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 .
Election/Restrictions
Applicant’s election without traverse of inventive group I in the reply filed on 6/22/26 is acknowledged.
Claims 15-17 and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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:
“manipulation source is configured to provide a manipulation signal” in claim 18, which is interpreted in accordance with the disclosure to refer to a laser; and
“optical element is configured to cause the manipulation signal to be incident on the metasurface” in claim 18, which is interpreted in accordance with the disclosure to refer to lenses, mirrors, waveguides, and fiber optic cables.
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 1-14, 18, 20-22 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 and 18 recite, “a plurality of electrodes configured to define a confinement volume configured to confine one or more quantum objects therein, a plurality of quantum object positions defined within the confinement volume.”
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.
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).
In the instant case, the claim defines the invention by functional language specifying a desired result to be obtained from the processor, namely “a confinement volume configured to confine one or more quantum objects therein.” The disclosure explains that the quantum objects may be “an atom and/or ion, neutral or ionic molecule, quantum particle, quantum dot, and/or other objects whose respective quantum state is controllable via application of manipulation signals.” Instant PgPub para 35. However, the disclosure fails to explain how the claimed confinement volume may be created for any “quantum object” other than an ion. As such, one of ordinary skill in the art would not recognize that the applicant had possession of a “confinement volume configured to confine” an atom, a neutral molecule, a quantum particle, a quantum dot, or any other qubit modality that is not a trapped ion. 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.
Claim 11 is 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 11 recites, “where the one or more metamaterial structures can be used as a transparent electrode for a photoactive device.” It is unclear what is meant by the above “use” limitation since no explanation is provided as to the context of such a capability. It is not even evident that such a “use” requires the rest of the claimed invention.
Claim 12 is 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 12 recites, “the metamaterial structures contain tunable properties related to variable free carrier concentration.” No explanation is provided for the meaning of “related” in the above limitation. Further, the specification sheds no light on this limitation. One of ordinary skill in the art would have no way to determine whether properties of a given metamaterial structure were “related” in the claimed fashion, because the degree and quality of the claimed relationship are left totally unexplained. As such, the claim is indefinite.
Claim 14 is 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 14 recites, “wherein the one or more metasurface comprises of ITO materials used as truncated waveguides.” The combination of unusual grammar and the “used as” limitation of claim 14 make it entirely unclear what structure is being claimed. The specification offers no clarification. As such, the claim is rejected as indefinite.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, 4, 5, 7, 8, 9, 11, 13, 14, 21 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0410266 A1 [Saffman] in view of US 2012/0327502 A1 [Zheludev].
Regarding Claim 1:
Saffman teaches a quantum object confinement apparatus comprising (abstract),
a plurality of electrodes configured to define a confinement volume configured to confine one or more quantum objects therein, a plurality of quantum object positions defined within the confinement volume (Fig. 1 (104)); and
one or more metasurfaces, each metasurface of the one or more metasurfaces associated with a respective quantum object position of the plurality of quantum object positions (para 55- metamaterial).
However, Saffman does not specify that the metasurface comprises a transparent conducting oxide.
Zheludev describes a tunable metamaterial made with indium tin oxide, which is a transparent conducting oxide. Para 48. It would have been obvious to one of ordinary skill in the art before the effective time of filing to use the tunable metamaterial of Zheludev as the metasurface of Saffman. One would have been motivated to do so since this would allow for the tuning of the metasurface to provide desired optical controls. Zheludev para 12.
Regarding Claim 3:
The above modified invention teaches the quantum object confinement apparatus of claim 1, wherein the metasurface comprises a two-dimensional array of metamaterial structures comprising the transparent conducting oxide. Zheludev para 61, Fig. 8a-i.
Regarding Claim 4:
The above modified invention teaches the quantum object confinement apparatus of claim 3, wherein the two-dimensional array of metamaterial structures is configured to enable at least one of (a) phase control or (b) wavefront shaping of an induced beam provided by the metasurface. Zheludev para 12.
Regarding Claim 5:
The above modified invention teaches the quantum object confinement apparatus of claim 3, wherein the transparent conducting oxide is disposed at least on respective surfaces of a plurality of metamaterial structures of the two-dimensional array of metamaterial structures. Zheludev paras 48, 61, 74.
