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 .
Detailed Action
Response to Arguments
Applicant's arguments filed 5-11-2026 have been fully considered but they are not persuasive.
In regard to the 112(f) interpretation the applicant states that the amendments have overcome the interpretation but the examiner does not agree.
In regard to the 112 (b) rejection the applicant argues that there is nothing wrong with claiming an apparatus by its function and that it must be evaluated just like any limitation. The examiner agrees, a functional limitation must be evaluated in regard to how the apparatus operates. However, in an apparatus claim the structure that is shown must only need to be capable of performing that function and it is not require to be explicitly disclosed as performing that function.
Further, these arguments fail to address the arguments of the 112 (b) rejection the examiner has presented. The first point being that the optical switch is apparently the object being worked upon by the apparatus and it isn’t clear from the way it’s claimed what scope of limitation it provides the claims. The examiner notes MPEP 2115 states, “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).” Thus, in this regard the optical switch and the structure of it do not provide any patentability to the claim.
In the second part of the rejection, the applicant phrased the limitations such that only in certain situations were the scopes of the limitation applied and thus left an uncertain scope. The applicant has attempted to clarify the claims while maintaining both options. However, the applicant has just reworded the claim language and the limitations are still optional thus the same problem still applies.
Further, upon reviewing the application the examiner finds the applicant is attempting to claim two different embodiments in one claim. The structure of how the circulator is attached to the fiber under test is different (Fig. 2 Vs Fig. 5) thus even if the applicant were to attempt to make these alternatives non-optional, it appears the claims would directly defy the disclosure and introduce further clarity and written description rejections.
In regard to the 103 rejection the applicant has argued that the limitations are not claimed in the alternative and that the case has been amended to affirm this. The examiner is not persuaded. First, the applicant’s amendments are still claimed in the alternative. It requires the light either to travel the first path or the second path and if it is traveling one or the other then the scope that that path is attached to applies. Secondly, as noted above, applicant is attempting to claim two different embodiments in one claim, which, by its very nature, means these are alternatives. These cannot both apply at once. Still more, this is attempting to claim how the circulator is attached to the fiber under test. The examiner notes that what changes between the drawings (Fig. 2 and Fig. 5) that illustrate the different embodiments is the direction of travel of the light through the circulator. Thus, the applicant appears to be claiming a standard circulator that they install in a different direction for each embodiment. This leaves the examiner one of two interpretations. First, these are obvious variants of each other, and just a manner of using the applicant’s claimed apparatus and it is being claimed in the alternative. In this case, the examiner’s rejection still stands. Second, this is a structurally significant difference that is defining to the embodiments in which case a restriction would be warranted. The examiner found this to be the former case previously and still stands by this interpretation. In either case, this claim structure will not limit the scope to both embodiments together. Lastly, installing a circulator such that it interfaces with a fiber under test appears to be a functional limitation, and the circulator of the art is clearly capable of this function. Therefore, the rejection has been maintained.
Drawings
The drawings were received on 5-11-2026. These drawings are acceptable.
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: an optical test device in claims 1 & 6.
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 1-6 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Regarding Claims 1 & 6 the applicant has claimed “a path selection optical switch incorporated in a communication network that transmits communication light,” however from the specification this would appear to be a part of a common optical fiber network as disclosed in Paragraph 3 of the applicant’s disclosure and shown in fig. 1. Further, the claims are drawn to an optical fiber sensing system/method which works upon such a network. Thus, it would appear that the optical switch is not part of this apparatus/method and it isn’t clear what scope of limitation a part of the network being operated upon by the invention should be granted. Nor is there a clear line drawn between the apparatus structure and the network structure in the claims. These lack of clarity issues make the scope of what’s being claim confusing and should be cleared up.
