DETAILED ACTION
Note to applicant:
It appears the inventor(s) filed the current application pro se (i.e., without the benefit of representation by a registered patent practitioner). While inventors named as applicants in a patent application may prosecute the application pro se, lack of familiarity with patent examination practice and procedure may result in missed opportunities in obtaining optimal protection for the invention disclosed. The inventor(s) may wish to secure the services of a registered patent practitioner to prosecute the application, because the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting a patent practitioner.
A listing of registered patent practitioners is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent practitioners located in their area by writing to Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Additionally, the claims are not drafted in accordance with statutes under 35 USC § 101 or 112 as discussed below. The examiner would like to make the applicant aware that the USPTO offers assistance to answer patent related questions and assist in filing their applications via the Pro Se Assistance center. For more information see https://www.uspto.gov/patents/patents-ombuds/pro-se-assistance-center or call Toll-Free 1-866-767-3848 or email: ProSeAssistanceCenter@uspto.gov.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the devices to perform measurements of claim 2, perform the determinations of claim 3 and the measurements of claim 4 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because the abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: “simulation and measurement roadmap of various properties”.
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:
Mechanisms for efficient radiation absorption over the widest range of electromagnetic frequencies using electric blackholes in claim 1.
Mechanism/method for determination of the effective mass of an absorbed photon by an electron and its blue-shifted wavelength in claim 3.
mechanism/method for determination of the electric blackhole boundary radius of electron in presence of a nearby positive charge such as a nucleus in claim 3.
mechanism/method for determination of the charge to mass ratio of a photon that seems to have vanishingly small mass and charge in claim 3.
Mechanism/method for measurement of the effective mass of an electron; in claim 4.
mechanism/method for measurement of Zero Inductance Electron Separation (ZIES) for an electron "gas;" in claim 4.
“mechanism/method for measurement of the photon penetration depth;” in claim 4.
“mechanism/method for direct measurement of the electron collision relaxation time” in claim 4.
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 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 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.
Claim 1 lacks written description for requiring “Mechanisms for efficient radiation absorption over the widest range of electromagnetic frequencies using electric blackholes; setting and implementing specific conditions for no escape of photons”.
MPEP 2163.03 (V) recites:
“While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). ”
Here, the claim fails to meet the written description requirement because the specification is silent with respect to any structure (i.e. mechanisms) to achieve the desired result of absorption over the widest range of electromagnetic frequency using electric black holes and providing no escape of photons by setting and implementing specific conditions.
Specifically, with respect to absorption paragraph [0021] discusses a mechanism for absorption. Specifically a very large voltage is applied to plates 13/14, pouches 15 of compressed electron charge are attached to plate 13. Radiation is allowed to strike plate 13 through a perfectly transparent plate 18 and as photons enter fully transparent plate 18 and head toward plate 13, if these photons are within the blackhole boundary of electron, they cannot escape this region and according to particular disclosed equations photons cannot leave a region of very large potential magnitude.
Paragraph [0022] teaches another mechanism which similarly operates by a very large potential magnitude.
That is, the claimed result appears to be due to some very large potential magnitude, however the specification is silent with respect to what magnitude would be required to achieve the claimed result. Indeed, the instant specification recites “As mentioned earlier and detailed later in the text, to achieve this objective, we would require a very large electron concentration. This is a very challenging task, but achievable. So, we would try to achieve maximum possible electron concentration to achieve acceptable level of radiation absorption. By applying a very large voltage between plates 13 and 14, we can make plate 13 acquire a large electron charge.” ([0019]). That is, the specification acknowledges that this is a challenging task, but achievable by applying a very large voltage between plates. However, the specification is notably silent as to how large a voltage is required. Therefore, there is no evidence as to what the voltage is, therefore the specification fails to provide evidence of possession of the claimed invention. Paragraph [0019] additionally teaches “It is a rather challenging task to acquire the desired very large electron concentration. As noted above, it may require for the electron charges to be cooled to near absolute zero temperature and/or be squeezed by compressing the electron charges by applying intense pressure on it by surrounding it with highly pressurized electron "gas." Such a mechanism is not explicitly shown here”. That is, there is no disclosure as to the mechanisms to allow for the claimed challenging result (i.e. the mechanism to achieve near absolute zero temperature or squeezing electron charges by intense pressure).
”Moreover, the entire disclosed mechanisms require a “completely transparent container”, “fully transparent” or “perfectly transparent” material ([0018], [0019], [0021], [0022]), however the specification is devoid of any material that is known to be completely, fully or perfectly transparent.
