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 .
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 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.
DETAILED ACTION
Response to Arguments
Applicant generally argues that the specification provides support for the claims and points to various portions of the specification that call out supposedly conventional algorithms for carrying out the invention. Applicant further argues that the office action does not point out why a person of ordinary skill in the art could not implement the claimed operations.
Applicant’s arguments misapprehend the rejection. Applicant’s arguments and description rest on an assumption that a quantum computer exists that is capable of performing said algorithms and operations. The rejection and provided evidence demonstrate that no such quantum computer exists and that the implementation of said algorithms are not predictable and are not conventional. Therefore, in order for applicant to have possession and enablement of the invention, applicant must first demonstrate that the underlying quantum computer that the invention is based on exists. Applicant has not done so. In the absence of an operational quantum computer that is capable of performing applicant’s algorithms and operations applicant lacks possession and enablement for the invention. It is no different than applicant claiming use of a time machine. Applicant can describe the use and operations of the time machine in the specification, but absent description of how to build such a time machine, the description and use and operations of such a time machine do not demonstrate possession or enablement.
Therefore the rejections are maintained.
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 1-20 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.
In particular, the specification does not provide disclosure as to how to build a quantum computer that possesses the capabilities claimed nor does the specification provide disclosure as to appropriate programming to carry out the capabilities claimed. It is noted that quantum computers in 2026 (2 years after applicant’s application) still have reliability and fault-tolerance problems and algorithms for quantum computing are significantly different than conventional computing (for example, require each step to be mathematically reversable) and are also considered highly experimental.
As applicant has not described how to build and program the claimed quantum computer, it does not appear that applicant had possession of the invention at the time the application was filed.
Claims 1-20 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
In order to determine compliance with the enablement requirement of 35 U.S.C. 112(a), the Federal Circuit developed a framework of factors in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), referred to as the Wands factors to assess whether any necessary experimentation required by the specification is "reasonable" or is "undue." Consistent with Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 2023 USPQ2d 602 (2023), the Wands factors continue to provide a framework for assessing enablement in a utility application or patent, regardless of technology area. See Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al., 89 FR 1563 (January 10, 2024). These factors include, but are not limited to:
(A) The breadth of the claims;
Although the claims are not broad in the sense that what is claimed is performing a specific task, the claims are broad in the claimed use of a “generic” quantum computer, which does not truly exist at the time of filing or even in 2026.
(B) The nature of the invention;
The nature of the invention relates to quantum computing and quantum computing algorithms which are highly experimental and have significant reliability and programming issues.
(C) The state of the prior art;
The state of the prior are indicates that while quantum computers exist, they are not substitutes for conventional computers nor are quantum computers at a point where they are reliable and considered well-understood, routine and conventional.
(D) The level of one of ordinary skill;
The level of one of ordinary skill is someone who likely has a Ph.D in electronics, physics, or similar field with extensive experimental expertise.
(E) The level of predictability in the art;
The predictability in the art is low. As previous discussed, quantum computers are unreliable and require new algorithms and considerations significantly different than conventional computers
(F) The amount of direction provided by the inventor;
The inventor provides little direction on how to design, build, and program such a quantum computer. Instead, the inventor merely instructs the reader about the desired outcomes without providing direction as to how to design, build, and program a quantum computer to achieve the outcomes.
(G) The existence of working examples; and
There appear to be no working examples as quantum computers do not appear to be capable of performing the claimed invention in 2026, two years after applicant’s filing.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
The disclosure provides little guidance as to how to design, build, and program a quantum computer in the claims. Quantum computing today in 2026 is still considered highly experimental and therefore, extensive experimentation would be necessary to make or use the invention based on the content of the disclosure.
Accordingly, claims 1-20 are rejected for lack of enablement.
Please refer to the following articles as supporting evidence for both the possession and enablement rejections:
Quantum Computing: What leaders need to know now, Beth Stackpole, Jan 11, 2024
Are Quantum Computers Real?, Everpure, March 22, 2022
The quantum computer exists, but is not all that powerful, Anne Kirsten Frederiksen, May 16, 2023
Why the future of computing is quantum, Lindsey Valich, September 24, 2025
Quantum Computing vs. Classical Computing: What’s the Difference, Hayk Tepanyan, May 18, 2026
Why We Don’t Have Real Quantum Computing Yet, Bernard Marr, March 5, 2025
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 Ming Shui whose telephone number is (303)297-4247. The examiner can normally be reached on 7-5 Pacific Time, M-Th.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Greg Morse can be reached on 571-272-3838. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ming Shui/
Primary Examiner, Art Unit 2663
