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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/29/2025 has been entered.
Drawings
The drawings were received on 10/07/2025. These drawings are acceptable.
(The Examiner notes that the drawings are acceptable in terms of line quality, legibility, etc. Their acceptance does not mean that the rejections under 35 USC 112 or 101 have been overcome.)
Specification
The disclosure is objected to because it does not enable making and using the claimed device. The enablement requirement refers to the requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph that the specification describe how to make and how to use the invention. See also MPEP § 2164. See the 35 USC 112 and 101 rejections herein below for more explanation.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a)IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7, 9, 11, 12, 15-22, 24-33, 35, and 37-50 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.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue,” as outlined in MPEP 2164.01(a) These Wand factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
The factors A-H apply and will be discussed further below.
(A) The breadth of the claims;
The claims claim an inertial-thruster engine (independent claim 1), a method of operating an inertial-thruster engine (independent claims 15, and 37), and a method for achieving inertial propulsion (independent claim 44).
(B) The nature of the invention
Page 3 of the specification states that “it appears to be a tradition for inertial-thruster patents to begin with a treatment of Newton's third law of motion. Newton's law states that every action (singular) has an equal and opposite reaction. Newton's Third Law relates specifically to a single action-reaction scenario. Given that Newton's Law does not specifically cover the reaction to multiple simultaneous actions therefore Newton's third law of motion does not deny the plausibility of an inertial thrust device.
Page 51 of the specification states “that this forward movement of the pendulous gimbals 29 & 35 and rotors 14 did not produce an equal and opposite reactive motion on the unit as a whole.”
Page 55 of the specifications states that “You will observe that this forward movement of the pendulous gimbals 29 & 35 and rotors 14 does not produce an equal and opposite reactive motion on the engine as a whole during the null phase 211 when compared to the reactive motion of the thrust phase.”
Page 62 of the specification states “that the movement of the pendulous gimbals 29 and the associated precessable masses did not produce an equal and opposite reaction of the unit as a whole in the general direction of movement of the engine 99.”
Page 111 of the specification states defines an “inertial thruster [as] A device that achieves rectilinear movement without any reactive engagement with a supporting surface or fluid medium. It is substantially synonymous to an inertial-propulsion device and a reactionless drive.”
Thus, it is clear from the instant application’s specification that the claimed invention’s alleged operation and enablement requires Newton’s third law of motion, which states that every action has an equal and opposite reaction, to not apply and to be violated.
Furthermore, it is thus clear from the specification that the claimed invention is a reactionless drive which is purported to operate without a propellant and without interacting with a supporting surface or fluid medium. The law of conservation of momentum can be summarized as “In a closed system (one that does not exchange any matter with its surroundings and is not acted on by external forces) the total momentum is constant.” The nature of purported inertial thruster engines/reactionless drives is one that would require, in order to operate, momentum to not be conserved and thus the law of conservation of momentum to be violated.
(C) The state of the prior art
The specification’s own discussion of the prior art (pages 7-8 and 12-13) appears aware of the fact that inertial-thruster engine prior art is not known to work and in fact, known to not work and known to be inoperative.
The prior art has not established an enabled, operative, working way to violate Newton’s third law of motion and violate the law of conservation of momentum.
(D) The level of one of ordinary skill
A person having ordinary skill in the art would understand Newton’s third law, and would not know how to make a device that violates that law and other known laws of physics.
A person having ordinary skill in the art would understand the law of conservation of momentum, and would not know how to make a device that violates that law and other known laws of physics.
A person of ordinary skill in the art would know that inertial-thruster engines are not known to work and are indeed known to not work and known to be inoperative.
(E) The level of predictability in the art
In the art, Newton’s third law of motion would predict that the applicant’s device is inoperative since it would be required to violate Newton’s third law of motion.
In the art, the law of conservation of momentum would predict that the applicant’s device is inoperative since it violates the known laws of physics.
(F) The amount of direction provided by the inventor
The inventor has not explained to a person having ordinary skill in the art how to make and use a device that violates the known laws of physics, including, in particular -but not exclusively, Newton’s third law of motion, and the law of conservation of momentum, nor has the inventor disproved those known laws.
