NON-FINAL OFFICE ACTION
This non-final office action addresses U.S. Application No. 17/184,452, which is a broadening reissue application of U.S. Application No. 15/612,612 (hereinafter the “612 Application"), entitled SYSTEMS AND METHODS FOR IMPROVING A SPECTRAL RESPONSE CURVE OF A PHOTO SENSOR, which issued as U.S. Patent No. 10,217,779 (hereinafter the “779 Patent") on February 26, 2019.
The status of the claims is as follows:
Claims 21-40 are pending and examined.
Claims 21-40 are rejected.
Table of Contents
I. STATUS OF CLAIMS 4
II. PRIORITY AND RELATED PATENTS 4
III. OBJECTION TO CONSENT 4
IV. OBJECTION TO OWNERSHIP STATEMENT 5
V. CLAIM OBJECTIONS 5
VI. CLAIM REJECTIONS – 35 U.S.C. §112(a) 6
VII. REJECTIONS – 35 U.S.C. §251 6
A. Rejection Based on Original Patent Requirement 7
B. Rejection Based on New Matter 13
VIII. OBJECTION TO CLAIM AMENDMENTS 13
IX. CLAIM REJECTIONS – 35 U.S.C. §112 14
X. CLAIM INTERPRETATION 15
A. Lexicographic Definitions 15
B. Claim Interpretation Under 35 U.S.C. §112(6th ¶) 16
XI. ADDITIONAL CLAIM REJECTIONS – 35 U.S.C. §112 27
XII. COMPACT PROSECUTION 28
XIII. CLAIM REJECTIONS – 35 U.S.C. §102 29
XIV. CLAIM REJECTIONS 35 U.S.C. §103 40
XV. PRIOR OR CONCURRENT PROCEEDINGS 51
XVI. INFORMATION MATERIAL TO PATENTABILITY 51
XVII. CONCLUSION 51
I. STATUS OF CLAIMS
The 779 Patent issued with claims 1-20.
Applicant filed a preliminary amendment on February 24, 2021 (hereinafter the "2021 Preliminary Amendment") along with the filing of the present application. In the 2024 Preliminary Amendment, patent claims 1-20 were cancelled and claims 21-40 were added.
Therefore, claims 21-40 are pending and will be examined.
II. PRIORITY AND RELATED PATENTS
Examiners acknowledge that the present application is a reissue of the 612 Application, now the 779 Patent. Examiners further acknowledge the claim of priority to U.S. Provisional Application No. 63/347,414, filed June 8, 2016.
III. OBJECTION TO CONSENT
The consent filed by the inventor on February 21, 2021 (hereinafter the “2021 Consent”) is objected to because it states “no assignment of the patent is in effect” and further is not signed by an authorized party.
First, following a review of the assignment records for the 779 Patent, Examiners find a first assignment recorded on January 16, 2019, with Deshang Wang as assignor and Focus Universal Inc. as the assignee. See Reel/Frame 048029/0807 showing an assignment signed by Deshang Wang on January 14, 2019 (hereinafter the “2019 Assignment”). Examiners thus find an assignment was in effect for the 779 Patent at the filing of the present reissue application, and further note the statement in the 2021 Consent is not accurate, based on the recordation system of the USPTO.
Second, because an assignment was in place at the time of filing the present reissue application, a written consent must be provided by all assignees of the 779 Patent. See MPEP §1410.02(I). While the inventor has signed the 2021 Consent, it is not clear from the record if the inventor is an authorized party of Focus Universal Inc. to sign the consent.
Applicant is thus required to file a new consent, noting the above statement of ownership via the 2019 Assignment and properly signed by an authorized party of the assignee, Focus Universal Inc.
IV. OBJECTION TO OWNERSHIP STATEMENT
The Statement Under 37 C.F.R. 3.73(c) filed on April 25, 2022 (hereinafter the “2022 3.73 Statement”) is acknowledged but is objected to because it is incomplete. The 2022 3.73 Statement only lists an assignment filed at Reel/Frame 059650/0832, which was filed on April 20, 2022. This statement does not list the full chain of title of the 779 Patent. Specifically, this statement does not include the 2019 Assignment discussed above. Thus, Applicant is required to filed a new statement under 37 C.F.R. §3.73(c) listing the full chain of title of the 779 Patent, including all assignments.
V. CLAIM OBJECTIONS
Claim 32 is objected to because it depends from a cancelled claim, i.e., patent claim 8. Furthermore, because it otherwise identical to claim 31, Examines are unable to determine which claim from which it is intended to depend. Appropriate correction is required in response to this Office action. For purposes of this Office action, Examiners will assume claim 32 depends from the same claim as claim 31.
