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 .
Claim (Specification) Objections
Claim 33 is objected to because of the following informalities: in claim 33, line 1, “aircraft comprising flight control system” is grammatically incorrect (e.g., an article is missing). Appropriate correction is required.
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.
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 21 to 40 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.
Regarding claims 21 and 33, applicant has apparently not previously described, in sufficient detail, by what algorithm(s)1, or by what steps or procedure2, he compared the pitch rate command alone (e.g., apart from being in a sum with the scaled pitch angle and the scaled pitch rate) during takeoff to the pitch angle saturation limit, as the claim(s) now cover(s) and encompass(es). Accordingly, the examiner believes that the specification as filed does not evidence possession of the full scope of the now claimed invention, and the claims now only describe a desired result.
In this respect, the specification does not describe the now claimed comparing, but rather describes other instances of comparing including either comparing the pitch angle saturation limit i) to a pitch angle command (alone) or ii) to a sum of the pitch rate command, the scaled pitch rate, and the scaled pitch angle. There is apparently no suggestion that the pitch rate command (alone or apart from the sum, as the claims now cover and encompass) might be compared to the pitch angle saturation limit, nor is it even clear how a “rate command” (e.g., in degrees per second) might possibly be compared to an “angle [] limit” (e.g., in degrees) in as much as they would be dimensionally different, and furthermore (for the instance ii) above) there is apparently no suggestion that scaled pitch rate and the scaled pitch angle might BOTH be zero (e.g., “during takeoff”, as claimed) in the described comparing with the sum. For example, the specification describes at published paragraph [0006] a processor configured “to compare the pitch angle command to the pitch angle saturation limit”, and the specification describes at published paragraphs [0008] and [0039] a processor configured “to compare the sum of the pitch rate command, scaled pitch rate, and scaled pitch angle to the pitch angle saturation limit”, but it is apparently undescribed that the pitch rate command alone (as opposed to the pitch angle command alone, as described at published paragraph [0006]) would have been compared (e.g., apart from the sum which the claim(s) now clearly cover(s) and encompass(es)) with the pitch angle saturation limit during takeoff. Accordingly, the examiner believes that applicant has not evidenced, to those skilled in the art, possession of full scope3 of the now claimed invention, but has only now (if anything) described a desired result.
Regarding claims 21 and 33, applicant has apparently not previously described, in sufficient detail, by what algorithm(s), or by what steps or procedure, he regulated the control signal during takeoff to limit the aircraft pitch attitude in response to the comparing of the pitch rate command (e.g., alone) to the pitch angle saturation limit. No comparing of the pitch rate command alone (i.e., apart from the disclosed “sum”, which the claim now clearly covers) to the pitch angle saturation limit is apparently described in the specification, in sufficient detail, and no algorithm(s) or steps/procedure for “regulat[ing]” the control signal to limit the aircraft pitch attitude in response to such a comparing is apparently described in the specification, in sufficient detail. Accordingly, the examiner believes that applicant has not evidenced, to those skilled in the art, possession of full scope of the now claimed invention, but has only now (if anything) described a desired result.
Regarding claims 22 to 24 and 34 to 36, applicant has not previously described that a comparing of the pitch rate command to the pitch angle saturation limit (as recited in the independent claims, which also was not originally described) was performed by i) comparing the pitch angle saturation limit to a sum of the pitch rate command and a scaled pitch angle during takeoff, ii) comparing the pitch angle saturation limit to a sum of the pitch rate command and a scaled pitch rate during takeoff, or iii) by comparing the pitch angle saturation limit to a sum of the pitch rate command, a scaled pitch angle, and a scaled pitch rate during takeoff, with only comparing the pitch angle saturation limit to either a pitch angle command or a sum of the pitch rate command, a scaled pitch angle, and a scaled pitch rate during takeoff being described in and supported by the specification. Accordingly, the examiner believes that applicant has not evidenced, to those skilled in the art, possession of full scope of the now claimed invention, but has only now (if anything) described a desired result.
Claims 21 to 40 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.
In claim 21, line 6 and in claim 33, line 8, “generate a control signal based at least in part from the pitch rate command for coupling to an aircraft control surface” is grammatically incorrect, unsupported by the specification, and unclear in the claim context which (in claim 21) does not apparently even require any “aircraft” or (in claim 33) require any structural thing that couples to “aircraft control surface” or clarify which “an aircraft control surface” as an individual part perhaps might be intended (e.g., a column, a rudder?), or clarify with reasonable certainty4 what might be intended by “for coupling to an aircraft control surface” (e.g., is this mere intended use, is a physical connection/coupling required by this permissive/prospective language and if so which, is the control signal or the command “for [the] coupling”, if it is, etc.?)
