DETAILED ACTION
(1)
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 . Applicant’s amendment, filed November 10, 2025, is entered. Applicant amended claim 1 and cancelled claims 2-13. Claim 1 is pending before the Office for review.
(2)
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.
Claim 1 is 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.
There are many factors to consider when determining whether a disclosure does not satisfy the enablement requirement and whether under experimentation is necessary. The factors include, but are not limited to:
(A) The breadth of the claims;
The specification and claims contain similar language regarding the claimed film. Accordingly, there is parity between the claims and the specification.
(B) The nature of the invention;
The invention is film, wherein the film is a nano-coating of graphene and silicon nanoparticles on an electrically conductive plastic substrate and converts kinetic energy, which is defined in the specification to include neutrinos, into electricity. If enabled, such a film would be at the forefront of alternative energy. Unfortunately, given the scarcity of detail within Applicant’s disclosure, which is addressed below in greater detail, the exact nature of the invention cannot be determined. Applicant appears to suggest the film operates by converting kinetic energy to electricity. However, there is no detail regarding the conversion mechanism. Accordingly, the exact nature of the invention is unclear as to whether a piezoelectric effect or some other type of effect is realized for the energy conversion.
(C) The state of the prior art;
The prior art does not teach a film for converting neutrinos to electricity and does not recognize its feasibility. King et al., Neutrino mass and mixing with discrete symmetry, Rep. Prog. Phys.76 056201 (2013) presents a review regarding the state of the art of neutrino knowledge, particularly as it relates to neutrino mass. Abstract. A fair interpretation of the review is that much is still not known regarding neutrinos. King specifically states “neutrinos remain the least understood particles.” Section 1.3. The challenges ahead for experiment. Accordingly, it’s reasonable to conclude the state of the prior art is not developed in any appreciable amount as it relates to neutrino to electricity conversion.
Bahcall, John N., Neutrino astrophysics. Cambridge: Cambridge Univ. Pr., 1989, recognizes that neutrinos are weakly interacting particles. Chapter 1: Overview, Summary. Bahcall explains large detectors are required to observe astronomical neutrinos and that these detectors are located deep underground to avoid confusion with background interactions caused by cosmic rays and their secondary particles. Chapter 1: Overview, Summary.
(D) The level of one of ordinary skill;
The level of one of ordinary skill in the art is unclear. The individual would be expected to be highly technically trained given both the state of the art regarding neutrinos and the multiple factors that must be considered in designing such a neutrino/kinetic energy to electricity conversion film. Because so much is unknown regarding neutrinos and their specific application to electricity generation, it’s likely the level of one of ordinary skill in the art is an individual with a doctorate and several years of research experience.
(E) The level of predictability in the art;
Although the photovoltaic effect is generally predictable, the field or art regarding converting neutrinos/kinetic energy to electricity is not well developed and is thus unpredictable. Because so much is unknown regarding the fundamental principles of neutrinos, the art is naturally unpredictable. Any film in this field would be at the forefront of alternative energy, meaning very little is known about such a film at the present moment.
(F) The amount of direction provided by the inventor;
The inventor provides almost no direction regarding how the claimed invention is practiced. Specifically, although an embodiment example is disclosed, the example itself contains very little details regarding how the nanocoating is obtained. Additionally, the specification does not contain any examples regarding how the film is constructed to obtain the electricity generating function.
More importantly, the nature of the invention itself, as explained above, would require a much more technical disclosure containing a detailed explanation of how the film operates and is constructed. As noted above in several instances, very little is known about neutrinos and the claimed film, if enabled, would be at the forefront of alternative energy. In this context, the amount of direction provided by the inventor is substantially lacking in substance.
The present invention is lacking direction regarding how the energy conversion takes place. Is it a force to electricity conversion? Is it performed via a piezoelectric effect? The state of the art of neutrino properties in this respect is unclear as to how much force would be expected between the collision of the passing neutrino with a molecule of the lattice and thus how much electrical output, if any, would be expected from the film. Simply stated, given the complexity of the claimed invention, a much more technical specification is required.
