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 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. Independent claims 1, 5, and 7 all require a few elements that are not described in the specification adequately enough to indicate the Applicant truly had possession of the invention at the time of filing. The claims require a determining of axial stress and circumferential stress based on the cylinder information. The cylinder information is mentioned in the claim, but there is nothing that appears to relate the cylinder information to either stress measurement. Then the claims require a correction of the stress at different ratios based on conditions being met. First issue is there are two stresses mentioned, so which stress is “the stress” referring to? Second, how does one correct according to nozzle information? There is no disclosure for how this is specifically done. How is the disclosed nozzle information related to the correction specifically? Without these details, then independent claims 1, 5, and 7 don’t give enough information to indicate the Applicant had possession of the invention as claimed. Since claims 1, 5, and 7 lack an adequate written description, then claims 2-4, 6, and 8-14, which depend either directly or indirectly from one of claims 1, 5, and 7, lack an adequate written description as well.
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 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. Independent claims 1, 5, and 7 all require a few elements that are not described in the specification adequately enough to enable one of ordinary skill in the art to make and/or use the invention. The claims require a determining of axial stress and circumferential stress based on the cylinder information. The cylinder information is mentioned in the claim, but there is nothing that appears to relate the cylinder information to either stress measurement. Thus, how can one even determine the stress values? Then the claims require a correction of the stress at different ratios based on conditions being met. First issue is there are two stresses mentioned, so which stress is “the stress” referring to? Is it the axial stress, the circumferential stress, or the ration of the two stresses together? Second, how does one correct according to nozzle information? What relationship does the nozzle information have with respect to the correction required? There is no disclosure for how this is specifically done. How is the disclosed nozzle information related to the correction specifically? It’s not disclosed in the specification.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(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.
A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557,1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
With respect to the case of the present invention, there isn’t enough direction provided by the inventor (Wands Factor F), there are no working examples by which you can compare the present invention to in order to gain clarity on those portions which are not adequately disclosed (Wands Factor G), and the amount of experimentation required in order to determine how the inventor came up with the results of said equations would be huge (Wands Factor H). For at least these reasons, the claims are not enabled by the disclosure. Since claims 1, 5, and 7 lack enablement, then claims 2-4, 6, and 8-14, which depend either directly or indirectly from one of claims 1, 5, and 7, lack enablement as well.
Conclusion
The present rejection does not contain a prior art rejection, but that is in not meant as an indication of any allowable subject matter in the present application. The current 35 USC 112 issues in the claims actually present an issue with performing an adequate and proper search of the claims in relation to the prior art as it is difficult at this time to determine precisely what the invention is truly doing and how. Should the applicant amend the claims to resolve these issues, then a new search will be conducted and if at that time similar prior art is found and a prior art rejection is made, then that rejection can be made final if the rejection is deemed to be made in view of the newly amended claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODNEY T FRANK whose telephone number is (571)272-2193. The examiner can normally be reached M-F 9am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Macchiarolo can be reached at (571) 272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RODNEY T. FRANK
Examiner
Art Unit 2855
/PETER J MACCHIAROLO/Supervisory Patent Examiner, Art Unit 2855
January 24, 2026