VI. CLAIM REJECTIONS – 35 U.S.C. §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.
Claims 33-40 are rejected under 35 U.S.C. §112(a) as failing to comply with the written description requirement. The claims contain 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 at the time the application was filed, had possession of the claimed invention. Claims 33-40 recite “providing a circuit board” and “connecting a photo chip …to the circuit board.” However, Examiners find no disclosure in the 779 Patent discussing a circuit board, or attaching any photo chip to such circuit board. Accordingly, Examiners find to now claim such a feature lacks a written description and is new matter.
VII. REJECTIONS – 35 U.S.C. §251
35 U.S.C. §251 Reissue of defective patents.
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
VII.A. Rejection Based on Original Patent Requirement
MPEP §1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP 1412.01 further provides guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent” as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
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(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
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(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
The Fed. Cir. addressed the “original patent” requirement in Antares Pharma, Inc. v. Medac Pharma Inc., 112 USPQ2d 1865 (Fed. Cir. 2014). The court stated that “a reissue claim is for the ‘same invention’ if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification.” Antares, 112 USPQ2d at 1868 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals). Further, the court stated “‘it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.’ Rather, the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 112 USPQ2d at 1871 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals) (citation omitted), or that “the exact embodiment claimed on reissue [be] expressly disclosed in the specification.” Id.
Recently, the Fed. Cir. stated:
Thus, for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[I]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” Indus Chems, 315 US at 676 (emphasis in Forum US). Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 771 F.3d at 1362. Forum US Inc. v. Flow Valve LLC (decided: June 17, 2019).
Claims 21-40 are rejected under 35 U.S.C. §251 because they are not for the same invention as that disclosed as being the invention in the original patent.
Claims 27-35 and 38-40
First for example, Examiners find that each of patent claims 1-20 of the 779 Patent recites six portions of the plurality of diodes, i.e., a first portion having a red filter, a second portion having a green filter, a third portion having a blue filter, a fourth portion having no filter, a fifth portion having spectral photo sensors, and a sixth portion having temperature compensation sensors.
Upon comparison with the patent claims, Examiners find new claims 27-35 and 38-40 in this reissue application do not require any of the first three portions, i.e., a first portion having a red filter, a second portion having a green filter, and a third portion having a blue filter. Thus, claims 27-35 and 38-40 of this reissue application recite a new invention directed to a tuned sensor that does not require at least the first, second and third filter portions of the plurality of photodiodes.
However, Examiners do not find an unequivocal disclosure in the 779 Patent for a tuned sensor that does not have all four filter portions noted above. For example, Examiners find that the 779 Patent discloses only a general single embodiment for its apparatus. Furthermore, in patent claims 1-20, the summary of invention, the disclosure of the invention and the drawings all require that the response curve is created using outputs from each of the first portion of the plurality of photodiodes having a red filter, the second portion having a green filter, the third portion having a blue filter, and a fourth portion having no filter. Examiners are unable to find an embodiment or disclosure that does not require the tuned sensor to have any portions less than these four portions, particularly, without the first, second, third and fourth portions.
Furthermore, Examiners find these portions of the plurality of photodiodes having each of the red, green and blue filters are important and critical to the invention as they provide the respective and required outputs to determine appropriate coefficients that can be used with the outputs to create the spectral curve. See 779 Patent at col. 5, line 58 to col. 6, line 12.
As noted above, the original patent requirement puts a limit on the manner to which reissue applicants can broaden the patent claims in reissue. Specifically, claims that are broadened in reissue that cover a new scope/class of invention must have an unequivocal disclosure on the face of the original patent for that new class of invention as a separate invention. Following a careful review of claims 27-35 and 38-40 in this reissue application with respect to the patent claims as patented in the 779 Patent, Examiners find the new scope of claims 27-35 and 38-40 covers a new invention not unequivocally disclosed on the face the 779 Patent, i.e., Examiners do not find an unequivocal disclosure or a discussion of the new invention of providing the tuned sensor that does not have the first portion having the red filter, the second portion having the green filter and the third portion having the blue filter. Rather Examiners find that such portions of the plurality of photodiodes critical and required features of the invention to determine the spectral curve as stated in the 779 Patent. Thus, Examiners conclude claims 27-35 and 38-40 presented in this reissue application fail the original patent requirement and thus are rejected under 35 U.S.C. §251.
