DETAILED ACTION
Response to Remarks
1. Applicant’s remarks (see pg. 10), filed 11/24/2025, regarding claim interpretation of claim 19 under 35 U.S.C 112(f) corresponding to the indefiniteness rejection under 5 U.S.C 112(b) have been fully considered but they are not persuasive.
Applicant appears to make arguments that the claims do not invoke a 35 U.S.C. 112 (f) interpretation and that the term " an electromagnetic control signal source…" is not a nonce term and has a definite meaning as a name for a structure (pg. 10 of Remarks). However, Applicant’s arguments are not germane to the issue at hand and are directed to ‘qubit controller’ structures, whereas the electromagnetic control signal source as recited in the claim does not appear to be a well-known term of the art nor would one of ordinary skill in the art equate the recited structure to correspond to a qubit controller as alleged by Applicant. Applicant further asserts that the skilled person would easily be able to find the corresponding structure through a simple Google search. Applicant is respectfully reminded that arguments of counsel cannot take the place of evidence in the record. See In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). In actuality, such a google search further demonstrates that the recited term does not correspond to a sufficient structure to a person of ordinary skill in the art, but rather rendering innumerable results corresponding to a vast number of applications depending on which portion of the electromagnetic spectrum the signals corresponds to. Thus, it is unclear what relevance the example structure (cited by Applicant) of the SHFQC+ has to the limitation at hand. As stated previously (see pgs. 5-7 of Non-Final Office Action on 07/23/2025), Examiner notes that “an electromagnetic control signal source” is a generic placeholder (nonce term) not modified by sufficient structure, material, or acts for achieving the specified function. Furthermore, the Examiner maintains that the generic placeholder is modified by functional language which serves to further describe the recited functions of “emitting” performed by the claimed an electromagnetic control signal source. See MPEP § 2181 Section I, Parts A-C. See also Mas-Hamilton, 156 F.3d at 1213, 48 USPQ2d at 1016. Applicant has failed to provide any evidence beyond mere conclusory statements that said signal source possesses any generally understood structural meaning in the art or connotate sufficient structure to a person of ordinary skill in the art that would preclude application of 35 U.S.C. 112, sixth paragraph. Applicant has not disputed with sufficient evidence the Examiner’s findings of indefiniteness under 35 U.S.C. 112(b) regarding said limitation invoking 112(f), wherein 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. Thus, the Examiner maintains that Applicant’s arguments are insufficient to overcome the claim limitations invoking 35 U.S.C. 112 (f), since the claimed generic placeholder(s) remain(s) unmodified by sufficient structure(s), material(s) or acts for achieving the specified function(s).
2. Applicant’s remarks (see pgs. 10-13) regarding the prior art rejection of the claims have been fully considered but they are not persuasive.
Applicant appears to make arguments that “The Halbach array is not integrated with a base chip and does not generate or contribute toward the magnetic field at the defect clusters…permanent magnet in Smits is for polarization of the analyte and not to generate or contribute toward the magnetic field at the defect clusters” (pgs. 10-11). However, the Examiner respectfully disagrees and notes that the present language only requires that the magnetic apparatus to be integrated with the base chip (see claim 1 reciting “magnetic apparatus integrated with the base chip, comprising a permanent magnet material and configured to generate or contribute toward the magnetic field at the respective colour centre of each defect cluster”), and does not require that the permanent magnet be physically connected to the any portion of the base chip. Applicant is respectfully reminded that ‘Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims’. See MPEP § 2145 Section VI, citing In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993) and Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571-72, 7 USPQ2d 1057, 1064-1065 (Fed. Cir.), cert. denied, 488 U.S. 892 (1988). In the present case, Smits discloses a magnetic apparatus comprising the analyte with the Halbach array, wherein the Halbach array constitutes a permanent magnet. The analyte is polarized via the Halbach array and is connected to the base chip, as disclosed by Smits (see FIGS. 1B-E showing magnetic apparatus integrated with base chip via analyte; Supp. SV section: “The top surface of the microfluidic chips used in this study consisted of a 1-mm-thick microscope slide…Two holes (an inlet and outlet), 0.5 mm in diameter, were then drilled into the slide using a diamond-tipped drill bit. These inlet/outlet holes were used to deliver fluid analytes to and from the chip.”; Supp. SVII section: tubing went into the Halbach array and was wound in several loops before exiting. The total volume of fluid in the Halbach was ~0.1 mL. From the Halbach, ~35 uL of tubing ran to the microfluidic chip housing the diamond). Furthermore, contrary to Applicant’s assertion, Smits also reads on the claimed limitation directed to the magnetic fields. Firstly, it is commonly known in the art of nuclear magnetic resonance