DETAILED FINAL OFFICE 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 .
Comments
This office action is in response to the amendment of February 17, 2026, which amendment has been ENTERED.
It is noted that claims 7-9 are NEWLY-ADDED, and, that claims 1-9 are presently pending in the case.
The replacement drawing set of February 17, 2026 has been APPROVED, and, the drawings have been accepted as FORMAL.
The objection to the specification for the presence of hyperlinks has been overcome by the amendment.
Applicant’s Arguments and Examiner’s Response
The text of 37 CFR 1.111(b) is as follows:
“(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant’s or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.” (Bold added).
It is noted that in section V. of the remarks with the amendment of February 17, 2026, Applicant has stated that the interpretation of certain terms as set forth in the office action of January 14, 2026, under 35 USC 112(f) has been “accepted.”
In section VI. of the remarks with the amendment of February 17, 2026, Applicant has stated with reference to the rejection of claims 1-6 under 35 USC 112(b) as set forth in the office action, that the “rejection is respectfully traversed” and that claim 1 has been amended “to correct the associated deficiencies.”
In response, it is pointed out that Applicant has failed to file a response that “distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action,” particularly section 11 of the office action of January 14, 2026. Please see 37 CFR 1.111(b).
In section VII. of the remarks with the amendment of February 17, 2026, Applicant has stated with reference to the rejection of claims 1-6 under 35 USC 112(a) as set forth in the office action, that the “rejection is respectfully traversed” and that claim 1 has been amended “to correct the associated deficiencies,” asking for “withdrawal of the rejection under 35 U.S.C. §112(b),” which is taken to be an unintentional mistake.
In response, it is pointed out that Applicant has failed to file a response that “distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action,” particularly section 13 of the office action of January 14, 2026. Please see 37 CFR 1.111(b).
So, in that Applicant’s amendment has failed to meet the requirements of 37 CFR 1.111(b), the rejections of record are hereby maintained, with only the changes that are necessitated by the amendment.
Rejections as Maintained
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: missile simulator module in claim 1; pre-launch module in claim 1; trajectory curvature module in claims 1 and 9; guidance module in claims 1, 2, and 7; and, pre-launch guidance module in claim 5.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-9 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.
Each of claim limitations missile simulator module in claim 1; pre-launch module in claim 1; trajectory curvature module in claim 1; guidance module in claims 1 and 2; and, pre-launch guidance module in claim 5 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. For each of missile simulator module in claim 1; pre-launch module in claim 1; trajectory curvature module in claim 1; guidance module in claims 1 and 2; and, pre-launch guidance module in claim 5, the disclosure of each of the recited modules is lacking or insufficient. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
B. For each of “missile simulator module” in claim 1; “pre-launch module” in claim 1; “trajectory curvature module” in claim 1; “guidance module” in claims 1 and 2; and, “pre-launch guidance module” in claim 5, it is unclear what the “module” is. Is each module some sort of hardware device/circuit, software, an algorithm, or something else. From the claim language, each of “missile simulator module” in claim 1; “pre-launch module” in claim 1; “trajectory curvature module” in claim 1; “guidance module” in claims 1 and 2; and, “pre-launch guidance module” in claim 5 would not clearly and definitely inform one of ordinary skill-in-the-art what is meant.
C. Overall, independent claim 1 is indefinite and unclear in that the preamble (lines 1-2) states that the claim is directed to claiming “A computer implementation processor,” but, the body of claim 1 fails to recited any element of a “processor.” The same is true for each of dependent claims 2-9.
D. In independent claim 1, it is unclear if the “radar” is positively recited as being a part of the overall claimed “computer implementation processor.”
E. In independent claim 1, it is unclear if the “missile” is positively recited as being a part of the overall claimed “computer implementation processor.”
F. On line 2 of dependent claim 5, “said simulator” is indefinite and unclear in context as to whether it takes “missile simulator module” on line 3 of independent claim 1 as its antecedent.
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 1-9 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.
Each of “missile simulator module” in claim 1; “pre-launch module” in claim 1; “trajectory curvature module” in claims 1 and 9; “guidance module” in claims 1, 2, and 9; and, “pre-launch guidance module” in claim 5 is a computer-implemented function, noting, for example, the mention of “processor” on lines 1 and 2 of independent claim 1. In addition, each of “missile simulator module” in claim 1; “pre-launch module” in claim 1; “trajectory curvature module” in claim 1; “guidance module” in claims 1 and 2; and, “pre-launch guidance module” in claim 5, involves a specialized function, which would require the disclosure of the algorithm for each of these specialized functions in order to adequately describe the listed claim limitations for a proper written description. Neither the originally-filed claims, nor the specification, nor the drawings provides an adequate written description of the algorithms for each of these specialized functions. So, one of ordinary skill-in-the-art could not reasonably conclude that the inventor was in possession of the claimed invention at the time of filing.
A specialized function must be supported in the specification by the computer and the algorithm that the computer uses to perform the claimed specialized function. The default rule for § 112(f) programmed computer claim limitations is to require disclosure of an algorithm when special programming is needed to perform the claimed function. The reason that this is the default rule is that disclosure of the step by step procedure for specialized functions establishes clear, definite boundaries and notifies the public of the claim scope. “And by claiming a processor programmed to perform a specialized function without disclosing the internal structure of that processor in the form of an algorithm, Katz’s claims exhibit the ‘overbreadth inherent in open-ended functional claims’” In re Katz Interactive Call Processing Patent Litigation, 97 USPQ2d 1737, 1747 (Fed. Cir. 2011), citing to Halliburton Energy Services v. M-I LLC, 514 F.3d 1244, 1256 n.7 (Fed. Cir. 2008). Disclosing the algorithm for a specialized function is the quid pro quo for the ability to claim an element in purely functional terms.
It is important to remember that the disclosure must identify the way the inventor performs the function, whether or not a skilled artisan might otherwise be able to glean another way from other sources or his or her own understanding. The reason that disclosure of the specific algorithm is required is precisely because various ways might exist to perform the function. The quid pro quo of 112(f) is that the applicant is permitted to recite claim limitations using purely functional terms provided that the supporting specification specifically identifies the structure (including an algorithm for specialized functions) that performs the claimed function. When using section 112(f) claiming, the public is entitled to know which way of performing the function is covered by the patent claims.
Finality of this Office Action
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BERNARR E GREGORY whose telephone number is (571)272-6972. The examiner can normally be reached on Mondays through Fridays from 7:30 am to 3:30 pm eastern time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Vladimir Magloire, can be reached at telephone number 571-270-5144. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/BERNARR E GREGORY/Primary Examiner, Art Unit 3648