DETAILED ACTION
This Office action is in response to the amendment filed on August 12th, 2025. Claims 1-20 are pending.
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 .
Drawings
Replacement drawings were received on August 12th, 2025. These drawings overcome the prior objections to the drawings, but also introduce new matter (see below). Applicant may file additional replacement drawings that remove the new matter or may file a continuation in part to allow for the addition of new matter. Filing a continuation in part would also allow for the specification to be updated to support the claimed subject matter, as suggested in the last Office Action.
The replacement drawings filed August 12th, 2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: new caption added to replacement figure 1 adds subject matter relating to the interfaces being partly reflective that is not supported by the original disclosure. Applicant is required to cancel the new matter in the reply to this Office Action.
The replacement drawings filed August 12th, 2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: new figure 8 specifies that the excitation device to excite the gain medium is a laser, this is not supported by the original disclosure. The original disclosure does not specify the form of the excitation device. Applicant is required to cancel the new matter in the reply to this Office Action. Note that cancelling figure 8 will cause several of the prior objections to the claims to be re-asserted. An amended figure 8 without the seed laser could be filed which overcome most of those objections, but an objection to the drawings not showing the excitation device of claim 2 would still return. The only way to overcome that objection without introducing new matter would be to cancel claim 2. Applicant would also need to remove the limitation to an excitation source for a gain medium from claim 20.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, an apparatus comprising multiple concentric spherical structures, an excitation source for exciting the spherical structures, and an excitation source for a gain medium must be shown or the feature(s) canceled from the claim(s), particularly claim 20. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder (“device”) that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “excitation device, which excites the gain medium” in claim 2 and “excitation source at said electromagnetic wavelength wherein multiple modes of said sphere are excited” in claim 12, “excitation source at said electromagnetic wavelength, which excites one or more said spherical structures” in claim 20, and “an excitation source for a gain medium in one or more said spherical structures” in claim 20.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(a)
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 1-12, and 15-20 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.
Claims 1-11 and 15-19 recite a spherical shell that “is partly reflective to electromagnetic waves of wavelength λ1 at both interfaces”. No disclosure of partly reflective interfaces appears to be present in the original disclosure. The only mention of reflecting appears to be the sentence “Hence, if this can be realized experimentally using a resonant spherical layer or another setup that can generate the time reversal of the emitted field (for example a reflecting or phase-conjugating cavity) it may enable to localize atoms/molecules with deep-subwavelength resolution (for scattering medium with ballistic photons).” This does not specify that the reflecting cavity is a spherical shell or that is it partly reflecting (as opposed to fully reflecting).
Regarding claims 12 and 20, they recite “an excitation source at said electromagnetic wavelength wherein multiple modes of said sphere are excited.” No such excitation source is apparent in the original disclosure. It is disclosed that multiple modes can be excited simultaneously with the right boundary conditions and oscillating dipoles, but the mechanism for exciting the oscillating dipoles is never disclosed, as far as examiner can determine.
Claim Rejections - 35 USC § 112(b)
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.
Regarding claim 2, claim limitation “excitation device, which excites the gain medium” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and/or to clearly link the structure, material, or acts to the function. The only mention of an excitation device for exciting the gain medium states “The setup may require field at another frequency to generate gain within the spherical layer.” The device that creates this frequency is never disclosed, as far as examiner can determine.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, for example, by explicitly claiming a seed laser or other structure;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 12 and 20 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.
Regarding claims 12 and 20, the claims reference ‘modes’. It is not clear what a mode of a sphere is. It appears from the specification that this refers to waveguide modes, but this is not clearly set out either the claims or the specification.
Claim 12 is 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.
Regarding claim 12, claim limitation “excitation source at said electromagnetic wavelength wherein multiple modes of said sphere are excited” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and/or to clearly link the structure, material, or acts to the function. Examiner can find no reference to any particular structure for exciting the multiple modes, only vague references to things like oscillating dipoles and current sources which create electromagnetic radiation but are not excitation sources. Rather, they are forms of moving charges or charge distributions that can be produced through excitation of matter. The device or structure that excites the matter does not appear to be disclosed, at least not in a manner that clearly relates it to the function of exciting multiple modes.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, for example, by explicitly claiming a seed laser or other structure;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 13 is 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 13 recites the limitation "said excitation source" in line 2. There is insufficient antecedent basis for this limitation in the claim, because the parent claim does not mention an excitation source. Suggested correction: make claim 13 depend from claim 12, rather than claim 11.
Claim 13 is 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 13 provides for the use of the device as an omni-directional detector or antenna, but, since the claims do not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 13 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Claims 14 and 17 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.