spectroscopy that Halbach arrays generate nuclear spin polarization, which in turn produce ac magnetic fields along the NV axis [colour centre] of each defect cluster. See Supp. Section SIX of Smits: “The analyte flow rate was optimized to efficiently transfer nuclear spin polarization from the Halbach array to the NV detection region. The ideal flow conditions ensure that there is sufficient “residence" time in the Halbach array, to fully polarize the sample”; see also Supp. Section SXII: “BH = 1.5 T is the polarizing magnetic field…component of the nuclear magnetic field amplitude along the NV axis is 1.52 nT for full nuclear spin polarization (5x10^-6)”; see also p. 1 c. 1-2: “oscillating magnetic fields generated by precessing nuclear spins…Strong permanent magnets (1.5 T) are used to generate nuclear spin polarization”. The Examiner notes that the present claim language only requires that the permanent magnet material be configured to generate or contribute toward the magnetic field at the respective colour centre of each defect cluster (italicized for emph.), and Smits’s disclosure does indeed satisfy the claimed conditions directed to the magnetic apparatus and the magnetic field thereof. Applicant is respectfully reminded that “If an Office action has issued where the plain meaning of the claim terms was used, applicant may point out that the term has been given a special definition. Since there is a presumption that claim terms are given their plain meaning, and the use of special definitions is an exception, the applicant must point to where the specification as filed provides a clear and intentional use of a special definition for the claim term to be treated as having a special definition.” See MPEP § 2173.01 Section I. Since Applicant has not provided any such definition with regards to the claimed terms, the Examiner maintains that Applicant’s arguments are insufficient to rebut the Examiner’s factual findings, namely that the Smits reference reads on the broadest reasonable interpretation in light of the as-filed specification (see ¶0032, ¶0047-49 of the as-specification) of the claimed limitations directed to the integration of the magnetic apparatus to the base chip and the permanent magnet being configured to contribute/generate toward the magnetic field at the respective colour centres of each defect clusters.
Applicant appears to make arguments that “one of ordinary skill in the art would not be able to determine how to use Reilley's structure with the Smits disclosure. It is simply not possible to simply replace the glass chip of Smits with the silicon/optic fiber of Reilly” (pg. 12). However, the Examiner notes that "It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements." In re Mouttet, 686 F.3d 1322, 1332, 103 USPQ2d 1219, 1226 (Fed. Cir. 2012) (citing In re Etter, 756 F.2d 852, 859, 225 USPQ 1, 6 (Fed. Cir. 1985) (en banc)). Applicant further argues that “The skilled person would need to invest significant inventive effort to determine how to best modify the NMR coil magnetometer on one side and the laser on the other side so that they can be used with the silicon substrate/optical fiber of Reilly…in order to use Reilly's structure, the analyte channel would need to be removed, which significantly alters the functioning of Smit in that it would no longer be able to perform its primary purpose” (pgs. 12-13). However, Applicant’s arguments directed to the analyte connection and the magnetometer in Smits’s device appears to be irrelevant to the teachings of Reilly relied upon for which render the resultant combination as obvious. Furthermore, the Examiner notes that it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review, and that combining the teachings of references does not involve an ability to combine their specific structures. See MPEP § 2145 Section III, stating "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973). Nonetheless, Reilly teaches broadly that an external magnetic field may be incorporated and applied to the device (¶0042, 0044 of Reilly). Thus, Applicant’s arguments that the principle of operation of Smits device would be changed by the proposed combination simply because of the presence of the analyte connection and magnetometer lacks sufficient evidence and is therefore unpersuasive. The Reilly reference was relied upon for combining the teachings of Smits with the teachings of Reilly specifically directed to the reflection and anti-reflection features of the optical structures. The incorporation of a fiber optic connection in Reilly’s disclosure corresponds to (italicized for emph.) ‘the one or more optical structure comprised formed within the respective body of the host chip’ (as recited in claim 1) and does not render the teachings of the primary and secondary references as conflicting. Firstly, the primary reference of Smits discloses an integrated quantum information processing device comprising one or more host chips, each host chip having a body, each body having a first surface, a second surface opposite the first surface (see FIGS. 1C-E showing body surfaces of host chip; p.2: diamond chips; p.6: chip construction), and one or more optical structures formed in the respective body to direct excitation light that has entered the host chip toward the respective defect cluster and to direct fluorescent light emitted by the respective defect cluster to exit the respective host chip (FIG. 1 & p.2,6: components of the chip include a copper loop…Laser illumination (532 nm) bounces off