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 .
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because the abstract in the instant Application exceeds the maximum 150 word limit. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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: “electromagnetic mechanism” in claim 1; “permanent magnetic mechanism” in claim 1; “a permanent magnetic mechanism motion drive unit” in claim 1; “sample stand ascent-descent drive unit” in claim 1; “a control system”; “a refrigerant cooling assembly” in claim 2; “a water cooling assembly” in claim 3; “a liquid helium cooling assembly” in claim 3; “a magnet fixing member” in claim 7; “a permanent magnet rotation drive unit” in claim 7; and, “a permanent magnet ascent-descent drive module” in claim 7.
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 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 1-10 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.
Independent claim 1 recites the limitation "sample stand ascent-descent drive unit," however, said limitation fails to comply with written description requirement. 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. Claim limitation “sample stand ascent-descent drive unit” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “unit” coupled with functional language “sample stand ascent-descent drive” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The term "unit" is not limited to a specific structure for performing the recited function(s). The term "unit" is considered to be non-structure modifier that fails to recite sufficiently definite structure, material or acts to perform the claimed function. The instant specification, as originally filed, discloses sample stand ascent-descent drive coupled to a sample stand (see paragraph [0026] of the application publication). However, Applicant’s disclosure is silent as to the structure that comprise the claimed sample stand ascent-descent drive unit (i.e., what structure does the sample stand ascent-descent drive unit comprise?). As such, said limitation fails to comply with the written description requirement.
Claims 2-10 are included in this rejection by virtue of their dependency upon a rejected base claim.
Independent claim 1 recites the limitation "a control system," however, said limitation fails to comply with written description requirement. 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. Claim limitation “control system” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “system” coupled with functional language “control” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The term "system" is not limited to a specific structure for performing the recited function(s). The term "system" is considered to be non-structure modifier that fails to recite sufficiently definite structure, material or acts to perform the claimed function. The instant specification, as originally filed, discloses control system coupled to an electromagnetic mechanism and a permanent magnetic mechanism (see paragraph [0026] of the application publication). However, Applicant’s disclosure is silent as to the structure that comprise the claimed control system (i.e., what structure does the control system comprise?). As such, said limitation fails to comply with the written description requirement.
Claim 2 recites the limitation "a refrigerant cooling assembly," however, said limitation fails to comply with written description requirement. 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. Claim limitation “a refrigerant cooling assembly” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “assembly” coupled with functional language “refrigerant cooling” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The term "assembly" is not limited to a specific structure for performing the recited function(s). The term "assembly" is considered to be non-structure modifier that fails to recite sufficiently definite structure, material or acts to perform the claimed function. The instant specification, as originally filed, discloses a refrigerant cooling assembly coupled to a control system (see paragraph [0027] of the application publication). However, Applicant’s disclosure is silent as to the structure that comprise the claimed refrigerant cooling assembly (i.e., what structure does the refrigerant cooling assembly comprise?). As such, said limitation fails to comply with the written description requirement.
Claim 3 recites the limitation "a water cooling assembly," however, said limitation fails to comply with written description requirement. 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. Claim limitation “a water cooling assembly” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “assembly” coupled with functional language “water cooling” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The term "assembly" is not limited to a specific structure for performing the recited function(s). The term "assembly" is considered to be non-structure modifier that fails to recite sufficiently definite structure, material or acts to perform the claimed function. The instant specification, as originally filed, discloses a water cooling assembly (see, e.g., paragraph [0028] of the application publication). However, Applicant’s disclosure is silent as to the structure that comprise the claimed water cooling assembly (i.e., what structure does the water cooling assembly comprise?). As such, said limitation fails to comply with the written description requirement.
Claim 3 recites the limitation "a liquid helium cooling assembly," however, said limitation fails to comply with written description requirement. 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. Claim limitation “a liquid helium cooling assembly” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “assembly” coupled with functional language “liquid helium cooling” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The term "assembly" is not limited to a specific structure for performing the recited function(s). The term "assembly" is considered to be non-structure modifier that fails to recite sufficiently definite structure, material or acts to perform the claimed function. The instant specification, as originally filed, discloses a liquid helium cooling assembly (see, e.g., paragraph [0028] of the application publication). However, Applicant’s disclosure is silent as to the structure that comprise the claimed liquid helium cooling assembly (i.e., what structure does the liquid helium cooling assembly comprise?). As such, said limitation fails to comply with the written description requirement.