Claims 21, 27, 29, 31, 32, 33 and 38-40
Again, Examiners find that each of patent claims 1-20 of the 779 Patent recites six portions of the plurality of diodes, i.e., a first portion having a red filter, a second portion having a green filter, a third portion having a blue filter, a fourth portion having no filter, a fifth portion having spectral photo sensors, and a sixth portion having temperature compensation sensors.
Upon comparison with the patent claims, Examiners find new claims 21, 27, 29, 31, 32, 33 and 38-40 in this reissue application do not require a portion of the plurality of photodiodes having no filter. Thus, claims 21, 27, 29, 31, 32, 33 and 38-40 of this reissue application recite a new invention directed to a tuned sensor that does not require the fourth portion of the plurality of photodiodes that has no filter.
However, Examiners do not find an unequivocal disclosure in the 779 Patent for a tuned sensor having a no filter portion. For example, Examiners find that the 779 Patent discloses only a general single embodiment for its apparatus. Furthermore, in patent claims 1-20, the summary of invention, the disclosure of the invention all require that the spectral response curve is created using outputs from each of the first portion of the plurality of photodiodes having a red filter, the second portion having a green filter, the third portion having a blue filter, and a fourth portion having no filter. Examiners are unable to find an embodiment or disclosure that does not require the tuned sensor to have any portions less than these four portions, particularly, without the first, second and third portions.
Furthermore, Examiners find these portions of the plurality of photodiodes having each of the red, green, blue and no filters are important and critical to the invention as they provide the respective and required outputs to determine appropriate coefficients that can be used with the outputs to create the spectral curve. See 779 Patent at col. 5, line 58 to col. 6, line 12.
As noted above, the original patent requirement puts a limit on the manner to which reissue applicants can broaden the patent claims in reissue. Specifically, claims that are broadened in reissue that cover a new scope/class of invention must have an unequivocal disclosure on the face of the original patent for that new class of invention as a separate invention. Following a careful review of claims 21, 27, 29, 31, 32, 33 and 38-40 in this reissue application with respect to the patent claims as patented in the 779 Patent, Examiners find the new scope of claims 21, 27, 29, 31, 32, 33 and 38-40 covers a new invention not unequivocally disclosed on the face the 779 Patent, i.e., Examiners do not find an unequivocal disclosure or a discussion of the new invention of providing the tuned sensor that does not have the fourth portion having no filter. Rather Examiners find that all four such portions of the plurality of photodiodes critical and required features of the invention to determine the spectral curve as stated in the 779 Patent. Thus, Examiners conclude claims 21, 27, 29, 31, 32, 33 and 38-40 presented in this reissue application fail the original patent requirement and thus are rejected under 35 U.S.C. §251.
Examiners further find this issue in this reissue application is analogous to the recent Federal Circuit decision in Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed. Cir. 2019). In Forum US, the original patent claims were drawn to a workpiece having a body member and a plurality of arbors (arbors circled in FIGS. 4 and 5 at issue):
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Forum US, 926 F.3d at 1348-49. In reissue, patentee broadened the claims to simply remove the requirement as to arbors. Id. at 1349. The Federal Circuit determined that the new claims did not comply with the original patent requirement of section 251 because the face of the patent did not disclose any arbor-less embodiment, and the abstract, summary of invention, and all disclosed embodiments including arbors. Id. at 1352. The Court concluded that the specification did not clearly and unequivocally disclose an embodiment without arbors, thus the original patent requirement was violated by broadening the claims to no longer require arbors. Id. Similarly, the 779 Patent here does not clearly and unequivocally disclose a tuned sensor having any less than the first portion of the plurality of photodiodes having a red filter, the second portion having a green filter, the third portion having a blue filter, and a fourth portion having no filter. Thus, to broaden the claims to permit Applicant to simply delete these four portions in the claims runs afoul of the original patent requirement in the same manner as at issue in Forum.
VII.B. Rejection Based on New Matter
Claims 33-40 and this application as a whole are rejected under 35 U.S.C. §251 as contain new matter. The nature of the new matter is discussed above in the rejection under 35 U.S.C. §112(a).
VIII. OBJECTION TO CLAIM AMENDMENTS
37 C.F.R. 1.173 Reissue specification, drawings, and amendments.
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
(d) Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), and a "Sequence Listing XML" (§ 1.831(a) ) upon filing or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined.
(g) Amendments made relative to the patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.
