DETAILED ACTION
(1)
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 . Applicant’s amendment filed February 2, 2026, is entered. Applicant amended claims 1, 6, 8, 12 and 16 and cancelled claims 5 and 11. No new matter is entered. Claims 1-4, 6-10 and 12-20 are pending before the Office for review.
(2)
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 1-4, 6-10 and 12-20 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.
Case law holds that Applicant's specification must be "commensurately enabling [regarding the scope of the claims]." Otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. 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." See MPEP 2164.01. The test for undue experimentation is based on In re Wands, which include, but are not limited to, the following criteria:
(A) The breadth of the claims;
Independent claims 1, 8 and 16 are directed toward a method of fabricating a coverglass on a solar panel comprising vaporizing iron-depleted lunar regolith to provide vaporized transparent silicate and allowing the vaporized transparent silicate to condense onto the solar panel to form the coverglass, wherein the method occurs in a vacuum environment and the solar panel and the iron-depleted lunar regolith are in a line of sight of each other, a method of placing a protective layer on a solar panel comprising arranging iron-depleted electrolyte and a solar panel to be within light of sight of each other, wherein the iron-depleted electrolyte is formed by the electrolysis of molten regolith, the electrolyte is vaporized in a vacuum environment by directing an electron beam onto the iron-depleted electrolyte to produce transparent silicate and the silicate is allowed to condense onto the solar panel to form the protective layer, and a coverglass deposition apparatus comprising a crucible configured to contain iron-depleted electrolyte formed by electrolysis of molten regolith, an electron gun configured to produce a collimated beam of electrons directed onto the iron-depleted electrolyte and a substrate located to receive vaporized transparent silicate resulting from impingement of the collimated beam of electrons onto the iron-depleted electrolyte, wherein the substrate is located within a line of sight of the iron-depleted electrolyte and the crucible, electron gun and the substrate are configured for operation in a vacuum environment. The dependent claims further limits the method to the natural vacuum of the Moon.
The specification indicates the process may provide a method for producing coverglass on the Moon using in-situ resources, the in-situ resources being derived from the Moon. Paragraphs 2, 8 and 12. Although the specification indicates the method would work for in-situ resource utilization on Earth, there is a corresponding lack of disclosure regarding what the starting material resources would be. Examiner understands in-situ resources to exclude lunar regolith, which must be obtained outside of Earth. The disclosed method and apparatus of the specification are designed to address specific problems with the application of lunar regolith as a coverglass material for solar panels – the problem being the presence of iron oxide. Paragraph 14. The specification indicates the process may be performed in the natural vacuum of the Moon or in an artificial vacuum on Earth. The specification asserts the Moon provides a vacuum that is sufficient to allow passage of electrons from the electron gun to the evaporation material.
Accordingly, based on the breadth of the claimed invention and the context of the disclosure, there is parity between the claimed invention and the specification.
(B) The nature of the invention;
The nature of the invention was described in Section (A) above, but will be addressed again briefly. The invention is a method of forming a coverglass or a protective layer on the surface of a solar cell panel and an apparatus for affecting the same, wherein the method utilizes iron-depleted electrolyte obtained from molten lunar regolith, uses an electron beam or heating conditions to vaporize and/or melt the electrolyte to obtain vaporized silicate and then relies on either the natural vacuum of the Moon or a vacuum chamber on Earth to allow the vaporized transparent silicate to condense onto the solar panel to obtain the coverglass or the protective layer.
(C) The state of the prior art;
Schleppi et al., J. Mater. Sci., (2021), 56:12132-12153 teaches a method involving in-situ resource utilization manufacturing of optically transparent glass from lunar regolith simulant. Schleppi teaches that it seems viable to manufacture transparent glass from actual lunar regolith on the lunar surface, but the differences between regolith simulant and actual regolith still need to be explored to determine the strategic possibilities. Abstract. Schleppi’s viability determination is based on several different manufacturing techniques (See Figure 1, for example), but fails to consider the viability of the natural vacuum of the Moon.
Shaw et al., Minerals, 2023, 13, 79 evaluates the kinetics of the vacuum sublimation of the more volatile major oxides found in the lunar regolith, which includes iron oxide. Abstract. Recall, as explained in Sections (A) and (B), the disclosed method, at least in part, relies on sublimation to vaporize the iron-depleted regolith to obtain the transparent silicate vapor. Shaw specifically teaches the sublimation of metals and oxides from complex silicate feedstocks under high vacuum conditions is a phenomenon that has the potential for application in off-Earth resource extraction processes. Page 2, First Paragraph. However, Shaw does acknowledge the access to real lunar regolith is limited and the accuracy of the regolith simulant is unknown. Page 2, Third Paragraph.
(D) The level of one of ordinary skill;
The level of one of ordinary skill in the art is unclear, but that individual would be expected to have experience with both astrometallurgy and solar cells to the extent that the lunar regolith could be properly processed to obtain a transparent silicate that is suitable for use on solar panels.
