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 .
This action is in response to the communication filed 6/5/2026.
Response to Arguments
Applicant's arguments filed 6/5/2026 have been fully considered but they are not persuasive.
With regard to the arguments on page 6 directed towards the previous Drawing objection,
This objection is withdrawn in view of applicant’s amendment
With regard to the arguments on page 6 directed towards the previous 112 rejections,
The Examiner respectfully notes that applicant’s amendments do not reasonably address or overcome the previously noted issues. Whether claimed as a conversion system or a means for conversion, applicant does not reasonably disclose the manner in which this conversion is implemented, as applicant does not reasonably disclose any device capable of such conversion, and does not reasonably disclose the manner in which any conversion is implemented. No specific arguments are presented, and applicant is therefore respectfully directed to the rejections found below.
With regard to the arguments on pages 6-12 directed towards the prior art rejections,
Initially, applicant argues that Brandestini et al. (Brandestini) (US 2013/0015849 A1) does not disclose certain claim features without any specific arguments. The Examiner respectfully disagrees and directs applicant’s attention to the detailed rejection found below explaining why the prior art discloses the claim features.
Applicant then argues that the coils of Brandestini merely enlarge the measuring area and that no coils are disclosed as being separate from the brake disk to as to form a reference branch isolated from the influence of the measured element. The Examiner respectfully disagrees as Brandestini does disclose coils that are separate from the brake disk, and that the claims does not recite nor require a reference branch isolated from the influence of the measured element.
As to applicant’s first point, the Examiner respectfully notes that the measurement coils at issue are not part of the brake disk, and are instead part of the measurement device (1) that is placed onto the brake disk to test the disk. This is explained in paragraph [0037] which explains that a user can place the housing (1) against the brake disk 4 as seen in Figure 2, and that measurement is carried out by one or more coils (Paragraph [0038]). As such, what is being disclosed is a set of coils, part of a measurement device in housing (1), that are not part of the brake disk, and are both placed on and subsequently moveable away from the brake disk after testing.
As to applicant’s second point, the coils do not claim or recite any reference branch isolated from the influence of the measured element. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The prior art is only required to meet those features actually recited in the claims, and the prior art does disclose such features for the reasons explained above and in the rejection below.
Applicant then argues that the parallel electrical connections discussed in the Office Action merely relate to the common electrical supply of the plurality of coils 15 and cannot reasonably be equated with the very specific four-coil differential architecture positively recited in claim 1. The Examiner respectfully disagrees.
The Examiner again respectfully notes that the prior art is only required to meet that which is claimed, and no “differential architecture” is recited in the claims. Instead, as noted even in the arguments, the coils are merely claimed to have various terminals connected to various coils. The prior art also has such terminals that are also connected in the claimed manner. It does not matter that the terminals are connected to other elements or are not connected in the specific manner disclosed by applicant. Instead, and as an example, when applicant claims the second terminal of the second coil being connected to the first terminal of the third coil, all that is required is that these two coils be connected where a second terminal of the second coil being connected to the first terminal of the third coil.
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As seen above, the second terminal of the second coil is connected to both the first and second terminals of the third coil, because they are electrically connected to each other. While applicant may intend a more specific interpretation, where these terminals are directly physically connected, for example, the claims do not recite nor require such a feature.
Applicant then argues that the prior art does not disclose certain features from Claim 1 but does not provide any specific arguments. The Examiner respectfully disagrees and directs applicant’s attention to the rejection found below that explains why the prior art discloses such features.
Applicant then argues that Christ et al. (Christ) (US 2004/0124087 A1) fails to disclose the argued claim features, but the Examiner respectfully notes that Christ is not asserted to disclose the argued features, and instead Brandestini discloses those features as explained above.
Applicant then argues that the combination of the prior art references does not disclose the very specific architecture of Claim 1, but the Examiner again respectfully notes that no first measurement branch is claimed, and no differential reference architecture is claimed. Instead, the claims require four coils, connected in any reasonable manner, and the third and fourth coil are able to moved away from the receiving area of the element. The prior art does disclose this feature as explained above, and an electrical connection between element is still a connection between those elements. Applicant’s claims do not reasonably limit any such connection, and thus such an interpretation is reasonable.
Applicant then argues that various technical advantages are provided that are not discussed or suggested in the prior art. The Examiner respectfully disagrees with applicant. First, the argued “technical advantages” are not found in the disclosure, and these arguments are therefore attorney argument that is unsupported by evidence, but where evidence is necessary (see MPEP 2145(I)). Second, even if these advantages existed, applicant does not reasonably demonstrate or explain why the prior art, being similar to that of applicant, would not have these advantages. Lastly, such advantages are at most secondary considerations, and do not reasonably rebut the prime facie obviousness presented in the rejections found below.
