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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder 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:
“quantum neural entanglement devices” in 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 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.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Mineral Separation v. Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable? There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to: the breadth of the claims; the nature of the invention; the state of the prior art; the level of one of ordinary skill; the level of predictability in the art; the amount of direction provided by the inventor; the existence of working examples; and the quantity of experimentation needed to make or use the invention based on the content of the disclosure. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). In the instant matter, upon consideration of all the evidence related to each of these factors, and based on the evidence as a whole, claim 1 is found to lack enablement.
Breadth of the claims:
The breadth of the instant claims includes creating and synchronizing a neural link between a quantum computer and in vivo neural networks. This claimed link is further limited by limitations regarding “measuring spins of at least two ions” “using photosensitive detectors to detect… semiconductor quantum dots” and “obtaining a neural network map.” Generally speaking, it is unclear how any of the limitations interact with each other, and the specification offers no clarification. To wit, the scope of the claim appears to encompass anything that performs the otherwise unlinked limitations. This entails a very broad scope, that counterintuitively involves very specific steps. That said, the context of the claim, i.e., “creating and synchronizing a neural link between a quantum computer and in vivo neural networks,” speaks to the cutting edge of both computers in the form of quantum computers, and interfaces in the form of brain-computer interfaces.1,2 The applicant has provided no insight into how to achieve such a neural link. Thus, even with the specific limitations recited in claim 1, the breadth created by the lack of connection between the limitations means that one of ordinary skill in the art would be forced to perform extensive experimentation to even approach the breadth of the claim. Such extensive experimentation is undue experimentation, and weighs against enablement
Nature of the Invention:
As noted above, the invention is drawn to the hybrid field of quantum computing combined with brain-computer interface. Specifically, the claim speaks to combining various cutting-edge technologies to yield a link between a brain and quantum computer. None of the individual fields is novel. Using quantum dots as a neural interface was known at the time of filing. 3 Further, trapped ion quantum computers were also know at the time of filing. 4 However, no means for effectively connecting the two to achieve anything like the claimed result has been disclosed in the specification, or reported in the art5. A connection such as that claimed would require fundamental insights into the natures of both emerging technologies, and the instant disclosure offers no guidance whatsoever. As such, achieving such a connection would require undue experimentation.
The State of the Prior Art
As noted above, the prior art demonstrates the basic components of the claimed invention, but offers no guidance as to how they can be combined to achieve the claimed creating and synchronizing a neural link between a quantum computer and in vivo neural networks. A connection such as that claimed between emerging technologies requires extensive experimentation, because the parameters in which these nascent fields can operate are not understood in sufficient depth that one of ordinary skill in the art could hope to combine or connect them by known or routine means. The disclosure provides no guidance as to how to even begin such experimentation. As such, the disclosure’s paucity of information combined with cutting-edge nature of the state of the prior art yields an invention that would require undue experimentation to achieve.
Level of One of Ordinary Skill
As noted above, the instant invention defines a new hybrid of multiple cutting-edge fields. The evidence of record indicates that there is nascent research into this area by a handful of Post-Docs and PhD researchers.6 Such areas as this can reasonably expect high levels of experimentation to compensate for the general lack of established techniques and protocol. However, the instant invention does not describe the tools and techniques for achieving the claimed creating and synchronizing of a neural link between an art recognized quantum computer and an art recognized in vivo neural network. As such, while the level of ordinary skill in the art is incredibly high in the sense that one of ordinary skill would be extensively educated and immensely experienced, it is also unachievable in that there is no evidence that one could actually make and use the claimed invention without extensive and undue experimentation into entirely new areas of technology that are necessary for achieving the claimed link.
Level of Predictability in the Art
There is limited predictability in the art of Brain-computer interfaces, and the art of quantum computers is in its infancy. As such, the lack of detailed disclosure in the instant filings would necessitate undue experimentation in making or using the claimed invention.
Amount of Direction Provided by the Inventor and the Existence of Working Examples
The instant disclosure provides no direction whatsoever with respect to how one might create and synchronize a neural link between a quantum computer and in vivo neural networks. Further, there is no evidence that a working example exists. As such, making and using the invention would require experimentation without guidance or even reassurance that a working version of the invention is plausible. Such experimentation would be extensive, and undue.
The totality of the evidence demonstrates that a person of ordinary skill in the art would not have been able to make or use the claimed invention without undue experimentation. Therefor the claims at issue are not enabled.
Claim 1 is 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. The claim recites “quantum neural entanglement devices.” This limitation is interpreted under 35 USC 112(f) since it uses the nonce term “devices” with the function “quantum neural entanglement” and without recitation of sufficient structure to achieve such entanglement. However, the specification offers no explanation as to what said “quantum neural entanglement devices” may be. As such, the claim fails to comply with the written description requirement.
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.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The claim is replete with grammatical and syntax errors, and one of ordinary skill in the art would not be able to discern what is being claimed. As such, the claims are indefinite.
Claim 1 is further rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim limitation “quantum neural entanglement devices.” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. This limitation is interpreted under 35 USC 112(f) since it uses the nonce term “devices” with the function “quantum neural entanglement” and without recitation of sufficient structure to achieve such entanglement. 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. 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.
Drawings
The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. In particular, a “quantum neural entanglement device” must be shown. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. 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).
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2008/0221645 A1 teaches a quantum dot based neural interface.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ROBERT KIM can be reached at 571 272 2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
1 Huang, Dandan, et al. "A survey of quantum computing hybrid applications with brain-computer interface." Cognitive Robotics 2 (2022): 164-176.
2 Bonci, Andrea, et al. "An introductory tutorial on brain–computer interfaces and their applications." Electronics 10.5 (2021): 560.
3 Han, Mertcan, Onuralp Karatum, and Sedat Nizamoglu. "Optoelectronic neural interfaces based on quantum dots." ACS Applied Materials & Interfaces 14.18 (2022): 20468-20490.
4 Bruzewicz, Colin D., et al. "Trapped-ion quantum computing: Progress and challenges." Applied physics reviews 6.2 (2019).
5 See Huang supra.
6 See Huang supra.