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 .
Election/Restrictions
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 13 April 2026.
Drawings
The amendment filed 18 February 2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: numerous details of Figs. 84-102. For example, the shape and orientation of the machining in Figs. 86-87, shape, location and orientation of the oil galleys in Figs. 89, 90 and the shape and orientation of the bearing in Figs. 91-93. This list is not exhaustive as the specific details are too numerous to list.
Applicant is required to cancel the new matter in the reply to this Office Action.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: “the compression assembly compresses a second portion of the compressed working fluid during the first compression stroke” of claim 3, “the ability to independently configure intake compression to power exhaust ratios during operation of the engine” of claim 9 and “an amount of working fluid compressed during each compression stroke of the engine is greater than an amount of working fluid expanded during each combustion stroke of the engine” of claim 10 are not disclosed in the specification as originally filed. No new matter may be added.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 3, 9 and 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.
The “compression assembly compresses a second portion of the compressed working fluid during the first compression stroke” of claim 3, “the ability to independently configure intake compression to power exhaust ratios during operation of the engine” of claim 9 and “an amount of working fluid compressed during each compression stroke of the engine is greater than an amount of working fluid expanded during each combustion stroke of the engine” of claim 10 are not disclosed in the application as originally filed and are considered new matter.
Claim Rejections - 35 USC § 112
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.
Claims 1-17 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 1 recites the limitation "the combustion process" and “the thermal expansion” in lines 8 and 11, respectively. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination “the” will be interpreted as “a”.
Additionally, it is unclear what structure is required by the recitations of lines 8-12 of claim 1. Claim 1 is directed to an apparatus whereas the recitations of lines 8-12 recite the steps of a process. For purposes of examination the recitations will be interpreted as intended use that only require a structure capable of the use.
Further, in reference to claim 1, it is unclear how the phrases “a combustion assembly defining a combustion chamber” in line 4 and “the engine defines a channel” in line 6 is to be interpreted. The engine comprises a combustion assembly defining a combustion chamber and at the same time the engine defines a channel in fluid communication with the combustion chamber. The structure required by each of the elements cannot be determined.
In reference to claim 11, a similar issue regarding the use of the term “defining” is found in lines 4-5. For purposes of examination “defining/defines” in claims 1 and 11 will be interpreted as “including/includes”.
Claims 2-10 and 12-17 depend from claims 1 and 11 and are rejected for the same reasons therefrom.
In reference to claim 2 it is unclear what additional structure is required by the claim. Claim 2 is directed to an apparatus whereas but only serves to further describe the process recited in claim 1. For purposes of examination the recitations will be interpreted as intended use that only require a structure capable of the use.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-8 and 11-17, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2014/0238337 A1 to Hruschka (Hruschka).
In reference to claim 1, Hruschka discloses an internal combustion engine comprising: a compression assembly (1/1’; Figs. 7-8) that is configured to compress working fluid, thereby creating a compressed working fluid; and a combustion assembly defining a combustion chamber (c*), the combustion assembly being configured to generate power from expansion of the compressed working fluid, wherein the engine defines a channel (A/E, 28, 29; Fig. 9, par. 0048) in fluid communication with the combustion chamber during a combustion process of the combustion assembly, wherein the combustion process comprises ignition of a charge comprising at least a first portion of the compressed working fluid, thereby thermally expanding the first portion of the compressed working fluid, and wherein at least a portion of the thermal expansion of the first portion of the compressed working fluid occurs in the channel.
In reference to claim 2, Hruschka discloses the engine of claim 1, wherein the combustion process further comprises burning a fuel of the charge and wherein the channel is in fluid communication with the combustion chamber during at least a portion of the burning of fuel (par. 0048).
In reference to claim 3, Hruschka discloses the engine of claim 1, wherein the internal combustion engine is configured to perform a plurality of compression strokes and combustion strokes, a first combustion stroke occurring simultaneously with a first compression stroke, and a second combustion stroke being initiated after initiation of the first combustion stroke, wherein the first portion of the compressed working fluid thermally expands within the combustion chamber during the first combustion stroke, wherein the compression assembly compresses a second portion of the compressed working fluid during the first compression stroke, and wherein the second portion of the compressed working fluid thermally expands within the combustion chamber during the second combustion stroke (see pars. 0039-0048).
In reference to claim 4, Hruschka discloses the engine of claim 1, wherein the combustion assembly is configured to receive the compressed working fluid (par. 0048).
In reference to claim 5, Hruschka discloses the engine of claim 1, wherein the engine further defines a mixing chamber (b*, 17) configured to circulate the charge, thereby mixing the first portion of the compressed working fluid with a fuel of the charge.
In reference to claim 6, Hruschka discloses the engine of claim 5, wherein the channel is in fluid communication with the mixing chamber (pars. 0043, 0048).
In reference to claim 7, Hruschka discloses the engine of claim 5, wherein the engine further comprises a means of providing fuel (15) positioned substantially near the mixing chamber so as to create a first fuel to air ratio within the mixing chamber.
In reference to claim 8, Hruschka discloses the engine of claim 7, wherein the engine is configured such that the first fuel to air ratio within the mixing chamber is greater than a second fuel to air ratio within the combustion chamber (the air/fuel ratio is dependent on timing, e.g. the air/fuel ratio will be higher before fuel is supplied to the chamber).
In reference to claim(s) 11-17, under the principles of inherency, the prior art apparatus of Hruschka would necessarily perform the method(s) claimed in its normal and usual operation and thereby meets the limitations of the claim(s).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN MATTHIAS whose telephone number is (571)272-5168. The examiner can normally be reached Monday-Wednesday 10am - 6pm Pacific Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Laurenzi III can be reached at (571) 270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN R MATTHIAS/Primary Examiner, Art Unit 3746
13 May 2026
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