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 05/22/2026 amending Claims 1, 3, and 8. Claims 1 - 9 are examined
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 1, ll. 4 – 5 “electronic control unit configured to receive a rotation speed setpoint of the rotary wing” interpreted as ‘unit for electronic control configured to receive a rotation speed setpoint of the rotary wing’. MPEP2181(I)(A) cites “unit for” among a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f). MPEP2181(I) states that "configured to" was a linking phrase equivalent to “for” or “means for”.
Claim 8, ll. 2 – 5 “electronic control unit being configured to receive a rotation speed setpoint of the rotary wing and automatically control the turbine engines of the aircraft during a breakdown of one turbine engine” interpreted as ‘unit for electronic control being configured to receive a rotation speed setpoint of the rotary wing and automatically control the turbine engines of the aircraft during a breakdown of one turbine engine’. MPEP2181(I)(A) cites “unit for” among a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f). MPEP2181(I) states that "configured to" was a linking phrase equivalent to “for” or “means for”.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 1, ll. 4 – 5 recites “electronic control unit configured to receive a rotation speed setpoint of a rotary wing” and Claim 8, ll. 2 – 5 limitation “electronic control unit being configured to receive a rotation speed setpoint of a rotary wing and automatically control the turbine engines of the aircraft during a breakdown of one turbine engine” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the entire claimed function. Specification Paras. [0006], [0023], [0059], and [0060] merely repeat the claim language without any further details. Fig. 4 illustrates the “electronic control unit configured to receive a rotation speed setpoint of the rotary wing” and “electronic control unit being configured to receive a rotation speed setpoint of the rotary wing and automatically control the turbine engines of the aircraft during a breakdown of one turbine engine” as an empty rectangular box with reference character (1) containing five other empty rectangular boxes labeled 2, 3, 4, 5, and 6. Specification Para. [0059] disclosed “The electronic control unit 1 comprises an input module 2 configured to receive signals detecting a breakdown in a first turbine engine among the turbine engines of the rotary-wing aircraft, a means 3 for determining the flight phase in which the aircraft is situated, and a means 4 for activating operation of the turbine engines in a misaligned mode”. Specification Para. [0060] disclosed “The electronic control unit also comprises a means 5 for activating an indicator on an engine anomaly for the pilot, inviting him to employ prudent piloting, and a means 6 for setting a power limiter allowing selecting either the second maximum available power threshold (OEIL) or the third maximum available power threshold (QEIC) or to return to the first maximum available power threshold (OEIH), previously selected automatically following entry into the misaligned mode.” Each of the five empty rectangular boxes labeled 2, 3, 4, 5, and 6 that make up the electronic control unit (1) are described in the Specification by function and not structure. The original specification failed to describe any structure for box 6 “means for setting a power limiter”, instead the Specification just repeats “power limiter” five times, in Paras. [0007], [0020], [0023], [0045], and [0060], without ever describing what structure or structures make up the claimed and disclosed “power limiter”. The original specification failed to describe any structure for box 5 “means 5 for activating an indicator on an engine anomaly for the pilot”, instead the Specification just repeats “activating an indicator” four times, in Paras. [0007], [0023], [0040], and [0060], without ever describing what structure or structures make up the claimed and disclosed “activating an indicator”. The original specification failed to describe what type of indicator, e.g., visual, auditory, or tactile, was activated. Is the indicator a visual indicator like a light on the aircraft control panel or an image that appears on a display panel or is projected on a heads-up-display (HUD)? Or is the indicator an auditory indicator like a buzzer noise or voice recording played over the aircraft speakers or into the pilot’s headphones? Or is the indicator a tactile indicator like a “stick shaker” that violently vibrates the control column (or yoke/stick) that the pilots holds to maneuver the aircraft? The original specification failed to describe any structure for box 4 “means 4 for activating operation of the turbine engines in a misaligned mode” instead the Specification just repeats “activating operation of the turbine engines in a misaligned mode” three times, in Paras. [0007], [0014], and [0059], without ever describing what structure or structures make up the disclosed “means 4 for activating operation of the turbine engines in a misaligned mode”. The original specification failed to describe any structure for box 3 “means 3 for determining the flight phase” instead the Specification just repeats “determining the flight phase” three times, in Paras. [0007], [0023], and [0059], without ever describing what structure or structures make up the disclosed “means 3 for determining the flight phase”. The original specification failed to describe how the flight phase was determined. Was the flight phase determined by pilot input, e.g., pilot pushed a button for take-off flight phase and the pilot pushed a different button for cruise flight phase? Was the flight phase determined by aircraft altitude? Was the flight phase determined by aircraft ground speed? Was the flight phase determined by aircraft angle of attack? Was the flight phase determined by a combination of two or more variables like aircraft altitude, aircraft ground speed, and/or aircraft angle of attack? The original specification failed to describe any structure for box 2 “input module 2 configured to receive signals detecting a breakdown in a first turbine engine” instead the Specification just repeats “input module” two times, in Paras. [0023] and [0059], without ever describing what structure or structures make up the disclosed “input module 2 configured to receive signals detecting a breakdown in a first turbine engine”. Consequently, the written description is devoid of adequate structure to perform the claimed function of “receive a rotation speed setpoint of the rotary wing and automatically control the turbine engines of the aircraft during a breakdown of one turbine engine”. As would be recognized by one of ordinary skill in the art, the function of “receive a rotation speed setpoint of the rotary wing and automatically control the turbine engines of the aircraft during a breakdown of one turbine engine” can be performed in any number of ways with different hardware, different software, and/or different combinations of hardware and software. The written description does not provide sufficient details such that one of ordinary skill in the art would understand which structure or combination of structures perform(s) the claimed function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Claims 2 - 7 depends from Claim 1 and is rejected for the same reasons. Claim 9 depends from Claim 8 and is rejected for the same reasons.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 - 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 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. For all the following rejections, MPEP2163.03(V) stated “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)”. For each of the written description rejections below, the claims 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.
