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Telecom Patents: Claim Amendments for Common Rejections during Patent Prosecution

BananaIP Counsels > Uncategorized  > Telecom Patents: Claim Amendments for Common Rejections during Patent Prosecution

Telecom Patents: Claim Amendments for Common Rejections during Patent Prosecution

Rejections under 35 U.S.C. 101

Rejections under this clause are based on the fact that claims do not fall within one of the four statutory categories of acceptable subject matter: process, machine, article of manufacture or composition of matter.

One of the ways to overcome this rejection is by claiming an invention by properly citing the subject matter.

In telecom patents, ‘signals’ cannot be claimed even though they are a part of the telecom industry.

For example : A method for managing resources allocated to at least one virtual machine in a network, by a Virtual Machine Controller, said method comprising:

real time monitoring, by a monitoring module, of at least resource parameters associated with resources being utilized currently by said virtual machine;

real time comparison of said monitored resource parameters with at least one of a pre-decided upper threshold and a pre-decided lower threshold by a resource management module; and

at least one of automatically scaling up and automatically scaling down in real time, of said resource parameters assigned to said virtual machine based on said comparison by said resource management module, wherein said automatic scaling is configured to occur without changing state of said virtual machine.

The above mentioned independent claim has no rejections based on 35 U.S.C. 101 as the claim clearly recites the subject matter by explaining the method in detail.

Rejections under 35 U.S.C. 112

Under this clause, rejections are based on substantive issues of lack of enablement or failure of support from written description which means that the claimed subject matter is not sufficiently disclosed in the specification.

One of the ways to overcome lack of enablement is to demonstrate that the specification and drawing of the patent application provide enough information for one of ordinary skill in the art to make and use the claimed invention.

For example: A Virtual Machine Controller for managing resources allocated to at least one virtual machine in a network, said Virtual Machine Controller comprising:

a monitoring module to monitor in real time at least resource parameters associated with resources being utilized currently by said virtual machine;

a resource management module to compare in real time said monitored resource parameters with at least one of a pre-decided upper threshold and a pre-decided lower threshold; and

said resource management module to at least one of automatically scale up and automatically scale down in real time, said resource parameters assigned to virtual machine based on said comparison, wherein said automatic scaling is configured to occur without changing state of said virtual machine.

The above mentioned claim was rejected under U.S.C 112 because the specification while being enabling for performing, does not reasonably provide enablement for comparing a threshold being stored in the memory module and scaling. The applicant amended the claim accordingly, thereby providing sufficient structure so as to enable for performing, while also reasonably providing enablement for comparing a threshold being stored in the memory module and scaling.

Rejections under 35 U.S.C. 102

Under this clause, rejections are based on ‘anticipation’. A claim is anticipated if and only if all the claimed limitations are disclosed by a single reference.

One of the ways to overcome this rejection is by pointing out to the examiner what element has been over looked in the rejection and by including a key distinguishing feature over the prior art.

For example: A method for managing resources allocated to at least one virtual machine in a network, by a Virtual Machine Controller, said method comprising:

real time monitoring, by a monitoring module, of at least resource parameters associated with resources being utilized currently by said virtual machine;

real time comparison of said monitored resource parameters with at least one of a pre-decided upper threshold and a pre-decided lower threshold by a resource management module; and

at least one of automatically scaling up and automatically scaling down in real time, of said resource parameters assigned to said virtual machine based on said comparison by said resource management module, wherein said automatic scaling is configured to occur without changing state of said virtual machine.

The above mentioned claim was rejected based on anticipation and the applicant amended the claim and included ‘A virtual machine controller which comprises of a monitoring module which monitors in real time, resource parameters associated with resources assigned to a particular virtual machine. This monitoring is done continuously or actively by the module’ which was the key distinguishing factor over the prior art.

Rejections on 35 U.S.C. 103

Under this clause, a patent claim is said to be obvious only if the claimed subject matter is taught, suggested or motivated by the prior art and also the claims can be obvious by combining the elements from one or more prior art references.

One of the ways to overcome this rejection is by locating something that the cited reference doesn’t teach and then including a limitation in the claims such that the added limitation enables the claim, as compared to the reference. When considering obviousness in light of a combination of two or more prior art reference, the operative question is whether a mere combination of the references will anticipate the claimed invention.

For example:  A method for managing resources allocated to at least one virtual machine in a network, by a Virtual Machine Controller, said method comprising:

real time monitoring, by a monitoring module, of at least resource parameters associated with resources being utilized currently by said virtual machine;

real time comparison of said monitored resource parameters with at least one of a pre-decided upper threshold and a pre-decided lower threshold by a resource management module; and

at least one of automatically scaling up and automatically scaling down in real time, of said resource parameters assigned to said virtual machine based on said comparison by said resource management module, wherein said automatic scaling is configured to occur without changing state of said virtual machine.

In the above mentioned claim, there are no rejections under 35 U.S.C. 103 as the element 1 of the aforementioned claim is not anticipated by the combination of the prior art references.

Authored by Aishwarya Narayan

Contributed by Patent Prosecution Division of BananaIP in India

For further information on Patent prosecution strategies in India, write to [email protected]

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