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 .
Specification
The disclosure is objected to because of the following informalities:
Elements 30 and 32 do not appear to act as waveguides. The terminology in the specification and claims is apparently inaccurate and confusing. If elements 30 and 32 do not direct/convey/channel/propagate any signals, they are not waveguides. Do elements 30 and 32 merely act as a filter/attenuator? If their purpose is to attenuate signals and not to convey them, “waveguide” does not appear to be accurate terminology. This causes 35 USC 112 issues (discussed below).
See for example, https://www.merriam-webster.com/dictionary/waveguide.
Appropriate correction is required.
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.
Claims 1-12 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.
With regard to 35 USC 112(b) rejections, the applicant has amended the preamble of the claims to include the terms “device” and “apparatus”. This does not correct issues discussed in the previous office action. The structure of the elements in the body of the claim do not provide “a split waveguide filter device” or a “split waveguide filter kit apparatus”. None of elements in the claim, nor a combination of the elements provide a FILTER device/apparatus. If nothing in the structure of the elements of the claims provide filtering or attenuation, it is not clear how these elements provide a filer device or a filter kit apparatus. This causes confusion.
While paragraph 24 of the applicant’s specification teaches that sections 30 and 32 are placed around a fiber optical cable 42 in order to maximize the shielding characteristics (which appears to be the inventive concept), the claims in and of themselves do not provide this inventive concept.
The functional language in claim 1 of the preamble claims "a split waveguide filter device" which is drawn to the inventive concept. Yet the claim language is ambiguous because there is nothing in the body of claim 1 that provides any type of filter or filtering. It is only stating a problem to be solved or a result to be achieved. One of ordinary skill in the art would not know from the claim terms what structure or steps are encompassed by the claim. Merely having two “waveguide sections” and collar clamps does not provide a filter/filtering. One of ordinary skill in the art would not have a clear-cut indication of the subject matter covered by the claims. Nor would they understand well defined boundaries of the claims since claimed elements (waveguide sections and clamps) do not provide a filter device or filter kit apparatus. See MPEP 2173.05(g), seventh paragraph.
Examiners should consider the following factors when examining claims that contain functional language to determine whether the language is ambiguous: (1) whether there is a clear cut indication of the scope of the subject matter covered by the claim; (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained; and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim. These factors are examples of points to be considered when determining whether language is ambiguous and are not intended to be all inclusive or limiting. Other factors may be more relevant for particular arts. The primary inquiry is whether the language leaves room for ambiguity or whether the boundaries are clear and precise.
Claim 7 has similar issues. Nothing in the claim provides a filter/filtering, so it is unclear how the elements listed in claim 7 provide a filter kit.
Likewise, claim 1 claims “a first waveguide section (30) having a first outer surface and a first inner surface: a second waveguide section (32) having a second outer surface and a second inner surface”. Elements 30 and 32 do not appear to be waveguide sections. The inventive concept is drawn to two sections that provide electromagnetic shielding and surround a fiber (which would be an actual waveguide). As written, it appears that the elements 30 and 32 do not provide the function of a waveguide (propagating/channeling/conveying signals - which in reality is apparently provided by element 34). What signals are propagated/conveyed by the waveguide sections 30 and 32? If sections 30 and 32 do not act as a waveguide (which is within the scope of the claims), this terminology is inaccurate.
While paragraph 24 of the applicant’s specification teaches that sections 30 and 32 are placed around a fiber optical cable 42 in order to maximize the shielding characteristics (which appears to be the inventive concept), the claims in and of themselves do not provide this inventive concept. For example, in the claims the clamp is not connected to elements 30 and 32. Without the fiber and elements 46 and 48, there is no real interaction between elements 30/32 to element 50. There is so much missing from the independent claims, that it is unclear to the examiner what the scope of the claims are. Nor do these elements (as claimed) provide a filter/electromagnetic shielding of the inventive concept.
Claim 7 has similar issues.
While claim 7 claims a “kit” and claim 1 claims a split waveguide filter, every embodiment that includes the clamps… also requires the flange nut and a fiber for the inventive concept to actually operate. While the inventive concept requires these elements in order for elements 30/32 to operate with element 50, they are not claimed in the independent claims which causes confusion as to the scope of the claims.
