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:
“atomic beam generation device…” in claims 7 and 8;
“moving standing light wave generation device…” in claims 7 and 8;
“an interference device configured to…” in claims 7 and 8; and
“an observation device configured to detect…” in claim 8.
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 1-8 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. The independent claims recite a pumping laser beam having “a wavelength corresponding to a transition between a ground state and an excited state” and a filtering laser beam “having a wavelength corresponding to a transition between the ground state and the metastable state.”
The courts have described the essential question to be addressed in a description requirement issue in a variety of ways. An objective standard for determining compliance with the written description requirement is, "does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Under Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), to satisfy the written description requirement, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and that the invention, in that context, is whatever is now claimed.
While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc).
In the instant case, the applicant claims a broad genus of laser wavelengths, i.e., lasers corresponding to “transition[s] between a ground state and an excited state” and “transition[s] between the ground state and the metastable state” and no limits whatsoever with respect to atomic species; however, the disclosure only provides one example. In the example, applicant describes 174Yb as the atomic species at issue, a pumping beam at 404 nm, and a filtering beam at 507 nm. There is no evidence whatsoever that other atoms were considered or subjected to laser beams consistent with the claimed functions. As such, there is no evidence that the applicant possessed the broad genus claim encompassing all atoms that is presented. Accordingly, the applicant fails to reasonably convey to those skilled in the art that he or she was in possession of the claimed quantum-mechanical beam collimator commensurate in scope with that claimed.
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 2-8 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. Claims 2, 7, and 8 describe a metastable state of an atom as “a metastable state to which atoms in the excited state make transition in a relaxation process.” These claims are all apparatus claims, and the claims do not further define the “relaxation process” at issue. The specification does not further define what relaxation process is intended, but does note that the process is stochastic. See e.g., instant Fig. 3 and the description thereof. It is unclear what metastable states are within the scope of the claims, since the relaxation process defining them is not specified. As such, the claims are rejected as indefinite.
Claim Rejections - 35 USC § 102
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 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.
Claims 2 and 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2021/0389114 A1 [Kozuma].
Regarding Claim 2:
Kozuma teaches a collimator for quantum-mechanically collimating an atomic beam (Fig. 1, para 1) comprising an irradiation device configured to irradiate the atomic beam with a pumping laser beam (Fig. 1 (701b)) and a filtering laser beam in this order (Fig. 1 (701c)), wherein
the pumping laser beam is a laser beam having a wavelength corresponding to a transition between a ground state and an excited state of atoms in the atomic beam (Fig. 3, para 31), and
the filtering laser beam is a laser beam having a wavelength corresponding to a transition between the ground state and a metastable state to which atoms in the excited state make transition in a relaxation process (Fig. 3, para 30).
Regarding Claim 6:
Kozuma teaches the collimator according to claim 2, wherein a traveling direction of the pumping laser beam is unparallel to the traveling direction of the filtering laser beam. See Fig. 1.
Regarding Claim 7:
Kozuma teaches an atomic interferometer (claim 22) comprising:
an atomic beam generation device configured to continuously generate an atomic beam (claim 22);
a moving standing light wave generation device configured to generate three or more moving standing light waves (claim 22); and
an interference device configured to obtain an atomic beam resulting from an interaction between the atomic beam and the three or more moving standing light waves (claim 22),
wherein the atomic beam generation device comprises an atomic beam source (claim 22), and a collimator (claim 22),
the collimator comprises an irradiation device configured to irradiate the atomic beam with a pumping laser beam (Fig. 1 (701b)) and a filtering laser beam in this order (Fig. 1 (701c)), wherein
the pumping laser beam is a laser beam having a wavelength corresponding to a transition between a ground state and an excited state of atoms in the atomic beam (Fig. 3, para 31), and
the filtering laser beam is a laser beam having a wavelength corresponding to a transition between the ground state and a metastable state to which atoms in the excited state make transition in a relaxation process (Fig. 3, para 30).
Regarding Claim 8:
Kozuma teaches an atomic gyroscope (claim 23) comprising:
an atomic beam generation device configured to continuously generate an atomic beam (claim 23);
a moving standing light wave generation device configured to generate three or more moving standing light waves (claim 23);
an interference device configured to obtain an atomic beam resulting from an interaction between the atomic beam and the three or more moving standing light waves (claim 23); and
an observation device configured to detect an angular velocity or acceleration by observing the atomic beam from the interference device (claim 23),
wherein the atomic beam generation device comprises an atomic beam source, and a collimator (claim 23),
the collimator comprises an irradiation device configured to irradiate the atomic beam with a pumping laser beam (Fig. 1 (701b)) and a filtering laser beam in this order (Fig. 1 (701c)), wherein
the pumping laser beam is a laser beam having a wavelength corresponding to a transition between a ground state and an excited state of atoms in the atomic beam (Fig. 3, para 31), and
the filtering laser beam is a laser beam having a wavelength corresponding to a transition between the ground state and a metastable state to which atoms in the excited state make transition in a relaxation process (Fig. 3, para 30).
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ROBERT KIM can be reached at 571 272 2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
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