DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 now recites: “generate the conditioned data stream and the auxiliary data stream by performing, for each data unit within the input data set, the following operations: if a statistical property of the data unit deviates from a target value by more than a configurable threshold, applying one or more conditioning rules to the data unit; appending to the conditioned data stream the data unit after application of the one or more conditioning rules when the one or more conditioning rules are applied to the data unit, and otherwise appending the data unit to the conditioned data stream; performing at least one bitwise operation on the data unit; and appending the output of the bitwise operation to the auxiliary data stream;”. The amended limitations are unclear, first because the claim language is ambiguous as to the term “the data unit”. For each data unit, the input data set includes the data unit, both the conditioned and unconditioned data units are also both referred to as “the data unit”, and the bitwise operation is also performed on “the data unit”. This creates claim interpretation issues, for example, it is unclear what version of “the data unit” is having a bitwise operation performed on it. Is it “the data unit” in the input data set or “the data unit” that has been appended to the conditioned data stream (conditioned or not)? The conditioned data unit should not also be using “the data unit” to avoid confusion with the other data units. For example, “the conditioned data unit” would be clearer for distinguishing which “the data unit” the bitwise operation is being performed on.
Further, the bitwise operation limitation does not have an order of operations constraint on when it is performed, it could be performed before the appending limitation. If it is, this would create additional claim issues because it would also be unclear as to what the state of “the data unit” would be for both the appending claim limitations.
Claim 4 has the same issues as claim 1 above and further the dependent claims are rejected based upon their dependence on a rejected base claim.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claim 1, after further consideration of the newly amended claim language and review of the specification, the term “conditioning rules” appears in the specification only 4 times. This term is not adequately described in the specification in such a way to ascertain the scope of this term. It is unclear what the conditioning rule is actually doing to the data unit. Further, if the bitwise operation claim limitation is interpreted to be performed before the new appending limitation as described in item 5 above, the specification does not appear to support that interpretation.
Claim 4 has the same issues as claim 1 above and further the dependent claims are rejected based upon their dependence on a rejected base claim.
Response to Arguments
Applicant's arguments filed 8/4/2026 have been fully considered. The amendments have overcome the prior 112 issues, but have introduced new 112 issues which have been addressed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL ALSIP whose telephone number is (571)270-1182. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Reginald G. Bragdon can be reached at (571)272-4204. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL ALSIP/Primary Examiner, Art Unit 2139
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