REISSUE PROCEDURAL REMINDERS
Disclosure of other proceedings. Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These disclosure obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 C.F.R. § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
Priority
Application No. 18/512,524 is a reissue application of the US Patent No. 9,983,968 which originated as a U.S. Patent Application No. 14/749,395 with the filing date of June 24, 2015. Since no other priority documents have been filed, June 24, 2015 is considered an earliest effective filing date.
In addition, because the original Application for Patent has been filed after March 16, 2013, the Application will be examined according to the post-AIA provisions.
Specification
As stated in 37 CFR 1.173(d) and MPEP § 1453, “all amendments must be made relative to the original patent and must follow the specific formatting rules”. Accordingly, the amendment to the specification submitted on April 4, 2024 is objected to because the markings are incorrect. More specifically, this entire paragraph is new with respect to the original ‘968 patent, hence the entire content of the amendment should be underlined or/and the omitted/deleted subject matter should be enclosed in square brackets.
In addition, since the application no. 16/864,065 is now abandoned, the amendment to the specification also needs to reflect that, for instance by reciting “(now abandoned)”.
Application Data Sheet
The instant application is a reissue application, as identified on the Reissue Patent Application Transmittal Form PTO/AIA /50. However, continuation reissue applications must be explicitly identified as reissue application of the underlying patent and as a continuation of its parent reissue. Consequently, in addition to being identified as a continuation of a reissue application no. 16/864,065, the Applicant must also identify that the current application is also a reissue of the ‘968 patent. This is because it is possible under limited circumstances to file a non-reissue continuing application of a reissue application (i.e., a Bauman type continuation application). See MPEP § 1451.
The ADS filed by Applicant fails to explicitly identify the application as a reissue continuation application. As a result, the application’s status as a continuing reissue is not properly reflected on the filing receipt mailed December 4th, 2023.
Applicant is required to file a corrected ADS, properly identifying the instant application as a reissue application. For additional information, see the Reissue Application Filing Guide at https://www.uspto.gov/sites/default/files/forms/uspto_reissue_ads_guide_Sept2014.pdf, and particularly the ADS screenshot on page 10.
The corrected ADS must comply with 37 C.F.R. § 1.76(c)(2), requiring proper change markings.
In addition, Applicant should file, separate from and subsequent to its next response, a Request for Corrected Filing Receipt, in order to ensure that the application has been properly identified as both a continuation of a reissue application, and also as a reissue application.
Claims Objections
Claims 36-55 are objected for not complying with the requirements set forth in 37 CFR 1.173. More specifically, the amendment does not comply with the following guidelines:
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows ...
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim …
(d) Changes shown by markings. Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c)). Matter added by reissue on compact discs must be preceded with “<U>” and end with “</U>” to properly identify the material being added.
In this instance, the claims filed on June 2nd, 2026, contain incorrect markings because claims 36-55 are newly added with respect to the original patent being reissued. Accordingly, all the limitations should be underlined and the status of the claims should indicate “New”.
Claims 36, 44 and 52 are objected to because there appears to be a typo. More specifically, line 12 of claim 36, line 14 of claim 44 and line 13 of claim 52, recite “based performance-related data and the one or metrics” (emphasis added). The underlined portion is grammatically incorrect and needs to be corrected.
Claim Interpretation
The examiner finds several instances where the claim term explicitly includes functional language which would invoke 35 U.S.C. § 112, sixth paragraph.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
The following claim limitations have been interpreted under 35 U.S.C. § 112(f), because they use a generic placeholder coupled with functional language without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by structural modifier:
Claim 36 recites “at least one processor” (i.e. general placeholder) performing the following functions:
“obtaining a time-based performance-related data from a computing system, wherein the time-based performance-related data reflects performance of the computing system during a predetermined period of time;
performing sequential processing of the time-based performance-related data, wherein at least one portion of the time-based performance-related data includes at least another portion of the time-based performance-related data;
determining, using the at least one processor, one or more metrics associated with the computing system based on the sequential processing of the time-based performance-related data; and
providing, using the at least one processor, at least one of the sequentially processed time- based performance-related data and the one or metrics to an external service”.