If the applicant argues that the scope of the claims is clear without these elements, there may be 112(a) “scope of enablement” rejections in response to such arguments since it appears that these elements are essential for the inventive concept (clamps 50 that do not provide elements 30 and 32 to be clamped to each other apparently do not provide the inventive concept). Further, the inventive concept appears to be drawn to attenuating electromagnetic signals to avoid interference for an optical fiber which is not claimed.
While claims 2-5 and 8-11 clarify the connection of elements 30/32 to each other, none of the elements of claims 2-5 and 8-11 provide filtering of the preamble and inventive concept.
Using the specification as a guide does not correct the issues with the terminology that 30 and 32 are waveguide sections (since they do not act as waveguides, nor do any other claimed elements provide the function of the waveguides). The claims appear to say that elements 30 and 32 when used with clamps 50 provides the waveguide function which is inaccurate if 30 and 32 are actually providing filtering/attenuating (and not conveying/propagation/channeling signals).
Claims 6 and 12 appear to be the only claims that provide attenuation below a predetermined cutoff frequency. These claims are the only claims that “provide” filtering. It is unclear from the claims what the scope of the claims are. It is unclear from the claim language how the dimensions of the waveguide aperture provide the attenuation below a predetermined cutoff frequency. See MPEP 2173.05(g), seventh paragraph.
Examiners should consider the following factors when examining claims that contain functional language to determine whether the language is ambiguous: (1) whether there is a clear cut indication of the scope of the subject matter covered by the claim; (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained; and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim. These factors are examples of points to be considered when determining whether language is ambiguous and are not intended to be all inclusive or limiting. Other factors may be more relevant for particular arts. The primary inquiry is whether the language leaves room for ambiguity or whether the boundaries are clear and precise.
One of ordinary skill in the art would not be able to determine well defined boundaries or scope of the claims with regard to the dimensions of the aperture. Even when using the specification, it is unclear what the scope of the dimensions of the waveguide aperture are to provide the attenuation of claims 6 and 12.
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 6 and 12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the situation disclosed in the prior art Patent 6434312 as discussed in paragraphs 4-6 with regard to the circular aperture dimensions, does not reasonably provide enablement for any other dimensions that would provide attenuation of electromagnetic interference below a predetermined cutoff frequency. Specifically, Patent 6434312 discusses a rectangular dimension and formula, which applicant’s specification does not include even though paragraph 22 says that the waveguide and/or aperture may be rectangular (Applicants have not “incorporated by reference” this patent). Paragraphs 4-6 of the applicant’s specification discuss a situation in which the dimensions are of a circular cross section; the claims could read on any shape that provide such attenuation. Further, often attenuation and cutoff frequency of electromagnetic interference relates to more than merely the dimensions of a circular aperture of a device and may include other factors of the device (e.g. the material used for the device, size of the device and shape of the device). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. While the claim language is so broad that it would read on any dimensions that would provide attenuation of electromagnetic interference, attenuation and cutoff frequency are often related to more than the dimensions of the waveguide aperture which are not in the applicant’s claims.
Except in the “Background” section of the applicant’s specification, the only mention of dimensions is vaguely discussed in paragraph 22 of the applicant’s specification. This does not provide support for how broad claims 6 and 12 are. One of ordinary skill in the art would not be able to determine what dimensions provide such attenuation. The dimensions of the aperture, as claimed, could be different than circular or rectangular. The specification does not provide enough details for one of ordinary skill in the art to utilize the claim language to the “full scope of the claims”.
Response to Arguments
Applicant’s arguments with regard to the drawings have overcome the objection.
With regard to 35 USC 112(b) rejections, the applicant has amended the preamble of the claims to include the terms “device” and “apparatus”. This does not correct issues discussed in the previous office action. The structure of the elements in the body of the claim do not provide “a split waveguide filter device” or a “split waveguide filter kit apparatus”. None of elements in the claim, nor a combination of the elements provide a filter device. If nothing in the structure of the elements of the claims provide filtering or attenuation, it is not clear how these elements provide a filer device or a filter kit apparatus. This causes confusion.
