DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This is in response to Applicant’s arguments and amendments filed on 02/03/2026 new Claims 18 – 20. Claims 1 – 20 are examined.
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 - 20 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.
MPEP 2161.01(I) applies to the following 35 U.S.C. 112(a) rejections for failing to comply with the written description requirement. MPEP 2161.01(I) stated “When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary (5th ed., 2002). Applicant may "express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted). It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015) (reversing and remanding the district court’s grant of summary judgment of invalidity for lack of adequate written description where there were genuine issues of material fact regarding "whether the specification show[ed] possession by the inventor of how accessing disparate databases is achieved"). If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention a rejection under 35 U.S.C. 112(a) for lack of written description must be made.”
Claim 1 and dependent Claims 2 – 19 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. Independent Claim 1, ll. 7 - 18 recites “…determining a maximum electrical intensity of an electric current that can be delivered by the electric generator as a function of at least one characteristic of the electrical energy source(s); calculating a maximum engine torque supplied by the electric machine to the drive shaft when the electric machine is supplied with electricity by the electric generator with the maximum electrical intensity; comparing the maximum engine torque with a required engine torque envelope permitted by the gas generator; adapting the maximum electrical intensity as a function of the comparison in order to comply with the required envelope;”. Original Specification Para. [0030] disclosed “The power plant may also be provided with a calculator comprising or connected to a memory. The memory may comprise instructions or a computer program enabling the calculator to implement this method.” Original Specification Para. [0080] disclosed “By way of example, the calculator 25 may comprise at least one processor and at least one memory, at least one integrated circuit, at least one programmable system, or at least one logic circuit, these examples not limiting the scope to be given to the term "calculator". The term "processor" may refer equally to a central processing unit or CPU, a graphics processing unit or GPU, a digital signal processor or DSP, a microcontroller, etc.”. Original Specification Para. [0109] disclosed “Figure 5 shows an adaptive starting method for the power plant 1. Instructions or a computer program relating to this method may be stored in a memory of the calculator 25 or in a memory connected to this calculator 25. The calculator 25 may then execute these instructions or this program in order to start the gas generator 11 of the power plant 10.” Original Figs. 1 – 4 represent calculator (25) as an empty rectangular box. Original Fig. 5 represent method steps 100 through 500 as eleven rectangular boxes arranged in a block diagram. Each rectangular box is numbered to match a corresponding step of the method in the Specification. Original Fig. 6 is a graph showing the required permissible engine torque envelope for starting a turboshaft engine. Therefore original Figs. 1 – 6 do not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention. Independent Claim 1, ll. 7 - 10 recitation “…determining a maximum electrical intensity of an electric current that can be delivered by the electric generator as a function of at least one characteristic of the electrical energy source(s)” corresponds to Fig. 5 step (100). Original Specification Para. [0116] disclosed “During this determination step 100, the calculator 25 uses pre-established first charts or first laws stored in the memory. These pre-established first charts or first laws are specific to each electrical energy source 26-29.”. The original Specification failed to sufficiently describe exactly what data is in the “pre-established first charts”. Specification failed to sufficiently describe exactly what are the “first laws”. Furthermore, different electrical energy sources are disclosed as having different “pre-established first charts” and different “first laws” which means that there would have been two or more different “pre-established first charts” and two or more different “first laws” which further adds to the lack of sufficient details. Independent Claim 1, ll. 11 - 14 recitation “…calculating a maximum engine torque supplied by the electric machine to the drive shaft when the electric machine is supplied with electricity by the electric generator with the maximum electrical intensity” corresponds to Fig. 5 step (200). Original Specification Para. [0118] disclosed “During this step of calculating 200, the calculator 25 uses pre-established second charts or second laws stored in the memory. These pre-established second charts or second laws are specific to the electric machine 21 of the power plant 1.”. The original Specification failed to sufficiently describe exactly what data is in the “pre-established second charts”. Specification failed to sufficiently describe exactly what are the “second laws”. Furthermore, different electric machines are disclosed as having different “pre-established second charts” and different “second laws” which means that there would have been a plurality of different “pre-established second charts” and a plurality of different “second laws” which further adds to the lack of sufficient details. Independent Claim 1, ll. 17 - 18 recitation “adapting the maximum electrical intensity as a function of the comparison in order to comply with the required envelope” corresponds to Fig. 5 steps (400 - 440). Dependent Claim 2, ll. 2 - 4 recitation “defining a target maximum electrical intensity of the electric current that the electric generator needs to supply…” corresponds to Fig. 5 step (410). Original Specification Para. [0127] disclosed “This adaptation step 400 may comprise a step of defining 410 a target maximum electrical intensity of the electric current that the electric generator 20 needs to supply. The calculator 25 transforms the value of the maximum engine torque complying with the required envelope 70 and situated, for example, on the maximum torque curve 71, into this target maximum electrical intensity, using the second charts or the second laws.” Again, the original Specification failed to sufficiently describe exactly what data is in the “pre-established second charts”. Specification failed to sufficiently describe exactly what are the “second laws”. Furthermore, different electric machines are disclosed as having different “pre-established second charts” and different “second laws” which means that there would have been a plurality of different “pre-established second charts” and a plurality of different “second laws” which further adds to the lack of sufficient details. The original disclosure failed to provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention. The original Specification merely repeats the claim language of the claims in Paras. [0029], [0033], [0036], [0037], and [0038] without any additional details. Fig. 5 is a block diagrams with a bunch of labeled boxes where each box was essentially a “black box” where there were no descriptions of the calculations, i.e., algorithm, performed by each box. Consequently, the original disclosure failed to provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002); MPEP 2163.03(V). Claims 2 – 19 depend from Claim 1 and are rejected for the same reasons.