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, ll. 4 – 5 recites “electronic control unit configured to receive a rotation speed setpoint of a rotary wing” and Claim 8, ll. 2 – 5 limitation “electronic control unit being configured to receive a rotation speed setpoint of a rotary wing and automatically control the turbine engines of the aircraft during a breakdown of one turbine engine” which invokes 35 U.S.C. 112(f) interpretation. As discussed in the 112(b) rejection above, Specification Paras. [0006], [0023] and Para. [0059] merely repeat the claim language without any further details. Fig. 4 illustrates the “electronic control unit configured to receive a rotation speed setpoint of the rotary wing” and “electronic control unit being configured to receive a rotation speed setpoint of the rotary wing and automatically control the turbine engines of the aircraft during a breakdown of one turbine engine” as an empty rectangular box with reference character (1) containing five other empty rectangular boxes labeled 2, 3, 4, 5, and 6. Specification Para. [0059] disclosed “The electronic control unit 1 comprises an input module 2 configured to receive signals detecting a breakdown in a first turbine engine among the turbine engines of the rotary-wing aircraft, a means 3 for determining the flight phase in which the aircraft is situated, and a means 4 for activating operation of the turbine engines in a misaligned mode”. Specification Para. [0060] disclosed “The electronic control unit also comprises a means 5 for activating an indicator on an engine anomaly for the pilot, inviting him to employ prudent piloting, and a means 6 for setting a power limiter allowing selecting either the second maximum available power threshold (OEIL) or the third maximum available power threshold (QEIC) or to return to the first maximum available power threshold (OEIH), previously selected automatically following entry into the misaligned mode.” Each of the five empty rectangular boxes labeled 2, 3, 4, 5, and 6 that make up the electronic control unit (1) are described in the Specification by function and not structure. The original specification failed to describe any structure for box 6 “means for setting a power limiter”, instead the Specification just repeats “power limiter” five times, in Paras. [0007], [0020], [0023], [0045], and [0060], without ever describing what structure or structures make up the claimed and disclosed “power limiter”. The original specification failed to describe any structure for box 5 “means 5 for activating an indicator on an engine anomaly for the pilot”, instead the Specification just repeats “activating an indicator” four times, in Paras. [0007], [0023], [0040], and [0060], without ever describing what structure or structures make up the claimed and disclosed “activating an indicator”. The original specification failed to describe what type of indicator, e.g., visual, auditory, or tactile, was activated. Is the indicator a visual indicator like a light on the aircraft control panel or an image that appears on a display panel or is projected on a heads-up-display (HUD)? Or is the indicator an auditory indicator like a buzzer noise or voice recording played over the aircraft speakers or into the pilot’s headphones? Or is the indicator a tactile indicator like a “stick shaker” that violently vibrates the control column (or yoke/stick) that the pilots holds to maneuver the aircraft? The original specification failed to describe any structure for box 4 “means 4 for activating operation of the turbine engines in a misaligned mode” instead the Specification just repeats “activating operation of the turbine engines in a misaligned mode” three times, in Paras. [0007], [0014], and [0059], without ever describing what structure or structures make up the disclosed “means 4 for activating operation of the turbine engines in a misaligned mode”. The original specification failed to describe any structure for box 3 “means 3 for determining the flight phase” instead the Specification just repeats “determining the flight phase” three times, in Paras. [0007], [0023], and [0059], without ever describing what structure or structures make up the disclosed “means 3 for determining the flight phase”. The original specification failed to describe how the flight phase was determined. Was the flight phase determined by pilot input, e.g., pilot pushed a button for take-off flight phase and the pilot pushed a different button for cruise flight phase? Was the flight phase determined by aircraft altitude? Was the flight phase determined by aircraft ground speed? Was the flight phase determined by aircraft angle of attack? Was the flight phase determined by a combination of two or more variables like aircraft altitude, aircraft ground speed, and/or aircraft angle of attack? The original specification failed to describe any structure for box 2 “input module 2 configured to receive signals detecting a breakdown in a first turbine engine” instead the Specification just repeats “input module” two times, in Paras. [0023] and [0059], without ever describing what structure or structures make up the disclosed “input module 2 configured to receive signals detecting a breakdown in a first turbine engine”. Consequently, disclosure does not provide an adequate description of the structure to perform the claimed function of “receive a rotation speed setpoint of the rotary wing and automatically control the turbine engines of the aircraft during a breakdown of one turbine engine”. The specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Claims 2 - 7 depends from Claim 1 and is rejected for the same reasons. Claim 9 depends from Claim 8 and is rejected for the same reasons. Claims 1 – 9 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
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.”
