DETAILED ACTION
Response to Remarks
1. Applicant’s remarks (see pgs. 9-10), filed 04/27/2026, regarding claim interpretation of claims under 35 U.S.C 112(f) corresponding to the indefiniteness rejection under 35 U.S.C 112(b) have been fully considered but they are not persuasive.
Applicant appears to make arguments that claim 1 does not invoke a 35 U.S.C. 112(f) interpretation and asserts that “The claim does not use the term "means," and "photon generator" conveys to a person of ordinary skill in the art a class of physical optical source apparatus that generates photons” (pg. 9 of Remarks). The Examiner respectfully disagrees and notes that although the claim limitation does not use the term “means”, the limitation nonetheless uses a generic placeholder (i.e., a term that is simply a substitute for the term “means”) of ‘a photon generator’ modified by functional language (i.e., “that generates photons”), which does not limit the scope of the claim to any specific manner or structure for performing the claimed function. In other words, the claim limitation is written as a function to be performed and fails to recite sufficient definite structure. Applicant’s argument that the structure corresponds to “a class of physical optical source apparatus” and that “In the context of quantum-optical apparatus claims, these terms connote known classes of physical components and are not nonce placeholders devoid of structural meaning” (pg. 9) further demonstrates the Examiner’s finding that the recited term does not correspond to a sufficient structure to a person of ordinary skill in the art, since such a class of physical optical source apparatus and/or physical components does not refer to any particular structure at all nor does the Applicant provide evidence for such these assertions. Applicant is also respectfully reminded that arguments of counsel cannot take the place of evidence in the record. See In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). Therefore, Applicant has not presented a sufficient showing to establish that the claim limitation recites sufficient structure to perform the claimed function so as to avoid interpretation under 35 U.S.C. 112(f). As stated previously, the specification is silent to any definite structure required to meet the functional limitations of a photon generator beyond merely reciting the components of the generic placeholder: “The photon generator includes an atomic vapor cell containing a rubidium (87Rb) atom, and a processor configured to move a coupling laser and a pump laser” (pg. 9 of originally-filed specification). To satisfy the definiteness requirement under 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph, the written description must clearly link or associate the corresponding structure, material, or acts to the claimed function. Telcordia Techs., Inc. v. Cisco Systems, Inc., 612 F.3d 1365, 1376, 95 USPQ2d 1673, 1682 (Fed. Cir. 2010). Thus, the instant specification fails to clearly link or associate the disclosed structures to the claimed function, and the Examiner maintains the corresponding rejection under 25 U.S.C. 112(b).
Applicant appears to make arguments directed to claims 1 and 3-6 limitation: “that generator [multidimensional quantum state generator] is expressly tied to generation "through phase modulation of a spatial light modulator, which provides concrete structural context” (pg. 9). However, the Examiner notes that Applicant has failed to provide any sufficient structure, material, or acts that clearly links or associates the claimed functions. Applicant states that such an SLM “provides structural context”, but the spatial light modulator appears to be a distinct and separate structure comprised/included within the quantum state generator, as clearly shown in FIG 1. The claim recites that the SLM’s claimed function is phase modulation and the specification is in accordance with the claimed limitation. The claimed quantum state generator is a generic placeholder (nonce term) not modified by sufficient structure, material, or acts for achieving the specified function of generating said state by multiplexing. Furthermore, the Examiner maintains that the generic placeholder is modified by functional language which serves to further describe the recited functions of “generating a multidimensional quantum state by space division multiplexing a state of the single photon” performed by the claimed generator. See MPEP § 2181 Section I, Parts A-C. See also Mas-Hamilton, 156 F.3d at 1213, 48 USPQ2d at 1016. Applicant has failed to provide any evidence beyond mere conclusory statements that the quantum state generator possesses any generally understood structural meaning in the art or connotate sufficient structure to a person of ordinary skill in the art that would preclude application of 35 U.S.C. 112, sixth paragraph.