Moreover, the specification appears limited towards two mechanisms to achieve the claimed result (note achieving the result with the two disclosed mechanisms is not disclosed as discussed above), however the claim is a genus to all means of achieving the claimed result. Since only two species are disclosed and the specification provides no evidence that the applicant had possession of any and all mechanisms to achieve the claimed result.
Claim 2 lacks written description for “Simulation and measurement roadmap of various properties of different types of blackholes such as gravitational, electric, and electro-gravitational blackholes; set up and methodologies are detailed herein to measure blackhole properties such as its blackhole boundary radius, radiation escape range as a function of location of the source inside a blackhole, blackhole core radius, identification of blackholes that may be contributing to the Cosmic Microwave Background (CMB) radiation.”
The specification again is devoid of any simulation or measurement to achieve the claimed result of measuring blackhole properties. Specifically, while paragraph [0018] teaches “spectrometers”, there is no disclosure of any structure or how the disclosed “spectrometers” achieve the claimed result. Moreover, paragraph [0020] suggests measuring “self-inductance” by “a series R-L circuit, however there is no disclosure any structure or how the “series R-L circuit” operates to achieve the claimed function. Paragraph [0025] further discusses measuring the redshift, but again there is no disclosure as to how this is achieved. Therefore, claim 2 is a result with no disclosure as to how the result is achieved.
Moreover, claim 2 covers any means to achieve the claimed result. MPEP 2173.05 (g) recites: “Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340, 94 USPQ2d at 1167. For instance, a single means claim covering every conceivable means for achieving the stated result was held to be invalid under 35 U.S.C. 112, first paragraph because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim. Hyatt, 708 F.2d at 714-715, 218 USPQ at 197. ”
That is, claim 2 covers any means of achieving the claimed result when no means of achieving are disclosed.
Claim 3 lacks written description for reciting “Mechanism/method for determination of the effective mass of an absorbed photon by an electron and its blue-shifted wavelength; mechanism/method for determination of the electric blackhole boundary radius of electron in presence of a nearby positive charge such as a nucleus; mechanism/method for determination of the charge to mass ratio of a photon that seems to have vanishingly small mass and charge.” Specifically, the specification is devoid of any mechanism for the claimed determination, therefore these are results with no structure disclosed as to how the result is achieved. With respect to the claimed methods, while equations are disclosed to achieve the claimed result, there is no disclosed way to acquire the required data to achieve the claimed result utilizing the disclosed equations.
Claim 4 similarly requires methods for measurement, however the specification is devoid of any structure to achieve the claimed result.
Additionally, claims 1 and 3-4 invoke 35 USC 112(f). MPEP 2163.03 (VI) recites:
“ claim limitation expressed in means- (or step-) plus-function language "shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. If the specification fails to disclose sufficient corresponding structure, materials, or acts that perform the entire claimed function, then the claim limitation is indefinite because the applicant has in effect failed to particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (en banc). Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention. ”
Here, since the specification fails to disclose sufficient corresponding structure, material or acts to perform the entire claimed function, the claims are unbounded functional limitations that cover all ways of performing a function and indicates that the inventor has not provided sufficient disclosure to show possession of the claimed invention as required by 35 USC § 112(a).
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 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.
Claims 1-4 are drafted to achieve a number of results using single means. MPEP 2164.08(a) recites:
“A single means claim, i.e., where a means recitation does not appear in combination with another recited element of means, is subject to an enablement rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714-715, 218 USPQ 195, 197 (Fed. Cir. 1983) (A single means claim which covered every conceivable means for achieving the stated purpose was held nonenabling for the scope of the claim because the specification disclosed at most only those means known to the inventor.). When claims depend on a recited property, a fact situation comparable to Hyatt is possible, where the claim covers every conceivable structure (means) for achieving the stated property (result) while the specification discloses at most only those known to the inventor.”
