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 .
Status of Claims
This action is in reply to the communication filed on . The disposition of claims is as follows:
Pending: 13, 15-17
Rejected: 13, 15-17
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on has been entered.
Response to Arguments and Amendments
Applicant's arguments filed have been fully considered. The Examiner proceeds below with a response.
Regarding Claims rejected under 35 U.S.C. § :
Applicant’s arguments have been considered but are moot in view of claim cancellation.
Regarding Claims rejected under 35 U.S.C. § :
Applicant’s arguments have been considered but are moot in view of claim cancellation.
Regarding Claims rejected under 35 U.S.C. § :
Applicant's arguments have been fully considered and are persuasive.
Regarding Claims rejected under 35 U.S.C. § :
Applicant’s arguments have been considered but are moot in view of claim cancellation and claim amendments.
Claim Interpretation
Regarding Claim ,
The claim recites “” in Lines .
Consistent with MPEP § 2111, the Examiner interprets this limitation as requiring a control unit that is capable of performing the recited control functions that follow in Lines . The Examiner notes specifically that instant specification describes the claimed “control unit” as being able to emit control signals and determine parameters. Thus, the claimed control unit has been interpreted to include sufficient programming or control logic to execute the recited functions as a generic unprogrammed control unit would not be capable of performing the claimed functional limitation. See at least: Intel Corp. v. U.S. Int'l Trade Comm'n, 846 F.2d 821, 832 (Fed. Cir. 1991), in which the court held "[s]ince hardware cannot meet these limitations in the absence of enabling software, the claims are properly construed as claiming an apparatus comprising a combination of hardware and software capable of practicing the claim limitations." See MPEP § 2114 (IV).
Regarding Claim ,
The claim recites “” in Line .
Consistent with MPEP § 2111, the Examiner interprets this limitation as requiring a control unit that is capable of performing the recited control functions that follow in Lines . The Examiner notes specifically that instant specification describes the claimed “control unit” as being able to emit control signals and determine parameters. Thus, the claimed control unit has been interpreted to include sufficient programming or control logic to execute the recited functions as a generic unprogrammed control unit would not be capable of performing the claimed functional limitation. See at least: Intel Corp. v. U.S. Int'l Trade Comm'n, 846 F.2d 821, 832 (Fed. Cir. 1991), in which the court held "[s]ince hardware cannot meet these limitations in the absence of enabling software, the claims are properly construed as claiming an apparatus comprising a combination of hardware and software capable of practicing the claim limitations." See MPEP § 2114 (IV).
Regarding Claim ,
The claim recites “” in Lines .
Consistent with MPEP § 2111, the Examiner interprets this limitation as requiring a control unit that is capable of performing the recited control functions that follow in Lines . The Examiner notes specifically that instant specification describes the claimed “control unit” as being able to emit control signals and determine parameters. Thus, the claimed control unit has been interpreted to include sufficient programming or control logic to execute the recited functions as a generic unprogrammed control unit would not be capable of performing the claimed functional limitation. See at least: Intel Corp. v. U.S. Int'l Trade Comm'n, 846 F.2d 821, 832 (Fed. Cir. 1991), in which the court held "[s]ince hardware cannot meet these limitations in the absence of enabling software, the claims are properly construed as claiming an apparatus comprising a combination of hardware and software capable of practicing the claim limitations." See MPEP § 2114 (IV).
Claim Rejections - 35 USC § 112(a)
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 13 and 15-17 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) contain(s) 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claim ,
The claim recites “.”
The specification does not provide adequate written description of how . There is no written content as to how or what specific algorithms are performed (i.e. formulas, algorithms, sequence of mathematical steps, process of determination, for example)
To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have “possession,” the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In addition, the specification must “demonstrate that the patentee possessed the full scope of the invention recited in [the] claim.” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id. This can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. Additionally, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019).
At best, the Specification vaguely and generically describes the following:
[0094 The control unit 21 controls the valve device 20 and the ignition device 15 as a function of a parameter indicating a position or movement of the piston 5, in particular in relation to a complete thermodynamic cycle of the engine 2.
[0099] For example, the parameter could be a rotation angle of the engine shaft or a rotation angle of the piston rod 6, for example of the foot of the piston rod 6. Alternatively, the parameter could be a time, for example assessed as a function of the angular speed of the engine shaft, i.e. the parameter could be a function of the time and angular speed or a time as a function of the angular speed.