Applicant appears to make arguments regarding claims 1, 10 limitation directed to the processor: “the processor is not a purely functional nonce term. In the context of the claim, it denotes physical control electronics associated with the recited optical components-namely, the coupling laser, pump laser, atomic vapor cell, and generated signal/idler photons. The recited functions are not free-floating data-processing functions; they are concrete control operations in a physical optical system” (pg. 10). Applicant further asserts “the "processor" limitation appears in a concrete physical context involving optical control and resulting photon-pair generation, not an unspecified abstract algorithm. Moreover, the claim further defines the resulting polarization relationship with objective technical language” (pg. 10). However, the Examiner respectfully disagrees and notes that Applicant appears to have misconstrued the processor structure to include optics/optical components such as lasers, atomic vapor cell, etc.. For example, a processor in itself cannot move a plurality of lasers as recited in claim 1, because structures such as actuators are necessary for the claimed function. Similarly, a processor in itself cannot generate a pair of signal and idler photons as recited in claim 1, because structures such as light sources and an atomic vapor cell are necessary to perform the claimed function. A processor in itself also cannot generate a pair of signal and idler photons with particular polarization relationships as recited in claim 10, because structures such as polarizers are necessary to perform the claimed functional limitations. Applicant’s assertions that the processor denotes physical electronics in a physical context also lacks any evidence with respect to the instant disclosure in that the specification solely recites the generic claim language directed to “a processor” (see pg. 9 of disclosure) and appears to be completely silent with respect to any structure, material, or acts required to meet the functional limitations of moving the lasers and generating photon pairs as recited in claims 1 and 10. As stated previously, to claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333, 86 USPQ2d at 1239. In this instance, the structure corresponding to a 35 U.S.C. 112(f) claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999). The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer. See Aristocrat, 521 F.3d at 1338, 86 USPQ2d at 1241 (MPEP 2181.II.B). Since the claimed “processor” invokes 35 U.S.C. 112(f) as detailed above and the specification is silent as to any structure for the “processor” other than a general purpose computer, these claims are therefore indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
To conclude, Applicant has not disputed with sufficient evidence the Examiner’s findings of indefiniteness under 35 U.S.C. 112(b) regarding said limitations invoking 112(f), wherein 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. Thus, the Examiner maintains that Applicant’s arguments are insufficient to overcome the claim limitations invoking 35 U.S.C. 112 (f), since the claimed generic placeholder(s) remain(s) unmodified by sufficient structure(s), material(s) or acts for achieving the specified function(s).
2. Applicant’s remaining remarks (see pgs. 8-9 of Remarks) with respect to the outstanding indefiniteness rejections of the claims under 35 U.S.C. 112(b) have been fully considered and are persuasive by virtue of Applicant’s remarks and arguments. Applicant’s remarks (see pg. 7) with respect to the Drawings objection have also been fully considered and are persuasive by virtue of Applicant’s arguments. Therefore, these grounds of rejection and/or objections have been withdrawn.
3. Applicant’s remarks (see pgs. 11-13 of Remarks) with respect to the prior art rejection of claims 1-10 and 12-20 under 35 U.S.C. 102 and 103 have been fully considered and are persuasive by virtue of Applicant’s arguments combined with the amendments to the independent claims (see amended claims 1, 8, 13 and 18 filed 04/27/2026). Therefore, these grounds of rejection have been withdrawn.
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:
Claim 1 limitation “a photon generator configured to generate…” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. This limitation, and in particular the generating function thereof, does not have sufficient structure.
Claims 1 & 3-6 limitation “a multidimensional quantum state generator configured to generate…” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. This limitation, and in particular the generating function thereof, does not have sufficient structure.
Claims 1, 10 & 20 limitation “a processor configured/caused to move and generate…” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. This limitation, and in particular the generating and/or moving function(s) thereof, does not have sufficient structure.
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 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 1-10, 12 and 20 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.
The following limitations (A-C) invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, and 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:
A. Regarding Claim 1 limitation: “a photon generator configured to generate…”, the specification is silent to any definite structure required to meet the functional limitations of a photon generator beyond merely reciting the components of the generic placeholder: “The photon generator includes an atomic vapor cell containing a rubidium (87Rb) atom, and a processor configured to move a coupling laser and a pump laser” (pg. 9 of originally-filed specification).
B. Regarding Claims 1 & 3-6 limitation “a multidimensional quantum state generator configured to generate…”, the specification is silent to any definite structure required to meet the functional limitations of said generator beyond an ipsis verbis appearance of the generic placeholder: “a multidimensional quantum state generator 120” (FIGS. 1-2B; pg. 10 of originally-filed specification).