Here, each claim covers every conceivable means for achieving the stated results while the specification fails to disclose any means of achieving the claimed results. The nature of the invention is to absorb EM frequencies using blackholes (claim1), simulate and measure various properties (claim 2), make determinations (claim 3) and additional measurements (claim 4). The state of the prior art as admitted in the applicants specification is that foam, carbon and iron, iron ball paint, SRR, multi-walled nano tubes have been developed to absorb narrow ranges of EM frequencies ([0001]). The instant specification however is devoid as to how these wider ranges are achieved or measurements and determinations made. The direction provided in the specification is that absorption is achieved using the mechanisms of figures 3-4, however there is no disclosure as to the requisite voltage/materials or additional structure to achieve the claimed result (i.e. the structure required for intense pressure electron squeezing or near absolute zero temperature or the voltage or source for the large magnitude voltage (see discussion above)). With respect to the measurement and determination, there is no suggestion that this was known to the art and the specification merely points to “spectrometers” and L-R circuits without any disclosure as to the structure or functions of these disclosed devices to achieve the claimed results. The specification reiterates the importance of a “perfectly transparent” material, however the specification is notably silent as to what sort of material is “perfectly transparent”. Lastly, the instant disclosure readily admits that obtaining these results are a challenge (see paragraphs [0018], [0019] and [0021]), however achievable via cooling to near zero degree Kelvin or providing a fully transparent flexible pouch ([0018]) or applying a very large voltage ([0021]). However, the specification is notably silent as to how the near zero degree kelvin is achieved, what sort of material is “fully transparent” or the magnitude of the very large voltage. There are no disclosed working examples, therefore taken together, there is not enough information to enable one of ordinary skill in the art to make and use the invention.
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 1-4 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.
Claims 1-4 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only.
Claim limitations discussed above 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. Specifically, the specification devoid of any structure materials or acts to achieve the claimed functions. 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.
Claim 1 recites the limitation “setting and implementing specific conditions for no escape of photons” is vague and indefinite because the claim does not provide a discernable boundary on what performs the function. The recited function does not follow from the structure recited in the claim i.e. mechanisms, so it is unclear whether the function requires some other structure or is simply a result of operating the mechanisms in a certain manner. Thus, one of ordinary skill in the art would not be able to draw a clear boundary between what is and is not covered by the claim. See MPEP 2173.05(g) for more information.
The term “widest range of electromagnetic frequencies” in claim 1is a relative term which renders the claim indefinite. The term “widest range of electromagnetic frequencies” is not defined by the claim, the specification 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 invention. The specification is devoid of any standard to determine the widest range, because one range is widest compared to a smaller range, the terminology is relative.
Claim 2 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite in that it fails to point out what is included or excluded by the claim language. This claim is an omnibus type claim.
Specifically, claim 2 recites “set up and mythologies are described herein”. “Described herein” is indefinite because it is unclear what is and what is not included in the claim from the specification.
Regarding claims 2-3, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
It is noted MPEP 2173.06(II) recites “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962)”. As discussed above, since the claims invoke 112(f) and the scope of the claims cannot be construed due to the uncertainty of proper interpretation of the claims (i.e. structure, material or acts to perform the functionally claimed subject matter), a prior art rejection is not applied.
The term “vanishingly small mass to charge” in claim 3 is a relative term which renders the claim indefinite. The term “vanishingly small mass to charge” is not defined by the claim, the specification 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 invention. The specification is devoid of any standard to determine what is considered vanishingly small.
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.
Claims 1-4 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claims 1 and 3-4 are each directed towards two statutory categories of invention. Specifically, claim 1 is directed towards mechanism and requires the method steps of setting and implementing specific conditions for no escape of photons. That is, claim 1 is directed towards both a machine and process. Claims 3-4 are directed towards “mechanisms/methods” thus directed towards both a machine and process. MPEP 2104 (III) recites “As explained in MPEP § 2106, there are two criteria for determining subject matter eligibility: (a) first, a claimed invention must fall within one of the four statutory categories of invention set forth in 35 U.S.C. 101, i.e., process, machine, manufacture, or composition of matter; and (b) second, a claimed invention must be directed to patent-eligible subject matter and not a judicial exception (unless the claim as a whole includes additional limitations amounting to significantly more than the exception). ” (emphasis added).
Here claims 1 and 3-4 each fall within two statutory categories of invention and thus are not patent eligible.
Additionally, claim 3 in part requires an abstract idea without significantly more. Specifically, claim 3 requires determination of effective mass, electric blackhole boundary radius and charge to mass ratio, which are disclosed to be mathematical equations. There is no claimed practical application or any additional limitation that suggests significantly more than an abstract idea.
Moreover, claim 2 is directed towards “simulation and measurement roadmap”, simulation and measurement roadmap does not fall within any of the statutory categories of invention. That is, simulation and measurement may be a computer program per se or data per se. MPEP 2106.03 expressly excludes program per se or data per se from eligibility under 35 USC § 101.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J LOGIE whose telephone number is (571)270-1616. The examiner can normally be reached M-F: 7:00AM-3:00PM.
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.
/MICHAEL J LOGIE/ Primary Examiner, Art Unit 2881