DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This is in response to Applicant’s arguments and amendments filed on 09/08/2025 amending Claims 1 – 18. Claims 1 - 18 are examined.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or 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 element in a claim for a combination may be expressed as a means or 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 claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 1, l. 2 and Claim 4, l. 2 “anode simulator” interpreted as “simulator for an anode”.
Claim 1, l. 3 “propulsion valve load simulators” interpreted as “simulators for propulsion valve loads”.
Claim 1, ll. 4 - 5 “electrical propulsion unit load simulator adapted to receive propulsion unit control signals from a spacecraft under test”.
Claim 1, ll. 6 - 9 “spacecraft propulsion unit positioner simulator … adapted to display a simulated state of three axes of movement for at least one propulsion unit positioner responsive to positioning signals received from the spacecraft” and Claim 7, ll. 1 - 2 “positioner simulator is adapted to simulate the state of at least two three-axis, three phase propulsion unit positioner motors”.
Claim 1, ll. 10 - 11 “propulsion unit fuel valve simulator adapted to display a simulated state of propulsion unit fuel valves responsive to control signals received from the spacecraft”.
Claim 3, l. 2 and Claim 4, ll. 2 - 3 “heater load simulator” interpreted as “load simulator for a heater”.
Claim 3, l. 2 and Claim 4, l. 3 “magnet load simulator” interpreted as “load simulator for a magnet”.
Claim 3, ll. 2 - 3 and Claim 4, l. 3 “igniter simulator” interpreted as “simulator for an igniter”.
Claim 8, ll. 1 - 5 “spacecraft control signal simulator … adapted to selectively output control signals to the propulsion unit load simulator, positioner simulator and fuel valve simulator upon connection to the PPU connector and the control unit connector, to provide a self-test for the propulsion unit load simulator, positioner simulator and fuel valve simulator”.
Claim 10, l. 2 “electrical propulsion unit load simulators” interpreted as “simulators for electrical propulsion unit loads”.
Claim 10, ll. 2 - 3 and Claim 12, l. 4 “anode simulator” interpreted as “simulator for an anode”.
Claim 10, l. 3 “propulsion valve load simulators” interpreted as “simulators for propulsion valve loads”.
Claim 10, ll. 6 - 8 “spacecraft propulsion unit positioner simulator adapted to display a simulated state of three axes of movement for at least one propulsion unit positioner … responsive to positioning signals received from the spacecraft under test” and Claim 16, ll. 1 - 2 “positioner simulator is adapted to simulate the state of at least two three-axis, three phase propulsion unit positioner motors”.
Claim 10, ll. 9 - 11 “propulsion unit fuel valve simulator adapted to display a simulated state of propulsion unit fuel valves responsive to control signals received from the spacecraft under test”.
Claim 12, l. 2 and l. 4 “heater load simulator” interpreted as “load simulator for a heater”.
Claim 12, ll. 2 - 3 and l. 5 “magnet load simulator” interpreted as “load simulator for a magnet”.
Claim 12, l. 3 and l. 4 “igniter load simulator” interpreted as “load simulator for an igniter”.
Claim 17, ll. 1 - 5 “spacecraft control signal simulator … adapted to selectively output control signals to the propulsion unit load simulator, positioner simulator and fuel valve simulator upon connection to the PPU connector and the propulsion unit positioner, to provide a self-test for the propulsion unit load simulator, positioner simulator and fuel valve simulator”.
Because this/these claim 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 cover the corresponding structure described in the specification as performing the 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-AIA 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 interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 – 18 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. *** This is a claim rejection heading paragraph. ***
Claims 1, 4, 10, and 12 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. As discussed in the 35 U.S.C. 112(b) rejections below, disclosure does not provide a description of adequate structure, material, or acts to perform the entire claimed function of simulating an anode. The original written description only disclosed “anode simulator” in Paras. [0002], [0003], [0004], and [0005] without any additional description. Paras. [0002], [0003], [0004], and [0005] basically repeat the claim language without any additional details. Is the “anode simulator” only software? Is the “anode simulator” only hardware? Is the “anode simulator” a combination of software and hardware? Consequently, the specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Claims 2 – 9 depend from Claim 1 and are rejected for the same reasons. Claims 11 – 18 depend from Claim 10 and are rejected for the same reasons.
Claims 1 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. As discussed in the 35 U.S.C. 112(b) rejections below, disclosure does not provide a description of adequate structure, material, or acts to perform the entire claimed function of simulating for propulsion valve loads. The original written description only disclosed “propulsion valve load simulators” in Paras. [0002] and [0004] without any additional description. Paras. [0002] and [0004] basically repeat the claim language without any additional details. Is the “propulsion valve load simulators” only software? Is the “propulsion valve load simulators” only hardware? Is the “propulsion valve load simulators” a combination of software and hardware? Consequently, the specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Claims 2 – 9 depend from Claim 1 and are rejected for the same reasons. Claims 11 – 18 depend from Claim 10 and are rejected for the same reasons.