the printed copper microwave lines, and fluorescence (650 to 800 nm) is detected). The secondary reference of Reilly is related to Smits with respect to an integrated quantum information processing device comprising host chips having a body with a first surface, a second surface, a defect cluster, one or more optical structures to direct excitation light that has entered the host chip toward the respective defect cluster and to direct fluorescent light emitted by the respective defect cluster to exit the respective host chip, the quantum information processing device further comprises a magnetic apparatus integrated with a base chip (¶0039, 0040, 0042, 0044, 0050 of Reilly; FIGS. 2-5 of Reilly) and Reilly teaches: at least some of the one or more optical structures comprise a reflective optical structure patterned on the second surface and wherein at least some of the one or more optical structures include an anti-reflective optical structure patterned on the first surface (¶0050: silicon substrate 402 is curved and polished to produce an ultra-high reflectivity mirror. This curved mirror is parameterised by its radius of curvature, R, and depth beneath the surface of the silicon; see FIG. 4; ¶0050, 0056: surface is polished, coated with a dielectric coating; ¶0050: coated with a dielectric coating 406 that on one side is polished [patterned] to be anti-reflective (AR)). Reilly further teaches such reflective and anti-reflective optical structures would be selected to achieve longer range connectivity via an optical coupling technique that enhances the interaction between a matter system and optical photons (¶0049-0050 of Reilly), thereby “ensuring the setup of a standing wave pattern and, with high-quality mirrors, enhance the interaction between the NV-defect if placed at an antinode of the electromagnetic field”, (¶0050); and such a patterned surface is known and selected “to reduce surface roughness (at this stage of development<0.3 nanometers) and increase the reflectivity properties”, as taught in paragraph ¶0056 of Reilly. Therefore, the Examiner has clearly articulated multiple reasons why the claimed invention would have been obvious, the rationales being: (1) combining prior art elements according to known methods to yield predictable results, (2) known work in one field of endeavor prompting variations of it for use in the same field since the variations are predictable to one of ordinary skill in the art, and (3) some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. Thus, the Applicant has not disputed the Examiner’s evidentiary findings regarding the Smits and Reilly references which support a conclusion of obviousness under 35 U.S.C. 103 by utilization of valid rationales, as detailed previously and below.
Applicant argues that “Abele reference is related to MRI imaging of the brain. This technical field is entirely unrelated to qubits and quantum information processing” (pg. 13). The Examiner respectfully disagrees and notes that “A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention)”. See MPEP § 2141.01(a), Section I. In the present case, Abele discloses an integrated magnetic apparatus (FIG. 1 & Introduction of Abele: magnetic apparatus; p. 3386: integrated apparatus) comprising a permanent magnetic material with a cone shaped profile wherein the permanent magnetic material is magnetised along an axis of the cone shaped profile (see FIG. 1 of Abele showing magnetic material magnetized (J) along an axis z of the cone shaped profile of the permanent magnet material; p. 3382: permanent magnetized material; Section II: ideal magnetic cone; Section III: truncated cone profile; FIG. 2 of Abele). Abele further teaches that such features of the permanent magnet as claimed is known and would be selected “to take advantage of the quasi-linear demagnetization characteristics of rare-earth material” (p. 3386 c. 1), the cone shaped profile allowing for remarkably open access various regions, which makes it possible to integrate the magnet into an apparatus with minimal interference with instrumentation (p. 3386 c. 2), thereby achieving “remarkably high field uniformity” wherein field distortion is of the order of 0.25%, as taught in p. 3386 c. 2 of Abele. Thus, Abele is a reference that is reasonably pertinent to the problem faced by the inventor of configuring the specific features of the magnetic apparatus comprised within the integrated device (as recited in claims 1, 11 and 14) even if it is not in the field of quantum information processing. Furthermore, the magnetic apparatus is a claimed structure comprised within the integrated quantum information processing device, thereby rendering Abele’s invention as a reference from the same field of endeavor as the claimed invention (even if it addresses a different problem of medical magnetic resonance imaging). Both Abele and the instant claimed invention share the same field of endeavor directed to magnetic apparatuses and/or the application of magnetic fields on a device. See MPEP 2141.01(a) Section I, citing Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001, 120 USPQ2d 1593, 1597 (Fed. Cir. 2016) wherein the court held that "The field of endeavor is ‘not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.’"). See also Netflix, Inc. v. DivX, LLC, 80 F.4th 1352, 1358-59, 2023 USPQ2d 1057 (Fed. Cir. 2023). Thus, the Examiner maintains that the Abele reference is indeed a reference in the analogous art to the claimed invention and Applicant’s arguments remain unpersuasive.