Claims 14 and 17 provides for the use of the device to ablate human cells or human-cell components, but, since the claims do not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claims 14 and 17 rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Claim 16 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 16 provides for the use of the device for imaging, but, since the claims do not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 16 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Regarding claim 18, the claim recites “wherein a focal spot is generated”. It is unclear what is generating the focal spot or what is being focused there.
Claim 18 is 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 18 provides for the use of the device for optical tweezing, but, since the claims do not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 18 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Claim 19 is 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 19 provides for the use of the device for quantum operations, but, since the claims do not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 19 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Claims 20 is 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.
Regarding claim 20, claim limitation “excitation source at said electromagnetic wavelength, which excites one or more said spherical structures” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and/or to clearly link the structure, material, or acts to the function. Examiner can find no reference to any particular structure for exciting the multiple modes, only vague references to things like oscillating dipoles and current sources which create electromagnetic radiation but are not excitation sources. Rather, they are forms of moving charges or charge distributions that can be produced through excitation of matter. The device or structure that excites the matter does not appear to be disclosed, at least not in a manner that clearly relates it to the function of exciting multiple modes.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, for example, by explicitly claiming a seed laser or other structure;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claim 20, claim limitation “an excitation source for a gain medium of one or more said spherical structures” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and/or to clearly link the structure, material, or acts to the function. The only mention of an excitation device for exciting the gain medium states “The setup may require field at another frequency to generate gain within the spherical layer.” The device that creates this frequency is never disclosed, as far as examiner can determine.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, for example, by explicitly claiming a seed laser or other structure;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 4-11, and 15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a product of nature without significantly more.
Claim 1 recites a spherical shell of material that has the properties of partial reflection at a wavelength and a permittivity near an eigen permittivity of the wavelength. The wavelength is not limited, so any value could be chosen. There exists in nature many spherical shells that are partially reflective to at least some wavelengths. The eigen permittivity is a natural phenomenon. This judicial exception is not integrated into a practical application because the shell is not claimed to be part of any larger system or used in any method. The claim recites nothing more than a shell of material experiencing a natural phenomenon. No additional elements are recited in claim 1.
Claims 4-5 recite additional elements that are not products of nature, but do not integrate the sphere into a practical application and appear to be merely additional extrasolutional elements. Claim 4 recites a sample enclosed by the shell. However, the sample is merely claimed to be present without any claimed effect on the sphere or vice versa. No analysis is claimed to be performed on the sample and no elements for performing any analysis or causing any form of interaction are claimed. Merely citing the presence of any additional, disconnected element does not integrate the product of nature into a practical exception. If the sample does experience any interaction with the spherical shell, that interaction must necessarily be a natural phenomenon, since it occurs merely by being the enclosed by the product of nature. Claim 5 recites a detector. Anything that the bare sphere emits that can be detected is a natural phenomenon, and the detector is merely a means of documentation and therefore extrasolutional. It is noted that the specification states that the detector can be used for imaging a sample by pairing the sphere with an excitation source and using the excited sphere to form a focused field at the sample, which would be a practical application, but claim 5 does not include a sample, an excitation source, or any other elements, simply the sphere and detector.
Claims 6-10 refer wholly to products of nature and natural phenomenon. Claim 6 recites that the shell is missing a portion (not a whole sphere) which again, is consistent with many natural materials. Claim 7 recites the additional element of a particle, which is not specified to be of any particular material, and further specifies the conditions where the permittivity is near the eigen permittivity. Particles can occur in nature, and the eigen permittivity is a natural phenomenon. Claim 8 recites the additional element of an atom or molecule and further specifies the conditions when the permittivity is near an eigen permittivity. Atoms and molecules occur in nature and the eigen permittivity is a natural phenomenon. Claim 9 recites the additional limitation that the shell is tuned to be on resonance when the atom or molecule is at the origin. No method of tuning or elements for tuning are claimed, the claim merely recites that that system is on resonance when the particle is at the origin. Resonance is a natural phenomenon. Claim 10 specifies the radius of the shell is larger than a wavelength, and further specifies the permittivity is close to multiple eigen permittivities. Because the wavelength can be freely chosen, the radii can be set to any value and meet the claim. Even if considering only wavelengths that are commonly found in nature, the vast majority of naturally occurring shells have radii larger than this range (100s of nm for visible light). And again, eigen permittivity is a natural phenomenon. None of these dependent claims integrate the product of nature into a practical application because none make any use of the partial reflection or the permittivity being close to an eigen permittivity.
Claim 11 recites a sphere of material with permittivity close to an eigen permittivity of a wavelength. The wavelength is not limited, so any value could be chosen. Spheres of material are found throughout nature, and all will have a permittivity. Because the wavelength is not limited, it can be freely chosen to make any permittivity an eigen permittivity. Furthermore, the eigen permittivity is a natural phenomenon that arises from boundary conditions imposed by the physical properties of the sphere. This judicial exception is not integrated into a practical application because the sphere is not claimed to be part of any larger system or used in any method. No additional elements are recited.