Claims 1 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. As discussed in the 35 U.S.C. 112(b) rejections below, disclosure does not provide a description of adequate structure, material, or acts to perform the entire claimed function of receive propulsion unit control signals from a spacecraft under test. The original written description only disclosed “electrical propulsion unit load simulator” in Paras. [0002], [0003], [0004], and [0005] without any additional description. Paras. [0002], [0003], [0004], and [0005] basically repeat the claim language without any additional details. Is the “electrical propulsion unit load simulator” only software? Is the “electrical propulsion unit load simulator” only hardware? Is the “electrical propulsion unit load simulator” a combination of software and hardware? Consequently, the specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Claims 2 – 9 depend from Claim 1 and are rejected for the same reasons. Claims 11 – 18 depend from Claim 10 and are rejected for the same reasons.
Claims 1, 7, 10 and 16 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. As discussed in the 35 U.S.C. 112(b) rejections below, disclosure does not provide a description of adequate structure, material, or acts to perform the entire claimed function of simulate the state of at least two three-axis, three phase propulsion unit positioner motors. The original written description only disclosed “spacecraft propulsion unit positioner simulator” in Paras. [0002], [0004], and [0005] without any additional description. Paras. [0002], [0004], and [0005] basically repeat the claim language without any additional details. Is the “spacecraft propulsion unit positioner simulator” only software? Is the “spacecraft propulsion unit positioner simulator” only hardware? Is the “spacecraft propulsion unit positioner simulator” a combination of software and hardware? Consequently, the specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Claims 2 – 9 depend from Claim 1 and are rejected for the same reasons. Claims 11 – 18 depend from Claim 10 and are rejected for the same reasons.
Claims 1 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. As discussed in the 35 U.S.C. 112(b) rejections below, disclosure does not provide a description of adequate structure, material, or acts to perform the entire claimed function of display a simulated state of propulsion unit fuel valves responsive to control signals received from the spacecraft. The original written description only disclosed “propulsion unit fuel valve simulator” in Paras. [0002], [0004], and [0005] without any additional description. Paras. [0002], [0004], and [0005] basically repeat the claim language without any additional details. Is the “propulsion unit fuel valve simulator” only software? Is the “propulsion unit fuel valve simulator” only hardware? Is the “propulsion unit fuel valve simulator” a combination of software and hardware? Consequently, the specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Claims 2 – 9 depend from Claim 1 and are rejected for the same reasons. Claims 11 – 18 depend from Claim 10 and are rejected for the same reasons.
Claims 3, 4, and 12 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. As discussed in the 35 U.S.C. 112(b) rejections below, disclosure does not provide a description of adequate structure, material, or acts to perform the entire claimed function of simulating the heater load. The original written description only disclosed “heater load simulator” in Paras. [0003] and [0005] without any additional description. Paras. [0003] and [0005] basically repeat the claim language without any additional details. Is the “heater load simulator” only software? Is the “heater load simulator” only hardware? Is the “heater load simulator” a combination of software and hardware? Consequently, the specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Claims 4 and 5 depend from Claim 3 and are rejected for the same reasons. Claim 13 depends from Claim 12 and is rejected for the same reasons.
Claims 3, 4, and 12 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. As discussed in the 35 U.S.C. 112(b) rejections below, disclosure does not provide a description of adequate structure, material, or acts to perform the entire claimed function of simulating the magnet load. The original written description only disclosed “magnet load simulator” in Paras. [0003] and [0005] without any additional description. Paras. [0003] and [0005] basically repeat the claim language without any additional details. Is the “magnet load simulator” only software? Is the “magnet load simulator” only hardware? Is the “magnet load simulator” a combination of software and hardware? Consequently, the specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Claims 4 and 5 depend from Claim 3 and are rejected for the same reasons. Claim 13 depends from Claim 12 and is rejected for the same reasons.
Claims 3, 4, and 12 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. As discussed in the 35 U.S.C. 112(b) rejections below, disclosure does not provide a description of adequate structure, material, or acts to perform the entire claimed function of simulating the igniter or the igniter load. The original written description only disclosed “igniter load simulator” in Para. [0005] without any additional description. Para. [0005] basically repeat the claim language without any additional details. Is the “igniter simulator” or “igniter load simulator” only software? Is the “igniter simulator” or “igniter load simulator” only hardware? Is the “igniter simulator” or “igniter load simulator” a combination of software and hardware? Consequently, the specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Claims 4 and 5 depend from Claim 3 and are rejected for the same reasons. Claim 13 depends from Claim 12 and is rejected for the same reasons.