The amendments to the claims in the 2021 Preliminary Amendment are objected to because they are improper under the rules and guidance provided above. Specifically, since claims 21-40 are new with respect to the original patent, i.e., the 779 Patent, the claims should be fully underlined, claim numbers, claim identifiers and text. See MPEP §1453 (V)(C). Appropriate correction is required in response to this Office Action.
Examiner further object to the claim amendments in the 2021 Preliminary Amendment because Applicant has not provided a proper explanation of support for the claim changes. As provided above in the original patent requirement rejections, Examiners are unable to find unequivocal support for the deletion of the first, second, third and fourth portions of the plurality of photodiodes from the patent claims. Further, Examiners find Applicant in the remarks to the 2024 Preliminary Amendment has not provided any explanation of support for such deletions in the claims. Appropriate correction is required in response to this Office action.
IX. CLAIM REJECTIONS – 35 U.S.C. §112
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.
Claims 22-26 are rejected under 35 U.S.C. §112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Examiners first find that claim 21 introduces calculating “a final output” using “a predetermined function” based on three inputs for providing “a spectral response curve.” Furthermore, claim 22 recites calculating “a final output” using “a predetermined function” based on four inputs for providing “a spectral response curve.” Thus, Examiners find these phrases are introduced twice (and a third time in claim 24) and thus Examiners find the claims are unclear whether they are all the same phrases or different. For example, is the same “output” generated in claims 21 and 22 when different inputs are used (three instead of four {or in claim 24, five instead of four or three})? Are the “predetermined functions” the same in claims 21 and 22 (and 24)? Examiners find claims 22-26 are unclear as to whether they require one or more “final outputs,” one or more “predetermined functions” and one or more “spectral response curves” and thus conclude the claims are indefinite.
X. CLAIM INTERPRETATION
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP §2111, MPEP §2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP §2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01(II). Therefore, unless one of the exceptions applies below, Examiners will interpret the limitations of the pending and examined claims using the broadest reasonable interpretation.
A. Lexicographic Definitions
A first exception to the prohibition of reading limitations from the specification into the claims is when the Applicant for patent has provided a lexicographic definition for the term. See MPEP §2111.01(IV). Following an independent review of the claims in view of the specification herein, Examiners find that Patent Owner has not provided any lexicographic definitions related to claim terms with any reasonable clarity, deliberateness and precision.
B. Claim Interpretation Under 35 U.S.C. §112(6th ¶)
A second exception to the prohibition of reading limitations from the specification into the claims is when the claimed feature is written as a means-plus-function or a step-plus-function. See 35 U.S.C. §112(6th ¶) and MPEP §2181-2183.
As noted in Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015), there is a presumption that claim terms with the word “means” invoke §112(f) and that claim terms without the word “means” do not. Williamson, 792 F.3d at 1348. This presumption is rebuttable if a challenger demonstrates that a claim term either fails to “recite sufficiently definite structure” (WIT1) or else recites “function without reciting sufficient structure for performing that function” (WIT2) Williamson, 792 F.3d at 1348. WIT1 and WIT2 are in the alternative and thus a challenger need only demonstrate one of WIT1 or WIT2 for the claims to invoke §112(f). The presumption against means-plus-function claiming is not “strong” and that a challenger need not show that the limitation is essentially devoid of anything that can be construed as structure; rather a challenger need only show that the structure is not sufficient for performing the claimed function. See Id. Sufficient structure exists when the claim language specifies the exact structure that performs the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure. See TriMed, Inc. v. Stryker Corp. 4514 F.3d 1256, 1259 (Fed. Cir. 2008).
After a claimed phrase has been shown to invoke 35 U.S.C. §112(f), as found above, the next step is to determine the corresponding structure or material as described in the specification for performing the recited function. See MPEP §2181(II) and Williamson, 792 F.3d at 1351.
Examiners find herein that claims 21-40 include one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. §112 (6th ¶) because the claim limitations use a generic placeholder 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. Each such limitation will be discussed in turn as follows.
B1. FL #1: “processor…” (Claims 21-26)
A first means-plus-function phrase is recited in claim 21 (and included in each of dependent claims 22-26), which recites “a processor…” or hereinafter FL #1. Examiners determine herein that FL #1 meets the test of Williamson as discussed above and thus will be interpreted as a means-plus-function limitation under 35 U.S.C. §112(f).
The Examiners find that FL #1 in claim 21 recites:
a processor electrically connected to the plurality of photodiodes;
wherein the processor calculates a final output based on a predetermined function, the predetermined function using data outputs from the first portion, the second portion, and the third portion of the plurality of photodiodes as inputs, the predetermined function including at least one predetermined coefficient for each of the outputs of the first portion, the second portion, and the third portion, the at least one predetermined coefficient for each of the outputs of the first portion, the second portion, and the third portion selected to provide a spectral response curve of the photo sensor that approximates an ideal spectral response curve.