Regarding Claim 7:
The above modified invention teaches the quantum object confinement apparatus of claim 5, wherein each of the plurality of metamaterial structures is a pillar extending from a surface of the quantum object confinement device a distance in a range of 0.5 nm to 1 μm. See Zheludev Fig. 10a.
Regarding Claim 8:
The above modified invention teaches the quantum object confinement apparatus of claim 5, wherein the one or more metamaterial structures comprise a dielectric material. Zheludev paras 75, 85.
Regarding Claim 9:
The above modified invention teaches the quantum object confinement apparatus of claim 8, wherein the one or more metamaterial structures comprises a core comprising the dielectric material and the core is enveloped within a shell comprising the transparent conducting oxide. Zheludev Fig. 9b, as described in para 87.
Regarding Claim 11:
The above modified invention teaches the quantum object confinement apparatus of claim 9, where the one or more metamaterial structures can be used as a transparent electrode for a photoactive device. One could use a tunable metasurface as a photoactive device.
Regarding Claim 13:
The above modified invention teaches the quantum object confinement apparatus of claim 1, wherein the conducting transparent oxide is indium tin oxide (ITO). Zheludev paras 48, 74.
Regarding Claim 14:
The above modified invention teaches the quantum object confinement apparatus of claim 1, wherein the one or more metasurface comprises of ITO materials used as truncated waveguides. Zheludev Figs. 8a-i demonstrate ITO materials in a metasurface.
Regarding Claim 21:
The above modified invention teaches the quantum object confinement apparatus of claim 1, wherein a metasurface of the one or more metasurfaces comprises an array of metamaterial structures that comprises at least one of (a) positive metamaterial structures of (b) negative metamaterial structures. Zheludev para 61.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0410266 A1 [Saffman] in view of US 2012/0327502 A1 [Zheludev] as applied to claim 8, and further in view of US 2020/0166783 A1 [Roy].
Regarding Claim 10:
The above modified invention teaches the quantum object confinement apparatus of claim 8, but fails to teach that the dielectric material comprises titanium dioxide.
Roy teaches a metasurface (abstract) comprising a dielectric, wherein the dielectric comprises titanium dioxide. Para 33. It would have been obvious to one of ordinary skill in the art before the effective time of filing to use the titanium dioxide of Roy as the dielectric of Zheludev. One would have been motivated to do so since Roy shows titanium dioxide is an effective dielectric for metasurfaces.
Claims 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0348251 A1 [Monroe] in view of US 2012/0327502 A1 [Zheludev].
Regarding Claim 18:
Monroe teaches a quantum computer (para 122) comprising:
a quantum object confinement apparatus comprising of:
a plurality of electrodes configured to define a confinement volume configured to confine one or more quantum objects therein, a plurality of quantum object positions defined within the confinement volume (Fig. 3, paras 64-65); and
at least one manipulation source wherein the at least one manipulation source is configured to provide a manipulation signal (laser in Fig. 12, para 50); and
at least one optical element (Fig. 12 – optical fiber), wherein the at least one optical element is configured to cause the manipulation signal to be incident on a modulator such that the modulator causes an induced beam to be incident on the respective quantum object position (para 51).
However, Monroe fails to teach that the modulator includes one or more metasurfaces, each metasurface of the one or more metasurfaces associated with a respective quantum object position of the plurality of quantum object positions, wherein the metasurface comprises a transparent conducting oxide;
Zheludev teaches a modulator includes one or more metasurfaces (Figs. 16, 20; paras 120, 124), the metasurface associated with a position, wherein the metasurface comprises a transparent conducting oxide (Para 48).
It would have been obvious to one of ordinary skill in the art before the effective time of filing to use the tunable metamaterial modulator of Zheludev as the modulator of Monroe. One would have been motivated to do so since this would allow for the tuning of the metasurface to provide desired optical controls. Zheludev para 12.
Regarding Claim 20:
The above modified invention teaches the quantum computer of claim 18, wherein the metasurface is formed by a plurality of metamaterial structures, at least an outer surface of each of the plurality of metamaterial structures formed of the transparent conducting oxide. Zheludev paras 48, 61, 74., Fig. 8a-i.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 7,447,719 B2 describes a quantum computer.
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.
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.
WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/ Primary Examiner, Art Unit 2881
Prosecution Insights