DETAILED ACTION
Acknowledgements
This Office Action is in reply to Applicant’s response filed 10 July 2026.
Claims 1, 13, 17, and 21–37 are currently pending and have been examined.
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 .
Information Disclosure Statement
The Information Disclosure Statement(s) filed on 22 June 2026 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Broadest Reasonable Interpretation (BRI)
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111, MPEP § 2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01 I. Moreover, it is improper to import claim limitations from the specification, e.g., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01 II. Therefore, unless otherwise noted below, the Examiner will interpret the limitations of the pending claims using the broadest reasonable interpretation.
After careful review of the original specification, the Examiner finds he cannot locate any lexicographic definitions (either express lexicographic definitions or implied lexicographic definitions) with the required clarity, deliberateness, and precision. Because the Examiner cannot locate any lexicographic definitions with the required clarity, deliberateness, and precision, the Examiner concludes that Applicant is not his own lexicographer. See MPEP § 2111.01 IV.
The Examiner hereby adopts the following interpretations under the broadest reasonable interpretation standard. In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), the Examiner points to these other sources to support his interpretation of the claims.1 Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language. Finally, the following list is not intended to be exhaustive in any way:
instruction “(4) a statement or expression consisting of an operation and its operands (if any), which can be interpreted by a computer in order to perform some function or operation.” The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, 2000.
machine learning (n.) “(Computer Science) a branch of artificial intelligence in which a computer generates rules underlying or based on raw data that has been fed into it.” Collins English Dictionary – Complete and Unabridged (12th Ed. 2014).
model (n.) “A mathematical or graphical representation of a real-world situation or object—for example, a mathematical model of the distribution of matter in the universe, a spreadsheet (numeric) model of business operations, or a graphical model of a molecule. Models can generally be changed or manipulated so that their creators can see how the real version might be affected by modifications or varying conditions.” Microsoft Computer Dictionary (3rd Ed. 2002).
machine learning model “A machine learning model is an intelligent file that has been conditioned with an algorithm to learn specific patterns in datasets and give insights and predictions from those patterns. When creating an ML model, you define the answer that you would like to capture and set parameters for the model to work within and learn from. Once an ML model begins working with new data, you can gain actionable insights. They are also used for broad ranges of data with no known target—with the ability to utilize a pattern, they can address randomized data and still pull insights from it.” See Document U cited on attached PTOL-892 entitled “ML Model.”
machine learning model “Much like a workload is the sum of an application and its data, a machine learning model is (fundamentally) an algorithm trained by a great deal of data to recognize specific patterns, solve problems, or make predictions based on its findings. In other words, ML models can generate outputs based on previously unseen data sets. For example, natural language processing (NLP) is a subset of machine learning that can recognize the intent behind sentences and word combinations. This capability is instrumental in the development of large language models (LLMs), a branch of ML that can actually generate and predict new content. The final deployment of an ML model—usually in the form of a program; sometimes like a typical app with a user interface (UI), sometimes embedded into devices—may include additional rules and data structures. But the model’s core elements are its algorithm, the data it was trained on, and the data it ingests while in active deployment. It gradually learns on its own as more and more data passes through it and, as a result, can improve its performance as time goes by. ML models are used in numerous industries but have also found popular appeal through consumer-facing generative AI applications like DALL-E and ChatGPT.” See Document V cited on attached PTOL-892 entitled “Machine learning models.”
Claim Interpretation Under 35 USC § 112(f)
The following is a quotation of 35 USC § 112(f):
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.
“Application of 35 U.S.C. 112(f) is driven by the claim language, not by applicant’s intent or mere statements to the contrary included in the specification or made during prosecution. See In re Donaldson Co., 16 F.3d at 1194, 29 USPQ2d at 1850 (stating that 35 U.S.C. 112, sixth paragraph ‘merely sets a limit on how broadly the PTO may construe means-plus-function language under the rubric of reasonable interpretation’).” MPEP § 2181 I.
“A claim limitation is presumed to invoke 35 U.S.C. 112(f) when it explicitly uses the term ‘means’ or ‘step’ and includes functional language. The presumption that 35 U.S.C. 112(f) applies is overcome when the limitation further includes the structure, material or acts necessary to perform the recited function.” MPEP § 2181 I.
“By contrast, a claim limitation that does not use the term ‘means’ or ‘step’ will trigger the rebuttable presumption that 35 U.S.C. 112(f) does not apply. […]. Even in the face of this presumption, the examiner should nonetheless consider whether the presumption is overcome. The presumption that 35 U.S.C. 112(f) does not apply to a claim limitation that does not use the term ‘means’ is overcome when ‘the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.’ Williamson[ v. Citrix Online, LLC], 792 F.3d [1339,] 1349[…] (Fed. Cir. 2015) (en banc) (quoting Watts v. XL Systems, Inc., 232 F.3d 877, 880, 56 USPQ2d 1836, 1838 (Fed. Cir. 2000).” MPEP § 2181 I. (internal quotations of Williamson removed).
However, “section 112, ¶ 6, […] with respect to steps, […] is implicated only when steps plus function without acts are present. […] claiming a step by itself, or even a series of steps, does not implicate section 112, ¶ 6.” O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir. 1997) (emphasis in original).
In other words, “[m]erely claiming a step without recital of a function is not analogous to a means plus a function.” O.I. Corp. v. Tekmar Co., id. (emphasis added).
Accordingly, examiners will apply 35 U.S.C. 112(f) to a claim limitation if it meets the following 3-prong analysis:
(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.
MPEP § 2181 I.
“Each claim must be independently reviewed in order to determine if it is subject to the requirements of section 112, ¶ 6.” O.I. Corp. v. Tekmar Co., id.
In view of the above MPEP and Federal Circuit guidance, the Examiner has evaluated each claim under the 3-Prong Analysis set forth in MPEP § 2181 I. to determine whether any of the claim elements are subject to the requirements of § 112(f). In the sections that follow, the Examiner will identify each claim limitation that is subject to the requirements of § 112(f).
Functional Phrase #1 or FP#1
The first functional phrase to be considered is “machine learning (ML) model to simulate wind in real time as a racing simulation transpires, the wind simulated in real time based on one or more variable inputs associated with the racing simulation.” Claim 1 (“Functional Phrase #1” or “FP#1”).
For purpose of discussion below, FP#1 is broken into the following three parts:
(1) “machine learning (ML) model” (“Introductory Phrase of FP#1);
(2) “to” (“Linking Phrase of FP#1); and
(3) “simulate wind in real time as a racing simulation transpires, the wind simulated in real time based on one or more variable inputs associated with the racing simulation” (“Function of FP#1”).
Prong (A)
In accordance with the MPEP, Prong (A) requires “the claim limitation uses the term ‘means’ […] or a term used as a substitute for ‘means’ that is a generic placeholder […] for performing the claimed function.”2 MPEP § 2181 I. (“Prong (A)”).3
As an initial matter, the Examiner finds that FP#1 does not use the term “means.” Therefore, the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112(f) is not invoked can be overcome. “Even in the face of this presumption, the examiner should nonetheless consider whether the presumption is overcome.” MPEP § 2181 I.