Claim 20 is 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. Independent Claim 20, ll. 7 - 19 recites “…determining a maximum electrical intensity of an electric current that can be delivered by the electric generator as a function of a characteristic of the electrical energy source; calculating a maximum engine torque supplied by the electric machine to the drive shaft when the electric machine is supplied with electricity by the electric generator with the maximum electrical intensity; comparing the maximum engine torque with a required engine torque envelope permitted by the gas generator; adapting the maximum electrical intensity, based on the comparison, so that an electrical intensity supplied to the electric machine causes the electric machine to supply an engine torque within the required envelope;”. Original Specification Para. [0030] disclosed “The power plant may also be provided with a calculator comprising or connected to a memory. The memory may comprise instructions or a computer program enabling the calculator to implement this method.” Original Specification Para. [0080] disclosed “By way of example, the calculator 25 may comprise at least one processor and at least one memory, at least one integrated circuit, at least one programmable system, or at least one logic circuit, these examples not limiting the scope to be given to the term "calculator". The term "processor" may refer equally to a central processing unit or CPU, a graphics processing unit or GPU, a digital signal processor or DSP, a microcontroller, etc.”. Original Specification Para. [0109] disclosed “Figure 5 shows an adaptive starting method for the power plant 1. Instructions or a computer program relating to this method may be stored in a memory of the calculator 25 or in a memory connected to this calculator 25. The calculator 25 may then execute these instructions or this program in order to start the gas generator 11 of the power plant 10.” Original Figs. 1 – 4 represent calculator (25) as an empty rectangular box. Original Fig. 5 represent method steps 100 through 500 as eleven rectangular boxes arranged in a block diagram. Each rectangular box is numbered to match a corresponding step of the method in the Specification. Original Fig. 6 is a graph showing the required permissible engine torque envelope for starting a turboshaft engine. Therefore original Figs. 1 – 6 do not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention. Independent Claim 20, ll. 7 - 9 recitation “…determining a maximum electrical intensity of an electric current that can be delivered by the electric generator as a function of a characteristic of the electrical energy source” corresponds to Fig. 5 step (100). Original Specification Para. [0116] disclosed “During this determination step 100, the calculator 25 uses pre-established first charts or first laws stored in the memory. These pre-established first charts or first laws are specific to each electrical energy source 26-29.”. The original Specification failed to sufficiently describe exactly what data is in the “pre-established first charts”. Specification failed to sufficiently describe exactly what are the “first laws”. Furthermore, different electrical energy sources are disclosed as having different “pre-established first charts” and different “first laws” which means that there would have been two or more different “pre-established first charts” and two or more different “first laws” which further adds to the lack of sufficient details. Independent Claim 20, ll. 10 - 13 recitation “…calculating a maximum engine torque supplied by the electric machine to the drive shaft when the electric machine is supplied with electricity by the electric generator with the maximum electrical intensity” corresponds to Fig. 5 step (200). Original Specification Para. [0118] disclosed “During this step of calculating 200, the calculator 25 uses pre-established second charts or second laws stored in the memory. These pre-established second charts or second laws are specific to the electric machine 21 of the power plant 1.”. The original Specification failed to sufficiently describe exactly what data is in the “pre-established second charts”. Specification failed to sufficiently describe exactly what are the “second laws”. Furthermore, different electric machines are disclosed as having different “pre-established second charts” and different “second laws” which means that there would have been a plurality of different “pre-established second charts” and a plurality of different “second laws” which further adds to the lack of sufficient details. Independent Claim 20, ll. 16 - 19 recitation “adapting the maximum electrical intensity, based on the comparison, so that an electrical intensity supplied to the electric machine causes the electric machine to supply an engine torque within the required envelope” corresponds to Fig. 5 steps (400 - 440). Original Specification Para. [0127] disclosed “This adaptation step 400 may comprise a step of defining 410 a target maximum electrical intensity of the electric current that the electric generator 20 needs to supply. The calculator 25 transforms the value of the maximum engine torque complying with the required envelope 70 and situated, for example, on the maximum torque curve 71, into this target maximum electrical intensity, using the second charts or the second laws.” Again, the original Specification failed to sufficiently describe exactly what data is in the “pre-established second charts”. Specification failed to sufficiently describe exactly what are the “second laws”. Furthermore, different electric machines are disclosed as having different “pre-established second charts” and different “second laws” which means that there would have been a plurality of different “pre-established second charts” and a plurality of different “second laws” which further adds to the lack of sufficient details. The original disclosure failed to provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention. The original Specification merely repeats the claim language of the claims in Paras. [0029], [0033], [0036], [0037], and [0038] without any additional details. Fig. 5 is a block diagrams with a bunch of labeled boxes where each box was essentially a “black box” where there were no descriptions of the calculations, i.e., algorithm, performed by each box. Consequently, the original disclosure failed to provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002); MPEP 2163.03(V).
