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 .
Response to Arguments
The arguments presented with respect to the objection of claims 8 and 9 presented in the Non-Final Action mailed 3/16/2026 are persuasive. The Objection has been withdrawn.
Upon further consideration of the pending claims and the amendments presented in the response filed 6/16/2026, the new grounds of rejection are presented below. The examiner acknowledges the applicant’s request for a phone call to discuss any issues remaining. However, to give the applicant an opportunity to review the issues, the examiner opted for issuing this communication in writing. However, the applicant is invited to contact the examiner for a discussion should clarification be needed.
Because the grounds for rejection below were not presented in the previous Office Action, this Office Action is made Non-Final.
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.
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 input to receive an input electrical signal from a device under test (DUT), as recited in claim 1, line 2.
- an input to receive an input electrical signal from a device under test (DUT), as recited in claim 5, line 3.
- an input to receive an input electrical signal from a device under test (DUT), as recited in claim 19, line 2.
- an output to send at least the output electrical signal to a test and measurement instrument, as recited in claim 19, line 11.
- circuitry to adjust a gain of a signal path from the input to a test and measurement instrument using the amplitude of the separated pilot signal, as recited in claim 1 (lines 13-14).
- circuitry to adjust a gain of a signal path from the input to a test and measurement instrument using the amplitude of the separated pilot signal, as recited in claim 5 (lines 14-15).
- circuitry to determine a correlation between the combined electrical signal and the matching pseudo-random sequence, as recited in claim 5 (lines 16-18).
- circuitry to adjust a gain of a signal path from the input to a test and measurement instrument using the amplitude of the separated pilot signal, and transmits a signal based upon the amplitude of the separated pilot signal back to the E/O converter, as recited in claim 8.
- circuitry to adjust a gain of a signal path from the input to a test and measurement instrument using the amplitude of the separated pilot signal, and transmits a signal based upon the amplitude of the separated pilot signal back to the O/E converter, as recited in claim 9.
- circuitry to adjust a gain of a signal path from the input to a test and measurement instrument using the amplitude of the separated pilot signal, and transmits a signal based upon the amplitude of the separated pilot signal back to the input amplifier electrically coupled to the input, as recited in claim 10.
- circuitry to adjust a gain of a signal path from the input to a test and measurement instrument using the amplitude of the separated pilot signal, and transmits a signal based upon the amplitude of the separated pilot signal forward to an output amplifier, as recited in claim 11.
- circuitry to adjust a gain of a signal path from the input to a test and measurement instrument, and transmits a signal based upon the amplitude of the separated pilot signal back to the E/O converter, as recited in claim 25.
- circuitry to adjust a gain of a signal path from the input to a test and measurement instrument, and transmits a signal based upon the amplitude of the separated pilot signal back to the O/E converter, as recited in claim 26.
- circuitry to adjust a gain of a signal path from the input to a test and measurement instrument, and transmits a signal based upon the amplitude of the separated pilot signal back to an input amplifier electrically coupled to the input, as recited in claim 27.
- circuitry to adjust a gain of a signal path from the input to a test and measurement instrument, and transmits a signal based upon an amplitude of the separated pilot signal forward to an output amplifier, as recited in claim 28.
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.
- The recitation “an input”, is interpreted to cover an electrically conductive terminal described for example in Figure 2 of the Drawings, unit 12 and/or its equivalents.
- The recitation “an output”, is interpreted to cover an electrically conductive terminal described for example in Figure 2 of the Drawings, unit 42 and/or its equivalents.
- The examiner notes that the Specification does not appear to describe the structure corresponding to the recitation “circuitry” and performing the claimed function, and/or its equivalents.
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 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, 3, 5-13, 24-30 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.
Regarding claims 1, 5, 8-11 and 25-28, the claims include recitations that are invoke 35 USC 112(f) and are interpreted accordingly (please see Claim Interpretation section above). A review of the Specification doesn’t appear to provide a clear description of what the recited “circuitry” is or what it comprises in such a way as to reasonably convey to one skill in the relevant art that the inventor at the time of the application was effectively filed.
As to claims 3, 6-7, 12-13, 24 and 29-30, the claims are rejected as they inherit the deficiencies noted above.
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, 3, 5-13, 24-30 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.
Regarding claims 1, 5, 8-11 and 25-28, the claim limitation “circuitry” 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. The disclosure is devoid of any structure that performs the function in the claim.
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.
As to claims 3, 6-7, 12-13, 24 and 29-30, the claims are rejected as they inherit the deficiencies noted above.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 3, 8-13 and 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over the US Patent US 11,187,730 by Ziegler et al., (Ziegler hereafter) in view of the US Patent US 8,208,414 by Singh et al., (Singh hereafter).
