Non-Final Rejection
This application was filed with claims 1-11, which are pending.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 11 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter. The claim is drawn to “An application of [a laser] wherein [the laser] is applicable to [various fields].” First, this is not a process. “A process defines “actions”, i.e., an invention that is claimed as an act or step, or a series of acts or steps.” MPEP 2106.03 I. There are no method steps that must occur, there are no actions.
This is also not a machine, manufacture, or composition of matter. “The other three categories (machines, manufactures and compositions of matter) define the types of physical or tangible "things" or "products" that Congress deemed appropriate to patent. Digitech Image Techs. v. Electronics for Imaging, 758 F.3d 1344, 1348, 111 USPQ2d 1717, 1719 (Fed. Cir. 2014) ("For all categories except process claims, the eligible subject matter must exist in some physical or tangible form."). Thus, when determining whether a claimed invention falls within one of these three categories, examiners should verify that the invention is to at least one of the following categories and is claimed in a physical or tangible form.” MPEP 2106.03 I. The claim is not attempting to actually claim the laser device, it is not claiming a physical tangible thing. It is attempting to claim what types of field a type of laser may be usable with, but it is not actually claiming the laser device in the same way as, for example, claim 1. It is not actually claiming a process or a device, but rather is attempting to claim how a user might decide to use something. This does not fit in any of the four statutory classes.
It is noted that if applicant truly wants to claim the fields in which the laser is used, the claim could be amended to be a method of use, which would be a statutory process as long as some actions are claimed. Applicant should be aware that such a claim, if properly presented, would likely be restrictable as a different invention than that of claims 1-10, as a product and process of using. See MPEP 806.05(h). As claims 1-10 are already examined herein, the device claims would be considered elected by original presentation. See MPEP 821.03. At present the claim 11 laser is much less detailed compared to the claim 1 laser such that any process of use would be using a materially different product than that of claim 1. If applicant were to do this it should include in claim 11 all of the limitations of claim 1 to avoid a restriction.
Claim Construction
Product-By-Process
Claims 1-10 are device claims, drawn to a laser. However, the claims include many process limitations describing how the device is made, product-by-process features. Determination of patentability for product-by-process limitations are based on the product itself, not the process of making, and a claim will not be patentable if the structure is the same even if made by a different process. MPEP 2113. Process steps are only limitations for patentability to the extent that they imply or require a particular structure. More will be discussed as needed in the rejections below.
In many cases it almost seems like applicant would like to claim a method of making the device. Claims to a device have already been presented and an action on the merits issued herein, so claims to a method, which is a different invention, will not be entertained in this application. MPEP 821.03. A continuation could be filed to include a method invention if desired.
Comprises, but is not limited to
Several claims use the term “comprises, but is not limited to.” For example, in claim 2, the solvent comprises but is not limited to several things. The broadest reasonable interpretation of such a limitation is that it is simply not a limitation for patentability. The claim itself says that the solvent may be these things, but is not limited to these things, so it may also be other things. Note this is not considered per se indefinite—it is clear that the claim means exactly what it says—it is just broad, and breadth is not indefiniteness. However, it does lead to some 112(d) problems as below.
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.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 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 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.
Claim 10 requires that “a growth size of a grain of the perovskite is controlled by adjusting a proportion of a mixed solvent, and a proportion and a concentration of a precursor material, and adding an anti-solvent, so that a size of the grain changes in a range of several nanometers to hundreds of microns, thus controlling a laser emitting threshold and a gain of the gain medium.” The only discussion of this in the specification is at [0013], which says “Preferably, in an implementation method of the gain medium prepared by the solution method, a growth size of a grain of the perovskite is controlled by adjusting a proportion of a mixed solvent, and a proportion and a concentration of a precursor material, and adding an anti-solvent, so that a size of the grain changes in a range of several nanometers to hundreds of microns, thus controlling a laser emitting threshold and a gain of the gain medium.” As can be seen, this is just the same words. But there is no explanation how one should change the proportions to control the grain size of the perovskite—this is the only place that mentions the word grain or says that it is in nanometers or microns. There is no discussion of what proportions are needed or how they affect things, no guidance at all from the specification how the proportions affect the grain, whether different solvents will need different proportions, whether different materials of perovskite will need different proportions, really any detail as to what is needed to make the invention. There is not even any guidance as to what size grains are needed—a range of several nanometers to hundreds of microns is a very wide range when referring to laser devices. Given the lack of explanation, a person of ordinary skill could not make the device as claimed without undue experimentation.
The examiner has considered the Wands factors when determining whether to make this rejection. See MPEP 2164.01(a). In that sense the examiner makes the following findings. For factor (A), the claims are broad, with no limitation as to what the solvent or anti-solvent might be, or what the proportions should be, weighing in favor of undue experimentation. Factors (B)-(E) seem to be neutral at best, and it is not clear from the record that a person skilled in the art would have any reason to know how to come up with the appropriate proportions to create the material. According to the applicant this is a new material for lasers, and the proportion is supposed to lead to improved threshold that has not been reached, so a person of skill in the art would not have had reason to know what kinds of grain size might be useful here, much less how to make them with the proportions of solvents. For factors (F)-(H), the amount of direction (very little), existence of working examples (none) and quantity of experimentation needed (great) weigh heavily in favor of undue experimentation.