Claims 1 - 20 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.
MPEP 2164.06(C)(I) and (C)(II) applies to the following 35 U.S.C. 112(a) rejections for failing to comply with the enablement requirement. MPEP 2164.06(C)(I) stated “…where the specification provides in a block diagram disclosure of a complex system that includes a microprocessor and other system components controlled by the microprocessor, a mere reference to a commercially available microprocessor, without any description of the precise operations to be performed by the microprocessor, fails to disclose how such a microprocessor would be properly programmed to (1) either perform any required calculations or (2) coordinate the other system components in the proper timed sequence to perform the functions disclosed and claimed. If a particular program is disclosed in such a system, the program should be carefully reviewed to ensure that its scope is commensurate with the scope of the functions attributed to such a program in the claims. In re Brown, 477 F.2d at 951, 177 USPQ at 695. If (1) the disclosure fails to disclose any program and (2) more than routine experimentation would be required of one skilled in the art to generate such a program, the examiner clearly would have a reasonable basis for challenging the sufficiency of such a disclosure.” MPEP 2164.06(C)(II) stated “Regardless of whether a disclosure involves block elements more comprehensive than a computer or block elements totally within the confines of a computer, USPTO personnel, when analyzing method claims, must recognize that the specification must be adequate to teach how to practice the claimed method. If such practice requires a particular apparatus, then the application must provide a sufficient disclosure of that apparatus if such is not already available. See In re Ghiron, 442 F.2d 985, 991, 169 USPQ 723, 727 (CCPA 1971) and In re Gunn, 537 F.2d 1123, 1128, 190 USPQ 402, 406 (CCPA 1976).” MPEP 2164.06(C)(II) further stated “While no specific universally applicable rule exists for recognizing an insufficiently disclosed application involving computer programs, an examining guideline to generally follow is to challenge the sufficiency of disclosures that fail to include the programmed steps, algorithms or procedures that the computer performs necessary to produce the claimed function. These can be described in any way that would be understood by one of ordinary skill in the art, such as with a reasonably detailed flowchart which delineates the sequence of operations the program must perform. In programming applications where the software disclosure only includes a flowchart, as the complexity of functions and the generality of the individual components of the flowchart increase, the basis for challenging the sufficiency of such a flowchart becomes more reasonable because the likelihood of more than routine experimentation being required to generate a working program from such a flowchart also increases.”
