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 .
Common Ownership/Inventorship
Application 18954837 (Published as US20250163790) and application 18954863 (Published as US20250163996, Patented as US12523133) share common ownership/inventorship with the current application and have been reviewed during the search of this current application.
Election/Restrictions
Applicant's election with traverse of the Group II Invention and election of Species 11 (Fig.8a), and identification of claims 13-19 and 21 as the elected claims in the reply filed on 12/19/2025 remains acknowledged. The traversal was found non-persuasive and the requirement made final in the previous 1/30/2026 Office action. Claims 2-9, 12, 20 and 22-36 remain withdrawn.
Applicant’s subsequent remarks (8/4/2026) newly argue that claims 34-36 should not have been withdrawn in the previous Office action since they depend from claim 13 of elected invention Group II. This argument is untimely and not persuasive. For a claim to avoid withdrawal it must be drawn to both the elected invention and the elected species. In this case, applicant’s previous election expressly identified only claims 13-19 and 21 as being drawn to the elected species. Note the following:
See p.11 of applicant’s 12/19/2025 remarks which states “Applicant hereby elects, with traverse, Species 11 corresponding to Fig.8a and Claims 13-19 and 21 for further prosecution.”
See p.7 of the 11/3/2025 restriction (2nd to last paragraph) which clearly detailed applicant’s burden to identify “the claims encompassing the elected species… including any claims subsequently added”.
See also MPEP 809.02(a) which clearly states “a reply to a requirement made according to this section should include a proper election along with a listing of all claims readable thereon, including any claims subsequently added.”
Lastly, note that applicant’s 4/15/2026 amendment omitted claims 34-36 with remarks (p.9, “Status of the Application”) listing them as having been withdrawn without any argument against the withdrawal.
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.
It is unclear whether or not claims 13-19 and 21 invoke 35 U.S.C. 112(f).
The claims are drawn to “A method for operating…” (line 1 of claim 13) without any recitation of the phraseology “step for” that would normally be used to invoke 35 U.S.C. 112(f). However, the method comprises numerous operating step functions without recitation of any act for performing the functions (i.e., no claim recitation of any computer/algorithm or other act for performing the functions), such that 112(f) may be invoked even without express “step for” language in the claims. See MPEP 2181(I)(A) which states in various parts:
“Masco Corp. v. United States, 303 F.3d 1316, 1327, 64 USPQ2d 1182, 1189 (Fed. Cir. 2002) (“[W]here a method claim does not contain the term ‘step[s] for,’ a limitation of that claim cannot be construed as a step-plus-function limitation without a showing that the limitation contains no act.").”
“Seal-Flex, Inc. v. Athletic Track and Court Construction, 172 F.3d 836, 850, 50 USPQ2d 1225, 1234 (Fed. Cir. 1999) (Rader, J., concurring) ("Claim elements without express step-plus-function language may nevertheless fall within Section 112, Para. 6 if they merely claim the underlying function without recitation of acts for performing that function…. In general terms, the ‘underlying function’ of a method claim element corresponds to what that element ultimately accomplishes in relationship to what the other elements of the claim and the claim as a whole accomplish. ‘Acts,’ on the other hand, correspond to how the function is accomplished…”
The question of whether 35 U.S.C. 112(f) is invoked is further obfuscated by the written description, which fails to disclose what acts and equivalents perform the claimed operating functions. Note the following examples of method of operating step functions lacking sufficient limitation or disclosure to any particular act for performing (e.g., no computer/algorithm operating act, no mechanical operator/operating act, no human operator or manual operating act, etc.)
Claim 13 recites “identifying a need for a gear change in the transmission” (line 5 of claim 13) without limitation or disclosure to any particular act for performing the identification (e.g., no computer/algorithm identifier of need, no mechanical identifier of need, no description of how a human operator would identify such need, etc.).
Claim 13 recites “operating one or more electric motors to provide equilibrium power to the transmission by discharging a supercapacitor electrically coupled to the one or more electric motors, thereby providing a burst of power to the one or more electric motors” (claim 13, emphasis added). The claim and disclosure are silent as to who/what operator operates to provide and how “equilibrium power” can be provided in accordance with applicant’s disclosed definition of the phrase “equilibrium power”, which is far narrower in scope than mere --power--. See para.0036 of applicant’s written description which states:
“As used herein, equilibrium power means that external load 14 is not being driven but held in a suspended state in order to minimize pulldown. For example, where external load 14 is a reciprocating pump, during a state of equilibrium power, plunger movement is suspended so that the reciprocating pump is not moving fluid. Rather, the pump is held in an equilibrium state, preventing forward movement of the plunger but also preventing backward movement of the plunger, so that the pump can be readily actuated upon completion of the gear change without having to overcome deadhead forces placed on the pump by the overall pressurized network.”
