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 .
Specification
The disclosure is objected to because of the following informalities:
para 0077- “rout” should read as “route.
para 0078- “rout” should read as “route.
para 0079- “rout” should read as “route.
Claim 1 recites:
generating or determining, using the one or more computing devise processors, based on the formatted combinatorial network data.
“computing devise processors” should read as “computing device processors”
Appropriate correction is required.
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 claims 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 2161.01 I. Computer Programming, Computer Implemented Inventions, and 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph [R-07.2022]
To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention at the time of filing. Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345, 54 USPQ2d 1915, 1917 (Fed. Cir. 2000) ("The purpose of [the written description requirement] is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification"); LizardTech Inc. v. Earth Resource Mapping Inc., 424 F.3d 1336, 1345, 76 USPQ2d 1724, 1732 (Fed. Cir. 2005) ("Whether the flaw in the specification is regarded as a failure to demonstrate that the patentee [inventor] possessed the full scope of the invention recited in [the claim] or a failure to enable the full breadth of that claim, the specification provides inadequate support for the claim under [§ 112(a) ]"); cf. id. ("A claim will not be invalidated on [§] 112 grounds simply because the embodiments of the specification do not contain examples explicitly covering the full scope of the claim language."). While "[t]here is no special rule for supporting a genus by the disclosure of a species," the Federal Circuit has stated that "[w]hether the genus is supported vel non depends upon the state of the art and the nature and breadth of the genus." Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1352, 98 USPQ2d 1711, 1724 (Fed. Cir. 2011); id. (further explaining that "so long as disclosure of the species is sufficient to convey to one skilled in the art that the inventor possessed the subject matter of the genus, the genus will be supported by an adequate written description."). See also Rivera v. Int’l Trade Comm’n, 857 F.3d 1315, 1319-21, 123 USPQ2d 1059, 1061-62 (Fed. Cir. 2017) (affirming the Commission’s findings that "the specification did not provide the necessary written description support for the full breadth of the asserted claims," where the claims were broadly drawn to a "container . . . adapted to hold brewing material" while the specification disclosed only a "pod adapter assembly" or "receptacle" designed to hold a "pod").
Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art in a way that shows that the inventor actually invented the claimed invention at the time of filing. Id.; Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172. The function of the written description requirement is to ensure that the inventor had possession of the specific subject matter later claimed as of the filing date of the application relied on; how the specification accomplishes this is not material. In re Herschler, 591 F.2d 693, 700-01, 200 USPQ 711, 717 (CCPA 1979), further reiterated in In re Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir. 1983); see also MPEP §§ 2163 - 2163.04.
The written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, applies to all claims including original claims that are part of the disclosure as filed. Ariad, 598 F.3d at 1349, 94 USPQ2d at 1170. As stated by the Federal Circuit, "[a]lthough many original claims will satisfy the written description requirement, certain claims may not." Id. at 1349, 94 USPQ2d at 1170-71; see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1343-46, 76 USPQ2d 1724, 1730-33 (Fed. Cir. 2005); Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1405-06 (Fed. Cir. 1997)("The description requirement of the patent statute requires a description of an invention, not an indication of a result that one might achieve if one made that invention."). Problems satisfying the written description requirement for original claims often occur when claim language is generic or functional, or both. Ariad, 593 F.3d at 1349, 94 USPQ2d at 1171 ("The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant [inventor] has made a generic invention that achieves the claimed result and do so by showing that the applicant [inventor] has invented species sufficient to support a claim to the functionally-defined genus.").
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. Ariad, 598 F.3d at 1349-50, 94 USPQ2d at 1171 ("[A]n adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries.") (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1405-06); Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002) (holding that generic claim language appearing in ipsis verbis in the original specification did not satisfy the written description requirement because it failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d 1164, 1170, 25 USPQ2d 1601, 1606 (Fed. Cir. 1993) (rejecting the argument that "only similar language in the specification or original claims is necessary to satisfy the written description requirement").
