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 .
Response to Arguments
Applicant’s arguments regarding previous objections to the instant specification an drawings, as well as rejections under 35 U.S.C. 101, see pages 8-10, filed 04 March 2026, with have been fully considered and are persuasive. The objections and rejections have been withdrawn.
Applicant's arguments regarding rejections under 35 U.S.C. 112(a) and (b) have been fully considered but they are not persuasive. Applicant argues that the instant filed specification on page 7 and amended instant Figs. 4-6 disclose how to determine an optical amplitude feature point, and curve discontinuities or local minima points, and that one of ordinary skill in the art would allegedly understand what the term “feature points” or “curve abrupt change points” means and how to determine those points. The Examiner respectfully disagrees. It is unclear as to the “metes-and-bounds” regarding the claimed term “abrupt.” The term “abrupt” is broadly defined as: steep, precipitous, sudden or lacking smoothness. All of these definitions are indefinite, since all are subjective, and do not have clear and precise definitions. As such, the recited term “abrupt” is also subjective and indefinite and the rejections under 35 U.S.C. 112(b) remain.
In regards to the rejections under 35 U.S.C. 112(a), Applicant only argues that one of ordinary skill would understand how to determine the recited “feature points.” However, it is noted Applicant made no arguments in regards to the Wands factors applied by the Examiner in the rejection in the previous office action. Applicant refers to amended drawing Figs. 4-6, which are reproduced below, which allegedly identify the recited “feature points” on plotted curves.
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However, Applicant provides no explanation and/or reasoning behind the alleged newly indicated “feature points,” as to exactly how and why they are chosen/indicated, and why not other portions/points of the curves that exhibit identical functional behavior (i.e. curve discontinuities, maxima, minima, etc.) are not chosen/indicated as “feature points.” For example, the Examiner has added black arrows (↑↓) on the reproduced curves above illustrating points along the curves that exhibit the identical functional behavior (i.e. rate-of-change, maxima, minima, etc.), however, Applicant has not indicated these points as “feature points.” As such, it appears Applicant’s indicated “feature points” appear to be arbitrarily chosen. Thus, not only does the instant disclosure fail to enable one of ordinary skill in the art as of the effective filing date to determine/locate “feature points” along curves, Applicant’s arguments regarding amended Figs. 4-6 fail to further provide any guidance and/or reasoning behind the indicated “feature points.” As such, the rejections under 35 U.S.C. 112(a) remain.
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 1-4, 6-10 and 12 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 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. Instant claims 1, 4, 6 and 9 all recite the limitation: “determining an optical fiber amplitude feature point.” The instant filed specification states: “The feature points can be curve abrupt change points, which physically correspond to formation abrupt change points, for example, corresponding to channel numbers i1 and i2 on the Ir curve and corresponding to depths D1 and D2 on the logging curve.” This statement in the instant filed specification fails to adequately describe and/or define the term “abrupt” in regards to “change points” which are the claimed “feature points.” Applying the Wands factors (see In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), Wands factor (F), being the amount of direction provided by the inventor, the is no direction provided by the inventor as to how to determine what constitutes an “abrupt” change point in the logging curve, and how it can be clearly distinguished from other changes in the logging curve. Although Applicant has amended instant Figs. 4-6, to allegedly indicate the recited “feature points,” these newly indicated points are indistinguishable for other points along the logging curve that exhibit identical behavior (i.e. rate-of-change, maxima, minima, etc.) Wands factor (G), being the existence of working examples, the instant disclosure fails to disclose any details of any working examples regarding the required changes in values, abrupt or otherwise, of the logging curve to determine the feature point. Wands factor (H), being the quantity of experimentation needed to make or use the invention based on the content of the disclosure, the instant disclosure, as pointed out previously, does not provide sufficient directions in what exactly constitutes a feature point, being an abrupt change point in the logging curve, and as such, other change points cannot be distinguished easily from an alleged feature point required to make and/use the instant invention, thus requiring undue experimentation in determining the require feature point. All other claims are similarly rejected to their dependency.
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 1-4, 6-10 and 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.
As pointed out above, instant claims 1, 4, 6 and 9 recite the limitation: “determining an optical fiber amplitude feature point.” The instant filed disclosure fails to adequately define or describe what exactly constitutes and “abrupt change point” which corresponds to the recited feature point. Although not recited in the claims, the term “abrupt” employed in the instant specification as a “feature point” characteristic of a curve, the term “abrupt” is a relative term, and the instant disclosure does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention. All other claims are similarly rejected due to their dependency.
Conclusion
THIS ACTION IS MADE FINAL. 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 Primary Examiner John Fitzgerald whose telephone number is (571) 272-2843. The examiner can normally be reached on Monday-Friday from 7:00 AM to 3:30 PM E.S.T. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor John Breene, can be reached at telephone number (571) 272-4107. 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. The central 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.
/JOHN FITZGERALD/Primary Examiner, Art Unit 2855