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 .
Note: Applicant discloses more than one embodiment of the disclosure, but Claim 1 expressly claims the inclusion of a third and fourth coil as part of the device for measuring oxidization. The only embodiment that includes a third and fourth coil is found in Figure 5, where applicant discloses a first (12), second (14), third (30), and fourth (32) coil along with associated, and claimed, terminals related to these coils. As such, applicant has constructively elected the embodiment of Figure 5 as applicant has presented claims limited to this embodiment for examination, and no restriction is presented as the claims are already directed to this embodiment.
Information Disclosure Statement
The information disclosure statement filed 6/4/2025 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language.
Note that Cite No. 5 from the IDS has not been considered because no statement in English regarding the written opinion is provided. While an English translation of the search report may serve as a statement of reference for any foreign language document cited thereon, the actual written opinion itself is not one of these documents, and thus a statement of relevance in English for the written opinion is required in order to have such a document considered.
Drawings
The drawings are objected to because Figure 9 lists boxes for method steps without any reasonable detail to be able to identify what each method step includes. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
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 “means for converting the diamagnetism measured into an oxidation measurement” on lines 3-4 lacks proper written description.
As evidenced by Claim 4, the means for converting 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 means for converting 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 “means for conversion,” 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 means for conversion in order to demonstrate possession. As such, this phrase lacks proper written description.
As to Claim 4,
The phrase “the means for converting the diamagnetism measurement into an oxidation measurement comprises an empirical conversion footprint and/or a theoretical or empirical law establishing an equivalence between diamagnetism of the element and oxidation of the element” on lines 2-4 lacks proper written description.
As claimed above, the means for converting 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 means for converting 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 “means for conversion,” 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 means for conversion 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 with a device according to claim 1, characterized in that it comprises the following steps of: - calibrating (step 72) the device with a non-oxidized element and a highly oxidized element; - moving (step 74) the device closer to the element; - activating (step 76) the diamagnetism measurement means; and - converting (step 78) the diamagnetism measurement into an oxidation measurement” on lines 1 to the end lacks proper written description.
1) Applicant claims “calibrating (step 72) 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 (step 74) 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 (step 78) 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 means for converting 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 means for converting 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 “means for conversion,” 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 means 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) “means for converting the diamagnetism measured into an oxidation measurement” on lines 3-4 of Claim 1; 2) “the means for converting the diamagnetism measurement into an oxidation measurement comprises an empirical conversion footprint and/or a theoretical or empirical law establishing an equivalence between diamagnetism of the element and oxidation of the element” on lines 2-4 of Claim 4; 3) and “calibrating (step 72) the device with a non-oxidized element and a highly oxidized element” as well as “converting (step 78) 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 means for converting the diamagnetism measured into an oxidation measurement, where the means for converting the diamagnetism measurement into an oxidation measurement comprises 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 means for converting 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 means.
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 means for converting 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 means for conversion. 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 “means for conversion,” 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 means for conventions. Therefore, the specification fails to disclose any suitable and sufficient working examples to perform the above claimed means for conversion 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 means for conversion or conversion step as explained above. Applicant does not provide any details as to what type of processing device is used to implement the means 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 a means for conversion, 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 means for conversion, 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 “means for converting the diamagnetism measured into an oxidation measurement” on lines 3-4 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 or “means” from the disclosure that are used to implement the means, or any equivalent structure thereof.
The phrase “a power supply supplying the first coil in order to generate a magnetic field” on lines 5-6 is indefinite.
Applicant is positively reciting the use of the power supply, which amounts to a method step of supplying with the power supply. However, as explained in MPEP 2173.05(p)(II), “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.” This phrase is therefore indefinite.
The phrase “the variations in magnetic field induced by the element” on lines 9-10 is indefinite. No variations have been previously recited, and it is unclear what variations this phrase is referencing as more than one variation can reasonably be present.
The phrase “the diamagnetism measurement means further comprising a third coil and a fourth coil intended to be moved away from the element” on lines 10-12 is indefinite. At issue here is that it is unclear what applicant means by claiming that the third and fourth coil are intended to be moved away from the element. Applicant does not disclose any mechanism of moving the coils. To the extent that applicant intends the above phrase to mean that the above coils are distanced from the element, all coils are distanced from the element as they do not come into contact with the element. As such, the above phrase is indefinite because it is unclear what applicant intends this phrase to mean. For the purpose of compact prosecution, the Examiner is interpreting this phrase to mean that the third and fourth coil must be distanced from the element by a non-zero distance.
The phrase “each of the coils comprising two terminals” on line 12 is indefinite. At issue here is that is unclear if this phrase is referring to the third and fourth coils, or if it is referring to all coils claimed. The second coil was already claimed to have first and second terminals, making it unclear which coils the above phrase is referring to, and what the relationship is between the above two terminals and the first and second terminals of the second coil as already distinctly recited. For the purpose of compact prosecution, the Examiner is interpreting the above phrase to refer to the third and fourth coils, as this is the intent as best understood.
The phrase “the first terminal of the third coil” on lines 13-14 is indefinite. The third coil was previously recited to have two terminals, but it was not previously recited to have a first terminal. While one of the terminals of third coil can be a first terminal, it is unclear which of the previously recited terminals would be the first terminal as no such terminal was recited to be part of the terminals of the third coil. This phrase is therefore indefinite because no first terminal of the third coil was previously recited, and the relationship between this first terminal and the previously recited terminals of the third coil is unclear.
The phrase “the second terminal of the third coil” on line 14 is indefinite. The third coil was previously recited to have two terminals, but it was not previously recited to have a second terminal. While one of the terminals of third coil can be a second terminal, it is unclear which of the previously recited terminals would be the second terminal as no such terminal was recited to be part of the terminals of the third coil. This phrase is therefore indefinite because no second terminal of the third coil was previously recited, and the relationship between this second terminal and the previously recited terminals of the third coil is unclear.
