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 .
Priority
The present application is a national stage entry of PCT/IB2021/059788 filed 10/23/2021.
Response to Arguments/Amendments
Regarding the Applicant’s statements about the support for the newly amended claims, the Applicant’s citations do not appear to show the newly amended claim limitations, and are therefore unpersuasive. See section 4 below for further details.
EXAMINER’S NOTE
The previous claim set in this case was allowed. However, the current claim set has been amended to introduce new matter. The claims are rejected for that reason (see section 4 below), but are not otherwise rejected under the prior art.
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.
4. Claims 1 – 2, 4 – 7, 9 – 12, 14 - 19 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. The independent claims contain an equation that has been amended from:
a =
2
/
(
1
+
ρ
ω
c
)
E
V
M
R
e
q
(m)
to:
a =
2
/
(
1
+
ρ
ω
c
)
The Examiner notes that these are two different equations, and produce two different values. Using the latter equation would produce a meaningfully different invention than the former. The relevant paragraphs in the original disclosure, paragraphs [0145 – 0152], seem to disclose only the former value for a. It is not clear to the Examiner that the inventor had possession of an invention using the latter value for a at the time of invention. The claims are therefore rejected.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20170288838 A1 - Cariou - EVM
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN STEINER whose telephone number is (571)272-9825. The examiner can normally be reached M - R 08:00 - 16:00; F 08:00 - 12:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Ngo can be reached at 5712723139. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.S./Examiner, Art Unit 2464
/RICKY Q NGO/Supervisory Patent Examiner, Art Unit 2464
Prosecution Insights