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 .
Response to Arguments
Applicant’s arguments, see remarks, filed 02/03/2026, with respect to the objections and rejections are partially persuasive as applicant’s amendments to the claims remedies some but not all of the issues. See below for updated objections and rejections. Upon further consideration, a new ground(s) of rejection is made in view of further U.S.C. 112 issues.
Claim Objections
Claim 1 objected to because of the following informalities:
Claim 1, fourth to last line, “the industrial personal computer 1” should read --the industrial personal computer (1)--
Reference characters corresponding to elements recited in the detailed description of the drawings and used in conjunction with the recitation of the same element or group of elements in the claims should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims. See MPEP § 608.01(m).
Appropriate correction is required.
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.
Claim 1-10 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.
Claims 1 and some dependent claims recite “frictionless cylinder”. However, even if the piston within the cylinder floats on a cushion of air that prevents physical contact between the walls of the cylinder and the piston, the air causes friction in the form of air resistance (fluid friction). Therefore one of ordinary skill in the art would not know how to make applicant’s “frictionless cylinder” because it is not possible to have a frictionless system as best understood in light of modern physics. Applicant’s disclosure does not
The dependent claims fail the written description requirement because they depend from claim 1 that fails the written description requirement.
Claims 1-10 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.
Claims 1 and some dependent claims recite “frictionless cylinder”. However, even if the piston within the cylinder floats on a cushion of air that prevents physical contact between the walls of the cylinder and the piston, the air causes friction in the form of air resistance (fluid friction). Therefore one of ordinary skill in the art would not know how to make applicant’s “frictionless cylinder” because it is not possible to have a frictionless system as best understood in light of modern physics.
Claims 1-10 are nonenabling because one having ordinary skill in the art could not make or use the invention from the disclosure coupled with information known in the art without undue experimentation. An analysis of the Wands factors reveals that the following factors weigh against enablement:
Wands factors
E. The level of predictability in the art.
Fluid mechanics are known in the art and one of ordinary skill would expect air resistance to exist and would not know how to make a frictionless cylinder.
F. The amount of direction provided by inventor.
The disclosure of the present application does not appear to provide any direction as to how a frictionless cylinder is made.
G. The existence of working examples.
There do not appear to be frictionless devices in existence.
In re Wands, 858 F.2d 731 (Fed. Cir. 1988); MPEP § 2164.01 (a). It is noted that the determination of undue experimentation is reached by weighing all the factors and that no single factor is dispositive (MPEP 2164.01 (a)).
Upon the weight of all of these factors, one of ordinary skill in the art would not have been enabled by the originally filed disclosure to make and/or use the claimed invention without undue experimentation and therefore claims 1-10 are not enabled.
Claims 2-10 depend from claim 1 and therefore also fail the enablement requirement.
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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Claims 6, 9-10 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.
Claim 6 recites “giving an extremely poor fitness value to the particle”. The term “extremely poor fitness value” in claim 6 is a relative term which renders the claim indefinite. The term “extremely poor fitness value” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what would or would not constitute a “extremely poor fitness value” because the specification does not discuss what constitutes “an extremely poor fitness value”.
Claim 6, line 4 and 7 recite “sentencing the particle to “death”. This appears to be idiomatic English and should be removed from the claims.
Claim 9 and 10 recites the limitation "the method according to claim 1" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claims 9 and 10 should probably depend from claim 4 which recites antecedent basis for “the method”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dustin T Nguyen whose telephone number is (571)270-0163. The examiner can normally be reached M - F: 8:00am - 4:30pm.
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/DUSTIN T NGUYEN/ Primary Examiner, Art Unit 3745 April 3, 2026
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