(B1)(a) Claim Phrase FL #1 Functional
Examiners find that FL #1 is functional. While this claim limitation recites a processor, the claim limits this processor based on in functionality rather than its underlying structures. For example, FL #1 recites the functionality of the processor to “calculate[s] a final output based on a predetermined function, the predetermined function using data outputs from the first portion, the second portion, and the third portion of the plurality of photodiodes as inputs, the predetermined function including at least one predetermined coefficient for each of the outputs of the first portion, the second portion, and the third portion, the at least one predetermined coefficient for each of the outputs of the first portion, the second portion, and the third portion selected to provide a spectral response curve of the photo sensor that approximates an ideal spectral response curve.” However, Examiners do not find any further limitation to the structure of the processor or any limitations of the nature of the “predetermined function.” Thus, Examiners further do not find the algorithm for performing the function of the processor is sufficiently manifested in FL #1.
Examiners further note that because nothing in the written description contradicts the plain language describing this function, the functions within FL #1 will have their ordinary and accustomed meaning.
(B1)(b) Claim Phrase FL #1 Invokes
FL #1 invokes 35 U.S.C. §112(f) because "means ... for" type language is recited. Examiners first find that “processor” is a generic placeholder or nonce term equivalent to “means” because while the term “processor” does imply some structure, it does not convey any specific structure and/or is an ambiguous structure. Examiners further note that the specification of the present specification does not define “processor” and thus the specification of the present specification does not impart or disclose any specific structure for the phrase.
Processor is definable as (1) a data processor, (2) a system or mechanism that accepts a program as input, prepares it for execution and executes the process so defined with data to produce results or (3) a computer program. See IEEE 100 The Authoritative Dictionary of IEEE Standards Terms, 7th Ed. 2000. Processor is also definable as (1) a computer, (2) a central processing unit or (3) a program that translates another program into a form acceptable by the computer being used. See American Heritage Dictionary of the English Language 4th Ed., 2006. Accordingly, Examiners find processor can be defined or interpretable as either the entire computer, a processing portion of a computer or simply a computer program. Accordingly, Examiners find processor implies no specific structure.
In view of the forgoing findings, Examiners find that while processor implies some generic structure, such as a generic computer, a processing portion of a computer or simply a computer program, Examiners find nothing in the specification, prosecution history or the prior art to construe “processor…” in FL #1 as the name of a sufficiently definite structure for performing the functions recited in FL #1 so as to take the overall claim limitation out of the ambit of §112(6th ¶). See Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015). Rather Examiners find that processor is merely used in a generic sense as a nonce term equivalent to means as a generic base structure which has a special configuration or programming to perform the special function recited in FL #1. Accordingly, Examiners do not find that the simple use of processor alone is a sufficient for performing the claimed function recited in FL #1 and thus conclude FL #1 invokes interpretation under 35 U.S.C. §112(f).
(B1)(c) Corresponding Structure
After a claimed phrase has been shown to invoke 35 U.S.C. §112(f), as found above, the next step is to determine the corresponding structure or material as described in the specification for performing the recited function. See MPEP §2181(II).
Based on a review of the common definitions of processor as discussed above and the specific functions recited in FL #1, Examiners find that a special purpose processor would be required to perform the recited functions, i.e., a specifical purpose computer, a specially programmed processing portion of a computer or a system or mechanism that accepts a program as input, prepares it for execution and executes the process so defined with data to produce results. Examiners do not find the specification of the 779 Patent supports an interpretation that the processor is merely a program.
Additionally, the functional aspects of the processor of FL #1 are discussed at col. 5, line 58 to col. 6, line 12 of the 779 Patent:
Fitting requires a parametric model that relates the response data to the predictor data with one or more coefficients. The result of the fitting process is an estimate of the model coefficients. For example, curve 12, 14, 16, 18 in FIG. 1 are used as basic functions to fit the desired ideal spectral response curve 22 in the present invention. Generally, the desired spectral response curve is a function of wavelength and is a constant in the present example. The fitted spectral response curve can be written as a known function of curve 12, 14, 16 and 18, for example, a polynomial expansion of curves 12, 14, 16 and 18. The higher order of polynomial, the better the accuracy. However, the microprocessor 40 used in FIG. 4 may not support sophisticated calculations, a simpler fitting function form such as a linear form may have to be used. There are many methods such as linear or nonlinear least square fitting or commercially available software which might use to estimate the coefficients. Once obtained, the appropriate coefficients are programmed into the microprocessor 40 in FIG. 4, and may be used to perform light measurements. In some embodiments, the sensor array may be used as a quantum sensor for measurement of PPFD of PAR.