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 1-10 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 claim 1, claim limitation “sample stand ascent-descent drive unit” 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 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. Claim limitation “sample stand ascent-descent drive unit” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “unit” coupled with functional language “sample stand ascent-descent drive” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The term "unit" is not limited to a specific structure for performing the recited function(s). The term "unit" is considered to be non-structure modifier that fails to recite sufficiently definite structure, material or acts to perform the claimed function. The instant specification, as originally filed, discloses sample stand ascent-descent drive coupled to a sample stand (see paragraph [0026] of the application publication). However, Applicant’s disclosure is silent as to the structure that comprise the claimed sample stand ascent-descent drive unit (i.e., what structure does the sample stand ascent-descent drive unit comprise?).
Regarding claim 1, claim limitation “a control system” 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 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. Claim limitation “control system” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “system” coupled with functional language “control” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The term "system" is not limited to a specific structure for performing the recited function(s). The term "system" is considered to be non-structure modifier that fails to recite sufficiently definite structure, material or acts to perform the claimed function. The instant specification, as originally filed, discloses control system coupled to an electromagnetic mechanism and a permanent magnetic mechanism (see paragraph [0026] of the application publication). However, Applicant’s disclosure is silent as to the structure that comprise the claimed control system (i.e., what structure does the control system comprise?). As such, said limitation fails to comply with the written description requirement.
Regarding claim 2, claim limitation “a refrigerant cooling assembly” 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 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. Claim limitation “a refrigerant cooling assembly” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “assembly” coupled with functional language “refrigerant cooling” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The term "assembly" is not limited to a specific structure for performing the recited function(s). The term "assembly" is considered to be non-structure modifier that fails to recite sufficiently definite structure, material or acts to perform the claimed function. The instant specification, as originally filed, discloses a refrigerant cooling assembly coupled to a control system (see paragraph [0027] of the application publication). However, Applicant’s disclosure is silent as to the structure that comprise the claimed refrigerant cooling assembly (i.e., what structure does the refrigerant cooling assembly comprise?). As such, said limitation fails to comply with the written description requirement.
Regarding claim 3, claim limitation “a water cooling assembly” 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 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. Claim limitation “a water cooling assembly” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “assembly” coupled with functional language “water cooling” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The term "assembly" is not limited to a specific structure for performing the recited function(s). The term "assembly" is considered to be non-structure modifier that fails to recite sufficiently definite structure, material or acts to perform the claimed function. The instant specification, as originally filed, discloses a water cooling assembly (see, e.g., paragraph [0028] of the application publication). However, Applicant’s disclosure is silent as to the structure that comprise the claimed water cooling assembly (i.e., what structure does the water cooling assembly comprise?). As such, said limitation fails to comply with the written description requirement.
Regarding claim 3, claim limitation “a liquid helium cooling assembly” 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 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. Claim limitation “a liquid helium cooling assembly” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “assembly” coupled with functional language “liquid helium cooling” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The term "assembly" is not limited to a specific structure for performing the recited function(s). The term "assembly" is considered to be non-structure modifier that fails to recite sufficiently definite structure, material or acts to perform the claimed function. The instant specification, as originally filed, discloses a liquid helium cooling assembly (see, e.g., paragraph [0028] of the application publication). However, Applicant’s disclosure is silent as to the structure that comprise the claimed liquid helium cooling assembly (i.e., what structure does the liquid helium cooling assembly comprise?). As such, said limitation fails to comply with the written description requirement. Therefore, the claims are 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 claims 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.
Claims 2-10 are included in this rejection by virtue of their dependency upon a rejected base claim.
Claim 5 recites the limitation “a common coil” in line 3. However, Applicant’s disclosure does not define as to what constitutes a common coil. It is unclear what type of coil does the prior art needs to disclose to meet the claimed common coil.
Appropriate correction is required.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Zhang et al. (CN 111411041) disclose a magnetic treatment device comprising a base, a sample stand, a permanent magnetic mechanism, a cooling system and a permanent magnetic mechanism motion drive unit.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIBAN M HASSAN whose telephone number is (571)270-7636. The examiner can normally be reached on 8:30 AM - 5:00 PM.
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/LIBAN M HASSAN/Primary Examiner, Art Unit 1799