Claims 1 – 7 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, ll. 3 - 5 recites “the method being intended to be implemented by an electronic control unit configured to receive a rotation speed setpoint of a rotary wing”. As discussed in the 112(b) and 112(a) written description rejections above, Specification Paras. [0006], [0023] and Para. [0059] merely repeat the claim language without any further details. Fig. 4 illustrates the “electronic control unit configured to receive a rotation speed setpoint of the rotary wing” and “electronic control unit being configured to receive a rotation speed setpoint of the rotary wing and automatically control the turbine engines of the aircraft during a breakdown of one turbine engine” as an empty rectangular box with reference character (1) containing five other empty rectangular boxes labeled 2, 3, 4, 5, and 6. Specification Para. [0059] disclosed “The electronic control unit 1 comprises an input module 2 configured to receive signals detecting a breakdown in a first turbine engine among the turbine engines of the rotary-wing aircraft, a means 3 for determining the flight phase in which the aircraft is situated, and a means 4 for activating operation of the turbine engines in a misaligned mode”. Specification Para. [0060] disclosed “The electronic control unit also comprises a means 5 for activating an indicator on an engine anomaly for the pilot, inviting him to employ prudent piloting, and a means 6 for setting a power limiter allowing selecting either the second maximum available power threshold (OEIL) or the third maximum available power threshold (QEIC) or to return to the first maximum available power threshold (OEIH), previously selected automatically following entry into the misaligned mode.” Each of the five empty rectangular boxes labeled 2, 3, 4, 5, and 6 that make up the electronic control unit (1) are described in the Specification by function and not structure. The original specification failed to describe any structure for box 6 “means for setting a power limiter”, instead the Specification just repeats “power limiter” five times, in Paras. [0007], [0020], [0023], [0045], and [0060], without ever describing what structure or structures make up the claimed and disclosed “power limiter”. The original specification failed to describe any structure for box 5 “means 5 for activating an indicator on an engine anomaly for the pilot”, instead the Specification just repeats “activating an indicator” four times, in Paras. [0007], [0023], [0040], and [0060], without ever describing what structure or structures make up the claimed and disclosed “activating an indicator”. The original specification failed to describe what type of indicator, e.g., visual, auditory, or tactile, was activated. Is the indicator a visual indicator like a light on the aircraft control panel or an image that appears on a display panel or is projected on a heads-up-display (HUD)? Or is the indicator an auditory indicator like a buzzer noise or voice recording played over the aircraft speakers or into the pilot’s headphones? Or is the indicator a tactile indicator like a “stick shaker” that violently vibrates the control column (or yoke/stick) that the pilots holds to maneuver the aircraft? The original specification failed to describe any structure for box 4 “means 4 for activating operation of the turbine engines in a misaligned mode” instead the Specification just repeats “activating operation of the turbine engines in a misaligned mode” three times, in Paras. [0007], [0014], and [0059], without ever describing what structure or structures make up the disclosed “means 4 for activating operation of the turbine engines in a misaligned mode”. The original specification failed to describe any structure for box 3 “means 3 for determining the flight phase” instead the Specification just repeats “determining the flight phase” three times, in Paras. [0007], [0023], and [0059], without ever describing what structure or structures make up the disclosed “means 3 for determining the flight phase”. The original specification failed to describe how the flight phase was determined. Was the flight phase determined by pilot input, e.g., pilot pushed a button for take-off flight phase and the pilot pushed a different button for cruise flight phase? Was the flight phase determined by aircraft altitude? Was the flight phase determined by aircraft ground speed? Was the flight phase determined by aircraft angle of attack? Was the flight phase determined by a combination of two or more variables like aircraft altitude, aircraft ground speed, and/or aircraft angle of attack? The original specification failed to describe any structure for box 2 “input module 2 configured to receive signals detecting a breakdown in a first turbine engine” instead the Specification just repeats “input module” two times, in Paras. [0023] and [0059], without ever describing what structure or structures make up the disclosed “input module 2 configured to receive signals detecting a breakdown in a first turbine engine”. So Fig. 4 just shows a bunch of empty “black boxes” that are not shown to be connected to any one or more of the other empty “black boxes”. MPEP 2164.01(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.” As discussed in the 112(b) and 112(a) for Claims 8 and 9, the application FAILED to provide a sufficient disclosure of the apparatus, i.e., the electronic control unit. 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 automated control method for the turbine engines of a rotary-wing aircraft provided with a plurality of turbine engines during a breakdown of one turbine engine, the method being intended to be implemented by an electronic control unit configured to receive a rotation speed setpoint of the rotary wing; (B) the nature of the invention – method steps comprising: determining the flight phase in which the aircraft is situated, then, when the aircraft is in a phase other than a takeoff phase, - activating operation of the turbine engines in a misaligned mode via commanding a progressive reduction in the power of said first turbine engine and commanding a progressive increase of the power of at least one second turbine engine of the aircraft, the progressive reduction in power of the first turbine engine and the progressive increase in power of said at least one second turbine engine being controlled in a complementary manner to maintain the rotation speed of the rotary wing at the wing rotation speed setpoint of the rotary wing, - activating an indicator, for the pilot, of an engine anomaly related to the detected breakdown, inviting him to employ prudent piloting, and - setting a power limiter configured to limit the power of the turbine engines of the aircraft to a first maximum available power threshold (OEIH) corresponding to a maximum power usable by a turbine engine for a first limited period; (C) the state of the prior art – McLain et al. (3,963,372) teaches in Figs. 1 – 9, an automated control method for the turbine engines (15 – three shown in Fig. 1) of a rotary-wing aircraft (helicopter) provided with a plurality of turbine engines (15 – three shown in Fig. 1). McLain does not teach the automated