With respect to the presumption that 35 USC § 112(f) is not invoked, “[t]he question is not whether a claim term recites any structure but whether it recites sufficient structure—a claim term is subject to § 112 ¶ 6 if it recites ‘function without reciting sufficient structure for performing that function.’ Williamson, 792 F.3d at 1348 (emphasis added) (quoting Watts, 232 F.3d at 880). [Emphasis in original.]” Egenera, Inc. v. Cisco Systems, Inc., 972 F.3d 1367, 1374 (Fed. Cir. 2020).
“And, again, the question is not whether [the claim term] is utterly devoid of structure but whether the claim term recites sufficient structure to perform the claimed functions.” Egenera at 1374 (emphasis added).
To help understand the meaning of “sufficient structure,” the MPEP and the Federal Circuit have stated that:
Sufficient structure exists when the claim language specifies the exact structure that performs the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.
See MPEP § 2181 I. quoting TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008).
Moreover, in assessing whether or not FP#1 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#1 in isolation, but the entire FP#1 including the Function of FP#1. See MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1342 (Fed. Cir. 2019) (“In assessing whether the claim limitation is in means-plus-function format, we do not merely consider the introductory phrase (e.g., ‘mechanical control assembly’) in isolation, but look to the entire passage including functions performed by the introductory phrase.”).
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#1 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#1. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#1, the Examiner finds that the claim language itself within FP#1 does not recite an algorithm for accomplishing the Function of FP#1. The Examiner also finds that the remainder of claim 1 also does not recite an algorithm for accomplishing the Function of FP#1. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#1 is not expressly recited in claim 1.
Furthermore, the Examiner has looked to both general and subject matter specific dictionaries4 and finds no evidence that the Introductory Phrase of FP#1, i.e., the term “machine learning (ML) model,” has achieved recognition as a term denoting structure for performing the Function of FP#1.
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “machine learning (ML) model” has achieved recognition as denoting structure for performing the Function of FP#1.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “machine learning (ML) model” is not an art-recognized structure to perform the Function of FP#1, and claim 1 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “machine learning (ML) model” is not an art-recognized structure to perform the Function of FP#1, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#1 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#1 does not include sufficient structure for performing the Function of FP#1. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “machine learning (ML) model” is a generic placeholder for performing the Function of FP#1, and therefore FP#1 meets Prong (A).
Prong (B)
In accordance with the MPEP, Prong (B) requires “the term ‘means’ […] or the generic placeholder is modified by functional language, typically, but not always linked by the transition word ‘for’ […] or another linking word or phrase, such as ‘configured to’ or ‘so that.’” MPEP § 2181 I. (“Prong (B)”).
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#1 (generic placeholder) is modified by the Function of FP#1 (functional language) linked by the Linking Phrase of FP#1. Therefore, the Examiner concludes that FP#1 meets Prong (B).
Prong (C)
In accordance with the MPEP, Prong (C) requires “the term ‘means’ […] or the generic placeholder is not modified by sufficient structure […] for performing the claimed function.” MPEP § 2181 I. (“Prong (C)”).
Based upon a review of FP#1, and for reasons already discussed above, the Examiner finds that FP#1 does not contain sufficient structure for performing the entire Function of FP#1. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#1 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#1 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#1.
Because FP#1 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#1 meets Prong (C). Because FP#1 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#1 invokes § 112(f).
Corresponding Structure for FP#1
“The next step in construing a means-plus-function claim limitation is to look to the specification and identify the corresponding structure for that function.” In re Aoyama, 656 F3d 1293, 1297 (Fed. Cir. 2011) quoting Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir. 2004). “Under this second step, structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Aoyama, 656 F3d at 1297 quoting Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003).
Furthermore, if the claimed phase is meant to cover software, “[i]t is well-established that the corresponding structure for a function performed by a software algorithm is the algorithm itself.” EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 621 (Fed. Cir. 2015). In other words, “[i]f special programming is required for a general-purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies.” Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012).
Based upon a review of Applicant’s original disclosure, the Examiner is unable to locate sufficient corresponding structure (e.g., a particular algorithm) that is clearly linked or associated with the Function of FP#1.
For example, Figure 5 shows a flow chart. Figure 5 is reproduced below.
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As shown in Figure 5, blocks 500, 540, and 550 appear to be linked or associated with the Function of FP#1. However, neither of these blocks, alone or in combination, are an algorithm or show an algorithm for achieving the Function of FP#1 (i.e., “simulate wind in real time as a racing simulation transpires, the wind simulated in real time based on one or more variable inputs associated with the racing simulation”).
Applicant’s specification discloses “Beginning at block 500, the device may facilitate (e.g., execute) a virtual racing simulation where a person/end-user races a first virtual race care (more generally, first simulation vehicle) against other virtual race cars on a virtual race track.” Specification at p. 22. Applicant’s specification further discloses “Then at block 540 the device may execute the model to receive the one or more variable inputs at the model and to generate, based on the one or more variable inputs (including the vehicle profile data), an inference indicating wind to simulate.” Specification at p. 23. Moreover, Applicant’s specification discloses “Additionally or alternatively, at block 550 the system may use an inference from the model to simulate wind virtually in the racing simulation based on the one or more variable inputs.” Specification at p. 24.
While the above disclosure mentions that a device may facilitate a virtual racing simulation and that a model receives one or more inputs to generate an inference indicating wind to simulate, this disclosure is not an algorithm for achieving the Function of FP#1 (i.e., “simulate wind in real time as a racing simulation transpires, the wind simulated in real time based on one or more variable inputs associated with the racing simulation”).
Because the original disclosure fails to clearly link or associate the Function of FP#1 to sufficient corresponding structure (e.g., an algorithm), claim 1 is indefinite under 35 USC § 112(b). A rejection under 35 USC § 112(b) is set forth below for claim 1.
Functional Phrase #2 or FP#2
The second functional phrase to be considered is “machine learning (ML) model to output one or more wind vectors to control one or more fans to direct air toward a user.” Claims 13 and 17 (“Functional Phrase #2” or “FP#2”).
For purpose of discussion below, FP#2 is broken into the following three parts:
(1) “machine learning (ML) model” (“Introductory Phrase of FP#2);
(2) “to” (“Linking Phrase of FP#2); and
(3) “output one or more wind vectors to control one or more fans to direct air toward a user” (“Function of FP#2”).
Prong (A)
As an initial matter, the Examiner finds that FP#2 does not use the term “means.” Therefore, the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112(f) is not invoked can be overcome.
Moreover, in assessing whether or not FP#2 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#2, but the entire FP#2 including the Function of FP#2.
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#2 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#2. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#2, the Examiner finds that the claim language itself within FP#2 does not recite an algorithm for accomplishing the Function of FP#2. The Examiner also finds that the remainder of each of claims 13 and 17 also does not recite an algorithm for accomplishing the Function of FP#2. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#2 is not expressly recited in each of claims 13 and 17.
Similar to the above analysis of FP#1, the Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “machine learning (ML) model” has achieved recognition as a term denoting structure to perform the Function of FP#2.
