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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on June 9, 2026 is acknowledged.
Claims 9-12 and 20-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 9, 2026.
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 1-8, 13-19, 24, and 25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1: Yes.
Claim 1 recites “a method, comprising: performing a calibration process which comprises: performing laser annealing operations…determining junction resistance shifts of the test superconducting tunnel junction devices as a result of the laser annealing operations; and utilizing the determined calibration data for configuring laser annealing operations for laser tuning superconducting tunnel junction devices corresponding to the test superconducting tunnel junction devices” is a process.
Step 2, Prong One: Judicial exception? Yes.
The claim when viewed as a whole recites an abstract idea, e.g. mental process. The broadest reasonable interpretation of the limitations is that those limitations fall within the mental process groupings of abstract ideas because they cover concepts performed in the human mind, including observation, evaluation, judgment, and opinion.
The recited steps “performing a calibration process…”, “performing laser annealing operations on a set of test superconducting tunnel junction devices using difference combinations of laser power and anneal time; determining junction resistance shifts…utilizing the determined junction resistance shirts….for laser tuning superconducting tunnel junction devices corresponding to the test superconducting tunnel junction devices” encompasses data gathering, observation, evaluation, judgement, and opinion.
The steps are not performed by any particular devices. The recited devices are tools used to perform the abstract idea.
Further, the step “utilizing the determined junction” is further claimed in claim 2 and is a mathematical concepts. The claim does not recite a particular equation or algorithm for making the recited combining and performing steps, this just means that the abstract idea is being recited broadly enough to monopolize all possible equations or algorithms that might be used (Please also see MPEP 2106.04(a)(2)(III)(A), (B), (C), and (D).
Step 2, Prong Two: Practical application? No.
The recited steps when viewed as a whole, individually or in ordered combination does not integrate the abstract idea into a practical application. The recited steps do not show in details how to accomplish each limitation. The steps are not performed by any particular devices. The recited devices are tools used to perform the abstract idea.
The recited step “utilizing…” encompasses an insignificant extra solution and is merely data gathering.
Claim 1 when viewed as a whole does not provide meaningful limitations beyond generally linking the use of the judicial exception to a particular environment to transform the judicial exception into patent-eligible subject matter (see MPEP 2106.05(e)).
Per MPEP 2106.04(d)(1) and 2106.05(a), the claim as a whole does not provide an improvement to other technology or technical field. The claim limitations as recited when viewed as a whole do not include the components or steps of the invention that provide the improvement described in the specification.
Step 2B: the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, for reasons that are analogous to the discussion of additional elements at Prong 2.
Dependent claim 2 adds a limitation which is data gathering and encompasses insignificant extra solution. The “(determined) maximum tuning range for each different combaintion of laser power and anneal time” is insignificant extra solution which is data merely extending the abstract idea without adding any additional elements.
Dependent claims 3 and 14 add a limitation which is data gathering and encompasses insignificant extra solution. The “(generated) tuning curve that represents tuning rates for the different combinations of laser power and anneal time” is insignificant which is data merely extending the abstract idea without adding any additional elements. For example, the recited curve is further limit in claim 4 which is data and insignificant extra solution, e.g. “a different laser power setting, wherein in each calibration tuning curve provides information regarding a percentage of junction shift as a function of anneal time for different laser power settings” or “a different percentage of junction resistant shift, wherein each calibration curve….as a function of laser power for the different percentage of junction resistance shift.
As explained in claim 3, claim 4 adds a limitation which is which is data gathering and encompasses insignificant extra solution merely extending the abstract idea without adding any additional elements.
Dependent claims 5-7 add limitations which are data and encompasses insignificant extra solution merely extending the abstract idea without adding any additional elements. For example, “(utilized) statistical parameter to generate the calibration data” is insignificant extra solution. The “(generated) calibration data” and the “(utilized) statistical parameter” are insignificant and their use is unlimited.
Dependent claims 8 and 19 add limitations such as “test quantum chip” which is not particular device. The recited chip is used as a tool performing the abstract idea.
Dependent claims 15-18 are similar to claims 5-8 add limitations which are data and encompasses insignificant extra solution merely extending the abstract idea without adding any additional elements.
Independent claim 13 recites a system, independent claim 24 recites a computer program product which do not offer a meaningful limitation beyond generally linking the system and product claims to a particular technological environment, that is, implementation via an annealing apparatus and control system (claim 13. In other words, the system claim and the product claim are no different from the method claim 1 in substance; the method claim recites the abstract idea while the device claim recites generic components configured to implement the same abstract idea. The claims do not amount to significantly more than the underlying abstract idea.
Dependent claim 25 adds limitations which are insignificant extra solution. The curves represent solution activity because it is a mere nomial or tangential addition to the claim. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014). This limitation represents extra-solution activity because it is a mere nominal or tangential addition to the claim. See MPEP 2106.05(g), discussing limitations that the Federal Circuit has considered to be insignificant extra-solution activity, for instance the step of printing a menu that was generated through an abstract process in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016) and the mere generic presentation of collected and analyzed data in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). Limitation “each turning curve correspond to at least one of: a different power setting….(extra solution and is merely data) and different percentage of junction resistance shift, wherein each calibration tuning curve provides information regarding anneal time as a function….(insignificant extra solution and is merely data) without providing any additional limitations.
Further claim 24 is drawn are drawn to a “computer readable storage media". The broadest reasonable interpretation of a claim drawn to a medium covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent (see MPEP 2111.01). Because the broadest reasonable interpretation covers a signal per se, a rejection under 35 USC 101 is appropriate as covering non-statutory subject matter. See 351 OG 212, Feb 23 2010.
Further, the program instructions as recited in claim 24 are not executed by a computer processor.
