DETAILED ACTION
This office action is in response to the amendments to the claims filed on 10 December 2025. Claims 1, 2, 4 – 7, 9 and 10 are pending and currently being examined.
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 .
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, 2, 4 – 7, 9 and 10 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.
In Re Claim 1, the limitation “”a diameter of an entirety of the communication passage is equal to a diameter of the first room” is not supported by the originally filed specification, and therefore constitutes new matter. Paragraph [0026] of Applicant’s Specification states that the communication hole 1e has a tapered surface 1f having a diameter that decreases toward the second room 1b, therefore a diameter of an entirety of the communication hole/passage cannot be equal to a diameter of the first room. Further, Paragraph [0026] states that the criticality of such a feature is that fuel is smoothly brought back to the pressurizing chamber. By eliminating the tapered section, Applicant’s problem of smoothly bringing back the fuel cannot be solved. Applicant appears to be relying on paragraph [0073] and Figure 2 of the specification for support. Paragraph [0073] however does not explicitly state that the entirety of the communication passage has the same diameter as the first room. With regards to Figure 2, although the tapered passage 1f is not explicitly depicted, Figure 2 appears to be merely a different cross section view of the pump from the cross section view of Figures 3 and 5 which show tapered passage 1f above passage 1e. Further, a lack of a positive disclosure does not constitute support for a negative limitation – see MPEP 2173.05(i): “silence will not generally suffice to support a negative claim limitation”. In all of the associated paragraphs, [0023]-[0027] and [0072]-[0079] generally, the description of hole 1e is limited to “it has the same diameter as 1a” and “it has tapered surface 1f”. Also, in the Summary section at the end of the specification, Applicant refers to “the embodiment described above” clearly confirming that a single embodiment has been disclosed. Applicant may have contemplated other embodiments however, none of those is disclosed in the current disclosure.
Response to Arguments
With regards to Applicant’s arguments related to the 112 rejection, those arguments have been addressed at length in the 112 (a) rejection above.
Applicant’s arguments as they relate to the prior art rejections, coupled with the claims amendments, are persuasive and as such the previous art rejections have been withdrawn.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DNYANESH G KASTURE whose telephone number is (571)270-3928. The examiner can normally be reached Mon-Thu, 7:30 AM to 6:00 PM.
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, Essama Omgba can be reached at 469-295-9278. 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, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/D.G.K/Examiner, Art Unit 3746
/ESSAMA OMGBA/Supervisory Patent Examiner, Art Unit 3746
Prosecution Insights