Claim 15 recites the spherical shell with the additional element of a sphere at the origin, and further specifies that the sphere-shell permittivity is near an eigen permittivity. The sphere-shell construct is a simple nested material configuration that can exist in nature, and eigen permittivity is a natural phenomenon. The addition of the sphere does not integrate the sphere-shell construct into a practical application because the construct is not claimed as part of a larger system or claimed to be used in any method. It is claimed as a simple set of nested materials experiencing a natural phenomenon with no claimed application and no additional elements.
Examination on the Merits
Currently, all claims are rejected as either not being supported by the original disclosure or as not directed to a patentable subject matter (101 rejections based on product of nature or improper process), or both. As such, examination on the merits (examination for novelty and non-obviousness) is not useful at this time. A full examination on the merits will be carried out if and when claims that are properly supported by the original disclosure and directed to patent eligible subject matter are presented.
As examiner noted in her last Office action, it is likely impossible to craft claims that are both fully supported by the original disclosure and directed to patentable subject matter because the original disclosure is lacking in structural details and is essentially an analysis of natural phenomenon (amplification based on resonance with eigen permittivities) with only the barest sketches of ideas for how that natural phenomenon could be used for practical purposes, without an enabling disclosure of how the suggested practical applications could be carried out. If applicant would like to proceed it is strongly suggested that a continuation in part be filed with an actual practical application (for example, imaging, ablating, or optical tweezing) described at a level of detail that can support claims to an apparatus for practicing the application and/or to methods of carrying out the application. Patenting the general concept of amplification via resonance with an eigen permittivity is simply not allowed under U.S.C. 101.
Response to Arguments
Applicant’s arguments, see remarks, filed August 12th, 2025 with respect to the rejections under 112(a) for lack of written description of a gain medium have been fully considered and are persuasive. The relevant rejections have been withdrawn.
Applicant's remaining arguments have been fully considered but they are not persuasive.
Applicant argues that a person having ordinary skill in the art would know that the interfaces are partly transmissive because it is disclosed that light outside the shell forms a field inside the shell, showing that the interfaces allow light into the shell and are therefore at least partly transmissive. Applicant notes that reflection and transmission must total to 1, so if T > 0 then R < 1, and argues that this means that there is partial reflection (0 < R < 1).
This is not convincing for two reasons. First, it discounts the possibility of fully transmissive interfaces. If T > 0, this does mean that R < 1, but it does not mean that R cannot be 0 (fully transmissive). Second, an electric field can be formed inside the shell even if no light enters (fully reflective). Light could be used to polarize the material of the shell for example, or to induce a photocurrent, either of which would cause an electric field to form inside the shell. There are further disclosures of a focal point inside the shell, which could be from light transmitted through, but again other explanations are possible. In fact, the only clear disclosure of a cause of a focal point at the center of a spherical shell is through spontaneous emission without a light source (“There is a strong amplification of the signal. Thus, even spontaneous emission can generate substantial field at the focal spot. When the system is on resonance, the mode is generated without a source.”).
At no point does the original disclosure actually specify that light is even partly transmitted through either interface of a spherical shell, much less partly reflected. Yes, a person having ordinary skill in the art would understand that partly reflective interfaces used in conjunction with a laser would create an electric field inside the shell, but that is not the same as actually disclosing that partly reflecting interfaces are present or that the fields are in fact generated through such means. A person having ordinary skill in the art could imagine many means of generating fields inside a spherical shell. That does not mean the applicant invented those means simply by stating that a field is created inside the shell. Applicant is entitled to a patent on only those means for creating the field that are disclosed in the application and are novel and non-obvious.
The original disclosure must clearly disclose the subject matter of the claimed invention in order to satisfy the written description requirement. This is particularly important when the subject matter is being claimed as the point of novelty. That this apparently crucial piece of information was not in the original disclosure could even be considered concealment of best mode, whether intentional or accidental. However, for examiner to make such a rejection she would need evidence that applicant knew partly reflective interfaces were needed at the time of filing. Based on the evidence of record, it is not clear if the inventor even considered the use of partly reflective interfaces at the time of filing for if this only occurred to the inventor at the time of filing the amendment adding this feature to the claims.
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 ELIZA W OSENBAUGH-STEWART whose telephone number is (571)270-5782. The examiner can normally be reached 10am - 6pm Pacific Time M-F.
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/ELIZA W OSENBAUGH-STEWART/Primary Examiner, Art Unit 2881