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “machine learning (ML) model” has achieved recognition as denoting structure to perform the Function of FP#2.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “machine learning (ML) model” is not an art-recognized structure to perform the Function of FP#2, and each of claims 13 and 17 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “machine learning (ML) model” is not an art-recognized structure to perform the Function of FP#2, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#2 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#2 does not include sufficient structure for performing the Function of FP#2. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “machine learning (ML) model” is a generic placeholder for performing the Function of FP#2, and therefore FP#2 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#2 (generic placeholder) is modified by the Function of FP#2 (functional language) linked by the Linking Phrase of FP#2. Therefore, the Examiner concludes that FP#2 meets Prong (B).
Prong (C)
Based upon a review of FP#2, and for reasons already discussed above, the Examiner finds that FP#2 does not contain sufficient structure for performing the entire Function of FP#2. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#2 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#2 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#2.
Because FP#2 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#2 meets Prong (C). Because FP#2 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#2 invokes § 112(f).
Corresponding Structure for FP#2
Based upon a review of Applicant’s original disclosure, the Examiner is unable to locate sufficient corresponding structure (e.g., a particular algorithm) that is clearly linked or associated with the Function of FP#2.
For example, Applicant’s specification discloses “The ML model 910 may then analyze the data 920 to provide an output 940 of dynamic real-world and/or virtual wind vectors to apply as part of the racing simulation (based on whatever variable inputs were provided by the simulation engine 930).” Specification at p. 29.
While the above disclosure mentions that an ML model analyzes data to provide output of real-world and/or virtual vectors, this disclosure is not an algorithm for achieving the Function of FP#2 (i.e., “output one or more wind vectors to control one or more fans to direct air toward a user”).
Because the original disclosure fails to clearly link or associate the Function of FP#2 to sufficient corresponding structure (e.g., an algorithm), each of claims 13 and 17 is indefinite under 35 USC § 112(b). A rejection under 35 USC § 112(b) is set forth below for each of claims 13 and 17.
Functional Phrase #3 or FP#3
The third functional phrase to be considered is “ML model trained via multi-modal data to identify patterns between inputs and corresponding wind forces exerted on real-life vehicles in real-life driving situations.” Claims 13 and 17 (“Functional Phrase #3” or “FP#3”).
For purpose of discussion below, FP#3 is broken into the following three parts:
(1) “ML model” (“Introductory Phrase of FP#3);
(2) “trained via multi-modal data to” (“Linking Phrase of FP#3); and
(3) “identify patterns between inputs and corresponding wind forces exerted on real-life vehicles in real-life driving situations” (“Function of FP#3”).
Prong (A)
As an initial matter, the Examiner finds that FP#3 does not use the term “means.” Therefore, the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112(f) is not invoked can be overcome.
Moreover, in assessing whether or not FP#3 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#3, but the entire FP#3 including the Function of FP#3.
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#3 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#3. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#3, the Examiner finds that the claim language itself within FP#3 does not recite an algorithm for accomplishing the Function of FP#3. The Examiner also finds that the remainder of each of claims 13 and 17 also does not recite an algorithm for accomplishing the Function of FP#3. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#3 is not expressly recited in each of claims 13 and 17.
Similar to the above analysis of FP#1, the Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “ML model” has achieved recognition as a term denoting structure to perform the Function of FP#3.
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “ML model” has achieved recognition as denoting structure to perform the Function of FP#3.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “ML model” is not an art-recognized structure to perform the Function of FP#3, and each of claims 13 and 17 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “ML model” is not an art-recognized structure to perform the Function of FP#3, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#3 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#3 does not include sufficient structure for performing the Function of FP#3. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “ML model” is a generic placeholder for performing the Function of FP#3, and therefore FP#3 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#3 (generic placeholder) is modified by the Function of FP#3 (functional language) linked by the Linking Phrase of FP#3. Therefore, the Examiner concludes that FP#3 meets Prong (B).
Prong (C)
Based upon a review of FP#3, and for reasons already discussed above, the Examiner finds that FP#3 does not contain sufficient structure for performing the entire Function of FP#3. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#3 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#3 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#3.
Because FP#3 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#3 meets Prong (C). Because FP#3 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#3 invokes § 112(f).
Corresponding Structure for FP#3
Based upon a review of Applicant’s original disclosure, the Examiner is unable to locate sufficient corresponding structure (e.g., a particular algorithm) that is clearly linked or associated with the Function of FP#3.
For example, Applicant’s specification discloses “Machine learning models may be trained to analyze this multi-modal data to then identify intricate patterns and relationships between the various inputs and the corresponding wind forces exerted on the real-life vehicles in the real-life driving situations.” Specification at pp. 27–28 (emphasis added).
While the above disclosure mentions that an ML model may be trained to identify intricate patterns, this disclosure is not an algorithm for achieving the Function of FP#3 (i.e., “identify patterns between inputs and corresponding wind forces exerted on real-life vehicles in real-life driving situations”).
Because the original disclosure fails to clearly link or associate the Function of FP#3 to sufficient corresponding structure (e.g., an algorithm), each of claims 13 and 17 is indefinite under 35 USC § 112(b). A rejection under 35 USC § 112(b) is set forth below for each of claims 13 and 17.
Functional Phrase #4 or FP#4
The fourth functional phrase to be considered is “instructions executable by a processor system to: […] based on the one or more wind vectors output by the ML model, control the one or more fans to direct air toward the user to simulate first wind in real time as a racing simulation transpires.” Claim 17 (“Functional Phrase #4” or “FP#4”).
For purpose of discussion below, FP#4 is broken into the following three parts:
(1) “instructions executable by a processor system” (“Introductory Phrase of FP#4);
(2) “to” (“Linking Phrase of FP#4); and
(3) “based on the one or more wind vectors output by the ML model, control the one or more fans to direct air toward the user to simulate first wind in real time as a racing simulation transpires” (“Function of FP#4”).
Prong (A)
As an initial matter, the Examiner finds that FP#4 does not use the term “means.” Therefore, the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112(f) is not invoked can be overcome.
Moreover, in assessing whether or not FP#4 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#4, but the entire FP#4 including the Function of FP#4.
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#4 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#4. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#4, the Examiner finds that the claim language itself within FP#4 does not recite an algorithm for accomplishing the Function of FP#4. The Examiner also finds that the remainder of claim 17 also does not recite an algorithm for accomplishing the Function of FP#4. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#4 is not expressly recited in claim 17.
Similar to the above analysis of FP#1, the Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “instructions executable by a processor system” has achieved recognition as a term denoting structure to perform the Function of FP#4.
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “instructions executable by a processor system” has achieved recognition as denoting structure to perform the Function of FP#4.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “instructions executable by a processor system” is not an art-recognized structure to perform the Function of FP#4, and claim 17 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “instructions executable by a processor system” is not an art-recognized structure to perform the Function of FP#4, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#4 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#4 does not include sufficient structure for performing the Function of FP#4. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “instructions executable by a processor system” is a generic placeholder for performing the Function of FP#4, and therefore FP#4 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#4 (generic placeholder) is modified by the Function of FP#4 (functional language) linked by the Linking Phrase of FP#4. Therefore, the Examiner concludes that FP#4 meets Prong (B).