Regarding claim 1, Ziegler teaches in Figures 1-3, a test and measurement accessory, comprising:
an input (20) to receive an input electrical signal from a device under test (DUT 100);
a pilot signal generator to generate a pilot signal (not shown unit generating pilot signal “that is transmitted by the transmitting optical interfaces”. See col. 5, lines 32-34. “a pilot signal may be also added to the optical transmission links” – See col. 9, lines 32-33);
an electrical to optical (E/O) converter (22) coupled to the input and the pilot signal generator to convert the input electrical signal and the pilot signal to optical signals (see col. 7, lines 15-17);
a fiber (42a or 42b, see col. 6, line 45) to transmit the optical signals;
an optical to electrical (O/E) converter (optical interfaces 32a or 32b) to receive the optical signals and convert the optical signals to electrical signals (see col. 7, line 63-65);
an amplitude detector to receive the pilot signal and determine an amplitude of the pilot signal (monitoring of the pilot signal which amplitude changes to zero when the pilot signal is lost – see col. 9, lines 36-38); and
circuitry to adjust a gain of a signal path from the input to a test and measurement instrument using the amplitude of the pilot signal (compensation of the effects based on the variations of the detected pilot signal. Also, a further transmission of the optical signal may be stopped if it is detected that the pilot signal has zero amplitude. See col. 9, lines 42-43 and 37-38).
Although Ziegler mentions the pilot signal is transmitted as an optical signal together with the electrical signal, to be received and converted to electrical signals, Ziegler doesn’t explicitly mention the pilot signal is combined with the electrical signal and outputted as a combined optical signal, or that the converted electrical signal is separated into combined electrical and pilot signals.
Singh teaches a method for transmission of electrical and pilot signals as a combined signal using a combiner (Figure 6, unit 664). Furthermore, Singh also teaches the use of a separator (filter 650) that separates a pilot signal from a received combined downlink signal.
It would have been obvious to a person having ordinary skill in the art before the invention was effectively filed, to apply the teaching of combining pilot and electrical signals before transmission, and/or the separation of pilot signals from received combined signals as taught by Singh, in the device/system/method of Ziegler, in order to gain the advantage of reducing the channels needed for communication (two independent channels vs. a single channel), or to expedite transmission (signals sent at the same time vs. one after the other).
Lastly, Ziegler in view of Singh doesn’t explicitly mention that pilot signal generator produces an out-of-band pilot signal. However, Singh teaches the use of a signal generator (664) that generates a signal comprised of a pilot signal combined with an electrical signal (see col. 12, lines 35-41). Furthermore, Singh teaches that the signal generator (664) combines the signals using frequency division multiplexing, effectively placing the pilot signal and electrical signal into non-overlapping frequency bands. Although Singh doesn’t explicitly mention the pilot signal is generated as an out-of-band signal before being combined to the electrical signal, once combined, the signal generator effectively places the pilot signal at a difference frequency band compared to the electrical signal (by virtue of the frequency division multiplexing). The process of generating an out-of-band pilot signal and combining it to an electrical signal (as claimed) is functionally equivalent to the process of combining a pilot signal with an electric signal through frequency division multiplexing (as Singh does) because the end result is a signal comprised of an out-of-band pilot signal (not in the same frequency band) combined with an electrical signal. A person having ordinary skill in the art, would have found it obvious to either of the two functional equivalents to produce the combined signal in the device of Ziegler.
As to claim 3, Ziegler is silent about the use of a diplexer to separate the out-of-band pilot signal from the combined electrical signal. However, Singh teaches in col. 5, lines 4-6, the use of diplexers for separating electric signals.
It would have been obvious to a person having ordinary skill in the art before the invention was effectively filed, to apply the teaching of diplexers as separators of electrical signals as taught by Singh, in the device/system/method of Ziegler, in order to gain the advantage of diplexer’s high isolation, low loss and spectrum efficiency in the circuit.
As to claims 8-11, Ziegler shows in Figure 3, the circuitry (demodulator + unit 35), transmits a signal (outputted from unit 33 to unit 23) based upon the amplitude of the pilot signal back to the E/O converter and O/E converter (as a feedback loop, as explained for example, in col. 5, line 58 - col. 6, line 2).
As to claim 12, Singh teaches the signal separator is structured to produce the separated pilot signal (outputted to unit 652 in Figure 6) and an output electrical signal (outputted to unit 656A or 656B).
As to claims 13, Ziegler shows in Figure 1, an output (30) to send the output electrical signal to the test and measurement instrument (200).