(G) The existence of working examples
The Applicant has not provided evidence of any working examples.
During the video interview conducted on 10/28/2024, the Examiner observed video of two prototypes. The first prototype was set upon wheels and the second prototype was set upon two pipes. While the Examiner agreed that each prototype did move in at least a generally forward direction, as the Examiner pointed out in the interview, both prototypes were setting on surfaces (i.e. the floor or other supporting structure), whereas the Applicant’s specification states that their invention “does no require any reactive engagement with a supporting surface or fluid medium”. Thus, the Examiner notes that those videos do no support a conclusion that the prototypes did not require upon any reactive engagement with a supporting surface, since the prototypes were each supported by a supporting surface.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure
Since the device of the instant application would necessarily violate the laws of physics in order to work as described, the quantity of experimentation needed to make and use the invention based on the content of the disclosure is incredibly high, since a person having ordinary skill in the art would necessarily need to disprove the known laws of physics, such as Newton’s third law of motion and the law of conservation of momentum.
In light of the above discuss, it is the Examiner’s position that the claim(s) contain 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.
Furthermore, according to MPEP 2107.01(IV), a deficiency under prong of 35 USC 101 also creates a deficiency under 35 USC 112(a).
Furthermore, according to MPEP § 2164.07.I.A, “If a claim fails to meet the utility requirement of 35 U.S.C. 101 because it is shown to be nonuseful or inoperative, then it necessarily fails to meet the how-to-use aspect of the enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. As noted in In re Fouche, 439 F.2d 1237, 169 USPQ 429 (CCPA 1971), if ‘compositions are in fact useless, appellant’s specification cannot have taught how to use them. ’ 439 F.2d at 1243, 169 USPQ at 434. The examiner should make both rejections (i.e., a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph and a rejection under 35 U.S.C. 101) where the subject matter of a claim has been shown to be nonuseful or inoperative.” Since the Applicant’s device is inoperative as described in their specification, and since the Applicant has thus failed to make at least one credible assertion of specific utility in the specification, rejection under 35 USC 112(a) and 35 USC 101 are both proper and required.
In light of the above discussion, it is the Examiner’s position that the claim(s) contain 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.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7, 9, 11, 12, 15-22, 24-33, 35, and 37-50 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Since the device of the instant application is not enabled and would have to violate known laws of physics in order to work, it is unclear what is being positively claimed. See 35 USC 112(a) rejection hereinabove. Since the device of the instant application as described by the specification would violate the known laws of physics in order to function, it is not clear that any operable device could meet the claim limitations as read in light of the specification, and therefore it is unclear what is being positively claimed.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-7, 9, 11, 12, 15-22, 24-33, 35, and 37-50 are rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks utility.
See the 35 USC 112 rejection hereinabove. Since the Applicant’s device must violate the known laws of physics, such as Newton’s third law of motion and the law of conservation of momentum, if it were to operate as described, the Applicant’s device is inoperative and therefore lacks a credible utility.
Per MPEP 2107.02(I), an applicant need only make one credible assertion of specific utility for the claimed invention to satisfy 35 USC 101 and 35 USC 112. However, in this case, the only assertion of specific utility (i.e. an inertial thruster engine “that achieves rectilinear movement without any reactive engagement with a supporting surface or fluid medium. It is substantially synonymous to an inertial-propulsion device and a reactionless drive (page 111 of the specification)) in the application as originally filed is not credible since that utility is inoperative. Per MPEP 2107.01(III) states, inter alia, that “Rejections under 35 U.S.C. 101 based on a lack of credible utility have been sustained by federal courts when, for example, the applicant failed to disclose any utility for the invention or asserted a utility that could only be true if it violated a scientific principle, such as the second law of thermodynamics, or a law of nature, or was wholly inconsistent with contemporary knowledge in the art.” In the instant application, the only asserted utility could only be true if it violated a scientific principle - in the instant application that includes violating the law of conservation of momentum. See the Wands factors analysis in the 35 USC 112(a) rejection hereinabove.