control method comprises: - determining the flight phase in which the aircraft is situated, then, when the aircraft is in a phase other than a takeoff phase, - activating operation of the turbine engines in a misaligned mode via commanding a progressive reduction in the power of said first turbine engine and commanding a progressive increase of the power of at least one second turbine engine of the aircraft, the progressive reduction in power of the first turbine engine and the progressive increase in power of said at least one second turbine engine being controlled in a complementary manner to maintain the rotation speed of the rotary wing at the wing rotation speed setpoint of the rotary wing, - activating an indicator, for the pilot, of an engine anomaly related to the detected breakdown, inviting him to employ prudent piloting, and - setting a power limiter configured to limit the power of the turbine engines of the aircraft to a first maximum available power threshold (OEIH) corresponding to a maximum power usable by a turbine engine for a first limited period; (E) the level of predictability in the art – low because the original written description failed to sufficiently describe how the Applicant performed all the method steps.; (F) the amount of direction provided by the inventor – applicant's disclosure does not teach how to make or use the invention. The written description basically just repeats the claim language without sufficiently describing exactly how Applicant performed the method steps, functional limitations, or program steps. The written description fails to describe any equations or algorithms to determining the flight phase in which the aircraft is situated, then, when the aircraft is in a phase other than a takeoff phase, - activating operation of the turbine engines in a misaligned mode via commanding a progressive reduction in the power of said first turbine engine and commanding a progressive increase of the power of at least one second turbine engine of the aircraft, the progressive reduction in power of the first turbine engine and the progressive increase in power of said at least one second turbine engine being controlled in a complementary manner to maintain the rotation speed of the rotary wing at the wing rotation speed setpoint of the rotary wing, - activating an indicator, for the pilot, of an engine anomaly related to the detected breakdown, inviting him to employ prudent piloting, and - setting a power limiter configured to limit the power of the turbine engines of the aircraft to a first maximum available power threshold corresponding to a maximum power usable by a turbine engine for a first limited period that encompasses a near infinite number of different parameters and a near infinite number of combinations of said different parameters. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, that there were a near infinite number of ways to determine, i.e., calculate, determining the flight phase in which the aircraft is situated, then, when the aircraft is in a phase other than a takeoff phase, - activating operation of the turbine engines in a misaligned mode via commanding a progressive reduction in the power of said first turbine engine and commanding a progressive increase of the power of at least one second turbine engine of the aircraft, the progressive reduction in power of the first turbine engine and the progressive increase in power of said at least one second turbine engine being controlled in a complementary manner to maintain the rotation speed of the rotary wing at the wing rotation speed setpoint of the rotary wing, - activating an indicator, for the pilot, of an engine anomaly related to the detected breakdown, inviting him to employ prudent piloting, and - setting a power limiter configured to limit the power of the turbine engines of the aircraft to a first maximum available power threshold corresponding to a maximum power usable by a turbine engine for a first limited period that encompasses a near infinite number of different parameters and a near infinite number of combinations of said different parameters. As discussed above, Specification Para. [0059] disclosed “The electronic control unit 1 comprises an input module 2 configured to receive signals detecting a breakdown in a first turbine engine among the turbine engines of the rotary-wing aircraft, a means 3 for determining the flight phase in which the aircraft is situated, and a means 4 for activating operation of the turbine engines in a misaligned mode”. Specification Para. [0060] disclosed “The electronic control unit also comprises a means 5 for activating an indicator on an engine anomaly for the pilot, inviting him to employ prudent piloting, and a means 6 for setting a power limiter allowing selecting either the second maximum available power threshold (OEIL) or the third maximum available power threshold (QEIC) or to return to the first maximum available power threshold (OEIH), previously selected automatically following entry into the misaligned mode.” Each of the five empty rectangular boxes labeled 2, 3, 4, 5, and 6 that make up the electronic control unit (1 – Fig. 4) are described in the Specification by function and not structure. The original specification failed to describe any structure for box 6 “means for setting a power limiter”, instead the Specification just repeats “power limiter” five times, in Paras. [0007], [0020], [0023], [0045], and [0060], without ever describing what structure or structures make up the claimed and disclosed “power limiter”. The original specification failed to describe any structure for box 5 “means 5 for activating an indicator on an engine anomaly for the pilot”, instead the Specification just repeats “activating an indicator” four times, in Paras. [0007], [0023], [0040], and [0060], without ever describing what structure or structures make up the claimed and disclosed “activating an indicator”. The original specification failed to describe what type of indicator, e.g., visual, auditory, or tactile, was activated. Is the indicator a visual indicator like a light on the aircraft control panel or an image that appears on a display panel or is projected on a heads-up-display (HUD)? Or is the indicator an auditory indicator like a buzzer noise or voice recording played over the aircraft speakers or into the pilot’s headphones? Or is the indicator a tactile indicator like a “stick shaker” that violently vibrates the control column (or yoke/stick) that the pilots holds to maneuver the aircraft? The original specification failed to describe any structure for box 4 “means 4 for activating operation of the turbine engines in a misaligned mode” instead the Specification just repeats “activating operation of the turbine engines in a misaligned mode” three times, in Paras. [0007], [0014], and [0059], without ever describing what structure or structures make up the disclosed “means 4 for activating operation of the turbine engines in a misaligned mode”. The original specification failed to describe any structure for box 3 “means 3 for determining the flight phase” instead the Specification just repeats “determining the flight phase” three times, in Paras. [0007], [0023], and [0059], without ever describing what structure or structures make up the disclosed “means 3 for determining the flight phase”. The original specification failed to describe how the flight phase was determined. Was the flight phase determined by pilot input, e.g., pilot pushed a button for take-off flight phase and the pilot pushed a different button for cruise flight phase? Was the flight phase determined by aircraft altitude? Was the flight phase determined by aircraft ground speed? Was the flight phase determined by aircraft angle of attack? Was the flight phase determined by a combination of two or more variables like aircraft altitude, aircraft ground speed, and/or aircraft angle of attack? The original specification failed to describe any structure for box 2 “input module 2 configured to receive signals detecting a breakdown in a first turbine engine” instead the Specification just repeats “input module” two times, in Paras. [0023] and [0059], without ever describing what structure or structures make up the disclosed “input module 2 configured to receive signals detecting a breakdown in a first turbine engine”. So Fig. 4 just shows a bunch of empty “black boxes” that are not shown to be connected to any one or more of the other empty “black boxes”. Therefore, it would be impossible for a potential infringer to design their invention to not infringe Applicant’s claimed invention because Applicant failed to describe exactly how Applicant’s claimed invention performed the method steps, functional limitations, or program steps. In other words, the written description disclosed the idea(s) of the method steps, functional limitations, or program steps but failed to sufficiently describe how Applicant actually performed the method steps, functional limitations, or program steps. Ideas are not patentable inventions.; (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)]. Claims 1 - 7 are rejected under 35 U.S.C. 112(a), 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 8 and 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 8, ll. 2 – 5 recites “electronic control unit being configured to receive a rotation speed setpoint of the rotary wing and automatically control the turbine engines of the aircraft during a breakdown of one turbine engine”. As discussed in the 112(f) interpretation, 112(b) and 112(a) written description rejections above, Specification Paras. [0006], [0023] and Para. [0059] merely repeat the claim language without any further details. Fig. 4 illustrates the “electronic control unit being configured to receive a rotation speed setpoint of the rotary wing and automatically control the turbine engines of the aircraft during a breakdown of one turbine engine” as an empty rectangular box with reference character (1) containing five other empty rectangular boxes labeled 2, 3, 4, 5, and 6. Specification Para. [0059] disclosed “The electronic control unit 1 comprises an input module 2 configured to receive signals detecting a breakdown in a first turbine engine among the turbine engines of the rotary-wing aircraft, a means 3 for determining the flight phase in which the aircraft is situated, and a means 4 for activating operation of the turbine engines in a misaligned mode”. Specification Para. [0060] disclosed “The electronic control unit also comprises a means 5 for activating an indicator on an engine anomaly for the pilot, inviting him to employ prudent piloting, and a means 6 for setting a power limiter allowing selecting either the second maximum available power threshold (OEIL) or the third maximum available power threshold (QEIC) or to return to the first maximum available power threshold (OEIH), previously selected automatically following entry into the misaligned mode.” Each of the five empty rectangular boxes labeled 2, 3, 4, 5, and 6 that make up the electronic control unit (1) are described in the Specification by function and not structure. The original specification failed to describe any structure for box 6 “means for setting a power limiter”, instead the Specification just repeats “power limiter” five times, in Paras. [0007], [0020], [0023], [0045], and [0060], without ever describing what structure or structures make up the claimed and disclosed “power limiter”. The original specification failed to describe any structure for box 5 “means 5 for activating an indicator on an engine anomaly for the pilot”, instead the Specification just repeats “activating an indicator” four times, in Paras. [0007], [0023], [0040], and [0060], without ever describing what structure or structures make up the claimed and disclosed “activating an indicator”. The original specification failed to describe what type of indicator, e.g., visual, auditory, or tactile, was activated. Is the indicator a visual indicator like a light on the aircraft control panel or an image that appears on a display panel or is projected on a heads-up-display (HUD)? Or is the indicator an auditory indicator like a buzzer noise or voice recording played over the aircraft speakers or into the pilot’s headphones? Or is the indicator a tactile indicator like a “stick shaker” that violently vibrates the control column (or yoke/stick) that the pilots holds to maneuver the aircraft? The original specification failed to describe any structure for box 4 “means 4 for activating operation of the turbine engines in a misaligned mode” instead the Specification just repeats “activating operation of the turbine engines in a misaligned mode” three times, in Paras. [0007], [0014], and [0059], without ever describing what structure or structures make up the disclosed “means 4 for activating operation of the turbine engines in a misaligned mode”. The original specification failed to describe any structure for box 3 “means 3 for determining the flight phase” instead the Specification just repeats “determining the flight phase” three times, in Paras. [0007], [0023], and [0059], without ever describing what structure or structures make up the disclosed “means 3 for determining the flight phase”. The original specification failed to describe how the flight phase was determined. Was the flight phase determined by pilot input, e.g., pilot pushed a button for take-off flight phase and the pilot pushed a different button for cruise flight phase? Was the flight phase determined by aircraft altitude? Was the flight phase determined by aircraft ground speed? Was the flight phase determined by aircraft angle of attack? Was the flight phase determined by a combination of two or more variables like aircraft altitude, aircraft ground speed, and/or aircraft angle of attack? The original specification failed to describe any structure for box 2 “input module 2 configured to receive signals detecting a breakdown in a first turbine engine” instead the Specification just repeats “input module” two times, in Paras. [0023] and [0059], without ever describing what structure or structures make up the disclosed “input module 2 configured to receive signals detecting a breakdown in a first turbine engine”. So Fig. 4 just shows five empty “black boxes” that are not shown to be connected to any one or more of the other empty “black boxes” all located inside another “black box”.