[0103] The control unit 21 can determine the parameter in many ways, for example by acquiring one or more quantities indicating the parameter, or based on the control signals that the same control unit 21 emits to control the engine 2.
[0104] For example, the control unit 21 could acquire or estimate the angular speed of the engine shaft and calculate the parameter as a function of the angular speed of the engine shaft.
[0105] In particular, if the parameter were the angle of rotation of the engine shaft, the control unit 21 would calculate an integral of the angular speed of the engine shaft to obtain the parameter.
[0106] The control unit 21 is configured to drive the ignition device 15, i.e. to ignite the mixture in the pre-chamber 12, when the parameter indicates that the piston 5 is at the ignition point.
[0107] The ignition point can be fixed and predetermined or adjustable, for example as a function of operating conditions in the engine 2 or motor vehicle 1. The ignition point or its link with the parameter is stored or calculated by the control unit 21.
[0108] The control unit 21 is configured to drive or conduct the valve device 20 in the open configuration before the piston 5 has reached the ignition point, i.e. before the parameter indicates that the ignition point has been reached.
[0112] The opening point or its link with the parameter may be pre-determined and/or stored by the control unit 21.
[0115] The opening point is preferably in the last three quarters of the stroke of the piston 5 towards the upper dead centre or, more specifically, in the last four ninths of the stroke of the piston 5 towards the upper dead centre.
[0116] In particular, the control unit 21 holds the valve device 20 in the open configuration until the parameter indicates that the piston is at the last point, i.e. a closing point, before having reached the ignition point or at the ignition point.
[0117] A distance between the closing point and the ignition point is preferably smaller than or equal to a quarter of the stroke of the piston 5, or, more preferably, smaller than or equal to a sixth of the stroke of the piston 5, or, even more preferably, smaller than or equal to a ninth of the stroke of the piston 5.
[0118] The closing point or its link with the parameter may be pre-determined and/or stored by the control unit 21.
[0122] The control unit 21 is preferably configured to normally hold (i.e. in conditions other than those described above) the valve device 20 in the closed configuration, i.e. to drive the valve device 20 so as to block the flow of gas through the valve device 20 itself, thus completely blocking the inlet end 17.
[0123] The control unit 21 is specifically configured to drive or guide the valve device 20 into the closed configuration when the parameter indicates that the piston 5 is at the ignition point or that the piston 5 has exceeded the closing point.
See at least: Instant PgPub ¶¶, 0112, 0116-0118, 0122-0123
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs () and perform the following functions (.) As noted in the MPEP, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (See MPEP § 2161.01 I). In particular, the MPEP requires description of “an algorithm or steps/procedure taken to perform the function."
Claimed subject matter should be described in the specification in such a manner as to enable one of ordinary skill in the art to make and use the invention. The specification does not at all describe the steps / procedure involved in which would necessarily involve some calculations or steps that have not been described.
It is noted that this is not an enablement rejection. Applicant’s failure to disclose any meaningful structure/algorithm as to how this value is generated raises questions whether applicant truly had possession of this feature at the time of filing.
Regarding Claim ,
The claim recites “.”
The specification does not provide adequate written description of how . There is no written content as to how or what specific algorithms are performed (i.e. formulas, algorithms, sequence of mathematical steps, process of determination, for example)
To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have “possession,” the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In addition, the specification must “demonstrate that the patentee possessed the full scope of the invention recited in [the] claim.” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id. This can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. Additionally, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019).
At best, the Specification vaguely and generically describes the following:
[0094 The control unit 21 controls the valve device 20 and the ignition device 15 as a function of a parameter indicating a position or movement of the piston 5, in particular in relation to a complete thermodynamic cycle of the engine 2.
[0099] For example, the parameter could be a rotation angle of the engine shaft or a rotation angle of the piston rod 6, for example of the foot of the piston rod 6. Alternatively, the parameter could be a time, for example assessed as a function of the angular speed of the engine shaft, i.e. the parameter could be a function of the time and angular speed or a time as a function of the angular speed.
[0103] The control unit 21 can determine the parameter in many ways, for example by acquiring one or more quantities indicating the parameter, or based on the control signals that the same control unit 21 emits to control the engine 2.