The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 "merely by clearly describing one embodiment of the thing claimed." LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346, 76 USPQ2d 1731, 1733 (Fed. Cir. 2005). The issue is whether a person skilled in the art would understand the inventor to have invented, and been in possession of, the invention as broadly claimed. In LizardTech, claims to a generic method of making a seamless discrete wavelet transformation (DWT) were held invalid under 35 U.S.C. 112, first paragraph, because the specification taught only one particular method for making a seamless DWT and there was no evidence that the specification contemplated a more generic method. "[T]he description of one method for creating a seamless DWT does not entitle the inventor . . . to claim any and all means for achieving that objective." LizardTech, 424 F.3d at 1346, 76 USPQ2d at 1733.
Similarly, 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. See MPEP §§ 2163.02 and 2181, subsection IV.
The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172; Capon v. Eshhar, 418 F.3d 1349, 1357-58, 76 USPQ2d 1078, 1083-84 (Fed. Cir. 2005). Computer-implemented inventions are often disclosed and claimed in terms of their functionality. For computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into the sufficiency of both the disclosed hardware and the disclosed software due to the interrelationship and interdependence of computer hardware and software. The critical inquiry is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682. 114 USPQ2d 1349, 1356 (citing Ariad Pharm., Inc. V. Eli Lilly & Co, 598 F.3d 1336, 1351, 94 USPQ2d 1161, 1172 (Fed. Cir. 2010) in the context of determining possession of a claimed means of accessing disparate databases).
When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary (5th ed., 2002). Applicant may "express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008) (internal citation omitted). It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015) (reversing and remanding the district court’s grant of summary judgment of invalidity for lack of adequate written description where there were genuine issues of material fact regarding "whether the specification show[ed] possession by the inventor of how accessing disparate databases is achieved"). If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made. For more information regarding the written description requirement, see MPEP § 2162- § 2163.07(b). If the specification does not provide a disclosure of sufficient corresponding structure, materials, or acts that perform the entire claimed function of a means- (or step-) plus- function limitation in a claim under 35 U.S.C. 112(f) or the sixth paragraph of pre-AIA 35 U.S.C. 112, "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) [or the second paragraph of pre-AIA 35 U.S.C. 112 ]. In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (en banc). A rejection under 35 U.S.C. 112(b) or the second paragraph of pre-AIA 35 U.S.C. 112 must be made in addition to the written description rejection. See also MPEP § 2181, subsection II.B.2(a).
In the present application, Applicant asserts the method will route computing inputs and generate network resolution data. However, the steps articulated are not described in sufficient detail to describe how the claimed functionality is performed nor support a reasonable conclusion that the inventor possessed the claimed subject matter at the time of filing. Each of the claim limitations will be analyzed in view of the specification to determine to compliance with the written description requirement.
Claim 1 recites:
routing, using the one or more computing device processors, at a first time, a first computing input to the first application based on computing assessment data or a first parameter comprised in the first computing input, the computing assessment data being different from the first parameter;
routing, using the one or more computing device processors, at a second time different from the first time, a second computing input to the second application based on computing inquiry data or a second parameter comprised in the second computing input, the computing inquiry data being different from the second parameter, the first parameter, and the computing assessment data;
routing, using the one or more computing device processors, at a third time different from both the first time and the second time, a third computing input to the third application based on computing event data or a third parameter comprised in the third computing input, the computing event data being different from the third parameter, the second parameter, the computing inquiry data, the first parameter, and the computing assessment data;
The claim limitations contain alternative clauses that indicated that the computing input may routed based the contents of the input (computing assessment data, computing inquiry data, or computing event data) or a parameter ( first, second, or third)
The functional language directing to routing of the computing input information defines the boundaries of the claims based on a desired result. (where the computing input will be route) without specifying the manner in how the contents or the parameter are used withing the routing. The scope of this functional language is directed to a claimed genus that includes routing the data to its destination using any means or manner based on:
the contents of the computing input, or
a parameter
To sufficiently support a claimed genus, the specification has to demonstrate inventor has invented species sufficient to support a claim directed to the functionally defined genus. Applicant fails such a demonstration because the specification merely contains similar functional language as the original claims.1 2 Examiner is unable to identify a plurality of species for either of the alternative bases for routing. The specification fails to describe how the parameter or content of the input will be used to route the data . Thus, examiner concludes there is a lack of sufficient evidence to establish applicant had possession of routing by a parameter by any and all means nor routing by contents of computing input by any and all means.
