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
Claim(s) 1-20 has/have been examined.Claim(s) 1-20 have been rejected.
Novel Subject Matter
Claim(s) 1-20 is/are rejected as being indefinite and lacking written description and/or directed to a judicial exception while reciting novel subject matter. Within each claim as a whole the novel subject matter is as recited in the office action of January 7, 2026.
Response to Arguments
The argument submitted March 27, 2026 have been fully considered but are not persuasive.
Regarding the 101 rejection, Applicant argues that limitations such as “performing bit-flipping, by a data inverter” or “XORing data” cannot be practically performed by the human mind. The examiner respectfully disagrees. The examiner notes that while the term “data inverter” invokes 112(f), no limiting structure is found in the specification to limit the interpretation of the term. (See the 112a/b rejections.) For the purposes of evaluating 35 U.S.C. 101, the claimed data inverter is interpreted as encompassing a data inverter software function or software operation which inverts data. When a sequence of bits is written on paper, a bit-flipping process performed using a data inverter function can be practically performed in the human mind with the use of pen and paper, and is therefore considered a mental process. See MPEP 2106.04(a)(2).Also regarding the 101 rejection, Applicant argues that the claims integrate the judicial exception into a practical application because they result in an improvement to the technology. The examiner respectfully disagrees. MPEP 2106.04(d)(1) states “if the specification sets forth an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification.” The claims result in a XORed data sequence. The generation of this data sequence, in itself, provides no benefits. The arguments are persuasive for claims 2 and 3, and similar claims, which positively recite storing the resulting sequence in memory.
Regarding the 112(a/b) rejections based on the limitations “data inverter” and “randomizer”, Applicant argues that a person of skill in the art would construe the term to be definite and have sufficient structure for performing the claimed function. Applicant has argued that these terms are known in the art and would be understood to one of ordinary skill in the art. The examiner respectfully disagrees.
Applicant has argued that these terms do not invoke 112(f) because they recite structure for performing the claimed functionality. The examiner respectfully disagrees. The data inverter component in claims 1 and 11 is not limited in the claims by a structure, and neither is the randomizer in claim 11. Since no structure is recited, but functions are claimed as being performed by these components, they invoke 112(f). Since they do invoke 112(f), MPEP 2181 recites:
“If one employs means plus function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the 35 U.S.C. 112(b)”.
“The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means- (or step-) plus-function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function.”Applicant has pointed to no corresponding structure in the specification that performs the data inverter and randomizer functions. The claimed terms are therefore indefinite. Whether one of skill in the art could envision a structure to perform the claimed function is not sufficient. The structure must be disclosed in the specification. These claims fail to satisfy the requirements of 35 U.S.C. 112(b) because there is no disclosure of structure, material or acts for performing the recited functions. Finally, MPEP 2181 states: “When a claim containing a computer-implemented 35 U.S.C. 112(f) claim limitation is found to be indefinite under 35 U.S.C. 112(b) for failure to disclose sufficient corresponding structure (e.g., the computer and the algorithm) in the specification that performs the entire claimed function, it will also lack written description under section 112(a).“ The claims are therefore additionally rejected under 35 U.S.C. 112(a).
Claim Interpretation
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 limitation(s) is/are: “data inverter” in claims 1 and 11, and “the randomizer” in claim 11.
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.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-8 are rejected under 35 U.S.C. 101 as being directed to an abstract idea without significantly more.
Below is an evaluation using the 2019 Revised Patent Subject Matter Eligibility Guidance.
Regarding claim 1, Step 1 is satisfied because method steps are processes.
At step 2a prong 1, an abstract idea is recited: steps of the claim could be performed as a mental process. These steps include determining a value for an inversion seed bit from a look up table, bit-flipping user data and metadata sequence, and XORing the user data and meta data sequence with a random sequence to produce an XORed sequence for storage. The claim recites use of a data inverter and a look up table. The data inverter is not limited to a structure in the specification (see the 112a rejection below) and is therefore fulfilled by a mental process of inverting data. A look up table can be achieved by use of pen and paper and its use can be considered part of the mental process.
At step 2a prong 2, additional elements that integrate the judicial exception into a practical application are not recited. Recited details about the nature of the data are not additional elements but instead describe steps of the mental process. The claim recites use of a memory. Use of a memory does not integrate the judicial exception into a practical application because it does not use the judicial exception in a meaningful way beyond generally linking the judicial exception to a computer environment. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method does not integrate a judicial exception or provide significantly more.
At step 2b, additional elements that may amount to significantly more than the judicial exception are not recited. The use of a memory does not amount to significantly more than the judicial exception because it contributes insignificantly to the execution of the claimed method.
Regarding claims 2-5, 8, these claims recite additional limitations of the mental process but their inclusion does not push the mental process beyond what can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper. See MPEP § 2106.04(a)(2)(III). The claims do not recite additional elements which must be evaluated in step 2a prong 2 or step 2b.