In conclusion, as explained above, none of Applicant’s arguments against the prior art are persuasive, and thus the newly amended claims 1-8, 10-14, 16-22 and 32 remain rejected based upon previously-cited references, as detailed below.
Applicant’s remaining arguments (pgs. 11-13 of Remarks) with respect to the prior art rejection of the claims under 35 U.S.C. 102 over Smits have been fully considered but are moot upon further consideration because the new grounds of rejection in light of a change of statutory basis and/or in light of Reilly’s teachings are necessitated by the Applicant’s amendments (on 11/24/2025), as detailed below.
Drawings
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, a permeable material base portion of the magnetic apparatus must be shown or the feature(s) canceled from the claim(s) 32;
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 Objections
The claims are objected to because of the following informalities:
Claims 4-5 recite redundant limitations which are already incorporated into newly-amended claim 1 (filed 11/24/2025), namely “…at least some of the one or more optical structures comprise a reflective optical structure patterned on the second surface and wherein at least some of the one or more optical structures include an anti-reflective optical structure patterned on the first surface…”.
Appropriate correction is required.
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 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:
Claim 1 limitation “an electromagnetic signal guiding structure configured to guide…” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. This is interpreted to correspond to microstrips and coplanar waveguides (CPWs), or the like (¶[0044] of originally-filed specification on 03/17/2022). For purposes of prosecution, the Examiner will consider known equivalents.
Claim 8 limitation “tunable electromagnetic field generating device configured to tune…” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. This is interpreted to correspond to one or more pairs of crossed wires, or the like (¶[0055] of originally-filed specification). For purposes of prosecution, the Examiner will consider known equivalents.
Claim 19 limitation “an electromagnetic control signal source configured to emit…” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. This limitation, and in particular the emitting function thereof, does not have sufficient structure.
Claim 19 limitation “the controller is configured to actuate…and receive…” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. This is interpreted to correspond to a processing system (¶[0072] of originally-filed specification). For purposes of prosecution, the Examiner will consider known equivalents.
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.
Claims 19-22 and 32 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.
1. The following limitations invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, and 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:
Regarding Claims 19 limitation: “an electromagnetic control signal source configured to emit…”, the specification is silent to any definite structure required to meet the functional limitations of an electromagnetic control signal source beyond an ipsis verbis appearance of the generic placeholder (¶0013; 0057; ¶0062; ¶0072; FIG. 8: 870).
Therefore, claim 19 is rendered indefinite and rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claims 20-22 inherit the deficiencies of claim 19, and are thus rejected under 35 U.S.C. 112(b).
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.
2. A claim term is functional when it recites a feature "by what it does rather than by what it is". Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. See MPEP § 2173.05(g), citing In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971) and Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353, 94 USPQ2d 1161, 1173 (Fed. Cir. 2010) (en banc). The use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be rendered indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971).
In the present case, claim 32 limitation “a permeable material base portion” is unclear as it recites functional language without providing a discernable boundary on what element of the base portion performs the function. Specifically, it is unclear if a specific material/structure/element must be present in the base portion to perform the function of being permeable, and it is further unclear what the permeability is referring to, i.e., what is the base portion permeable to? As such, the metes and bounds of the claim cannot be discerned, rendering Claim 32 as indefinite. For the purposes of examination, this limitation will be treated as: “a base portion”.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-8, 10, 12-13, 16-22 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Smits et al. (see NPL titled “Two-dimensional nuclear magnetic resonance spectroscopy with a microfluidic diamond quantum sensor” (2019); hereinafter— “Smits”) in view of Reilly (US 2019/0325337 A1).
