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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 11, 2025 has been entered.
Response to Amendment
This Office Action is in response to the applicant’s amendment filed on August 11, 2025. Claims 1-7 have been amended. Claim 8 has been added. After further consideration, the examiner maintains the rejection under 35 U.S.C. 112, first paragraph because the claims fail to comply the enablement requirement.
Response to Arguments
Applicant’s arguments with respect to claims 1-7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Drawings
The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d).
Claim Objections
Claim 8 reads “as described in claims 3-7” that is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only. See MPEP § 608.01(n). Accordingly, the claim 8 has not been further treated on the merits.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims 1 and 2 do not fall within at least one of the four categories of patent eligible subject matter because they are “Use” claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961)(“one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101”). In Ex parteDunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: “The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.” In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the district court held the following claim was definite, but that it was not a proper process claim under 35 U.S.C. 101: “The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.”
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 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 1-7 are rejected under 35 U.S.C. 112, 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.
Applicant has failed to provide a disclosure of the invention which would enable one of ordinary skill in the art to make and/or use the invention without undue experimentation. The examiner maintains that this finding of lack of enablement is supported by substantial evidence in the form of findings of fact and relevant discussion by the examiner as follows:
Finding of Fact A: The theoretical maximum vertical height to which a pump can lift water by suction is about 33.9 feet at sea level, as limited by atmospheric pressure. In contrast, the lowest clouds formations, such as stratus, typically occur at altitudes of about 1,500 feet above the ground. Accordingly, projecting seawater from ships, submarines, trucks or ground-based installations, as described in the claims, would be physically incapable of reaching altitudes within or between clouds. Therefore, the claims are inconsistent with the practical limitations recognized in the prior art. (https://www.nwcg.gov/course/ffm/squirt-water/35-drafting-guidelines#:~:text=The%20atmospheric%20pressure%20would%20be,as%20shown%20in%20Example%201.) and (https://www.weather.gov/key/low_clouds#:~:text=Stratus%20clouds%20are%20diffuse%2C%20generally,bank%20based%20above%20the%20surface.).
Finding of Fact B: The applicant fails to disclose or provide sufficient information to determine the amount of jet streams of seawater that would need to be applied to storm or hurricane clouds in order to achieve any weakening effect on such storms. In the absence of this information, one of ordinary skill in the art would be required to engage in undue experimentation to practice the invention.
Finding of Fact C: The applicant fails to disclose or provide sufficient information to determine how the strength of storms could be reduced by short-circuiting the built-up static electric charges and dissipating the energy as electromagnetic radiation. In the absence of such disclosure, implementing the invention would require undue experimentation well beyond the abilities of one of ordinary skill in the art. Furthermore, the applicant does not provide any specific information, data, range, or parameters that would enable one of ordinary skill to understand the relationship between the conductivity of seawater and the short-circuiting of static electric charges in the clouds. As acknowledged the applicant, this purposed relationship is merely a hypothesis rather than a demonstrated fact.
Finding of Fact D: The website of the Hurricane Research Division of NOAA’s Atlantic Oceanographic and Meteorological Laboratory (www.aoml.noaa.gov/hrd/hrd_sub/modification.html), quotes the following from the American Meteorological Society policy statement on planned and inadvertent weather modification dated October 2, 1998, “There is no sound physical hypothesis for the modification of hurricanes, tornadoes, or damaging winds in general, and no related scientific experimentation has been conducted in the past 20 years.” The website then goes on to state that “no Federal agencies are presently doing, or planning, research on hurricane modification". The web site goes on to state that “they all fall short of the mark because they fail to appreciate the size and power of tropical cyclones” when referring to suggestions for hurricane modification. The applicant has not provided any information that contradicts this article.
Claims 1-8 attempt to define the subject matter in terms of the result to be achieved, which merely amounts to a hypothetical statement of the underlying problem, without providing the specific information, ranges, and data necessary for achieving this result. Therefore, Claims 1-8 are rejected under 35 U.S.C. 112, first paragraph.
Additionally, since the originally filed specification does not provide a disclosure of the invention which would enable one of ordinary skill in the art to make and/or use the invention without undue experimentation, the Examiner suggests that if the Applicant wishes to add new subject matter not previously disclosed to overcome the rejection, a Continuation-in-Part application must be filed while this application is still pending.
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 1-8 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.
Claim 1 is a “Use” claim which read: “a method of using single separate contiguous streams of sea water to act as a conductor between and within the clouds to short circuit the built up static electric charges and dissipate the energy in the form of electromagnetic radiation and thereby weaken the storms" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). See MPEP 2173.05.
Claim 2 is a “Use” claim which read: “use of a method of using single separate contiguous streams of sea water to act as a conductor between and within the clouds to short circuit the built up static electric charges and dissipate the energy in the form of electromagnetic radiation to reduce the incidence of destructive cloud to ground lightning by increasing the occurrence of intra-cloud and cloud-to-cloud lightning" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). See MPEP 2173.05.