Similarly, claims 42 and 52 teach “processing circuitry” performing the steps as recited above.
Since the claim limitations invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 36-55 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
Below, the steps/functions are mapped to the corresponding structure as disclosed in the original disclosure:
“obtaining a time-based performance-related data from a computing system, wherein the time-based performance-related data reflects performance of the computing system during a predetermined period of time” taught in Figure 2A and column 4, lines 59-67, wherein monitoring agent 210a, 210b or 210c collects the data that reflects performance of the associated computing system,
“performing sequential processing of the time-based performance-related data, wherein at least one portion of the time-based performance-related data includes at least another portion of the time-based performance-related data” taught in Col. 2:50 – 3:16, wherein performing sequential processing as gathering time related information pertaining to operations and the function of determining as determining whether the data is related to performance metric like count values as disclosed in C5:56 – C6:3
“determining, using the at least one processor, one or more metrics associated with the computing system based on the sequential processing of the time-based performance-related data” taught in Col. 6: 13-22 and examples of metrics are described in Col. 4:26-31
“providing, using the at least one processor, at least one of the sequentially processed time- based performance-related data and the one or metrics to an external service” taught in Figure 2B, element 256, Figure 4A, step 4104 and column 11, lines 36-44
For a computer-implemented means-plus-function claim limitation invoking 35 U.S.C. § 112, sixth paragraph, a general purpose computer is usually sufficient for the corresponding structure for performing a general computing function (e.g., “means for storing data”), but the corresponding structure for performing a specific function is required to be more than simply a general purpose computer or microprocessor. In In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011), the court stated:
Those cases involved specific functions that would need to be implemented by programming a general purpose computer to convert it into a special purpose computer capable of performing those specified functions. … By contrast, in the seven claims identified above, Katz has not claimed a specific function performed by a special purpose computer, but has simply recited the claimed functions of ‘processing,’ ‘receiving,’ and ‘storing.’ Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ discussed below, those functions can be achieved by any general purpose computer without special programming. As such, it was not necessary to disclose more structure than the general purpose processor that performs those functions. Those seven claims do not run afoul of the rule against purely functional claiming, because the functions of ‘processing,’ ‘receiving,’ and ‘storing’ are coextensive with the structure disclosed, i.e., a general purpose processor.).
To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333. In this instance, the structure corresponding to a 35 U.S.C. § 112, sixth paragraph claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer. Aristocrat, 521 F.3d at 1338 (“Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. § 112 P 6. It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a ‘special purpose computer programmed to perform the disclosed algorithm.’ WMS Gaming, 184 F.3d at 1349.”) 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, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or “in any other manner that provides sufficient structure.” Finisar, 523 F.3d at 1340; see also Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003); In re Dossel, 115 F.3d 942, 946-47 (Fed. Cir.1997); Typhoon Touch Inc. v. Dell Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011); In re Aoyama, 656 F.3d 1293, 1306 (Fed. Cir. 2011).
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP §§ 2173 and 2181 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
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.
Claim 36-55 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 elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The newly amended limitations in the independent claims 36, 44 and 52, appear to be disconnected from the preexisting limitations in those claims. For example, the original new claim 36 is directed to a “time based performance related data” while the newly amended part of that claim, recites counter values and monitoring agent, both of which were not mentioned previously.
Additionally, the Applicant amended independent claims to recite “wherein the one or more counter values are provided by one or more counter objects that are modified by an instrumentation code in the monitored application”, however such a step is not supported by the original disclosure, as explained below, thus it is unclear what such a step involves, rendering the affected claims indefinite.
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 36-55 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. The newly added limitation in the independent claims 36, 44 and 52 recites “wherein the one or more counter values are provided by one or more counter objects that are modified by an instrumentation code in the monitored application”. Emphasis added. Although the Applicant points to Col. 8: 10-121 (teaching counter values), the Examiner was unable to find the support for the above limitation neither in the cited passage, nor the original disclosure. For instance instrumentation is discussed in C4:59-67 (“data may be obtained in various ways, including by instrumentation, sampling“), however there is no teaching about the counter object being modified by an instrumentation code.
If the Applicant believes that the original disclosure supports such a step, detailed explanation is requested.