While one of ordinary skill might be able to later devise a way to operate to achieve the claimed “equilibrium power” particulars, perhaps via innovating a new computer/algorithm that will receive torque/force inputs from sensors and calculate a needed amount of electric power to provide to the motors that will achieve the specific “equilibrium power” requirements, there is no evidence of record that applicant had possession of any such computer/algorithm or any other act that is sufficient for achieving the claimed function.
Claim 13 recites “providing an on-going supply of electricity from an additional electricity source other than the discharged supercapacitor to the one or more electric motors to maintain the equilibrium power during the duration of the gear change”. This “maintaining of the equilibrium power” lacks sufficient acts by reasoning substantially similar to that set forth in the bullet statement above for “providing equilibrium power”.
Note that the lack of disclosure raises serious written description and clarity issues regardless of whether or not the claims invoke 35 U.S.C. 112(f) since requirements for possession under 35 U.S.C. 112(a) written description and for clarity under 35 U.S.C. 112(b) apply under either situation, as is detailed in the rejections elsewhere below.
Claim Rejections - 35 USC § 112(a)
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.
Claims 13-19 and 21 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention.
Applicant’s claims require “A method for operating an industrial power system…” (line 1 of claim 13) followed by numerous operating step functions (see numerous functions set forth in the “Claim Interpretation” section elsewhere above and incorporated herein by reference). Applicant’s claims and disclosure fail to identify any operator species (e.g., computer, person, machinery, etc.) nor how the operator might operate (e.g., computer algorithm, manipulations to be carried out by a human, mechanical manipulations, etc.) to achieve the claimed functions. Applicant did not disclose/describe sufficient details of any species of operator/operating (computer/algorithm, human, machine, etc.) much less sufficient details of a representative number of species required to establish possession of the full broad genus claimed.
See MPEP 2163.03(V) which states in part:
“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… 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.’…”
See MPEP 2163(II)(A)(3)(a)(ii), which states in various parts:
“The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice… reduction to drawings… or by disclosure of relevant, identifying characteristics… sufficient to show the inventor was in possession of the claimed genus…”
“[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention…”
“[T]he purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification…”
“A ‘representative number of species’ means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus…”
“A patentee will not be deemed to have invented species sufficient to constitute the genus by virtue of having disclosed a single species when… Claims directed to PTFE dental floss with a friction-enhancing coating were not supported by a disclosure of a microcrystalline wax coating where there was no evidence in the disclosure or anywhere else in the record showing applicant conveyed that any other coating was suitable for a PTFE dental floss…”
“The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 merely by clearly describing one embodiment of the thing claimed… The issue is whether a person skilled in the art would understand inventor to have invented, and been in possession of, the invention as broadly claimed…”
Claim Rejections - 35 USC § 112(b)
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.
Claims 13-19 and 21 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Applicant’s claims require “A method for operating an industrial power system…” (line 1 of claim 13) followed by numerous operating step functions (see numerous functions set forth in the “Claim Interpretation” section elsewhere above and incorporated herein by reference). Applicant’s claims and disclosure fail to identify any operator (e.g., computer, human, etc.) nor how the operator might operate (e.g., computer algorithm, manipulations to be carried out by a human, etc.) Applicant did not disclose/describe sufficient details of any species of operator/operating (computer/algorithm, human, machine, etc.) much less sufficient details of a representative number of species required to establish a clear boundary for the full broadly claimed genus. See MPEP 2163.03(VI) which states:
“If the specification fails to disclose sufficient corresponding structure, materials, or acts that perform the entire claimed function, then the claim limitation is indefinite because the applicant has in effect failed to particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b)… Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a)… because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.”
Allowability
At least the structural elements set forth in method claims 13-19 and 21 were generally known in the art. More particularly, Bischoff US20050126836 discloses an internal combustion engine (12), a transmission (24), electric motors (14, 16) and an electricity source (battery 58). Anderson US10828953 teaches that it was known to be desirable to combine batteries with super capacitors for powering electric motors stating “such as a rechargeable battery bank, super capacitors, and/or other suitable means of storing electrical energy” (col.3, ll.4-7, emphasis added) and “a bank of capacitors (e.g., super capacitors)” (col.9, ll.25-28).
