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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/14/26 has been entered.
Response to Arguments
Applicant’s arguments with respect to the rejection(s) of claim(s) under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made.
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: “an operating element which is designed for activating at least the wireless communication link” in claims 1 and 16.
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.
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 1-17 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.
Claim limitation “an operating element which is designed for activating at least the wireless communication link” of claims 1 and 16 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, 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. According to the current application’s Pre-Grant Publication (US20240322908A1), para. 97, “The wireless communication link can be optionally switchable on and off. The transceiver interface 12a, in this case the adapter 60a, has an operating element 92a which is designed at least for activating the wireless communication link to the external unit 16a (cf. FIGS. 4 and 7). By means of the operating element 92a, at least one operating mode of the operating state can be set. The operating state has a plurality of operating modes. The operating element 92a in this case can be moved between at least three positions.” The operating element 92a is shown on Fig. 7.
Regarding the claimed limitations of claims 1 and 16, an adequate disclosure in the specification is required for the claim to be definite under § 112(b) because the specification forms part of the § 112(f) claim limitation. For the corresponding disclosure to be adequate, it must be disclosed in a way that one skilled in the art will understand what specific structure or material the inventor has identified to perform the recited function. Also, the structure, material or acts must be sufficient to perform the entire function recited in the claim limitation. Additionally, the structure or material must be clearly linked to the function in the written description.
The corresponding disclosure will be inadequate when the structure or material that performs the function is entirely absent, is not sufficient to perform the entire function, or is not linked to the function.
In this instance, the corresponding disclosure is inadequate because the structure or material that performs the function is absent. The corresponding structure or material is absent when there is no discussion in the specification or drawings of what accomplishes the function. This can occur when the specification merely repeats the function without any structure to perform the function or when the specification or drawings merely designate a “black box” to perform the function.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: “an operating element 92a.” However, the specification does not clearly identify an adequate structure that is able to perform the recited function.
Therefore, the claim is 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.
Claim 1, line 1 recites “in particular”. It is not clear if the language that follows this language is required or optional.
Claim 16, line 1 recites “in particular”. It is not clear if the language that follows this language is required or optional.
The dependent claims 2-15 and 17 are rejected for being dependent on the rejected claims 1 and 16.
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 1-17 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.
Claim 1 requires “an operating element which is designed for activating at least the wireless communication link.” However, the specification fails to provide an adequate explanation as to how this performed. More specifically according to the current application’s Pre-Grant Publication (US20240322908A1), para. 97, “The wireless communication link can be optionally switchable on and off. The transceiver interface 12a, in this case the adapter 60a, has an operating element 92a which is designed at least for activating the wireless communication link to the external unit 16a (cf. FIGS. 4 and 7). By means of the operating element 92a, at least one operating mode of the operating state can be set. The operating state has a plurality of operating modes. The operating element 92a in this case can be moved between at least three positions.” The operating element 92a is shown on Fig. 7. However, this description does not provide an adequate explanation for how the operating element 92a accomplish this limitation. There is no description of the structure of the operating element 92a. It also lacks a discussion as to what steps or algorithms are used to performed this function.
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 Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) en banc. 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).
In the present instance, the claim limitation 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.
The written description requirement under 112(a) is not satisfied by stating that one of ordinary skill in the art could device an algorithm to perform the specialized programmed functions. For written description, the specifications filed must describe the claimed invention in sufficient detail so that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. An original claim may lack written description when the claim defines the invention in functional language specifying a desired result but the specification does not sufficiently identify how the inventor has devised the function to be performed or result achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient).
Claim 16 requires “an operating element which is designed for activating at least the wireless communication link.” However, the specification fails to provide an adequate explanation as to how this performed. More specifically according to the current application’s Pre-Grant Publication (US20240322908A1), para. 97, “The wireless communication link can be optionally switchable on and off. The transceiver interface 12a, in this case the adapter 60a, has an operating element 92a which is designed at least for activating the wireless communication link to the external unit 16a (cf. FIGS. 4 and 7). By means of the operating element 92a, at least one operating mode of the operating state can be set. The operating state has a plurality of operating modes. The operating element 92a in this case can be moved between at least three positions.” The operating element 92a is shown on Fig. 7. However, this description does not provide an adequate explanation for how the operating element 92a accomplish this limitation. There is no description of the structure of the operating element 92a. It also lacks a discussion as to what steps or algorithms are used to performed this function.
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 Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) en banc. 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).
In the present instance, the claim limitation 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.
The written description requirement under 112(a) is not satisfied by stating that one of ordinary skill in the art could device an algorithm to perform the specialized programmed functions. For written description, the specifications filed must describe the claimed invention in sufficient detail so that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. An original claim may lack written description when the claim defines the invention in functional language specifying a desired result but the specification does not sufficiently identify how the inventor has devised the function to be performed or result achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient).
The dependent claims 2-15 and 17 are rejected for being dependent on the rejected claims 1 and 16.
Claims 1-17 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claims 1 and 16 recite an “operating element.” This element do not appear to be limited to any particular structure other than that it is an “element” that operates. As a result, this element has a broad scope that includes all structures for all “element” to perform the recited functionality. However, the application does not appear to teach how to make and use this element.
When considering the teachings of the application and the scope of the claims, see MPEP 2173.05(g), 4th paragraph:
… Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353, 94 USPQ2d 1161, 1173 (Fed. Cir. 2010) (en banc). Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340, 94 USPQ2d at 1167. …
This supports a finding that the broad scope of the claims may not be enabled by the teachings in the disclosure.
The nature of the invention is optical communications and methods. The components used in the various embodiments were known to one of ordinary skill. For example, one or ordinary skill would be familiar with components such as pluggable transceivers, transceiver ports, communication interfaces, or transceiver interfaces in the context of the invention. Therefore, no teachings of how to make these individual components is required. Also, general signal processing and communications were also well-known.
Similarly, one of ordinary skill would also know how to perform other tasks in the present technological area and related to the invention, such as configuring a pluggable transceiver, establishing a WPAN communication or wireless communication.
However, the issues raised above regarding the scope of the claims and the teachings of the application are directed to making and using an apparatus with particular functionality that appears to require particular structures that are not obvious to one of ordinary skill.
As discussed above, the claim limitation does not appear to be limited to particular structure, and the application does not appear to teach the particular structure of the claimed element that is capable of performing the claimed functionality. This broad scope includes many structures and method steps, and not all possibilities within the scope of the claims will produce the desired results or functions. Furthermore, the specification does not appear to identify or provide guidance as to what structures and steps within the scope of these claims are capable to make and use the invention, and which are not.
As a result, if one of ordinary skill were to attempt to make and use the full scope of the claims, it would require making, testing, or otherwise evaluating a large number of possible structures and method steps to find what works and what does not work to perform the desired functionality. This results in a practically unlimited number of embodiments that would need to be made, tested, or otherwise evaluated to determine which embodiments are operative and which are inoperative.
This supports a finding that undue experimentation would be required to make and use the full scope of the claims.
The dependent claims 2-15 and 17 are rejected for being dependent on the rejected claims 1 and 16.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAI M LEE whose telephone number is (571)272-5870. The examiner can normally be reached M-F 9:5:30 PM.
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JAI M. LEE
Examiner
Art Unit 2634
/JAI M LEE/Examiner, Art Unit 2634