In claim 21, lines 9ff, and in claim 33, lines 10ff, “calculate a pitch angle saturation limit based at least in part on a stall angle of attack and the flight path angle during takeoff” is fully indefinite in the claim context (e.g., which stall angle of attack of an apparent infinite number of stall angle(s) of attack that might exist at different times under different conditions, stall angle of attack of what particularly since no mechanism that might generate lift is claimed to result in any such angle of attack and/or stall angle of attack, existing when and under what particular conditions so as to not be indeterminate, perhaps at cruise, which takeoff of what particularly, etc.?), with “the flight path angle during takeoff” also having insufficient antecedent basis and being unclear (e.g., is this a desired flight path angle, an actual flight path angle of something in the claim, something else entirely, etc.?)
In this respect, all further recitations of “during takeoff” in the claim set are also indefinite (e.g., during which takeoff of what particularly, are all the recited instances of “during takeoff” the same takeoff or can they be different takeoffs, etc.?), and all further recitations of “angle of attack” in the claim set are also indefinite (e.g., angle(s) of attack when and under what particular conditions, etc.?)
In claim 21, lines 11ff, and in claim 33, 12ff, “compare the pitch rate command to the pitch angle saturation limit during takeoff” is indefinite and unclear from the teachings of the specification (e.g., how can a pitch rate, e.g., in degrees per second, be compared to a pitch angle, e.g., in degrees, since the two quantities are/would be dimensionally different?), and apparently unsupported by the specification (which apparently never compares a pitch rate command alone, as the only reasonable reading of the breadth of the currently independent claims, to the pitch angle saturation limit).
In claim 21, lines 13ff, and in claim 33, lines 14ff, “regulate the control signal during takeoff to limit the aircraft pitch attitude in response to the comparing of the pitch rate command to the pitch angle saturation limit” is indefinite from the teachings of the specification that apparently describes no comparing of (e.g., only) the pitch rate command to the pitch angle saturation limit, nor does it clarify how the control signal might be “regulate[d] in response to the comparing”, leaving the metes and bounds of the claim unclear.
Claims 22 to 24 and 34 to 36, which are not original claims, are indefinite for being internally contradictory, and for contradicting the plain meaning of the independent claims, as if to influence or clarify a purported plain meaning of the independent claims by attempting to add a new special definitions, perhaps5, of the otherwise plain meaning to be more in line with what is described in the specification. For example, claim 22 contradicts itself by first indicating/reiterating that the pitch rate command [e.g., A in the examiner’s notations below] is compared to the pitch angle saturation limit [e.g., B], this comparing being denoted A<=>B by the examiner, and then further specifies that the comparison is accomplished by “comparing the pitch angle saturation limit [e.g., B] to a sum of the pitch rate command [e.g., A] and a scaled pitch angle [e.g., C] during takeoff”, this comparing being denoted by the examiner as B<=>{A+C}. However, A<=>B is not the same as, and cannot be (i.e., when C is non-zero that the claim necessarily/clearly permits) represented by B<=>{A+C}. Therefore the claim is unclear. Moreover, the specification does not apparently support any A<=>B or B<=>A comparisons, where A is the pitch rate command, as detailed above. Analogous reasonings may be applied to the other claims 23, 24, and 34 to 36.
In claim 26, lines 1ff, in claim 28, lines 1ff, in claim 38, lines 1ff, and in claim 39, line 3, “a free-air stall angle of attack” is indefinite in the claim context (e.g., which free-air stall angle of attack of an apparent infinite number of possible free-air stall angle(s) of attack, free-air stall angle of attack of what particularly, existing when and under what particular conditions so as to not be indeterminate, perhaps at cruise, etc.?)
In claim 26, line 4, in claim 28, line 6, in claim 38, line 4, and in claim 39, line 8, “a ground effect stall angle of attack” is indefinite in the claim context (e.g., which ground effect stall angle of attack of an apparent infinite number of possible ground effect stall angle(s) of attack, ground effect stall angle of attack of what particularly, existing when and under what particular conditions so as to not be indeterminate, perhaps at taxi, etc.?)
