REF ID:A521540 

IN THE TINITED STATES PATENT OFFICE 

REI Application for Patent of * WILLIAM F, FRIEDMAU 

* Serial Number 

107,244 * 

Filed * 2.3 October 19.36 

* For 

CRIPTOGRAPHS * 

* * * • * * * * * * 

The Honorable Commissioner of Patents 

Washington 251 D. C. 

Sira 

Division 23 

This is in raspon.~e to Patent Office action of 29 December 1951 in 

the above-identified application tor patent. Please amend the case 

as follmnu 

IN TJm CI.AIMS 

Claim 2, line .3 • After "of" insert • more than two - • 

01.d.m 3, line 3 .. After "of1

' insert • more than two - • 

Cl.aim 41 line 3 - After "of 11 insert .. more than two - • 

01.aim S, line .3 ... After 11of" insert • more th.an two - • 

Claim 7; line 3 .. After "of" insert • more than two .. • 

Claim 9, line .3 .. Af'ter "of" insert - more than two • • 

Claim 10, line .3 - After "of" insert - more than two - • 

Claim 11, line 4 - After "ot" insert - more than two - • 

Claim 13, line 7 - After "comprising" &nsert - more than two • • 

Claim 14 - Cancel. 

Claim 15, line 2 - Atter "of" insert • more than two ... 

Claim 16, line 2 - Betore "rotatable" insert - more than two • • 

2 - Cancel "or the like". 

Claim.1'7, line 2 - Before "rotatable" insert - more than two - • 

roved for Release b ursuant to E. 0. 1352 
REF ID:A521540 

REMARKS 

In view of the radical deviation in the treatment or the claims in the 

rejection of 29 December 1951, e.s compared with that of the earlier 

prosecution, Applioant prefers not to consider the said action as rin&l. 

With the emeption of Claims 6• 8, and 12, and 14, whioh has been 

oancelled, all claims have been amended to require a series of more 

than two rotors. The apparatus and method now defined differ not 1n 

degree but in kind. This is apparent when it is considered that the 

oryptographic result in DAD, 11540,107, is the same when element C11s 

stepped "forward" one position relative to C2 as when element c2 is 

stepped "backward" one position relative to C1. This is not a true 

permuta.t!ve arrangement such as is described and claimed in the present 

application. 

The lillitative nature or the DAMM device is a result or the peculiar 

construction of the ciphering members 01 and c2, requiring that an input 

character (A, tor ex.ample) always enter the device through the same contact. Likewise, any input to element o2 always exits from the devioe e.t 

exactly the same point. 

Furthermore, it will be noticed that it is not feasible, if possible at 

all, to aasooiate more than two or the ciphering elemElnts ot DAW to obtain anything approaching a cascade effect (as called for b1' some of the 

claims) or to effect 11 permutative stepwise displacements" thereof (as 

required by others) • 

Claims 6, S, and 10 require in themselves, or depend upon claims which 

require, a plurality of more than two rotors, and the remarks above 

therefore app~. Regarding these claims further, along with CJ.aim 12, 

:re3eoted as substantiallJ met by DAD, Applicant f'eels that the Examimr 

should state his rejection with more particularity since this rejection 

also represents an exact reversal or the position taken earlier 1r.t the 

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REF ID:A521540 

prosecution, see, for exar.:ple, tlrn action of 2 May 1944 and the amendments 

preceding and suooeeding the same. It is submitted that 1n the art or 

Ol"1Ptograpey aa 1 t relates to ma.chines of the general type here involved 

substantial absence or periodicity in the keying elements reiresents the 

difference between operativeness and inoperativeness. The use or prime 

numbers in the relation required in Claims 6, a, and 12 and the requirement of substantial aperiodioity (Claim 10) apparently were new with the 

AppUoa.n·c, no suggestion thereof appearing anywhere in the prior art. 

Reconsideration is requested of the rejection of Claims 15 and 16 as not 

patentable over DA.MM. As amended, these claims require more than two 

character-displacing members and, thus, explicitly {Claim 15) or 1.mPlicitl;r 

define a cascade effect such as was referred to above. Apropos of the tact 

that the ke;r discs of the patent, as 51, are illustrated as being ot different simaaJ Applicant wishes to de~ that this justifies the assumption 

that these wheels are moved at different angular rates since DA& nowhere 

mentions any such feature. 

further consideration also is requested of the rejection of Claims 15, 16, 

and 17, as amended, on the ground that they represent merely the f\mctions 

of Applicant's apparatus. While they- are said to be wol'.'ded in terms ot 

apparatus features, it should be noted that these features are largely 

introductory, the method in each case being p:rnperly st'!lted. The simple 

fact that a method has an object to act upon is not objectionable, the 

classioal definition or a method being "either a force applied, a mo<le ot 

app11cat:lon, or the specific treatment or a gpec1f1Q ob1eg~ (producillg) 

peys1cal etf'octa" and in COOHRARE v DEENER, 94 u. s. 7801 the Court defiJled 

a process as "a mode or treatment of cemin material• to.produce 8 given 

result." As Applicant has pointed out earlier in the prosecution, there 1s 

in any event substantial inoonsisteno:y in rejecting a claim as f'unotional 

e.nd at the same time rejecting it as met or substantially met by other 

patented art. 

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REF ID:A521540 

A slight change in Figure 2 of the drawings is being requested of the 

Chief Draftsman. It is believed that this will obviate the Examiner's 

objection, lines 20•22, pngo 3 of the Action of 29 December 1951. 

Pavorable aotion is requested. 

Respeotf'ully, 

WILLIAM F. FRIEDMAN, Applica11t 

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