C. Claims 1, 10 and 20 recite “a processor” which invokes 35 U.S.C. 112(f) as detailed above. However, the specification is silent to any structure required to meet the functional limitations of the control unit. To be clear, the specification merely recites “a processor” (see e.g., pg. 9 of disclosure). As such, the processor amounts to a general purpose computer, and the specification fails to provide any specific algorithm for achieving the function. However, to claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333, 86 USPQ2d at 1239. In this instance, the structure corresponding to a 35 U.S.C. 112(f) claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999). The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer. See Aristocrat, 521 F.3d at 1338, 86 USPQ2d at 1241 (MPEP 2181.II.B).
Accordingly, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate if the specification discloses no corresponding algorithm associated with a computer or microprocessor. Aristocrat, 521 F.3d at 1337-38, 86 USPQ2d at 1242. Since the claimed “processor” invokes 35 U.S.C. 112(f) as detailed above and the specification is silent as to any structure for the “processor” other than a general purpose computer, claims 1, 10 and 20 are therefore 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.
The dependent claims inherit the deficiencies of the base claim 1, respectively, and claims 2-12 are thus rejected under 35 U.S.C. 112(b).
Allowable Subject Matter
Claims 13-19 are allowed; claims 1-10, 12 and 20 would be allowable if the rejections set forth in this Office action are overcome.
The following is an examiner’s statement of reasons for the indication of allowable subject matter:
With respect to claim 1 (and claim 13), the best prior art of Kagalwala et al. (NPL titled “Single-photon three-qubit quantum…” (Sep. 2017) alone and/or in combination with Park et al. (NPL titled “Entanglement swapping…” (April 2020) teaches:
A multidimensional quantum state generation apparatus (FIG. 4) comprising: a photon generator configured to generate a single photon (p. 3, c. 2: We exploit these gates to generate single-photon qubit states; p. 9 c. 1: qubits can be encoded in the polarization and spatial parity DoFs of a single photon; see FIG. 1 for single photon qubit operations); and a multidimensional quantum state generator (see FIG. 4 showing SLM; see FIGS. 2 & 6 showing resultant multidimensional quantum states via space division multiplexing through SLM in combination with single-mode and multi-mode fibers (as further shown in experimental setup of FIG. 4)) configured to generate a multidimensional quantum state by space division multiplexing a state of the single photon through phase modulation of a spatial light modulator (SLM) (p. 5 c. 1: The two-qubit four-dimensional Hilbert space associated with polarization and x-parity is spanned by the hybrid basis in correspondence with the logical basis…the impact of an SLM imparting a phase-step π along x on the four basis states in Fig. 2a; p. 6 c. 1: a polarization-selective SLM can implement a broad range of three-qubit quantum gates with the appropriate selection of the phases in its four quadrants).
Park is related to Kagalwala with respect to a multidimensional quantum state generation apparatus comprising a photon generator and a multidimensional quantum state generator configured to generate a multidimensional quantum state (FIG. 1; p. 2404 c. 2: single photon generation; p. 2405 c. 1: four different values of photon polarization with experimentally obtained fourfold coincidences), and Park teaches: wherein the photon generator comprises: an atomic vapor cell (abstract & FIG. 1 (p. 2404 c. 1): atomic ensemble of 87Rb atoms in atomic vapor cell); and a processor configured to move a coupling laser and a pump laser in opposite directions to each other relative to the atomic vapor cell, generate a pair of signal and idler photons in the atomic vapor cell, and output a signal photon as the single photon (p. 2403 c. 2: signal and idler photon pairs were generated from the warm atomic ensemble via the SFWM process in the cascade-type atomic system; p. 2404 c. 2: After passing through the two FPBSs, independent heralded single photons are sent to single photon detectors…idler photons heralds the existence of the signal photons; see FIG. 1a showing coupling laser and a pump laser traveling in opposite directions with respect to the atomic vapor cell) (see also pg. 18 of Non-Final Office Action for detailed discussion).
However, the best prior art of record fails to teach or reasonably suggest:
wherein the coupling laser and the pump laser fix a laser frequency at +1 GHz outside a Doppler broadening region to reduce an irrelevant photon pair generated by photon resonance.
Given the embodiments of Kagalwala and/or Park, one of ordinary skill in the art would not find it obvious to modify the construction of the multidimensional quantum state generation apparatus/method to arrive at the cumulatively claimed configuration satisfying the combination of conditions recited directly above. Thus, the best prior art of record, taken alone or in combination, fails to teach the cumulative conditions of claims 2-12 and 14-20 further satisfying the claimed features of the apparatus.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/SAMANVITHA SRIDHAR/Examiner, Art Unit 2872
/BUMSUK WON/Supervisory Patent Examiner, Art Unit 2872
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