algorithm or steps/procedure taken to perform the function are not described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed” (MPEP 2161(I)), and the claim limitation regarding the “controller” lacks an adequate written description.
Response to Arguments
Applicant’s arguments, see Remarks, filed 03/13/2026, with respect to the prior art have been fully considered and are persuasive. The rejections under 35 USC 102 and/or 103 of the claims have been withdrawn.
However, Applicant's assertion that the rejection under 35 USC 112(a) has been overcome by the amendment of the claim limitation “controller” to “processor” is in dispute. In accordance with MPEP 2161, “[if] the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made.” (emphasis added)
In the instant case, there is no sufficiently disclosed algorithm to perform the claimed functional limitations. The rejection is maintained.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to T. S. FIX whose telephone number is (571)272-8535. The examiner can normally be reached M-Th 10a-3p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Minnah Seoh can be reached at 5712707778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T. SCOTT FIX/Primary Examiner, Art Unit 3618
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