DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the America Invents Act (AIA ).
General Information Matter
Please note, the instant Non-Provisional application (18/702,240) under prosecution at the United States Patent and Trademark Office (USPTO) has been assigned to David Zarka (Examiner) in Art Unit 2449. To aid in correlating any papers for 18/702,240, all further correspondence regarding the instant application should be directed to the Examiner.
Joint Inventors
This application currently names joint inventors. In considering patentability of the claims the Examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicants are advised of the obligation under 37 C.F.R. § 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the Examiner to consider the applicability of 35 U.S.C. § 102(b)(2)(C) for any potential § 102(a)(2) prior art against the later invention.
Preliminary Amendment and Claim Status
The instant Office action is responsive to the preliminary amendments received April 17, 2024 and June 2, 2025.
Claims 1 and 26–45 are currently pending.
Claimed Foreign Priority
Acknowledgment is made of (1) Applicants’ claim for foreign priority based on an application filed in the United Kingdom on October 18, 2021; and (2) certified copies of papers required by 37 C.F.R. § 1.55.
Information Disclosure Statement (IDS)
The IDSs filed April 17, 2024 and February 26, 2025 each comply with the provisions of 37 C.F.R. §§ 1.97, 1.98 and MPEP § 609. The IDSs have been placed in the application file, and the information referred to therein has been considered.
Drawings
37 C.F.R. § 1.83(a) recites
The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box).
The drawings are objected to under 37 C.F.R. § 1.83(a) for including unlabeled rectangular boxes. See fig. 1. The Examiner suggests adding “transmitter” inside box item 2 and “receiver” inside box item 3.
Corrected drawing sheets in compliance with 37 C.F.R. § 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Applicants are advised to employ the services of a competent patent draftsperson outside the Office, as the USPTO does not prepare new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
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 C.F.R. § 1.121(d). If the changes are not accepted by the Examiner, Applicants 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 Objections
The following is a quotation of 37 C.F.R. § 1.71(a):
The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.
Claims 35–37 are objected to under 37 C.F.R. § 1.71(a) for the following informalities:
(1) claim 35, line 10 should be “the repetition rate of the individual quantum beams.”
Means-plus-Function Language
The following is a quotation of 35 U.S.C. § 112(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 claims in the instant 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) 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):
(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 for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f). The presumption that § 112(f) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f). The presumption that § 112(f) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in the instant application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke § 112(f) except as otherwise indicated in an Office action.
The instant 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) 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 limitations1 are:
“N faint photon sources” (claim 1, line 3; claim 35, line 3);
“N single photon detection units” (claim 1, line 19; claim 38, line 8);
“time-taggers” (claim 1, line 24; claim 38, line 12); and
“N decoding optical systems” (claim 28, line 2; claim 40, line 2).
Since the claim limitations invoke 35 U.S.C. § 112(f), claims 1 and 26–45 have been interpreted to cover the corresponding structure described in the Specification that achieves the claimed function, and equivalents thereof.
With respect to the claimed function corresponding to the “N faint photon sources” (claim 1, line 3; claim 35, line 3), the Specification states the claimed function of emitting a quantum beam at different wavelengths is performed by a “faint photon source (FPS).” See Spec. ¶¶ 39–40. The use of the term “faint photon source” is not adequate structure for performing the quantum beam emission because it does not describe a particular structure for performing the function. The Examiner finds, however, one skilled in the art would reasonably be expected to draw that quantum beam emission at different wavelengths can be performed by only a limited number of hardware elements including a specialized laser. See MPEP § 2181(II)(A)(reciting “The disclosure of the structure (or material or acts) may be implicit or inherent in the specification if it would have been clear to those skilled in the art what structure (or material or acts) corresponds to the means- (or step-) plus-function claim limitation.”); see also id. § 2144.01.
With respect to the claimed function corresponding to the “N single photon detection units” (claim 1, line 19; claim 38, line 8), the Specification recites “[s]ingle photon avalanche photodiodes (SPADs)” that achieves the claimed function. Spec. ¶ 33.
With respect to the claimed function corresponding to the “N decoding optical systems” (claim 28, line 2; claim 40, line 2), the Specification recites “beam splitter” that achieves the claimed function. Spec. ¶ 44.
If Applicants do not intend to have the claim limitations treated under 35 U.S.C. § 112(f), Applicants may amend the claims so that they will clearly not invoke § 112(f), or present a sufficient showing that the claims recite sufficient structure, material, or acts for performing the claimed function to preclude application of § 112(f).