Regarding claim 19, Ziegler teaches in Figures 1-3, a test and measurement accessory, comprising:
an input (20) to receive an input electrical signal from a device under test (DUT 100);
a pilot signal generator to generate a pilot signal (not shown unit generating pilot signal “that is transmitted by the transmitting optical interfaces”. See col. 5, lines 32-34. “a pilot signal may be also added to the optical transmission links” – See col. 9, lines 32-33);
an electrical to optical (E/O) converter (22) coupled to the input and the pilot signal generator to convert the input electrical signal and the pilot signal to optical signals (see col. 7, lines 15-17);
a fiber (42a or 42b, see col. 6, line 45) to transmit the optical signals;
an optical to electrical (O/E) converter (optical interfaces 32a or 32b) to receive the optical signals and convert the optical signals to electrical signals (see col. 7, line 63-65); and an output (30) to send the output electrical signal to the test and measurement instrument (200).
Although Ziegler mentions the pilot signal is transmitted as an optical signal together with the electrical signal, to be received and converted to electrical signals, Ziegler doesn’t explicitly mention the pilot signal is combined with the electrical signal and outputted as a combined optical signal, or that the converted electrical signal is separated into combined electrical and pilot signals.
Singh teaches a method for transmission of electrical and pilot signals as a combined signal using a combiner (Figure 6, unit 664). Furthermore, Singh also teaches the use of a separator (filter 650) that separates a pilot signal from a received combined downlink signal.
It would have been obvious to a person having ordinary skill in the art before the invention was effectively filed, to apply the teaching of combining pilot and electrical signals before transmission, and/or the separation of pilot signals from received combined signals as taught by Singh, in the device/system/method of Ziegler, in order to gain the advantage of reducing the channels needed for communication (two independent channels vs. a single channel), or to expedite transmission (signals sent at the same time vs. one after the other).
Lastly, Ziegler in view of Singh doesn’t explicitly mention that pilot signal generator produces an out-of-band pilot signal. However, Singh teaches the use of a signal generator (664) that generates a signal comprised of a pilot signal combined with an electrical signal (see col. 12, lines 35-41). Furthermore, Singh teaches that the signal generator (664) combines the signals using frequency division multiplexing, effectively placing the pilot signal and electrical signal into non-overlapping frequency bands. Although Singh doesn’t explicitly mention the pilot signal is generated as an out-of-band signal before being combined to the electrical signal, once combined, the signal generator effectively places the pilot signal at a difference frequency band compared to the electrical signal (by virtue of the frequency division multiplexing). The process of generating an out-of-band pilot signal and combining it to an electrical signal (as claimed) is functionally equivalent to the process of combining a pilot signal with an electric signal through frequency division multiplexing (as Singh does) because the end result is a signal comprised of an out-of-band pilot signal (not in the same frequency band) combined with an electrical signal. A person having ordinary skill in the art, would have found it obvious to either of the two functional equivalents to produce the combined signal in the device of Ziegler.
As to claims 20, as explained in regards to the rejection of claim 19 above, Singh teaches the use of a separator. Furthermore, Ziegler shows in Figure 3 a second output (not shown unit that outputs the pilot signal at the receiving end in order to be monitored, as explained in col. 5, lines 61-63) to allow the test and measurement accessory to send the pilot signal to the test and measurement instrument (means for evaluating the optical transmission link by monitoring the pilot signal, see col. 5, lines 64-65).
As to claim 21, Ziegler in view of Singh teaches an amplitude detector to receive the pilot signal and determine an amplitude of the separated pilot signal (monitoring of the pilot signal which amplitude changes to zero when the pilot signal is lost – see Ziegler, col. 9, lines 36-38); and
circuitry to adjust a gain of a signal path from the input to a test and measurement instrument using the amplitude of the separated pilot signal (compensation of the effects based on the variations of the detected pilot signal. Also, a further transmission of the optical signal may be stopped if it is detected that the pilot signal has zero amplitude. See col. 9, lines 42-43 and 37-38).
As to claim 22, although Ziegler doesn’t not explicitly mention the use of a A/D converter to digitize the amplitude of the pilot signal. However, Official Notice is taken to the fact analog-to-digital converters are well known in the art of signal transmission and electronics, and use to convert analog signals into a format (digital) that is suitable for processing by digital processors. It would have been obvious to a person having ordinary skill in the art before the invention was effectively filed, to use an analog-to-digital converter in the device/system/method of Ziegler in view of Singh, in order to provide the signal in a format compatible with cost effective, widely known and efficient digital processors.
Comments regarding claims 5-7 and 24-30
Regarding claim 5-7 and 24-30, the prior art of record doesn’t teach alone or in combination, a test and measurement accessory as claimed, wherein the second signal generator to generate a matching pseudo-random sequence, in combination with all other elements recited. However, the claims stand rejected under 35 USC 112(a) and 35 USC 112(b) for the reasons noted above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard Isla whose telephone number is (571)272-5056. The examiner can normally be reached Monday-Friday 9a - 5:30p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Huy Phan can be reached at 571 272-7924. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD ISLA/Primary Patent Examiner, Art Unit 2858 August 18, 2026