Claims 8 and 17 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. As discussed in the 35 U.S.C. 112(b) rejections below, disclosure does not provide a description of adequate structure, material, or acts to perform the entire claimed function of …selectively output control signals to the propulsion unit load simulator, positioner simulator and fuel valve simulator upon connection to the PPU connector and the control unit connector, to provide a self-test for the propulsion unit load simulator, positioner simulator and fuel valve simulator. The original written description only disclosed “spacecraft control signal simulator” in Para. [0005] without any additional description. Para. [0005] basically repeat the claim language without any additional details. Is the “spacecraft control signal simulator” only software? Is the “spacecraft control signal simulator” only hardware? Is the “spacecraft control signal simulator” a combination of software and hardware? Consequently, the specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention.
Claims 1 – 18 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. *** This is a claim rejection heading paragraph. ***
Claims 1, 4, 10, and 12 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, 4, 10, and 12 recite “anode simulator” interpreted as “simulator for an anode”, see the Claim Interpretation section above. The original written description only disclosed “anode simulator” in Paras. [0002], [0003], [0004], and [0005] without any additional description. Paras. [0002], [0003], [0004], and [0005] basically repeat the claim language without any additional details. When determining whether “undue experimentation” would have been needed to make and use the claimed invention the following factors, MPEP 2164.01(a), are considered: (A) the breadth of the claims – applicant claims at least an anode simulator; (B) the nature of the invention - a spacecraft test apparatus or a spacecraft testing system; (C) the state of the prior art – A text search of the over eleven million references in the USPTO patent database revealed that the PGPub of the instant application was the only hit on the limitation “anode simulator”. Therefore the claim limitation was not a term of art and was unknown to the prior art.; (E) the level of predictability in the art – low predictability in the art since Applicant failed to describe the details of the “anode simulator”; (F) the amount of direction provided by the inventor – applicant's disclosure does not teach how to make or use the invention. The original written description only disclosed “anode simulator” in Paras. [0002], [0003], [0004], and [0005] without any additional description. Paras. [0002], [0003], [0004], and [0005] basically repeat the claim language without any additional details. Since the Specification failed to describe the “anode simulator”, a potential infringer has no idea exactly what is the “anode simulator”. Is the “anode simulator” only software? Is the “anode simulator” only hardware? Is the “anode simulator” a combination of software and hardware? Without knowing the details of the claimed “anode simulator” it would be impossible for a potential infringer to amend around the claimed invention.; (G) the existence of working examples - applicant has not stated whether or not a working example exists; and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure – it has been held that “an adequate disclosure of a device may require details of how complex components are constructed and perform the desired function" [MPEP 2164.06(a)]. Claims 2 – 9 depend from Claim 1 and are rejected for the same reasons. Claims 11 – 18 depend from Claim 10 and are rejected for the same reasons.
Claims 1 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 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 10 recite “propulsion valve load simulators” interpreted as “simulators for propulsion valve loads”, see the Claim Interpretation section above. The original written description only disclosed “propulsion valve load simulators” in Paras. [0002] and [0004] without any additional description. Paras. [0002] and [0004] basically repeat the claim language without any additional details. When determining whether “undue experimentation” would have been needed to make and use the claimed invention the following factors, MPEP 2164.01(a), are considered: (A) the breadth of the claims – applicant claims propulsion valve load simulators; (B) the nature of the invention - a spacecraft test apparatus or a spacecraft testing system; (C) the state of the prior art - A text search of the over eleven million references in the USPTO patent database revealed that the PGPub of the instant application was the only hit on the limitation “propulsion valve load simulators”. Therefore the claim limitation was not a term of art and was unknown to the prior art.; (E) the level of predictability in the art – low predictability in the art since Applicant failed to describe the details of the “propulsion valve load simulators”; (F) the amount of direction provided by the inventor – applicant's disclosure does not teach how to make or use the invention. The original written description only disclosed “propulsion valve load simulators” in Paras. [0002] and [0004] without any additional description. Paras. [0002] and [0004] basically repeat the claim language without any additional details. Since the Specification failed to describe the “propulsion valve load simulators”, a potential infringer has no idea exactly what is the “propulsion valve load simulators”. Is the “propulsion valve load simulators” only software? Is the “propulsion valve load simulators” only hardware? Is the “propulsion valve load simulators” a combination of software and hardware? Without knowing the details of the claimed “propulsion valve load simulators” it would be impossible for a potential infringer to amend around the claimed invention.; (G) the existence of working examples - applicant has not stated whether or not a working example exists; and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure – it has been held that “an adequate disclosure of a device may require details of how complex components are constructed and perform the desired function" [MPEP 2164.06(a)]. Claims 2 – 9 depend from Claim 1 and are rejected for the same reasons. Claims 11 – 18 depend from Claim 10 and are rejected for the same reasons.