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011) (available at https://www.govinfo.gov/content/pkg/FR-2011-02-09/pdf/2011-2841.pdf).
Claim Rejections – 35 U.S.C. § 112
The following is a quotation of 35 U.S.C. § 112(b): “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 MPEP recites “[d]uring examination, after applying the broadest reasonable interpretation consistent with the specification to the claim, if the metes and bounds of the claimed invention are not clear, the claim is indefinite and should be rejected.” MPEP § 2173.02(I) (citing In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014)). “For example, if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) . . . is appropriate.” Id. See also id. § 2173.05(e)(discussing indefiniteness arising for terms lacking proper antecedent basis).
Claims 1, 26–34, and 37–45 are rejected under § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. In particular,
(i) As discussed above, claim element “time-taggers” (claim 1, line 24; claim 38, line 12) is a limitation that invokes 35 U.S.C. § 112(f). The Specification states the claimed function of tagging a detection event is performed by “a detector time tagger 40.” Spec. ¶ 50. The Specification further states “the time tagger 40 has eight channels,” but does not specify adequate structure of what a “channel” may be.2 Thus, the Specification does not provide sufficient details such that one of ordinary skill in the art would understand which structure or structures perform(s) the claimed function of tagging a detection event. Moreover, as would be recognized by those of ordinary skill in the art, the term “time-taggers” can be performed in any number of ways in hardware, software or a combination of the two.
The written description, therefore, fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function. Accordingly, the claim is indefinite and is rejected under 35 U.S.C. § 112(b).
Applicants 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
(b) Amend the written description of the Specification such that it clearly links or associates the corresponding structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. § 132(a)); or
(c) State on the record where the corresponding structure, material, or acts are set forth in the written description of the Specification and linked or associated to the claimed function. For more information, see 37 CFR § 1.175(d) and MPEP §§ 608.01(o) and 2181.
(ii) claim 37, line 1, “the faint photon source” lacks clear antecedent basis. The Examiner is unclear which faint photon source among the “N faint photon sources” (claim 35, line 3) is being referred to.
Claim Rejections – 35 U.S.C. § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Yuan
Claims 35 and 37 are rejected under 35 U.S.C. § 102 as being anticipated by Yuan et al. (US 2012/0328290 A1; filed Jun. 15, 2012).
Regarding claim 35, Yuan discloses a transmitter (fig. 5, items 23, 25) for an optical communication system (intended use in italics; see MPEP § 2111.02), the transmitter comprising:
N faint photon sources (fig. 5, items 231–23N), where N is greater than 1, wherein each faint photon source is configured to emit a quantum beam (“FIG. 5 is a schematic of a quantum communication network” at ¶ 76 and “a single quantum receiver 21 receiving quantum signals” at ¶ 57 at least suggests the signals emitted from item 23 are quantum beams) at a different wavelength (“each transmitter emits at a unique wavelength” at ¶ 10; “transmitted signals of different wavelengths” at ¶ 78), and wherein each quantum beam comprises a series of single photon events (fig. 5 illustrates single photon events represented by triangles along item 25); and
a wavelength division multiplexer (“a wavelength-division-multiplexer (WDM)” at ¶ 76; fig. 5, item 29) for multiplexing the quantum beams to produce a combined multi-wavelength quantum beam (“signals from all transmitters are temporally interleaved” at ¶ 76; fig. 5 illustrates a combined multi-wavelength quantum beam represented by triangles between items 21 and 29),
wherein the combined multi-wavelength quantum beam comprises a series of interleaved single photon events having different wavelengths (“signals from all transmitters are temporally interleaved” at ¶ 76; “combine all the transmitted signals of different wavelengths” at ¶ 78), and
wherein the repetition rate of the combined quantum beam is N times the repetition rate the individual quantum beams (because the combined quantum beams are interleaved at ¶ 76, one skilled in the art would reasonably be expected to infer that the repetition rate of the combined quantum beam is N times the repetition rate the individual quantum beams; see MPEP § 2144.01).
Regarding claim 37, Yuan teaches wherein the faint photon source is a single photon source (fig. 5, item 23).
Claim Rejections – 35 U.S.C. § 103
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.
Trifonov and Yuan
Claims 35 and 37 are rejected under 35 U.S.C. § 103 as being obvious over Trifonov et al. (WO 2006/026004 A2; filed July 28, 2005) in view of Yuan.