Prong (C)
Based upon a review of FP#4, and for reasons already discussed above, the Examiner finds that FP#4 does not contain sufficient structure for performing the entire Function of FP#4. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#4 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#4 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#4.
Because FP#4 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#4 meets Prong (C). Because FP#4 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#4 invokes § 112(f).
Corresponding Structure for FP#4
Based upon a review of Applicant’s original disclosure, the Examiner is unable to locate sufficient corresponding structure (e.g., a particular algorithm) that is clearly linked or associated with the Function of FP#4.
For example, Applicant’s specification discloses “Thus, the vectors may be used to control real-world fans via one or more fan application programming interfaces (APIs) 950 to direct air toward the user at real-world angles that correspond to virtual angles at which virtual wind impinges on the user's vehicle in the simulation itself.” Specification at p. 29.
While the above disclosure mentions that control of real-world fans is via one or more fan APIs, this disclosure is not an algorithm for achieving the Function of FP#4 (i.e., “based on the one or more wind vectors output by the ML model, control the one or more fans to direct air toward the user to simulate first wind in real time as a racing simulation transpires”).
Because the original disclosure fails to clearly link or associate the Function of FP#4 to sufficient corresponding structure (e.g., an algorithm), claim 17 is indefinite under 35 USC § 112(b). A rejection under 35 USC § 112(b) is set forth below for claim 17.
Functional Phrase #5 or FP#5
The fifth functional phrase to be considered is “ML model to output wind vectors.” Claim 23 (“Functional Phrase #5” or “FP#5”).
For purpose of discussion below, FP#5 is broken into the following three parts:
(1) “ML model” (“Introductory Phrase of FP#5);
(2) “to” (“Linking Phrase of FP#5); and
(3) “output wind vectors” (“Function of FP#5”).
Prong (A)
As an initial matter, the Examiner finds that FP#5 does not use the term “means.” Therefore, the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112(f) is not invoked can be overcome.
Moreover, in assessing whether or not FP#5 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#5, but the entire FP#5 including the Function of FP#5.
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#5 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#5. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#5, the Examiner finds that the claim language itself within FP#5 does not recite an algorithm for accomplishing the Function of FP#5. The Examiner also finds that the remainder of claim 23 also does not recite an algorithm for accomplishing the Function of FP#5. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#5 is not expressly recited in claim 23.
Similar to the above analysis of FP#1, the Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “ML model” has achieved recognition as a term denoting structure to perform the Function of FP#5.
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “ML model” has achieved recognition as denoting structure to perform the Function of FP#5.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “ML model” is not an art-recognized structure to perform the Function of FP#5, and claim 23 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “ML model” is not an art-recognized structure to perform the Function of FP#5, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#5 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#5 does not include sufficient structure for performing the Function of FP#5. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “ML model” is a generic placeholder for performing the Function of FP#5, and therefore FP#5 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#5 (generic placeholder) is modified by the Function of FP#5 (functional language) linked by the Linking Phrase of FP#5. Therefore, the Examiner concludes that FP#5 meets Prong (B).
Prong (C)
Based upon a review of FP#5, and for reasons already discussed above, the Examiner finds that FP#5 does not contain sufficient structure for performing the entire Function of FP#5. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#5 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#5 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#5.
Because FP#5 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#5 meets Prong (C). Because FP#5 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#5 invokes § 112(f).
Corresponding Structure for FP#5
Based upon a review of Applicant’s original disclosure, the Examiner is unable to locate sufficient corresponding structure (e.g., a particular algorithm) that is clearly linked or associated with the Function of FP#5.
For example, Applicant’s specification discloses “The ML model 910 may then analyze the data 920 to provide an output 940 of dynamic real-world and/or virtual wind vectors to apply as part of the racing simulation (based on whatever variable inputs were provided by the simulation engine 930).” Specification at p. 29.
While the above disclosure mentions that an ML model analyzes data to provide output of real-world and/or virtual vectors, this disclosure is not an algorithm for achieving the Function of FP#5 (i.e., “output wind vectors”).
Because the original disclosure fails to clearly link or associate the Function of FP#5 to sufficient corresponding structure (e.g., an algorithm), claim 23 is indefinite under 35 USC § 112(b). A rejection under 35 USC § 112(b) is set forth below for claim 23.
Functional Phrase #6 or FP#6
The sixth functional phrase to be considered is “instructions are executable to: […] use the wind vectors to control the one or more real-world fans to direct air toward a user.” Claim 23 (“Functional Phrase #6” or “FP#6”).
For purpose of discussion below, FP#6 is broken into the following three parts:
(1) “instructions are executable” (“Introductory Phrase of FP#6);
(2) “to” (“Linking Phrase of FP#6); and
(3) “use the wind vectors to control the one or more real-world fans to direct air toward a user” (“Function of FP#6”).
Prong (A)
As an initial matter, the Examiner finds that FP#6 does not use the term “means.” Therefore, the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112(f) is not invoked can be overcome.
Moreover, in assessing whether or not FP#6 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#6, but the entire FP#6 including the Function of FP#6.
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#6 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#6. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#6, the Examiner finds that the claim language itself within FP#6 does not recite an algorithm for accomplishing the Function of FP#6. The Examiner also finds that the remainder of claim 23 also does not recite an algorithm for accomplishing the Function of FP#6. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#6 is not expressly recited in claim 23.
Similar to the above analysis of FP#1, the Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “instructions are executable” has achieved recognition as a term denoting structure to perform the Function of FP#6.
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “instructions are executable” has achieved recognition as denoting structure to perform the Function of FP#6.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “instructions are executable” is not an art-recognized structure to perform the Function of FP#6, and claim 23 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “instructions are executable” is not an art-recognized structure to perform the Function of FP#6, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#6 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#6 does not include sufficient structure for performing the Function of FP#6. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “instructions are executable” is a generic placeholder for performing the Function of FP#6, and therefore FP#6 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#6 (generic placeholder) is modified by the Function of FP#6 (functional language) linked by the Linking Phrase of FP#6. Therefore, the Examiner concludes that FP#6 meets Prong (B).
Prong (C)
Based upon a review of FP#6, and for reasons already discussed above, the Examiner finds that FP#6 does not contain sufficient structure for performing the entire Function of FP#6. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#6 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#6 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#6.
Because FP#6 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#6 meets Prong (C). Because FP#6 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#6 invokes § 112(f).
Corresponding Structure for FP#6
Based upon a review of Applicant’s original disclosure, the Examiner is unable to locate sufficient corresponding structure (e.g., a particular algorithm) that is clearly linked or associated with the Function of FP#6.
For example, Applicant’s specification discloses “Thus, the vectors may be used to control real-world fans via one or more fan application programming interfaces (APIs) 950 to direct air toward the user at real-world angles that correspond to virtual angles at which virtual wind impinges on the user's vehicle in the simulation itself.” Specification at p. 29.
While the above disclosure mentions that control of real-world fans is via one or more fan APIs, this disclosure is not an algorithm for achieving the Function of FP#6 (i.e., “use the wind vectors to control the one or more real-world fans to direct air toward a user”).