Claims 1 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 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 10 recite “electrical propulsion unit load simulator adapted to receive propulsion unit control signals from a spacecraft under test”, see the Claim Interpretation section above. he original written description only disclosed “electrical propulsion unit load simulator” in Paras. [0002], [0003], [0004], and [0005] without any additional description. Paras. [0002], [0003], [0004], and [0005] basically repeat the claim language without any additional details. When determining whether “undue experimentation” would have been needed to make and use the claimed invention the following factors, MPEP 2164.01(a), are considered: (A) the breadth of the claims – applicant claims electrical propulsion unit load simulator; (B) the nature of the invention - a spacecraft test apparatus or a spacecraft testing system; (C) the state of the prior art - A text search of the over eleven million references in the USPTO patent database revealed that the PGPub of the instant application was the only hit on the limitation “electrical propulsion unit load simulator”. Therefore the claim limitation was not a term of art and was unknown to the prior art.; (E) the level of predictability in the art – low predictability in the art since Applicant failed to describe the details of the “electrical propulsion unit load simulator”; (F) the amount of direction provided by the inventor – applicant's disclosure does not teach how to make or use the invention. The original written description only disclosed “electrical propulsion unit load simulator” in Paras. [0002], [0003], [0004], and [0005] without any additional description. Paras. [0002], [0003], [0004], and [0005] basically repeat the claim language without any additional details. Since the Specification failed to describe the “electrical propulsion unit load simulator”, a potential infringer has no idea exactly what is the “electrical propulsion unit load simulator”. Is the “electrical propulsion unit load simulator” only software? Is the “electrical propulsion unit load simulator” only hardware? Is the “electrical propulsion unit load simulator” a combination of software and hardware? Without knowing the details of the claimed “electrical propulsion unit load simulator” it would be impossible for a potential infringer to amend around the claimed invention.; (G) the existence of working examples - applicant has not stated whether or not a working example exists; and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure – it has been held that “an adequate disclosure of a device may require details of how complex components are constructed and perform the desired function" [MPEP 2164.06(a)]. Claims 2 – 9 depend from Claim 1 and are rejected for the same reasons. Claims 11 – 18 depend from Claim 10 and are rejected for the same reasons.
Claims 1, 7, 10, and 16 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 10 recite “spacecraft propulsion unit positioner simulator … adapted to display a simulated state of three axes of movement for at least one propulsion unit positioner responsive to positioning signals received from the spacecraft” and Claims 7 and 16 recite “positioner simulator is adapted to simulate the state of at least two three-axis, three phase propulsion unit positioner motors”, see the Claim Interpretation section above. The original written description only disclosed “spacecraft propulsion unit positioner simulator” in Paras. [0002], [0004], and [0005] without any additional description. Paras. [0002], [0004], and [0005] basically repeat the claim language without any additional details. When determining whether “undue experimentation” would have been needed to make and use the claimed invention the following factors, MPEP 2164.01(a), are considered: (A) the breadth of the claims – applicant claims spacecraft propulsion unit positioner simulator; (B) the nature of the invention - a spacecraft test apparatus or a spacecraft testing system; (C) the state of the prior art - A text search of the over eleven million references in the USPTO patent database revealed that the PGPub of the instant application was the only hit on the limitation “spacecraft propulsion unit positioner simulator”. Therefore the claim limitation was not a term of art and was unknown to the prior art.; (E) the level of predictability in the art – low predictability in the art since Applicant failed to describe the details of the “spacecraft propulsion unit positioner simulator”; (F) the amount of direction provided by the inventor – applicant's disclosure does not teach how to make or use the invention. The original written description only disclosed “spacecraft propulsion unit positioner simulator” in Paras. [0002], [0004], and [0005] without any additional description. Paras. [0002], [0004], and [0005] basically repeat the claim language without any additional details. Since the Specification failed to describe the “spacecraft propulsion unit positioner simulator”, a potential infringer has no idea exactly what is the “spacecraft propulsion unit positioner simulator”. Is the “spacecraft propulsion unit positioner simulator” only software? Is the “spacecraft propulsion unit positioner simulator” only hardware? Is the “spacecraft propulsion unit positioner simulator” a combination of software and hardware? Without knowing the details of the claimed “spacecraft propulsion unit positioner simulator” it would be impossible for a potential infringer to amend around the claimed invention.; (G) the existence of working examples - applicant has not stated whether or not a working example exists; and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure – it has been held that “an adequate disclosure of a device may require details of how complex components are constructed and perform the desired function" [MPEP 2164.06(a)]. Claims 2 – 9 depend from Claim 1 and are rejected for the same reasons. Claims 11 – 18 depend from Claim 10 and are rejected for the same reasons.
