For multiple claims
The Action asserts a rejection of claims 21-23 and 26 under 35 U.S.C. § 103(a) as being unpatentable over Hegedus, and further in view of Hamynen. Applicants respectfully assert that Claims 21-23 and 26 recite novel and nonobvious features allowable over the proposed Hegedus - Hamynen combination. Further since claims 21-23 and 26 are dependent claims of allowable independent claim 1, they should also, therefore, be allowable for at least the reasons stated for claim 1. Claims 21-23 and 26 also present independently patentable combinations. Claims 21-23 and 26 should be allowable. Such action is respectfully requested.
For a single claim
The Office asserts a rejection of claim 19 as obvious over Herz, Yoshinobu, and Alexander, in view of Lazarus, and further in view of Daniels, U.S. Patent Publication No. 2002/0032907 (“Daniels”). Applicants respectfully assert that claim 19 recites novel and nonobvious features allowable over the proposed Herz-Yoshinobu-Alexander-Lazarus-Daniels combination. Further, since it depends from allowable claim 14, it should be allowed for at least the reasons stated for claim 14. Claim 19 should be allowable. Such action is respectfully requested.
Wednesday, November 26, 2008
Pointing out added language to differentiate asserted art
Language when you wish to point out added language
Claim 1 includes further distinguishing language. Finally, even if Taubin serendipitously organized by region, the claim includes further features, such as “sub-dividing the input mesh into plural sub-regions,” that are not found in Taubin. If the Examiner is relying on Taubin’s clusters as regions, Applicant points out that there is no plurality of refinement operations per cluster in Taubin. Instead, a cluster is simplified to a single vertex (See, FIG. 6 of Taubin).
Applicants have added the language “plurality of” to clarify that grouping involves more than one refinement operation. Similar language has been added to claims 31 and 40. Applicants find significant other differences between Taubin’s clusters and the recited arrangement, and amend the claims to clarify that the recited arrangement is fundamentally different from Taubin’s clusters.
The claimed arrangement is thus not inherent in Taubin, and the claims overcome the rejection.
Claim 1 includes further distinguishing language. Finally, even if Taubin serendipitously organized by region, the claim includes further features, such as “sub-dividing the input mesh into plural sub-regions,” that are not found in Taubin. If the Examiner is relying on Taubin’s clusters as regions, Applicant points out that there is no plurality of refinement operations per cluster in Taubin. Instead, a cluster is simplified to a single vertex (See, FIG. 6 of Taubin).
Applicants have added the language “plurality of” to clarify that grouping involves more than one refinement operation. Similar language has been added to claims 31 and 40. Applicants find significant other differences between Taubin’s clusters and the recited arrangement, and amend the claims to clarify that the recited arrangement is fundamentally different from Taubin’s clusters.
The claimed arrangement is thus not inherent in Taubin, and the claims overcome the rejection.
Monday, November 17, 2008
Bilski-Bouregard claims
Ex Parte Bo Li (precedental) explicitly allows Bouregard claims under Bilski
Add to end of patent: “The following claims do not cover a process performed entirely by acts of a human being without use of any machine or physical transformation.”
from Ex Parte Bo Li
Allowed claim
42. A computer program product, comprising a computer usable medium having a computer readable program code embodied therein, said computer readable program code adapted to be executed to implement a method for generating a report, said method comprising:
providing a system, wherein the system comprises distinct software modules, and wherein the distinct software modules comprise a logic processing module, a configuration file processing module, a data organization module, and a data display organization module;
parsing a configuration file into definition data that specifies: a data organization of the report, a display organization of the report, and at least one data source comprising report data to be used for generating the report, and wherein said parsing is performed by the configuration file processing module in response to being called by the logic processing module;
extracting the report data from the at least one data source, wherein said extracting is performed by the data organization module in response to being called by the logic processing module;
receiving, by the logic processing module, the definition data from the configuration file processing module and the extracted report data from the data organization module; and
organizing, by the data display organization module in respone to being called by the logic processing module, a data display organization of the report, wherein said organizing comprises utilizing the definition data received by the logic processing module and the extracted report data received by the logic processing module.
