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 1-14 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. Instant independent claims 1 and 8 recite the limitations: “determination that the engine operating conditions are satisfactory.” The instant filed disclosure only states that: “Engine operating conditions can include various engine parameters such as, but not limited to, throttle position.” However, the instant disclosure fails to disclose any information and/or definitions in regards to the engine operating conditions operating in a “satisfactory” condition, or, the converse, in an “unsatisfactory” condition. For example, what aspects of a “throttle position” in regards to the engine operation is considered “satisfactory” or “unsatisfactory.” In addition, there may be many other additional operating conditions not disclosed to determine any engine operating conditions being “satisfactory” or “unsatisfactory,” thus overall failing to enable one of ordinary skill in the art to make and/or use the instant claimed invention. Applying the Wands factors (see In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), Wands factor (F), being the amount of direction provided by the inventor, it is clear the instant disclosure fails to provide any direction in ascertaining exactly what engine operating conditions are considered “satisfactory” or “unsatisfactory.” Wands factor (G), being the existence of working examples, the instant disclosure fails to disclose fails to provide any working examples, and/or ranges of values that would be considered “satisfactory” or “unsatisfactory” regarding potentially many engine operating conditions. The sole mention of “throttle position” also does not give any working examples of what “throttle position” would be considered “satisfactory” or “unsatisfactory” in regards to engine operating conditions. Wands factor (H), the quantity of experimentation needed to make or use the instant invention based on the context of the disclosure, it is clear that due to the many types of operating conditions that may be present, in regards to the operating of the engine, there would be undue experimentation for one of ordinary skill in the art to determine all of the possible engine operating conditions, and the appropriate values/limits/thresholds to be deemed “satisfactory” or “unsatisfactory,” with no guarantee of success. All other claims are similarly rejected due to their dependency.
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.
Claim 1-14 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “skipfire” in claims 1 and 8 is used by the claim to mean, based on the instant filed specification, “reduces the frequency and phasing of the main chamber spark events needed to reduce the risk of premature spark plug wear” while the accepted meaning is “an engine technology that maximizes fuel efficiency by dynamically activating or deactivating individual cylinders on a cycle-by-cycle basis.” The term is indefinite because the specification does not clearly redefine the term. Furthermore, there are no details in regards to any ‘frequency’ and/or ‘phasing’ of the main chamber spark events, and exactly how that is directly tied to any alleged ‘premature sparkplug wear, further rendering the claim indefinite. All other claims are similarly rejected due to their dependency from claims 1 and 8.
Instant independent claims 1 and 8 recites the limitations: “determination that the engine operating conditions are satisfactory.” It is unclear as to the metes-and-bounds of what exactly constitutes the “conditions” that must be “satisfactory” in regards to the engine operating, thus rendering the claims indefinite. The instant filed specification only states: “Engine operating conditions can include various engine parameters such as, but not limited to, throttle position.” It is unclear as to what “throttle position” is considered “satisfactory,” and, conversely, unsatisfactory, or potentially other engine operating conditions, which are not disclosed, being “satisfactory” and/or “unsatisfactory,” thus rendering the claims indefinite. All other claims are similarly rejected due to their dependency.
Conclusion
Due to the presence of rejections under 35 U.S.C. 112(a) and (b), a thorough search and consideration of the prior art could not be reasonably made by the Examiner. As such, no prior art rejections could be reasonably made by the Examiner, and is not an indication of allowable subject matter. Once the Applicant has resolved the rejections under 35 U.S.C. 112(a) and (b), another search and consideration of the prior art will be made by the Examiner, potentially resulting in a Final Rejection.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant is invited to review PTO form 892 accompanying this Office Action listing Prior Art relevant to the instant invention cited by the Examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner John Fitzgerald whose telephone number is (571) 272-2843. The examiner can normally be reached on Monday-Friday from 7:00 AM to 3:30 PM E.S.T. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor John Breene, can be reached at telephone number (571) 272-4107. 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. The central 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.
/JOHN FITZGERALD/Primary Examiner, Art Unit 2855