Claims 1 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 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 10 recite “propulsion unit fuel valve simulator adapted to display a simulated state of propulsion unit fuel valves responsive to control signals received from the spacecraft”, see the Claim Interpretation section above. The original written description only disclosed “propulsion unit fuel valve simulator” in Paras. [0002], [0004], and [0005] without any additional description. Paras. [0002], [0004], and [0005] basically repeat the claim language without any additional details. When determining whether “undue experimentation” would have been needed to make and use the claimed invention the following factors, MPEP 2164.01(a), are considered: (A) the breadth of the claims – applicant claims spacecraft propulsion unit positioner simulator; (B) the nature of the invention - a spacecraft test apparatus or a spacecraft testing system; (C) the state of the prior art - A text search of the over eleven million references in the USPTO patent database revealed that the PGPub of the instant application was the only hit on the limitation “propulsion unit fuel valve simulator”. Therefore the claim limitation was not a term of art and was unknown to the prior art.; (E) the level of predictability in the art – low predictability in the art since Applicant failed to describe the details of the “propulsion unit fuel valve simulator”; (F) the amount of direction provided by the inventor – applicant's disclosure does not teach how to make or use the invention. The original written description only disclosed “propulsion unit fuel valve simulator” in Paras. [0002], [0004], and [0005] without any additional description. Paras. [0002], [0004], and [0005] basically repeat the claim language without any additional details. Since the Specification failed to describe the “propulsion unit fuel valve simulator”, a potential infringer has no idea exactly what is the “propulsion unit fuel valve simulator”. Is the “propulsion unit fuel valve simulator” only software? Is the “propulsion unit fuel valve simulator” only hardware? Is the “propulsion unit fuel valve simulator” a combination of software and hardware? Without knowing the details of the claimed “propulsion unit fuel valve simulator” it would be impossible for a potential infringer to amend around the claimed invention.; (G) the existence of working examples - applicant has not stated whether or not a working example exists; and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure – it has been held that “an adequate disclosure of a device may require details of how complex components are constructed and perform the desired function" [MPEP 2164.06(a)]. Claims 2 – 9 depend from Claim 1 and are rejected for the same reasons. Claims 11 – 18 depend from Claim 10 and are rejected for the same reasons.
Claims 3, 4, and 12 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 3, 4, and 12 recite “heater load simulator” interpreted as “load simulator for a heater”, see the Claim Interpretation section above. Claims 3, 4, and 12 recite “magnet load simulator” interpreted as “load simulator for a magnet”, see the Claim Interpretation section above. Claims 3 and 4 recite “igniter simulator” interpreted as “simulator for an igniter” and Claim 12 recites “igniter load simulator” interpreted as “simulator for an igniter load”, see the Claim Interpretation section above. The original written description only disclosed “heater load simulator” and “magnet load simulator” in Paras. [0003] and [0005] without any additional description. Paras. [0003] and [0005] basically repeat the claim language without any additional details. The original written description only disclosed “igniter load simulator” in Para. [0005] without any additional description. Para. [0005] basically repeat the claim language without any additional details. When determining whether “undue experimentation” would have been needed to make and use the claimed invention the following factors, MPEP 2164.01(a), are considered: (A) the breadth of the claims – applicant claims a heater load simulator, at least one magnet load simulator and an igniter simulator; (B) the nature of the invention - a spacecraft test apparatus or a spacecraft testing system; (C) the state of the prior art - A text search of the over eleven million references in the USPTO patent database revealed that the PGPub of the instant application was the only hit on the limitations “heater load simulator”, “magnet load simulator”, and “igniter simulator”, and “igniter load simulator”. Therefore the claim limitations were not terms of art and were unknown to the prior art.; (E) the level of predictability in the art – low predictability in the art since Applicant failed to describe the details of the “heater load simulator”, “magnet load simulator”, and “igniter simulator”, and “igniter load simulator”.; (F) the amount of direction provided by the inventor – applicant's disclosure does not teach how to make or use the invention. The original written description only disclosed “heater load simulator” and “magnet load simulator” in Paras. [0003] and [0005] without any additional description. Paras. [0003] and [0005] basically repeat the claim language without any additional details. The original written description only disclosed “igniter load simulator” in Para. [0005] without any additional description. Para. [0005] basically repeat the claim language without any additional details. Since the Specification failed to describe the “heater load simulator”, “magnet load simulator”, and “igniter simulator”, and “igniter load simulator”, a potential infringer has no idea exactly what is the “heater load simulator”, “magnet load simulator”, and “igniter simulator”, and “igniter load simulator”. Is the “heater load simulator”, “magnet load simulator”, and “igniter simulator”, and “igniter load simulator” only software? Is the “heater load simulator”, “magnet load simulator”, and “igniter simulator”, and “igniter load simulator” only hardware? Is the “heater load simulator”, “magnet load simulator”, and “igniter simulator”, and “igniter load simulator” a combination of software and hardware? Without knowing the details of the claimed “heater load simulator”, “magnet load simulator”, and “igniter simulator”, and “igniter load simulator” it would be impossible for a potential infringer to amend around the claimed invention.; (G) the existence of working examples - applicant has not stated whether or not a working example exists; and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure – it has been held that “an adequate disclosure of a device may require details of how complex components are constructed and perform the desired function" [MPEP 2164.06(a)]. Claims 4 and 5 depend from Claim 3 and are rejected for the same reasons. Claim 13 depends from Claim 12 and is rejected for the same reasons.