Add to end of patent: “The following claims do not cover a process performed entirely by acts of a human being without use of any machine or physical transformation.”
from Ex Parte Bo Li
"It has been the practice for a number of years that a "Beauregard Claim" of this nature be considered statutory at the USPTO as a product claim. (MPEP 2105.01, I). Though not finally adjudicated, this practice is not inconsistent with In re Nuijten. Further, the instant claim presents a number of software components, such as the claimed logic processing module, configuration file processing module, data organization module, and data display organization module, that are embodied upon a computer readable medium. This combination has been found statutory under the teachings of In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994). In view of the totality of these precedents, we decline to support the rejection under 35 U.S.C. § 101."
Allowed claim
42. A computer program product, comprising a computer usable medium having a computer readable program code embodied therein, said computer readable program code adapted to be executed to implement a method for generating a report, said method comprising:
providing a system, wherein the system comprises distinct software modules, and wherein the distinct software modules comprise a logic processing module, a configuration file processing module, a data organization module, and a data display organization module;
parsing a configuration file into definition data that specifies: a data organization of the report, a display organization of the report, and at least one data source comprising report data to be used for generating the report, and wherein said parsing is performed by the configuration file processing module in response to being called by the logic processing module;
extracting the report data from the at least one data source, wherein said extracting is performed by the data organization module in response to being called by the logic processing module;
receiving, by the logic processing module, the definition data from the configuration file processing module and the extracted report data from the data organization module; and
organizing, by the data display organization module in respone to being called by the logic processing module, a data display organization of the report, wherein said organizing comprises utilizing the definition data received by the logic processing module and the extracted report data received by the logic processing module.
101 case law for OA
Claim found to be not patent eligible (Ex parte Halligan (BPAI 2008) (recitation of a programmed computer is insufficient to tie process claim to a specific machine).
Opinion is here
8. Use Abele: Per Bilski approval of result in In re Abele, 684 F.2d 902 (CCPA 1982), require that transformed data represent physical, tangible objects and require visual display of that transformed data.
9. Use Lowry: In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994) (allowing “a memory for storing data for access by an application program being executed on a data processing system, comprising: a data structure stored in said memory, ….”).
10. Use Alappat: In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (a general purpose computer “in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.”)
11. Use WMS Gaming: WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339 (Fed. Cir. 1999) (in a means-plus-function claim “in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.”)
12. Maybe Even Comiskey: In re Comiskey, 499 F.3d 1365 (Fed. Cir. 2007) (dependent claims survived Sec. 101 scrutiny by reciting “wherein access to the mandatory arbitration is established through the Internet, intranet, World Wide Web, software applications, telephone, television, cable, video [or radio], magnetic, electronic communications, or other communication means.”)
13. Target Most Particular Points of Infringing Technology’s Life Cycle: Consider how infringing technology will move from conception to stored information to physical testing to commercial processing to products of that processing, etc., and target the most “particular” domestic points along the path. E.g., consider these types of claims—and add supporting disclosure to the specification:
a. Computer-Readable Media Storing Instructions for Performing Particular, Limiting Hardware/Transformative Process: If process could not be performed in one’s head (hence “hardware/transformative process”) and requires particular and limiting hardware or transformation, it may survive § 101 scrutiny.
b. Processing Device/System in State of Execution: Claim a processor, computer, or combination of multiple processors or computers in state of execution of recited information. Even if counterpart method-of-execution claim could be rejected as mental process, Lowry + Alappat + WMS Gaming may protect this claim from being sacked by Bilski, at least.
c. Thread or Process of Execution: Claim to thread of execution including a data structure in memory or other processing device/system state of execution with currently useful dynamic information.
d. “Product” by Process: Similarly, claim the processor, computer, or combination of multiple processors or computers (or perhaps, memory or other media) in state created by executing recited information. But do not draft IPXL-invalid hybrid machine-method claim.
e. Signals in a Particular Physical Medium or Form: Claim signals having specified physical form or medium. (Signal claims in In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) did not do this.)
Thursday, November 13, 2008
Remarks block
Remarks block.