Claim 1 and dependent Claims 2 – 19 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 Claim 1, ll. 7 - 18 recites “…determining a maximum electrical intensity of an electric current that can be delivered by the electric generator as a function of at least one characteristic of the electrical energy source(s); calculating a maximum engine torque supplied by the electric machine to the drive shaft when the electric machine is supplied with electricity by the electric generator with the maximum electrical intensity; comparing the maximum engine torque with a required engine torque envelope permitted by the gas generator; adapting the maximum electrical intensity as a function of the comparison in order to comply with the required envelope;”. Original Specification Para. [0030] disclosed “The power plant may also be provided with a calculator comprising or connected to a memory. The memory may comprise instructions or a computer program enabling the calculator to implement this method.” Original Specification Para. [0080] disclosed “By way of example, the calculator 25 may comprise at least one processor and at least one memory, at least one integrated circuit, at least one programmable system, or at least one logic circuit, these examples not limiting the scope to be given to the term "calculator". The term "processor" may refer equally to a central processing unit or CPU, a graphics processing unit or GPU, a digital signal processor or DSP, a microcontroller, etc.”. Original Specification Para. [0109] disclosed “Figure 5 shows an adaptive starting method for the power plant 1. Instructions or a computer program relating to this method may be stored in a memory of the calculator 25 or in a memory connected to this calculator 25. The calculator 25 may then execute these instructions or this program in order to start the gas generator 11 of the power plant 10.” Original Figs. 1 – 4 represent calculator (25) as an empty rectangular box. Original Fig. 5 represent method steps 100 through 500 as eleven rectangular boxes arranged in a block diagram. Each rectangular box is numbered to match a corresponding step of the method in the Specification. Original Fig. 6 is a graph showing the required permissible engine torque envelope for starting a turboshaft engine. Therefore original Figs. 1 – 6 do not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention. Independent Claim 1, ll. 7 - 10 recitation “…determining a maximum electrical intensity of an electric current that can be delivered by the electric generator as a function of at least one characteristic of the electrical energy source(s)” corresponds to Fig. 5 step (100). Original Specification Para. [0116] disclosed “During this determination step 100, the calculator 25 uses pre-established first charts or first laws stored in the memory. These pre-established first charts or first laws are specific to each electrical energy source 26-29.”. The original Specification failed to sufficiently describe exactly what data is in the “pre-established first charts”. Specification failed to sufficiently describe exactly what are the “first laws”. Furthermore, different electrical energy sources are disclosed as having different “pre-established first charts” and different “first laws” which means that there would have been two or more different “pre-established first charts” and two or more different “first laws” which further adds to the lack of sufficient details. Independent Claim 1, ll. 11 - 14 recitation “…calculating a maximum engine torque supplied by the electric machine to the drive shaft when the electric machine is supplied with electricity by the electric generator with the maximum electrical intensity” corresponds to Fig. 5 step (200). Original Specification Para. [0118] disclosed “During this step of calculating 200, the calculator 25 uses pre-established second charts or second laws stored in the memory. These pre-established second charts or second laws are specific to the electric machine 21 of the power plant 1.”. The original Specification failed to sufficiently describe exactly what data is in the “pre-established second charts”. Specification failed to sufficiently describe exactly what are the “second laws”. Furthermore, different electric machines are disclosed as having different “pre-established second charts” and different “second laws” which means that there would have been a plurality of different “pre-established second charts” and a plurality of different “second laws” which further adds to the lack of sufficient details. Independent Claim 1, ll. 17 - 18 recitation “adapting the maximum electrical intensity as a function of the comparison in order to comply with the required envelope” corresponds to Fig. 5 steps (400 - 440). Dependent Claim 2, ll. 2 - 4 recitation “defining a target maximum electrical intensity of the electric current that the electric generator needs to supply…” corresponds to Fig. 5 step (410). Original Specification Para. [0127] disclosed “This adaptation step 400 may comprise a step of defining 410 a target maximum electrical intensity of the electric current that the electric generator 20 needs to supply. The calculator 25 transforms the value of the maximum engine torque complying with the required envelope 70 and situated, for example, on the maximum torque curve 71, into this target maximum electrical intensity, using the second charts or the second laws.” Again, the original Specification failed to sufficiently describe exactly what data is in the “pre-established second charts”. Specification failed to sufficiently describe exactly what are the “second laws”. Furthermore, different electric machines are disclosed as having different “pre-established second charts” and different “second laws” which