Regarding Claim 1, Smits discloses: an integrated quantum information processing device (p. 1: Quantum sensors) comprising: one or more host chips, each host chip having a body, each body having a first surface, a second surface opposite the first surface (see FIGS. 1C-E showing body surfaces of host chip; p.2: diamond chips; p.6: chip construction), a defect cluster (p. 1-2: nitrogen-vacancy (NV) centers in diamond), and one or more optical structures formed in the respective body to direct excitation light that has entered the host chip toward the respective defect cluster and to direct fluorescent light emitted by the respective defect cluster to exit the respective host chip (FIG. 1 & p.2,6: components of the chip include a copper loop…Laser illumination (532 nm) bounces off the printed copper microwave lines, and fluorescence (650 to 800 nm) is detected); and a base chip having a first side coupled to the second surface of each host chip of the plurality of host chips, a second side (FIG. 1E & p.2,6: glass slide; Supp. SV section: The top surface of the microfluidic chips used in this study consisted of a 1-mm-thick microscope slide), an electromagnetic signal guiding structure configured to guide electromagnetic control signals toward the defect cluster of each host chip, wherein the electromagnetic control signals have a frequency within at least one of a microwave or a radio frequency range (FIG. 1D-E & p.2-3,5: radio frequency (RF) excitation loop excites nuclear spin coherence in both channels); wherein a magnetic field aligned with a spin axis at a colour centre of each defect cluster enables at least one of initialisation and readout of nuclear spin states of the respective colour centre of the respective defect cluster (Section SVIII: the spins remain aligned with the external magnetic field while transitioning from the prepolarization region to the detection region; FIG. 2A; p. 3 c. 1: NV axes is aligned with the magnetic field. pulse sequence shares common traits with the synchronized readout scheme. A pi/2 RF pulse (∼1ms long), resonant with the proton spin transition, initializes nuclear spin precession, producing an exponentially decaying oscillating (ac) magnetic field…only the component of the nuclear ac field along the NV axis is detected…the first 0.5 µs of the readout fluorescence is used to measure the NV spin projection), for each host chip the respective defect cluster is located proximate the respective second surface relative to the first surface (p. 2 & FIG. 1E: 20-mm-diameter laser beam excites NV centers throughout a 35-mm-thick diamond membrane), the quantum information processing device further comprises a magnetic apparatus integrated with the base chip (FIGS. 1B-D & p. 2), comprising a permanent magnet material and configured to generate or contribute toward the magnetic field at the respective colour centre of each defect cluster (FIG. 1B & p.1: strong permanent magnet (1.5-T Halbach array) are used to generate nuclear spin polarization; Section SVIII: nuclear spins [of NV centers] remain aligned with the external magnetic field to the NV detection region; see FIG. 1B; section SVII: tubing went into the Halbach array and was wound in several loops before exiting. From the Halbach, ~35 µL of tubing ran to the microfluidic chip housing the diamond).
Smits does not appear to explicitly disclose: wherein at least some of the one or more optical structures comprise a reflective optical structure patterned on the second surface and wherein at least some of the one or more optical structures include an anti-reflective optical structure patterned on the first surface.
