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 Office Action is responsive to the Applicant's communication filed 05 May 2026. In view of this communication and the amendment concurrently filed, claims 1-5 are now pending in the application, with claims 3-5 being withdrawn from consideration.
Response to Arguments
The Applicant’s arguments, filed 05 May 2026, have been fully considered but are only partially persuasive.
The Applicant’s first argument (pages 5-6 of the Remarks) states that claim 1 has been amended to clarify the fibers being wound in the circumferential direction and removing the term “tangentially”. Since this amendment is both clear and consistent with the previous interpretation of the claim, the previous ground of rejection under 35 U.S.C. 112(b) has been withdrawn and the relevant grounds of rejection under 35 U.S.C. 103 are maintained.
The Applicant’s second argument (pages 6-7 of the Remarks) broadly alleges that the previous grounds of rejection under 35 U.S.C. 103 are based on impermissible hindsight bias and that no motivation for combining the references has been provided. Since motivation has been provided for every combination in all of the previous and current grounds of rejection, this argument is unpersuasive. Further, no explanation or evidence is provided in support of these broad allegations. As such, this argument fails to comply with 37 CFR 1.111(b) because it amounts to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
The Applicant’s third argument (pages 8-9 of the Remarks) alleges that Gabrys does not disclose the rotary mass circular wheels being “hollow” as recited in claim 1 as amended. However, the application discloses said wheels being “hollowed out” to create recesses into which the permanent magnets are inserted (fig. 1-7; ¶ 0057). Since the rotary mass circular wheels [34w,35w] of Gabrys also contain recesses into which the magnets [37,38] are inserted (fig. 1; page 8, line 26 to page 9, line 14), the wheels of Gabrys are “hollow” as defined in the specification. Thus, this argument is unpersuasive and the previous grounds of rejection under 35 U.S.C. 103 are maintained.
The Applicant’s fourth argument (pages 9-14 of the Remarks) alleges, regarding the previous grounds of rejection under 35 U.S.C. 103 of claim 1, that the flywheel system of the present invention and that of Gabrys are significantly different from one another because of the alleged difference in stress distribution results in entirely different strength designs and different material designs for the flywheel unit. The argument then references figures showing graphs of stress distributions within hollow and solid disks. However, these figures, and all of the supporting evidence in this argument, relate to examples given in the relevant references from which they are drawn, and are not found in either the present application or any of the cited references. Further, no explanation or evidence is provided showing any connection between this stress distribution, the invention, or any of the cited references.
Thus, this argument is unpersuasive for multiple reasons. First, as stated above, the flywheel system of Gabrys contains “hollow” wheels as defined in the specification of the present application. As such, the alleged difference in structure simply does not exist. Second, without any showing of the relevance of the stress distribution figure, it cannot be said that any of the information shown therein is applicable to the cited references. Third, since none of the references discussed in the argument (i.e., references 1-5, cited on pages 13-14) have been provided on the record, these references have not been considered and thus the argument contains no verifiable supporting evidence. Lastly, the argument fails to comply with 37 CFR 1.111(b) because it amounts to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a), which papers have been placed of record in the file.
Disclosure
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gabrys (WO 2010/074752 A1), hereinafter referred to as “Gabrys”, in view of Yoshino et al. (US 2010/0052452 A1), hereinafter referred to as “Yoshino”, and Atkins (US 2012/0190461 A1), hereinafter referred to as “Atkins”.
Regarding claim 1, Gabrys discloses a flywheel energy storage system [30] (fig. 1; page 1, lines 24-29) comprising:
an electrical motor/generator unit [37-40] configured to mutually convert electrical energy and rotational motion energy (fig. 1; page 1, lines 29-35; page 8, lines 26-35); and
a flywheel unit [31] configured to store energy as rotational motion (page 8, lines 26-35),
wherein the flywheel unit [31] includes one or more support shafts [46,47] of which a central axis coincides with a rotation axis of the flywheel unit [31] (page 9, lines 4-14), a pair of flywheel hubs [34,35,36] coaxially supported by the one or more support shafts [46,47] (fig. 1; page 8, lines 30-31; each flywheel has a central portion fit around the aluminum tube, both these central portions and the tube are readable on the “hubs”), and a pair of hollow rotary mass circular wheels [34w,35w] provided on an outer periphery of each of the flywheel hubs [34,35,36] (fig. 1; page 8, line 26 to page 9, line 14; wheels [34w,35w] are “hollow” because they contain recesses into which the magnets [37,38] are inserted),
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the electrical motor/generator unit [37-40] includes a stator unit [40] formed by a coreless induction coil [91] provided between the pair of flywheel hubs [34h,35h,36] (fig. 1, 4; page 10, lines 1-23), and a rotor unit that [37,38] faces the coreless induction coil [91] of the stator unit [40] and is formed by a yokeless annular permanent magnet array [37,38] held by each of the flywheel hubs [34,35,36] (fig. 1; page 8, lines 26-35), and
a housing [32] that supports the one or more support shafts [46,47] to accommodate both the electrical motor/generator unit [37-40] and the flywheel unit [31] (fig. 1; page 8, lines 26-28).