means that there would have been a plurality of different “pre-established second charts” and a plurality of different “second laws” which further adds to the lack of sufficient details. The original disclosure failed to provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention. The original Specification merely repeats the claim language of the claims in Paras. [0029], [0033], [0036], [0037], and [0038] without any additional details. Fig. 5 is a block diagrams with a bunch of labeled boxes where each box was essentially a “black box” where there were no descriptions of the calculations, i.e., algorithm, performed by each box. Consequently, the original disclosure failed to enable the full scope of the claimed invention. When determining whether “undue experimentation” would have been needed to make and use the claimed invention the following factors, MPEP 2164.01(a), are considered: (A) the breadth of the claims – applicant claims an “adaptive starting method” comprising steps performed by a computer program.; (B) the nature of the invention – For the reasons discussed above the claims are interpreted as a computer-implemented functional claim; (C) the state of the prior art – Since the original Specification failed to sufficiently disclose the exact nature of the plurality of different “pre-established first charts” and the plurality of different “first laws” which are specific to different electrical energy sources it is impossible to search the prior art to identify the state of the prior art. Similarly, since the original Specification failed to sufficiently disclose the exact nature of the plurality of different “pre-established second charts” and the plurality of different “second laws” which are specific to different electric machines it is impossible to search the prior art to identify the state of the prior art.; (E) the level of predictability in the art – low predictability per the sections of MPEP 2164.06(C)(I) and (C)(II) cited above; (F) the amount of direction provided by the inventor – applicant's disclosure does not teach how to make or use the invention because the Specification merely repeats the claim language. The Specification fail to include any details regarding the programmed steps, algorithms (equations) or procedures that the computer processor performs to produce the claimed functions. Figs. 5, 7, 8, 16, and 26 are block diagrams with a bunch of labeled boxes/modules where each box/module was essentially a “black box” where there are no descriptions of the calculations performed by each box. Therefore, the (1) disclosure fails to disclose any details of the program and (2) more than routine experimentation would be required of one skilled in the art to generate such a program because the scope of the claim encompasses all known and unknown ways of performing the claimed functions.; (G) the existence of working examples - applicant has not stated whether or not a working example exists; and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure – it has been held that “an adequate disclosure of a device may require details of how complex components are constructed and perform the desired function". In In re Donohue, 550 F.2d 1269, 193 USPQ 136 (CCPA 1977), the lack of enablement was caused by lack of information in the specification about a single block labeled "LOGIC" in the drawings. See also Union Pac. Res. Co. v. Chesapeake Energy Corp., 236 F.3d 684, 57 USPQ2d 1293 (Fed. Cir. 2001) (Claims directed to a method of determining the location of a horizontal borehole in the earth failed to comply with enablement requirement of 35 U.S.C. 112 because certain computer programming details used to perform claimed method were not disclosed in the specification, and the record showed that a person of skill in art would not understand how to "compare" or "rescale" data as recited in the claims in order to perform the claimed method.) In re Ghiron, 442 F.2d 985, 169 USPQ 723 (CCPA 1971), involved a method of facilitating transfers from one subset of program instructions to another which required modification of prior art "overlap mode" computers. The Board rejected the claims on the basis that, inter alia, the disclosure was insufficient to satisfy the requirements of 35 U.S.C. 112, first paragraph and was affirmed. The Board focused on the fact that the drawings were "block diagrams, i.e., a group of rectangles representing the elements of the system, functionally labeled and interconnected by lines." 442 F.2d at 991, 169 USPQ at 727. The specification did not particularly identify each of the elements represented by the blocks or the relationship therebetween, nor did it specify particular apparatus intended to carry out each function. The Board further questioned whether the selection and assembly of the required components could be carried out routinely by persons of ordinary skill in the art. [MPEP 2164.06(a)(I)]. MPEP2164.01(b) stated “The court in In re Ghiron, 442 F.2d 985, 991, 169 USPQ 723, 727 (CCPA 1971), made clear that if the practice of a method requires a particular apparatus, the application must provide a sufficient disclosure of the apparatus if the apparatus is not readily available.” Even if a potential infringer could write a program, with undue experimentation, to perform the claimed function of Claim 1, it would be impossible to tell if the potential infringer’s program would avoid infringing on Applicant’s claimed invention, i.e., the method steps performed by computer hardware, the computer software, or the combination of computer hardware and computer software, because Applicant’s disclosure failed to disclose any details of how the functions of Claim 1 are performed. Claims 2 – 19 depend from Claim 1 and are rejected for the same reasons.