In the third paragraph on page 6, the applicant argues that ”there seems to be a misinterpretation of Applicant’s claim combination and the disclosure. It is the device/apparatus which Applicant considers to be the “inventive concept”, where the device is a waveguide filter, and Applicant has determined that their unique structure of the waveguide filter, which comprises certain parts (such as those set forth in claim 1) provide many benefits not currently offered in the industry”. The applicant continues that “Applicant has determined that their unique structure of the waveguide filter, which comprises certain parts (such as those set forth in claim 1) provide many benefits not currently offered in the industry”. There is nothing in the body of the claim that provides a waveguide filter. None of a first waveguide section, a second waveguide section , a first collar clamp and/or a second collar clamp provide a waveguide filter. If their “unique structure” provides a filter, the unique structure should be clearly claimed. Please explain how generic waveguide sections and collar clamps (none of which have claimed features that cause attenuation or filtering) individually or in combination provide a waveguide filter device or filter kit apparatus. Without filtering or attenuation elements it does not appear that they provide filtering or attenuation. In the paragraph starting on page 6 and continuing on page 7, the applicant argues many different concepts that are not in the claims. For example, “problems with respect to sizing of waveguide filters… not be able to fit through smaller apertures in waveguide filters”. There is nothing in the claims that address this argument. Not only aren’t any of the claimed elements drawn to filtering, there is nothing about sizing in the claims (except vague “dimensioned to attenuate…cutoff frequency – discussed below).
The applicant then argues that “a split waveguide filter” is not functional or a result to be obtained. Since no elements in the body of the claim provide any type of filtering, the preamble is describing a function that is not provided by the elements of the claim that the elements of the claim do not provide. The preamble therefore, claims a function (or result) not provided by the elements of the claim. A first and second waveguide section having surfaces does not provide a filtering function. One of ordinary skill in the art would not determine that a first and second waveguide section provide filtering unless they specifically claimed a characteristic of the waveguide sections that provide filtering. Without this, the claims are ambiguous. How do devices without clear cut means to provide filtering provide such filtering?
The applicant argues that filter is used as a device/kit. Nothing in the body of the claims provide a filter device or a filter kit. There would have to be elements that clearly provide filtering in order to provide a filter device or kit.
In regard to claims 6 and 12, this is clearly functional language with no specifics of how this is provided, ”aperture is dimensioned to attenuate electromagnetic interference below a predetermined cutoff frequency” is so vague that it is unclear what these functional dimensions are or how this provides a predetermined cutoff frequency. This clearly claims the functions of the aperture in which the “claim term is functional when it recites a feature ‘by what it does rather than by what it is’” as quoted by applicant from MPEP 2173.05(g). It is completely claimed by its function as opposed to what it is (material, size, shape etch of aperture that provides the functional language).
The applicant then argues the size is important. As discussed above and in regard to the 112(a) rejection, this is not specified in the claimed subject matter, nor does it address the problems with the term filter.