Regarding the numerous claimed method of operating step functions set forth in claims 13-19 and 21, the examiner notes that applicant neither claims nor discloses any computer/algorithm nor any other act sufficient to perform the numerous method of operating step functions thus creating serious written description and clarity issues (see 35 USC 112 rejections elsewhere above). It does not appear that the mere existence of applicant’s claimed structures (e.g., engine, transmission, motors, battery, super capacitor) would necessarily/inherently perform the claimed method step functions in their normal operation without some additional act (e.g., computer/algorithm, etc.). However, if such later becomes applicant’s contention then the examiner notes that the prior art structures would likewise be presumed to be no less inherently capable of performing the claimed method step functions. See MPEP 2112.02(I) which states:
“Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process.”
However, no prior art rejection under 35 USC 102/103 nor any determination of allowability over the prior art can be made at this stage due to the 35 U.S.C. 112 issues detailed elsewhere above. Note the following:
See MPEP §2143.03(I), which states in part “an examiner should not simply speculate about the meaning of the claim language and then enter an obviousness rejection in view of that speculative interpretation. In re Steele, 305 F.2d 859,134 USPQ 292 (CCPA 1962) (The ‘considerable speculation’ by the examiner and the Board as to the scope of the claims did not provide a proper basis for an obviousness rejection.). A claim should not be rejected over prior art just because it is indefinite. Ionescu, 222 USPQ at 540 (citing Steele).”
See MPEP §2173.06, which states in part “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.”
See also Ex parte Miyazaki, 89 USPQ2d 1207 (Board of Patent Appeals and Interferences 2008) (precedential) wherein the Board found that when the claims are indefinite "prior art rejections must fall, pro forma, because they necessarily are based on speculative assumption as to the meaning of the claims.”
See also the PTAB decision Ex parte Hyeon-Seag Kim, 2007-3890, Application 10/382,560 (Decided May 29, 2008) which was designated as “informative”. Therein the PTAB found that a claim that recites a relative term (i.e., “reduced”) without any baseline for comparison, the claim is unclear under 35 USC 112. The PTAB further found that the “speculation and conjecture” that “must be utilized by us and the artisan” for an unclear claim would prevent a proper comparison of the prior art to the claim. The PTAB supported their decision by cited two CCPA decisions as follows: “See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning
the meaning of claim language.); See also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (‘If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious-the claim becomes indefinite.’)”. 1
Response to Arguments
Applicant argues that claims 34-36 should not be withdrawn. This is not persuasive for reasons set forth in the “Election/Restrictions” section elsewhere above (incorporated herein by reference).
Applicant argues that the claims recite physical acts rather than abstract functions and that one of ordinary skill would know how to perform the functions without any need of a computer such that no computer algorithm need be disclosed. This is not persuasive. The elements manipulated in the claimed method steps are not the acts or means for performing the manipulations. For instance, regarding the claim 13 method step of “identifying a need for a gear change in the transmission”, the transmission is not the acts/means of performing the identifying step. Because the claim is not limited to any particular acts/means for identifying (human identifier of need, purely mechanical identifier of need, computer identifier of need, etc.) applicant’s burden is to establish possession of all acts/means falling within the broad claimed scope. The fact that someone other than applicant might later devise acts to perform applicant’s claimed method is irrelevant to the question of whether or not applicant had possession of such acts at the time of filing since the rejection actually set forth is with respect to the written description requirement of 35 USC 112(a) rather than the enablement requirement. Accordingly, applicant’s burden is to show a sufficient reduction to practice, description and/or drawings by applicant for the full broad scope claimed. See the MPEP sections quoted in the 35 USC 112(a) rejection elsewhere above.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTOR L MACARTHUR whose telephone number is (571)272-7085.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/VICTOR L MACARTHUR/Primary Examiner, Art Unit 3618
1 An informative decision provides Board norms on recurring issues, guidance on issues of first impression to the Board, guidance on Board rules and practices, and guidance on issues that may develop through analysis of recurring issues in many cases. See the Patent Trial and Appeal Board Standard Operating Procedure 2 (revision 10), section III.D., which states “A precedential decision is binding Board authority in subsequent matters involving similar facts or issues. Informative decisions set forth Board norms that should be followed in most cases, absent justification, although an informative decision is not binding authority on the Board.”