Reilly is related to Smits with respect to an integrated quantum information processing device comprising host chips having a body with a first surface, a second surface, a defect cluster, one or more optical structures to direct excitation light that has entered the host chip toward the respective defect cluster and to direct fluorescent light emitted by the respective defect cluster to exit the respective host chip, the quantum information processing device further comprises a magnetic apparatus integrated with a base chip (¶0039, 0040, 0042, 0044, 0050; FIGS. 2-5) and Reilly teaches: wherein at least some of the one or more optical structures comprise a reflective optical structure patterned on the second surface and wherein at least some of the one or more optical structures include an anti-reflective optical structure patterned on the first surface (¶0050: silicon substrate 402 is curved and polished to produce an ultra-high reflectivity mirror. This curved mirror is parameterised by its radius of curvature, R, and depth beneath the surface of the silicon; see FIG. 4; ¶0050, 0056: surface is polished, coated with a dielectric coating; ¶0050: coated with a dielectric coating 406 that on one side is polished [patterned] to be anti-reflective (AR)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Smits’s integrated quantum information processing device in view of Reilly to satisfy the claimed condition, because such reflective and anti-reflective optical structures are known and would be selected to achieve longer range connectivity via an optical coupling technique that enhances the interaction between a matter system and optical photons (¶0049-0050 of Reilly), thereby “ensuring the setup of a standing wave pattern and, with high-quality mirrors, enhance the interaction between the NV-defect if placed at an antinode of the electromagnetic field”, (¶0050); and such a patterned surface is known and selected “to reduce surface roughness (at this stage of development<0.3 nanometers) and increase the reflectivity properties”, as taught in paragraph ¶0056 of Reilly.
Regarding Claims 2-4, Smits discloses the integrated quantum information processing device according to Claims 1 and 2, respectively, as above. Smits does not appear to explicitly disclose the limitations as recited in claims 2-4.
Reilly is related to Smits with respect to an integrated quantum information processing device comprising host chips having a body with a first surface, a second surface, a defect cluster, one or more optical structures to direct excitation light that has entered the host chip toward the respective defect cluster and to direct fluorescent light emitted by the respective defect cluster to exit the respective host chip, the quantum information processing device further comprises a magnetic apparatus integrated with a base chip (¶0039, 0040, 0042, 0044, 0050; FIGS. 2-5) and Reilly teaches: wherein for each host chip the one or more optical structures comprises a curved reflective surface at the respective second surface of the respective body that is configured to reflect and focus the excitation light onto the respective defect cluster and to reflect and focus the fluorescent light to exit the host chip (claim 2) (¶0050: silicon substrate 402 is curved and polished to produce an ultra-high reflectivity mirror. This curved mirror is parameterised by its radius of curvature, R, and depth beneath the surface of the silicon; see FIG. 4); wherein the respective curved reflective surface of each host chip has a reflective coating (claim 3) (¶0050: coated with a dielectric coating 406 that on one side is polished to be highly reflective (HR)); wherein for each host chip the one or more reflective optical structures comprises a reflective optical structure at the respective second surface of the respective body, wherein for each host chip the respective reflective optical structure is formed by at least one of patterning the respective second surface of the respective body and applying a coating or film to the respective second surface (claim 4) (¶0050, 0056: surface is polished, coated with a dielectric coating).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Smits’s integrated quantum information processing device in view of Reilly to satisfy the claimed condition, because such a reflective optical structure is known and would be selected to achieve longer range connectivity via an optical coupling technique that enhances the interaction between a matter system and optical photons (¶0049-0050 of Reilly), thereby “ensuring the setup of a standing wave pattern and, with high-quality mirrors, enhance the interaction between the NV-defect if placed at an antinode of the electromagnetic field”, (¶0050); and such a patterned and coated surface is known and selected “to reduce surface roughness (at this stage of development<0.3 nanometers) and increase the reflectivity properties”, as taught in paragraph ¶0056 of Reilly.
Regarding Claims 5-6, Smits discloses the integrated quantum information processing device according to Claims 1 and 5, respectively, as above. Smits does not appear to explicitly disclose the limitations as recited in claims 5-6.
Reilly is related to Smits with respect to an integrated quantum information processing device comprising host chips having a body with a first surface, a second surface, a defect cluster, one or more optical structures to direct excitation light that has entered the host chip toward the respective defect cluster and to direct fluorescent light emitted by the respective defect cluster to exit the respective host chip, the quantum information processing device further comprises a magnetic apparatus integrated with a base chip (¶0039, 0040, 0042, 0044, 0050; FIGS. 2-5) and Reilly teaches: wherein for each host chip the respective first surface has an anti-reflective optical structure to minimize light reflection at the respective first surface, wherein for each host chip of the respective anti-reflective optical structure is formed by at least one of patterning the respective first surface and applying a coating or film to the respective first surface (claim 5) (¶0050: coated with a dielectric coating 406 that on one side is polished [patterned] to be anti-reflective (AR)); wherein for each host chip, the respective anti-reflective optical structure is one of the one or more optical structures configured to focus the excitation light entering the host chip from the respective first surface onto the respective defect cluster and to focus the fluorescent light to exit the host chip (claim 6) (¶0050; see FIG. 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Smits’s integrated quantum information processing device in view of Reilly to satisfy the claimed condition, because such an anti-reflective optical structure is known and would be selected to achieve longer range connectivity via an optical coupling technique that enhances the interaction between a matter system and optical photons (¶0049-0050 of Reilly), thereby “ensuring the setup of a standing wave pattern and, with high-quality mirrors, enhance the interaction between the NV-defect if placed at an antinode of the electromagnetic field”, (¶0050); and such a patterned and coated surface is known and selected “to reduce surface roughness (at this stage of development<0.3 nanometers) and increase the reflectivity properties”, as taught in paragraph ¶0056 of Reilly.