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 electronic control unit for a rotary-wing aircraft provided with a plurality of turbine engines, the electronic control unit being configured to receive a rotation speed setpoint of the rotary wing and automatically control the turbine engines of the aircraft during a breakdown of one turbine engine, the electronic control unit comprising; (B) the nature of the invention – an electronic control unit, i.e., hardware, software, or a combination of hardware and software, configured to: - receive signals detecting a breakdown in a first turbine engine among the turbine engines of the rotary wing aircraft,- determine a flight phase in which the aircraft is situated,- activating operation of the turbine engines in a misaligned mode configured to deliver, when the aircraft is in a phase other than a takeoff phase, a command to progressively reduce a power of said first turbine engine and a command to progressively increase the power of at least one second turbine engine of the aircraft, the progressive reduction in power of the first turbine engine and the progressive increase in power of said at least one second turbine engine being controlled in a complementary manner to maintain the rotation speed of the rotating wing at the rotation speed of the rotation speed setpoint of the rotary wing, - activate an indicator of an engine anomaly for the pilot, inviting him to employ prudent piloting, and - limit the power of the turbine engines of the aircraft to at least a first maximum available power threshold corresponding to a maximum power usable by a turbine engine for a first limited period; (C) the state of the prior art – McLain et al. (3,963,372) teaches in Figs. 1 – 9, an automated control method for the turbine engines (15 – three shown in Fig. 1) of a rotary-wing aircraft (helicopter) provided with a plurality of turbine engines (15 – three shown in Fig. 1). McLain does not teach the an electronic control unit, i.e., hardware, software, or a combination of hardware and software, configured to receive signals detecting a breakdown in a first turbine engine among the turbine engines of the rotary wing aircraft,- determine a flight phase in which the aircraft is situated, - activate operation of the turbine engines in a misaligned mode configured to deliver, when the aircraft is in a phase other than a takeoff phase, a command to progressively reduce a power of said first turbine engine and a command to progressively increase the power of at least one second turbine engine of the aircraft, the progressive reduction in power of the first turbine engine and the progressive increase in power of said at least one second turbine engine being controlled in a complementary manner to maintain the rotation speed of the rotating wing at the rotation speed of the rotation speed setpoint of the rotary wing, - activate an indicator of an engine anomaly for a pilot, inviting him to employ prudent piloting, and - limit the power of the turbine engines of the aircraft to at least a first maximum available power threshold corresponding to a maximum power usable by a turbine engine for a first limited period.; (E) the level of predictability in the art – low because the original written description failed to sufficiently describe Applicant’s electronic control unit comprising a bunch of modules that carry out the computer functional limitations.; (F) the amount of direction provided by the inventor – applicant's disclosure does not teach how to make or use the invention. The written description basically just repeats the claim language without sufficiently describing exactly how Applicant performed the method steps, functional limitations, or program steps. The written description fails to describe any equations or algorithm, i.e., hardware, software, or a combination of hardware and software, describing how the electronic control unit is configured to receive signals detecting a breakdown in a first turbine engine among the turbine engines of the rotary wing aircraft, - determine a flight phase in which the aircraft is situated,- activate operation of the turbine engines in a misaligned mode configured to deliver, when the aircraft is in a phase other than a takeoff phase, a command to progressively reduce a power of said first turbine engine and a command to progressively increase the power of at least one second turbine engine of the aircraft, the progressive reduction in power of the first turbine engine and the progressive increase in power of said at least one second turbine engine being controlled in a complementary manner to maintain the rotation speed of the rotating wing at the rotation speed of the rotation speed setpoint of the rotary wing, - activate an indicator of an engine anomaly for a pilot, inviting him to employ prudent piloting, and - limit the power of the turbine engines of the aircraft to at least a first maximum available power threshold corresponding to a maximum power usable by a turbine engine for a first limited period. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, that there were a near infinite number of ways to determine, i.e., calculate, determining the flight phase in which the aircraft is situated, then, when the aircraft is in a phase other than a takeoff phase, - activate operation of the turbine engines in a misaligned mode via commanding a progressive reduction in the power of said first turbine engine and commanding a progressive increase of the power of at least one second turbine engine of the aircraft, the progressive reduction in power of the first turbine engine and the progressive increase in power of said at least one second turbine engine being controlled in a complementary manner to maintain the rotation speed of the rotary wing at the wing rotation speed setpoint of the rotary wing, - activate an indicator, for a pilot, of an engine anomaly related to the detected breakdown, inviting him to employ prudent piloting, and - limit the power of the turbine engines of the aircraft to a first maximum available power threshold corresponding to a maximum power usable by a turbine engine for a first limited period. As discussed above, Specification Para. [0059] disclosed “The electronic control unit 1 comprises an input module 2 configured to receive signals detecting a breakdown in a first turbine engine among the turbine engines of the rotary-wing aircraft, a means 3 for determining the flight phase in which the aircraft is situated, and a means 4 for activating operation of the turbine engines in a misaligned mode”. Specification Para. [0060] disclosed “The electronic control unit also comprises a means 5 for activating an indicator on an engine anomaly for the pilot, inviting him to employ prudent piloting, and a means 6 for setting a power limiter allowing selecting either the second maximum available power threshold (OEIL) or the third maximum available power threshold (QEIC) or to return to the first maximum available power threshold (OEIH), previously selected automatically following entry into the misaligned mode.” Each of the five empty rectangular boxes labeled 2, 3, 4, 5, and 6 that make up the electronic control unit (1 – Fig. 4) are described in the Specification by function and not structure. The original specification failed to describe any structure for box 6 “means for setting a power limiter”, instead the Specification just repeats “power limiter” five times, in Paras. [0007], [0020], [0023], [0045], and [0060], without ever describing what structure or structures make up the claimed and disclosed “power limiter”. The original specification failed to describe any structure for box 5 “means 5 for activating an indicator on an engine anomaly for the pilot”, instead the Specification just repeats “activating an indicator” four times, in Paras. [0007], [0023], [0040], and [0060], without ever describing what structure or structures make up the claimed and disclosed “activating an