Applicant then notes that the embodiment involves a differential measurement thus providing a more accurate measurement, but the Examiner respectfully disagrees. First, because the claims do not recite any differential measurement, they do not reasonably capture any “more accurate measurement.” Second, such a feature does not reasonable establish support for the argued technical advantages, as being more accurate does not mean “improved isolation,” as argued, for example. Third, applicant does not reasonably explain why the prior art, again being similar to that of applicant, would not be more accurate than other systems. Fourth, applicant does not reasonably categorize what is meant by more accurate in terms of what this system is more accurate than. Meaning, both the prior art and the instant application may be more accurate than the same referenced systems, thereby rending any accuracy argument respectfully moot. Lastly, such a statement from the disclosure does not reasonably rebut the prime facie obviousness rejection. All patent applications have a presumed benefit or advantage, and thus merely because one is identified does not rebut a prime facie obviousness rejection when the combination presented would still have been obvious.
Applicant then argues that the prior art does not recognize the problem solved by the present application, but the Examiner respectfully notes that there is no requirement that the prior art make such a recognition. As explained in MPEP 2144(IV), “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).”
As such, the Examiner respectfully disagrees with applicant.
Claim Interpretation
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a conversion system configured to convert” in claim 1, and “the diamagnetism measurement means” of Claim 5.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
The phrase “a conversion system configured to convert” in claim 1 does not reasonably invoke any specific structure that would reasonably structurally limit what the system is, and thus reciting a measuring system is a generic placeholder, similar to reciting “means.” Because applicant follows this generic placeholder with functional language, it invokes 112(f).
Similarly, the “the diamagnetism measurement means” in claim 5 does not reasonably invoke any specific structure that would reasonably structurally limit what the system is, and thus reciting a measuring system is a generic placeholder, similar to reciting “means.” Because applicant follows this generic placeholder with functional language, it invokes 112(f).
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 1-5 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.
As to Claim 1,
The phrase “a conversion system configured to convert the diamagnetism measured into an oxidation measurement” on lines 5-6 lacks proper written description and introduces new matter.
1) As to new matter, applicant does not disclose a conversion system configured to convert the diamagnetism as claimed. Applicant does not identify any such system in the disclosure, and the Examiner respectfully notes that no such system is disclosed. There is no combination of structure and functional ability disclosure to reasonably be a conversion system. Instead, applicant does state that the means for conversion can include a table or curve, but a table or curve are not reasonably a “conversion system configured convert the diamagnetism.” A table, for example can be used by something else for conversion, but it itself cannot perform conversion and a person of ordinary skill in the art would not reasonably view a table as an actual system that is configured to perform conversion as claimed. This phrase therefore introduces new matter as no such conversion system is disclosed that is reasonably has the functional ability to convert as claimed.
2) As to written description, as evidenced by Claim 4, the conversion system configured to convert diamagnetism into oxidation includes an empirical conversion footprint, and/or a theoretical or empirical law establishing an equivalence between diamagnetism and oxidation of the element. However, the original disclosure does not reasonably explain or establish any of the above such that a person of ordinary skill in the art would reasonably recognize the manner in which applicant is implementing the claim feature in order to demonstrate possession.
Unlike enablement which addresses whether a person of ordinary skill in the art could reasonably figure out a way to implement a claim feature without undue experimentation, the written description inquiry addresses whether such a person would reasonably recognize the manner that applicant is implementing a claim feature so as to demonstrate possession. Meaning, the written description inquiry addresses whether applicant has provided enough detail such that person of ordinary skill in the art would reasonably recognize what applicant is doing and then be able to implement such a feature using the knowledge of one of ordinary skill in the art. Here, applicant does not reasonably explain the manner in which applicant implements the a conversion system configured to convert the diamagnetism measured into an oxidation measurement with sufficient explanation to reasonably demonstrate possession. For example, the original disclosure is completely silent about what an empirical conversion footprint is or the manner in which applicant implements such a feature to make the claimed conversion. Similarly, applicant does not provide any theoretical or empirical law that applicant uses for such a conversion, nor identify any conventional law that applicant intends to use. Note that whether such a law does exist does not reasonably establish proper written description unless applicant reasonably identifies such a law and provides some reasonable explanation as to the manner in which it issued. The instant application is completely silent as to any law, and is completely silent as to any processing device that would reasonably be capable of implementing such a law. Furthermore, claiming and disclosing that something is “theoretical” does not reasonably establish that the law would even exist. Whether relying upon something conventional or something invented by applicant, such features must be more than mere theories and must actually be reasonably explained such that a person of ordinary skill in the art can definitely use such a feature and would recognize the manner in which such a feature can be used in order to establish proper written description.
