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 .
DETAILED ACTION
Claims 1 - 23 are pending in the application.
Claims 1 and 18 are independent.
This action is Non-final based on new rejection(s) that were not necessitated by the applicant’s amendment.
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.
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) 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.
Claims 1 – 5, 7, 9, 15, 16, and 17 invoke 35 U.S.C. 112(f) because it/they use generic placeholder such as: “setting unit” coupled with functional language “compares a voltage ratio in which a denominator is set… etc.” that is not modified by sufficient structure, material, or acts for performing the claimed function. The written description of the specification neither 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. A review of the specification shows that the following attempts but does not show the corresponding structure described in the specification for the 35 U.S.C. 112(f) limitation "setting unit:" Abstract which states that: “The control device includes a setting unit....” Paragraph 0057 also states that the control device includes a setting unit. One having ordinary skill in the art would guess that the setting unit being part of the control unit is either firmware, software, a section of a processor, a separate circuit, a microprocessor, program code, or other structure. Incidentally, the specification also does not disclose the structure for the control device which also could be a processor, separate circuit, firmware, etc. The limitation(s) are rejected under 35 U.S.C. 112(a) and 35 U.S.C. 112(b). MPEP §2181(II)(A) states: “If there is no disclosure of structure, material or acts for performing the recited function, the claim fails to satisfy the requirements of 35 U.S.C. 112(b).” MPEP §2181(II)(B) states: “When a claim containing a computer-implemented 35 U.S.C. 112(f) claim limitation is found to be indefinite under 35 U.S.C. 112(b) for failure to disclose sufficient corresponding structure (e.g., the computer and the algorithm) in the specification that performs the entire claimed function, it will also lack written description under 35 U.S.C. 112(a). See MPEP §2163.03.” Therefore the claim is rejected under both under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) below.
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:
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(a)
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.
Claims 1 – 5, 7, 9, 15, 16, and 17 are rejected under 35 U.S.C. §112(a), as failing to comply with the written description requirement. The claims contain subject matter which fails to disclose structure to perform “a setting unit” as claimed. Given the guidance under in the Williamson: “The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349, 115 USPQ2d 1105, 1111 (Fed. Cir. 2015). In the examiner’s view the written description fails to impart any structural significance to the terms of 1) “a setting unit”.
For more information, see MPEP § 2181(II)(A) The Corresponding Structure Must Be Disclosed In the Specification Itself in a Way That One Skilled In the Art Will Understand What Structure Will Perform the Recited Function.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1 – 5, 7, 9, 15, 16, and 17 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. The “a setting unit” are indefinite under 35 U.S.C. 112 (b) because the specification fails to adequately disclose structure to perform the claimed functions. For each of the section the specification must disclose some kind of structure for performing the functions of each element. The specification provides no detail about the setting unit. See also “Claim Interpretation” section above.
For more information, see MPEP § 2181(II). DESCRIPTION NECESSARY TO SUPPORT A CLAIM LIMITATION WHICH INVOKES 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, SIXTH PARAGRAPH.
Response to Arguments
Applicant’s arguments with respect to all claims have been considered; however, the application is not in condition of allowance at this time. The 35 USC 112(f) and the following 35 USC 112(a) and 35 USC 112(b) rejections were not the result of any amendment and must be cured. With respect to the 35 U.S.C. 101 and 35 USC 112(b) rejections: applicant has amended and argued over the previous rejections. Examiner is persuaded and these rejections are rescinded. The new rejections were not necessitated by amendment therefore this application is a non-final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAD G ERDMAN whose telephone number is (571)270-0177. The examiner can normally be reached Mon - Fri 7am - 3pm or 4pm EST..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kenneth Lo can be reached at (571) 272-9774. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHAD G ERDMAN/Primary Examiner, Art Unit 2116