Claim 25 depends from claim 24 and therefore is also rejected for the same reason.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 13 of copending Application No. 18/501,196 (reference application) (hereinafter ‘196). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the instant application falls within the scope of 196.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1: see 196, claim 1.
Claim 13: see 196, claim 13.
Conclusion
Claims 1-8, 13-19, 24, and 25 are patentably distinguishable over the prior art of record.
USPN. 10475983 discloses systems and techniques facilitating antenna-based thermal annealing of qubits are provided. In one example, a radio frequency emitter, transmitter, and/or antenna can be positioned above a superconducting qubit chip having a Josephson junction coupled to a set of one or more capacitor pads. The radio frequency emitter, transmitter, and/or antenna can emit an electromagnetic signal onto the set of one or more capacitor pads. The capacitor pads can function as receiving antennas and therefore receive the electromagnetic signal. Upon receipt of the electromagnetic signal, an alternating current and/or voltage can be induced in the capacitor pads, which current and/or voltage thereby heat the pads and the Josephson junction. The heating of the Josephson junction can change its physical properties, thereby annealing the Josephson junction. In another example, the emitter can direct the electromagnetic signal to avoid unwanted annealing of neighboring qubits on the superconducting qubit chip (Abstract; Cols. 11-14).
USPAP. 20200075834 discloses systems and techniques providing suitable chip structures for facilitating antenna-based thermal annealing of qubits are provided. In one example, a radio frequency emitter can comprise a voltage-controlled oscillator and an antenna. The voltage-controlled oscillator can receive power-on signals from a microcontroller, thereby causing the voltage-controlled oscillator to generate an electromagnetic wave. The antenna can then direct the electromagnetic wave onto a set of one or more capacitor pads of a Josephson junction on a superconducting qubit chip, thereby annealing the Josephson junction. In another example, a voltage regulator and a digital-to-analog converter or digital-to-digital converter can be coupled in series between the microcontroller and the voltage-controlled oscillator, thereby allowing the voltage-controlled oscillator to be voltage and/or frequency tunable and eliminating the need for external power routing as compared to photonic laser annealing. In yet another example, a bipolar-junction and complementary metal-oxide semiconductor stack construction can be employed (Abstract; Pars. 37-49).
Regarding claim 1, the closest prior art of record either alone or in combination fails to anticipate or render obvious the combination wherein “ determining junction resistance shifts of the test superconducting tunnel junction devices as a result of the laser annealing operations; and utilizing the determined junction resistance shifts of the test superconducting tunnel junction to determine calibration data for configuring laser annealing operations for laser tuning superconducting tunnel junction devices corresponding to the test superconducting tunnel junction devices” in combination with other limitations in the claims as defined by Applicants.
Claims 2-8 depend from claim 1 and therefore are also patentably distinguishable over the prior art of record.
Regarding claim 13, the closest prior art of record either alone or in combination fails to anticipate or render obvious the combination wherein “determine junction resistance shifts of the test superconducting tunnel junction devices as a result of the laser annealing operations; and utilize the determined junction resistance shifts of the test superconducting tunnel junction to determine calibration data for configuring laser annealing operations for laser tuning superconducting tunnel junction devices corresponding to the superconducting tunnel junction devices” in combination with other limitations in the claims as defined by Applicants.
Claims14-19 depend from claim 13 and therefore are also patentably distinguishable over the prior art of record.
Regarding claim 24, the closest prior art of record either alone or in combination fails to anticipate or render obvious the combination wherein “program instruction to determine junction resistance shifts of the test superconducting tunnel junction devices as a result of the laser annealing operations; and program instructions to utilize the determined junction resistance shifts of the test superconducting tunnel junction to determine calibration data for configuring laser annealing operations for laser tuning superconducting tunnel junction devices corresponding to the test superconducting tunnel junction devices” in combination with other limitations in the claims as defined by Applicants.
Claim 25 depends from claim 24 and therefore are also patentably distinguishable over the prior art of record.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
USPAP. 20250067967 discloses an optical microscope device comprises an optically integrated configuration of components for imaging a target device within a field of view of the optical microscope device, and for laser annealing the target device by generating a laser beam spot pattern from a laser beam received on an optical fiber from a remote laser source, and for controlling a duration of exposure of the laser beam spot pattern for laser annealing the target device. The optical apparatus and electrical characterization apparatus comprise an integrated configuration of a laser annealing apparatus that is configured to perform various operations, in-situ, to facilitate laser tuning of junction resistances of superconducting tunnel junction devices on a quantum chip (e.g., Josephson junctions), wherein such operations include, for example, laser annealing operations for laser tuning junction resistances of superconducting tunnel junction devices on a quantum chip, and in-situ resistance measurements to measure the junction resistances of the superconducting tunnel junction devices at any time before, during, and/or after the laser annealing operations, as needed, to determine or otherwise track the progression of the junction resistance shifts of the superconducting tunnel junction devices (Abstract; Pars. 77 and 100-103).
Gambetta et al., “Superconducting qubit with Purcell protection and tunable coupling”, October 22, 2018 (submitted by Applicants) discloses a superconducting qubit for the circuit quantum electrodynamics architecture that has a tunable coupling strength g. We show that this coupling strength can be tuned from zero to values that are comparable with other superconducting qubits. At g =0 the qubit is in a decoherence free subspace with respect to spontaneous emission induced by the Purcell effect. Furthermore, we show that in the decoherence free subspace the state of the qubit can still be measured by either a dispersive shift on the resonance frequency of the resonator or by a cycling-type measurement (Pages 1-4).
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/PHUONG HUYNH/ Primary Examiner, Art Unit 2857 August 22, 2026
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