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 1-21 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, 11 and 18 recite “wherein the controlled pressure drop in the exhaust system and in the turbine outlet of the gas turbine engine increases a turbine pressure ratio and/or increases a power output of the gas turbine engine”.
The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Minerals Separation v. Hyde, 242 U.S. 261,270 (1916) which posed the question: is the experimentation needed to practice the invention undue or unreasonable? That standard is still the one to be applied. In re Wands', 858 F.2d 731,737 (Fed. Cir. 1988).
Determining enablement is a question of law based on underlying factual findings. In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991). The determination that "undue experimentation" would have been needed to make and use the claimed invention is not a single, simple factual determination. Rather, it is a conclusion that may be reached by weighing some or all of the following non-exhaustive list of factual considerations: (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. Wands', 858 F.2d at 737.
Here, (B) the nature of the invention relates to the correlation between turbine pressure ratio and power output. (C) the state of the prior art does not disclose an increase in turbine pressure ratio also resulting in an increase in power output. As evidenced in the NASA document included in this action, an increase in turbine pressure ratio results in a decrease in turbine work, which results in a decrease in engine power output. (F) the inventor gives no explanation or direction as to how turbine pressure ratio and power output are positively correlated. (G) No working examples exist satisfying the claim limitation. Therefore, (H) the quantity of experimentation based on the content of the disclosure would be undue because the specification fails to provide an adequate disclosure of how one of ordinary skill in the art can make the invention to perform the desired function. Since no working examples exist and the Applicant has not provided an explanation of the claimed subject, the Examiner finds claims 1, 11 and 18 require undue experimentation.
Therefore, claims 1-21 are not enabled. Accordingly, claims dependent thereon are also not enabled.
Response to Arguments
Applicant's arguments filed 3/23/2026 have been fully considered but they are not persuasive. While the amendments overcome the art of record, they introduce new 112 issues.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Katheryn Malatek whose telephone number is (571)272-5689. The examiner can normally be reached Monday - Thursday, 9 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Devon Kramer can be reached at (571) 272-7118. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERYN A MALATEK/ Primary Examiner, Art Unit 3741
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