In claim 30, lines 2ff, and in claim 31, lines 2ff, “stop generating the control signal from the damped pitch rate command” is indefinite in the claim context and from the teachings of the specification that neither refers to nor clarifies any such “stop[ping]” of generating of the control signal, with “the damped pitch rate command” also having insufficient antecedent basis and being unclear in the claim context.
The structure of the claim 33 preamble (with two possible transitional phrases, e.g., “comprising” and “comprising” in line 1) renders the scope of the claim unclear. In particular, it is unclear whether applicant is claiming an aircraft comprising only a flight control system having the enumerated elements (e.g., the input, etc.), or whether applicant is claiming an aircraft having the enumerated elements (e.g., the input, etc.). See MPEP 2173.02, I. (“For example, if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate.”)
Claim(s) depending from claims expressly noted above are also rejected under 35 U.S.C. 112 by/for reason of their dependency from a noted claim that is rejected under 35 U.S.C. 112, for the reasons given.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
[Here, the examiner notes that, because applicant is apparently claiming, in claims 21 to 32, disembodied concepts (i.e., abstract ideas) without being limited to structures or particular articles, e.g., by claiming the concept of ”during takeoff” without apparently claiming an aircraft, by abstractly claiming altering or limiting of an aircraft characteristic (e.g., a pitch attitude) without apparently claiming an aircraft or any pitching/movement of the aircraft, by claiming a control signal and an aircraft control surface perhaps as particular technological environment or field of use without claiming any particular control/transformation of structures or particular articles such as an aircraft, or any particular machine, and in combination with indefinite claim limitations that possibly are mere recitations of intended use or purpose or effect (e.g., “for coupling”, “to alter”, “to limit”, etc.), because the abstract ideas in the claims are apparently not integrated into a practical application, and because the claims do not apparently recite significantly more than the abstract ideas themselves, as detailed below, the examiner believes that an ineligibility rejection is prudent and warranted even for these apparently indefinite/unsupported claims, in order to foster and promote compact prosecution. In this respect, the examiner understands claim 33 to be directed to an aircraft comprising an aircraft control surface operative to alter an aircraft pitch attitude in response to a control signal, and to thus constitute a particular machine.]
Claims 21 to 32 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1 and Step 2A, Prong I:
Claim(s) 21 to 32, while (each) reciting a statutory category of invention defined in 35 U.S.C. 101 (a useful process, machine, manufacture, or composition of matter), is/are directed to an abstract idea, which is a judicial exception, the recited abstract idea being that of (by at least one processor, such as a human mind) calculating a pitch angle saturation limit based at least in part on a stall angle of attack and the flight path angle during takeoff, and comparing the pitch rate command to the pitch angle saturation limit during takeoff, e.g., by generating a pitch rate command in response to the position signal; generating a control signal based at least in part from the pitch rate command for coupling to an aircraft control surface, where the aircraft control surface is operative to alter aircraft pitch attitude in response to the control signal; calculating a pitch angle saturation limit based at least in part on a stall angle of attack and the flight path angle during takeoff; comparing the pitch rate command to the pitch angle saturation limit during takeoff; and regulating the control signal during takeoff to limit the aircraft pitch attitude in response to the comparing of the pitch rate command to the pitch angle saturation limit; wherein the at least one processor is operative to compare the pitch rate command to the pitch angle saturation limit during takeoff by comparing the pitch angle saturation limit to a sum of the pitch rate command and a scaled pitch angle during takeoff; wherein the at least one processor is operative to compare the pitch rate command to the pitch angle saturation limit during takeoff by comparing the pitch angle saturation limit to a sum of the pitch rate command and a scaled pitch rate during takeoff; wherein the at least one processor is operative to compare the pitch rate command to the pitch angle saturation limit during takeoff by comparing the pitch angle saturation limit to a sum of the pitch rate command, a scaled pitch angle, and a scaled pitch rate during takeoff; wherein the flight path angle is received from an aircraft sensor during takeoff and wherein the at least one processor is further operative to apply a low pass filter to the flight path angle to calculate the pitch angle saturation limit during takeoff; wherein the stall angle of attack is a free-air stall angle of attack, and wherein the at least one processor is operative to calculate the pitch angle saturation limit during takeoff further based on a margin between the free-air stall angle of attack and a ground effect stall angle of attack; wherein the pitch angle saturation limit is calculated to provide a margin to stall in full ground effect when a runway slope is zero; wherein the stall angle of attack is a free-air stall angle of attack, and wherein the pitch angle saturation limit is calculated as [EQUATION], where θlimit is the pitch angle saturation limit, Tθ is a gain factor, α1p0 is the free-air stall angle of attack that is normalized, Kconst is a margin between the free-air stall angle of attack and a ground effect stall angle of attack, LFτ(0.3) is a low pass filter applied with a 0.3 second time constant, and γ is the flight path angle during takeoff; wherein the at least one processor is operative to regulate the control signal during takeoff to limit the aircraft pitch attitude by regulating the control signal such that aircraft pitch attitude does not exceed the pitch angle saturation limit (θlimit); wherein the at least one processor is further operative to stop generating the control signal from the damped pitch rate command in response to aircraft altitude exceeding a predetermined level after takeoff; wherein the at least one processor is further operative to stop generating the control signal from the damped pitch rate command in response to liftoff; and wherein the input is a side stick aircraft control and wherein the aircraft control surface is an elevator.