Claims 8 and 17 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 8 and 17 recite “spacecraft control signal simulator … adapted to selectively output control signals to the propulsion unit load simulator, positioner simulator and fuel valve simulator upon connection to the PPU connector and the control unit connector, to provide a self-test for the propulsion unit load simulator, positioner simulator and fuel valve simulator”, see the Claim Interpretation section above. The original written description only disclosed “spacecraft control signal simulator” in Para. [0005] without any additional description. Para. [0005] basically repeat the claim language without any additional details. Is the “spacecraft control signal simulator” only software? Is the “spacecraft control signal simulator” only hardware? Is the “spacecraft control signal simulator” a combination of software and hardware? When determining whether “undue experimentation” would have been needed to make and use the claimed invention the following factors, MPEP 2164.01(a), are considered: (A) the breadth of the claims – applicant claims spacecraft propulsion unit positioner simulator; (B) the nature of the invention - a spacecraft test apparatus or a spacecraft testing system; (C) the state of the prior art - A text search of the over eleven million references in the USPTO patent database revealed that the PGPub of the instant application was the only hit on the limitation “spacecraft control signal simulator”. Therefore the claim limitation was not a term of art and was unknown to the prior art.; (E) the level of predictability in the art – low predictability in the art since Applicant failed to describe the details of the “propulsion unit fuel valve simulator”; (F) the amount of direction provided by the inventor – applicant's disclosure does not teach how to make or use the invention. The original written description only disclosed “spacecraft control signal simulator” in Para. [0005] without any additional description. Para. [0005] basically repeat the claim language without any additional details. Since the Specification failed to describe the “spacecraft control signal simulator”, a potential infringer has no idea exactly what is the “spacecraft control signal simulator”. Is the “spacecraft control signal simulator” only software? Is the “spacecraft control signal simulator” only hardware? Is the “spacecraft control signal simulator” a combination of software and hardware? Without knowing the details of the claimed “spacecraft control signal simulator” it would be impossible for a potential infringer to amend around the claimed invention.; (G) the existence of working examples - applicant has not stated whether or not a working example exists; and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure – it has been held that “an adequate disclosure of a device may require details of how complex components are constructed and perform the desired function" [MPEP 2164.06(a)].
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 – 9 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, l. 7 recites “the simulator adapted to display” which is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention because it is unclear which “simulator” is being referenced. Claim 1, l. 2 recites “electrical propulsion unit load simulator”. Claim 1, l. 3 recites “propulsion valve load simulator”. Claim 1, l. 6 recites “spacecraft propulsion unit positioner simulator”. Therefore, it is unclear if the “simulator” of Claim 1, l. 7 refers to the “electrical propulsion unit load simulator”, the “propulsion valve load simulator”, or the “spacecraft propulsion unit positioner simulator”. Claims 2 – 9 depend from Claim 1 and are rejected for the same reasons. In the interest of compact prosecution, the “simulator” of Claim 1, l. 7 is interpreted to refers to the “spacecraft propulsion unit positioner simulator”.
Claim 9, l. 1 recites “further including a plurality of load simulators” which is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention because it is unclear which “load simulators” is being referenced. Claim 9 depends from Claim 1. Claim 1, l. 2 recites “electrical propulsion unit load simulator”. Claim 1, l. 3 recites “propulsion valve load simulator”. Therefore, it is unclear if the “load simulators” of Claim 9, l. 1 refers to the “electrical propulsion unit load simulator”, the “propulsion valve load simulator”, or some other type or types of ‘load simulators’. Claim 3, l. 2 recites “heater load simulator” and a “magnet load simulator” so there are four or more disclosed ‘load simulators’. Is the “plurality of load simulators” all the same type of “load simulators”? Or is the “plurality of load simulators” an assembly of various different types of “load simulators”?
Claim 10, l. 4 recites “each including a PPU connector for the spacecraft under test” which is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention because it is unclear what is being referenced by “each including”. Claim 10, l. 2 recites “electrical propulsion unit load simulators”. Claim 10, l. 3 recites “anode simulator”. Claim 10, l. 3 recites “propulsion valve load simulator”. Claim 10, l. 3 recites “a propulsion unit”. Therefore, it is unclear if the “each including” of Claim 10, l. 4 refers to the “electrical propulsion unit load simulators”, the “anode simulator”, the “propulsion valve load simulator”, the “propulsion unit” individually or all three simulators and the propulsion unit. Claims 11 – 18 depend from Claim 10 and are rejected for the same reasons. In the interest of compact prosecution, the “simulator” of Claim 10, l. 4 is interpreted to refer to the “plurality of electrical propulsion unit load simulators”.