Lastly, the original disclosure makes mention of a table, but no such table is reasonably disclosed or explained to allow for any type of convention, and furthermore, a table by itself is not reasonably a “conversion system configured to convert,” as it itself is not reasonably capable of any type of conversion. While a device such a processor can use a look up table to implement a conversion, it is the processor itself that would perform the conversion, and not the table. As noted above, applicant’s disclosure is completely silent with regard to any processing device that would be reasonably capable of any type of conversion, and a person of ordinary skill in the art would not reasonably recognize the manner in which applicant is implementing the above claimed conversion system configured to convert in order to demonstrate possession. As such, this phrase lacks proper written description.
As to Claim 4,
The phrase “the conversion system is configured to convert the diamagnetism measurement into an oxidation measurement based on at least one of an empirical conversion footprint, a theoretical establishing an equivalence between diamagnetism of the element and oxidation, or an empirical law establishing an equivalence between diamagnetism of the element and oxidation of the element” on lines 1-7 introduces new matter and lacks proper written description.
1) As to new matter, the original disclosure does not disclose any conversion system that is configured to convert the diamagnetism into an oxidation measurement using any of the above claim features. There is no combination of structure and functional ability disclosure to reasonably be a conversion system, or one that has the configuration to perform a conversion based on any of the above features. Instead, applicant does state that the means for conversion can include a table or curve, but a table or curve are not reasonably a “conversion system configured convert the diamagnetism.” A table, for example can be used by something else for conversion, but it itself cannot perform conversion and a person of ordinary skill in the art would not reasonably view a table as an actual system that is configured to perform conversion as claimed. This phrase therefore introduces new matter as no such conversion system is disclosed that is reasonably has the functional ability to convert as claimed.
Additionally, the original claim recited that the conversion itself “comprised,” and thus included the above features of an empirical conversion footprint and/or a theoretical or empirical law. Applicant has changed that to now state that any conversion is “based on” at least one of these features. Being based on a footprint or law is not the same as comprising such a footprint or law. When a feature is based on one of these feature, the claim scope is such that this feature uses, but is not limited to and does not itself include or comprise any of these claim features. However, claiming that the conversion “comprises” does mean that the conversion itself includes can reasonably be one of these features. Claiming that this conversion is “based on” is not the same as what was originally disclosed, and therefore introduces new matter, because something that is “based on” an equation, for example, does not necessarily comprise that equation, and instead merely uses it or bases a result on that equation. Such a feature therefore introduces new matter.
2) As to written description, as claimed above, the conversion system is claimed to be configured to convert the diamagnetism into oxidation based on at least one of an empirical conversion footprint, a theoretical establishing an equivalence between diamagnetism and oxidation of the element, or empirical law establishing an equivalence between diamagnetism and oxidation of the element. However, the original disclosure does not reasonably explain or establish any of the above such that a person of ordinary skill in the art would reasonably recognize the manner in which applicant is implementing the claim feature in order to demonstrate possession.
Unlike enablement which addresses whether a person of ordinary skill in the art could reasonably figure out a way to implement a claim feature without undue experimentation, the written description inquiry addresses whether such a person would reasonably recognize the manner that applicant is implementing a claim feature so as to demonstrate possession. Meaning, the written description inquiry addresses whether applicant has provided enough detail such that person of ordinary skill in the art would reasonably recognize what applicant is doing and then be able to implement such a feature using the knowledge of one of ordinary skill in the art. Here, applicant does not reasonably explain the manner in which applicant implements the conversion system configured to convert the diamagnetism measured into an oxidation measurement with sufficient explanation to reasonably demonstrate possession. For example, the original disclosure is completely silent about what an empirical conversion footprint is or the manner in which applicant implements such a feature to make the claimed conversion. Similarly, applicant does not provide any theoretical or empirical law that applicant uses for such a conversion, nor identify any conventional law that applicant intends to use. Note that whether such a law does exist does not reasonably establish proper written description unless applicant reasonably identifies such a law and provides some reasonable explanation as to the manner in which it issued. The instant application is completely silent as to any law, and is completely silent as to any processing device that would reasonably be capable of implementing such a law. Furthermore, claiming and disclosing that something is “theoretical” does not reasonably establish that the law would even exist. Whether relying upon something conventional or something invented by applicant, such features must be more than mere theories and must actually be reasonably explained such that a person of ordinary skill in the art can definitely use such a feature and would recognize the manner in which such a feature can be used in order to establish proper written description.