Based on this portion of the 779 Patent, Examiners do not find a specific “predetermined function.” Furthermore, other than merely repeating the “predetermined function,” the specification does not provide a disclosure as to its nature as how the inputs are combined to provide this “final output.” Accordingly, Examiners are unable to clearly link the “predetermined function” as claimed to any specified equation/algorithm provided in the specification of the 779 Patent. Specifically, if this function is “predetermined,” then clearly it would be known and should be disclosed in the specification of the 779 Patent.
Nevertheless, as noted in 35 U.S.C. §112(f), a limitation invoking this statute will be limited to these corresponding structures and equivalents thereof as disclosed in the specification. Thus, Examiners will interpret FL #1 as disclosed in the specification, merely a system that the inputs into the processor are merely combined according to some function, but no specific function. In view of the forgoing, Examiners find the specification links FL #1 to the corresponding structures of a computer comprising a central processing unit and a memory with software instruction or a specially programmed processing unit or a system or mechanism that accepts a program as input, prepares it for execution and executes the process so defined with data to produce results, wherein the computer or the programmed processor or system embody an algorithm for receiving the inputs from the first, second and third portions and calculating a final output based on some undisclosed function using a coefficient.
Regarding claim 22, Examiner find further functionality of the processor of FL #1, but not any further structures and thus find FL #1 in claim 22 invokes interpretation under 35 U.S.C. §112(f) for the same reasons as for FL #1 in claim 21. Examiners further find FL #1 in claim 22 will have the same general corresponding structures, or lack thereof, as FL #1 in claim 21, except that FL #1 in claim 22 will use 4 inputs from the four portions of the plurality of diodes.
Regarding claim 24, Examiner find further functionality of the processor of FL #1, but not any further structures and thus find FL #1 in claim 24 invokes interpretation under 35 U.S.C. §112(f) for the same reasons as for FL #1 in claim 24. However, Examiners are unable to find any sufficient corresponding structures for claim 24. First, examiners are unable to find a disclosure of the use the inputs of five portions of the plurality of diodes to calculate the final output based on the predetermined function. The quoted portion of the 779 Patent above only discloses using four inputs, from the first (red filtered), second (green filtered), third portions (blue filtered) and fourth portions (no filtered) of the plurality of diodes. Particularly Examiners do not find a fifth plurality having temperature compensation sensors, in addition to the other photodiodes. Examiners find no disclosure or discussion of using the fifth portion in the calculation and thus Examiners do not find the 779 Patent clearly links the functions of FL #1 in claim 24 to any sufficient corresponding structures.
B2. FL #2: “microcontroller…” (Claims 27-40)
A further means-plus-function phrase is recited in claims 27 and 33 (and included in each of dependent claims 28-32 and 34-40), which recites a “microcontroller…” or hereinafter FL #2. Specifically, Examiners find each of claims 27 and 33 recite a microcontroller and functions associated with the microcontroller. In claim 33, Examiners find the microcontroller is a nested structure recited within a method claim. Examiners determine herein that FL #2 meets the test of Williamson as discussed above and thus will be interpreted as a means-plus-function limitation under 35 U.S.C. §112(f).
The Examiners find that FL #2 in claim 27 recites:
the microcontroller receiving the output data and using the output data in a predetermined function, the predetermined function including at least one predetermined coefficient for the output data of each of the at least one photodiode, the at least one predetermined coefficient selected to provide a spectral response curve of the photo sensor that approximates an ideal spectral response curve.
Similarly, Examiners find the FL #2 in claim 33 recites:
the microcontroller receiving the output data and using the output data as inputs to a predetermined function, the predetermined function including one or more predetermined coefficients corresponding to the output data of each of the at least one photodiode, the one or more predetermined coefficients selected to provide a spectral response curve of the photo sensor that approximates an ideal spectral response curve.