Claim 20 is 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 Claim 20, ll. 7 - 19 recites “…determining a maximum electrical intensity of an electric current that can be delivered by the electric generator as a function of a characteristic of the electrical energy source; calculating a maximum engine torque supplied by the electric machine to the drive shaft when the electric machine is supplied with electricity by the electric generator with the maximum electrical intensity; comparing the maximum engine torque with a required engine torque envelope permitted by the gas generator; adapting the maximum electrical intensity, based on the comparison, so that an electrical intensity supplied to the electric machine causes the electric machine to supply an engine torque within the required envelope”. Original Specification Para. [0030] disclosed “The power plant may also be provided with a calculator comprising or connected to a memory. The memory may comprise instructions or a computer program enabling the calculator to implement this method.” Original Specification Para. [0080] disclosed “By way of example, the calculator 25 may comprise at least one processor and at least one memory, at least one integrated circuit, at least one programmable system, or at least one logic circuit, these examples not limiting the scope to be given to the term "calculator". The term "processor" may refer equally to a central processing unit or CPU, a graphics processing unit or GPU, a digital signal processor or DSP, a microcontroller, etc.”. Original Specification Para. [0109] disclosed “Figure 5 shows an adaptive starting method for the power plant 1. Instructions or a computer program relating to this method may be stored in a memory of the calculator 25 or in a memory connected to this calculator 25. The calculator 25 may then execute these instructions or this program in order to start the gas generator 11 of the power plant 10.” Original Figs. 1 – 4 represent calculator (25) as an empty rectangular box. Original Fig. 5 represent method steps 100 through 500 as eleven rectangular boxes arranged in a block diagram. Each rectangular box is numbered to match a corresponding step of the method in the Specification. Original Fig. 6 is a graph showing the required permissible engine torque envelope for starting a turboshaft engine. Therefore original Figs. 1 – 6 do not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention. Independent Claim 20, ll. 7 - 9 recitation “…determining a maximum electrical intensity of an electric current that can be delivered by the electric generator as a function of a characteristic of the electrical energy source” corresponds to Fig. 5 step (100). Original Specification Para. [0116] disclosed “During this determination step 100, the calculator 25 uses pre-established first charts or first laws stored in the memory. These pre-established first charts or first laws are specific to each electrical energy source 26-29.”. The original Specification failed to sufficiently describe exactly what data is in the “pre-established first charts”. Specification failed to sufficiently describe exactly what are the “first laws”. Furthermore, different electrical energy sources are disclosed as having different “pre-established first charts” and different “first laws” which means that there would have been two or more different “pre-established first charts” and two or more different “first laws” which further adds to the lack of sufficient details. Independent Claim 20, ll. 10 - 13 recitation “…calculating a maximum engine torque supplied by the electric machine to the drive shaft when the electric machine is supplied with electricity by the electric generator with the maximum electrical intensity” corresponds to Fig. 5 step (200). Original Specification Para. [0118] disclosed “During this step of calculating 200, the calculator 25 uses pre-established second charts or second laws stored in the memory. These pre-established second charts or second laws are specific to the electric machine 21 of the power plant 1.”. The original Specification failed to sufficiently describe exactly what data is in the “pre-established second charts”. Specification failed to sufficiently describe exactly what are the “second laws”. Furthermore, different electric machines are disclosed as having different “pre-established second charts” and different “second laws” which means that there would have been a plurality of different “pre-established second charts” and a plurality of different “second laws” which further adds to the lack of sufficient details. Independent Claim 20, ll. 16 - 19 recitation “adapting the maximum electrical intensity, based on the comparison, so that an electrical intensity supplied to the electric machine causes the electric machine to supply an engine torque within the required envelope” corresponds to Fig. 5 steps (400 - 440). Original Specification Para. [0127] disclosed “This adaptation step 400 may comprise a step of defining 410 a target maximum electrical intensity of the electric current that the electric generator 20 needs to supply. The calculator 25 transforms the value of the maximum engine torque complying with the required envelope 70 and situated, for example, on the maximum torque curve 71, into this target maximum electrical intensity, using the second charts or the second laws.” Again, the original Specification failed to sufficiently describe exactly what data is in the “pre-established second charts”. Specification failed to sufficiently describe exactly what are the “second laws”. Furthermore, different electric machines are disclosed as having different “pre-established second charts” and different “second laws” which means that there would have been a plurality of different “pre-established second charts” and a plurality of different “second laws” which further adds to the lack of sufficient details. The original disclosure failed to provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention. The original Specification merely repeats the claim language of the claims in Paras. [0029], [0033], [0036], [0037], and [0038] without any additional details. Fig. 5 is a block diagrams with a bunch of labeled boxes where each box was essentially a “black box” where there were no descriptions of the calculations, i.e., algorithm, performed by each box. Consequently, the original disclosure failed to enable the full scope of the claimed invention. When determining whether “undue experimentation” would have been needed to make and use the claimed invention the following factors, MPEP 2164.01(a), are considered: (A) the breadth of the claims – applicant claims an “adaptive starting method” comprising steps performed by a computer program.; (B) the nature of the invention – For the reasons discussed above the claims are interpreted as a computer-implemented functional claim; (C) the state of the prior art – Since the original Specification failed to sufficiently disclose the exact nature of the