Lastly, the original disclosure makes mention of a table, but no such table is reasonably disclosed or explained to allow for any type of convention, and furthermore, a table by itself is not reasonably a “conversion system configured to convert,” as it itself is not reasonably capable of any type of conversion. While a device such a processor can use a look up table to implement a conversion, it is the processor itself that would perform the conversion, and not the table. As noted above, applicant’s disclosure is completely silent with regard to any processing device that would be reasonably capable of any type of conversion, and a person of ordinary skill in the art would not reasonably recognize the manner in which applicant is implementing the above claimed conversion system configured to convert in order to demonstrate possession. As such, this phrase lacks proper written description.
As to Claim 5,
The phrase “A method for measuring oxidation of an element comprising a carbon-carbon composite, the method comprising providing the device according to claim 1: - calibrating the device with a non-oxidized element and a highly oxidized element; - moving the device closer to the element; - activating the diamagnetism measurement means; and - converting the diamagnetism measurement into an oxidation measurement” on lines 1 to the end lacks proper written description and introduces new matter.
As to New Matter,
The claim combination now recites both a diamagnetism measurement means and a measurement system, but where the original disclosure does not disclose two distinct measurement means/systems as claimed. The combination of these features therefore introduces new matter.
As to Written Description,
1) Applicant claims “calibrating the device with a non-oxidized element and a highly oxidized element,” but the original disclosure does not reasonably disclose the manner in which any calibration is implemented. While the original disclosure does state that reference elements make it possible to create operating threshold values, applicant does not provide any explanation as to the manner that these thresholds or reference elements are used for any calibration. The original disclosure is completely silent as to any calibration process, such as what is done with any reference elements of thresholds. A person of ordinary skill in the art would not reasonably recognize the manner in which applicant performs the claimed calibration to thereby establish possession of the claim feature.
2) Applicant claims “moving the device closer to the element,” but the original disclosure is completely silent as to what this process entails and the manner in which it is implemented. Applicant does not disclose any structure or feature that is reasonably capable of moving the device as claimed, and a person of ordinary skill in the art would not reasonably recognize the manner in which any movement is implemented within the four corners of the application.
3) Applicant claims “converting the diamagnetism measurement into an oxidation measurement,” but applicant does not reasonably explain the manner in which any diamagnetism measurement is converted into an oxidation measurement. As evidenced by Claim 4, the conversion system configured to convert diamagnetism into oxidation is based on an empirical conversion footprint, and/or a theoretical or empirical law establishing an equivalence between diamagnetism and oxidation of the element. However, the original disclosure does not reasonably explain or establish any of the above such that a person of ordinary skill in the art would reasonably recognize the manner in which applicant is implementing the claim feature in order to demonstrate possession.
Unlike enablement which addresses whether a person of ordinary skill in the art could reasonably figure out a way to implement a claim feature without undue experimentation, the written description inquiry addresses whether such a person would reasonably recognize the manner that applicant is implementing a claim feature so as to demonstrate possession. Meaning, the written description inquiry addresses whether applicant has provided enough detail such that person of ordinary skill in the art would reasonably recognize what applicant is doing and then be able to implement such a feature using the knowledge of one of ordinary skill in the art. Here, applicant does not reasonably explain the manner in which applicant implements the conversion system configured to convert the diamagnetism measured into an oxidation measurement with sufficient explanation to reasonably demonstrate possession. For example, the original disclosure is completely silent about what an empirical conversion footprint is or the manner in which applicant implements such a feature to make the claimed conversion. Similarly, applicant does not provide any theoretical or empirical law that applicant uses for such a conversion, nor identify any conventional law that applicant intends to use. Note that whether such a law does exist does not reasonably establish proper written description unless applicant reasonably identifies such a law and provides some reasonable explanation as to the manner in which it issued. The instant application is completely silent as to any law, and is completely silent as to any processing device that would reasonably be capable of implementing such a law. Furthermore, claiming and disclosing that something is “theoretical” does not reasonably establish that the law would even exist. Whether relying upon something conventional or something invented by applicant, such features must be more than mere theories and must actually be reasonably explained such that a person of ordinary skill in the art can definitely use such a feature and would recognize the manner in which such a feature can be used in order to establish proper written description.
Lastly, the original disclosure makes mention of a table, but no such table is reasonably disclosed or explained to allow for any type of convention, and furthermore, a table by itself is not reasonably a “conversion system configured to convert,” as it itself is not reasonably capable of any type of conversion. While a device such a processor can use a look up table to implement a conversion, it is the processor itself that would perform the conversion, and not the table. As noted above, applicant’s disclosure is completely silent with regard to any processing device that would be reasonably capable of any type of conversion, and a person of ordinary skill in the art would not reasonably recognize the manner in which applicant is implementing the above claimed system for conversion in order to demonstrate possession. As such, this phrase lacks proper written description.