Claims 3-8 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph because of dependency on claims 1 and 2 respectively.
The term “preferably unmanned” in claim 4 is a relative term which renders the claim indefinite. The term “preferably” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term "Preferably" is a vague term that creates ambiguity in the scope of the claim because it fails to specify whether the unmanned aircraft is required or merely an option.
Regarding claim 3, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tomomatsu et al. (US 2020/0024558 A1).
With regard to claim 1, Tomomatsu discloses a method of using single separate contiguous streams of sea water to act as a conductor between and within the clouds to short circuit the built up static electric charges and dissipate the energy in the form of electromagnetic radiation and thereby weaken the storms (Par. [0026], the teaching of Tomomatsu is structurally doing the same as the instant method claim which is shooting sea water to clouds to eliminate storms).
With regard to claim 2, Tomomatsu discloses use of a method of using single separate contiguous streams of sea water to act as a conductor between and within the clouds to short circuit the built up static electric charges and dissipate the energy in the form of electromagnetic radiation to reduce the incidence of destructive cloud to ground lightning by increasing the occurrence of intra-cloud and cloud-to-cloud lighting (Par. [0026], the teaching of Tomomatsu is structurally doing the same as the instant method claim which is shooting sea water within clouds to eliminate storms).
With regard to claim 7, Tomomatsu discloses the invention as disclosed in the rejection of claim 1. Tomomatsu further disclose that any conductor of electricity of a suitable length (the examiner cannot determine if any conductor of electricity is replacement of the sea water recited in claim 1), that can create a short circuit between the clouds which would result in increased dissipation of energy though lightning, thereby reducing the destructive energy associate with the wind flow (Par. [0026]).
Claims 1, 2, 4, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Martin et al. (US 2021/0352856 A1).
With regard to claim 1, Martin discloses a method of using single separate contiguous streams of sea water (“salt water” in Par. [0024] and sprayers 12/14 in Fig. 2) to act as a conductor between and within the clouds to short circuit the built up static electric charges and dissipate the energy in the form of electromagnetic radiation and thereby weaken the storms (Par. [0005 and 0022], Martin teaches the method of using separate nozzles spraying electrically charged salt/sea water into selected clouds, which is the same method as the claimed invention).
With regard to claim 2, Martin discloses use of a method of using single separate contiguous streams of sea water (“salt water” in Par. [0024] and sprayers 12/14 in Fig. 2) to act as a conductor between and within the clouds to short circuit the built up static electric charges and dissipate the energy in the form of electromagnetic radiation to reduce the incidence of destructive cloud to ground lightning by increasing the occurrence of intra-cloud and cloud-to-cloud lighting (Par. [0005 and 0022], Martin teaches the method of using separate nozzles spraying electrically charged salt/sea water into selected clouds, which is the same method as the claimed invention).
With regard to claim 4, Martin discloses the invention as disclosed in the rejection of claim 1. Martin further discloses that the arc of sea water would be generated from salt water stored on-board the aircraft, preferably unmanned, flying above and away from the clouds (Par. [0024]).
With regard to claim 6, Martin discloses the invention as disclosed in the rejection of claim 1. Martin further discloses that the sea water will be mixed with agents that increase the viscosity there by stabilizing the arc as it flies through the air, and prevent its breakup into drops or droplets. (“salt water, or water-based fluids that include dissolved chemicals or metals that may affect/enhance the physical or electrical characteristics and performance of the fluid as it is sprayed from the aircraft” see Par. [0024]).
With regard to claim 7, Martin discloses the invention as disclosed in the rejection of claim 1. Martin further disclose that any conductor of electricity of a suitable length (the examiner cannot determine if any conductor of electricity is replacement of the sea water recited in claim 1), that can create a short circuit between the clouds which would result in increased dissipation of energy though lightning, thereby reducing the destructive energy associate with the wind flow (Par. [0005 and 0022] and Claim 1).
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Tomomatsu et al. in view of Roberts (WO 2011/011370 A1).
With regard to claim 3, Tomomatsu discloses the invention as disclosed in the rejection of claim 1. Tomomatsu does not disclose that the arc of sea water would be launched from vehicles such as ships and submarines on water, and trucks or ground-mounted on land, into the thunderstorm or the hurricane clouds above using water cannons or water pumps.
Roberts teaches the arc of sea water would be launched from vehicles such as ships and submarines on water, and trucks or ground-mounted on land, into the thunderstorm or the hurricane clouds above using water cannons or water pumps (18, Fig. 3 and page 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Tomomatsu, by incorporating the ships and the pumps to shoot or spray sea water a taught by Roberts, doing it would provide a system for hurricane abatement which cools air above a water body surface of a water body (page 2).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Martin et al. in view of Roberts (WO 2011/011370 A1).