[0104] For example, the control unit 21 could acquire or estimate the angular speed of the engine shaft and calculate the parameter as a function of the angular speed of the engine shaft.
[0105] In particular, if the parameter were the angle of rotation of the engine shaft, the control unit 21 would calculate an integral of the angular speed of the engine shaft to obtain the parameter.
[0106] The control unit 21 is configured to drive the ignition device 15, i.e. to ignite the mixture in the pre-chamber 12, when the parameter indicates that the piston 5 is at the ignition point.
[0107] The ignition point can be fixed and predetermined or adjustable, for example as a function of operating conditions in the engine 2 or motor vehicle 1. The ignition point or its link with the parameter is stored or calculated by the control unit 21.
[0108] The control unit 21 is configured to drive or conduct the valve device 20 in the open configuration before the piston 5 has reached the ignition point, i.e. before the parameter indicates that the ignition point has been reached.
[0112] The opening point or its link with the parameter may be pre-determined and/or stored by the control unit 21.
[0115] The opening point is preferably in the last three quarters of the stroke of the piston 5 towards the upper dead centre or, more specifically, in the last four ninths of the stroke of the piston 5 towards the upper dead centre.
[0116] In particular, the control unit 21 holds the valve device 20 in the open configuration until the parameter indicates that the piston is at the last point, i.e. a closing point, before having reached the ignition point or at the ignition point.
[0117] A distance between the closing point and the ignition point is preferably smaller than or equal to a quarter of the stroke of the piston 5, or, more preferably, smaller than or equal to a sixth of the stroke of the piston 5, or, even more preferably, smaller than or equal to a ninth of the stroke of the piston 5.
[0118] The closing point or its link with the parameter may be pre-determined and/or stored by the control unit 21.
[0122] The control unit 21 is preferably configured to normally hold (i.e. in conditions other than those described above) the valve device 20 in the closed configuration, i.e. to drive the valve device 20 so as to block the flow of gas through the valve device 20 itself, thus completely blocking the inlet end 17.
[0123] The control unit 21 is specifically configured to drive or guide the valve device 20 into the closed configuration when the parameter indicates that the piston 5 is at the ignition point or that the piston 5 has exceeded the closing point.
See at least: Instant PgPub ¶¶, 0112, 0116-0118, 0122-0123
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs () and perform the following functions (.) As noted in the MPEP, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (See MPEP § 2161.01 I). In particular, the MPEP requires description of “an algorithm or steps/procedure taken to perform the function."
Claimed subject matter should be described in the specification in such a manner as to enable one of ordinary skill in the art to make and use the invention. The specification does not at all describe the steps / procedure involved in which would necessarily involve some calculations or steps that have not been described.
It is noted that this is not an enablement rejection. Applicant’s failure to disclose any meaningful structure/algorithm as to how this value is generated raises questions whether applicant truly had possession of this feature at the time of filing.
Regarding Claim ,
The claim recites “.”
The specification does not provide adequate written description of how . There is no written content as to how or what specific algorithms are performed (i.e. formulas, algorithms, sequence of mathematical steps, process of determination, for example)
To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have “possession,” the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In addition, the specification must “demonstrate that the patentee possessed the full scope of the invention recited in [the] claim.” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id. This can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. Additionally, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019).
At best, the Specification vaguely and generically describes the following:
[0094 The control unit 21 controls the valve device 20 and the ignition device 15 as a function of a parameter indicating a position or movement of the piston 5, in particular in relation to a complete thermodynamic cycle of the engine 2.
[0099] For example, the parameter could be a rotation angle of the engine shaft or a rotation angle of the piston rod 6, for example of the foot of the piston rod 6. Alternatively, the parameter could be a time, for example assessed as a function of the angular speed of the engine shaft, i.e. the parameter could be a function of the time and angular speed or a time as a function of the angular speed.
[0103] The control unit 21 can determine the parameter in many ways, for example by acquiring one or more quantities indicating the parameter, or based on the control signals that the same control unit 21 emits to control the engine 2.
[0104] For example, the control unit 21 could acquire or estimate the angular speed of the engine shaft and calculate the parameter as a function of the angular speed of the engine shaft.
[0105] In particular, if the parameter were the angle of rotation of the engine shaft, the control unit 21 would calculate an integral of the angular speed of the engine shaft to obtain the parameter.