Regarding Claim 7, Smits discloses the integrated quantum information processing device according to Claim 1, as above. Smits further discloses: wherein each host chip is made of a diamond or a silicon carbide (p. 1 c. 1: nitrogen-vacancy (NV) centers in diamond; p. 6 c. 1: diamond membranes in chip).
Regarding Claim 8, Smits discloses the integrated quantum information processing device according to Claim 1, as above. Smits further discloses: wherein the base chip further comprises one or more tunable magnetic field generating devices configured to tune the magnetic field at the respective colour centre of each defect cluster to align with the respective spin axis (FIGS. 1B-C; p.2 c.1: Helmholtz coils produce a magnetic field).
Regarding Claim 10, Smits discloses the integrated quantum information processing device according to Claim 1, as above. Smits further discloses: wherein the magnetic apparatus comprises a first permanent magnet coupled to a second permanent magnet, wherein opposite poles of the first and second permanent magnet are coupled together (FIG. 1B; p.1, c.2: Strong permanent magnets (1.5 T) are used to generate nuclear spin polarization).
Regarding Claim 12, Smits discloses the integrated quantum information processing device according to Claim 1, as above. Smits further discloses: A quantum information processing arrangement, comprising: the integrated quantum information processing device; and a magnetic apparatus located proximate and separate to the base chip and configured to generate or contribute toward the magnetic field at the respective colour centre of each defect cluster (p.2: caption of FIG. 1; see FIGS. 1B-D showing magnetic apparatus located proximate and separate to the chip).
Regarding Claim 13, Smits discloses the integrated quantum information processing device according to Claim 12, as above. Smits further discloses: wherein the magnetic apparatus comprises a first permanent magnet having a first magnetic orientation and a second permanent magnet having a second magnetic orientation, the first magnetic orientation of being opposite to the second magnetic orientation (FIG. 1B; p.1, c.2: Strong permanent magnets (1.5 T) are used to generate nuclear spin polarization).
Regarding Claim 16, Smits discloses the integrated quantum information processing device according to Claim 1, as above. Smits further discloses: A quantum sensor, comprising a quantum information processing device of claim 1, further comprising a sample structure (p. 6 c. 1: glass; Section SV. Microfluidic chip fabrication using glass [sample structure]; p. 4 c. 2: quantum sensors).
Regarding Claim 17, Smits discloses the integrated quantum information processing device according to Claim 16, as above. Smits further discloses: wherein the sample structure is located at the first or second surface of the host chip (see FIG. 1E: glass).
Regarding Claim 18, Smits discloses the integrated quantum information processing device according to Claim 17, as above. Smits further discloses: wherein the sample structure comprises a microfluidic arrangement provided in the first or second surface of the host chip (FIG. 1E; p.2, c.2: microfluidic chip’s components include a microfluidic channel enclosing the diamond sensor and contacting analyte, and microfluidic ports).