Allowable Subject Matter
Claims 36-55 would be allowed contingent upon overcoming the objections and rejections recited above.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claims 36, 44 and 52, the prior art of record does not anticipate nor render obvious a computer program product, a computer-implemented method, a system wherein the one or more counter values are provided by one or more counter objects that are modified by an instrumentation code in the monitored application and include at least one of: a number of operations performed by the one or more monitored applications, a response time of the one or more monitored applications, a processing time of the one or more monitored applications, a throughput of the one or more monitored applications, or any combination thereof, and transmit the one or more counter values as a series of data items to the computing system for storage on a randomly selected data store in combination with other elements/steps as recited in claims 36, 44 and 52.
The interpretation of the above recited limitation is consistent with the interpretation as explained above in the “Claim Interpretation” section.
With respect to claims 37-43, 45-51 and 53-55, those claims also include allowable subject matter by the virtue of their dependency on claims 36, 44 and 52 respectively.
Response to Argument
Applicant’s arguments filed on June 2nd, 2026 has been found persuasive in part.
Oath/Declaration
Argument #1: “The Oath/Declaration, filed on April 4, 2024, states, inter alia, "[a]t least one error being relied upon as the basis for this broadening reissue application is the failure to include a claim that does not have the limitations "multiple data stores that are each configured to store a series of data items that reflect performance of a monitored computing system' (see claim 1), or "providing multiple data stores that are each configured to store a series of data items that reflect performance of a monitored computing system' (see claims 9, 17, 19). The error, among other errors, is being corrected in part by adding claim 20." (Emphasis supplied). It is respectfully submitted that the filed Oath/Declaration addresses at least one error identified therein that is used to support the present continuation reissue application. In particular, the Oath/Declaration, by including recitation of "at least one error", indicates that more than one error is being relied upon to support the present application”.
Examiner’s Response: The Examiner was unable to locate the Oath/Declaration filed on April 4, 2024, instead the Oath/Declaration filed on November 17, 2023 has been considered. Although the Examiner maintains that the Oath/Declaration must address existing claims in the pending reissue application (See MPEP 1444, I (C) “Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error”), the MPEP 1444 III (A) recites that for application filed on or after September 16, 2012, “a supplemental reissue oath or declaration is not required where all errors previously identified in the reissue oath/declaration are no longer being relied upon as the basis for reissue. However, the applicant must explicitly identify an error being relied upon as the basis for reissue (e.g., in the remarks accompanying an amendment)” (emphasis added).
In this instance, the Examiner considered the Applicant’s argument filed on June 2nd, 2026, on page 9, second paragraph addressing error and referring to claims 36-55 to be that statement, hence objection to Oath/Declaration is withdrawn.
Consent of the Assignee
The Applicant’s argument on pages 12-13 of the remarks directed to the Consent of Assignee, has been considered. After further consideration, the Examiner decided to withdraw the objection because the same person signing Consent of the Assignee, also singed the Oath/Declaration filed November 17, 2023, which states “I am authorized to act on behalf of the assignee”.
35 U.S.C. § 112
The Applicant’s explanation of the support for the claimed limitation has been considered and is found persuasive, consequently previous rejections under 35 U.S.C. §112(a) and § 112(b) have been withdrawn. Please note that the claim amendment triggered new 112(a) and 112(b) rejection as explained above.
Claim Interpretation
The claim interpretation is maintained because they use a generic placeholder coupled with functional language without reciting sufficient structure to achieve the function.
35 U.S.C. §103
The Examiner has considered the Applicant’s amendment and concluded that it does overcome the prior art of record. Accordingly, the 35 U.S.C. 103(a) rejections are withdrawn.
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.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA M LIE whose telephone number is (571)272-8445. The examiner can normally be reached on M-F, 5:30 am - 2:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Fischer can be reached on 571-272-6779.
All correspondence relating to this reissue proceeding should be directed:
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/ANGELA M LIE/Primary Examiner, Art Unit 3992
Conferees:
/LUKE S WASSUM/Primary Examiner, Art Unit 3992
/H.B.P/
Hetul PatelSupervisory Patent Examiner, Art Unit 3992
1 Applicant’s Remarks filed on June 2nd, 2026, page 11
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