(E) The level of predictability in the art;
The state of the prior art, summarized above, makes clear the art is viable, but unpredictable. Schleppi acknowledges it may be viable for in-situ processing of lunar regolith on the Moon to produce glass, but the methods and techniques discussed by Schleppi do not utilize vacuum to affect the glass production. Similarly, Shaw acknowledges the sublimation of metals and oxides from complex silicate feedstocks under high vacuum conditions, such as those on the Moon, have the potential for applications in off-Earth resource extraction. Shaw also acknowledges that access to real lunar regolith is limited and the accuracy of the regolith simulant is unknown.
Therefore, a fair reading of the prior art is that some in-situ processing of lunar regolith to produce glass is viable, but the methods that are viable do not include vacuum techniques and the correlation between processing of regolith simulant to test the possible viable methods is not predictive of how lunar regolith would respond to the same methods.
(F) The amount of direction provided by the inventor;
The amount of direction provided by the inventors in the disclosure is minimal. The broad concept of the methods and apparatus are disclosed, but the specific processing conditions – time, temperature, duration, etc., among other processing conditions, is undisclosed and not acknowledged. The direction provided by the inventors is conceptual of how the process might be conducted, but is insufficient in light of both the complexity and unpredictability of the art.
(G) The existence of working examples; and
The disclosure lacks any working examples.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
An analysis of the above-discussed factors supports a finding that the claimed invention is not enabled because an individual ordinarily skilled in the art would not be able to make or use the invention without undue experimentation based on the content of the disclosure in the context of the unpredictability and complexity of the art.
(3)
Response to Arguments
Applicant’s arguments are not persuasive. Applicant’s arguments are addressed.
Applicant first argues the enablement requirement is satisfied because the invention is amended to include the deposition architecture, such as that the panel/substrate and electrolyte are within a line of sight of one another, that the method or apparatus is disposed within a vacuum environment and that the iron-depletion is less than about 0.5% iron by weight.
Examiner disagrees with Applicant’s position. Although there is parity between the disclosure and the claims, the disclosure itself lacks any explanation or context as to how the method can be performed without undue experimentation. There is no description of deposition conditions, parameters, etc. that would allow one ordinarily skilled in the art to practice the invention without undue experimentation. Furthermore, given that it is within the scope of the claimed invention that the method can be performed on the Moon, there is a critical lack of information regarding how this specific feature of the claimed invention is performed.
Applicant’s statement regarding in-situ resources is also incorrect. Examiner’s statement refers to the method when it is performed on Earth, as is clearly stated. Material obtained from the Moon is not an in-situ resource on Earth and the disclosure lacks explanation as to what such a resource would be on Earth.
Applicant’s arguments responding to the state of the prior art portion of the rejection are not persuasive. Applicant argues the amended claims are narrowly directed toward a specific deposition configuration. Although Examiner acknowledges the claims are narrower than those previously-presented, Examiner disagrees that the claims are directed toward a specific deposition configuration.
The cited prior art indicates this type of deposition method may be feasible, but needs to be explored further to determine the strategic possibilities. Schleppi, Abstract. Additionally, Schleppi’s determination fails to consider the viability of the natural vacuum of the Moon and also establishes that the differences between lunar regolith simulant and actual lunar regolith still need to be explored. Examiner understands Schleppi’s disclosure to establish that this area of the art is relatively unknown. Accordingly, the corresponding lack of disclosure regarding any descriptive methodology of how the invention is practiced is troubling. It’s not clear, based on the disclosure and the present record, that Applicant’s invention can be practiced without undue experimentation based on the state of the prior art.
Applicant’s arguments regarding the level of one ordinarily skilled in the art are not persuasive. Applicant argues it is within this skill level to select operating parameters for vacuum deposition, such as beam power, distance, exposure time, deposition rate, and target state. Examiner disagrees. This determination is made in consideration with the state of the prior art. Applicant’s disclosure lacks any discussion as to these process parameters. Given the state of the art, as explained above, it would require undue experimentation for one ordinarily skilled in the art to essentially re-invent Applicant’s method based on a concept of performing the deposition on the Moon or in a vacuum environment.
Applicant’s arguments regarding the level of predictability in the art is not persuasive. The cited prior art establishes that this is a relatively unpredictable feed and that it’s unclear how the material recited in the claimed invention would respond under vacuum conditions. Applicant’s answer to that is to state this variability is attributable to optimization and that the invention can be practiced without undue experimentation. Examiner disagrees. The disclosure is lacking as to any detail at even the most basic level regarding process parameters for this method, which, given the state of the prior art, supports a conclusion that the invention cannot be practiced without undue experimentation.
Regarding the amount of direction provided by the inventor and the working examples, Examiner agrees that working examples are not required. However, given the state of the art and it’s relative unpredictability, working examples would be beneficial for supporting a conclusion that the invention does not require undue experimentation.
Applicant’s position that the direction provided by the inventor is sufficient and that a position to the contrary is an “improper demand for a fully optimized recipe” is not supported by the record. The disclosure and the record, when considered in combination with the state of the art, as established by the prior art of record, supports a conclusion that the invention cannot be practiced without undue experimentation.
Therefore, the rejection is maintained.
(4)
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 ELI S MEKHLIN whose telephone number is (571)270-7597. The examiner can normally be reached Monday-Friday 7:00 am to 5:00 pm EST.
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/ELI S MEKHLIN/Primary Examiner, Art Unit 1759