(G) The existence of working examples; and
As noted above, the disclosure contains minimal direction in the form of an embodiment example. The example itself fails to contain sufficient detail to be considered a working example, particularly when the state of the art and the nature of the invention are considered. Given the complexity of the invention and the insufficiency of the disclosure, the lack of a working examples renders it impossible to ascertain how the invention is practiced.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
A complete analysis of the above-identified factors leads to a finding the claimed invention is not enabled. The inventor, as explained above and in the context of the nature of the invention, state of the prior art, level of predictability in the art and level of one ordinarily skilled in the art, fails to provide sufficient guidance and explanation as to how a film having the claimed functionality with a nano-coating having the claimed structure is to be practiced without undue experimentation.
(3)
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.
Claim 1 is are rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a credible asserted utility or a well-established utility.
Claim 1 is also rejected because they lack a credible asserted utility or a well-established utility. The lack of a credible asserted utility or a well-established utility is related to the lack of enablement. When the claimed invention is analyzed in the context of the nature of the invention, state of the prior art, level of predictability in the art and level of one ordinarily skilled in the art, it’s clear the film, which requires kinetic energy, which is disclosed in the specification to be from collisions of passing neutrinos of the nonvisible spectrum of solar energy, to collide with molecules of the compressed lattice nano-coating to produce direct current, lacks a credible asserted utility or well-established utility.
King et al., which is cited above, establishes the state of the art regarding neutrino properties is very much developing with neutrinos being considered the least understood of the particles. For all the discussion of neutrino properties and what is known in King, there is no disclosure in King or any of the art of record of the feasibility of converting neutrinos to electricity.
Bahcall, which is cited above establishes neutrinos are weakly interacting particles that require large detectors for detection, the detectors being positioned deep underground to avoid background interactions. Chapter 1: Overview, Summary.
King and Bahcall, when considered together, support a finding that the claimed film and method lack a credible asserted utility or well-established utility. A contrary finding runs counter both to how little is known about the properties of neutrinos and what is known about neutrinos.
Claim 1 is also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a credible asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
(4)
Response to Arguments
Applicant’s arguments, filed November 10, 2025, are not persuasive.
Regarding the enablement rejection, Applicant’s argument is not persuasive because it does not address the neutrino aspect of the claimed invention, which is clearly included within the scope of kinetic energy, as presented in paragraph [0008] of the published application. Applicant’s argument instead relies on IR/terahertz radiation, which is not supported in the specification. In this respect, Applicant’s argument appears to support the lack of enablement of the claimed invention because it relies on an electricity generation function that is not described in the specification. Additionally, Applicant’s reliance on an inherency argument in favor of the enablement of the claimed invention is not supported by any evidence.
Regarding the lack of either a credible asserted utility or a well-established utility, Applicant presents similar arguments as out-lined above. Applicant’s broadest reasonable interpretation of the claimed invention is inconsistent with Examiner’s broadest reasonable interpretation of the claimed invention, as Applicant argues converting neutrino collisions into electricity is no longer within the scope of the claimed invention and instead, the recited kinetic energy requirement refers to non-visible EM radiation. Examiner disagrees. Paragraph [0008] of the published application makes clear neutrinos are covered by the terms non-visible radiation and kinetic energy.
Applicant previously attempted to argue that the non-visible radiation was IR/terahertz radiation in the context of the enablement rejection, but such an interpretation is not supported by the specification. Applicant further presents several arguments regarding how one ordinarily skilled in the art at a time before the effective filing date of the claimed invention would understand the nanocoating film to function, but these features are not supported in the specification and are not recited in the claimed invention. To the extent these features are inherent, Applicant has not provided any evidence in support of this position.
Therefore, the above-recited rejections are maintained.
(5)
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI S MEKHLIN whose telephone number is (571)270-7597. The examiner can normally be reached Monday-Friday 7:00 am to 5:00 pm 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://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duane Smith can be reached at 571-272-1166. 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.
/ELI S MEKHLIN/Primary Examiner, Art Unit 1759