“executing, using the one or more computing device processors and the first application, based on the first computing input, a first computing operation and thereby generating the first computing result;
executing, using the one or more computing device processors and the second application, based on the second computing input, a second computing operation and thereby generating the second computing result;
executing, using the one or more computing device processors and the third application, based on the third computing input, a third computing operation and thereby generating the third computing result;”
These claim limitations are best supported by Fig. 4A, items 410, 412 and 414, which are a verbatim recitation of the claim limitations. Additional support is found within paragraph 0080 of the filed specification, which references the use of the “first computing operation”, “second computing operation” and “second computing operation”. The specification fails to provide any guidance or suggestions on how each of the recited operations are performed to provide the “first computing result”, “second computing result” and “second computing result”. A person of ordinary skill in the art would not understand what operations or transformations are performed to provide the claimed computing results.
Claim 1 further recites:
generating, using the one or more computing device processors, based on the first computing result, the second computing result, and the third computing result, combinatorial network data;
formatting, using the one or more computing devise processors, the combinatorial network data, thereby resulting in formatted combinatorial network data;
The specification fails to describe how the first computing result, the second computing result, and the third computing result are transformed into combinatorial network data. The specification lacks the relationships amongst the data, the operations performed on the intermediate results and how the final result is arrived at. The generation of the formatted combinatorial network data is a critical part of the inventive concept because it is a sub-solution used as a basis to reach the network resolution data. One of ordinary skill in the art would need to understand how the inventor intended to achieve the formatted combinatorial network data to ultimately gain the benefits of the final solution3.
Claim 1 further recites:
generating or determining, using the one or more computing devise processors, based on the formatted combinatorial network data:
first source data associated with the first computing input,
second source data associated with the second computing input,
third source data associated with the third computing input,
sequence data showing an order of receipt of the first computing input, the second computing input, and the third computing input, and
impact data associated with a relationship among the first computing result, the second computing result, and the third computing result; and
The specification is silent on how the generation of the first source data, second source data, third source data, sequence data and impact data. When considering the generation of these data elements in combination with the previous computer operations and the generation of the intermediate “combinatorial network data”, the specification fails to provide sufficient details on how the inventor intended to arrive at the result of “first source data, second source data, third source data, sequence data, and impact data”. Similarly to the genus analysis above, the claim limitations are directed to a claimed genus that includes every manner of determining the recited data elements. The specification fails to disclose species of the generation of these elements. At best, the specification merely recites similar functional language as the original claims.
generating, using the one or more computing devise processors and based on the first source data, the second source data, the third source data, the sequence data, and the impact data, network resolution data.
The specification is silent on how these data elements are used to determine the network resolution data. A person of ordinary skill in the art would not understand what operations or steps are performed to achieve the network resolution data as claimed.
In summary, the specification fails to provide sufficient detail so that one of ordinary skill in the art would understand how the inventor intended to convert the computing inputs into network resolution data. The lack of detail provide to achieve the sub-solution steps fails to demonstrate how inventor achieves the claimed result. Thus, one of ordinary skill in the art cannot reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. Claim 1 is rejected for lack of written description.
Claim 16 is rejected under similar rationale as claim 1.
If applicant disagrees, applicant is invited to provide rationale explaining which operations/steps are performed to transform the computing inputs into the final result of network resolution data.
Claims 2-15 and 17-20 fail to cure deficiencies of claims 1 and 15, respectively, and are rejected under similar rationale.
Claim 5 recites linking a first event data and a second event data. The specification fails to provide sufficient details for how these events are linked.
Claim 11 recite:
determining one or more record links…
and establishing, based on the one or more record links, one or more electronic connections between the data elements….
The specification fails to provide sufficient details for how these links are determined.