Claims 1, 4, 10, and 12 limitation “anode simulator” interpreted as “simulator for an anode” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the entire claimed function. The original written description only disclosed “anode simulator” in Paras. [0002], [0003], [0004], and [0005] without any additional description. Paras. [0002], [0003], [0004], and [0005] basically repeat the claim language without any additional details. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Claims 2 – 9 depend from Claim 1 and are rejected for the same reasons. Claims 11 – 18 depend from Claim 10 and are rejected for the same reasons.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 1 and 10 limitation “propulsion valve load simulators” interpreted as “simulators for propulsion valve loads” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the entire claimed function. The original written description only disclosed “propulsion valve load simulators” in Paras. [0002] and [0004] without any additional description. Paras. [0002] and [0004] basically repeat the claim language without any additional details. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Claims 2 – 9 depend from Claim 1 and are rejected for the same reasons. Claims 11 – 18 depend from Claim 10 and are rejected for the same reasons.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 1 and 10 limitation “electrical propulsion unit load simulator adapted to receive propulsion unit control signals from a spacecraft under test” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the entire claimed function. The original written description only disclosed “electrical propulsion unit load simulator” in Paras. [0002], [0003], [0004], and [0005] without any additional description. Paras. [0002], [0003], [0004], and [0005] basically repeat the claim language without any additional details. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Claims 2 – 9 depend from Claim 1 and are rejected for the same reasons. Claims 11 – 18 depend from Claim 10 and are rejected for the same reasons.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 1 and 10 limitation “spacecraft propulsion unit positioner simulator … adapted to display a simulated state of three axes of movement for at least one propulsion unit positioner responsive to positioning signals received from the spacecraft” and Claims 7 and 16 limitation “positioner simulator is adapted to simulate the state of at least two three-axis, three phase propulsion unit positioner motors” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the entire claimed function. The original written description only disclosed “spacecraft propulsion unit positioner simulator” in Paras. [0002], [0004], and [0005] without any additional description. Paras. [0002], [0004], and [0005] basically repeat the claim language without any additional details. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Claims 2 – 9 depend from Claim 1 and are rejected for the same reasons. Claims 11 – 18 depend from Claim 10 and are rejected for the same reasons.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 1 and 10 limitation “propulsion unit fuel valve simulator adapted to display a simulated state of propulsion unit fuel valves responsive to control signals received from the spacecraft” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the entire claimed function. The original written description only disclosed “propulsion unit fuel valve simulator” in Paras. [0002], [0004], and [0005] without any additional description. Paras. [0002], [0004], and [0005] basically repeat the claim language without any additional details. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Claims 2 – 9 depend from Claim 1 and are rejected for the same reasons. Claims 11 – 18 depend from Claim 10 and are rejected for the same reasons.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 3, 4, and 12 limitation “heater load simulator” interpreted as “load simulator for a heater” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the entire claimed function. The original written description only disclosed “heater load simulator” in Paras. [0003] and [0005] without any additional description. Paras. [0003] and [0005] basically repeat the claim language without any additional details. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Claims 4 and 5 depend from Claim 3 and are rejected for the same reasons. Claim 13 depends from Claim 12 and is rejected for the same reasons.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 3, 4, and 12 limitation “magnet load simulator” interpreted as “load simulator for a magnet” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the entire claimed function. The original written description only disclosed “magnet load simulator” in Paras. [0003] and [0005] without any additional description. Paras. [0003] and [0005] basically repeat the claim language without any additional details. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Claims 4 and 5 depend from Claim 3 and are rejected for the same reasons. Claim 13 depends from Claim 12 and is rejected for the same reasons.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 3 and 4 limitation “igniter simulator” interpreted as “simulator for an igniter” and Claim 12 limitation “igniter load simulator” interpreted as “simulator for an igniter load” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the entire claimed function. The original written description only disclosed “igniter load simulator” in Para. [0005] without any additional description. Para. [0005] basically repeat the claim language without any additional details. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Claims 4 and 5 depend from Claim 3 and are rejected for the same reasons. Claim 13 depends from Claim 12 and is rejected for the same reasons.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 8 and 17 limitation “spacecraft control signal simulator … adapted to selectively output control signals to the propulsion unit load simulator, positioner simulator and fuel valve simulator upon connection to the PPU connector and the control unit connector, to provide a self-test for the propulsion unit load simulator, positioner simulator and fuel valve simulator” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the entire claimed function. The original written description only disclosed “spacecraft control signal simulator” in Paras. [0003] and [0005] without any additional description. Paras. [0003] and [0005] basically repeat the claim language without any additional details. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Note: The lack of enablement for Claims 1 - 18 prevented application of prior art, because the mechanism(s) involved, not being disclosed and therefore not enabled, could not be searched.
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.
Response to Arguments
Applicant's arguments filed 09/08/2025 have been fully considered but they are not persuasive.