(B2)(a) Claim Phrase FL #2 Functional
Examiners find that FL #12 is functional. While this claim limitation recites a microcontroller, the claim limits this microcontroller based on in functionality rather than its underlying structures. For example, FL #2 recites the functionality of the controller to using the output data in a predetermined function, the predetermined function including at least one predetermined coefficient for the output data of each of the at least one photodiode, the at least one predetermined coefficient selected to provide a spectral response curve of the photo sensor that approximates an ideal spectral response curve. However, Examiners do not find any further limitation to the structure of the processor or any limitations of the nature of the “predetermined function.” Thus, Examiners further do not find the algorithm for performing the function of the processor is sufficiently manifested in FL #2. Rather Examiners find the microcontroller is generically recited in association with an undefined function.
Examiners further note that because nothing in the written description contradicts the plain language describing this function, the functions within FL #2 will have their ordinary and accustomed meaning.
(B2)(b) Claim Phrase FL #1 Invokes
FL #2 meets invokes 35 U.S.C. §112(f) because "means ... for" type language is recited. Examiners first find that “microcontroller” is a generic placeholder or nonce term equivalent to “means” because while the term “processor” does imply some structure, it does not convey a specific structures for performing the recited functions in FL #2.
Microcontroller is definable as a special-purpose, single-chip computer designed and built to handle a particular, narrowly defined task. In addition to the central processing unit (CPU), a microcontroller usually contains its own memory, input/output channels (ports), and timers. When part of a larger piece of equipment, such as a car or a home appliance, a microcontroller is an embedded system. See Microsoft Computer Dictionaly, 5th Ed. 2002. Accordingly, Examiners find microcontroller can be defined as a special-purpose, single-chip computer and is built to handle a task. However, for a micro-controller to perform the specific task, it must be structured via special programming to perform that task.
However, FL #2 does not sufficiently manifest an algorithm or any special programming. While FL #2 does recite the intended function of providing a spectral response curve, FL #2 does not recite the steps required to provide such. Furthermore, the basis for providing the curve, i.e., the “predetermined function” is not defined or described in any manner within the FL #2.
In view of the forgoing findings, Examiners find that while microcontroller implies some generic structure, Examiners find nothing in the specification, prosecution history or the prior art to construe “microcontroller” in FL #2 as the name of a sufficiently definite structure for performing the functions recited in FL #2 so as to take the overall claim limitation out of the ambit of §112(6th ¶). See Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015). Rather Examiners find that microcontroller is merely used in a generic sense as a nonce term equivalent to means as a generic base structure which has a special configuration or programming to perform the special function recited in FL #2. Accordingly, Examiners do not find that the simple use of microcontroller alone is a sufficient for performing the claimed function recited in FL #2 and thus conclude FL #2 invokes interpretation under 35 U.S.C. §112(f).
(B2)(c) Corresponding Structure
After a claimed phrase has been shown to invoke 35 U.S.C. §112(f), as found above, the next step is to determine the corresponding structure or material as described in the specification for performing the recited function. See MPEP §2181(II).
Based on a review of the common definitions of processor as discussed above and the specific functions recited in FL #2, Examiners find that the 779 Patent interchanges microcontroller and processor for performing the functions of the recited photo sensor. Nevertheless, microcontroller as defined above, has a base structure of being a computer and further processor as defined above, can be a specifical purpose computer, a specially programmed processing portion of a computer or a system or mechanism that accepts a program as input, prepares it for execution and executes the process so defined with data to produce results.
Additionally, the functional aspects of the microcontroller of FL #2 are discussed at col. 5, line 58 to col. 6, line 12 of the 779 Patent:
Fitting requires a parametric model that relates the response data to the predictor data with one or more coefficients. The result of the fitting process is an estimate of the model coefficients. For example, curve 12, 14, 16, 18 in FIG. 1 are used as basic functions to fit the desired ideal spectral response curve 22 in the present invention. Generally, the desired spectral response curve is a function of wavelength and is a constant in the present example. The fitted spectral response curve can be written as a known function of curve 12, 14, 16 and 18, for example, a polynomial expansion of curves 12, 14, 16 and 18. The higher order of polynomial, the better the accuracy. However, the microprocessor 40 used in FIG. 4 may not support sophisticated calculations, a simpler fitting function form such as a linear form may have to be used. There are many methods such as linear or nonlinear least square fitting or commercially available software which might use to estimate the coefficients. Once obtained, the appropriate coefficients are programmed into the microprocessor 40 in FIG. 4, and may be used to perform light measurements. In some embodiments, the sensor array may be used as a quantum sensor for measurement of PPFD of PAR.