Claim 18 recites
the combinatorial network data is generated by selectively merging or combining data elements comprised in the first computing result, the second computing result, and the third computing result; and
The claim limitations recite that the combinatorial network selectively merges or combines the data elements of the results. The specification is silent on the basis or manner in which the combination of the data elements formed. A person of ordinary skill in the would be able to determine the manner in which the inventor intended to perform the claim functionality.
generating the network resolution data comprises resolving, based on the first source data, the second source data, the third source data, the sequence data, and the impact data, one or more of the computing assessment data, the computing inquiry data, and the computing event data and thereby generate the network resolution data
The specification is silent on the basis or manner in which the network resolution is generated. A person of ordinary skill in the would not be able to determine the manner in which the inventor intended to perform the claim functionality.
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 enablement requirement. The claims 1-20 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.
MPEP 2161.01 III
To satisfy the enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without "undue experimentation."
The undue experimentation determination is not a single factual determination; rather, it is a conclusion reached by weighing all the factual considerations. Id.
All questions of enablement under 35 U.S.C. 112(a) are evaluated against the claimed subject matter with the focus of the examination inquiry being whether everything within the scope of the claim is enabled. Accordingly, examiners should determine what each claim recites and what subject matter is encompassed by the claim when the claim is considered as a whole and not analyze the claim elements individually.
When basing a rejection on the failure of the applicant’s disclosure to meet the enablement provisions of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, USPTO personnel must establish on the record a reasonable basis for questioning the adequacy of the disclosure to enable a person of ordinary skill in the art to make and use the claimed invention without resorting to undue experimentation. See In re Brown, 477 F.2d 946, 177 USPQ 691 (CCPA 1973); In re Ghiron, 442 F.2d 985, 169 USPQ 723 (CCPA 1971). Once USPTO personnel have advanced a reasonable basis for questioning the adequacy of the disclosure, it becomes incumbent on the applicant to rebut that challenge and factually demonstrate that the application disclosure is sufficient. See In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232 (CCPA 1973); In re Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 302 (CCPA 1974); In re Ghiron, supra; see also MPEP §§ 2164 - 2164.08(c).
When a claim is not limited to any particular structure for performing a recited function and does not invoke 35 U.S.C. 112(f), any claim language reciting the ability to perform a function per se would typically be construed broadly to cover any and all embodiments that perform the recited function. Because such a claim encompasses all devices or structures that perform the recited function, there is a concern regarding whether the applicant's disclosure sufficiently enables the full scope of protection sought by the claim. In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 229 (CCPA 1971); AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244, 68 USPQ2d 1280, 1287 (Fed. Cir. 2003); In re Moore, 439 F.2d 1232, 1236, 169 USPQ 236, 239 (CCPA 1971). Applicants who present broad claim language must ensure the claims are fully enabled. Specifically, the scope of the claims must be less than or equal to the scope of the enablement provided by the specification. Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999, 85 USPQ2d 1826, 1830 (Fed. Cir. 2008) ("The scope of the claims must be less than or equal to the scope of the enablement to ensure that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims." (quotation omitted)).
For example, the claims in Sitrick were directed to "integrating" or "substituting" a user’s audio signal or visual image into a pre-existing video game or movie. While the claims covered both video games and movies, the specification only taught the skilled artisan how to substitute and integrate user images into video games. The Federal Circuit held that the specification failed to enable the full scope of the claims because the skilled artisan could not substitute a user image for a preexisting character image in movies without undue experimentation. Specifically, the court recognized that one skilled in the art could not apply the teachings of the specification regarding video games to movies, because movies, unlike video games, do not have easily separable character functions. Because the specification did not teach how the substitution and integration of character functions for a user image would be accomplished in movies, the claims were not enabled. Sitrick, 516 F.3d at 999-1001, 85 USPQ2d at 1830-32.
