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 .
Detailed Action
Response to Arguments
1. Applicant’s amendment to claim 11 has overcome the previous 101 rejection and therefore the 101 rejection has been withdrawn.
2. Pages 10-13 of the Remarks comprise arguments regarding the 112(b) rejection of claims 1-20. The arguments are not considered to be persuasive and are addressed below.
Pages 12-13 argue that the Specification comprises support for one having ordinary skill in the art to understand the scope of the invention.
Specifically, the following portion of paragraph 65 is cited (emphasis added):
“There, operation 306 includes determining whether memory in the system was properly disarmed during manufacture. In other words, operation 306 includes determining whether memory in the system that is connected to backup power modules was properly disarmed at the end of a controlled shutdown during manufacture of the memory. As noted above, approaches herein are desirably able to ensure that memory components have been fully disarmed during a controlled shutdown that occurs prior to shipment.”
After reviewing this section and the other cited support sections of the disclosure, the Examiner maintains that the term and concept of “disarming memory during manufacture” is still indefinite.
Page 13 comprises the argument:
“Again, definiteness must be analyzed, not in a vacuum, but in light of: (A) the content of the particular application disclosure; (B) the teachings of the prior art; and (C) the claim interpretation that would be given by one possessing the ordinary level of skill in the pertinent art at the time the invention was made. MPEP § 2173.02.”
The Examiner maintains that the claim limitation remains indefinite despite considering each of A-C. The Examiner requests the Application provide a clear definition for the claim limitation of “disarming memory during manufacture”, as the cited sections of the Specification fail to do so.
Paragraph 47 of the originally filed Specification states:
“In sharp contrast, approaches herein are desirably able to ensure that memory components are fully disarmed during a controlled shutdown that occurs prior to shipment.”
The above recitation mentions that a memory can be fully disarmed during a “controlled shutdown that occurs prior to shipment”. However, it is unclear if the “controlled shutdown” itself represents the disarming of a memory device. For example, can a controlled shutdown be performed where the memory device is left in an “armed state”. Further, is a controlled shutdown a process that takes place during manufacture?
As detailed in the 112 rejection below, it remains unclear what the metes and bounds for a memory to be disarmed during manufacture, and therefore a proper interpretation cannot be applied for comparing the prior art to this limitation.
One having ordinary skill in the art, upon reviewing the disclosure, can assume that the disarming or arming of a memory device has some relation to a power supply of they system. However, with the terminology not being common in the art, and even in review of the disclosure, it is unclear if a disarming process represents a physical or logical disconnection of a memory to a battery backup module.
3. Claims 1, 11, and 20 have been amended to incorporate limitations from previously objected claims. Claims 1, 11, and 20 would are considered to comprise allowable subject matter pending any forthcoming amendment to the independent claims to overcome the outstanding 112 rejection requiring additional search of the prior art.
Request for Interview and Amendment Suggestion
4. The Examiner notes that an attempt to initiate an interview with the attorney of record, Dominic M. Kotab, as listed on page 15 of the Remarks, was attempted on May 5th 2026. No answer was received and a voicemail was left. No response was received to the voicemail.
The Examiner welcomes an interview request to discuss the 112 issue and attempt to reach an agreement on a claim amendment to put the application in condition for allowance.
Had an interview been granted, the Examiner would have suggested the following amendment to overcome the 112 rejection:
“in response to a system detecting an initial microcode load, determining whether memory in the system was disarmed during manufacture to logically disconnect the memory from a physically connected backup power module”
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.
5. 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 pre-AIA the applicant regards as the invention.
Independent claims 1, 11, and 20 each comprise the limitation (or slight variation thereof), “determining whether the memory was disarmed during manufacture”.
The Examiner asserts that “disarming of a memory device during manufacture” is not a step commonly known in the art. Therefore, the Specification is used for support in defining the term/step of arming/disarming a memory device.
Paragraph 47 of the originally filed Specification states:
“In sharp contrast, approaches herein are desirably able to ensure that memory components are fully disarmed during a controlled shutdown that occurs prior to shipment.”
The above recitation mentions that a memory can be fully disarmed during a “controlled shutdown that occurs prior to shipment”. However, it is unclear if the “controlled shutdown” itself represents the disarming of a memory device. For example, can a controlled shutdown be performed where the memory device is left in an “armed state”.
Paragraph 56 of the originally filed Specification states:
“Approaches herein are also desirably able to ensure that memory components are fully disarmed during a controlled shutdown that occurs prior to shipment. This confirms memory arrives at client locations as intended, e.g., with sufficiently charged backup power modules.”
The above recitation links a disarmed memory device with comprising a charged backup power module. However, it is unclear if the “disarming of the memory device” intends to read as a physical or electrical disconnection between the memory device and a backup power module.
While the Specification discusses a relationship between arming/disarming of a memory device and whether a memory arrives at a desired location with charged backup batteries, it still remains unclear what the metes and bounds for the process of “disarming a memory device” are and therefore the limitation is indefinite.
Claims 2-10 and 12-19 inherit the indefiniteness of their independent claims.
- For examination purposes, the claimed steps responsive to the determination of the memory being armed/disarmed will be considered, however, the determination step cannot be examined until an interpretation can be applied to the limitation.
Allowable Subject Matter
6. Claims 1-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112, 2nd paragraph, set forth in this Office action.
- Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 extension fee 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 BRIAN T MISIURA whose telephone number is (571)272-0889. The examiner can normally be reached on M-F: 8-4:30PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Andrew Jung can be reached on (571) 272-3779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brian T Misiura/
Primary Examiner, Art Unit 2175
Prosecution Insights