Regarding Claim 19, as best understood, Smits discloses the integrated quantum information processing device according to Claim 1, as above. Smits further discloses: comprising a plurality of defect clusters (p. 1-2: nitrogen-vacancy (NV) centers in diamond); a modulator (Section SI. NV NMR detection apparatus: an acousto-optic modulator (AOM, CrystaLaser); p. 5, c. 2); a light source (FIG. 1 & p.2,6: components of the chip include a copper loop…Laser illumination (532 nm) bounces off the printed copper microwave lines, and fluorescence (650 to 800 nm) is detected); an electromagnetic control signal source configured to emit control signals which have a frequency within a radio frequency range or a microwave frequency range (FIG. 1D-E & p.2-3,5: radio frequency (RF) excitation loop excites nuclear spin coherence in both channels); one or more photon detectors (Section SI: detected by an amplified photodetector (Thorlabs PDB450A)); and a controller includes a processor and memory with executable instructions stored therein which are executable by the processor to perform the steps (Section SIV; p. 5,c. 2: Lighthouse Photonics Sprout-G 10 W, National Instruments USB-3631), the electromagnetic control signal source, and the one or more photon detectors, wherein the controller is configured to, actuate the light source to generate one or more beams of excitation light which are modulated by the modulator, such that one or more beams of excitation light, as modulated, are transmitted to individually optically address at least some of the plurality of defect clusters (p. 5,c. 2; FIG. 1; Section SI), actuate the electromagnetic control signal source to individually address the at least some of the plurality of the defect clusters, and receive one or more signals from the one or more photon detectors in response to fluorescent light being emitted by the at least some of the plurality of defect clusters which were individually addressed (p. 5,c. 2; FIG. 1; Section SI).
Regarding Claim 20, Smits discloses the integrated quantum information processing device according to Claim 19, as above. Smits further discloses: further comprising an optical element configured to transmit the modulated one or more beams of excitation light toward the one or more host chips, and transmit the fluorescent light toward the one or more photon detectors (FIG. 1C: dichroic mirror; p. 5, c. 2).
Regarding Claim 21, Smits discloses the integrated quantum information processing device according to Claim 20, as above. Smits further discloses: wherein the optical element is a dichroic mirror or a beam splitter (FIG. 1C: dichroic mirror; p. 5, c. 2; Section SI. NV NMR detection apparatus).
Regarding Claim 22, Smits discloses the integrated quantum information processing device according to Claim 19, as above. Smits further discloses: wherein the modulator is one of a spatial light modulator or an acousto-optical modulator (Section SI. NV NMR detection apparatus: an acousto-optic modulator (AOM, CrystaLaser); p. 5, c. 2).
Regarding Claim 32, as best understood, Smits discloses the integrated quantum information processing device according to Claim 1, as above. Smits further discloses: wherein the magnetic apparatus comprises a magnetically permeable material base portion coupled to a base of the of the permanent magnet material (FIG. 1B; p.1 c.2-p.2 c.1: analyte flows through Halbach array).
Claims 11 and 14 is rejected under 35 U.S.C. 103 as being unpatentable over Smits et al. in view of Reilly (US 2019/0325337 A1), and further in view of Abele et al. (see NPL titled “Permanent Conical Magnet for…” (2004)).
Regarding Claims 11 and 14, Smits discloses the integrated quantum information processing device according to Claims 1 and 13, as above. Smits does not appear to explicitly disclose: wherein the permanent magnet material has a cone shaped profile comprising a base and a peak, the permanent magnetic material being magnetised along an axis of the cone shaped profile of the permanent magnet material.
Abele is related to Smits with respect to an integrated magnetic apparatus (FIG. 1 & Introduction: magnetic apparatus; p. 3386: integrated apparatus) and Abele teaches: wherein the permanent magnet material has a cone shaped profile comprising a base and a peak, the peak being smaller than the base (FIG. 2), the permanent magnetic material being magnetised along an axis of the cone shaped profile of the permanent magnet material (FIG. 1 showing magnetic material magnetized (J) along an axis z of the cone shaped profile of the permanent magnet material; p. 3382: permanent magnetized material; Section II: ideal magnetic cone; Section III: truncated cone profile).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Smits’s display system in view of Abele to satisfy the claimed condition, because such a magnet is known and would be selected “to take advantage of the quasi-linear demagnetization characteristics of rare-earth material” (p. 3386 c. 1), the cone shaped profile allowing for remarkably open access various regions, which makes it possible to integrate the magnet into an apparatus with minimal interference with instrumentation (p. 3386 c. 2), thereby achieving “remarkably high field uniformity” wherein field distortion is of the order of 0.25%, as taught in p. 3386 c. 2 of Abele.
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 extension fee 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.
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/SAMANVITHA SRIDHAR/Examiner, Art Unit 2872
/BUMSUK WON/Supervisory Patent Examiner, Art Unit 2872