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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 14 January 2026 has been entered.
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, 20-22, 25, 27, 29-33, and 35-40 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. Claims 1 and 20 have both been amended to include wherein calculating the flow rate prediction comprises statistically reconciling the first flow rate reading and the second flow rate reading, using at least the first uncertainty and the second uncertainty, to determine a reconciled flow rate that is a statistical maximum likelihood estimate of a true flow rate.” However, there is no disclosure to what would comprise a statistical reconciliation. It is clearly some mathematical relationship but it’s not clear what that relationship is or how one would perform it. It is also not disclosed what a “statistical maximum likelihood estimate” is and how it would be determined. Without these features of the claim disclosed, one of ordinary skill in the art would not be able to make and/or use the invention as claimed. Further, with respect to claim 39, the claim requires “applying criteria based on physical laws”. While the specification as filed does state that there are criteria, there is no disclosure as to what those criteria are and there is no disclosure of how said criteria are related to said laws. Without these features of the claim disclosed, one of ordinary skill in the art would not be able to make and/or use the invention as claimed.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557,1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
With respect to the case of the present invention, there is no real comparison or correlation to existing prior art to determine those features not disclosed (Wands Factor G),there is not enough direction provide by the inventor to determine what these values might be or how to apply them (Wands Factor F), and the amount of experimentation required in order make or use the invention based on the disclosure as filed would be extremely high (Wands Factor H). Since claims 20 and 39 lack enablement, then claims 21, 22, 25, 27, 29-33, 35-38, and 40, which depend from either claims 20 or 39, lack enablement as well.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 20-22, 25, 27, 29-33, and 35-40 have been considered but are moot because the new ground of rejection does not rely on any reasoning applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The present rejection does not contain a prior art rejection, but that is in not meant as an indication of any allowable subject matter in the present application. The current 35 USC 112 issues in the claims actually present an issue with performing an adequate and proper search of the claims in relation to the prior art as it is difficult at this time to determine precisely what the invention is truly doing and how. Should the applicant amend the claims to resolve these issues, then a new search will be conducted and if at that time similar prior art is found and a prior art rejection is made, then that rejection can be made final if the rejection is deemed to be made in view of the newly amended claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODNEY T FRANK whose telephone number is (571)272-2193. The examiner can normally be reached M-F 9am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Macchiarolo can be reached at (571) 272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RODNEY T FRANK/ Art Unit 2855
February 21, 2026