Further, the applicant has claimed two situations with the clause “when the optical fiber targeted for measurement” and then proceeded to describe different manners of connecting the optical test device to the network depending on which direction the light is travelling in relation to the path selection optical switch. There are a few problems with describing their invention this way. First, what if neither situation is true? What then is the scope of the claims. Is it merely a network with an optical switch, an optical testing device, and a circulator? With the new wording the applicant still couches the language in “When” which implies there are times when it is not happening. This still makes the scope optional and thus not positively limiting. Further, the applicant is attempting to claim how a device is attached to a fiber under measurement and in at least the apparatus claims this is only limiting in the fact that it has to be capable of being attached in this manner. In the method claim it’s still met if the art shows it attached in one of the two optional ways. Further, as the examiner noted above this is either a trivial difference or one that is significant and in the case of the latter this means the applicant is claiming two embodiments that are not trivially different in one claim which introduces both new 112 rejections and would require a restriction.
To summarize these claims are indefinite because in the case of the apparatus the exact structure of the apparatus is left unclear and in the case of the method whether the steps are positively claimed and whether they’re even required is left unclear.
In Claim 5, the applicant claims:
“a first optical amplifier for amplifying the communication light entering the path selection optical switch; and
a second optical amplifier for amplifying the communication light emitted from the path selection optical switch,
wherein the first optical amplifier is connected to the first optical circulator, the first optical amplifier, and the path selection optical switch in this order along the transmission direction of the communication light, and
the second optical amplifier is connected to the path selection optical switch, the second optical amplifier, and the first optical circulator in this order along the transmission direction of the communication light,”
However, these limitations are confusing. First off, it would appear that the applicant is conflating two different embodiments. I.e. Fig. 4 and Fig. 5 because as previously claimed the communication light is moving unidirectional and in claim 1 the light is either going to the switch or away from the switch. Thus, the first and second amplifier as they are claimed only make sense if the applicant is claiming them in the alternative and mixing two embodiments. However, the wording does not reflect this and thus the scope of the limitation is unclear.
In addition, the language “wherein the first optical amplifier is connected to the first optical circulator, the first optical amplifier, and the path selection optical switch in this order along the transmission direction of the communication light” and “the second optical amplifier is connected to the path selection optical switch, the second optical amplifier, and the first optical circulator in this order along the transmission direction of the communication light,” is confusing in of themselves since it seems like the applicant is claiming the first and second optical amplifier to be connected to themselves which is not reflected in the disclosure.
The applicant should take steps to clarify this language. Further, for purposes of prosecution the examiner shall construe this claim in the alternative and that the first and second amplifier are two different embodiments.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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. Applicant is advised of the obligation under 37 CFR 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 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, & 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yano (PGPub 2022/0397431) (Yano) in view of Yang et al (PGPub 2010/0103506) (Yang).
Regarding Claims 1 & 6, Yano disclose an optical fiber sensing system (Figs. 2 & 4), comprising:
an optical test device (129, Fig. 4) for emitting test light and receiving backscattered light caused by scattering the test light in an optical fiber (4141), targeted for measurement, in the communication network (Paragraph 65); and
a first optical circulator (1283) inserted into the optical fiber (4141) targeted for measurement,
when the optical fiber targeted for measurement is an optical fiber through which the communication light goes toward the optical coupler (16):
the first optical circulator (1283) receives the test light entering the optical fiber targeted for measurement (Paragraph 66, Fig. 4); and
the coupler (16) is activated and separates the backscattered light from the communication network (Paragraphs 57 & 66), and
the limitation, “when the optical fiber targeted for measurement is an optical fiber through which the communication light goes from the path selection optical switch, the path selection optical switch is activated and receives the test light, from the optical test device, entering the optical fiber targeted for measurement, and the first optical circulator separates the backscattered light from the communication network,” is a trivial difference and is claimed in the alternative to the above situation and thus is met since a scope is met if one of the alternatives is met;
Yano fails to explicitly disclose a path selection optical switch incorporated in a communication network that transmits communication light; and the optical coupler is replaced by the path selection optical switch;
However, Yang discloses conventional optical communication network (fig. 1) which includes optical switches (100, Paragraph 6);
Thus, in combination with Yano it would be obvious to use the optical fiber system where there is a path selection optical switch and where the returned backscattered light is separated from the communication network by the optical switch instead of the coupler;
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Yano with a path selection optical switch incorporated in a communication network that transmits communication light; and the optical coupler is replaced by the path selection optical switch because in a standard network with an optical switch it would be common sense to use this to transmit the backscattered light to the optical test device since using the switch to sort the backscattered light to the detector is much less labor intensive than installing an additional structure to do so.