In regard to the applicant’s arguments with regard to the 112(a) rejections, the claim and specification do not provide enablement “COMMENSURATE IN SCOPE WITH THE CLAIMS” (See MPEP 2164.08). “All questions of enablement are evaluated against the claimed subject matter…The focus of the examination inquiry is whether everything within the scope of the claim is enabled”. In the third paragraph, it says, “With respect to the breadth of a claim, the relevant concern is whether the scope of enablement provided to one skilled in the art by the disclosure is commensurate with the scope of protection sought by the claims. The Federal Circuit, citing McRO, provided guidance on the application of enablement to genus claims, holding that "[a]lthough a specification does not need to describe how to make and use every possible variant of the claimed invention, when a range is claimed, there must be reasonable enablement of the scope of the range." Sanofi-Aventisub, 987 F.3d at 1085 (internal quotations omitted). AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244, 68 USPQ2d 1280, 1287 (Fed. Cir. 2003);In re Moore, 439 F.2d 1232, 1236, 169 USPQ 236, 239 (CCPA 1971). See also Plant Genetic Sys., N.V. v. DeKalb Genetics Corp., 315 F.3d 1335, 1339, 65 USPQ2d 1452, 1455 (Fed. Cir. 2003) (alleged "pioneer status" of invention irrelevant to enablement determination).” As pointed out in the previous office action, the claims are so broad that they read on any aperture dimension that would “attenuate electromagnetic interference below a predetermined cutoff frequency”. The applicant’s specification only gives vague descriptions of shape (as pointed out in paragraph 27) and only gives specifics of how to determine the cutoff frequency for a circular cross section (paragraph 5 of applicant’s specification). How does one of ordinary skill in the art determine this for other shapes (besides circular) not disclosed by the applicant’s specification? Applicant’s arguments have not explained how one of ordinary skill in the art would determine dimensions other than circular cross section. The applicant has not taught how to provide enablement “COMMENSURATE IN SCOPE WITH THE CLAIMS” (how would one determine a cross-sectional dimensioned aperture that provides the overly broad function of “attenuating electromagnetic interference below a predetermined cutoff frequency” for any shape which is within the “scope of the claim”?). In addition, problems listed in the 112(b) rejection cause extra confusion. The attenuation would be provided not only by the aperture dimension but also by other characteristics of the “waveguide sections”. For example, waveguides generally carry waves as opposed to attenuating/filtering. The materials used in addition to the aperture dimension would determine cutoff frequency. The claims are broad “with respect to the disclosure” and it is not clear how “one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation”.
Applicant has not addressed many aspects of the examiner’s rejection. For example, with regard to the 112 and specification issues elements 30 and 32 do not appear to act as waveguides. If elements 30 and 32 do not direct/convey/channel/propagate any signals, they are not waveguides. Do elements 30 and 32 merely act as a filter/attenuator? If their purpose is to attenuate signals and not to convey them, “waveguide” does not appear to be accurate terminology. To merely argue that the waveguide sections provide a filter device does not answer the above questions.
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.
If the applicant argues that Patent 6434312 calls the attenuating casing a waveguide, this argument would not be persuasive. The ambiguity caused by inaccurate claim language in the present application should be corrected. That a similar patent uses terminology that causes confusion in the present application, does not remedy the problem.
That art is not used against claims is not an indication that the claims are allowable. The 112 problems cause a great deal of confusion and uncertainty as to the proper interpretation of the limitation of the claims. It is difficult for the examiner to ascertain what the applicant feels is the claimed invention.
The scope of the claims is unclear as discussed above. As a result, a meaningful formulation of art rejections cannot be done at this time. See MPEP 2173.06 II, 2nd paragraph:
… where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. … a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
See also Ex Parte Timothy J.O. Catlin and Kevin T. Rowney, the appeal of 09/167,315, Appeal No. 2007-3072, decided Feb. 3, 2009, page 12:
… A rejection of a claim, which is so indefinite that "considerable speculation as to meaning of the terms employed and assumptions as to the scope of such claims" is needed, is likely imprudent. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the examiner and the board were wrong in relying on what at best were speculative assumptions as to the meaning of the claims and basing a rejection under 35 U.S.C. §103 thereon.) …
(https://www.uspto.gov/sites/default/files/ip/boards/bpai/decisions/prec/fd073072.pdf).
Seeber et al (US 2003/0209354) teach that it is well known to have a shield that is clamped. Knighten (6434312) teach a shielding device surrounding a fiber. While it would have been obvious to use a shielding device with clamps in the system of Knighten, the scope and terminology of the claims are so unclear because of the 112 issues that a reasonable rejection cannot be made at this time. Applicant should take into account Knighten and Seeber when drafting claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LESLIE C PASCAL whose telephone number is (571)272-3032. The examiner is presently working a part time schedule. On the days that the examiner is not in the office, voicemail and email will be checked and the examiner will make an attempt to respond within one business day.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, THOMAS A HOLLWEG can be reached at 571-270-1739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LESLIE C PASCAL/Primary Examiner
Art Unit 2874