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
Claims 1-9 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 is the lone independent claim in the invention. Claim 1 recites, at least in part: “ … wherein, when the product of an inter-electrode distance in the first direction between the first electrode and the second electrode and an electrode area of the first electrode in a cut surface orthogonal to the first direction is defined as an inter-electrode volume, a division value obtained by dividing, by the inter-electrode volume, the voltage applied to the electrode portion by the voltage application section is greater than 4.2x10¹n V/m³ and not greater than 2.0x10²n V/m³.” This portion of the claim isn’t clearly described in the specification. The claim stats there is an inter-electrode distance (D) and an electrode area (A) that are multiplied together to give an inter-electrode volume (SP). Then there is some division value obtained by dividing, by the inter-electrode volume (SP) the voltage applied to the electrode portion. First, the specification mentions a value B that is the inter-electrode volume, but the specification fails to clearly disclose how that inter-electrode volume is actually calculated or found. There is a value S that is from the first electrode cut in a direction orthogonal to the first direction, but it’s not quite defined what the first direction actually is. Without this information, one cannot arrive at the volume value. Further, while limits to the value of the inter-electrode volume are given, exactly how the value is found, is not clear from the specification as written.
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 is simply not enough direction provided by the Applicant to clearly define the various terms or how they are related one to the other (Wands Factor F), there is no comparison to working examples to assist one of ordinary skill in the art to determine what these values may actually be (Wands Factor G), and there is a large amount of experimentation required in order to determine how to actually find these values which are required in order to practice the invention (Wands Factor H). Since claim 1 lacks enablement, then claims 2-9, which depend either directly or indirectly from claim1, lack enablement as well.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. There is a potential double patenting rejection with respect to claims 1-4 of co-pending US. Patent Application Publication Number 2025/0264437. The specifics about the electrodes and their dimensions and volume might be significant enough to differentiate between the two, but at this point, that’s difficult to determine.
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
July 11, 2026
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