DETAILED ACTION
Brief Summary
This is a Final Office Action addressing U.S. Application No. 18/603,037.
On February 19, 2026, a Non-Final Office Action (“NFOA”) was mailed in which, among other findings, claims 11,20, and 26 were rejected for being based on a defective reissue declaration, and claim 26 was rejected under 35 USC §§ 112/251 for lack of written description and new matter; and claims 11 and 20 were indicated as comprising allowable subject matter.
On May 19, 2026, the Applicant filed their response to the NFOA including a supplemental declaration, amendments to the claims, and remarks toward the outstanding rejections.
Reissue Declaration
The supplemental reissue declaration filed 5/19/26 is formal.
Response to Amendment/Arguments
The Applicant’s arguments have been fully considered and are addressed below in the presented in the Applicant’s Remarks.
Claim interpretation/New Matter Rejections
The Applicant argues that the claim terms “client device” and “server” as they appear in the amended claims, given their proper interpretation, and in view of the prior prosecution history refer to “different types of hardware”. The Applicant argues that for the purpose of lexicography the Applicant understands “client device” to mean “consumer computer” and “server” is a type of hardware component different from the client device. (See Remarks, pages 20-21, 24-32). The Applicant also argues that the claimed “selecting” requires some intelligent decision making (See Id., page 21).
The Examiner does not find these arguments persuasive. The specification does not appear to support a claim interpretation that client device and server are different types of hardware. The specification is clear that they are different devices, however the specification does not disclose any particular hardware configuration regarding the server. The Applicant states that the term “client device” means “consumer computer” according to the specification and refers to lines 44-46 of column 2. The Examiner agrees that this construction is supported by the specification. The Applicant also argues that a “server” is a different type of hardware device from a client. The Examiner does not find this construction is supported by the specification. The only devices that have a detailed hardware architecture are the “communication device(s)” shown in figure 4, which comprise a processor, storage devices, a bus, and I/O devices. It is unclear to the Examiner which of those hardware components the Applicant is suggesting is not part of the claimed server making it a different type of device. The Applicant also refers to figure 6 as showing support for a different hardware device, however figure 6 describes an “acceleration application” comprising modules, which as best understood by the Examiner appears to be referring to an abstraction of a software. The Applicant also argues that one of ordinary skill would understand a server is a dedicated commercial device. The Examiner disagrees. A server can have multiple uses (for example data storage and data manipulation) and be owned by consumers.
Additionally, according to the specification, the client device in certain instances functions as a server. For example, at lines 46-48 of column 2 states, “Each consumer can serve up data to other consumers, via the Internet 62, thus taking the load of serving off of the distributors…” disclosing the consumer/client device may act as a server (emphasis added). Further at lines 37-47 of column 13, the specification describes the client device acting as a proxy server.
The Applicant’s arguments regarding lexicography are not persuasive. Applicants are allowed to be their own lexicographer and require specific definitions for claim terms, however in such cases the terms are required to be explicitly defined in the specification at the relevant time (See MPEP 2111.01(IV)(A)). There are no such explicit definitions in the instant specification at the time of its original filing.
In conclusion, the Examiner finds that the specification as originally filed does not support an interpretation that the claimed server is a different type of hardware device than the claimed client device. The rejections under 35 USC §§ 112 and 251 based on new matter/lack of written description are maintained.
The Examiner does not find the Applicant’s argument that the claimed “selecting” requires some intelligent decision making and is not predefined persuasive. (See page 21). The claims merely require selecting an IP address from a list based on a criterion. Under a broadest reasonable interpretation, the first on a list would satisfy “a criterion”. The Applicant is free to amend the claims to require a specific basis for the selection.
The Examiner finds that Applicant’s arguments regarding the support for the limitation of the second client device registering with the first server to be persuasive. That aspect of the claims is no longer considered new matter.
35 USC § 251 Rejections – New Matter
Claim 26-45 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows:
Independent claims 26 and 27 each recite in part, “wherein the first server is server hardware device that is not a consumer computer…” The Examiner is unable to locate support in the specification for this limitation. The Applicant’s statement of support does not appear to disclose the referenced limitations for the reasons mentioned above in the response to the Applicant’s arguments.
Dependent claims 28-45 are rejected based on their dependence on claim 27.
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.
Claim 26-45 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.
Independent claims 26 and 27 each recite in part, “wherein the first server is server hardware device that is not a consumer computer…” The Examiner is unable to locate support in the specification for this limitation. The Applicant’s statement of support does not appear to disclose the referenced limitations for the reasons mentioned above in response to the Applicant’s arguments.
Dependent claims 28-45 are rejected based on their dependence on claim 27.
Allowable Subject Matter
Claims 11 and 20 are allowed.
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 ERON J SORRELL whose telephone number is (571)272-4160. The examiner can normally be reached M-F 9AM-6PM EST.
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Signed:
/ERON J SORRELL/ Primary Examiner, Art Unit 3992
Conferees: /JOSEPH R POKRZYWA/ Primary Examiner, Art Unit 3992
/M.F/ Supervisory Patent Examiner, Art Unit 3992
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