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 .
Priority
Acknowledgement is made of Applicant's claim to domestic benefit of provisional application 63/444,318 filed on February 9, 2023.
Examiner Note
It appears the inventor(s) filed the current application pro se (i.e., without the benefit of representation by a registered patent practitioner). While inventors named as applicants in a patent application may prosecute the application pro se, lack of familiarity with patent examination practice and procedure may result in missed opportunities in obtaining optimal protection for the invention disclosed. The inventor(s) may wish to secure the services of a registered patent practitioner to prosecute the application, because the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting a patent practitioner.
A listing of registered patent practitioners is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent practitioners located in their area by writing to Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). See the rejection under 35 U.S.C. 112 below.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 14 recites “the first operand”. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites “the first operand”. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites “the first operand”. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 112(a)
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, 5-10, 12-18, 20 and 21 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 claims contain 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, at the time the application was filed, had possession of the claimed invention.
The Applicant has not pointed out where the amended claims are supported.
Claim 1 recites “a multiplexer circuit that selects the prefix operand in response to an operand selection control signal received from the operand prefix identifying mechanism selecting the prefix operand rather than an operand from the second instruction and combines the prefix operand with at least some portion of the second instruction to create a combined instruction”. There does not appear to be support for this limitation in the original disclosure. There does not appear to be support for a multiplexer that selects the prefix operand… and combines the prefix operand with at least some portion…”.
Claim 1 recites “wherein the operand prefix instruction is transformed into a NOP instruction. This limitation is unclear as it merely states a function without providing any indication about how the function is performed. It is not clear whether the recited function follows from the structure recited in the claim or requires some other structure. An indefinite, unbounded functional limitation covers all ways of performing a function and sufficient disclosure to show possession of the invention has not been provided. Claim 13 is rejected for the same reason.
Claim 13 recites “the pre-decoder circuit identifies an operand prefix instruction and asserts the operand selection control signal coupled to the multiplexer circuit selecting of a prefix operand from the operand prefix instruction rather than a further operand from a consuming instruction and include the prefix with the remainder of the consuming instruction, thereby generating a combined instruction”. There does not appear to be support for the pre-decoder circuit to include the prefix with the remainder of the consuming instruction.
Dependent claims are rejected for the same reason.
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, 3, 5-10, 12-18, 20 and 21 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 “wherein the operand prefix instruction is transformed into a NOP instruction. This limitation is unclear as it merely states a function without providing any indication about how the function is performed. It is not clear whether the recited function follows from the structure recited in the claim or requires some other structure. Claim 13 is rejected for the same reason.
Claim 13 recites “A computing machine comprising an instruction buffer, a pre-decoder circuit, an operand selector and operand combining logic block comprising at least one multiplexer circuit, and also comprising an operand selection control signal and a data bus coupled to a decoder”. It is not clear whether the operand combining logic block comprises the operand selection control signal or the computing machine comprises the operand selection control signal. With multiple recitations of “comprising”, it is further not clear what the pre-amble is and what the body of the claim is.
Claim 13 recites “the multiplexer circuit”. It is not clear which multiplexer circuit is being referred to as the claim recites “at least one multiplexer circuit”.
Dependent claims are rejected for the same reason.
Response to Arguments
The Applicant’s arguments, filed 12/12/2025, have been fully considered.
Based on the amendments, the rejection under 35 USC 101 has been withdrawn. The Applicant’s arguments regarding 101 are no longer applicable.
The Applicant’s argument, that the prior art does not teach the limitations in the amended claims, is persuasive. Hence the rejections have been withdrawn.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jyoti Mehta whose telephone number is (571)270-3995. The examiner can normally be reached on Monday-Thursday 8 am-6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Cottingham can be reached on (571) 272-1400. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JYOTI MEHTA/Supervisory Patent Examiner, Art Unit 2183
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