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 .
Response to Arguments
Applicant's arguments filed 2/17/25 have been fully considered but they are not persuasive.
Regarding the rejection of claims 1-20 under 35 USC 112(a) and( b), the reasons for the rejection clearly note that the issue raised by the words chosen by the Applicant’s include the invocation of 35 USC 112(f) by reciting a computer implements generic means and is associated claimed functions. Also as noted in the prior rejection, MPEP § 2181(II)(b) requires that for computer implemented limitations, the disclosure provide a corresponding specific algorithm for each computer implemented function. The assertions made by the Applicant at page 9 of 11 of the reply include 1) a statement that the claims possess antecedent basis, which the Examiner agrees with, 2) a statement that the claims recite “actual steps” rather than purely functional language, thus obviating interpretation under 35 USC 112(f). This is not persuasive. Amending the function performed by a generic placeholder does not change the format of the claim. The claims still recite computer implemented means plus function limitations. 3) The description of the association of image groups with polar angles. This does not provide the required algorithm for the claim to be proper in view of MPEP 2181(II)(B) as previously noted and is not persuasive. 4) A statement that the claim language is concrete and operational. Again, this is does not cure the underlying grounds for which the claims were rejected.
Applicant then at pages 9 of 11 and 10 of 11 traverses the rejection of claims under 35 USC 112(a) and lists sections of the disclosure alleged to fully support the amendments. No where in the cited portions of the disclosure are specific algorithms corresponding to the claimed computer implemented functions. Claim 1 recites a processing circuit configured to obtain multiple groups of images. Rather than cite the information content of GOI, as the Applicant has done in reply, where in the disclosure is the algorithm for carrying out the claimed function? Similarly, where are the specific algorithms for carrying out the processing and reconstruction steps? After review of the cited paragraphs of the disclosure and the claimed language, it is clear that such specific algorithms and neither present in diagram, table, or prose. That the functions are recited in purely functional terms expressed as the function of a computer element and lack specific corresponding algorithms.1
For example, claim 1 recites a function of reconstructing. In reply the Applicant merely draws attention to [0065-0068]. These paragraphs state:
0065]Step 120 may be followed by step 130 of reconstructing the electron beam spot shape based on the first-axis edge width information and second-axis edge width information.
[0066] The first-axis edge width information may provide an indication about an distance, along the first-axis, between two points of the edge of the spot of the electron beam.
[0067] The second-axis edge width information may provide an indication about an distance,along the second-axis, between two points of the edge of the spot of the electron beam.
[0068] The reconstruction provides the distance along multiple first-axis polar angles and multiple second-axis polar angles as the different GOIs are associated with different polar angles. For different GOIs, their first-axes are polar angle rotated version of each other. Using GOIs that are associated with different polar angles increases the accuracy of the reconstructions. Increasing the number of different polar angles further increases the accuracy of the reconstruction.
No where in the citation is an algorithm to be found. It is merely a statement of information content and what the result of the function provides. This is consistent through the disclosure. Rather than disclose the specific corresponding algorithm, the written description discloses the content of particular information, acts in general terms without specific disclosure of how such acts are implements, and the result of an act or what it may provide.
Consequently, the remarks are wholly unpersuasive and the rejection of claims under 35 USC 112(b) and 112(a) maintained.
The interpretation of the term “processing circuit” under 35 USC 112(f) is similarly maintained.
Applicant’s cancellation and addition of new claims are addressed below. Such amendment necessitates alteration to the grounds of rejection.
The rejection of claims is maintained and made FINAL.
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:
Processing circuit in claim 1-11. The term processing circuit includes the term circuit, which may indicate sufficient structure to avoid means plus function interpretation, but in this particular case does not. The term “processing circuit” implies the purpose of the circuit is to carry out processing. The disclosure notes that the embodiments may be implemented using electronic components and circuits known to those skilled in the art [0022]. Additionally, the term “processing circuit” is coupled to functional language which would imply that the term processing circuit corresponds to a generic computer processor, thus necessitating interpretation under 35 USC 112(f), since the attributed obtaining, processing, and reconstructing steps are data manipulation steps. There is no corresponding circuit diagram or description of the structure of the claimed processing circuit particulars, components or their respective arrangement. The processing circuit therefore is interpreted as a generic computing element and its limitations also read in view of MPEP 2181(II)(B).
Electron beam spot shape reconstruction unit in claims 12-20. This term is recited as the means for executing the processing step in claim 12 and the means by which the non-transitory computer readable medium and instructions are executed upon in claim 13. As noted in the disclosure, this nonce term includes the above discussed “processing circuit” and memory unit. This lends further weight to the point raised above that the claimed invention contains a generic computation element, highlighted by the noted portion of the disclosure that conventional and well known circuits are employed to carry out the claimed invention.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5, 10-16, 19, 21-27 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.
Claim limitation “processing circuit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. As noted above, the claimed processing circuit is not described with any detail in the original disclosure. There is no circuit diagram or description of the circuit. Therefore, being interpreted as a generic computation element, the functions ascribed thereto are read in view of MPEP 2181(II)(B). After review of the disclosure, it is apparent that detail and algorithms for the steps are presented for the steps/functions recited save the reconstruction step. This step is referred to as Item 130, in Fig. 1. Also of note is the disclosure at [0083-0084]. The algorithm, or step by step process, for carrying out the claimed reconstruction is not presented. Rather, the disclosure states with broad generality “Any reconstruction process that is based on multiple sampling points can be used…for example extrapolation, interpolation, and the like”. The disclosure therefore does not specify the process but relies on both general and exemplary language without specifying what the corresponding algorithm for the computer implemented function recited includes. This generic recitation does not satisfy the requirements of MPEP 2181(II)(B). This limitation, or similar computer implemented element or process, is present in claims, 1, 12, and 13, and therefore introduces indefiniteness into each independent claim, and through dependency, 2-5, 10-11, 14-16, 19, and 21-27. 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.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5, 10-16, 19, 21-27 are 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. Claims 1-5, 10-16, 19, 21-27 are rejected under this heading in view of MPEP 2163.03(VI).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID A VANORE whose telephone number is (571)272-2483. The examiner can normally be reached Monday to Friday 7AM to 6 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Georgia EPPS can be reached at (571) 272-2328. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID A. VANORE
Primary Examiner
Art Unit 2881
/DAVID A VANORE/ Primary Examiner, Art Unit 2878
1 MPEP 2182(II)(B): For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b). See Net MoneyIN, Inc. v. Verisign. Inc., 545 F.3d 1359, 1367, 88 USPQ2d 1751, 1757 (Fed. Cir. 2008). See also In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011) (“[W]hen the disclosed structure is a computer programmed to carry out an algorithm, ‘the disclosed structure is not the general purpose computer, but rather that special purpose computer programmed to perform the disclosed algorithm.’”) (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999)).