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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 22 May 2026 has been entered.
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.
Claims 1-20 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.
MPEP § 2163.04 states that “The inquiry into whether the description requirement is met must be determined on a case-by-case basis and is a question of fact”, “A description as filed is presumed to be adequate, unless or until sufficient evidence or reasoning to the contrary has been presented by the examiner to rebut the presumption.” § 2163.04 requires that “The examiner, therefore, must have a reasonable basis to challenge the adequacy of the written description. The examiner has the initial burden of presenting by a preponderance of evidence why a person skilled in the art would not recognize in an applicant’s disclosure a description of the invention defined by the claims” wherein “the examiner must set forth express findings of fact which support the lack of written description conclusion (see MPEP § 2163 for examination guidelines pertaining to the written description requirement)”.
Given that this is a first action on the merits in the instant application, the claims presented are original. MPEP § 2163, section (I)(A) states that “[I]ssues of adequate written description may arise even for original claims, for example, when an aspect of the claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the applicant had possession of the claimed invention at the time of filing. The claimed invention as a whole may not be adequately described if the claims require an essential or critical feature which is not adequately described in the specification and which is not conventional or known in the art… An invention described solely in terms of a method of making and/or its function may lack written descriptive support where there is no described or art-recognized correlation between the disclosed function and the structure(s) responsible for the function…Written description issues may also arise if the knowledge and level of skill in the art would not have permitted the ordinary artisan to immediately envisage the claimed product arising from the disclosed process.”
Furthermore, MPEP § 2161.01, section I, instructs that “Problems satisfying the written description requirement for original claims often occur when claim language is generic or functional, or both…For instance, generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed… original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed.” (Examiner’s emphasis added.)
Claims 1-20 recite “upon determining that the first signalling connection was successfully established and the second signalling connection was successfully established, establishing a peer-to-peer connection between the client application on the first device and the second device using the first and the second signalling connection”, “transferring from the second device to the client application on the first device, the content item, the content item transferred via the peer-to-peer connection” and then “uploading the content item from the client application to the server system using a different communication channel between the first device and the server system”.
However, the specification is silent regarding what the “different communication channel” consists of since, as logic would dictate, it cannot be either the “peer-to-peer connection” or either of the “signalling connections”. Since it cannot be either of these “connections”, then the specification must describe this supposed “different communication channel” which, after inspection of specification including the abstract and paragraphs 0007 and 0008 which simply restates the same limitations, it does not. Therefore, it cannot be fairly said that Applicant sufficiently describes in detail this “different communication channel” in structure, algorithm, or effect such that one of ordinary skill in the art would understand how the inventor intended the function to be performed.
Therefore, Examiner finds that claims 1-20 fail to meet the written description requirement.
Claim(s) 1-20 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 1-20 recite “upon determining that the first signalling connection was successfully established and the second signalling connection was successfully established, establishing a peer-to-peer connection between the client application on the first device and the second device using the first and the second signalling connection”, “transferring from the second device to the client application on the first device, the content item, the content item transferred via the peer-to-peer connection” and then “uploading the content item from the client application to the server system using a different communication channel between the first device and the server system”.
However, the specification is silent as to as any limitations for what constitutes this “different communication channel” which cannot be a “peer-to-peer” or “signalling” “connection” as already required. Therefore, it follows that one skilled in the art would not have been able to make and/or use the invention in the manner claimed without undue experimentation as one skilled in the art would not know what exactly the “different communication channel” is within the scope of the claim. Therefore, the Examiner finds that these limitations are not properly enabled.
It is emphasized that it has been held that the specification must provide enablement commensurate with the full scope of the claim. See AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244, 68 USPQ2d 1280, 1287 (Fed. Cir. 2003) and MPEP 2164.08. It is emphasized that the specification, not the knowledge of one skilled in the art, must supply the novel aspects of an invention in order to constitute adequate enablement. See Automotive Technologies International Inc. v. BMW of North America Inc., 84 USPQ2d 1108, 1114-15 (Fed. Cir. 2007). See MPEP §§ 2161.01, 2164.06(a). (Examiner’s emphasis added.)
It has been held in In re Wands that there are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
While respect to these factors, as explained in detail above, the disclosure is inadequate to constitute an adequate disclosure. Assuming arguendo that Applicant’s invention is, in fact, novel, while the nature of the invention may have been considered to be predictable given the knowledge one skilled in the art had, in one sense, regarding computer programs and how one can write a computer program to perform operations as claimed, the quantity of experimentation necessary to make and/or use the invention using the disclosure is undue since it was known by one of ordinary skill that writing computer programs requires a substantial level of skill and takes a substantial amount of effort to create a program that operates in its intended fashion. Trial and error and pitfalls such as infinite loops and undesired output resulting from imperfectly written computer programs was known and expected and one of ordinary skill would expect such unpredictability in creating a program that operates correctly. It is common knowledge within the computer networking art that using specific algorithms to perform certain functions is required in order to achieve the intended result. Otherwise, unpredictable results or errors may result. However, since the disclosure gives no amount of direction with respect to what novel steps such as those explained above are being performed and, more importantly, how the “different communication channel” would differentially function aside from the other limitations in order to achieve the invention as claimed, the existence of any working examples appears to be non-existent and the quantity of experimentation necessary extends beyond any reasonable threshold and would therefore be undue. Again, the specification, not the knowledge of one skilled in the art, must supply the novel aspects of an invention in order to constitute adequate enablement. (Examiner’s emphasis added.)
Therefore, claim(s) 1-20 fail to comply with the enablement requirement.
Response to Arguments
Applicant’s arguments filed with respect to the §§ 102 and 103 rejections under Guabtni have been fully considered and are persuasive. The rejections of claims 1-20 under Guabtni have been withdrawn.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. After further search, the cited prior art teaches data transfers using signalling and peer-to-peer connections between a first and second device and a server.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to G. C. Neurauter, Jr. whose telephone number is (571)272-3918. The examiner can normally be reached Monday-Friday 9am-5pm Eastern Time.
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/G. C. Neurauter, Jr./Primary Examiner, Art Unit 2459
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