DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In the claims 1 and 8, there are two determining parts or sections in the claims. An interference determination and a performance determination based upon the interference friction. However, the specification fails to adequately disclose or describe the interference friction. While the specification discloses that the spring force F can be calculated through the coordinate of the leftmost atom in the x-axis direction, that is, the interface friction. The value xn is disclosed to be the leftmost atom in the x-axis direction, thus that would be the interface friction. However, this value is not disclosed to be determined at all, rather a spring force F=-kx based upon the coordinate x= xn and xo is determined. The interference friction is therefore not determined at all. Further, it is not disclosed how the performance is determined based upon the interference friction. A curve in Figure 6 is shown but how the curve is actually obtained and what relationship is used between the interference friction and other values to obtain said curve is not disclosed. Without this information, it is not quite clear that the Applicant had possession of the invention at the time of filing. Since claim 1 lacks an adequate written description, then claims 2-7, which depend either directly or indirectly from claim 1, lack an adequate written description as well.
Claims 1-8 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. In the claims 1 and 8, there are two determining parts or sections in the claims. An interference determination and a performance determination based upon the interference friction. However, the specification fails to adequately disclose or describe the interference friction. While the specification discloses that the spring force F can be calculated through the coordinate of the leftmost atom in the x-axis direction, that is, the interface friction. The value xn is disclosed to be the leftmost atom in the x-axis direction, thus that would be the interface friction. However, this value is not disclosed to be determined at all, rather a spring force F=-kx based upon the coordinate x= xn and xo is determined. The interference friction is therefore not determined at all. Further, it is not disclosed how the performance is determined based upon the interference friction. A curve in Figure 6 is shown but how the curve is actually obtained and what relationship is used between the interference friction and other values to obtain said curve is not disclosed.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557,1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
With respect to the case of the present invention, there is not enough direction provided by the inventor (Wands Factor F), there is no disclosure of other working examples to compare the present invention to in order to ascertain the determinations as disclosed and claimed (Wands Factor G), and the amount of experimentation required to make the claimed determinations would be very large and burdensome for one of ordinary skill in the art to make and/or use the invention as claimed (Wands Factor H). Therefore, the claims as filed are not enabled by the disclosure as filed.
Since claim 1 lacks an enabling disclosure, then claims 2-7, which depend either directly or indirectly from claim 1, lack an enabling disclosure as well.
Conclusion
The present rejection does not contain a prior art rejection, but that is in not meant as an indication of any allowable subject matter in the present application. The current 35 USC 112 issues in the claims actually present an issue with performing an adequate and proper search of the claims in relation to the prior art as it is difficult at this time to determine precisely what the invention is truly doing and how. Should the applicant amend the claims to resolve these issues, then a new search will be conducted and if at that time similar prior art is found and a prior art rejection is made, then that rejection can be made final if the rejection is deemed to be made in view of the newly amended claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODNEY T FRANK whose telephone number is (571)272-2193. The examiner can normally be reached M-F 9am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Macchiarolo can be reached at (571) 272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RODNEY T FRANK/Examiner, Art Unit 2855
August 7, 2026
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