With regard to claim 3, Martin discloses the invention as disclosed in the rejection of claim 1. Martin does not disclose that the arc of sea water would be launched from vehicles such as ships and submarines on water, and trucks or ground-mounted on land, into the thunderstorm or the hurricane clouds above using water cannons or water pumps.
Roberts teaches the arc of sea water would be launched from vehicles such as ships and submarines on water, and trucks or ground-mounted on land, into the thunderstorm or the hurricane clouds above using water cannons or water pumps (18, Fig. 3 and page 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Martin, by incorporating the ships and the pumps to shoot or spray sea water a taught by Roberts, doing it would provide a system for hurricane abatement which cools air above a water body surface of a water body (page 2).
Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Tomomatsu et al. in view of Martin et al. (US 2021/0352856 A1).
With regard to claim 4, Tomomatsu discloses the invention as disclosed in the rejection of claim 1. Tomomatsu does not disclose that the arc of sea water would be generated from salt water stored on-board the aircraft, preferably unmanned, flying above and away from the clouds.
Martin teaches the arc of sea water would be generated from salt water stored on-board the aircraft, preferably unmanned, flying above and away from the clouds (Par. [0024]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Tomomatsu, by incorporating the aircraft for spraying sea water as taught by Martin, doing it would provide negatively charged pressurized fluid sprayed out of the spray nozzles so that the electrically charged spray enters the targeted cloud and thereby seeds the cloud (Par. [0005]).
With regard to claim 6, Tomomatsu discloses the invention as disclosed in the rejection of claim 1. Tomomatsu does not disclose that the sea water will be mixed with agents that increase the viscosity there by stabilizing the arc as it flies through the air, and prevent its breakup into drops or droplets.
Martin teaches the sea water will be mixed with agents that increase the viscosity there by stabilizing the arc as it flies through the air, and prevent its breakup into drops or droplets. (“salt water, or water-based fluids that include dissolved chemicals or metals that may affect/enhance the physical or electrical characteristics and performance of the fluid as it is sprayed from the aircraft” see Par. [0024]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Tomomatsu, by incorporating the mixture of salt water and dissolved chemicals as taught by Martin, doing it would enhance the physical or electrical characteristics and performance of the fluid (Par. [0024]).
Claims 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Tomomatsu et al. in view of Kang (KR 20170036239 A).
With regard to claim 5, Tomomatsu discloses the invention as disclosed in the rejection of claim 1. Tomomatsu does not disclose that streams would be generated within the clouds by stream generation devices placed there using rockets or missiles, such that after reaching the desired location, the rockets or missiles would shoot a trailing stream of salt water.
Kang teaches method of using rockets or missiles, such that after reaching the desired location, the rockets or missiles would spray agents.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Tomomatsu, by incorporating the rocket as taught by Kang for shooting salt water to clouds, doing it would allow the salt water to reach clouds in higher elevation.
With regard to claim 8, Tomomatsu discloses the invention as disclosed in the rejection of claim 2. Tomomatsu does not disclose that water cannons located near the area to be protected from lightning would shoot arcs of salt water into the clouds.
Kang teaches method of using water cannons located near the area to be protected from lightning would shoot arcs of salt water into the clouds (background art).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Tomomatsu, by incorporating the cannons as taught by Kang for shooting salt water to clouds, doing it would allow the salt water to reach clouds in higher elevation.
Claims 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Martin et al. in view of Kang (KR 20170036239 A).
With regard to claim 5, Martin discloses the invention as disclosed in the rejection of claim 1. Martin does not disclose that streams would be generated within the clouds by stream generation devices placed there using rockets or missiles, such that after reaching the desired location, the rockets or missiles would shoot a trailing stream of salt water.
Kang teaches method of using rockets or missiles, such that after reaching the desired location, the rockets or missiles would spray agents.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Martin, by incorporating the rocket as taught by Kang for shooting salt water to clouds, doing it would allow the salt water to reach clouds in higher elevation.
With regard to claim 8, Martin discloses the invention as disclosed in the rejection of claim 2. Martin does not disclose that water cannons located near the area to be protected from lightning would shoot arcs of salt water into the clouds.
Kang teaches method of using water cannons located near the area to be protected from lightning would shoot arcs of salt water into the clouds (background art).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Martin, by incorporating the cannons as taught by Kang for shooting salt water to clouds, doing it would allow the salt water to reach clouds in higher elevation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOEL ZHOU whose telephone number is (571)270-1163. The examiner can normally be reached Mon-Fri 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ARTHUR HALL can be reached at 5712701814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JOEL . ZHOU
Primary Examiner
Art Unit 3752
/QINGZHANG ZHOU/ Primary Examiner, Art Unit 3752