Because the original disclosure fails to clearly link or associate the Function of FP#6 to sufficient corresponding structure (e.g., an algorithm), claim 23 is indefinite under 35 USC § 112(b). A rejection under 35 USC § 112(b) is set forth below for claim 23.
Functional Phrase #7 or FP#7
The seventh functional phrase to be considered is “instructions are executable to: […] use the wind vectors to control the one or more real-world fans via the one or more APIs to direct air toward the user at real-world angles that correspond to virtual angles at which virtual wind impinges on the user’s vehicle in the racing simulation.” Claim 25 (“Functional Phrase #7” or “FP#7”).
For purpose of discussion below, FP#7 is broken into the following three parts:
(1) “instructions are executable” (“Introductory Phrase of FP#7);
(2) “to” (“Linking Phrase of FP#7); and
(3) “use the wind vectors to control the one or more real-world fans via the one or more APIs to direct air toward the user at real-world angles that correspond to virtual angles at which virtual wind impinges on the user’s vehicle in the racing simulation” (“Function of FP#7”).
Prong (A)
As an initial matter, the Examiner finds that FP#7 does not use the term “means.” Therefore, the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112(f) is not invoked can be overcome.
Moreover, in assessing whether or not FP#7 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#7, but the entire FP#7 including the Function of FP#7.
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#7 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#7. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#7, the Examiner finds that the claim language itself within FP#7 does not recite an algorithm for accomplishing the Function of FP#7. The Examiner also finds that the remainder of claim 25 also does not recite an algorithm for accomplishing the Function of FP#7. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#7 is not expressly recited in claim 25.
Similar to the above analysis of FP#1, the Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “instructions are executable” has achieved recognition as a term denoting structure to perform the Function of FP#7.
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “instructions are executable” has achieved recognition as denoting structure to perform the Function of FP#7.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “instructions are executable” is not an art-recognized structure to perform the Function of FP#7, and claim 25 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “instructions are executable” is not an art-recognized structure to perform the Function of FP#7, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#7 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#7 does not include sufficient structure for performing the Function of FP#7. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “instructions are executable” is a generic placeholder for performing the Function of FP#7, and therefore FP#7 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#7 (generic placeholder) is modified by the Function of FP#7 (functional language) linked by the Linking Phrase of FP#7. Therefore, the Examiner concludes that FP#7 meets Prong (B).
Prong (C)
Based upon a review of FP#7, and for reasons already discussed above, the Examiner finds that FP#7 does not contain sufficient structure for performing the entire Function of FP#7. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#7 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#7 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#7.
Because FP#7 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#7 meets Prong (C). Because FP#7 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#7 invokes § 112(f).
Corresponding Structure for FP#7
Based upon a review of Applicant’s original disclosure, the Examiner is unable to locate sufficient corresponding structure (e.g., a particular algorithm) that is clearly linked or associated with the Function of FP#7.
For example, Applicant’s specification discloses “Thus, the vectors may be used to control real-world fans via one or more fan application programming interfaces (APIs) 950 to direct air toward the user at real-world angles that correspond to virtual angles at which virtual wind impinges on the user's vehicle in the simulation itself.” Specification at p. 29.
While the above disclosure mentions that control of real-world fans is via one or more fan APIs, this disclosure is not an algorithm for achieving the Function of FP#7 (i.e., “use the wind vectors to control the one or more real-world fans via the one or more APIs to direct air toward the user at real-world angles that correspond to virtual angles at which virtual wind impinges on the user’s vehicle in the racing simulation”).
Because the original disclosure fails to clearly link or associate the Function of FP#7 to sufficient corresponding structure (e.g., an algorithm), claim 25 is indefinite under 35 USC § 112(b). A rejection under 35 USC § 112(b) is set forth below for claim 25.
Functional Phrase #8 or FP#8
The eighth functional phrase to be considered is “instructions are executable to: […] train the ML model using the multi-modal data to identify patterns and relationships between inputs and corresponding wind forces exerted on real-life vehicles in real-life driving situations.” Claim 26 (“Functional Phrase #8” or “FP#8”).
For purpose of discussion below, FP#8 is broken into the following three parts:
(1) “instructions are executable” (“Introductory Phrase of FP#8);
(2) “to” (“Linking Phrase of FP#8); and
(3) “train the ML model using the multi-modal data to identify patterns and relationships between inputs and corresponding wind forces exerted on real-life vehicles in real-life driving situations” (“Function of FP#8”).
Prong (A)
As an initial matter, the Examiner finds that FP#8 does not use the term “means.” Therefore, the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112(f) is not invoked can be overcome.
Moreover, in assessing whether or not FP#8 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#8, but the entire FP#8 including the Function of FP#8.
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#8 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#8. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#8, the Examiner finds that the claim language itself within FP#8 does not recite an algorithm for accomplishing the Function of FP#8. The Examiner also finds that the remainder claim 26 also does not recite an algorithm for accomplishing the Function of FP#8. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#8 is not expressly recited in claim 26.
Similar to the above analysis of FP#1, the Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “instructions are executable” has achieved recognition as a term denoting structure to perform the Function of FP#8.
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “instructions are executable” has achieved recognition as denoting structure to perform the Function of FP#8.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “instructions are executable” is not an art-recognized structure to perform the Function of FP#8, and claim 26 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “instructions are executable” is not an art-recognized structure to perform the Function of FP#8, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#8 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#8 does not include sufficient structure for performing the Function of FP#8. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “instructions are executable” is a generic placeholder for performing the Function of FP#8, and therefore FP#8 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#8 (generic placeholder) is modified by the Function of FP#8 (functional language) linked by the Linking Phrase of FP#8. Therefore, the Examiner concludes that FP#8 meets Prong (B).
Prong (C)
Based upon a review of FP#8, and for reasons already discussed above, the Examiner finds that FP#8 does not contain sufficient structure for performing the entire Function of FP#8. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#8 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#8 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#8.
Because FP#8 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#8 meets Prong (C). Because FP#8 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#8 invokes § 112(f).
Corresponding Structure for FP#8
Based upon a review of Applicant’s original disclosure, the Examiner is unable to locate sufficient corresponding structure (e.g., a particular algorithm) that is clearly linked or associated with the Function of FP#8.
For example, Applicant’s specification discloses “Machine learning models may be trained to analyze this multi-modal data to then identify intricate patterns and relationships between the various inputs and the corresponding wind forces exerted on the real-life vehicles in the real-life driving situations.” Specification at pp. 27–28 (emphasis added).
While the above disclosure mentions that an ML model may be trained to identify intricate patterns, this disclosure is not an algorithm for achieving the Function of FP#8 (i.e., “train the ML model using the multi-modal data to identify patterns and relationships between inputs and corresponding wind forces exerted on real-life vehicles in real-life driving situations”).
Because the original disclosure fails to clearly link or associate the Function of FP#8 to sufficient corresponding structure (e.g., an algorithm), claim 26 is indefinite under 35 USC § 112(b). A rejection under 35 USC § 112(b) is set forth below for claim 26.
