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
2. 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.
Claim 1-5, 7-14, 16-18, 21 and 24 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.
Applicant recites “self-verifying that a gap between a splice surface of the splice and each one of the first-structure surface and the second-structure surface is less than or equal to a maximum allowable dimension of the gap by installing the splice” in claim 1 lines 7-9. From a review of the specification, the structure applicant is intending to describe by the term “self-verifying” is unclear and does not appear to be clearly described in the written description.
Applicant has amended claim 1 to include “successful installation of the splice” and “unsuccessful installation of the splice using the verification holes confirms that the dimension of the gap is greater than the maximum allowable dimension”. From a review of the specification, there appears to be no description of the newly recited method steps. The newly recited limitations are therefore considered new matter not supported by the original disclosure as filed.
Claims 2-5, 7-14, 16-18, 21 and 24 are rejected as a result of being dependent on a rejected claim.
4. 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.
Claims 1-5, 7-14, 16-18, 21 and 24 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.
A) Applicant recites “self-verifying that a gap between a splice surface of the splice and each one of the first-structure surface and the second-structure surface is less than or equal to a maximum allowable dimension of the gap by installing the splice” in claim 1 lines 7-9. The structure applicant is intending to describe by the term “self-verifying” is unclear and indefinite.
Claims 2-5, 7-14, 16-18, 21 and 24 are rejected as a result of being dependent on a rejected claim.
Response to Arguments
Applicant's arguments filed 11/12/25 have been fully considered but they are not persuasive. Applicant argues the term “self-verifying” is clear. This is not found to be persuasive. The structure of “self-verifying” is unclear. Applicant has attempted to clarify the self-verifying done by installation of the splice and further defining “successful installation of the splice” and “unsuccessful installation of the splice”. However, applicant has added new matter not supported by the original disclosure as filed, as rejected under 112(a) above.
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 NIRVANA DEONAUTH whose telephone number is (571)270-5949. The examiner can normally be reached Monday-Friday 9am-5pm.
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/NIRVANA DEONAUTH/Primary Examiner, Art Unit 3726
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