[0106] The control unit 21 is configured to drive the ignition device 15, i.e. to ignite the mixture in the pre-chamber 12, when the parameter indicates that the piston 5 is at the ignition point.
[0107] The ignition point can be fixed and predetermined or adjustable, for example as a function of operating conditions in the engine 2 or motor vehicle 1. The ignition point or its link with the parameter is stored or calculated by the control unit 21.
[0108] The control unit 21 is configured to drive or conduct the valve device 20 in the open configuration before the piston 5 has reached the ignition point, i.e. before the parameter indicates that the ignition point has been reached.
[0112] The opening point or its link with the parameter may be pre-determined and/or stored by the control unit 21.
[0115] The opening point is preferably in the last three quarters of the stroke of the piston 5 towards the upper dead centre or, more specifically, in the last four ninths of the stroke of the piston 5 towards the upper dead centre.
[0116] In particular, the control unit 21 holds the valve device 20 in the open configuration until the parameter indicates that the piston is at the last point, i.e. a closing point, before having reached the ignition point or at the ignition point.
[0117] A distance between the closing point and the ignition point is preferably smaller than or equal to a quarter of the stroke of the piston 5, or, more preferably, smaller than or equal to a sixth of the stroke of the piston 5, or, even more preferably, smaller than or equal to a ninth of the stroke of the piston 5.
[0118] The closing point or its link with the parameter may be pre-determined and/or stored by the control unit 21.
[0122] The control unit 21 is preferably configured to normally hold (i.e. in conditions other than those described above) the valve device 20 in the closed configuration, i.e. to drive the valve device 20 so as to block the flow of gas through the valve device 20 itself, thus completely blocking the inlet end 17.
[0123] The control unit 21 is specifically configured to drive or guide the valve device 20 into the closed configuration when the parameter indicates that the piston 5 is at the ignition point or that the piston 5 has exceeded the closing point.
See at least: Instant PgPub ¶¶, 0112, 0116-0118, 0122-0123
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs () and perform the following functions (.) As noted in the MPEP, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (See MPEP § 2161.01 I). In particular, the MPEP requires description of “an algorithm or steps/procedure taken to perform the function."
Claimed subject matter should be described in the specification in such a manner as to enable one of ordinary skill in the art to make and use the invention. The specification does not at all describe the steps / procedure involved in which would necessarily involve some calculations or steps that have not been described.
It is noted that this is not an enablement rejection. Applicant’s failure to disclose any meaningful structure/algorithm as to how this value is generated raises questions whether applicant truly had possession of this feature at the time of filing.
Regarding Claims 16,
The claim is dependent from claim 15, such that claims 16 also fais to comply with the written description requirement andis rejected for at least the same reasons that claim 15 is rejected.
Terminology
The Examiner notes that the following terms are utilized in Applicant’s specification as follows:
:
See Instant PgPub: ¶¶
Special Definitions for Claim Language - MPEP § 2111.01(III)-(IV)
No special definitions are seen as present in the specification regarding the language used in the claims. Consequently, the words and phrases of the claims are given the plain meaning to a person of ordinary skill in the art. (See MPEP §§ 2173.01, 2173.05(a), and 2111.01).
If special definitions are present, Applicant should bring them to the attention of the Examiner and the prosecution history in the next response.
To date, Applicant has provided no indication of special definitions.
Examiner Interviews
Regular Examiner Interview Requests:
Pursuant to USPTO Guidance, one Examiner interview per round of prosecution is available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant may call Examiner Reinbold directly at 313-446-6607 (preferred) or use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Logan Kraft, can be reached on 571-270-5065. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Additional Examiner Interview Requests:
If Applicant needs more than one Examiner interview during a single round of prosecution, applicant may request approval for additional examiner interview(s) from Examiner Reinbold’s Supervisory Patent Examiner (SPE), Logan Kraft, who can be reached at 571-270-5065.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT A REINBOLD whose telephone number is (313)446-6607. The examiner can normally be reached on MON - FRI: 8AM - 5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Logan Kraft, can be reached on (571)270-5065. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant may call Examiner Reinbold directly at (313)446-6607 (preferred) or use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/SCOTT A REINBOLD/Primary Examiner, Art Unit 3747
Prosecution Insights