DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
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 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 1 has a metho that comprises two steps. In these steps, it is required to obtain dynamic contact characteristics and acoustic properties of the solid-liquid interface of the metal with different surface information and then obtaining a correlation among the various surfaces, the acoustic response, and the droplet bounce behavior, and the acoustic properties and modifying a micro-nano structure by combining a coupled bionic concept according to the correlation. There are a ton of terms in the method as claims of which many of them are never disclosed what they are. What is the surface information used and what differences are needed in order to practice the method? What are the acoustic properties? What are the contact characteristics and is there a difference between contact characteristics and dynamic ones? If so, what makes them dynamic as opposed to non-dynamic ones. Very important is that there is a modification done by combining a coupled bionic concept according to the correlation, yet there is no disclosure of the bionic concept and what it is and the correlation is only described by a single formula, which has three correction constants (N, A, and B) which are undefined, and the correlation is not disclosed with respect to the claimed various surfaces, the acoustic response, and the droplet bounce behavior, and the acoustic properties and there is no disclosed connection between the correction constants and any of these values that can be found. With the specification as written, the claims as presented would not enable one of ordinary skill in the art to make and/or use the invention as claimed.
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 in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557,1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
With respect to the case of the present invention, there are too many variables given without explanation, definition, or any means to correlate the values as claimed, and thus there is simply not enough direction given by the inventor to perform the method (Wands Factor F). Further, there is no disclosure of working examples to compare to the present method in order to even piece together what the inventor actually is or is not doing (Wands Factor G). Therefore, there is a huge amount of experimentation required in order to even begin to understand the true practice of the method as claimed (Wands factor H). Therefore, claim 1 lacks enablement. Since claim 1 lacks enablement, then claims 2-8, which depend from claim 1, lack enablement as well.
Conclusion
The present rejection does not contain a prior art rejection, but that is in not meant as an indication of any allowable subject matter in the present application. The current 35 USC 112 issues in the claims actually present an issue with performing an adequate and proper search of the claims in relation to the prior art as it is difficult at this time to determine precisely what the invention is truly doing and how. Should the applicant amend the claims to resolve these issues, then a new search will be conducted and if at that time similar prior art is found and a prior art rejection is made, then that rejection can be made final if the rejection is deemed to be made in view of the newly amended claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODNEY T FRANK whose telephone number is (571)272-2193. The examiner can normally be reached M-F 9am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Macchiarolo can be reached at (571) 272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RODNEY T FRANK/Examiner, Art Unit 2855
May 30, 2026
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