Reconsideration of the application is respectfully requested in view of the foregoing amendments and following remarks. Claims 1-12 and 14-25 are pending in the application. No claims have been allowed. Claims 13 and 31 have been canceled without disclaimer and without prejudice to pursuing in a continuing application. Claims 26 and 27 are new.
Reconsideration of the application is respectfully requested in view of the foregoing amendments and following remarks. Claims 1-12 and 14-25 are pending in the application. No claims have been allowed. Claims 13 and 31 have been canceled without disclaimer and without prejudice to pursuing in a continuing application. Claims 26 and 27 are new.
Wednesday, November 12, 2008
103 Header
Claim Rejections under 35 USC § 103
To establish a prima facie case of obviousness, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. [MPEP § 2142.]
To establish a prima facie case of obviousness, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. [MPEP § 2142.]
Monday, November 10, 2008
Limitation Missed by Examiner
Neither Bischof nor Schumacher, either separately or in combination, teach or suggest, e.g., the claim 11 language: a module for verifying the set of tokens as internally consistent, the verifying comprising considering marking information added to the tokens. Applicant’s representative has carefully read the Office action and cannot locate a rejection of the above portion of the claim. Applicant respectfully submits that this omission amounts to a failure to articulate a prima facie case of unpatentablity and the burden to rebut this “rejection” has not yet shifted to the Applicant. For at least this reason, claim 18 is in condition for allowance.
Or
Initially, it is noted that the Office has not identified where in either Smith or Jones an alleged anticipatory teaching is to be found. Thus, the Office has failed meet its evidentiary burden and provide a prima facie case against claim 1. For at least this reason, claim 1 is in condition for allowance.
or
Additionally, Applicant has carefully reviewed the remainder of patent to Smith, and the patent to Jones and finds no teaching of “a widget” in either reference either individually or in combination. Thus, for at least this reason, neither Smith nor Jones teach or suggest independent claim 1.
Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 1 under 35 U.S.C. §103 are respectfully requested.
In the event that the Office maintains the rejection of independent claim 1 under 35 U.S.C. §102, Applicant respectfully requests that the Office, in the interests of compact prosecution, identify on the record and with specificity sufficient to support a prima facie case of anticipation, where in the Smith patent the subject feature of independent claim 1 of “a widget” is alleged to be taught.
Or
Initially, it is noted that the Office has not identified where in either Smith or Jones an alleged anticipatory teaching is to be found. Thus, the Office has failed meet its evidentiary burden and provide a prima facie case against claim 1. For at least this reason, claim 1 is in condition for allowance.
or
Additionally, Applicant has carefully reviewed the remainder of patent to Smith, and the patent to Jones and finds no teaching of “a widget” in either reference either individually or in combination. Thus, for at least this reason, neither Smith nor Jones teach or suggest independent claim 1.
Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 1 under 35 U.S.C. §103 are respectfully requested.
In the event that the Office maintains the rejection of independent claim 1 under 35 U.S.C. §102, Applicant respectfully requests that the Office, in the interests of compact prosecution, identify on the record and with specificity sufficient to support a prima facie case of anticipation, where in the Smith patent the subject feature of independent claim 1 of “a widget” is alleged to be taught.
Tuesday, October 7, 2008
CIP not prior art
The Cheung patent is a continuation-in-part with a filing date after the filing date of the instant application. The material in Cheung relied on in the rejection to allegedly reject the claims has a priority date after the filing date of the instant application.
The instant application was filed on February 25, 2005. Cheung was filed on Jun 12, 2006, and claims priority through a provisional patent application filed June 10, 2005, after the filing date of the instant application. Cheung also claims priority, as a continuation-in-part, through Patent no. 7,116,976 to Thomas filed Dec. 7, 2004 (Thomas), which, in turn, claims priority through provisional application no. 60/527,565 filed on Dec. 8, 2003 (provisional). A continuation-in-part, by its very nature, adds matter not disclosed in the earlier filing. “A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.” MPEP 201.08, emphasis in original. The Cheung Patent adds considerable matter not disclosed in the earlier priority documents with the earlier filing dates (Thomas and the provisional), and only receives the priority date for the matter that was present in the priority documents.
