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:
“a manipulation source…” in claim 10. This “manipulation source” is interpreted to be a laser in accordance with the specification.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3-4 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. The claim recites an apparatus and a method of its use in the same claim. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). MPEP 2173.05(p) (II); and See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). Specifically, claim 3 recites the step of “the magnitude and the direction of the generated magnetic field are selected based on an operation to be performed.” Claim 4 adds two additional selecting steps. These limitations are steps because they recite a step of selecting, presumably by an operator. These limitations make the claim indefinite because the step claim language makes it unclear whether infringement occurs when one creates the system that allows for the step, or whether infringement occurs when the step actually occurs.
Claim 10 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. The claim recites an apparatus and a method of its use in the same claim. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). MPEP 2173.05(p) (II); and See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). Specifically, claim 10 recites the step of “the direction of the generated magnetic field is selected to change a relative direction of polarization of a manipulation signal generated by a manipulation source.” This limitation is a step because it recites a step of selecting, presumably by an operator. This limitation makes the claim indefinite because the step claim language makes it unclear whether infringement occurs when one creates the system that allows for the step, or whether infringement occurs when the step actually occurs.
Claim 11 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. The claim recites an apparatus and a method of its use in the same claim. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). MPEP 2173.05(p) (II); and See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). Specifically, claim 11 recites the step of “each current through a respective one of the one or more quasi-DC circuits ramps up from no current to a desired direct current and ramps down from the desired direct current to no current substantially slower than a Zeeman frequency splitting within a hyperfine manifold associated with the atomic object confinement apparatus.” This limitation is a step because it recites a step of ramping at a particular speed. This limitation makes the claim indefinite because the step claim language makes it unclear whether infringement occurs when one creates the system that allows for the step, or whether infringement occurs when the step actually occurs.
Claims 14-15 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. The claim recites an apparatus and a method of its use in the same claim. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). MPEP 2173.05(p) (II); and See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). Specifically, claim 14recites the step of “the magnitude and the direction of the generated magnetic field are selected based on an operation to be performed.” Claim 15 adds two additional selecting steps. These limitations are steps because they recite a step of selecting, presumably by an operator. These limitations make the claim indefinite because the step claim language makes it unclear whether infringement occurs when one creates the system that allows for the step, or whether infringement occurs when the step actually occurs.
Claim 18 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. The claim recites an apparatus and a method of its use in the same claim. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). MPEP 2173.05(p) (II); and See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). Specifically, claim 18 recites the step of “the direction of the generated magnetic field is selected to change a relative direction of polarization of a manipulation signal generated by a manipulation source.” This limitation is a step because it recites a step of selecting, presumably by an operator. This limitation makes the claim indefinite because the step claim language makes it unclear whether infringement occurs when one creates the system that allows for the step, or whether infringement occurs when the step actually occurs.
Claim 19 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. The claim recites an apparatus and a method of its use in the same claim. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). MPEP 2173.05(p) (II); and See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). Specifically, claim 19 recites the step of “each current through a respective one of the one or more quasi-DC circuits ramps up from no current to a desired direct current and ramps down from the desired direct current to no current substantially slower than a Zeeman frequency splitting within a hyperfine manifold associated with the atomic object confinement apparatus.” This limitation is a step because it recites a step of ramping at a particular speed. This limitation makes the claim indefinite because the step claim language makes it unclear whether infringement occurs when one creates the system that allows for the step, or whether infringement occurs when the step actually occurs.
Response to Arguments
Applicant's arguments filed 8/11/26 have been fully considered but they are not fully persuasive.
The indefiniteness rejection of claims 1-20 regarding the phrase “atomic objects” is withdrawn in light of applicant’s amendments.
The indefiniteness rejection of claims 1-20 regarding the phrase “quasi-direct-current” is withdrawn in light of applicant’s arguments.
With respect to the indefiniteness rejection of claims 3-4, 10-11, 14-15, 18-19 for reciting method steps in an apparatus, applicant argues that the claims are not indefinite because they do not recite steps, but rather functional language. Applicant analogizes the limitations to those of MasterMine Software, Inc. v. Microsoft Corp., 874 F.3d 1307, 1316 (Fed. Cir. 2017), and asserts that like those claims, these are definite. This is not persuasive. In MasterMine, functional language was tied to specific structure, specifically a “reporting module.” MasterMine at 1315.1 In the instant claims, the step limitations are not functional language tied to structure for two reasons: 1) they are not tied to any particular or general structure at all; and 2) they recite steps that entail a physical change in the structure recited elsewhere in the claims. For example, instant claim 3 recites that a magnitude of a magnetic field is selected and then another magnitude of a magnetic field is selected. Neither selection is tied to structure such that the structure would be functionally described by its ability to select. Rather, each selection is performed by an unknown means and results in a change to being imposed on a circuit of the claim. Further, the two steps are separated in time. That is to say that the steps are not drafted as functional limitations, but as sequential actions to be taken. In sum, the claims are not analogous to those of MasterMine, but instead, are simply steps in an apparatus claim.
Allowable Subject Matter
Claims 1-2, 5, 12-13, 16, and 20 are allowed.
Claims 3-4, 10-11, 14-15, 18-19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST.
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WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
1 “wherein the reporting module installed within the CRM software application presents a set of user-selectable database fields as a function of the selected report template, receives from the user a selection of one or more of the user-selectable database fields, and generates a database query as a function of the user selected database fields” MasterMine at 1315.
Prosecution Insights