plurality of different “pre-established first charts” and the plurality of different “first laws” which are specific to different electrical energy sources it is impossible to search the prior art to identify the state of the prior art. Similarly, since the original Specification failed to sufficiently disclose the exact nature of the plurality of different “pre-established second charts” and the plurality of different “second laws” which are specific to different electric machines it is impossible to search the prior art to identify the state of the prior art.; (E) the level of predictability in the art – low predictability per the sections of MPEP 2164.06(C)(I) and (C)(II) cited above; (F) the amount of direction provided by the inventor – applicant's disclosure does not teach how to make or use the invention because the Specification merely repeats the claim language. The Specification fail to include any details regarding the programmed steps, algorithms (equations) or procedures that the computer processor performs to produce the claimed functions. Figs. 5, 7, 8, 16, and 26 are block diagrams with a bunch of labeled boxes/modules where each box/module was essentially a “black box” where there are no descriptions of the calculations performed by each box. Therefore, the (1) disclosure fails to disclose any details of the program and (2) more than routine experimentation would be required of one skilled in the art to generate such a program because the scope of the claim encompasses all known and unknown ways of performing the claimed functions.; (G) the existence of working examples - applicant has not stated whether or not a working example exists; and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure – it has been held that “an adequate disclosure of a device may require details of how complex components are constructed and perform the desired function". In In re Donohue, 550 F.2d 1269, 193 USPQ 136 (CCPA 1977), the lack of enablement was caused by lack of information in the specification about a single block labeled "LOGIC" in the drawings. See also Union Pac. Res. Co. v. Chesapeake Energy Corp., 236 F.3d 684, 57 USPQ2d 1293 (Fed. Cir. 2001) (Claims directed to a method of determining the location of a horizontal borehole in the earth failed to comply with enablement requirement of 35 U.S.C. 112 because certain computer programming details used to perform claimed method were not disclosed in the specification, and the record showed that a person of skill in art would not understand how to "compare" or "rescale" data as recited in the claims in order to perform the claimed method.) In re Ghiron, 442 F.2d 985, 169 USPQ 723 (CCPA 1971), involved a method of facilitating transfers from one subset of program instructions to another which required modification of prior art "overlap mode" computers. The Board rejected the claims on the basis that, inter alia, the disclosure was insufficient to satisfy the requirements of 35 U.S.C. 112, first paragraph and was affirmed. The Board focused on the fact that the drawings were "block diagrams, i.e., a group of rectangles representing the elements of the system, functionally labeled and interconnected by lines." 442 F.2d at 991, 169 USPQ at 727. The specification did not particularly identify each of the elements represented by the blocks or the relationship therebetween, nor did it specify particular apparatus intended to carry out each function. The Board further questioned whether the selection and assembly of the required components could be carried out routinely by persons of ordinary skill in the art. [MPEP 2164.06(a)(I)]. MPEP2164.01(b) stated “The court in In re Ghiron, 442 F.2d 985, 991, 169 USPQ 723, 727 (CCPA 1971), made clear that if the practice of a method requires a particular apparatus, the application must provide a sufficient disclosure of the apparatus if the apparatus is not readily available.” Even if a potential infringer could write a program, with undue experimentation, to perform the claimed function of Claim 20, it would be impossible to tell if the potential infringer’s program would avoid infringing on Applicant’s claimed invention, i.e., the method steps performed by computer hardware, the computer software, or the combination of computer hardware and computer software, because Applicant’s disclosure failed to disclose any details of how the functions of Claim 20 are performed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Response to Arguments
Applicant's arguments filed 02/03/2026 have been fully considered but they are not persuasive.
Applicant argues on Pg. 8, last paragraph continuing on to Pg. 9, first paragraph that the written description and enablement requirements of 35 USC §112(a) were satisfied by applicant’s disclosure since, allegedly, “…the specification reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date”. These arguments are not persuasive because it has been held that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”); MPEP 2145. Applicant has failed to cite any factual evidence in the record to support Applicant’s allegations. Therefore, Applicant has failed to rebut the 35 USC §112(a) rejections based on failing to comply with the written description requirement and failing to comply with the enablement requirement. The rejections are maintained.
On Pg. 9, second paragraph continuing on to Pg. 10, second paragraph Applicant cites Specification Paras. [0029], [0032], and [0033] that merely repeats the claim language without any additional details and argues that “Applicant respectfully submits that the above passages demonstrate that the inventor possessed the complete invention concept and understood how all components work together.” These arguments are not persuasive because it has been held that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”); MPEP 2145. Applicant has failed to cite any factual evidence in the record to support Applicant’s allegations. Therefore, Applicant has failed to rebut the 35 USC §112(a) rejections based on failing to comply with the written description requirement and failing to comply with the enablement requirement. Specification paragraphs that merely repeat the computer functional claim language without any additional details is insufficient to satisfy the written description requirement when the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002); MPEP 2163.03(V). The rejections are maintained.
Applicant further argues on Pg. 10, third to last paragraph that “Moreover, the power plant 1 comprises a calculator 25. By way of example, the calculator 25 may comprise at least one processor and at least one memory, at least one integrated circuit, at least one programmable system, or at least one logic circuit, these examples not limiting the scope to be given to the term "calculator." The term "processor" may refer equally to a central processing unit or CPU, a graphics processing unit or GPU, a digital signal processor or DSP, a microcontroller, etc. ( [0080]).