The phrase “the first terminal of the first coil” on lines 15-16 is indefinite. The first coil was not previously recite to include any terminals. While the coil does include terminals in light of the disclosure, it is unclear which terminals this phrase is referring to, thus rendering it unclear what first terminal this phrase is referencing.
The phrase “the first terminal of the fourth coil” on line 16 is indefinite. The fourth coil was previously recited to have two terminals, but it was not previously recited to have a first terminal. While one of the terminals of fourth coil can be a first terminal, it is unclear which of the previously recited terminals would be the first terminal as no such terminal was recited to be part of the terminals of the fourth coil. This phrase is therefore indefinite because no first terminal of the fourth coil was previously recited, and the relationship between this first terminal and the previously recited terminals of the fourth coil is unclear.
The phrase “the second terminals of the first and fourth coils” on the last two lines is indefinite. The fourth coil was previously recited to have two terminals, but it was not previously recited to have a first terminal. While one of the terminals of fourth coil can be a first terminal, it is unclear which of the previously recited terminals would be the first terminal as no such terminal was recited to be part of the terminals of the fourth coil. This phrase is therefore indefinite because no first terminal of the fourth coil was previously recited, and the relationship between this first terminal and the previously recited terminals of the fourth coil is unclear. Additionally, the first coil was not previously recite to include any terminals. While the coil does include terminals in light of the disclosure, it is unclear which terminals this phrase is referring to, thus rendering it unclear what second terminal this phrase is referencing with regard to the first coil.
As to Claim 2,
The phrase “the guide guiding the magnetic field generated by the first coil between said first coil and the element” on lines 2-4 is indefinite.
1) Applicant is positively reciting the use of the guide which amounts to a method step of supplying with the power supply. However, as explained in MPEP 2173.05(p)(II), “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.” This phrase is therefore indefinite.
2) 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 means for converting the diamagnetism measurement into an oxidation measurement comprises an empirical conversion footprint and/or a theoretical or empirical law establishing an equivalence between diamagnetism of the element and oxidation of the element” on lines 2-4 is indefinite.
1) The means for conversion can be an 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.
As to Claim 5,
The phrase “A method for measuring oxidation of an element comprising a carbon-carbon composite with a device according to claim 1, characterized in that it comprises the following steps of: - calibrating (step 72) the device with a non-oxidized element and a highly oxidized element; - moving (step 74) the device closer to the element; - activating (step 76) the diamagnetism measurement means; and - converting (step 78) the diamagnetism measurement into an oxidation measurement” on lines 1 to the end is indefinite.
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.
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 means for measuring 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 diamagnetism measurement means comprising a first coil (see above figures) to be placed in proximity to the element (Figures 3,4); a power supply (32) supplying the first coil in order to generate a magnetic field (Figure 6), (Paragraph [0047]), a second coil (see above figures) to be placed in proximity to the element and comprising a first and a second terminal (see above figures), (Figures 3, 4, and 6), a means for measuring (30) the voltage between the first terminal of the second coil and a reference terminal so as to measure the variations in 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 diamagnetism measurement means further comprising a third coil and a fourth coil intended to be moved away from the element (Figures 1, 3,4 / note the measuring surface (2) is positioned on the brake, but the coils are above / on the surface (2) as seen in Figure 3, and thus the coils are positioned away from a surface (3) of the element (brake (4)) because the measuring surface spaces the coils from the brake), each of the coils comprising two terminals (see above figures and note all coils have two terminals), the second terminal of the second coil being 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 being the reference terminal (see above figures), the power supply being connected on the one hand to the first terminal of the first coil and on the other hand to the first terminal of the fourth coil (see above figures), the second terminals of the first and fourth coils being connected (see above figures / note all terminals and all coils are electrically connected).
Brandestini does not disclose a means for converting the diamagnetism measurement into an oxidation measurement.
Christ discloses a means for converting the diamagnetism measurement into an oxidation measurement (the means 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 means for converting 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 means for converting the diamagnetism measurement into an oxidation measurement comprises an empirical conversion footprint and/or a theoretical or 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 diamagnetism measurement means comprises a guide comprising a ferromagnetic material, the guide guiding the magnetic field generated by the first coil between said first coil and the element.
Ramagnano discloses the diamagnetism measurement means comprises a guide (13) comprising a ferromagnetic material (Paragraph 0033]), the guide guiding 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 diamagnetism measurement means comprises a guide comprising a ferromagnetic material, the guide guiding 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 affect 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 with a device according to claim 1, characterized in that it comprises the following steps of: moving (step 74) the device closer to the element (Figures 3 and 4 of Brandestini / note the device is already positioned relative to the element) - activating (step 76) the diamagnetism measurement means (Paragraph [0047] / note voltage is supplied and thus the device is activated); and - converting (step 78) 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 (step 72) the device with a non-oxidized element and a highly oxidized element.
Ramagnano discloses calibrating (step 72) 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 (step 72) 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. 1) DE10201003565 A1 to Skokan et al. which discloses an apparatus for determining a state of wear of a carbon ceramic brake disc, 2) ES2995499 T3 to Rezanezhad which discloses a conductivity sensor including a structure with a pair of magnetic cores with a primary coil wire around a shared member of both cores, and a secondary coil wire around a non-shared section of each core, and 3) DE 102020114433 A1 to MAKKINGA which discloses a method for determining a material property of carbon material object.
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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DAVID M. SCHINDLER
Primary Examiner
Art Unit 2858
/DAVID M SCHINDLER/Primary Examiner, Art Unit 2858