This abstract idea falls within the grouping(s) of mathematical concepts, mental processes, and/or certain methods of organizing human activity, distilled from case law, because it could be practically performed in the human mind, and additionally the calculating and comparing constitute mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations) apart from and regardless of whether they could be practically performed in the human mind.
Step 2A, Prong II and Step 2B:
Additionally, applying a preponderance of the evidence standard, the abstract idea is not integrated (e.g., at Step 2A, Prong II) by the recitation of additional elements/limitations into a practical application (using the considerations set forth in MPEP §§ 2106.04(a)-(h)) because merely using a computer (the at least one processor) as a tool to perform an abstract idea or adding the words "apply it" is not integrating the idea into a practical application of the idea, and e.g., looking at the claim as a whole and considering any additional elements/limitations individually and in combination, no (additional) particular machine (e.g., applicant does not apparently claim a flight control system comprising an aircraft control surface, but rather a flight control system comprising an input and at least one processor), transformation (e.g., “coupling to”, “to alter”, and “to limit” are understood to be insignificant recitations of intended use or purpose or effect), improvement to the functioning of a computer or an existing technological process or technical field, or meaningful application of the idea, beyond generally linking the idea to a technological environment (e.g., "implementation via computers", Alice, in a flight control system) or adding insignificant extra-solution activity (receiving signals e.g., from an input, a sensor, generating and regulating/stop generating a control signal that does not positively control anything, etc.), is recited in or encompassed by the claims.
Moreover, applying a preponderance of the evidence standard, the claim(s) does/do not include additional elements/limitations/steps (e.g., at Step 2B) that are, individually or in ordered combination, sufficient to amount to significantly more than the judicial exception because the elements/limitations/steps are recited at a high level of generality (e.g., a flight control surface such as an elevator, during takeoff, etc.) so as to not favor eligibility (MPEP § 2106.05(d)) and/or are used e.g., for data/information gathering only (receiving) or for other activities that were well-understood, routine, and conventional activity in the industry, for example as indicated in applicant's specification at published paragraphs [0003] and [0004], and moreover, the generically recited computer elements (e.g., the at least one processor, the input such as a side stick aircraft control; see e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 110 USPQ2d 1984 (2014); buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350, 112 USPQ2d 1093 (Fed. Cir. 2014); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 115 USPQ2d 1090 (Fed. Cir. 2015); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1321, 120 USPQ2d 1353, 1362; Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-1355, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (“[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter.”); Mobile Acuity, Ltd. v. Blippar Ltd., Case No. 22-2216 (Fed. Cir. Aug. 6, 2024); see also the 2019 PEG Advanced Module at pages 89, 145, etc.) do not add a meaningful limitation to the abstract idea because their use would be routine (and conventional) in any computer implementation of the idea.
Moreover, limiting or linking the use of the idea to a particular technological environment (e.g., a flight control system) is not enough to transform the abstract idea into a patent-eligible invention (Flook[6]) e.g., because the preemptive effect of the claims on the idea within the field of use would be broad.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21 to 40, as best understood when read in light of applicant’s specification in a way to be supported by the specification, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 to 20 of U.S. Patent No. 11,841,713 to Shin et al. (reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other because all the features as correctly recited in the instant claim set or as interpreted to be correctly recited in the instant claim set have already been claimed in the parent ‘713 patent, with the correspondence between the features of the claims in the instant application and the already claimed features in the parent ‘713 patent being as in the following claim correspondence table:
Claims in Instant Application 18/535604 to Shin et al.
