DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-18 have been presented for examination based on the application filed on 09/08/2023.
Claims 1-18 are rejected under 35 U.S.C. 112(b).
Claims 1 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grastein (YUYAO CHEN ET AL: "Physics-informed neural networks for inverse problems in nano-optics and metamaterials", ARXIV.ORG, CORNELL UNIVERSITY LIBRARY, 201 OLINLIBRARY CORNELL UNIVERSITY ITHACA, NY 14853, 17 March 2020 (2020-03-17), XP081622902,; hereinafter “Chen”).
This action is made Non-Final.
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 .
Acknowledgement of References Cited By Applicant
7. The information disclosure statement (IDS) submitted on 09/08/2023 and 10/09/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Examiner Notes
Examiner cites particular columns, paragraphs, figures and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner. The entire reference is considered to provide disclosure relating to the claimed invention. The claims & only the claims form the metes & bounds of the invention. Office personnel are to give the claims their broadest reasonable interpretation in light of the supporting disclosure. Unclaimed limitations appearing in the specification are not read into the claim. Prior art was referenced using terminology familiar to one of ordinary skill in the art. Such an approach is broad in concept and can be either explicit or implicit in meaning. Examiner's Notes are provided with the cited references to assist the applicant to better understand how the examiner interprets the applied prior art. Such comments are entirely consistent with the intent & spirit of compact prosecution.
Examiner further notes that this application includes a lot of explicitly optional steps. Each optional step is being treated as not required to meet the claims and for purposes of claim mapping they are all being considered met under broadest reasonable interpretation as simply the embodiment that does not require them.
Drawings
The drawings are objected to because Figures 1 and 2 both include flow charts without any details. Drawings of the flow charts should include details of each step rather than only the numbering of each step without a description in the figure. 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.
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 1-18 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 pre-AIA the applicant regards as the invention.
Regarding claim 1:
The multiple, nested “and/or” as well as optionality across the claim set render the claim indefinite as it is unclear if the intent is directed towards multiple various potential embodiments covered by each possible version of the claims’ optionality and combinations. As such, for the purposes of examination, all instances of explicitly “optionally” language results in the claim language being considered full met by not requiring the limitation. Further, “and/or” is being treated as “at least one of” for purposes of examination. Nested “and/or” therefore is being treated as optional limitations listed in the alternative as well. A review of the Applicant’s Specification is unclear and did not provide increased certainty. Examiner respectfully suggests that one possible correction would be to amend the language to clarify which embodiment is envisioned and remove the multiple layers of optionality including the multiple levels of and/or to clarify claim interpretation.
Regarding claims 2-14 and 16-18, incorporating the rejections of claim 1, dependent claims 2-14 and 16-18 inherit the deficient of the parent under 35 U.S.C. 112(b).
Regarding claim 15:
The multiple, nested “and/or” as well as optionality across the claim set render the claim indefinite as it is unclear if the intent is directed towards multiple various potential embodiments covered by each possible version of the claims’ optionality and combinations. As such, for the purposes of examination, all instances of explicitly “optionally” language results in the claim language being considered full met by not requiring the limitation. Further, “and/or” is being treated as “at least one of” for purposes of examination. Nested “and/or” therefore is being treated as optional limitations listed in the alternative as well. A review of the Applicant’s Specification is unclear and did not provide increased certainty. Examiner respectfully suggests that one possible correction would be to amend the language to clarify which embodiment is envisioned and remove the multiple layers of optionality including the multiple levels of and/or to clarify claim interpretation.
The Examiner finds that the claims are unclear and have many 35 U.S.C. 112(b) or 35 U.S.C. 112 second paragraph and other rejections such that ascertaining what is the claimed subject matter and construing the claims cannot be done at this time due to the large amount of potential embodiments created with the nested “and/or” and multiple nested optionality limitations. See Honeywell International Inc. v. ITC, 68 USPQ2d 1023, 1030 (Fed. Cir. 2003) (“Because the claims are indefinite, the claims, by definition, cannot be construed.) and In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962) ("a rejection… should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.”) Examiner has nevertheless attempted to provide potential claim mapping of at least the independent claims based on the closest understanding of applicants’ intent with the independent claims. Once the 35 U.S.C. 112(b) or 35 U.S.C. 112 second paragraph and other rejections are corrected, the claims will then be re-evaluated in light of the prior art so as to ascertain their patentability. See MPEP 2173.06.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grastein (YUYAO CHEN ET AL: "Physics-informed neural networks for inverse problems in nano-optics and metamaterials", ARXIV.ORG, CORNELL UNIVERSITY LIBRARY, 201 OLINLIBRARY CORNELL UNIVERSITY ITHACA, NY 14853, 17 March 2020 (2020-03-17), XP081622902,; hereinafter “Chen”).
Regarding claim 1, Chen discloses: A computer-implemented method for predicting the properties of a coating layer CL (page 17, last 5 lines), said method comprising the steps of:
(i) providing to a computer processor via a communication interface a digital representation Di of the coating layer CL (page 17, first paragraph);
(ii) providing to the computer processor via the communication interface a data driven model parametrized on - digital representations Dₕ of historical coating layers, and - historical measures indicating the permittivity of said coating layers (page 17, second paragraph, the Physics Informed Neural Network, PINN);
(iii) determining with the computer processor a measure indicating the permittivity of the coating layer CL based on - the data driven model provided in step (ii), and - the digital representation D₁ of the coating layer CL (page 17, last 5 lines - use of the PINN to carry out the prediction);
(vi) providing via the communication interface the determined measure indicating the permittivity of the coating layer CL (outputting of the results is disclosed Table 3 and discussion of results).
Regarding claim 15, Chen discloses:
“A client device for generating a request to imitate the prediction of at least one property of a coating layer CL” (page 17, last 5 lines)
“wherein the client device is configured to provide a digital representation D1 of the coating layer CL” (page 17, first paragraph and second paragraph)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN C MIKOWSKI whose telephone number is (571)272-8525. The examiner can normally be reached generally Monday through Thursday 8 am to 4:30 pm, 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, Namrata Boveja can be reached at (571) 272-8105. 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.
/JUSTIN C MIKOWSKI/Supervisory Patent Examiner, Art Unit 3673
Prosecution Insights