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 .
Preliminary amendments filed 11/22/2023 are acknowledged. Claims 1-15 remain pending.
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 1-15 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.
With regards to claim 1, “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)” (MPEP 2163.03 V.). Additionally, “the written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. ‘Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement.’ Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).” (MPEP 2163.03 V.).
In the case of the present claims the specification does not adequately describe the controller and the algorithm being implemented to achieve the control. While the specification includes general statements about limiting the range of control parameters (such as a range of wavelengths permitted) or limiting which control options are allowed based on the distance to the user holding the remote user interface device, the specification does not describe an algorithm or formula for how the ranges of different control parameters or what control parameter options are allowed at different distances. For example, if the user is 10 feet away: what percentage of the total wavelength range is permitted? what range of intensity? What control options are allowed? What about at 20 or 50 feet? Additionally, this algorithm describing the relationship between the user’s distance/spatial relation and limits on ranges and control options is not described for all the possible genus covered by the generic claim language of “an operational parameter of the ultraviolet light-based disinfection device”.
A similar logic applied to the method claim 14 and the system claim 15.
Dependent claims are rejected for the same reasons.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONALD R SPAMER whose telephone number is (571)272-3197. The examiner can normally be reached Monday to Friday from 9-5.
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/DONALD R SPAMER/Primary Examiner, Art Unit 1799
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