As to Claims 2-5,
These claims stand rejected for incorporating and reciting the above rejected subject matter of their respective parent claim(s) and therefore stand rejected for the same reasons.
Claims 1-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification does not reasonably provide enablement for 1) “a conversion system configured to convert the diamagnetism measured into an oxidation measurement” on lines 5-6 of Claim 1; 2) “the conversion system is configured to convert the diamagnetism measurement into an oxidation measurement based on at least one of an empirical conversion footprint, a theoretical establishing an equivalence between diamagnetism of the element and oxidation, or an empirical law establishing an equivalence between diamagnetism of the element and oxidation of the element” on lines 1-7 of Claim 4; 3) and “calibrating the device with a non-oxidized element and a highly oxidized element” as well as “converting the diamagnetism measurement into an oxidation measurement” as found in Claim 5. Specifically, the Examiner does not find any explanation as to how applicant is implementing the above conversion system configured to convert the diamagnetism measured into an oxidation measurement, where the conversion system configured to convert the diamagnetism measurement into an oxidation measurement is based on an empirical conversion footprint and/or a theoretical or empirical law establishing an equivalence between diamagnetism of the element and oxidation of the element, along with any explanation as to how applicant is calibrating as claimed. This is a scope of enablement rejection because the specification does not enable one of ordinary skill to use the invention commensurate with the scope of the claims without undue experimentation.
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 or unpredictability in the art;
(F) The amount of direction or guidance presented by invent tor;
(G) The existence or absence of working examples; and
(H) The quantity of experimentation necessary.
See In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988);
MPEP §2164.01(a)
As to factor (A), the Examiner notes that the claims 1-5 are unbounded. Applicant has not provided any explanation as to how applicant is implementing the conversion system configured to convert the diamagnetism measured into an oxidation measurement beyond mentioning that a law, footprint, or table can be use used without further detail, along with calibrating (step 72) the device with a non-oxidized element and a highly oxidized element, and as such claims 1-5 would cover any and every way possible to accomplish the system and steps.
As to factor (G), the Examiner notes that applicant has not provided sufficient working examples via the specification commensurate with the scope of the claims. Applicant does not provide any example of how applicant implements the conversion system configured to convert the diamagnetism measured into an oxidation measurement. The original disclosure states that an empirical conversion footprint can be used, but the original disclosure is completely silent about what an empirical conversion footprint is or the manner in which applicant implements such a feature to make the claimed conversion. Applicant does not provide any theoretical or empirical law that applicant uses for such a conversion, nor identify any conventional law that applicant intends to use. Furthermore, claiming and disclosing that something is “theoretical” does not reasonably establish that the law would even exist, nor reasonably demonstrate any example of such a law. The instant application is also completely silent as to any law, and is completely silent as to any processing device that would reasonably be capable of implementing such a law or any other aspect of this claim. The original disclosure is completely silent as to any processing device used to implement any conversion, and thus is silent as to any conversion system configured to convert. Lastly, the original disclosure makes mention of a table, but no such table is reasonably disclosed or explained to allow for any type of convention, and furthermore, a table by itself is not reasonably a “conversion system configured to convert,” as it itself is not reasonably capable of any type of conversion. While a device such a processor can use a look up table to implement a conversion, it is the processor itself that would perform the conversion, and not the table. As noted above, applicant’s disclosure is completely silent with regard to any processing device that would be reasonably capable of any type of conversion, and a person of ordinary skill in the art would not reasonably recognize how applicant is implementing any option for the claimed conversion system. Therefore, the specification fails to disclose any suitable and sufficient working examples to perform the above claimed conversion system configured to convert or conversion step. Similarly, the original disclosure is completely silent as to how applicant implements calibrating (step 72) the device with a non-oxidized element and a highly oxidized element as recited in Claim 5. While the original disclosure does state that reference elements make it possible to create operating threshold values, applicant does not provide any explanation as to the manner that these thresholds or reference elements are used for any calibration. The original disclosure is completely silent as to any calibration process, such as what is done with any reference elements of thresholds. Applicant does not reasonably explain how applicant calibrates using any reference element, how applicant calibrates the device with both a non-oxidized and highly oxidized element, or what applicant does with any obtained thresholds. Therefore, the specification fails to disclose any suitable and sufficient working examples to perform the above claimed calibration.