Applicant’s arguments on Pgs. 8 – 10 regarding the 112(f) interpretation of the limitations listed on Pgs. 9 – 11 of the Office Action mailed on 04/08/2025 are not persuasive. Applicant annotated Claims 1 – 9 with the drawing reference characters for the claim limitations that were interpreted as invoking 112(f) interpretation. Examiner interprets this as Applicant’s attempt to take the last option of the 112(b) rejections, i.e., the “(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181” option. Annotating the claims with the drawing reference characters fails to overcome the 112(f) interpretation and the resulting 112(b) rejections because the original figures failed to show the details of what were inside the recited simulators and the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the entire claimed function. For example, the “electrical propulsion unit load simulator (210) …” was just a labeled rectangular box in Fig. 2B, was an assembly of four similar faceplates mounted in a mobile electrical equipment rack in Fig. 2C, and was an assembly of four similar backplates mounted in a mobile electrical equipment rack in Fig. 2D. Consequently, the original figures and the original written description failed to sufficiently disclose the structure, material, or acts hidden between the faceplates and the backplates. In other words, the actual hardware, software, or combination of hardware and software that performed the claimed functions. The rejections are maintained.
Applicant’s further arguments on Pgs. 10 – 13 regarding the 112(f) interpretation of the limitations listed on Pgs. 9 – 11 of the Office Action mailed on 04/08/2025 are not persuasive. Applicant argues that “In each example in the Action, the claim terms interpreted under 35 U.S.C. §112(f), as a whole, would be understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure, especially read in light of the specification wherein each element is supported as noted above in the claims with added reference numbers.” This is not persuasive because the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”); MPEP 2145. Applicant has failed to cite any factual evidence in the record to support Applicant’s allegations. The claims recite a plurality of different “simulators”; however, the original figures failed to show the details of what were inside the recited simulators and the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the entire claimed function. Consequently, the claimed invention is a collection of “black boxes” because Applicant failed to sufficiently disclose the structure, material, or acts inside each “black box”. In other words, the actual hardware, software, or combination of hardware and software that performed the claimed functions of each one of the claim limitations that invoked 112(f) interpretation.
Furthermore, contrary to Applicant’s arguments, the limitations listed on Pgs. 9 – 11 of the Office Action mailed on 04/08/2025 as invoking 112(f) interpretation would not have been understood by persons of ordinary skill to have a sufficiently definite meaning as the name for the structure that performs the function, because the claimed terms are not commercial off the shelf (COTS) devices or simple devices whose generic structure where well known in the prior art. For example, "filters," "brakes," "clamp," "screwdriver," and "locks" were all held not to invoke 112(f) interpretation because the terms identified the structures by their function, see MPEP2181(I)(A). Furthermore, "filters," "brakes," "clamp," "screwdriver," and "locks" were well known in the art to have conventional structures and they all could be purchased online or at a wide variety of commercial stores that conventionally stocked "filters," "brakes," "clamp," "screwdriver," and "locks", e.g., automotive supply store or hardware store. Applicant is presumably claiming a novel and non-obvious invention that isn’t known in the prior art; therefore, Applicant cannot argue that the limitations “invented” by Applicant were so well known by persons of ordinary skill in the art to have conventional structures that performed the claimed functions. The rejections are maintained.
Applicant’s arguments on Pgs. 13 – 14 regarding the 112(a) rejections on Pgs. 12 – 33 of the Office Action mailed on 04/08/2025 are not persuasive. Applicant argues that paragraphs 10 (on Pgs. 12 - 13) and 20 (on Pgs. 20 - 21) failed to set forth rationales for the “…blanked rejection of the claims”. This is not persuasive because paragraphs 10 and 20 were claim rejection headings which listed all the claims rejected under 112(a) written description and 112(a) lack of enablement, respectively. The individual paragraphs under the respective claim rejection headings grouped claims that recited the same limitation being rejected for the explained rationales. So paragraphs 11 – 19 under claim rejection heading (paragraph 10) explained the rationales for the 112(a) written description rejections of the grouped claims that recited the same terms. Similarly paragraphs 21 – 27 under claim rejection heading (paragraph 20) explained the rationales for the 112(a) lack of enablement rejections of the grouped claims that recited the same terms.
Applicant’s further argument that the claim terms should not have been interpreted as invoking 112(f) and therefore the 112(a) written description and 112(a) lack of enablement rejections are improper is not persuasive. As discussed above, the 112(f) interpretation of the claim terms was proper. Therefore, the 112(a) written description and 112(a) lack of enablement rejections are maintained.
Applicant’s further argument that the claim terms should not have been interpreted as invoking 112(f) and therefore the 112(b) rejections are improper is not persuasive. As discussed above, the 112(f) interpretation of the claim terms was proper. Therefore, the 112(b) rejections are maintained.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORNE E MEADE whose telephone number is (571)270-7570. The examiner can normally be reached Monday - Friday 8-5 EST.
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/LORNE E MEADE/Primary Examiner, Art Unit 3741
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