The instant application was filed on February 25, 2005. Cheung was filed on Jun 12, 2006, and claims priority through a provisional patent application filed June 10, 2005, after the filing date of the instant application. Cheung also claims priority, as a continuation-in-part, through Patent no. 7,116,976 to Thomas filed Dec. 7, 2004 (Thomas), which, in turn, claims priority through provisional application no. 60/527,565 filed on Dec. 8, 2003 (provisional). A continuation-in-part, by its very nature, adds matter not disclosed in the earlier filing. “A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.” MPEP 201.08, emphasis in original. The Cheung Patent adds considerable matter not disclosed in the earlier priority documents with the earlier filing dates (Thomas and the provisional), and only receives the priority date for the matter that was present in the priority documents.
Dependent claims with different reference asserted
Claim Rejections Under 35 USC § 103(a)
The Action rejects claims 6, 8, 10-13, 24, and 26 under 35 U.S.C § 103(a) as unpatentable over Fetzer in view of Rudys. Applicants respectfully assert that claims 6, 8, 10-13, 24, and 26 recite novel and nonobvious features allowable over the proposed Fetzer - Rudys combination. As understood by Applicants, Rudys fails to remedy the deficiencies of Fetzer. Further, since they depend from allowable claim 1 or allowable claim 18, they should be allowed for at least the reasons stated for claims 1 and 18. Claims 6, 8, 10-13, 24, and 26 should be allowable. Such action is respectfully requested.
The Action rejects claims 6, 8, 10-13, 24, and 26 under 35 U.S.C § 103(a) as unpatentable over Fetzer in view of Rudys. Applicants respectfully assert that claims 6, 8, 10-13, 24, and 26 recite novel and nonobvious features allowable over the proposed Fetzer - Rudys combination. As understood by Applicants, Rudys fails to remedy the deficiencies of Fetzer. Further, since they depend from allowable claim 1 or allowable claim 18, they should be allowed for at least the reasons stated for claims 1 and 18. Claims 6, 8, 10-13, 24, and 26 should be allowable. Such action is respectfully requested.
Arguing against combinations--MPEP Aug 08 language
Horiguchi cannot be combined with Korn.
The Action asserts that Korn’s teaching can be combined with Horiguchi’s teaching. The motivation given is that “one would have been motivated to do so to handle primary (parent) thread (parent) and other (child) threads when parallel executing as suggested by Korn (e.g., col. 3: 47- col. 4:14.) Applicants respectfully disagree. To combine references, there must be some expectation of some advantage. MPEP 2144.IV. However, “the proposed modification cannot render the prior art unsatisfactory for its intended purpose.” MPEP 2143.01.V. Also, The proposed medication cannot change the principle of operation of a reference. MPEP 2143.01.V1.
Further, the MPEP requires explicit analysis, and not conclusory statements. As MPEP § 2142 states: The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit has stated that "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See also KSR, 550 U.S. at ___ , 82 USPQ2d at 1396 (quoting Federal Circuit statement with approval).
The two references that the Action purports to combine are so different that combination makes no sense at all, and so would certainly render Horiguchi unsatisfactory for its intended purpose, if combined with Korn, and would also change the principle of operation of Horiguchi, to say the least.
Horiguchi is concerned with “processing an asynchronous interrupt of a processing entity.” [Horiguchi, Abstract.] The processing runs strictly on a single (multi-threaded) operating system. By contrast, Korn is concerned with porting processes that run on single-thread operating systems to those that run on multi-threaded operating systems. [Korn, abstract.] As Horiguchi has nothing to do with porting one operating system portion to another, it is nonsensical to place a feature for porting an operating system portion into a patent that does no such thing. Further, as to the suggested improvement, it is unclear, to say the least, why “handing primary (parent) threads and other (child) threads” (the improvement suggested by the Action, pp. 5-6) would produce any sort of improvement to Horiguchi. Horiguchi does not even discuss parent or children threads, let alone any sort of parent-child relationships. Shoehorning in a parent-child thread relationship into a patent that has no such constructs, nor any use for such constructs would do nothing but require additional constructs with no apparent purpose, making Horiguchi unsatisfactory for its intended purpose, as it would either not work, or at a very best case scenario, be unnecessarily complicated for no perceived benefit. As there is no improvement suggested, nor any improvement even envisioned, the statement, on its face, is conclusory, as is not allowed.