As to factor (H), the Examiner notes that the quantity of experimentation need is high. Applicant provides no examples or explanation as to how applicant is implementing a conversion system configured to convert or conversion step as explained above. Applicant does not provide any details as to what type of processing device is used to implement the system or step, or how any law, table, or footprint is implemented along with a processing device to reasonably explain how applicant implements the claim feature. Thus, one having ordinary skill in the art would have to independently identify the type processor needed, and independently develop the software and/or hardware for the device needed to perform or accomplish the claimed functions. A person of ordinary skill in the art would have to independently figure out how a law, theoretical or empirical, empirical conversion footprint, or table could be used as part of a conversion system configured to convert, along with any values or relationships necessary to establish such a conversion.
Similarly, as explained above. applicant provides no examples or explanation as to how applicant is implementing any calibration using a reference or non-oxidized element, beyond mentioning that threshold values may be obtained. Applicant does not provide any details as to what type of processing device is used to implement the step, or how any threshold or reference element is implemented along with a processing device to reasonably explain how applicant implements the claim feature. Thus, one having ordinary skill in the art would have to independently identify the type processor needed, and independently develop the software and/or hardware for the device needed to perform or accomplish the claimed functions. A person of ordinary skill in the art would have to independently figure out how a reference element, non-oxidized element, and thresholds could be used as necessary to establish such a calibration.
In view of the forgoing, the Examiner finds that the unbounded modes of operation are directed to an invention for which no working examples have been provided commensurate with the scope of the claims. Based on the Wands factors (A), (G), and (H), the Examiner concludes that applicant's specification does not enable those skilled in the art to make and use the full scope of the claimed invention without undue experimentation. The Examiner notes that the claimed conversion system, conversion step, and calibration step, encompass any and all structures and/or acts for achieving their results and operation, including those which were not what the applicant had invented and those which could be invented in the future. As such, claims 1-5 are rejected under 35 U.S.C. §112(a) for lacking an enabling disclosure commensurate with the scope of the claims.
As to Claims 2-5,
These claims stand rejected for incorporating the above rejected subject matter of their respective parent claims and therefore stand rejected for the same reasons.
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 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.
As to Claim 1,
The phrase “a conversion system configured to convert the diamagnetism measured into an oxidation measurement” on lines 5-6 is indefinite.
This phrase invokes 112(f), but where no reasonably equivalent device or means can be reasonably identified in the original disclosure. As explained in the above 112(a) rejections, applicant does not reasonably disclose the manner or how this feature is implemented. Applicant’s disclosure is completely silent as to any device that is reasonably capable of performing any type of conversion. Furthermore, applicant mentions that an empirical or theoretical law can be implemented, but applicant provides no explanation or guidance as to what this law can be to reasonably allow a person of ordinary skill in the art identify any type of equivalent law. Applicant discloses an empirical footprint or table can be used, but similarly, applicant’s disclosure is completely silent as to what these features are to reasonably allow any person of ordinary skill in the art to reasonably recognize any structure or equivalent structure of the means. As such, this phrase is indefinite, because applicant’s disclosure is invoking 112(f), but where a person of ordinary skill in the art would not reasonably recognize any associated structure from the disclosure that are used to implement the conversion system configured to convert, or any equivalent structure thereof.
As to Claim 2,
The phrase “the guide configured to guide the magnetic field generated by the first coil between said first coil and the element” on lines 3-4 is indefinite.
Applicant is claiming “the magnetic field generated by the first coil” but where no magnetic was previously recited to be generated by the first coil. Additionally, the difference and relationship between the above magnetic field and the field already recited in Claim 1 is unclear. As best understood, they are referring to the same magnetic field but are being distinctly recited.
As to Claim 4,
The phrase “the conversion system is configured to convert the diamagnetism measurement into an oxidation measurement based on at least one of an empirical conversion footprint, a theoretical establishing an equivalence between diamagnetism of the element and oxidation, or an empirical law establishing an equivalence between diamagnetism of the element and oxidation of the element” on lines 1-7 is indefinite.
1) The conversion system is based on the empirical conversion footprint as claimed above, but where such a footprint is indefinite. This phrase is indefinite because a person of ordinary skill in the art would not reasonably recognize what an empirical conversion footprint is in order to understand the full scope of the phrase. The original disclosure is completely silent as to what a footprint is or provide any reasonable guidance to demonstrate the intended scope of this phrase. A person of ordinary skill in the art would not reasonably recognize what applicant means by an empirical conversion footprint, thus rending this phrase indefinite.
