DETAILED ACTION
This Office Action is in response to an application filed on September 11, 2024, in which claims 1 through 13 are pending, and ready for examination.
Acknowledgement is made of Applicant’s claim for benefit as a 371 National Stage Application of PCT/EP2023/055734, filed on March 7, 2023.
Acknowledgement is made of Applicant’s preliminary amendment filed on September 11, 2024.
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 .
Priority
Acknowledgement is made of applicant’s claim for foreign priority based on an application filed in the European Patent Office, on or about March 14, 2022.
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites, “during each power cycle where data stored in the…”.
It appears that the claim(s) should recite a term other than “where”, which is a term that describes location. For example the claim(s) could recite, “during each power cycle in which data stored in the…”, or something to this effect.
It is further noted that use of the term “where” in this manner also appears in certain dependent claims.
Appropriate correction is required.
Claim 1 recites, “if a transaction is still pending, preventing…”.
This specific use of the term “if” renders that claim limitation as optional claim language, and thus does not serve to distinguish the claim from the prior art. That is, the claim only requires “checking if a transaction is still pending” (as recited in the previous limitation), but the later function of “preventing to use the data stored” is optional.
It is further noted that use of the term “if” in this manner also appears in certain dependent claims.
Appropriate correction is required.
Claim 1 recites, “preventing to use the data stored…”.
The foregoing appears to contain a grammatical error; it appears that the claim(s) should recite, “preventing use of the data stored…”.
Appropriate correction is required.
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: “system has means to carry out the steps of the method [according to claim 1]”, in claim 12.
Because 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, they 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 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 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 them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 1-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites, “the data within the power cycle”.
There is insufficient antecedent basis for this element in the claim(s).
Claims 2-13 are each dependent from claim 1, fail to remedy the aforesaid indefiniteness of claim 1, and are therefore rejected under the same rationale as claim 1, based upon the dependency.
Claim 12 recites, “the secure processing sub-system”.
For foregoing recitation renders the claim indefinite because both claim 12, and claim 1 (from which claim 12 depends), recite “a secure processing sub-system”, and thus it is unclear to which of the previous recitations of that element the limitation in question refers.
Claim 12 recites, “the system”.
For foregoing recitation renders the claim indefinite because both claim 12, and claim 1 (from which claim 12 depends), recite “a system”, and thus it is unclear to which of the previous recitations of that element the limitation in question refers.
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 13 is rejected as the claimed invention is directed to non-statutory subject matter.
Claim 13 is directed to a “computer program [comprising instructions]”.
The broadest and reasonable interpretation of the claimed computer program is/are a data structure, or software per se. A claim that recites no more than software, logic, or a data structure (i.e., an abstraction) does not fall within any statutory category. In re Warmerdam, 33 F.3d 1354,1361 (Fed. Cir. 1994). Significantly, "[a]bstract software code is an idea without physical embodiment." Microsoft Corp. v. AT& T Corp., 550 U.S. 437, 449 (2007). Manipulation of data utilizing a computer program (software), no matter its function, is nothing more than the representation of an algorithm or group of algorithms, conceptually no different from a list of steps written down with pencil and paper for execution by a human being. See In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). The subject matter of claims permitted within 35 U.S.C. 101 must be a machine, a manufacture, a process, or a composition of matter. "[T]he four categories [of §101] together describe the exclusive reach of patentable subject matter. If the claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of §101 even if the subject matter is otherwise new and useful." In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007); accord In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009).
Conclusion
MPEP §2143.03 states, in relevant part:
A claim limitation which is considered indefinite cannot be disregarded. If a claim is subject to more than one interpretation, at least one of which would render the claim unpatentable over the prior art, the examiner should reject the claim as indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph (see MPEP §706.03(d)) and should reject the claim over the prior art based on the interpretation of the claim that renders the prior art applicable. Ex parte Ionescu, 222 USPQ 537 (Bd. Pat. App. & Inter. 1984) (Claims on appeal were rejected on indefiniteness grounds only; the rejection was reversed and the case remanded to the examiner for consideration of pertinent prior art.). Compare In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970) (if no reasonably definite meaning can be ascribed to certain claim language, the claim is indefinite, not obvious) and In re Steele, 305 F.2d 859,134 USPQ 292 (CCPA 1962) (it is improper to rely on speculative assumptions regarding the meaning of a claim and then base a rejection under 35 U.S.C. 103 on these assumptions) (emphasis added).
MPEP §2176.06 states, in relevant part:
All words in a claim must be considered in judging the patentability of a claim against the prior art. In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970). The fact that terms may be indefinite does not make the claim obvious over the prior art. When the terms of a claim are considered to be indefinite, at least two approaches to the examination of an indefinite claim relative to the prior art are possible… where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
It is noted that in view of the issue(s) of indefiniteness set forth above, and in light of the precedence set forth in In re Steele, 305 F.2d 859, 862 (CCPA 1962) and In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970), no prior art or double patenting rejections have been set forth herein. However, any claim not explicitly rejected herein under applicable prior art or double patenting titles does not necessarily ascribe allowable subject matter.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to J. Brant Murphy whose telephone number is (571)272-6433. The examiner can normally be reached Monday - Friday, 8am - 4pm.
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/J. BRANT MURPHY/Primary Examiner, Art Unit 2435
December 4, 2025
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