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 .
Information Disclosure Statement
As previously noted, 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.
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.
Claims 1-2, 6, 8-9 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 and 2 are amended to recite, “wherein the generated macroscopic quantum states of the plurality of excitonic BECs or excitonic matter-wave are used as the Qubits for controlling the one or more quantum technologies in frequency and time domain devices and/or applications.”
The courts have described the essential question to be addressed in a description requirement issue in a variety of ways. An objective standard for determining compliance with the written description requirement is, "does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Under Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), to satisfy the written description requirement, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and that the invention, in that context, is whatever is now claimed.
In the instant case, the claim defines the invention by functional language specifying a desired result to be, namely “controlling the one or more quantum technologies in frequency and time domain devices and/or applications.” However, the disclosure fails to explain how the quantum technology is controlled, or what kinds of control are within the scope of the claims. Instead, the disclosure provides general knowledge by listing quantum technologies. Instant PgPub para 64. Such disclosures provide the abstract parameters of the problem of controlling the quantum technologies by enumerating said technologies, but fail to describe how this problem is solved. That is to say, the disclosure provides no evidence that the problem is solved. Further, the disclosure provides no details as to what aspects of any of these technologies can even be controlled. As such, one of ordinary skill in the art would not recognize that the applicant had possession of a “quantum states of the plurality of excitonic BECs or excitonic matter-wave are used as the Qubits for controlling the one or more quantum technologies in frequency and time domain devices and/or applications.” Since one of ordinary skill in the art would not recognize that the applicant had possession of the claimed invention, the claims are rejected for failing 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.
Claims 1-2, 6, 8-9 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. or the step, or whether infringement occurs when the step actually occurs. Claims 1 and 2 recite selecting a quantum technology from a Markush group. However, the various members of the Markush group are an improper Markush group since they neither share a single structural similarity nor share a common use. See MPEP 2117(II). Rather, the members seem to be an arbitrary selection of ideas vaguely related to the work “quantum.” Since the Markush group is an improper Markush group, the claims are rejected as indefinite.
Response to Arguments
Applicant's arguments filed 10/31/25 have been fully considered but they are not fully persuasive.
Applicant requests withdrawal of a rejection with respect to the IDS. No such rejection exists. The above notice is simply indication of the applicant’s failure to file an IDS referencing the citations in the specification, and notice that such failure means that the documents cited have not been considered.
The 35 USC 112 (a) rejections of record are maintained. The applicant argues that the 35 USC 112, first paragraph rejections are moot because of the recent amendments. This is not persuasive. There is insufficient disclosure as to how the quantum technology is controlled, or what kinds of control are within the scope of the claims, or even what specific aspects of quantum technologies may be so controlled. Without disclosure as to the above noted issues, the description does not allow persons of ordinary skill in the art to recognize that the applicant/inventors invented and possessed what is claimed.
The 35 USC 112 (b) rejections of the previous office action are withdrawn in light of applicant’s amendments.
Applicant notes that a counterpart patent application in India has been granted. The office applauds the timely and effective work of the Indian Patent Office.
Conclusion
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.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/ Primary Examiner, Art Unit 2881
Prosecution Insights