The method of claim 6 is also met by this disclosure.
Regarding Claim 4, Yano as modified by Yang discloses the aforementioned. Further, Yano discloses wherein a transmission direction of the communication light through each optical fiber connected to the path selection optical switch is unidirectional only (Fig. 4, Wavelength division multiplexed main signal, Paragraph 58).
Regarding Claim 5, Yano as modified by Yang discloses the aforementioned. Further, Yano discloses wherein a first optical amplifier (1284, fig. 4) for amplifying the communication light entering the path selection optical switch; and wherein the first optical amplifier (1284) is connected to the first optical circulator (1283), the first optical amplifier (1284), and the path selection optical switch (16) in this order along the transmission direction of the communication light. The path selection optical switch being substituted in for the optical coupler from Yang as previously disclosed and the order of the circulator and amplifier and switch are shown in Yano as being the same as claimed since the Main signal is moving from the left to right in Yano;
As for the limitations, “a second optical amplifier for amplifying the communication light emitted from the path selection optical switch,” and “the second optical amplifier is connected to the path selection optical switch, the second optical amplifier, and the first optical circulator in this order along the transmission direction of the communication light,” these are being construed to being claimed in the alternative as described above and met since the scope is met by showing one of a set of alternatives.
Claim(s) 2 & 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yano in view of Yang and further in view of Smith et al (PGPub 2015/0192476) (Smith).
Regarding Claim 2, Yano as modified by Yang discloses the aforementioned but fails to disclose an optical switch connected to the optical test device, the first optical circulator, and the path selection optical switch, wherein the optical switch outputs the test light from the optical test device to one of the first optical circulator and the path selection optical switch, and outputs the backscattered light, separated from the other of the first optical circulator and the path selection optical switch, to the optical test device;
However, Smith teaches a fiber strain sensor with an interrogator (12) and an optical switch (16);
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Yano as modified by Yang with an optical switch connected to the optical test device, the first optical circulator, and the path selection optical switch, wherein the optical switch outputs the test light from the optical test device to one of the first optical circulator and the path selection optical switch, and outputs the backscattered light, separated from the other of the first optical circulator and the path selection optical switch, to the optical test device because an optical switch can allow for measuring multiple different lines at once and thus offers more options for monitoring the environment and leads to the intake of more information about the environment.
Regarding Claim 3, Yano as modified by Yang and Smith discloses the aforementioned but fails to disclose a second optical circulator, having three ports, between the optical switch and the optical test device, wherein the second optical circulator emits, to a second port, the backscattered light going from the optical switch and entering a first port, and emits the test light, entering the second port, to the optical switch;
However, the examiner takes official notice this would be obvious to one of ordinary skill in the art at the time the invention was filed;
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Yano as modified by Yang and Smith with a second optical circulator, having three ports, between the optical switch and the optical test device, wherein the second optical circulator emits, to a second port, the backscattered light going from the optical switch and entering a first port, and emits the test light, entering the second port, to the optical switch because a circulator is functionally equivalent to the connector between the interrogator and the switch of Smith and would be chosen based upon cost and availability.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JONATHON COOK whose telephone number is (571)270-1323. The examiner can normally be reached 11am-7pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kara Geisel can be reached at 571-272-2416. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHON COOK/Examiner, Art Unit 2877 July 27, 2026
/Kara E. Geisel/Supervisory Patent Examiner, Art Unit 2877
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