To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical "person of ordinary skill in the art" when the invention was unknown and just before it was made. In view of all factual information, the examiner must then make a determination whether the claimed invention "as a whole" would have been obvious at that time to that person. Knowledge of applicant's disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the "differences," conduct the search and evaluate the "subject matter as a whole" of the invention. The tendency to resort to "hindsight" based upon applicant’s disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.
As only a conclusory statement was provided to combine Horiguchi with Korn, it appears that impermissible hindsight was used to make the determination that these two references could be combined, and as Horiguchi cannot be combined with Korn because the Korn techniques to port one type of operating system to another have nothing to with Horiguchi’s techniques to process asynchronous interrupts, Applicants respectfully submit that the Examiner has failed to establish a prima facie case of obviousness on the basis of these two references.
The Action asserts that Korn’s teaching can be combined with Horiguchi’s teaching. The motivation given is that “one would have been motivated to do so to handle primary (parent) thread (parent) and other (child) threads when parallel executing as suggested by Korn (e.g., col. 3: 47- col. 4:14.) Applicants respectfully disagree. To combine references, there must be some expectation of some advantage. MPEP 2144.IV. However, “the proposed modification cannot render the prior art unsatisfactory for its intended purpose.” MPEP 2143.01.V. Also, The proposed medication cannot change the principle of operation of a reference. MPEP 2143.01.V1.
Further, the MPEP requires explicit analysis, and not conclusory statements. As MPEP § 2142 states: The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit has stated that "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See also KSR, 550 U.S. at ___ , 82 USPQ2d at 1396 (quoting Federal Circuit statement with approval).
The two references that the Action purports to combine are so different that combination makes no sense at all, and so would certainly render Horiguchi unsatisfactory for its intended purpose, if combined with Korn, and would also change the principle of operation of Horiguchi, to say the least.
Horiguchi is concerned with “processing an asynchronous interrupt of a processing entity.” [Horiguchi, Abstract.] The processing runs strictly on a single (multi-threaded) operating system. By contrast, Korn is concerned with porting processes that run on single-thread operating systems to those that run on multi-threaded operating systems. [Korn, abstract.] As Horiguchi has nothing to do with porting one operating system portion to another, it is nonsensical to place a feature for porting an operating system portion into a patent that does no such thing. Further, as to the suggested improvement, it is unclear, to say the least, why “handing primary (parent) threads and other (child) threads” (the improvement suggested by the Action, pp. 5-6) would produce any sort of improvement to Horiguchi. Horiguchi does not even discuss parent or children threads, let alone any sort of parent-child relationships. Shoehorning in a parent-child thread relationship into a patent that has no such constructs, nor any use for such constructs would do nothing but require additional constructs with no apparent purpose, making Horiguchi unsatisfactory for its intended purpose, as it would either not work, or at a very best case scenario, be unnecessarily complicated for no perceived benefit. As there is no improvement suggested, nor any improvement even envisioned, the statement, on its face, is conclusory, as is not allowed.
To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical "person of ordinary skill in the art" when the invention was unknown and just before it was made. In view of all factual information, the examiner must then make a determination whether the claimed invention "as a whole" would have been obvious at that time to that person. Knowledge of applicant's disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the "differences," conduct the search and evaluate the "subject matter as a whole" of the invention. The tendency to resort to "hindsight" based upon applicant’s disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.
As only a conclusory statement was provided to combine Horiguchi with Korn, it appears that impermissible hindsight was used to make the determination that these two references could be combined, and as Horiguchi cannot be combined with Korn because the Korn techniques to port one type of operating system to another have nothing to with Horiguchi’s techniques to process asynchronous interrupts, Applicants respectfully submit that the Examiner has failed to establish a prima facie case of obviousness on the basis of these two references.
Subscribe to:
Posts (Atom)