In MagSil Corp. v. Hitachi Global Storage Techs., Inc. 687 F.3d 1377, 103 USPQ2d 1769 (Fed. Cir. 2012), the Federal Circuit stated that "a patentee chooses broad claim language at the peril of losing any claim that cannot be enabled across its full scope of coverage," finding "one skilled in the art could not have taken the disclosure in the specification regarding ‘change in the resistance by at least 10% at room temperature’ and achieved a change in resistance in the full scope of that term without undue experimentation." 687 F.3d at 1381-82, 103 USPQ2d at 1771. "Thus, the specification enabled a marginal advance over the prior art, but did not enable at the time of filing a tunnel junction of resistive changes reaching even up to 20%, let alone the more recent achievements above 600%." The court held that the "claims [were] invalid for lack of enablement because their broad scope [was] not reasonably supported by the scope of enablement in the specification." 687 F.3d at 1381-1382, 1384, 103 USPQ2d at 1771, 1772, 1774 ("MagSil did not fully enable its broad claim scope. Therefore, it cannot claim an exclusive right to exclude later tri-layer tunnel junctions that greatly exceed a 10% resistive change."). See also Convolve, Inc. v. Compaq Computer Corp., 527 Fed. App'x 910, 931 (Fed. Cir. 2013) (non-precedential), quoting MagSil Corp.)(affirming grant of summary judgment of invalidity due to lack of enablement where the patentee "[b]y choosing such broad claim language, ... put itself ‘at the peril of losing any claim that cannot be enabled across its full scope of coverage.’").
The specification need not teach what is well known in the art. However, applicant cannot rely on the knowledge of one skilled in the art to supply information that is required to enable the novel aspect of the claimed invention when the enabling knowledge is in fact not known in the art. ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935, 941, 94 USPQ2d 1823, 1827 (Fed. Cir. 2010) ("ALZA was required to provide an adequate enabling disclosure in the specification; it cannot simply rely on the knowledge of a person of ordinary skill to serve as a substitute for the missing information in the specification."); Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1283, 84 USPQ2d 1108, 1114-15 (Fed. Cir. 2007) ("Although the knowledge of one skilled in the art is indeed relevant, the novel aspect of an invention must be enabled in the patent."). The Federal Circuit has stated that "‘[i]t is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement.’" Auto. Technologies, 501 F.3d at 1283, 84 USPQ2d at 1115 (quoting Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366, 42 USPQ2d 1001, 1005 (Fed. Cir. 1997)). See also Idenix Pharms. LLC v. Gilead Scis. Inc., 941 F.3d 1149, 1159-61, 2019 USPQ 2d 415844 (Fed. Cir. 2019). The rule that a specification need not disclose what is well known in the art is "merely a rule of supplementation, not a substitute for a basic enabling disclosure." Genentech, 108 F.3d at 1366, 42 USPQ2d 1005; see also ALZA Corp., 603 F.3d at 940-41, 94 USPQ2d at 1827. Therefore, the specification must contain the information necessary to enable the novel aspects of the claimed invention. Id. at 941, 94 USPQ2d at 1827; Auto. Technologies, 501 F.3d at 1283-84, 84 USPQ2d at 1115 ("[T]he ‘omission of minor details does not cause a specification to fail to meet the enablement requirement. However, when there is no disclosure of any specific starting material or of any of the conditions under which a process can be carried out, undue experimentation is required.’") (quoting Genentech, 108 F.3d at 1366, 42 USPQ2d at 1005). For instance, in Auto. Technologies, the claim limitation "means responsive to the motion of said mass" was construed to include both mechanical side impact sensors and electronic side impact sensors for performing the function of initiating an occupant protection apparatus. Auto. Technologies, 501 F.3d at 1282, 84 USPQ2d at 1114. The specification did not include any discussion of the details or circuitry involved in the electronic side impact sensor and thus, failed to apprise one of ordinary skill how to make and use the electronic sensor. Because the novel aspect of the invention was side impact sensors, the patentee could not rely on the knowledge of one skilled in the art to supply the missing information. Auto. Technologies, 501 F.3d at 1283, 84 USPQ2d at 1114.