2) Applicant claims “a theoretical … or empirical law” in the above phrase, but where such a phrase is indefinite. A theoretical law is not one that definitely can be used in the claimed manner as the scope of the phrase reasonably includes such a law being theoretical, and thus possible in theory, but not necessarily one that can definitely be used in the claimed manner. For example, the definition of the term “theoretical” is “existing only in theory; hypothetical” per https://www.dictionary.com/browse/theoretical. Claim limitations must be definite, and thus reciting something that may not actual exist or be usable in the claimed manner is indefinite.
3) The phrase “a theoretical establishing an equivalence between diamagnetism of the element and oxidation” is further indefinite, because a “theoretical” is not understood in light of the disclosure. While it is presumed that applicant means a “theoretical law,” applicant is not claiming this, and is instead only claiming a “theoretical.” A person of ordinary skill in the art would not reasonable understand what a “theoretical” is in light of the disclosure, and this feature is therefore indefinite.
As to Claim 5,
The phrase “A method for measuring oxidation of an element comprising a carbon-carbon composite, the method comprising providing the device according to claim 1, calibrating the device with a non-oxidized element and a highly oxidized element; - moving the device closer to the element; - activating the diamagnetism measurement means; and - converting the diamagnetism measurement into an oxidation measurement” on lines 1 to the end is indefinite.
1) At issue here is that applicant is distinctly reciting each of the above claim steps from the structure of Claim 1, but where, as best understood, these steps are not distinct. For example, applicant distinctly recites activating the diamagnetism measurement means from the power supply of Claim 1, but where, as best understood, it is the activation of this power supply that is necessary for any activation of the device. The activation step therefore cannot reasonably be distinct from the power supply, but these features not reasonably being related in the claim. Similarly, the converting step is being distinctly recited from the means for converting in Claim 1, but where, as best understood, the step of converting is not distinct from the means of converting in Claim 1. As such, the difference and relationship between the above activating and converting steps of Claim 5 in contrast with the already recited features of Claim 1 are unclear.
2) Applicant refers to “the diamagnetism measurement means,” but where such a means is no longer recited in Claim 1. It is further unclear what means this phrase is referencing. It is further unclear how this means relates to the now recited measuring system that is instead recited in Claim 1. As best understood, they refer to the same feature of the disclosure but are distinctly recited when they are not distinct. The difference and relationship between these features are therefore unclear. For the purpose of compact prosecution, the Examiner is interpreting these features to be the same thing.
3) The phrase “the diamagnetism measurement means” is further indefinite because this phrase invokes 112(f), but where no means is reasonable disclosed such that a person of ordinary skill in the art would recognize both the structure used to implement such a means as well as any equivalent devices thereof.
As to Claims 2-5,
These claims stand rejected for incorporating and reciting the above rejected subject matter of their respective parent claim(s) and therefore stand rejected for the same reasons.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Brandestini et al. (Brandestini) (US 2013/0015849 A1) in view of Christ et al. (Christ) (US 2004/0124087 A1).
As to Claim 1,
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Brandestini discloses A device for measuring oxidation of an element (4) comprising a carbon-carbon composite (Paragraphs [0003],[0005],[0006] / note because the device is reasonably capable of measuring oxidation in a carbon/carbon brake because it makes a similar measurement in a carbon ceramic brake disk as the detected wear from the reference is due to oxidation), characterized in that it comprises a measuring system configure to measure diamagnetism of the element (coils 15) (Paragraph [0047] / note the carbon ceramic brake must generate a magnetic field at least in part due to the diamagnetism of the carbon in the brake similar to that of applicant), the measuring system comprises: a first coil (see above figures) placed in proximity to the element (Figures 3,4); a power supply (32) configured to supply power to the first coil in order to generate a magnetic field (Figure 6), (Paragraph [0047]), a second coil (see above figures) placed in proximity to the receiving area for the element and comprising a first and a second terminal (see above figures), (Figures 3, 4, and 6), a third coil and a fourth coil moveable away from the receiving area for the element (Figures 1, 3, 4, and 6), (see above figure / note that enter measuring system is placed and removed relative to the element being detected and the coils are therefore “moveable” away from the receiving area for the element) , wherein each of the first coil, the second coil, the third coil, and the fourth coil comprise a first terminal and a second terminal (see above figure), a voltage measuring system (30) configured to measure a voltage between the first terminal of the second coil and a reference terminal so as to measure variations in the magnetic field induced by the element (see above figures),(Paragraph [0047] / note the driver computes the voltages induced by magnetic fields from eddy currents across each coil and adds them / also note the second coil terminal is effectively the same and the reference terminal from the third coil because they are all electrically connected on the same line and the coils are in parallel, and thus any measurement between the second terminal to the first terminal of the second coil is the same as a measurement between the reference/third terminal of the third coil and the first terminal of the second coil), the second terminal of the second coil is connected to the first terminal of the third coil (see above figures / note the coils are all in parallel and therefore the terminals are all electrically connected to each other), the second terminal of the third coil is the reference terminal (see above figures), the power supply is connected to the first terminal of the first coil and to the first terminal of the fourth coil (see above figures), the second terminal of the first coil is connected to the second terminal of the fourth coil (see above figures / note all terminals and all coils are electrically connected).
