DETAILED ACTION
Examiner has reviewed and accepted the amended claims and remarks filed on 16 October 2025. These amended claims and remarks are the claims and remarks being referred to in the instant Office Action. Examiner acknowledges Claim 4 has been cancelled.
Response to Arguments
Applicant’s arguments with respect to the Drawings have been fully considered and are persuasive. The Objection to the Drawings has been withdrawn.
Applicant’s arguments with respect to Claim 5 have been fully considered and are persuasive. The Objection to Claim 5 has been withdrawn.
Applicant’s arguments with respect to Claims 1 – 3, 5, and 6 have been fully considered and are persuasive. The 112(b) Rejection of Claims 1 – 3, 5, and 6 has been withdrawn.
Applicant's remaining arguments have been fully considered but they are not persuasive.
Regarding Claim 1, Applicant argues the specification does not claim a chemical recipe and discloses the optical property, structural placement and inflow path with respect to the reaction material and is therefore described and enabled. Examiner respectfully disagrees.
An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See MPEP 2163.03.V.
Claim 1 recites a desired result of the reaction material (“maintains an opaque state when oil is not absorbed … and that is converted to a transparent or translucent state when the reaction material absorbs leaked oil and reacts with an absorbed oil”, but the specification fails to sufficiently identify how the how the function is performed or the result is achieved. In this case, the desired result appears to be a material property of the reaction material. The reaction material is not disclosed in the specification. As the material which provides the claimed function/result is not disclosed, Claim 1 fails to provide written description of the claimed invention and the rejection is maintained.
Furthermore, there is undue experimentation with respect to the material of the reaction material. Turning to the Wands factors, no guidance is provided by the applicant with respect to what the material itself is. The only guidance provided is that the material must be moldable under pressure and does not react with any liquid except oil (Page 9, line 7). This guidance is merely a desire of other properties of the material, but does not allow for identification of the material itself. Furthermore, no working examples have been provided by the applicant and none have been located in the art. As such, the enablement rejection of Claim 1 is also maintained.
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 – 3, 5 and 6 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.
Regarding Claim 1, the claim recites “a reaction material that maintains an opaque state when oil is not absorbed by the reaction material and that is converted to a transparent state or a translucent state when the reaction material absorbs leaked oil and reacts with an absorbed oil, thereby realizing leak detection”. The specification discloses the reaction material, which performs the color change, is molded by pressing powder and heating, does not react with any liquid except oil, and alters light which passes through it. However, the specification does not disclose what material(s) the reaction material is made of and Examiner is not aware of one which meets the aforementioned criteria. As such, 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.
Claims dependent upon a rejected claim are therefore rejected as well.
Claims 1 – 3, 5, and 6 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.
Regarding Claim 1, the claim recites “a reaction material that maintains an opaque state when oil is not absorbed by the reaction material and that is converted to a transparent state or a translucent state when the reaction material absorbs leaked oil and reacts with an absorbed oil, thereby realizing leak detection”. The specification discloses the reaction material, which performs the color change, is molded by pressing powder and heating, does not react with any liquid except oil, and alters light which passes through it.
Turning to the Wands factors, no guidance nor examples are provided by the applicant. Furthermore, no material which meets the above criteria has been located in the prior art.
As such, 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 dependent upon a rejected claim are therefore rejected as well.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER MERCADO whose telephone number is (571)270-7094. The examiner can normally be reached Monday - Thursday 9am - 4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Laura Martin can be reached at (571) 272-2160. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALEXANDER A. MERCADO
Primary Examiner
Art Unit 2855
/ALEXANDER A MERCADO/Primary Examiner, Art Unit 2855
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