Not everything necessary to practice the invention need be disclosed. Trs. of Bos. Univ. v. Everlight Elecs. Co., LTD., 896 F.3d 1357, 1364, 127 USPQ2d 1609, 1614 (Fed. Cir. 2018) (explaining that while "the specification must enable the full scope of the claimed invention[,]" "[t]his is not to say that the specification must expressly spell out every possible iteration of every claim."). For instance, "‘a specification need not disclose what is well known in the art.’" Id. (quoting Genentech, Inc.v. Novo Nordisk A/S, 108 F.3d 1361, 1366, 42 USPQ2d 1001, 1005 (Fed. Cir. 1997)); see also AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1244, 68 USPQ2d 1280, 1287 (Fed. Cir. 2003). This is of particular importance with respect to computer-implemented inventions due to the high level of skill in the art and the similarly high level of predictability in generating programs to achieve an intended result without undue experimentation. See MPEP § 2164.08.
The Federal Circuit has repeatedly held that the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation. See Trs. of Bos. Univ., 896 F.3d at 1364 ("‘The scope of enablement . . . is that which is disclosed in the specification plus the scope of what would be known to one of ordinary skill in the art without undue experimentation.’" (quoting Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196, 49 USPQ2d 1671, 1676 (Fed. Cir. 1999))). For example, in Sitrick v. Dreamworks, LLC, 516 F.3d 993, 85 USPQ2d 1826 (Fed. Cir. 2008), the claims at issue were directed to "integrating" or "substituting" a user’s audio signal or visual image into a pre-existing video game or movie. Id. at 995-97. While the claims covered both video games and movies, the specification only taught the skilled artisan how to substitute and integrate user images into video games. Id. at 1000. The Federal Circuit held that the specification "did not enable the full scope of the asserted claims" because "one skilled in the art could not take the disclosure in the specification with respect to substitution or integration of user images in video games and substitute a user image for a pre- existing character image in movies without undue experimentation."
To evaluate whether the specification satisfies the enablement requirement of enable for claims 1and 16 the following Wands factors will be considered:
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.
Factor (A) The Breadth of the claims- Independent claims 1 and 16 recite:
In the present application, claim 1 recites:
routing, using the one or more computing device processors, at a first time, a first computing input to the first application based on computing assessment data or a first parameter comprised in the first computing input, the computing assessment data being different from the first parameter;
routing, using the one or more computing device processors, at a second time different from the first time, a second computing input to the second application based on computing inquiry data or a second parameter comprised in the second computing input, the computing inquiry data being different from the second parameter, the first parameter, and the computing assessment data;
routing, using the one or more computing device processors, at a third time different from both the first time and the second time, a third computing input to the third application based on computing event data or a third parameter comprised in the third computing input, the computing event data being different from the third parameter, the second parameter, the computing inquiry data, the first parameter, and the computing assessment data;
The scope of routing to each of the application encompasses routing data to its destination using any means or manner based on:
the contents of the computing input, or
a parameter
“executing, using the one or more computing device processors and the first application, based on the first computing input, a first computing operation and thereby generating the first computing result;
executing, using the one or more computing device processors and the second application, based on the second computing input, a second computing operation and thereby generating the second computing result;
executing, using the one or more computing device processors and the third application, based on the third computing input, a third computing operation and thereby generating the third computing result;”
The scope of these limitations include any type of computer application and any computing operation. It is unclear whether the computing inputs are altered after the computing operations.
generating, using the one or more computing device processors, based on the first computing result, the second computing result, and the third computing result, combinatorial network data;
formatting, using the one or more computing devise processors, the combinatorial network data, thereby resulting in formatted combinatorial network data;
The scope of these claim limitations include using the three computing results in any matter to generate a “combinatorial network data” and apply any formatting.
generating or determining, using the one or more computing devise processors, based on the formatted combinatorial network data:
first source data associated with the first computing input,
second source data associated with the second computing input,
third source data associated with the third computing input,
sequence data showing an order of receipt of the first computing input, the second computing input, and the third computing input, and
impact data associated with a relationship among the first computing result, the second computing result, and the third computing result; and
The claim limitations includes any possible manner, is applied to the “combinatorial network data” to generate the first source data, second source data, third source data, sequence data and impact data. The specification is silent on any of the steps taken within the generation process.
generating, using the one or more computing devise processors and based on the first source data, the second source data, the third source data, the sequence data, and the impact data, network resolution data.