Based on this portion of the 779 Patent, Examiners do not find a specific “predetermined function.” Furthermore, other than merely repeating the “predetermined function,” the specification does not provide a disclosure as to its nature as how the inputs are combined to provide this “final output.” Accordingly, Examiners are unable to clearly link the “predetermined function” as claimed to any specified equation/algorithm provided in the specification of the 779 Patent. Specifically, if this function is “predetermined,” then clearly it would be known and should be disclosed in the specification of the 779 Patent.
Nevertheless, as noted in 35 U.S.C. §112(f), a limitation invoking this statute will be limited to these corresponding structures and equivalents thereof as disclosed in the specification. Thus, Examiners will interpret FL #2 as disclosed in the specification, merely a system that the inputs into the processor are merely combined according to some function, but no specific function. In view of the forgoing, Examiners find the specification links FL #2 to the corresponding structures of a computer comprising a central processing unit and a memory with software instruction or a specially programmed processing unit or a system or mechanism that accepts a program as input, prepares it for execution and executes the process so defined with data to produce results, wherein the computer or the programmed processor or system embody an algorithm for receiving the inputs from the first, second and third portions and calculating a final output based on some undisclosed function using a coefficient.
XI. ADDITIONAL CLAIM REJECTIONS – 35 U.S.C. §112
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.
Claim limitations FL #1 and FL #2 invokes 35 U.S.C. §112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. First, Examiners find the specification of the 779 Patent fails to disclose what is the “predetermined function” that forms a basis for calculation of the final output as required in FL #1 in claims 21-26. Furthermore, Examiners additionally do not find the specification of the 779 Patent discloses using inputs from the first to fifth portions for calculating the final output as required in FL #1 in claims 24 and 26. Finally, Examiners find the specification of the 779 Patent fails to disclose what is the “predetermined function” that forms a basis to provide the spectral curve as required in FL #2 in claims 27-40. Therefore, claims 21-40 having FL #1 and FL #2 are indefinite and are rejected under 35 U.S.C. §112(b).
XII. COMPACT PROSECUTION
The Examiners find that because claims 21-40 are indefinite under 35 U.S.C. §112(B) as outlined above, it is impossible to properly construe claim scope at this time. See Honeywell International Inc. v. ITC, 68 USPQ2d 1023, 1030 (Fed. Cir. 2003) (“Because the claims are indefinite, the claims, by definition, cannot be construed.”). However, in accordance with MPEP §2173.06 and the USPTO’s policy of trying to advance prosecution by providing art rejections even though these claims are indefinite, the claims are construed and the art is applied as much as practically possible in the following art rejections. Thus, the art rejections below are provided as notice as to the state of the art should Applicant overcome the indefiniteness rejections.
XIII. CLAIM REJECTIONS – 35 U.S.C. §102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. §102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
XIII.A. Anticipation Rejections Applying Bishop
Claims 21-23 and 27-30 are rejected under 35 U.S.C. §102(a)(1) or (a)(2) as being anticipated by U.S. Patent Application No. 2019/0297280 to Todd Bishop et al. (hereinafter “Bishop”).
Regarding claim 21, Bishop discloses:
A tuned sensor for measuring photosynthetically active radiation, comprising:
See Bishop FIGS. 6 and 7, reprinted below.
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a plurality of photodiodes;
See Bishop FIGS. 6 and 7 above and ¶0049 wherein pixel in the grid comprises a photodiode and a filter.
a first portion of the plurality of photodiodes having a red filter; a second portion of the plurality of photodiodes having a green filter; and a third portion of the plurality of photodiodes having a blue filter;
See Bishop ¶0077:
FIG. 6 shows another exemplary embodiment of an array of photodetector pixels. The pixels of the array are grouped symmetrically into unit cells 19. A unit cell 18 comprises a clear, red, green, and blue pixel 10, 12, 14, 16 and is repeated several times to form the whole pixel array. The unit cell 19 can be considered a color matrix. Other color matrices are possible and the array is not restricted to clear, red, green, and blue pixels. Examples include RGB or CYGM matrices (Cyan, Yellow, Green, and Magenta) and variants thereof. The symmetry in FIG. 6 renders the array less direction dependent. For example, light incident from different angles illuminates the same or a similar amount of pixels.
Thus, Bishop discloses at least that pixels 10 having clear (or no) filter, pixels 12 have red filters, pixels 14 have green filters and pixels 16 have blue filters.
a processor electrically connected to the plurality of photodiodes; wherein the processor calculates a final output based on a predetermined function, the predetermined function using data outputs from the first portion, the second portion, and the third portion of the plurality of photodiodes as inputs, the predetermined function including at least one predetermined coefficient for each of the outputs of the first portion, the second portion, and the third po