indicator”. The original specification failed to describe what type of indicator, e.g., visual, auditory, or tactile, was activated. Is the indicator a visual indicator like a light on the aircraft control panel or an image that appears on a display panel or is projected on a heads-up-display (HUD)? Or is the indicator an auditory indicator like a buzzer noise or voice recording played over the aircraft speakers or into the pilot’s headphones? Or is the indicator a tactile indicator like a “stick shaker” that violently vibrates the control column (or yoke/stick) that the pilots holds to maneuver the aircraft? The original specification failed to describe any structure for box 4 “means 4 for activating operation of the turbine engines in a misaligned mode” instead the Specification just repeats “activating operation of the turbine engines in a misaligned mode” three times, in Paras. [0007], [0014], and [0059], without ever describing what structure or structures make up the disclosed “means 4 for activating operation of the turbine engines in a misaligned mode”. The original specification failed to describe any structure for box 3 “means 3 for determining the flight phase” instead the Specification just repeats “determining the flight phase” three times, in Paras. [0007], [0023], and [0059], without ever describing what structure or structures make up the disclosed “means 3 for determining the flight phase”. The original specification failed to describe how the flight phase was determined. Was the flight phase determined by pilot input, e.g., pilot pushed a button for take-off flight phase and the pilot pushed a different button for cruise flight phase? Was the flight phase determined by aircraft altitude? Was the flight phase determined by aircraft ground speed? Was the flight phase determined by aircraft angle of attack? Was the flight phase determined by a combination of two or more variables like aircraft altitude, aircraft ground speed, and/or aircraft angle of attack? The original specification failed to describe any structure for box 2 “input module 2 configured to receive signals detecting a breakdown in a first turbine engine” instead the Specification just repeats “input module” two times, in Paras. [0023] and [0059], without ever describing what structure or structures make up the disclosed “input module 2 configured to receive signals detecting a breakdown in a first turbine engine”. So Fig. 4 just shows five empty “black boxes” that are not shown to be connected to any one or more of the other empty “black boxes” all located inside another “black box”. Therefore, it would be impossible for a potential infringer to design their invention to not infringe Applicant’s claimed invention because Applicant failed to describe the structure, i.e., hardware, software, or a combination of hardware and software, of Applicant’s claimed invention. In other words, the written description disclosed the idea of the electronic control unit but failed to sufficiently describe Applicant’s electronic control unit structure, i.e., hardware, software, or a combination of hardware and software. Ideas are not patentable inventions.; (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)]. Claims 8 and 9 are rejected under 35 U.S.C. 112(a), 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.
Note: The lack of enablement for Claims 1 – 9 prevented application of prior art, because the mechanism involved, not being disclosed and therefore not enabled, could not be searched.
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 05/22/2026 have been fully considered but they are not persuasive.
Applicant argues on Pg. 8, first paragraph that “A person of ordinary skill in the art would have understood an "electronic control unit" to refer to a structural component including, for example, one or more processors, control circuitry, memory, and associated interfaces configured to execute aircraft and engine control operations. Such terminology is commonly used in the aerospace field to designate definite structure, including FADEC systems and other aircraft engine-control computers.” This argument is 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 where the original Specification disclosed that the claimed "electronic control unit" included a one or more processors, control circuitry, memory, …, including FADEC systems. In fact, the original Specification failed to disclose any of the argued structural components. None of the processor, control circuitry, memory, and/or FADEC were mentioned by the original Specification. The Claim interpretation and the claim rejections are maintained.
Applicant argues on Pg. 8, second paragraph that “For example, paragraphs [0006], [0023], and [0059] of the Specification, together with Figure 4, describe the electronic control unit and its role in receiving rotary-wing speed information and controlling turbine engine operation during engine-failure conditions. Figure 4 further depicts the controller architecture and associated functional modules used to implement these operations. A person of ordinary skill in the art would have readily understood these disclosures as identifying the structure that performs the claimed control functions.” This argument is 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’s argued Paragraphs [0006], [0023], and [0059] merely repeat the claim limitations without any additional details. Paragraph [0006] merely repeats the limitations of Claim 1, ll. 1 – 5 without any additional details. Paragraph [0023] disclosed “the electronic control unit comprising: - an input module configured to receive signals detecting a breakdown in a first turbine engine among the turbine engines of the rotary-wing aircraft, - a means for determining the flight phase in which the aircraft is situated, - a means for activating operation of the turbine engines in a misaligned mode configured to deliver, when the aircraft is in a phase other than a takeoff phase, a command to progressively reduce the power of said first turbine engine and a command to progressively increase the power of at least one second turbine engine of the aircraft, the progressive reduction in power of the first turbine engine and the progressive increase in power of said at least one second turbine engine being controlled in a complementary manner to maintain the rotation speed of the rotary wing at the rotation speed of the rotation setpoint of the rotary wing, and - a means for activating an indicator of an engine anomaly for the pilot, inviting him to employ prudent piloting, and - a means for setting a power limiter configured to limit the power of the turbine engines of the aircraft to at least a first maximum available power threshold (OEIH) corresponding to a maximum power usable by a turbine engine for a first limited period.” Paragraph [0059] disclosed “The electronic control unit 1 comprises an input module 2 configured to receive signals detecting a breakdown in a first turbine engine among the turbine engines of the rotary-wing aircraft, a means 3 for determining the flight phase in which the aircraft is situated, and a means 4 for activating operation of the turbine engines in a misaligned mode.” As discussed in the Office Action mailed on 03/24/2026, MPEP2181(I)(A) cites “module for” among a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f). MPEP2181(I) states that "configured to" was a linking phrase equivalent to “for” or “means for”. Therefore, “input module configured to…” is a generic placeholder that invokes 112(f) interpretation. All the “means for…determining, activating, setting” are generic placeholders that invokes 112(f) interpretation. Therefore, Paragraphs [0023] and [0059] disclosed means or steps for performing a specified function without describing the structure, material, or acts that actually performed said specified function. Fig. 4 illustrates the “electronic control unit” as an empty rectangular box with reference character (1) containing