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 .
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:
- "target surface replacement mechanism" which uses the generic placeholder "mechanism" coupled with the functions “configured to provide a replenished targe surface onto which getter vapor can be deposited” and “for arranging the second target surface in place of the first target surface”.
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.
Claim 15-17, 20-24 is/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.
In claims 15 and 21, claim limitation “target surface replenishment mechanism” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to sufficiently 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. Insufficient details of the target surface replenishment mechanism are provided in the specification as filed. 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 23 states “preferably a spherical tokamak, and more preferably a spherical tokamak having an aspect ratio of less than or equal to 2.5”. It is unclear if these preferences are required, or not. Therefore, the claim is indefinite.
Dependent claims are rejected based on their dependency to the claims rejected in detail above.
Claims 15-17, 20-24 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.
Claims 15 and 21 recite a “target surface replenishment mechanism”. Under the claim interpretation above, the “target surface replenishment mechanism” is interpreted as the structure disclosed in the specification as filed which performs the associated function as detailed above in the claim interpretation section.
The specification states”
“The mechanism comprises: a translation device 501 for moving a clean target plate 506 and removing the target plate 106. The translation device 501 may be actuated from the atmospheric pressure side in order to provide the necessary motive force to replace target plate 106 with clean target plate 506. The mechanism further comprises dedicated storage modules 502, 503 for10 respectely storing the "clean" and "used" target surfaces. In some examples, these storage modules 502, 503 are located within the chamber being pumped. In such examples, the translation device 501 can advantageously be actuated to replace plates 106, 506 without having to depressurise the chamber in which the pump system is disposed. Alternatively, the storage modules 502, 503 can be located outside the chamber, although that set-up requires depressurising the system each time the plates need changing.
A locking mechanism 504 can be used to retain the target surface 106 in the appropriate position for receiving the getter vapour from evaporator 104, and in contact with any heating 112 or cooling elements 214, 314 present in the pump system 100, 200, 300. The locking mechanism 504 is operable to "unlock" so that the plate 106 in the chamber can be replaced with clean plate 506. In general, the target surface insertion and removal mechanism is activated conditional upon a predetermined condition being met. The predetermined condition may be a particular getter saturation, the thickness of the layer on the target plate i.e. the getter layer and its products, or after a predefined time has elapsed. In general, the target surface 106 is considered to be "saturated" with getter products when the predetermined condition is met. Activation of the target surface insertion and removal mechanism 50030 compris steps of: (i) releasing the locking mechanism 504; (ii) moving the target plate 106 with getter layer 107 to storage module 503; (iii) moving the clean target plate 506 from storage module 502 into a position to receive the getter vapour from evaporator 104; (iv) engaging the locking mechanism 504 to retain the new target plate 506 in place”.
MPEP2163 II. A. 3. at paragraph three states: "An applicant may show possession of
an invention by disclosure of drawings or structural chemical formulas that are sufficiently
detailed to show that applicant was in possession of the claimed invention as a
whole." Regarding the written description requirement for claims 15-17, 20-24 insufficient
details of the target surface replenishment mechanism are provided, insufficient details of the translation device are provided, and insufficient details of the locking mechanism are provided. Fig 5 is merely an arrangement of rectangular boxes with insufficient detail of the actual structure.
MPEP 2163 I. at paragraph two states: "To satisfy the written description requirement, a
patent specification must describe the claimed invention in sufficient detail that one skilled
in the art can reasonably conclude that the inventor had possession of the claimed
invention." Regarding the written description requirement for claims 15-17, 20-24 insufficient
details of the target surface replenishment mechanism are provided, insufficient details of the translation device are provided, and insufficient details of the locking mechanism are provided.
As set forth in MPEP 2166 at form paragraph 7.31.01, the questions the examiner asked
which were not satisfactorily resolved and consequently raised doubt as to possession of the
claimed invention at the time of filing, include:
What in particular is the structure of the target surface replenishment mechanism?
What in particular is the structure of the disclosed translation device?
What in particular is the structure of the disclosed locking mechanism?
How in particular does the target surface replenishment mechanism provide a replenished target surface onto which getter vapor can be deposited? What is particular is the structure of the target surface replenishment mechanism that performs this function?
How in particular does the target surface replenishment mechanism arrange the second target surface in place of the first target surface? What is particular is the structure of the target surface replenishment mechanism that performs this function?
Therefore, for the reasons detailed above, claims 15-17, and 20-24 contain 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Examiner’s note
Given the lack of structural detail provided in the specification as filed for the target surface replenishment mechanism, the examiner is unable to determine particular corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the claimed functions. This not only prohibits the examiner from determining the particular structure of the target surface replenishment mechanism itself, it also prohibits the examiner from determining equivalent structures for the target surface replenishment mechanism as required by 35 USC 112(f). This in turn prohibits the examiner from determining the claimed scope of the claimed invention. Therefore, the examiner is unable to perform the necessary search to determine applicable prior art as the claimed scope of the claimed invention is unclear.
MPEP 904 states (emphasis added) “The examiner, after having obtained a thorough understanding of the invention disclosed and claimed in the nonprovisional application, then searches the prior art as disclosed in patents and other published documents, i.e., nonpatent literature (NPL).”.
MPEP 904.01 states “The breadth of the claims in the application should always be carefully noted; that is, the examiner should be fully aware of what the claims do not call for, as well as what they do require.”.
MPEP 2173.02 states “During examination, after applying the broadest reasonable interpretation to the claim, if the metes and bounds of the claimed invention are not clear, the claim is indefinite and should be rejected. Packard, 751 F.3d at 1310.”
MPEP 2173.06 II states ” Second, where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.”
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Conclusion
See form PTO-892 for prior art made of record but not relied upon that may be considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS ANDREW FINK whose telephone number is (571) 270-3373. The examiner can normally be reached on M-Th 9-7.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Laurenzi can be reached on (571) 270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-270-4373.
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/Thomas Fink/Primary Examiner, Art Unit 3746
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