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 .
Information Disclosure Statement
The information disclosure statement filed 02/13/2025 fails to comply with the provisions of 37 CFR 1.98(a)(4) because it lacks the appropriate size fee assertion. It has been placed in the application file, but the information referred to therein has not been considered as to the merits.
Claim Objections
Claims 1 and 7 are objected to because of the following informalities: both of their preambles end in a semicolon “;” instead of a colon “:”.
Claim 7 is objected to because of the following informalities: the second instance of PoF is spelled out in the claim instead of the first instance in line 3.
Appropriate correction is required.
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:
“device” in claims 6 and 12. Note that while claims 1 and 7 first recite the device, it is performing a passive function (i.e. receiving) and therefore is not being interpreted under 112(f).
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 limitation “device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to 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.
When looking to the Specification of the published application, element 240 of Figure 2 is referred to as “a device” but no structure is shown in the Figure or the relevant paragraphs. Furthermore, the descriptions given for the device merely repeat the claimed functions and per paragraph [0037], “The device can be any device, system, component or other element within the EMI-sensitive environment that requires the data and/or power transmitted by the system. For example, the device may be a device that requires power for operation. As another example, the device may receive and use or store the transmitted data” which is open-ended in nature. Elements 340 and 342 of Figure 3 are also called devices but no structure is shown nor described for any of the devices which can perform the claimed functions.
Therefore, claims 6 and 12 are 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.
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 6 and 12 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.
As noted above, “the device” in claims 6 and 12 invokes 112(f). However, sufficient structure for performing the claimed functions is not present in the application. Therefore, there is insufficient written description for this element.
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.
Claim(s) 1-3, 5, 7-9, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Der Mark et al, U.S. Publication No. 2015/0335231.
Regarding claim 7¸ Van Der Mark teaches a system for transmitting data and power to minimize electromagnetic interference (EMI) in an EMI-sensitive environment (see Van Der Mark Figure 4 and paragraph [0032]), comprising;
a PoF guide (see Figure 4, optical fiber 8 with power signal O_P and data signal D_F and paragraph [0040]);
a first data and power transmission guide configured to transmit data and power from a source located outside the EMI-sensitive environment (see Figure 4, electrical connection from controller CON to laser 6 and paragraph [0090]), wherein the first data and power transmission guide is not suitable to transmit data and power within the EMI-sensitive environment (see paragraph [0009]);
a power and data converter configured to: (i) receive the transmitted data and power; (ii) convert the received data and power to a power-over-fiber (PoF) transmission format; and (iii) transmit the converted power and data to within the EMI-sensitive environment via the PoF cable (see Figure 4, laser 6 and paragraph [0086]); and
a device within the EMI-sensitive environment configured to receive, via the PoF cable, the transmitted data and/or power (see Figure 4, elements 15-12).
Van Der Mark does not expressively teach wherein the PoF guide and first data and power transmission guide are cables. However, one of ordinary skill in the art before the effective filing date of the invention would have found it obvious as a matter of simple substitution to replace the guides taught in Van Der Mark with cables as claimed to yield the predictable results of successfully transmitting the signals.
Method claim 1 recites similar limitations as claim 7, and is rejected under similar rationale.
Regarding claim 8, Van Der Mark teaches all the limitations of claim 7, and further teaches wherein the EMI-sensitive environment is an MRI environment (see Van Der Mark paragraph [0032]).
Method claim 2 recites similar limitations as claim 8, and is rejected under similar rationale.
Regarding claim 9, Van Der Mark teaches all the limitations of claim 7, but does not expressively teach wherein the first data and power transmission cable is an ethernet cable. However, one of ordinary skill in the art before the effective filing date of the invention would have found it obvious as a matter of simple substitution to replace the cable of Van Der Mark with an ethernet cable as claimed to yield the predictable results of successfully transmitting the signals.
Method claim 3 recites similar limitations as claim 9, and is rejected under similar rationale.
Regarding claim 11, Van Der Mark teaches all the limitations of claim 7, and bit does not expressively teach wherein the converter is positioned outside a most EMI- sensitive portion of the EMI-sensitive environment. However, one of ordinary skill in the art before the effective filing date of the invention would have found it obvious as a matter of design choice to place the converter as claimed in order to ensure integrity of the EMI sensitive environment.
Method claim 5 recites similar limitations as claim 11, and is rejected under similar rationale.
Claim(s) 4 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Der Mark et al, U.S. Publication No. 2015/0335231 in view of Jauster et al, U.S. Publication No. 2007/0285021.
Regarding claim 10, Van Der Mark teaches all the limitations of claim 7, and but does not expressively teach wherein at least a portion of the converter is within the EMI-sensitive environment.
However, Jauster in a similar invention in the same field of endeavor teaches a system comprising a converter (see Jasuter Figure 1, light device 2) for converting power from a cable (see Figure 1, cable 7 and paragraph [0025]) to a PoF format (see Figure 1, optical cable 20 and paragraph [0030] which indicates that light from lighting device 2 on optical cable 20 is used as power for transducer device 3) to send to a device within an EMI sensitive environment (see Figure 1, transducer device 3 in MRI room 5) as taught in Van Der Mark wherein
at least a portion of the converter is within the EMI-sensitive environment (see paragraph [0027]).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious as a matter of design choice to place a portion of a converter within an EMI sensitive environment as taught in Jauster with the system taught in Van Der Mark based on system and element constraints (e.g. if there is not a cable of sufficient length for the converter to be totally placed outside the environment).
Method claim 4 recites similar limitations as claim 10, and is rejected under similar rationale.
Claim(s) 6 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Der Mark et al, U.S. Publication No. 2015/0335231 in view of Ortiz et al, U.S. Publication No. 2021/0396823.
Regarding claim 12, Van Der Mark teaches all the limitations of claim 7, but does not expressively teach wherein the device within the EMI-sensitive environment is configured to split the received data and power.
However, Ortiz in a similar invention in the same field of endeavor teaches a system for converting data into a PoF transmission format to be sent to be received by a device in an EMI sensitive environment (see Ortiz Figure 3, signal from RF receiver 30 to coils 16 via connection 20 and paragraphs [0044]-[0045]) as taught in Van Der Mark wherein
the device within the EMI-sensitive environment is configured to split the received data and power (see Figure 3, electrical power extractor 340).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to combine the teaching of the device splitting data and power as taught in Ortiz with the system taught in Van Der Mark, the motivation being to allow for storage of excess energy thereby decreasing the chance of outages (see Ortiz paragraph [0057], “Power sent from the system side 30 may be collected by an electrical power extractor 340. In this regard, batteries or a storage capacitor or other storage device may be used to sort the energy collected by the electrical power extractor 340”).
Method claim 6 recites similar limitations as claim 12, and is rejected under similar rationale.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CASEY L KRETZER whose telephone number is (571)272-5639. The examiner can normally be reached M-F 10:00-7:00 PM Pacific Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Payne can be reached at (571)272-3024. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CASEY L KRETZER/Primary Examiner, Art Unit 2635
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