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 is amended to recite, “wherein the generated macroscopic quantum states of the plurality of excitonic BECs or excitonic matter-wave are used as the Qubits to implement quantum-state control in one or more quantum technologies.” Similarly, claim 2 is amended to recite, “wherein the generated macroscopic quantum states which forms the plurality of excitonic BECs or excitonic matter-waves are used as the Qubits… to implement quantum-state control in one or more quantum technologies.”
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 “implement quantum-state control in one or more quantum technologies.” 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. In fact, the disclosure provides no evidence whatsoever that the problem is solved. Quantum technologies, such as quantum computers and registers, are cutting-edge fields. There are numerous different architectures for implementing quantum computers and registers that do not even rely on the same fundamental physics, e.g., nv diamond qubits vs Josephson junction qubits.1 However, in the instant case the applicant offers no explanation as to how an entirely different type of Qubit, i.e., a BEC, might interact with other quantum technologies. Further, the disclosure provides no details as to what aspects of any of these quantum technologies can even be controlled. As such, one of ordinary skill in the art would not recognize that the applicant had possession of “implement[ing] quantum-state control in one or more quantum technologies.” 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 variation of: Qubits which are a two-level quantum superposition state of excitons within the excitonic BEC in semiconductors through the following demonstrations…” It is unclear whether these two claims require that the Qubits perform the three recited demonstrations, or if they need to be able to perform the three recited demonstrations, or if they need only perform one of the demonstrations. The specification offers no clarity on this issue. Since one of ordinary skill in the art cannot discern the scope of the claims, they are rejected as indefinite.
Response to Arguments
Applicant's arguments filed 9/8/26 have been fully considered but they are not fully persuasive.
The 35 USC 112 (a) rejections of record are maintained. The applicant argues that the 35 USC 112, first paragraph rejections are improper because a “POSITA working in semiconductor quantum devices would readily understand that once stable and controllable qubits are generated, such qubits are capable of being incorporated into known quantum computing architectures, quantum registers, [etc].” This is not persuasive. Quantum computing architectures and registers are made specifically for each modality of qubit. Applicant has presented BECs as a novel variety of qubit, and has claimed using them with “known quantum computing architectures.” One cannot simply interact BECs with trapped neutral atoms, or dripping BECs onto a Josephson Junction, and expect any sort of quantum computation. Applicant’s assertion that such technologies are well known and can be readily incorporated with each other is entirely unsupported by the record, and contradicts common knowledge. In the instant case, 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.
Applicant asserts that the claims are enabled. This is moot, as there have been no enablement rejections to date.
The 35 USC 112 (b) rejections of the previous office action are withdrawn in light of applicant’s amendments.
Applicant argues that the claims are properly construed in light of the specification to refer to controlling qubit states within quantum technologies, not controlling the technologies themselves, and as such, the written description rejections regarding controlling quantum technologies are baseless. This is not persuasive. Applicant’s proffered interpretation of the claims would require that one ignore the plain text of the claims, which reads, “implement quantum-state control in one or more quantum technologies.” Even if that interpretation were to be adopted, Applicant has offered no explanation as to how to implement BECs as qubits within such technologies.
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
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 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 Krantz, Philip, et al. "A quantum engineer's guide to superconducting qubits." Applied physics reviews 6.2 (2019): 021318.
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