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 Amendment
Applicant’s remarks/amendments filed on July 22, 2025. Claims 1, 11, 13 and 14 have been amended. Claims 1-15 are pending.
Drawings
The drawings1-4 are objected to because they fail to show necessary textual labels of features or symbols in Figs 1-4 as described in the specification. A descriptive textual label for each numbered element in these figures would be needed to fully and better understand these figures without substantial analysis of the detailed specification, that would give the viewer necessary detail to fully understand this element at a glance Any structural detail that is of sufficient importance to be described should be shown in the drawing. Optionally, applicant may wish to include a table next to the present figure to fulfill this requirement. See 37 CFR 1.83. 37 CFR 1.84(n)(o) is recited below:
"(n) Symbols. Graphical drawing symbols may be used for conventional elements when appropriate. The elements for which such symbols and labeled representations are used must be adequately identified in the specification. Known devices should be illustrated by symbols which have a universally recognized conventional meaning and are generally accepted in the art. Other symbols which are not universally recognized may be used, subject to approval by the Office, if they are not likely to be confused with existing conventional symbols, and if they are readily identifiable.
(o) Legends. Suitable descriptive legends may be used, or may be required by the Examiner, where necessary for understanding of the drawing, subject to approval by the Office. They should contain as few words as possible."
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.
The claim 11 is rejected because a single claim which claims both apparatus (i.e., a system “a transactional distributed database system”) and the method steps of using the apparatus is indefinite under 35 USC § 112, second paragraph. This type of claim is indefinite because it fails to positively recite the boundaries sought for protection. The metes and bounds of the claim cannot be determined because it is unclear as to which category of subject matter is sought for protection, i.e., the apparatus (system claim 11) or the method (claim 1).
Claim 11 is 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.
The Examiner has carefully reviewed the specification and unable to find an adequate written description for the claimed elements “comprising a processing circuitry configured to”
During patent examination, the pending claims must be given their broadest reasonable interpretation consistent with the specification; However, the Applicant’s Specification describes the claimed subject matters in a high level of generality (i.e., comprising a processing circuitry configured to), which makes it difficult to understand and interpret the claimed terms consistent with the claimed invention.
MPEP 2111 states:
The Patent and Trademark Office ("PTO") determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art."
Indeed, the rules of the PTO require that application claims must "conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description." 37 CFR 1.75(d)(1).
The written description requirement has several policy objectives.
“[T]he essential goal’ of the description of the invention requirement is to clearly convey
the information that an applicant has invented the subject matter which is claimed.” In re
Barker, 559 F.2d 588, 592 n.4, 194 USPQ 470, 473 n.4 (CCPA 1977). Another
objective is to put the public in possession of what the applicant claims as the invention.
See Regents of the University of California v. Eli Lilly, 119 F.3d 1559, 1566, 43
USPQ2d 1398, 1404 (Fed. Cir. 1997), cert. denied, 523 U.S. 1089 (1998). *>" The
written description ’ requirement implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the
inventor ’s obligation to disclose the technologic knowledge upon which the patent is
based, and to demonstrate that the patentee was in possession of the invention that is
claimed." Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1084 (Fed. Cir.
2005). Further, the< written description requirement ** promotes the progress of the
useful arts by ensuring that patentees adequately describe their inventions in their patent specifications in exchange for the right to exclude others from practicing the invention for the duration of the patent’s term.
It should be recognized that in additional to disclosing the interrelationship and interdependence of computer hardware and software, the Specification also has to clearly convey and adequately describe the subject matter that an applicant has invented in an effort to promote the progress of useful arts.
The amendment filed on July 22, 2025 to claim 11 “comprising a processing circuitry configured to” is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “comprising a processing circuitry configured to”.
Its noted that the disclosure has written “client side” and “data servers”, however, the examiner is unable to find an adequate written description for the claimed elements “comprising a processing circuitry configured to”
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Objections
Claims 12-15 are objected to because of the following informalities:
Claim 12 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim 11 and 9. See MPEP § 608.01(n). Accordingly, the claim 12 not been further treated on the merits.
2) Claim 13 is rejected because the computer program product claim “non-transitory computer program product” which claimed on a system claim 11.
(Suggestion: cancel to the claim 13).
3) Claim 15 objected to under 37 CFR 1.75 as being a substantial duplicate of claim 14. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
(Suggestion: cancel to claim 15).
Appropriate correction is required.
Response to Arguments
Applicant’s arguments, see pages 16-20 filed July 22, 2025, with respect to the rejections of claims 1-15 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Drawings:
“Any structural detail that is of sufficient importance to be described should be shown in the drawing. Optionally, applicant may wish to include a table next to the present figure to fulfill this requirement. See 37 CFR 1.83. 37 CFR 1.84(n)(o) is recited below:”
Applicant is remined to submit a new set of drawings for replacements of the drawings 1-4, which have been objected for failure of showing textual labels of features. These textual label of features as (“Legend Table” that was submitted by the Applicants) should be shown in the drawings and is required from the Applicants to provide these drawings replacements to the Office for approval.
Claim Rejections - 35 USC § 112:
The claim 11 as amended is still raising the 35 USC § 112 rejection by the Office because it falls into the two categories “System” claim and also “method” claim. While Applicant’s wish to claim the claim 11 as SYSTEM , then all of the detailed steps (a) –(i) should be incorporated into the claim 11 (from the method claim 1), then these words as recite in the claim 11 “method according to claim 1” should be deleted from the claim 11.
However, in this case, since the amendments has raised the claim 11 is 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. In addition, the claim 11 as amended is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “comprising a processing circuitry configured to”.
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 DEBBIE M LE whose telephone number is (571)272-4111. The examiner can normally be reached 9:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Rones can be reached at 571-272-4085. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DEBBIE M LE/Primary Examiner, Art Unit 2168 October 20, 2025
Prosecution Insights