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 .
Election/Restrictions and Claim Status
1. Applicant’s election without traverse of Invention I, Species A encompassing claims 1-3 in the reply filed on 07/07/25. Additionally, Applicant elected species C1 in a voicemail dated 10/02/05 is acknowledged.
2. Claims 4-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention/Species, there being no allowable generic or linking claim.
3. Accordingly claims 1-14 are pending with claims 4-14 withdrawn. Claims 1-3 are examined herein.
Claim Rejections - 35 USC § 112
4. 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.
5. Claims 1-3 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.
6. MPEP 2163 sets forth principles governing compliance with the written description provision of 35 U.S.C. 112(a):
[T]he ‘essential goal’ of the description of the invention requirement is to clearly convey the information that an applicant [inventor] has invented the subject matter which is claimed. The ‘written description’ requirement implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee [inventor] was in possession of the invention that is claimed.
To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. An applicant shows that the inventor was in possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was "ready for patenting" such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the inventor was in possession of the claimed invention.
7. The invention recited in claims 1-3 is not adequately supported by a written description in the disclosure as filed. There is insufficient detail in the disclosure to indicate the inventor was in possession of the claimed invention at the time of filing. The specification fails to describe the particular structure of any section of the claimed modular space reactor nor how those sections are coupled together to form an operative nuclear reactor. Moreover, the specification is devoid of any description of structure responsible for coupling together adjacent sections of the module space reactor. Accordingly, the written description of the claimed invention is incomplete and one would have cause to doubt whether the inventor was in possession of the invention.
8. Additionally or alternatively, claims 1-3 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.
9. There is insufficient detail in the disclosure to indicate the inventor was in possession of the claimed invention at the time of filing. The specification fails to describe the particular structure of any section of the claimed modular space reactor nor how those sections are coupled together to form an operative nuclear reactor. Moreover, the specification is devoid of any description of structure responsible for coupling together adjacent sections of the module space reactor.
10. Based on the evidence regarding the below factors (In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)), the specification at the time the application was filed, would not have taught one skilled in the art how to make the full scope of the claimed invention without undue experimentation.
The amount of direction provided by the inventor is insufficient to enable one to make and use the claimed invention. Specifically, there is no disclosure of the structure associated with the functional limitations “configured to be separately launched into space” and “configured for assembly in space.” The disclosure does not even describe the structure of individual “sections” of the claimed reactor. For example, if one “section” contains “ fuel” and another “section contains “reactivity control devices” (see claims 1 and 2), how would one couple those sections together such that the reactivity control devices in one section were operatively connected with the fissile fuel in another section? Similarly, how would one couple a power conversion system in one section to the fissile fuel in another section to enable conversion of the fission heat from the fissile fuel into useful energy?
The present application file does not include an Information Disclosure Statement, indicating the state of the art in modular space reactors is nascent and there is not a large body of publications on which one could rely to fill in the gaps of this disclosure.
The absence of working examples indicates one of ordinary skill in the art would not have been enabled to make the claimed invention.
The examiner assesses that undue experimentation would be required to make and use the claimed invention. At a minimum, one would need to design each individual section of the claimed module space reactor as well as develop mechanisms by which the sections could be assembled remotely (in space). Because Applicant has provided a theoretical concept at a high level of generality, the full scope of research and development would be necessary before one could make and use the claimed invention.
11. 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.
12. Claims 1-3 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 pre-AIA the applicant regards as the invention.
13. Regarding claim 1-3, the functional limitations “configured to be separately launched into space” and “configured for assembly/disassembly in space” are indefinite because these limitations merely describe an effect purportedly achieved by the invention rather than the structure of the invention itself (MPEP 217305(g)). One has no means by which to decipher the metes and bounds of these limitations to determine what structure is included within the scope. One cannot even interpret these limitations in light of the specification because the disclosure merely repeats the same indefinite language and provides no elaboration thereof.
14. Claim 1 recites “each section containing a component of an assembled reactor,” while claim 2 recites “contents of at least one of the plurality of sections include…” Is claim 2 intended to further limit the identity of the claim 1 recitation “component of an assembled reactor” or does claim 2 recite elements that are present in the sections in addition to the component of claim 1? Moreover, what is encompassed by the term “component of an assembled reactor”? How is one to know what “an assembled reactor” contains?
Claim Rejections - 35 USC § 102
15. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
16. For applicant's benefit, the portions of the reference(s) relied upon in the below rejections have been cited to aid in the review of the rejections. While every attempt has been made to be thorough and consistent within the rejection, it is noted that prior art must be considered in its entirety, including disclosures that teach away from the claims. See MPEP 2141.02 VI.
17. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
18. Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hu WO 2021/259050 (citations here refer to the US equivalent US 2022/0246316).
19. Regarding claim 1, Hu discloses a modular space reactor (Abs.) comprising: a plurality of sections (1, 4), each section containing a component of an assembled reactor ([0036]; Fig. 1), wherein each one of the plurality of sections contains contents configured to be unable to sustain a fission chain reaction as an individual section ([0037-8]), wherein each one of the plurality of sections is configured to be separately launched into space from each other one of the plurality of sections ([0011]; [0042]), wherein the plurality of sections are configured for assembly in space to form the assembled reactor ([0019-20], [0043]), and wherein the assembled reactor is configured for sustaining an active fission chain reaction only when all of the plurality of sections are assembled together ([0037], [0039]).
20. Regarding claim 2, Hu further discloses a system wherein contents of at least one of the plurality of sections include at least one of fissile fuel, reactivity control devices, neutron reflectors, neutron moderators, radiation shielding mechanisms, cooling systems, power conversion systems ([0039]: fuel and shielding; [0040]: heat pipes are a cooling system).
21. Regarding claim 3, Hu further discloses a system wherein the plurality of sections are further configured for disassembly in space for being separable for at least one of refueling, decommissioning, and disposal of the system so disassembled ([0045]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON M DAVIS whose telephone number is (571)272-6882. The examiner can normally be reached Monday - Thursday, 7:00 - 5:00 pm ET.
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/SHARON M DAVIS/Primary Examiner, Art Unit 3646