Regarding claim 6 and 7, these claims recite the use of TLC NAND and QLC NAND. These memory devices do not serve to integrate the judicial exception into a practical application (at step 2a prong 2) because the particular memory into which the result is stored does not significantly contribute to the execution of the claimed method. These memory devices do not amount to significantly more than the judicial exception (at step 2b) because they are use of a machine that contributes only nominally or insignificantly to the execution of the claimed method. See MPEP § 2106.05(g).
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.
Claim(s) 1-20 is/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.
Note that dependent claims not specifically addressed below inherit the deficiency of the parent claim and do not remedy the issue.
Claim 1 line 2 recites "a data inverter”. The limitation fulfills the 3-prong test for being interpreted as invoking 35 U.S.C. 112(f). See MPEP 2181. The limitation is a generic placeholder that is modified by functional language, and is not further modified in the claim by a definite structure or material for performing the claimed function. The specification does not provide for a particular structure that embodies this limitation. The claim therefore lacks written description support for this limitation.
Claim 11 line 3 recites “a randomizer”. The limitation fulfills the 3-prong test for being interpreted as invoking 35 U.S.C. 112(f). See MPEP 2181. The limitation is a generic placeholder that is modified by functional language, and is not further modified in the claim by a definite structure or material for performing the claimed function. The specification does not provide for a particular structure that embodies this limitation. The claim therefore lacks written description support for this limitation. While the specification describes the function of the randomizer (paragraph 102), such a function is not a structure for a system claim.
Claim 11 line 4 recites “a data inverter”. This is indefinite for the same reason as describe for claim 1, above.
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.
Claim(s) 1-20 is/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.
Note that dependent claims not specifically addressed below inherit the deficiency of the parent claim and do not remedy the issue.
Claim 1 line 2 recites "a data inverter" which invokes 35 U.S.C. 112(f) but lacks support in the specification to limit the interpretation of the term. (See the 35 U.S.C. 112(a) rejection above.) A limiting structure cannot be found to embody this limitation and guide its interpretation when examining the claim. The element is therefore indefinite.
Claim 11 lines 3 and 4 recite “a randomizer” and “a data inverter”. These limitations invoke 35 U.S.C. 112(f) but lack support in the specification to limit the interpretation of the term. (See the 35 U.S.C. 112(a) rejection above.) A limiting structure cannot be found to embody these limitation and guide their interpretation when examining the claim. The elements are therefore indefinite.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Atsumi teaches scrambling user data into a random sequence before writing it to memory to improve reliability. Choi teaches performing an XOR operation on metadata block and a selected random sequence among stored patterns to obtain a randomized result based on a configuration of the memory controller.
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.
This action is a final rejection and closes the prosecution of this application. Applicant’s reply under 37 CFR 1.113 to this action is limited to an appeal to the Patent Trial and Appeal Board, an amendment complying with the requirements set forth below, or a request for continued examination (RCE) to reopen prosecution where permitted. Please note that the Office also offers initiatives that are available to applicants after the close of prosecution. See https://www.uspto.gov/patents/initiatives/uspto-patent-applications-iniatives-timeline for more information.
General information on the Patent Trial and Appeal Board is available at: www.uspto.gov/patents/patent-trialand-appeal-board/about-ptab/new-ptab. The information at this page includes guidance on time limited options that may assist the applicant contemplating appealing an examiner’s rejection. It also includes information on pro bono (free) legal services and advice available for those who are under-resourced and considering an appeal at: https://www.uspto.gov/patents/patent-trial-and-appeal-board/patent-trial-and-appeal-board-pro-bono-programindependent.
The page is best reviewed promptly after applicant has received a final rejection or the claims have been twice rejected because some of the noted assistance must be requested within one month from the date of the latest rejection. See MPEP § 1204 for more information on filing a notice of appeal.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply. The Notice of Appeal must be accompanied by the fee required by 37 CFR 41.20(b)(1). The current fee amount is available at: www.uspto.gov/Fees.
If applicant should desire to file an after-final amendment, entry of the proposed amendment cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made in a previous Office action. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR 1.113 to a final rejection must include cancellation of or appeal from the rejection of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds all of the claims to be in condition for allowance.
If applicant should desire to continue prosecution in a utility or plant application filed on or after May 29, 2000 and have the finality of this Office action withdrawn, an RCE under 37 CFR 1.114 may be filed within the period for reply. See MPEP § 706.07(h) for more information on the requirements for filing an RCE.
The application will become abandoned unless a Notice of Appeal, an after final reply that places the application in condition for allowance, or an RCE has been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH SCHELL whose telephone number is (571) 272-8186. The examiner can normally be reached on Monday through Friday 9AM-5:00PM (Pacific Time).
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. Please note that all agendas or related documents that Applicant would like reviewed should be sent at least one full business day (i.e. 24 hours not including weekends or holidays) before the interview.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ashish Thomas can be reached at (571) 272-0631. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. The fax phone number for the examiner is 571-273-8186. The examiner may be e-mailed at joseph.schell@uspto.gov though communications via e-mail are not permitted without a written authorization form (see MPEP 502.03).
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JS/JOSEPH O SCHELL/Primary Examiner, Art Unit 2114
Prosecution Insights