Functional Phrase #9 or FP#9
The ninth functional phrase to be considered is “instructions are executable to: train the ML model to simulate real wind during deployment of the ML model.” Claim 29 (“Functional Phrase #9” or “FP#9”).
For purpose of discussion below, FP#9 is broken into the following three parts:
(1) “instructions are executable” (“Introductory Phrase of FP#9);
(2) “to” (“Linking Phrase of FP#9); and
(3) “train the ML model to simulate real wind during deployment of the ML model” (“Function of FP#9”).
Prong (A)
As an initial matter, the Examiner finds that FP#9 does not use the term “means.” Therefore, the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112(f) is not invoked can be overcome.
Moreover, in assessing whether or not FP#9 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#9, but the entire FP#9 including the Function of FP#9.
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#9 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#9. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#9, the Examiner finds that the claim language itself within FP#9 does not recite an algorithm for accomplishing the Function of FP#9. The Examiner also finds that the remainder claim 29 also does not recite an algorithm for accomplishing the Function of FP#9. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#9 is not expressly recited in claim 29.
Similar to the above analysis of FP#1, the Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “instructions are executable” has achieved recognition as a term denoting structure to perform the Function of FP#9.
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “instructions are executable” has achieved recognition as denoting structure to perform the Function of FP#9.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “instructions are executable” is not an art-recognized structure to perform the Function of FP#9, and claim 29 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “instructions are executable” is not an art-recognized structure to perform the Function of FP#9, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#9 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#9 does not include sufficient structure for performing the Function of FP#9. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “instructions are executable” is a generic placeholder for performing the Function of FP#9, and therefore FP#9 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#9 (generic placeholder) is modified by the Function of FP#9 (functional language) linked by the Linking Phrase of FP#9. Therefore, the Examiner concludes that FP#9 meets Prong (B).
Prong (C)
Based upon a review of FP#9, and for reasons already discussed above, the Examiner finds that FP#9 does not contain sufficient structure for performing the entire Function of FP#9. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#9 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#9 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#9.
Because FP#9 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#9 meets Prong (C). Because FP#9 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#9 invokes § 112(f).
Corresponding Structure for FP#9
Based upon a review of Applicant’s original disclosure, the Examiner is unable to locate sufficient corresponding structure (e.g., a particular algorithm) that is clearly linked or associated with the Function of FP#9.
For example, Applicant’s specification discloses “Machine learning models may be trained to analyze this multi-modal data to then identify intricate patterns and relationships between the various inputs and the corresponding wind forces exerted on the real-life vehicles in the real-life driving situations. […] The trained model can then be used to simulate real and virtual wind during deployment, enabling an unparalleled degree of congruence between the virtual simulation and the experiences of real-life professional race drivers.” Specification at pp. 27–28 (emphasis added).
While the above disclosure mentions that an ML model may be trained to identify intricate patterns, and that the trained model can be used during deployment, this disclosure is not an algorithm for achieving the Function of FP#9 (i.e., “train the ML model to simulate real wind during deployment of the ML model”).
Because the original disclosure fails to clearly link or associate the Function of FP#9 to sufficient corresponding structure (e.g., an algorithm), claim 29 is indefinite under 35 USC § 112(b). A rejection under 35 USC § 112(b) is set forth below for claim 29.
Functional Phrase #10 or FP#10
The tenth functional phrase to be considered is “instructions are executable to: train the ML model to simulate real wind during deployment of the ML model.” Claim 30 (“Functional Phrase #10” or “FP#10”).
For purpose of discussion below, FP#10 is broken into the following three parts:
(1) “instructions are executable” (“Introductory Phrase of FP#10);
(2) “to” (“Linking Phrase of FP#10); and
(3) “train the ML model to simulate real wind during deployment of the ML model” (“Function of FP#10”).
Prong (A)
As an initial matter, the Examiner finds that FP#10 does not use the term “means.” Therefore, the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112(f) is not invoked can be overcome.
Moreover, in assessing whether or not FP#10 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#10, but the entire FP#10 including the Function of FP#10.
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#10 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#10. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#10, the Examiner finds that the claim language itself within FP#10 does not recite an algorithm for accomplishing the Function of FP#10. The Examiner also finds that the remainder claim 30 also does not recite an algorithm for accomplishing the Function of FP#10. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#10 is not expressly recited in claim 30.
Similar to the above analysis of FP#1, the Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “instructions are executable” has achieved recognition as a term denoting structure to perform the Function of FP#10.
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “instructions are executable” has achieved recognition as denoting structure to perform the Function of FP#10.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “instructions are executable” is not an art-recognized structure to perform the Function of FP#10, and claim 30 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “instructions are executable” is not an art-recognized structure to perform the Function of FP#10, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#10 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#10 does not include sufficient structure for performing the Function of FP#10. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “instructions are executable” is a generic placeholder for performing the Function of FP#10, and therefore FP#10 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#10 (generic placeholder) is modified by the Function of FP#10 (functional language) linked by the Linking Phrase of FP#10. Therefore, the Examiner concludes that FP#10 meets Prong (B).
Prong (C)
Based upon a review of FP#10, and for reasons already discussed above, the Examiner finds that FP#10 does not contain sufficient structure for performing the entire Function of FP#10. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#10 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#10 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#10.
Because FP#10 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#10 meets Prong (C). Because FP#10 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#10 invokes § 112(f).
Corresponding Structure for FP#10
Based upon a review of Applicant’s original disclosure, the Examiner is unable to locate sufficient corresponding structure (e.g., a particular algorithm) that is clearly linked or associated with the Function of FP#10.
For example, Applicant’s specification discloses “Machine learning models may be trained to analyze this multi-modal data to then identify intricate patterns and relationships between the various inputs and the corresponding wind forces exerted on the real-life vehicles in the real-life driving situations. […] The trained model can then be used to simulate real and virtual wind during deployment, enabling an unparalleled degree of congruence between the virtual simulation and the experiences of real-life professional race drivers.” Specification at pp. 27–28 (emphasis added).
While the above disclosure mentions that an ML model may be trained to identify intricate patterns, and that the trained model can be used during deployment, this disclosure is not an algorithm for achieving the Function of FP#10 (i.e., “train the ML model to simulate real wind during deployment of the ML model”).
Because the original disclosure fails to clearly link or associate the Function of FP#10 to sufficient corresponding structure (e.g., an algorithm), claim 30 is indefinite under 35 USC § 112(b). A rejection under 35 USC § 112(b) is set forth below for claim 30.
Functional Phrase #11 or FP#11
The eleventh functional phrase to be considered is “instructions are executable to: train the ML model to simulate real wind for a particular in-race event type.” Claim 31 (“Functional Phrase #11” or “FP#11”).
For purpose of discussion below, FP#11 is broken into the following three parts:
(1) “instructions are executable” (“Introductory Phrase of FP#11);
(2) “to” (“Linking Phrase of FP#11); and
(3) “train the ML model to simulate real wind for a particular in-race event type” (“Function of FP#11”).
Prong (A)
As an initial matter, the Examiner finds that FP#11 does not use the term “means.” Therefore, the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112(f) is not invoked can be overcome.
Moreover, in assessing whether or not FP#11 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#11, but the entire FP#11 including the Function of FP#11.