Claims 1-10 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 1 includes the limitation “the laser device does not need to contain an additionally designed and machined resonant cavity.” This limitation is indefinite because it is not clear whether applicant actually intends this to be a requirement or not. Saying it “does not need to” contain an additional cavity seems to leave it open to either case. It does not need to have it, but perhaps it could have one. Applicant should clarify this either by removing the limitation entirely, if it was intended to go either way, or by removing the words “need to” to make clear that it is required to not contain an additionally designed cavity, if that is the intent. Note that the examiner views this differently than the “comprises, but is not limited to” discussion above. In that case the language is clear that it is not intended to be binding. In this case it is not clear whether the limitation is intended to be binding or not.
Claims 7-8 are additionally rejected. Both of these claims are the same except have different dependencies, therefore they have the same problems. The claims as written are confusing because they seem to state that the substrate comprises a rigid material, a flexible material, a metal foil material, and various other materials. It is apparent that applicant does not mean that the substrate comprises all of these materials as this would not make sense to a person skilled in the art, but that is how the claims are written. Instead it is assumed that the claims are meant to require the substrate comprises one of these numerous choices, and that is how the claim is examined.
Furthermore, in each of these selections several examples are given, but it is not clear if these are meant to be exemplary or required. For example, if it is a rigid material, is it also required to be quartz, glass, silicon, sapphire, or metal? This should be clarified in the claim.
Claims 3-4 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 requires only that “a material form of the gain medium comprises, but is not limited to,” various things. As discussed above, this is not a binding limitation, as the claim itself states that it is not limited to what it says. As this is the only limitation of claim 3, claim 3 has no further limitation.
Claim 4 further specifies the materials of A’, A, B, and X. However, again the claim merely specifies that each of these “comprises, but is not limited to” various materials. Again, this is not further limiting, and the claim has no additional limitation.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhu et al., Lead halide perovskite nanowire lasers with low lasing thresholds and high quality factors, Nature Materials, vol. 14 (June 2015) (“Zhu”).
Regarding claim 1, Zhu discloses a perovskite laser device. The entire document is relevant. There is no external cavity shown, and it is low threshold as discussed below in the later limitation. The device consists of a gain medium composed of a perovskite material and a substrate. See p. 636; Fig. 2. There is not any additional resonant cavity, the crystal itself has “smooth end facets, making them ideal Fabry-Perot cavities for lasing.” P. 637.
The laser undergoes femtosecond pumping (see p. 638; 643 (Optical characterization) and the threshold is lower than 100 μJ cm−2, which is one of the claimed alternatives. See abstract (200 nJ cm-2); p. 638 (~600 nJ cm-2).
An ingredient of the perovskite material is ABX3, A is a monovalent cation, B is a metal cation, and X is an anion, which is one of the claimed alternatives. See p. 636.
Claim 2 is drawn to method steps of preparing the perovskite material. This is a product-by-process claim and does not receive patentable weight for patentability purposes. The examiner does not see how this claim makes any requirement as to the structure of the ultimate device.
Claims 3 and 4 have no further limitation as discussed above in the 112(d) rejection. It is noted though that the claimed materials are met. P. 636.
Regarding claim 5, metal is added to the gain medium. P. 641 left col. Additionally, the formula of the gain medium is CH3NH3PbCl3, so it can be said a metal has been added in that sense.
Regarding claim 6, as discussed above re: claim 1 the device is optically pumped, and the device structure is just the gain medium and the substrate. See Fig. 2, p. 638.
Regarding claims 7-8, the substrate may be a rigid material, Si/SiO2, and is flat. See p. 638; Fig. 2a.
Claims 9 and 10 are drawn to the laser of claim 1, and a method of how the gain medium is prepared. Each is a product-by-process claim and does not receive patentable weight for patentability purposes. To the extent claim 10 might provide some requirement as to size, Zhu is also in the nanometer to several micron scale. P. 636-37, Figs. 1-2.
Regarding claim 11, Zhu describes an external-cavity-free low-threshold perovskite laser device as discussed above re: claim 1, and suggests the laser may be used in sensing. P. 641, right col.
Other references showing perovskite lasers are cited.
Presently the claims alternatively call for ABX3 or another formula, and ABX3 is used in the rejections above. At least CN 114530753 (cited on IDS) and CN 111446619 show lasers using the other formula.
Conclusion
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/JAMES A MENEFEE/Primary Examiner, Art Unit 2828 /MINSUN O HARVEY/Supervisory Patent Examiner, Art Unit 2828