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 1-14 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. Independent claims 1 and 12 both require acquiring an input wherein the input requires a voltage measured using a torque sensor. The issue is that torque sensors do not measure voltage. Torque sensors measure a mechanical twisting force. The output from a torque sensor may be some sort of signal which is similar to a voltage measurement, but one of ordinary skill in the art would not obtain a voltage measurement from a torque sensor. While it can be assumed that the Applicant is stating that the signal output from the torque sensor is obtained, similar to the signal from the motor controller, a torque sensor does not measure voltage. There is no disclosure to how the torque sensor measures a voltage, thus leaving a claim that is not enabled by the disclosure.
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, the level of one of ordinary skill in the art would not be enough to measure voltage from a torque sensor (Wands Factor D), there is not enough direction provided by the Applicant to enable one of ordinary skill in the art to measure voltage via a torque sensor (Wands Factor F), there are not comparisons to other working examples of torque sensors measuring voltage (Wands Factor G), and there would be a high degree of experimentation required in order to determine a voltage from a torque sensor (Wands Factor H). For at least these reasons, claims 1 and 12 lack enablement. Further, since claims 1 and 12 lack enablement, then claims 2-11, 13, and 14, which depend from either claim 1 or claim 12, lack enablement as well.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The closest prior art found was Steele et al. (U.S. Patent Application Publication 2021/0140838; hereinafter referred to as Steele). With respect to claim 1, Steele discloses a method for determining a torque of a device to be driven, the method comprises the following method steps: acquiring input data (see at least paragraph [0042]), wherein the input data comprises: a voltage measured using a torque sensor (see at least paragraph [0042]; output of strain gauge 62) ; and at least one signal value of a motor controller (see at least paragraph [0042]; output of strain amplifier 70); determining the torque by means of a mathematical model based on the voltage and the at least one signal value (see at least paragraph [0042]; “After optional processing of the signal from strain gage 62 and/or strain gage amplifier 70 is complete, controller 84 outputs the torque value”).
With respect to claim 3, the method according to any one of claims 1 to 2, wherein the input data further comprises a temperature (see at least paragraph [0042]).
With respect to claim 12, a machine learning model for determining a torque of a drive train the machine learning model comprising: input means for receiving: (see at least paragraph [0042]), a voltage measured using a torque sensor (see at least paragraph [0042]; output of strain gauge 62) ; and at least one signal value of a motor controller (see at least paragraph [0042]; output of strain amplifier 70); means for determining the torque based on the voltage and the at least one signal value (see at least paragraph [0042]; “After optional processing of the signal from strain gage 62 and/or strain gage amplifier 70 is complete, controller 84 outputs the torque value”).
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 25, 2026
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