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`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/612,417
`
`11/11/2019
`
`HIDEAKI FUJIURA
`
`083710-2836
`
`2170
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`RODAK,LEE E
`
`2868
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/22/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`46/612,417
`FUJIURAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`LEE E RODAK
`2868
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 6/15/2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-6 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} Claim(s)
`is/are allowed.
`Claim(s) 1-6 is/are rejected.
`1) Claim(s)__is/are objectedto.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11) The drawing(s) filed on 11/11/2019 is/are: a)[¥) accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2 Certified copies of the priority documents have been received in Application No.
`3.4.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) ([] Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220906
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2868
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Response to Amendment
`
`2.
`
`The amendment filed 15 June 2022 has been entered. Claims 1-6 remain
`
`pendingin this application. Claim 1 has been amended. Applicant's amendmentto the
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`specification and the claims have overcome each and every objection and 112(b)
`
`rejection previously set forth in the Non-Final Office Action mailed 17 March 2022.
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`Responseto Arguments
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`3.
`
`Applicant’s arguments with respect to claim(s) 1-6 have been considered but are
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`mootin view of the new ground(s) of rejection below.
`
`4.
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`Claim Interpretation
`
`(f) Element in Claim for a Combination. — An elementin a claim for a combination may be
`expressed as a meansor 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 elementin a claim for a combination may be expressed as a meansor step for performing
`a specified function without the recital of structure, material, or acts in support thereof, and
`suchclaim shall be construed to cover the corresponding structure, material, or acts
`described in the specification and equivalents thereof.
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2868
`
`Page 3
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`5.
`
`This application includes one or more claim limitations that do not use the word
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`“means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AlA 35
`
`U.S.C. 112, sixth paragraph, becausethe claim limitation(s) uses a generic placeholder
`
`that is coupled with functional language without reciting sufficient structure to perform
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`the recited function and the generic placeholder is not precededby a structural modifier.
`
`Suchclaim limitation(s) is/are: “detection circuit corrects the distortion component by
`
`subtracting a signal obtained by connecting adjacent peaksin the distortion waveform”
`
`in claim 1.
`
`Becausethis/theseclaim 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
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`cover the corresponding structure described in the specification as performing the
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`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-AlA
`
`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
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`interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
`
`Claim Rejections - 35 USC § 112
`
`6.
`
`The following is a quotation of 35 U.S.C. 112(b):
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2868
`
`Page 4
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`(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-AlA), 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.
`
`7.
`
`Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
`
`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-AlA 35 U.S.C. 112, the applicant), regards as the invention.
`
`8.
`
`Claim 1 recites “the detecting circuit corrects the distortion component by
`
`subtracting a signal obtained by connecting adjacent peaksin the distortion waveform,
`
`the peaks appearing at every (1/16) of the period T of the third signal.” This function
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`appears to be performed by the automatic correction circuit 70e within the detection
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`circuit 10 as shownin Fig. 1. The specification fails to disclose corresponding
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`structure, materials, or acts for performing the entire claimed function and to clearly link
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`the structure, material, or acts to the functions. The specification is devoid of adequate
`
`structure to perform the claimed functions and does not provide sufficient details such
`
`that one of ordinary skill in the art would understand whatcircuitry is performing the
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`claimed function. Therefore the claim is indefinite.
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`9.
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`“The distortion waveform” lacks adequate antecedent basis.
`
`It is unclearif the
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`“distortion waveform”is the same or different from the “distortion component”.
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`Therefore it is also unclear what the “adjacent peaks” correspond to since the peaks are
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`described in connection with the “distortion waveform.”
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2868
`
`Page 5
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`10.
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`Furthermore, it is unclear what “connecting adjacent peaks” means. The
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`specification does not describe what the “adjacent peaks” are nor how they are
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`“connected” to form a “signal” which could be subtracted.
`
`It is also unclear what the
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`“signal” is subtracted from. These limitations are discussed in the specification at para
`
`[0125], however this passage provides no additionalclarifying details. Figs. 7D(a)
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`appearstoillustrate a waveform with peaksas the distortion component. Fig. 7D(b)
`
`appearsto indicate the waveform after correction. However, these figures do not
`
`appearto clarify how peaks are connected or what the signal is subtracted to form the
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`corrected signal. Clarification is required.
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`11.
`
`Claims 2-6 are also rejected for the reasons above, due to dependence on claim
`
`12.—The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`Claim Rejections - 35 USC § 112
`
`(a) INGENERAL.—The specification shall contain a written description of the
`invention, and of the manner and process of making and usingit, in suchfull, clear, concise,
`and exact terms as to enable any person skilled in the art to whichit pertains, or with whichit
`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-AlA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the
`manner and process of making and usingit, in suchfull, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with whichit 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.
`
`13.
`
`Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first
`
`paragraph, asfailing to comply with the written description requirement. The claim(s)
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2868
`
`Page 6
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`contains subject matter which wasnot described in the specification in such a way as to
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`reasonably conveyto one skilled in the relevant art that the inventor or a joint inventor,
`
`or for applications subject to pre-AlIA 35 U.S.C. 112, the inventor(s), at the time the
`
`application wasfiled, had possession of the claimed invention. As described above, the
`
`disclosure does not provide adequate structure to perform the claimed function of
`
`“subtracting a signal obtained by connecting adjacent peaksin the distortion waveform.”
`
`There is no disclosure of how the distortion component is identified such that adjacent
`
`peaks could be connected nor does the disclosure describe from what such a signalis
`
`subtracted. The specification does not demonstrate that the applicant has made an
`
`invention that achieves the claimed functions because the invention is not described
`
`with sufficient detail such that one of ordinary skill in the art can reasonably conclude
`
`that the inventor had possession of the claimed invention.
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`14.
`
`Furthermore, regarding the recitation in claim 1 that the detection circuit corrects
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`the distortion component by subtracting a signal, the pending specification does not
`
`appear to describe the subtraction of a signal. The specification describes the
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`correction method in para [0117-126] however this description does not include any
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`description of subtracting a signal. Therefore claim 1 appears to introduce new matter.
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`15.
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`Claims 2-6 are also rejected for the reasons above due to dependence on claim
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`1.
`
`Conclusion
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`16.
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2868
`
`Page 7
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`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR 1.136(a).
`
`A shortenedstatutory period for reply to this final action is set to expire THREE
`
`
`
`MONTHS from the mailing date of this action. In the eventafirst replyis filed within
`
`TWO MONTHS ofthe mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortenedstatutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
`
`17.—Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to LEE E RODAK whosetelephone number is (571)270-
`
`5628. The examiner can normally be reached Monday-Friday 7:30AM - 3:30PM EST.
`
`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:/Awww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Judy Nguyen can be reached on (571) 272-2258. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Center is
`
`available to registered users. To file and manage patent submissions in Patent Center,
`
`

`

`Application/Control Number: 16/612,417
`Art Unit: 2868
`
`Page 8
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`visit: https://patentcenter.uspto.gov. Visit httos:/Awww.uspto.gov/patents/apply/patent-
`
`center for more information about Patent Center and
`
`https:/Awww.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
`
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`
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`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/LEE E RODAK/
`Primary Examiner, Art Unit 2868
`
`