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
Applicant’s arguments, see Remarks, filed 7/9/2026, with respect to the rejection(s) made in the last office action have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of 35 USC section 112(a). A review of the applicant’s disclosure shows that though the applicant had literal support for the amendments to claims 1 and 20, they did not describe any negotiation during an initiation of a communication session with a communication device that would define a predefined number of frames based on a field size and frame-type order that are also defined during the initiation of a communication session.
The Examiner notes that original claim 7 placed the negotiation “on connection establishment” and not “during initiation of a communication session”. Paragraph 30 and 83 provide literal support for the language used in the amendments to claims 7 and 20 but the disclosure does not otherwise describe how such a negotiation results in “a predetermined number of frames” that is “a limited number of frames” “during initiation of the communication session with the communication device based the communication parameters” which are “a field size and frame-type order” defined “during the initiation of the communication session.” Although the Examiner could not fine these features to be shown in the prior art, the claims cannot be allowed based on the guidance given to the Examiner in section 2161.01(I) of the MPEP regarding the written description requirement.
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 1-6, 8-17, 19, and 20 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.
Section 2161.01(I) of the MPEP states:
Similarly, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV.
The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172; Capon v. Eshhar, 418 F.3d 1349, 1357-58, 76 USPQ2d 1078, 1083-84 (Fed. Cir. 2005). Computer-implemented inventions are often disclosed and claimed in terms of their functionality. For computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into the sufficiency of both the disclosed hardware and the disclosed software due to the interrelationship and interdependence of computer hardware and software. The critical inquiry is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682. 114 USPQ2d 1349, 1356 (citing Ariad Pharm., Inc. V. Eli Lilly & Co, 598 F.3d 1336, 1351, 94 USPQ2d 1161, 1172 (Fed. Cir. 2010) in the context of determining possession of a claimed means of accessing disparate databases).
When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. 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 (5th ed., 2002). Applicant may "express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008) (internal citation omitted). 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. For more information regarding the written description requirement, see MPEP § 2162- § 2163.07(b)
Claim 1 is amended as follows:
wherein the circuitry is further configured to initiate a communication session with a communication device over a communication interface and to define communication parameters during initiation of the communication session, wherein the communication parameters comprises a field size and a frame-type order, and wherein the predefined number of frames is a limited number of frames negotiated during initiation of the communication session with the communication device based on the communication parameters.
Claim 20 is amended as follows:
wherein the method further comprises initiating a communication session with a communication device over a communication interface and defining communication parameters during initiation of the communication session, wherein the communication parameters comprises a field size and a frame-type order, and wherein the predefined number of frames is a limited number of frames negotiated during initiation of the communication session with the communication device based on the communication parameters.
The applicant has not disclosed how a predefined number of frames is negotiated during initiation of the communication session with the communication device based on the communication parameters comprising a field size and a frame-type order. The applicant’s amendments appear to have literal support in paragraphs 30, 82, and 83 but there is not description of how “the predetermined number of frames” is “negotiated” during initiation of the communication session with the communication device based on the communication parameters which comprise a field size and frame-type order that are defined during initiation of the communication session.
Paragraphs 82-88 and 130 discuss negotiation. Paragraph 82 specifies the negotiation as occurring between the data transmission controller 102 and communication device 112. There is no description of what this “negotiation” between data transmission controller 102 and communication device 112 actually comprises in any of paragraphs 82-88 and 130. The applicant has disclosed a function of “negotiation” performed by the data transmission controller 102 with the communication device but has not actually provided any description of how the “negotiation” is performed or how it results in a predefined number of frames based on the communication parameters of field size and frame-type order. As such the applicant’s disclosure does not comply with the guidance regarding written description support shown in section 2161.01(I) of the MPEP.
It cannot be inferred what the relationship is between the predefined number of frames and either the field size or frame-type order parameters because the applicant has not provided any detail on what the relationship is between these parameters and how they influence a negotiation that defines a predefined number of frames. The disclosed field size and frame-type order appear to be dependent upon the nature of the “modified” QUIC protocol as described in paragraph 75-76. Paragraph 4 is explicit that frame-type order is not part of the conventional QUIC protocol. The applicant does not actually provide a definition of a “modified” QUIC protocol because as discussed in paragraph 132, the intention is to cover all possible extensions to the conventional QUIC protocol including those not yet contemplated at the time of the invention. It appears the applicant’s negotiation is written intentionally generically to cover any arrangement of QUIC packets without actually defining any specific functions for generating “modified” QUIC packets. The final sentence of paragraph 4 suggests this intention by noting the lack of “generic” API’s in the convention QUIC protocol.
Claim 13 has been amended as follows:
wherein the data transmission controller circuitry is further configured to receive and execute instructions according to an application-program interface, API, with a stream-aware mode and a stream-unaware mode.
The applicant did not disclose anything about the API or how it is executed. Figures 2 shows that the API 208 is received as incoming data 202 by data transmission controller 102. Figure 2 shows that API 208 is comprised of instructions 210, stream-aware mode 212, and stream-unaware mode 214. Paragraph 33-37 describe the purpose of the API as for enabling applications designed for TCP and UDP to ruan on a modified QUIC protocol. The applicant does not disclose anything details about these applications or, as explained above, the modified QUIC protocol. The stream-unaware mode is described as either a TCP or UDP socket API. Paragraph 89 describes the purpose of the API as enabling an application to define multiple QUIC streams during a stream-aware mode. Paragraph 110 details how controller 102 receives incoming data 202 that is specific to a modified QUIC protocol. Paragraph 110 is written to not provide specifics about the functions of the API 208, received as part of the incoming data 202, or the details of how the “modified” QUIC protocol operates because, as pointed out in paragraph 132, the applicant is trying to cover any possible modification of the QUIC protocol including any currently contemplated and those not yet contemplated. The disclosure is relying on a specific API to be developed for each particular “modification” of the QUIC protocol and thus is intentionally not in possession of the currently claimed API because it is intended to cover any API for any hypothetical QUIC protocol modification.
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 1-6, 8-17, 19, and 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.
Claims 1 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: Claim 1 and 20 rely on a negotiation to define “the predefined number of frames” that is used to define the claim step of generating one or more transmission packets by defining a “predefined number of frames of different frame-types in a predefined frame-type order in the one or more data transmission packets”. Both claims 1 and 20 claim the negotiation as happening in the past tense with the use of the verb “negotiated” so this action is not viewed as being covered as part of the actions of the transmission controller of claim 1 or the method of claim 20. The negotiation step is essential because it defines the “predefined number of frames” that is used to limit how the one or more transmission packets are generated by the claim by defining the predefined number of frames of different frame-types in a predefined frame order in the one or more transmission packets.
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 DOUGLAS B BLAIR whose telephone number is (571)272-3893. The examiner can normally be reached Monday-Friday 9am-5pm.
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/DOUGLAS B BLAIR/ Primary Examiner, Art Unit 2454
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