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#11 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#11. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#11, the Examiner finds that the claim language itself within FP#11 does not recite an algorithm for accomplishing the Function of FP#11. The Examiner also finds that the remainder claim 31 also does not recite an algorithm for accomplishing the Function of FP#11. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#11 is not expressly recited in claim 31.
Similar to the above analysis of FP#1, the Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “instructions are executable” has achieved recognition as a term denoting structure to perform the Function of FP#11.
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “instructions are executable” has achieved recognition as denoting structure to perform the Function of FP#11.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “instructions are executable” is not an art-recognized structure to perform the Function of FP#11, and claim 31 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “instructions are executable” is not an art-recognized structure to perform the Function of FP#11, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#11 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#11 does not include sufficient structure for performing the Function of FP#11. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “instructions are executable” is a generic placeholder for performing the Function of FP#11, and therefore FP#11 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#11 (generic placeholder) is modified by the Function of FP#11 (functional language) linked by the Linking Phrase of FP#11. Therefore, the Examiner concludes that FP#11 meets Prong (B).
Prong (C)
Based upon a review of FP#11, and for reasons already discussed above, the Examiner finds that FP#11 does not contain sufficient structure for performing the entire Function of FP#11. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#11 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#11 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#11.
Because FP#11 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#11 meets Prong (C). Because FP#11 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#11 invokes § 112(f).
Corresponding Structure for FP#11
Based upon a review of Applicant’s original disclosure, the Examiner is unable to locate sufficient corresponding structure (e.g., a particular algorithm) that is clearly linked or associated with the Function of FP#11.
For example, Applicant’s specification discloses “Machine learning models may be trained to analyze this multi-modal data to then identify intricate patterns and relationships between the various inputs and the corresponding wind forces exerted on the real-life vehicles in the real-life driving situations. […] Then at block 810 the system may train the machine learning (ML) AI-based model to analyze the data and provide inferences of real and/or virtual wind to simulate for a given in-race event/type.” Specification at pp. 27–28 (emphasis added).
While the above disclosure mentions that an ML model may be trained to identify intricate patterns, and that block 810 may train the model to simulate for a given in-race event/type, this disclosure is not an algorithm for achieving the Function of FP#11 (i.e., “train the ML model to simulate real wind for a particular in-race event type”).
Because the original disclosure fails to clearly link or associate the Function of FP#11 to sufficient corresponding structure (e.g., an algorithm), claim 31 is indefinite under 35 USC § 112(b). A rejection under 35 USC § 112(b) is set forth below for claim 31.
Functional Phrase #12 or FP#12
The twelfth functional phrase to be considered is “CNN [(convolutional neural network)] is configured for pattern recognition based on different types of variable inputs and vehicle profiles.” Claim 22 (“Functional Phrase #12” or “FP#12”).
For purpose of discussion below, FP#12 is broken into the following three parts:
(1) “CNN [(convolutional neural network)]” (“Introductory Phrase of FP#12);
(2) “configured for” (“Linking Phrase of FP#12); and
(3) “pattern recognition based on different types of variable inputs and vehicle profiles” (“Function of FP#12”).
Prong (A)
As an initial matter, the Examiner finds that FP#12 does not use the term “means.” Therefore, the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112(f) is not invoked can be overcome.
Moreover, in assessing whether or not FP#12 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#12, but the entire FP#12 including the Function of FP#12.
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#12 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#12. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#12, the Examiner finds that the claim language itself within FP#12 does not recite an algorithm for accomplishing the Function of FP#12. The Examiner also finds that the remainder of claim 22 also does not recite an algorithm for accomplishing the Function of FP#12. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#12 is not expressly recited in claim 22.
Similar to the above analysis of FP#1, the Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “CNN [(convolutional neural network)]” has achieved recognition as a term denoting structure to perform the Function of FP#12.
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “CNN [(convolutional neural network)]” has achieved recognition as denoting structure to perform the Function of FP#12.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “CNN [(convolutional neural network)]” is not an art-recognized structure to perform the Function of FP#12, and claim 22 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “CNN [(convolutional neural network)]” is not an art-recognized structure to perform the Function of FP#12, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#12 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#12 does not include sufficient structure for performing the Function of FP#12. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “CNN [(convolutional neural network)]” is a generic placeholder for performing the Function of FP#12, and therefore FP#12 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#12 (generic placeholder) is modified by the Function of FP#12 (functional language) linked by the Linking Phrase of FP#12. Therefore, the Examiner concludes that FP#12 meets Prong (B).
Prong (C)
Based upon a review of FP#12, and for reasons already discussed above, the Examiner finds that FP#12 does not contain sufficient structure for performing the entire Function of FP#12. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#12 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#12 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#12.
Because FP#12 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#12 meets Prong (C). Because FP#12 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#12 invokes § 112(f).
Corresponding Structure for FP#12
Based upon a review of Applicant’s original disclosure, the Examiner is unable to locate sufficient corresponding structure (e.g., a particular algorithm) that is clearly linked or associated with the Function of FP#12.
For example, Applicant’s specification discloses “The model may therefore include, in one particular non-limiting example, one or more convolutional neural networks (CNN) configured for pattern recognition based on different types of racing simulation variable inputs and vehicle profiles.” Specification at p. 25.
While the above disclosure mentions a CNN may be configured for pattern recognition based on different types of racing simulation variable inputs and vehicle profiles, this disclosure is not an algorithm for achieving the Function of FP#12 (i.e., “pattern recognition based on different types of variable inputs and vehicle profiles”).
Because the original disclosure fails to clearly link or associate the Function of FP#12 to sufficient corresponding structure (e.g., an algorithm), claim 22 is indefinite under 35 USC § 112(b). A rejection under 35 USC § 112(b) is set forth below for claim 22.
Claim Rejection – 35 USC § 112(a)
The following is a quotation of 35 USC § 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.
Claims 1, 13, 17, and 21–37 are rejected under 35 USC § 112(a) as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention.
Claims 1, 13, 17, and 21–37 do not comply with the written description requirement because each claim recites a computer-implemented feature without an algorithm disclosed for achieving the particular computer-implemented feature. This rejection applies regardless of whether § 112(f) is invoked.5
Particularly, claim 1 recites the following computer-implemented feature(s):
“machine learning (ML) model to simulate wind in real time as a racing simulation transpires, the wind simulated in real time based on one or more variable inputs associated with the racing simulation.”
Applicant is respectfully reminded, for computer-implemented 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 invented the claimed subject matter.” MPEP § 2161.01 I.
Applicant’s specification does not describe an algorithm that performs “simulate wind in real time as a racing simulation transpires, the wind simulated in real time based on one or more variable inputs associated with the racing simulation,” in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.
For example, Figure 5 shows a flow chart. Figure 5 is reproduced below.
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As shown in Figure 5, blocks 500, 540, and 550 appear to be blocks for implementing the feature(s) “simulate wind in real time as a racing simulation transpires, the wind simulated in real time based on one or more variable inputs associated with the racing simulation.” However, neither of these blocks, alone or in combination, are an algorithm or show an algorithm for achieving the computer implemented feature, supra.
