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 .
Response to Arguments
Applicant’s remarks filed 29 July 2026 have been fully considered. The double patenting rejection is withdrawn in light of the filed terminal disclaimer. Applicant argues that the full breadth of selecting a first terminator type sequence is supported. Examiner respectfully disagrees. The issue is not that any terminator type is possible but rather that termination sequences are generally recursively-defined such that, absent a specific rule (i.e., the one disclosed) for selecting the particular terminating sequence that will be used to replace the invalid sequence, the claims cover replacing the invalid sequence with terminating sequences clearly not contemplated by Applicant.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 5-9, 13-17, and 21-23 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.
The full breadth of the limitation, “selecting, using the grammar, and based on the first plurality of elements, a first terminator type sequence, of the plurality of terminator type sequences, wherein the first terminator type sequence comprises a terminating sequence of element types that is defined by the grammar as a permissible terminating sequence,” lacks sufficient written description in the disclosure as originally filed. Given that there are potentially an infinite number of terminator types in a context-free grammar such as the SQL grammar due to the recursive nature of the grammar, Specification ¶ [0037], the disclosure of a single algorithm for selecting which terminator type to select, Specification ¶¶ [0045]-[0047], is not adequate to support a generic selection algorithm. That is, one of ordinary skill in the art, upon reading Applicant’s disclosure, would not have understood Applicant to have been in possession of a general algorithm for replacing an invalid terminating sequence with a valid one, but rather with a specific valid one, and that is all Applicant is entitled to claim.
Allowable Subject Matter
Claims 2-3, 10-11, and 18-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and upon filing of a terminal disclaimer.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not teach repairing a query by selecting a type of a plurality of terminator types permitted by a grammar corresponding to a non-terminal sequence of elements in the query, and appending one or more elements corresponding to the set of element types to the query. There is no evidence that selecting the shortest sequence of types is conventional such that, as an ordered combination, this is simple automation of the preexisting manual process of fixing invalid queries. MPEP § 2106.05(a) (“An important consideration in determining whether a claim improves technology is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome.”).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection 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 WILLIAM SPIELER whose telephone number is (571)270-3883. The examiner can normally be reached Monday-Friday, 11-3.
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, Ann Lo can be reached at 571-272-9767. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM SPIELER
Primary Examiner
Art Unit 2159
/WILLIAM SPIELER/Primary Examiner, Art Unit 2159
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