DETAILED ACTION
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 .
Claim Status
Claims 1-11 are pending.
Claims 7-11 are withdrawn.
Claim Interpretation
COMW reflectors are understood to refer to PgPub para 30, which explains “a reflector can be defined by a relatively high intensity region of a blue-detuned EMR field or a relatively low intensity region or a dark region of a red-detuned EMR field. Atoms moving against or up the gradient can thus be reflected or split by the gradient. Thus, such optical gradients are used to define the COMW mirrors and COMW splitters in embodiments of the invention.
A resonator cavity in the context of the instant invention describes the COMW path between two COMW reflectors, i.e., it is not a structure, but rather the space between two COMW reflectors.
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 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:
“electromagnetic radiation (EMR) generator for generating a resonator EMR field that is detuned with respect to a resonance of the COMW, the resonator EMR field defining a reflector set of COMW reflectors collectively defining a resonator cavity with a closed-loop path for a COMW input to the resonator cavity … greater than the first intensity.”
Note that each of the elements in the above limitation, e.g. “COMW reflectors;” “a resonator cavity with a closed-loop path for the COMW;”, etc., are electromagnetic fields or spaces defined by electromagnetic fields. That is to say that the EMR generator of claim 1 creates all of the elements of claim 1.
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
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.
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 1-6 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.
Claims 1-6 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 1-6 are further 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. Claim limitation “electromagnetic radiation (EMR) generator for generating a resonator EMR field…” 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 to clearly link the structure, material, or acts to the function. Rather, the disclosure describes “Gaussian-shaped laser beams” at PgPub para 48 and “gaussian laser beam “knives”” at PgPub para 6. Such a minimal disclosure provides no guidance as to wavelength, optics, size, power, or any other physical/technical/functional feature that would allow a laser to perform the numerous functions recited in claims 1-6. 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;
(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.
Response to Arguments
Applicant's arguments filed 1/27/26 have been fully considered but they are not persuasive.
Applicant argues that the claimed “EMR generator” should not be interpreted under 35 USC 112(f) because a person of ordinary skill in the art “would appreciate that only EMR generators configured in particular ways are able to define coherent oscillatory matterwave reflectors. Moreover, only EMR generators configured in particular ways are able to even define coherent oscillatory matterwave reflectors with a particular arrangement that would define a resonator cavity.” This is not persuasive. As noted by the applicant, Williamson lays out the appropriate standard, to wit, “whether the words of the claim are understood by persons of ordinary skill in the art to have sufficiently definite meaning as the name of the structure.” However, applicant’s arguments fail to mention any particular structure that one of ordinary skill in the art could possibly understand to achieve the functions at issue. Applicant’s arguments make it clear that an EMR generator is only understood by one of ordinary skill int the art in the context of the functions associated therewith, but does not offer a single example of what EMR generator might be appropriate for achieving the stated functions. For context, let us consider the EMR sources generally, as it is clear that at least part of the function of the EMR generator is providing EMR light. Such EMR sources include light bulbs producing visible EMR, lasers, free electron lasers, radio antennas, synchrotrons, black box IR sources, the sun, etc. The question is, which of these extremely generic EMR sources, and in what arrangements with what additional components, can achieve the stated function of the claimed EMR generator. Since the applicant does not provide an example of the structure of an EMR generator commensurate in scope with the instant claims, and there is no evidence of record that EMR generators for providing, e.g., COMW reflectors, are a term of art that would be understood by one of ordinary skill, it is clear that the EMR generator at issue does not have sufficiently definite meaning as the name of the structure. As such, the claim interpretation under 35 USC 112(f) must be maintained.
Applicant argues that claims 1-6 should not be rejected under 35 USC 112(a). This is not persuasive. Where, as here, a claim limitation interpreted under 35 USC 112(f) is not supported by corresponding structure, material, or acts in the specification, a 35 USC 112(a) rejection for lacking adequate written description in necessary because the specification does not describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See MPEP 2185. The applicant points to further functions and effects of the EMR generator to show possession of the EMR generator. This is insufficient. Because a 35 USC 112(f) limitation is at issue, and because the limitation is describing some kind of structure, the original disclosure must demonstrate possession by specifying the structures that yield such functions.
Applicant argues that because the generator at issue is not a 35 USC 112(f) limitation, it is not indefinite. This is not persuasive for the reasons above.
Applicant argues that even if the generator is interpreted under 35 USC 112(f), it is still not indefinite because there is sufficient written description. This is not persuasive for the reasons above.
Applicant argues that “page 6 [of the office action[ appears to suggest that the claims may also be indefinite because “the claim recites a function that has no limits.” The test for indefiniteness is whether the boundaries of the claimed subject matter are clearly delineated, not how broad the claims might be. This is not persuasive. The rejection at issue clearly stated that it was rejection under 35 USC 112(a), not an indefiniteness rejection. The rejection specifically states, “Claims 1-6 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function.” This rejection is a direct reference to the language of 35 USC 112(f), which states that “An element in a claim for a combination may be expressed as a means or step for performing a specified function…” Since applicant only provided a single means, i.e. the EMR generator, the claim does not recite a combination, and therefore cannot invoke 35 USC 112(f). Thus, the problem at hand is that the single means claim covers every conceivable means for achieving the stated result, while the specification discloses at most only those means known to the inventor. In re Hyatt, 708 F.2d 712, 218 USPQ 195 (Fed. Cir. 1983). See also MPEP 2181(V).
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 WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST.
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WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881