Moreover, Applicant’s specification discloses “Beginning at block 500, the device may facilitate (e.g., execute) a virtual racing simulation where a person/end-user races a first virtual race care (more generally, first simulation vehicle) against other virtual race cars on a virtual race track.” Specification at p. 22. Applicant’s specification further discloses “Then at block 540 the device may execute the model to receive the one or more variable inputs at the model and to generate, based on the one or more variable inputs (including the vehicle profile data), an inference indicating wind to simulate.” Specification at p. 23. Moreover, Applicant’s specification discloses “Additionally or alternatively, at block 550 the system may use an inference from the model to simulate wind virtually in the racing simulation based on the one or more variable inputs.” Specification at p. 24.
While the above disclosure mentions that a device may facilitate a virtual racing simulation and that a model receives one or more inputs to generate an inference indicating wind to simulate, this disclosure is not an algorithm for achieving the feature(s) “simulate wind in real time as a racing simulation transpires, the wind simulated in real time based on one or more variable inputs associated with the racing simulation.”
Applicant is also reminded, “[i]f 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 including how to program the disclosed computer to perform the claimed function, a rejection under 35 USC 112(a) or pre-AIA 35 USC 112, first paragraph, for lack of written description must be made.” MPEP § 2161.01 I. Phrased another way, “[i]t 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’).” MPEP 2161.01 I (last paragraph).
Therefore, because an algorithm for the computer-implemented feature “machine learning (ML) model to simulate wind in real time as a racing simulation transpires, the wind simulated in real time based on one or more variable inputs associated with the racing simulation” is not disclosed in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter, and in accordance with MPEP § 2161.01, claim 1 is rejected for lack of written description.
Dependent claims 21–37 fail to cure this deficiency of independent claim 1 (set forth directly above) and are rejected accordingly.
Dependent claims 22, 23, 25, 26, 29, 30, and 31 also each recite additional computer-implemented features, i.e., FP#5 (claim 23), FP#6 (claim 23), FP#7 (claim 25), FP#8 (claim 26), FP#9 (claim 29), FP#10 (claim 30), FP#11 (claim 31), and FP#12 (claim 22). The Examiner finds that Applicant’s disclosure does not describe an algorithm(s) that performs these additional computer-implemented feature in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. For example, Applicant’s specification discloses “Then at block 540 the device may execute the model to receive the one or more variable inputs at the model and to generate, based on the one or more variable inputs (including the vehicle profile data), an inference indicating wind to simulate.” Specification at p. 23. However, such disclosure is not an algorithm (e.g., the necessary steps and/or flowcharts) that performs the claimed feature in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. For these additional reasons, dependent claims 23, 25, 26, 29, 30, and 31 are rejected for lack of written description.
Independent claims 13 and 17 also recite additional computer-implemented features, i.e., FP#2, FP#3, and FP#4. Also claim 13 recites the additional computer-implemented feature “based on the one or more wind vectors output by the ML model, controlling the one or more fans to direct air toward the user to simulate wind as a racing simulation transpires.” The Examiner finds that Applicant’s disclosure does not describe an algorithm(s) that performs these additional computer-implemented feature in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. For example, Applicant’s specification discloses “Thus, the vectors may be used to control real-world fans via one or more fan application programming interfaces (APIs) 950 to direct air toward the user at real-world angles that correspond to virtual angles at which virtual wind impinges on the user's vehicle in the simulation itself.” Specification at p. 29. However, such disclosure is not an algorithm (e.g., the necessary steps and/or flowcharts) that performs the claimed feature in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. For these additional reasons, independent claims 13 and 17 are rejected for lack of written description.
Claim Rejection – 35 USC § 112(b)
The following is a quotation of 35 USC § 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.
Claims 1, 13, 17, and 21–37 are rejected under 35 USC § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
As noted above, FPs #1 – #12 invoke 35 USC § 112(f). See above section titled “Claim Interpretation Under 35 USC § 112(f).”
However, for each functional phrase, the original disclosure fails to disclose the corresponding structure for performing the entire claimed function and to clearly link the structure to the function. See above section titled “Claim Interpretation Under 35 USC § 112(f)” for an explanation of why the original disclosure does not include the corresponding structure. Therefore, claims 1, 13, 17, and 21–37 are indefinite and are rejected under 35 USC § 112(b).
The Examiner has considered all limitations in claims 1, 13, 17, and 21–37 even though some claim limitations are indefinite. See MPEP § 2143.03 I. ¶1 noting that “[a] claim limitation which is considered indefinite cannot be disregarded.” However, the Examiner concludes that because claims 1, 13, 17, and 21–37 are indefinite under § 112(b), these claims, by definition, cannot be properly construed. See e.g. Honeywell International Inc. v. ITC, 341 F.3d 1332, 1342 (Fed. Cir. 2003) (“Because the claims are indefinite, the claims, by definition, cannot be construed.”). Therefore, in accordance with MPEP § 2173.06 and the USPTO’s policy of trying to advance prosecution by providing prior art rejections (or indicating allowance of the claims) even though certain claims are indefinite, these indefinite claims are construed and the prior art is currently applied as much as practically possible. Applicant is reminded that when a particular § 112(b) rejection is overcome by Applicant, and the claim limitation can then be properly construed, the Examiner will reevaluate the prior art using this proper claim construction and then reassess the patentability of the claim over the prior art.
Response to Arguments
Applicant argues “Applicant disagrees with many aspects of the 112 allegations contained in the current Office Action but wishes to give the examiner a chance to reconsider the claims as amended herein before commenting further.” Remarks filed 10 July 2026. This argument is not persuasive.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection, if any, 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 JACOB C. COPPOLA whose telephone number is (571)270-3922. The examiner can be reached during normal business hours.
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, Andrew J. Fischer can be reached at (571) 272-6779. 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.
/JACOB C. COPPOLA/Primary Examiner, Art Unit 3992
1 While most definitions are cited because these terms are found in the claims, the Examiner may have provided an additional definition(s) to help interpret words, phrases, or concepts found in the definitions themselves, in the prior art, or in the original disclosure.
2 “In [112 ¶ 6], structure and material go with means, acts go with steps.” O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir. 1997).
3 See also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed Cir. 2000) where the CAFC set forth the standard for determining if a functional phase overcomes the presumption that § 112 ¶ 6 is not invoked (i.e., invokes 112 ¶ 6) when a phrase does not use the word “means.”
4 Microsoft Computer Dictionary (5th ed. 2002) (Microsoft Press); Electrical Engineering Dictionary (CRC Press, 2000); The Authoritative Dictionary of IEEE Standards Terms (7th Ed. 2000); The American Heritage Dictionary of the English Language (3rd ed. 1992).
5 This rejection does not rely on 35 USC § 112(f) being invoked. See MPEP § 2161.01 (“[C]laims with computer-implemented functional claim limitations may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. […]. Even if a claim is not construed as a means-plus-function limitation under 35 U.S.C. 112(f), computer-implemented functional claim language must still be evaluated for sufficient disclosure under the written description and enablement requirements of 35 U.S.C. 112(a).” (emphasis added)).
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