Regarding claim 35, while Trifonov teaches a transmitter (fig. 6) for an optical communication system (intended use in italics; see MPEP § 2111.02), wherein the transmitter comprises:
N faint photon sources (fig. 6, items L1–L3), where N is greater than 1, wherein each faint photon source is configured to emit a quantum beam at a different wavelength (“Lasers L1, L2 and L3 emit respective optical pulses P1 , P2 and P3 having respective wavelengths λ1 , λ2, and λ 3.” at p. 6), and wherein each quantum beam comprises a series of single photon events (“The optical (quantum) pulses returned from Alice to Bob, as described below, generally have an average number of photons of 1 or fewer, and preferably about 0.1.” at p. 6); and
a wavelength division multiplexer (fig. 6, item 300) for multiplexing the quantum beams to produce a combined multi-wavelength quantum beam (“a multiplexer 300 (e.g., a conventional optical multiplexer, a micro-electro-mechanical (MEMS) device, etc.) is used to combine the optical pulses P from the different laser sources L” at p. 12),
wherein the combined multi-wavelength quantum beam comprises a series of interleaved single photon events having different wavelengths (“send their respective optical pulses of different wavelengths” at p. 5),
Trifonov does not teach wherein the repetition rate of the combined quantum beam is N times the repetition rate the individual quantum beams.
Yuan teaches a repetition rate of a combined quantum beam (“signals from all transmitters are temporally interleaved” at ¶ 76; fig. 5 illustrates a combined multi-wavelength quantum beam represented by triangles between items 21 and 29) is N times a repetition rate (because the combined quantum beams are interleaved at ¶ 76, Yuan at least suggests that the repetition rate of the combined quantum beam is N times the repetition rate the individual quantum beams; see MPEP § 2144.01) individual quantum beams (“FIG. 5 is a schematic of a quantum communication network” at ¶ 76 and “a single quantum receiver 21 receiving quantum signals” at ¶ 57 at least suggests the signals emitted from item 23 are individual quantum beams).
It would have been obvious to one of ordinary skill in the art before the filing date of the invention for the repetition rate of Trifonov’s combined quantum beam to be N times the repetition rate of Trifonov’s individual quantum beams as taught by Yuan “to protect the security of the information that is communicated.” Yuan ¶ 194.
Regarding claim 37, Yuan teaches wherein the faint photon source is a single photon source (fig. 6, item L1).
Yuan and Damaghi
Claim 36 is rejected under 35 U.S.C. § 103 as being obvious over Yuan in view of Damaghi et al. (US 2017/0280211 A1; filed Mar. 21, 2017).
Regarding claim 36, Yuan does not teach wherein the transmitter is on a satellite.
Damaghi teaches a satellite (“Earth station communications satellite 30b” at ¶ 148).
It would have been obvious to one of ordinary skill in the art before the filing date of the invention for Trifonov’s transmitter to be on a satellite as taught by Damaghi to provide “a maximum transmission distance of the signal.” Damaghi ¶ 3.
Allowable Subject Matter
Claims 1 and 38 would be allowable if rewritten to overcome the rejection under 35 U.S.C. § 112(b) set forth in this Office action
Claims 26–34 and 39–45 would be allowable if rewritten to (1) overcome the rejection under 35 U.S.C. § 112(b) set forth in this Office action; and (2) include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicants’ disclosure: US-20060023885-A1; US-7929700-B2; US-9071425-B2; US-11804908-B2; US-20090185689-A1; US-20050135627-A1; US-20190013878-A1; US-10158481-B2; and GB-2534917-A.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to DAVID P. ZARKA whose telephone number is (703) 756-5746. The Examiner can normally be reached Monday–Friday from 9:30AM–6PM ET.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Vivek Srivastava, can be reached at (571) 272-7304. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/DAVID P ZARKA/PATENT EXAMINER, Art Unit 2449
1 The Examiner notes “Applicants are free to invoke § 112 ¶ 6 for a claim term nested in a method claim. We have never held otherwise.” Rain Computing, Inc. v. Samsung Elecs. Am. Inc., 989 F.3d 1002, 1006 (Fed. Cir. 2021). See also Media Rights Technologies, Inc. v. Capital One Financial Corp., 800 F.3d 1366, 1374 (Fed. Cir. 2015) (holding that the term “compliance mechanism” in a method claim was a means-plus-function term); see also MPEP § 2181.
2 The Examiner finds the term “channel” is, by definition, “a means of communication or expression.” Merriam-Webster, “channel” n. 1d, available at https://www.merriam-webster.com/dictionary/channel.