The claim limitations recite any possible manner, is applied to the “the first source data, second source data, third source data, sequence data and impact data” to generate the network resolution data. The specification is silent on any of the steps taken within the generation process.
Factor (B) The nature of the invention- The invention is directed to a process of monitoring quality control deviations and generating network resolution data. From data events.
Factor (C) The state of the prior art- Baronov et al. U.S. Patent Application Publication 2025/0325237- discloses a method to detecting and diagnosing specific patient conditions by analyzing health data and identifying patterns.
Factor (D) The level of one of ordinary skill- A person of ordinary skill in the art would be one that has bachelor's degree in computer engineering, computer science, or electrical engineering.
Factor (E) The level of predictability in the art- The art networking is of the ordinary level of a computer related field.
(F) The amount of direction provided by the inventor- The inventor provides an overview of beneficial reasons to perform relationship identification amongst data elements within a secure computing network. The inventive concept is to generate network resolution data that provides a comprehensive, global, or holistic data used to inform a strategy for resolving a detected event or issue surrounding a configurable data object based on the computing assessment data, and/or the computing inquiry data, and/or the computing event data. However, the specification fails to provide a clear set of instructions on the transformation of computing inputs to the network resolution data.
The specification lacks the details for the each of sub-solution steps which prevents one of ordinary skill in the art from understanding how to make and use the claimed invention.
Factor (G) The existence of working examples- None known or uncovered in the prior art.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure- Applicant’s specification does not provide a clear set of steps to enable a person of ordinary skill in the art to perform the novel aspect of the claimed invention. The specifications fails to identify the conditions that are being applied to each of the intermediate sub-solutions during the conversion of computing input to network resolution data.
Upon considering the combination of the generation of computing results and the combinatorial results, the specification fails to provide sufficient details of the intermediate steps to yield a “first source data, second source data, third source data, sequence data, and impact data”. The specification lacks the conditions applied to “the contents of the computing input” or “parameter” to determine when and how the inputs should be routed.
In conclusion of the evaluation of the Wands factors, Examiner finds the specifications fails to enable a person of ordinary skill in the art to practice the claimed invention without undue experimentation.
Claims 1 and 16 are rejected for lack of enablement.
Claims 2-15 and 17-20 fail to cure the deficiencies of claims 1 and 16, respectively, and are rejected under the same rationale.
Prior art rejections have not been applied because the claims fail to clearly articulate how the claimed invention is performed. Examiner suggests Applicant schedule an interview to facilitate a discussion towards remedying the 35 USC 112 issues.
Examiner’s Note: Scheduling an Interview is recommended to resolve the 35 USC 112 issues and expedite prosecution.
Conclusion
Related Prior Art:
Galvin U.S. Patent Application publication 2025/0363092- discloses a method of real-time monitoring of performance metrics to enhance selected compression.
Werth et al. U.S. Patent Application publication 2011/0022653 – discloses a method to route work request based on technical data sources.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH M COUSINS whose telephone number is (571)270-7746. The examiner can normally be reached 9:00am -5:00pm EST.
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/JMC/Examiner, Art Unit 2459
/TONIA L DOLLINGER/Supervisory Patent Examiner, Art Unit 2459
1 Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002) (holding that generic claim language appearing in ipsis verbis in the original specification did not satisfy the written description requirement because it failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d 1164, 1170, 25 USPQ2d 1601, 1606 (Fed. Cir. 1993) (rejecting the argument that "only similar language in the specification or original claims is necessary to satisfy the written description requirement").
2 Fiers v. Revel, 984 F.2d 1164, 1170, 25 USPQ2d 1601, 1606 (Fed. Cir. 1993) (rejecting the argument that "only similar language in the specification or original claims is necessary to satisfy the written description requirement").
3 Specification 0071- In particular, the network resolution data beneficially provides a digital representation or construct (e.g., report, a file, or a document) indicating strategies that holistically "look at" the configurable data object from the perspective of output data generated from one or more applications of the secure storage network 100 to determine effective strategies for resolving issues surrounding the configurable data object.