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 .
Priority
Applicant’s claim for the benefit of a prior-filed applications 18/433,384 and 63/444,318, filed on March 28, 2024 and February 9, 2023, respectively, under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Remarks
The Amendment fails to comply with 37 CFR 1.121(c)(4) which requires that no claim text shall be presented for any claim in the claim listing with the status of "canceled" or "not entered." This requirement is being waived for this response. Please ensure compliance with 37 CFR 1.121 in your next submission.
It appears the inventor filed the current application pro se (i.e., without the benefit of representation by a registered patent practitioner). While inventors named as applicants in a patent application may prosecute the application pro se, lack of familiarity with patent examination practice and procedure may result in missed opportunities in obtaining optimal protection for the invention disclosed. The inventor may wish to secure the services of a registered patent practitioner to prosecute the application, because the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting a patent practitioner.
A listing of registered patent practitioners is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent practitioners located in their area by writing to Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). See the rejection under 35 U.S.C. 112 below.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 1 recites "the combined instruction" in line 6. There is insufficient antecedent basis for this limitation in the claim. For the purposes of prior art examination, Examiner is interpreting as "a combined instruction" in line 6 and "the combined instruction" in the last line of the claim.
Claim 27 recites "the second pre-decoder" in line 6. There is insufficient antecedent basis for this limitation in the claim. Examiner is interpreting as "the second pre-decoder circuit".
Claim Rejections - 35 USC § 112(a)
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 1-2, 7, 8, 19-27 and 29 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 claims contain 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, at the time the application was filed, had possession of the claimed invention.
The Applicant has not pointed out where the amended claims are supported.
Claim 1 recites "the at least one processor comprising an operand prefix identifying circuit". There does not appear to be support for more than one processor comprising the same operand prefix identifying circuit.
Claim 1 recites "an operand prefix identifying circuit comprising at least one pre-decoder circuit that identifies the operand prefix instruction and determines the at least one prefix operand". There does not appear to be support for more than one predecoder circuit that identifies the same operand prefix instruction and determines the same at least one prefix operand.
Claim 1 recites "the at least one processor comprising an operand selection circuit". There does not appear to be support for more than one processor comprising the same operand selection circuit.
Claim 1 recites "at least one multiplexer circuit that selects the at least one prefix operand". There does not appear to be support for more than one multiplexer circuit selecting the same at least one prefix operand.
Claim 7 recites “wherein an individual one of the at least one prefix operand serves as a source operand of the combined instruction”. There does not appear to be support for at least one prefix operand that is a destination operand and an individual one of the at least one prefix operand to serve as source operand of the combined instruction.
Claim 19 recites "an operand combiner circuit comprising a data path with at least one decoder circuit that combines the at least one prefix operand with the consuming instruction". There does not appear to be support for this limitation. There does not appear to be support for a decoder combining a prefix operand with the consuming instruction. There does not appear to be support for an operand combiner circuit comprising a data path with at least one decoder circuit.
Claim 27 recites "at least one operand analyzer circuit comprising a multiplexing logic circuit". There does not appear to be support for more than one operand analyzer logic circuit comprising the same multiplexing logic circuit.
Claim 27 recites "a multiplexing logic circuit that rejects or accepts at least one prefix operand to combine with the consuming instruction in response to a control signal from the first pre-decoder circuit or the second pre-decoder circuit". There does not appear to be support for this limitation. As an example, there does not appear to be support for the control signal to be from the first pre-decoder or the second pre-decoder.
Claim 27 recites "an instruction decoder circuit that combines the at least one prefix operand with the consuming instruction to create a combined instruction". There does not appear to be support for a decoder circuit to combine to create a combined instruction.
Dependent claims are rejected for the same reasons.
Claim Rejections - 35 USC § 112(b)
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 1-2, 7 and 8 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 “at least one prefix operand serves as a destination operand of the combined instruction”. It is understood that “at least one” includes two or more, however, it is unclear how more than one prefix operand can serve as a singular destination operand. It is unclear if the Applicant intended to mean that the at least one prefix operand includes a destination operand which serves as the destination operand of the combined instruction, or if the at least one prefix operand, which can include multiple operands, make up a single destination operand. Or rather, did the Applicant intend to mean that more than one operand, such as two prefix operands, are both destination operands such that the combined instruction writes to two destinations? For the purpose of examination, Examiner interprets “the at least one prefix operand serves as a destination operand of the combined instruction” as “the at least one prefix operand includes a destination operand which serves as a destination operand of the combined instruction”.
Dependent claims are rejected for the same reason.
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 and 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6, of copending Application No. 18/433384 (reference application) in view of Official Notice.
Claim 1: Claim 6 of the co-pending application teaches almost all the limitations of claim 1 of the instant application. ‘384 does not teach that the second instruction comprises a register operand. ‘384 does not teach that the at least one processor comprises the operand prefix identifying circuit and the operand selection circuit. ‘384 does not teach that the combined instruction is executed. Examiner takes official notice that instructions comprise a register operand, and that instructions are executed in a processor. This would result in the aforementioned limitations. One of ordinary skill in the art would be motivated to include a register operand in an instruction so different data values can be used and storing in a register provides quick access. Executing the combined instruction would save resources as it would flow through the pipeline as one instruction.
Claim 2: Claim 6 teaches that the operand prefix identifying circuit is a prefix instruction identifying predecoder.
Response to Arguments
The Applicant’s arguments, filed 11/14/2025, have been fully considered.
The Applicant’s arguments regarding the rejection under 35 USC 101 are not fully persuasive. However, due to the amendments, the rejections under 35 USC 101 have been withdrawn.
The Applicant’s argument, regarding the prior art rejections, is persuasive. Hence the rejections have been withdrawn.
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 Jyoti Mehta whose telephone number is (571)270-3995. The examiner can normally be reached on Monday-Thursday 8 am-6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Cottingham can be reached on (571) 272-1400. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JYOTI MEHTA/Supervisory Patent Examiner, Art Unit 2183
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