Corresponding Claims in U.S. Patent 11,841,713 to Shin et al. (reference patent)
21
1
22
1
23
1
24
1
25
1, 5
26
1, 5
27
1, 4, 5
28
1, 5
29
1, 5, 6
30
1, 5, 7
31
1, 5, 8
32
1, 5, 9, 10
33
11, 20
34
11, 15, 20
35
11, 15, 20
36
11, 15, 20
37
11, 15, 20
38
11, 14, 15, 20
39
11, 15, 20
40
11, 15, 16, 20
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
For example only, Sankrithi et al. (MGNC87) reveals an electronic primary flight control system with pitch envelope protection.
Treffeisen (3,037,725) reveals an aircraft stall prevention system which accounts for both angle of attack and pitch rate, and defines a critical (between stable and unstable operations) angle of attack in FIG. 1.
Heinsohn et al. (3,839,699) reveals a stall warning system which accounts for pitch rate.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David A Testardi whose telephone number is (571)270-7876. The examiner can normally be reached Monday, Tuesday, Thursday, 8:30am - 5:30pm E.T., and Friday, 8:30 am - 12:30 pm E.T.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview when appropriate, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rachid Bendidi can be reached at (571) 272-4896. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID A TESTARDI/Primary Examiner, Art Unit 3664
1 See the 2019 35 U.S.C. 112 Compliance Federal Register Notice (Federal Register, Vol. 84, No. 4, Monday, January 7, 2019, pages 57 to 63). See also http://ptoweb.uspto.gov/patents/exTrain/documents/2019-112-guidance-initiative.pptx . Quoting the FR Notice at pages 61 and 62, "The Federal Circuit emphasized that ‘‘[t]he written description requirement is not met if the specification merely describes a ‘desired result.’ ’’ Vasudevan, 782 F.3d at 682 (quoting Ariad, 598 F.3d at 1349). . . . When examining computer-implemented, software-related claims, examiners should determine whether the specification discloses the computer and the algorithm(s) that achieve the claimed function in sufficient detail 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, 523 F.3d at 1340 (internal citation omitted). It is not enough that one skilled in the art could theoretically write a program to achieve the claimed function, rather the specification itself must explain how the claimed function is achieved to demonstrate that the applicant had possession of it. See, e.g., Vasudevan, 782 F.3d at 682–83. If the specification does not provide a disclosure of the computer and algorithm(s) in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention that achieves the claimed result, a rejection under 35 U.S.C. 112(a) for lack of written description must be made. See MPEP § 2161.01, subsection I."
2 See http://www.uspto.gov/sites/default/files/documents/fnctnllnggcmptr.pptx at page 29.
3 See MPEP 2161.01, I. and LizardTech Inc. v. Earth Resource Mapping Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005) cited therein ("Whether the flaw in the specification is regarded as a failure to demonstrate that the applicant possessed the full scope of the invention recited in [the claim] or a failure to enable the full breadth of that claim, the specification provides inadequate support for the claim under [§ 112(a)]").
4 See Nautilus, Inc. v. Biosig Instruments, Inc. (U.S. Supreme Court, 2014) which held, "A patent is invalid for indefiniteness if its claims, read in light of the patent’s specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." See also In re Packard, 751 F.3d 1307 (Fed.Cir.2014)(“[A] claim is indefinite when it contains words or phrases whose meaning is unclear,” i.e., “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.”) and Ex Parte McAward, Appeal No. 2015-006416 (PTAB, Aug. 25, 2017, Precedential) (“Applying the broadest reasonable interpretation of a claim, then, the Office establishes a prima facie case of indefiniteness with a rejection explaining how the metes and bounds of a pending claim are not clear because the claim contains words or phrases whose meaning is unclear.”)
5 See MPEP 2173.01, I.:
"An applicant may not add a special definition or disavowal after the filing date of the application. However, an applicant may point out or explain in remarks where the specification as filed contains a special definition or disavowal."
6 See e.g., Bilski v. Kappos, 561 U.S. 593 ("Flook established that limiting an abstract idea to one field of use . . . did not make the concept patentable.")