MPEP § 2107.02.III.B recites that “Rejections under 35 U.S.C. 101 based on a lack of credible utility have been sustained by federal courts when, for example, the applicant failed to disclose any utility for the invention or asserted a utility that could only be true if it violated a scientific principle, such as the second law of thermodynamics, or a law of nature, or was wholly inconsistent with contemporary knowledge in the art.” In the case of the instant application, the asserted utility could only be true if it violated scientific principle(s), such as Newton’s third law of motion and the law of conservation of momentum.
Furthermore, according to MPEP 2107.01(IV), a deficiency under prong of 35 USC 101 also creates a deficiency under 35 USC 112(a).
Response to Arguments
Applicant's arguments filed 10/07/2025 have been fully considered but they are not persuasive to any pending grounds of rejection hereinabove.
The Applicant is correct that the previous used phrase “law of conservation motion” was meant to be “law of conservation of momentum”. That phrase has been corrected hereinabove.
The Applicant states that “[i]n the paragraphs below, it will be shown that it is commonly accepted among scientists that Newton’s third law of motion is violated in different fields of science to include quantum physics and relativistic mechanics.” The Examiner notes that quantum physics is a fundamental theory in physics that describes the behavior of nature at and below the atomic scale. The Applicant’s invention is neither claimed nor disclosed as being one built on an atomic scale such that quantum physics is particularly relevant, and so arguments concerning quantum physics are neither found relevant nor persuasive. The Examiner notes that relativistic mechanics is a branch of physics that describes the motion of objects at very high speeds, near the speed of light, or in strong gravitational fields. The Applicant’s invention is neither claimed nor disclosed as dealing with objects at very high speeds, near the speed or light, or in strong gravitational fields, and so arguments concerning relativistic mechanics are neither found relevant nor persuasive.
The Examiner notes that in the prior video shown by the Applicant during an interview, while there may have been relatively low friction between the pipes and the on which the device rested along a rolling direction, there is considerably more friction between along a direction perpendicular to the rolling direction. Therefore, the video does not persuasively show evidence that Newton’s third law of motion is violated or that the device, as described on page 111 of the specification, is an “inertial thruster [that] achieves rectilinear movement without any reactive engagement with a supporting surface or fluid medium.”
The Applicant argues that there is an additional credible assertion of specific utility, i.e. rotational posturing and attitude control to free bodies such as satellites. The Examiner notes however that the viewed video of the Applicant’s prototype during an interview was only shown to move linearly while on a reactive surface (e.g. on pipes that could roll)(The Examiner notes as described in the specification the device should be able to operate without a reactive surface and without friction between reactive surface and the device) and so did not show the Applicant’s device producing rotational posturing/attitude control. Furthermore, the claimed device as claimed in the independent claims appears to be directed at purported linear motion rather than rotational motion/attitude control, and so even if rotational posturing/attitude control is a credible utility in the specification for some embodiment(s), it is not a credible utility at which the device and method as presently claimed are directed. (The Examiner notes that new/amended claims directed solely at rotational motion/attitude control rather than rectilinear motion may potentially be subject to withdrawal due to election by original presentation. See MPEP 821.03 for more detail.)
The Applicant argues that there is not undue experimentation. However, the Examiner notes that since the device of the instant application would necessarily violate the laws of physics in order to work as described, and since the Applicant has not disproven the laws of physics that would be necessarily violated for the device of the instant application to work, that the quantity of experimentation needed to make and use the invention based on the content of the disclosure is incredibly high, since a person having ordinary skill in the art would necessarily need to disprove the known laws of physics, such as Newton’s third law of motion and the law of conservation of momentum.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY T PRATHER whose telephone number is (571)270-5412. The examiner can normally be reached Monday-Thursday 9 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Minnah Seoh can be reached at 571-270-7778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY T PRATHER/
Examiner, Art Unit 3618
/MINNAH L SEOH/Supervisory Patent Examiner, Art Unit 3618