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
The Examiner acknowledges Applicant’s amendments and remarks filed on 26 May 2026. They have been fully considered and are persuasive in part. The amendments are sufficient to overcome the rejections based on 35 U.S.C. 101, 102, and 103. However, they are not sufficient to overcome the rejections based on 35 U.S.C. 112(b) and the double patenting rejection.
With respect to 112(b), the claims have been amended to recite circuitry “to… receive… identify… and configure”. The same reasoning applied in the prior Office Action to the original language also applies to the amended language. The amended claims recite circuitry to perform various functions. This language is indefinite because it does not specifically limit the processors in a manner that executes the functions, and may be interpreted as a non-limiting statement of intended use. This language is in contrast to suggested language that recites, for example, circuitry configured to receive, identify, configure, etc. Circuitry configured to execute functions is directed to a particular circuit that has been structurally modified to achieve those specific functions. The broadest reasonable interpretation (BRI) of circuitry “to receive”, “to identify”, or “to configure” includes circuits that may potentially be altered (for example, a generic programmable logic device) to operate in the manner claimed, but have not specifically been modified to do so.
In addition to the original 112(b) rejection, Applicant’s amendments have also necessitated new grounds of rejection under 112(b).
With respect to the double patenting rejection, the amendments are not sufficient to overcome the cited reference. The most recent amendment filed in reference application no. 18/632,260 has amended its claims in the following manner:
1. (Currently Amended) One or more processors, comprising:
circuitry to, in response to call:
receive one or more clock frequency value inputs to the API;
[[to]] identify one or more settings from a data structure that correlates the one or more clock frequency value inputs with the one or more settings; and
cause one or more other processors to be configured to operate at one or more processor clock frequencies based, at least in part, on the one or more identified settings
Amended claim 1 of the ‘260 reference application is identical to amended claim 1 of the present application, with the exception that “clock frequency value” is recited instead of “workload characteristic”. Application claim 1 as currently amended represents a broadened form of reference claim 1 because “workload characteristic” is broader than “clock frequency value”. However, this broadening allows reference claim 1 to anticipate application claim 1. Because application claim 1 is anticipated by reference claim 1, the double patenting rejection is maintained.
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.
Claims 1-20 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.
Claim 1 recites a processor comprising circuitry “to… receive… identify… configure”. This language is indefinite because it does not specifically limit the processors in a manner that executes the functions, and may be interpreted as a statement of intended use. A statement of intended use may be interpreted as non-limiting. It is therefore unclear whether a circuit “to… receive… identify… configure” refers to a specific circuit to perform the function (i.e., configured or programmed for the function) or a generic circuit that may be used to perform the function.
Claim 1 recites the limitation “the API” in line 4. There is insufficient antecedent basis for this limitation. There is no prior original limitation of an API per se in the claim. Claim 1 provides an original recitation of an “API call.”
Claim 1 also recites the limitation “one or more processors” in line 7. Claim 1 has been amended to recite “One or more processors” as an original recitation in line 1. It is therefore unclear whether the one or more processors of line 7 represents a new set of processors, or a reference to line 1.
Claims 8 and 15 are rejected on the same basis.
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 1, 8, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, and 15 of copending Application No. 18/632,260 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are anticipated by the reference claims as amended by the submission filed on 16 April 2026.
Reference claim 1 is similar to application claim 1, with the exception that “clock frequency value” is recited instead of “workload characteristic”. Application claim 1 represents a broadened form of reference claim 1 because “workload characteristic” is broader than “clock frequency value”. However, this broadening allows reference claim 1 to anticipate application claim 1. Because application claim 1 is anticipated by reference claim 1, it is rejected under double patenting. Application claims 8 and 15 are rejected on the same basis.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 JI H BAE whose telephone number is (571)272-7181. The examiner can normally be reached Tuesday to Friday and every other Monday, 9 am to 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jaweed Abbaszadeh can be reached at 571-270-1640. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JI H BAE/Primary Examiner, Art Unit 2176 U.S. Patent and Trademark Office
Phone: 571-272-7181
Fax: 571-273-7181
ji.bae@uspto.gov
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