Thus, the specification provides concrete hardware implementations, not just abstract functional claims.” These arguments are not persuasive because merely describing a generic calculator/processor is insufficient. MPEP 2164.06(C)(I) stated “…where the specification provides in a block diagram disclosure of a complex system that includes a microprocessor and other system components controlled by the microprocessor, a mere reference to a commercially available microprocessor, without any description of the precise operations to be performed by the microprocessor, fails to disclose how such a microprocessor would be properly programmed to (1) either perform any required calculations or (2) coordinate the other system components in the proper timed sequence to perform the functions disclosed and claimed. If a particular program is disclosed in such a system, the program should be carefully reviewed to ensure that its scope is commensurate with the scope of the functions attributed to such a program in the claims. In re Brown, 477 F.2d at 951, 177 USPQ at 695. If (1) the disclosure fails to disclose any program and (2) more than routine experimentation would be required of one skilled in the art to generate such a program, the examiner clearly would have a reasonable basis for challenging the sufficiency of such a disclosure.” The rejections are maintained.
On Pg. 11, first to third paragraphs Applicant cites Specification Paras. [0130] and [0131] that merely repeats the claim language without any additional details and argues that “Applicant respectfully submits that these examples demonstrate again that the inventor possessed the complete invention concept and understood how all components work together.” These arguments are not persuasive because it has been held that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”); MPEP 2145. Applicant has failed to cite any factual evidence in the record to support Applicant’s allegations. Therefore, Applicant has failed to rebut the 35 USC §112(a) rejections based on failing to comply with the written description requirement and failing to comply with the enablement requirement. Specification paragraphs that merely repeat the computer functional claim language without any additional details is insufficient to satisfy the written description requirement when the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002); MPEP 2163.03(V). The rejections are maintained.
On Pg. 11, second to last paragraph continuing on to Pg. 12, second to last paragraph Applicant argues that the "pre-established charts" and "laws" were well known to a person of ordinary skill in the art and therefore Applicant’s disclosure did not have to disclose the allegedly “well known” "pre-established charts" and "laws". These arguments are not persuasive because it has been held that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”); MPEP 2145. Applicant has failed to cite any factual evidence in the record to support Applicant’s allegations that the claimed "pre-established charts" and "laws" were well known to a person of ordinary skill in the art. Applicant has failed to cite any factual evidence in the record to support Applicant’s allegations that “Enablement likewise does not require disclosure of specific numerical values or exhaustive implementation detail where a person of ordinary skill in the art could practice the invention without undue experimentation, consistent with the factors set forth in In re Wands (see also MPEP § 2164.01(a))”. Applicant’s arguments are not persuasive because they are contradicted by MPEP 2164.06(C)(II) further stated “While no specific universally applicable rule exists for recognizing an insufficiently disclosed application involving computer programs, an examining guideline to generally follow is to challenge the sufficiency of disclosures that fail to include the programmed steps, algorithms or procedures that the computer performs necessary to produce the claimed function. These can be described in any way that would be understood by one of ordinary skill in the art, such as with a reasonably detailed flowchart which delineates the sequence of operations the program must perform. In programming applications where the software disclosure only includes a flowchart, as the complexity of functions and the generality of the individual components of the flowchart increase, the basis for challenging the sufficiency of such a flowchart becomes more reasonable because the likelihood of more than routine experimentation being required to generate a working program from such a flowchart also increases.” The rejections are maintained.
On Pg. 13, first full paragraph to the last paragraph Applicant cites at least Specification Paras. [0116] and [0118] and Applicant argues that “Therefore, the specification describes a decision logic in which calculated torque is compared against envelope limits and appropriate action is taken based on the result. Functional descriptions of control logic implemented by known processors are sufficient where the specification explains the decision process performed, as recognized in In re Katz Interactive Call Processing Patent Litigation (see also MPEP § 2161).” This argument is not persuasive because the 35 USC §112(a) rejections based on failing to comply with the written description requirement and failing to comply with the enablement requirement were not based on the comparison step (300 – Fig. 5) in isolation. The 35 USC §112(a) rejections based on failing to comply with the written description requirement and failing to comply with the enablement requirement were not based on the combination of the determination step (100 – Fig. 5) with the calculation step (200 – Fig. 5) with the adaptation step (400 – Fig. 5) as detailed above and in the Office Action mailed on 11/03/2025. Consequently, Applicant’s arguments are insufficient. The rejections are maintained.
Correspondence
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/LORNE E MEADE/Primary Examiner, Art Unit 3741
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