Brandestini does not disclose a conversion system configured to convert the diamagnetism measurement into an oxidation measurement. a conversion system configured to convert the diamagnetism measurement into an oxidation measurement.
Christ discloses a conversion system configured to convert the diamagnetism measurement into an oxidation measurement (the conversion system is the mechanism that uses the absolute value or phase shift from the output of the coil (4) to determine the extent of oxidation) (Paragraphs [0019],[0022] / note that like applicant, a magnetic field is being used to measure carbon composite material, and thus the coils must be detecting diamagnetism due to the carbon present in the magnetic field).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify Brandestini to include a conversion system configured to convert the diamagnetism measurement into an oxidation measurement as taught by Christ in order to advantageously utilize a reliable, nondestructive method of detecting oxidation of carbon-containing fibers in the composites mentioned above which is simple to carry out and precise (Paragraph [0004]).
As to Claim 3,
Brandestini discloses the first and second coils are coaxial (Figures 3,4).
As to Claim 4,
Brandestini in view of Christ discloses the conversion system is configured to convert the diamagnetism measurement into an oxidation measurement based on at least one of an empirical conversion footprint, a theoretical establishing an equivalence between diamagnetism of the element and oxidation, or an empirical law establishing an equivalence between diamagnetism of the element and oxidation of the element (Paragraphs [0019],[0022] of Christ / note any conversion must be based upon a law, such as a law of electromagnetics, and thus this is a property of the system).
Claims 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Brandestini et al. (Brandestini) (US 2013/0015849 A1) in view of Christ et al. (Christ) (US 2004/0124087 A1) as applied to Claim 1 and in further view of Ramagnano et al. (Ramagnano) (US 2019/0003542 A1).
As to Claim 2,
Brandestini in view of Christ does not disclose the measuring system further comprises a guide comprising a ferromagnetic material, wherein the guide is configured to guide the magnetic field generated by the first coil between said first coil and the element.
Ramagnano discloses the measuring system further comprises a guide (13) comprising a ferromagnetic material (Paragraph 0033]), wherein the guide is configured to guide the magnetic field generated by the first coil (11) between said first coil and the element (2) (Paragraphs [0033],[0034]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify Brandestini in view of Christ to include the measuring system further comprises a guide comprising a ferromagnetic material, wherein the guide is configured to guide the magnetic field generated by the first coil between said first coil and the element as taught by Ramagnano in order to advantageously restrict the magnetic field (Paragraph [0034]) to thereby ensure that more of the magnetic field is concentrated towards the brake, thereby strengthening any detected signal and reducing the effect of noise.
As to Claim 5,
Brandestini in view of Christ discloses A method for measuring oxidation of an element comprising a carbon-carbon composite, the method comprising providing the device according to claim 1, characterized in that it comprises the following steps of: moving the device closer to the element (Figures 3 and 4 of Brandestini / note the device is already positioned relative to the element, but placing of this device on the brake disk meets this feature) - activating the diamagnetism measurement means (Paragraph [0047] / note voltage is supplied and thus the device is activated); and - converting the diamagnetism measurement into an oxidation measurement (this feature was already taught in the above rejection of Claim 1 which is hereby incorporated into the Claim 5 rejection).
Brandestini in view of Christ does not disclose calibrating the device with a non-oxidized element and a highly oxidized element.
Ramagnano discloses calibrating the device with a non-oxidized element and a highly oxidized element (Paragraph [0063] / note the known/reference frequencies, conductivities, and distances reasonably include values from a non-oxidized element as a basis for comparison, as the values are expressly described as reference values).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify Brandestini in view of Christ to include calibrating the device with a non-oxidized element and a highly oxidized element as taught by Ramagnano in order to ensure that the device is working properly prior to use and to minimize errors in any later detection by ensuring that the device is operating within expected parameters.
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 DAVID M. SCHINDLER whose telephone number is (571)272-2112. The examiner can normally be reached 8am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lee Rodak can be reached at 571-270-5628. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID M. SCHINDLER
Primary Examiner
Art Unit 2858
/DAVID M SCHINDLER/Primary Examiner, Art Unit 2858
Prosecution Insights