five other empty rectangular boxes labeled 2, 3, 4, 5, and 6. Each of the five empty rectangular boxes labeled 2, 3, 4, 5, and 6 that make up the electronic control unit (1) are described in the Specification by function and not structure. The original specification failed to describe any structure for box 6 “means for setting a power limiter”, instead the Specification just repeats “power limiter” five times, in Paras. [0007], [0020], [0023], [0045], and [0060], without ever describing what structure or structures make up the claimed and disclosed “power limiter”. The original specification failed to describe any structure for box 5 “means 5 for activating an indicator on an engine anomaly for the pilot”, instead the Specification just repeats “activating an indicator” four times, in Paras. [0007], [0023], [0040], and [0060], without ever describing what structure or structures make up the claimed and disclosed “activating an indicator”. The original specification failed to describe what type of indicator, e.g., visual, auditory, or tactile, was activated. Is the indicator a visual indicator like a light on the aircraft control panel or an image that appears on a display panel or is projected on a heads-up-display (HUD)? Or is the indicator an auditory indicator like a buzzer noise or voice recording played over the aircraft speakers or into the pilot’s headphones? Or is the indicator a tactile indicator like a “stick shaker” that violently vibrates the control column (or yoke/stick) that the pilots holds to maneuver the aircraft? The original specification failed to describe any structure for box 4 “means 4 for activating operation of the turbine engines in a misaligned mode” instead the Specification just repeats “activating operation of the turbine engines in a misaligned mode” three times, in Paras. [0007], [0014], and [0059], without ever describing what structure or structures make up the disclosed “means 4 for activating operation of the turbine engines in a misaligned mode”. The original specification failed to describe any structure for box 3 “means 3 for determining the flight phase” instead the Specification just repeats “determining the flight phase” three times, in Paras. [0007], [0023], and [0059], without ever describing what structure or structures make up the disclosed “means 3 for determining the flight phase”. The original specification failed to describe how the flight phase was determined. Was the flight phase determined by pilot input, e.g., pilot pushed a button for take-off flight phase and the pilot pushed a different button for cruise flight phase? Was the flight phase determined by aircraft altitude? Was the flight phase determined by aircraft ground speed? Was the flight phase determined by aircraft angle of attack? Was the flight phase determined by a combination of two or more variables like aircraft altitude, aircraft ground speed, and/or aircraft angle of attack? The original specification failed to describe any structure for box 2 “input module 2 configured to receive signals detecting a breakdown in a first turbine engine” instead the Specification just repeats “input module” two times, in Paras. [0023] and [0059], without ever describing what structure or structures make up the disclosed “input module 2 configured to receive signals detecting a breakdown in a first turbine engine”. So Fig. 4 just shows five empty “black boxes” that are not shown to be connected to any one or more of the other empty “black boxes” all located inside another “black box”. The Claim interpretation and the claim rejections are maintained.
Applicant argues on Pg. 11, first paragraph that “Applying the Wands factors outlined above, the Specification enables one of ordinary skill in the art to practice the full scope of the claims without undue experimentation. The Specification provides detailed operational logic for implementation of the claimed automated turbine-engine control functionality…. In particular, Applicant's Figure 1 illustrates a detailed control sequence including verification logic, flight-phase determination, misaligned-mode activation, complementary engine-power adjustment, pilot indication, and power-limiter setting. Applicant's Figures 5-7 further illustrate operational behavior of the turbine engines during implementation of the disclosed control method.” These arguments are not persuasive because the cited paragraphs and the cited figures all fail to sufficiently describe how to make and use the claimed invention. Regarding the flow chart shown in Fig. 1, MPEP 2164.06(C)(II) 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.” Applicant’s Fig. 1 shows the flowchart steps but failed to illustrate the structures, e.g., hardware, software/algorithm, or a combination of hardware and software/algorithm, that Applicant invented for the claimed invention. 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).” Additionally, Applicant’s Figs. 5 – 7 illustrate the result that one might achieve if one made that invention. However, Applicant’s Figs. 5 – 7 failed to illustrate the structures, e.g., hardware, software/algorithm, or a combination of hardware and software/algorithm, that Applicant invented for the claimed invention. It was held in Univ. of California v. Eli Lilly and Co., 43 USPQ2d, 1398,1406 (Fed. Cir. 1997) (“The description requirement of the patent statute requires a description of an invention, not an indication of a result that one might achieve if one made that invention.”). The rejections are maintained.
Applicant argues on Pg. 12, second paragraph continuing on to Pg. 13 that “Further, the claimed invention pertains to a predictable mechanical and aircraft- control art involving known electronic control systems, FADEC systems, processors, sensors, control circuitry, and turbine-engine management techniques. A person of ordinary skill in the aircraft engine-control arts would have readily understood how to implement and program the disclosed electronic control unit using conventional aircraft control hardware and software architectures based on the operational logic and flow sequences disclosed in the Specification. In particular, an ordinary person skilled in the art would have readily understood how to program the electronic control unit to … The law does not require, for example, disclosure of source code or exhaustive implementation details where, as here, a person of ordinary skill in the art would have understood how to implement the disclosed control strategy using known aircraft engine-control technology. At most, only routine implementation and optimization using conventional FADEC systems, processors, sensors, and known aircraft control-programming techniques would be required, which does not constitute undue experimentation under Wands.” These argument 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 conclusory arguments that “A person of ordinary skill in the aircraft engine-control arts would have readily understood how to implement and program the disclosed electronic control unit..”, “In particular, an ordinary person skilled in the art would have readily understood how to program the electronic control unit to…”, and “a person of ordinary skill in the art would have understood how to implement the disclosed control strategy using known aircraft engine-control technology.” Furthermore, as discussed above, Applicant has failed to cite where the original Specification disclosed that the claimed "electronic control unit" included a one or more processors, control circuitry, memory, …, including FADEC systems. In fact, the original Specification failed to disclose any of the argued structural components. None of the processor, control circuitry, memory, and/or FADEC were mentioned by the original Specification. The rejections are maintained.
Correspondence
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/LORNE E MEADE/Primary Examiner, Art Unit 3741
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