Gabrys does not disclose the annular permanent magnet arrays [37,38] being arranged in a Halbach array.
Yoshino discloses a rotor [10] for an electric motor, comprising an annular permanent magnet array [12] (fig. 1-4; ¶ 0031), wherein the magnets [12A-1,12A-2,12B-1,12B-2] of the magnet array [12] are arranged as a Halbach array (fig. 1-4, 7-8; ¶ 0032-0033).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the annular permanent magnets of Gabrys in Halbach arrays as taught by Yoshino, in order to reduce the leakage of magnetic flux to the back surface of the magnets thereby increasing the amount of effective magnetic flux while allowing for a reduction in the size and weight of the rotor (¶ 0032 of Yoshino).
Gabrys, in view of Yoshino, still does not disclose the pair of hollow rotary mass circular wheels [34w,35w] being separated from the pair of flywheel hubs [34,35,36], or that the pair of hollow rotary mass circular wheels [34w,35w] are made of fiber-reinforced plastic having fibers wound in a circumferential direction.
Atkins discloses a flywheel energy storage system comprising a flywheel [30] including a support shaft [60] on which a hollow rotary mass circular wheel [40] is mounted (fig. 2-3; ¶ 0062-0063), wherein the hollow rotary mass circular wheel [40] is separated from the flywheel hub [70] (fig. 3; ¶ 0071-0072), and wherein the hollow rotary mass circular wheel [40] is made of tangentially wound fiber-reinforced plastic (¶ 0063; “support member (40) is preferably a carbon fibre composite, wound in a circumferential direction”; ¶ 0056; “composite material, for example a wound carbon fibre and resin”).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the rotary mass circular wheels of Gabrys separately from the flywheel hubs as taught by Atkins, in order to form the hubs from different and lighter materials thereby concentrating mass at the periphery of the flywheels and removing inertially inefficient mass (¶ 0071, 0076 of Atkins). Further, it has been held that making a component separable, instead of the integral structure disclosed in the prior art, would have been a matter of obvious engineering choice. In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961).
And, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the rotary mass circular wheels of Gabrys from tangentially wound fiber-reinforced plastic, such as the carbon fiber and resin composite taught by Atkins, in order to provide a high enough hoop strength to counteract centrifugal forces acting on the flywheel when rotated at high speeds (¶ 0060, 0063 of Atkins). Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 2, Gabrys, in view of Yoshino and Atkins, discloses the flywheel energy storage system [30] according to claim 1, as stated above, wherein one or more, or all of the flywheel hub [34,35,36], the support shafts [46,47], and the housing [32] are made of at least one of aluminum, titanium, alloys including at least one of aluminum or titanium, or a carbon fiber reinforced plastic (page 8, lines 29-31; the central hub is made of aluminum; page 1, lines 14-16; flywheels are known to be made from “various materials including steel as well as advanced carbon fiber composites that allow for much higher speeds”).
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Prior art:
Gabrys et al. (US 2008/0231131 A1) discloses a flywheel energy storage system comprising an air-core stator winding axially opposed to permanent magnet rotors each having a flywheel mass and being connected to separate support shafts.
Kloepzig et al. (US 2005/0231057 A1) discloses an electrical machine comprising a permanent magnet rotor with magnets arranged in a Halbach array.
Conclusion
Applicant's amendment necessitated any 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 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 date of this final action.
This action is a final rejection and closes the prosecution of this application. Applicant’s reply under 37 CFR 1.113 to this action is limited to an appeal to the Patent Trial and Appeal Board, an amendment complying with the requirements set forth below, or a request for continued examination (RCE) to reopen prosecution where permitted.
General information on the Patent Trial and Appeal Board is available at: www.uspto.gov/patents/patent-trial-and-appeal-board/about-ptab/new-ptab. The information at this page includes guidance on time limited options that may assist the applicant contemplating appealing an examiner’s rejection. It also includes information on pro bono (free) legal services and advice available for those who are under-resourced and considering an appeal at: https://www.uspto.gov/patents/patent-trial-and-appeal-board/patent-trial-and-appeal-board-pro-bono-program-independent. The page is best reviewed promptly after applicant has received a final rejection or the claims have been twice rejected because some of the noted assistance must be requested within one month from the date of the latest rejection. See MPEP § 1204 for more information on filing a notice of appeal.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply. The Notice of Appeal must be accompanied by the fee required by 37 CFR 41.20(b)(1). The current fee amount is available at: www.uspto.gov/Fees.
If applicant should desire to file an after-final amendment, entry of the proposed amendment cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made in a previous Office action. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR 1.113 to a final rejection must include cancellation of or appeal from the rejection of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds all of the claims to be in condition for allowance.
If applicant should desire to continue prosecution in a utility or plant application filed on or after May 29, 2000 and have the finality of this Office action withdrawn, an RCE under 37 CFR 1.114 may be filed within the period for reply. See MPEP § 706.07(h) for more information on the requirements for filing an RCE.
The application will become abandoned unless a Notice of Appeal, an after final replay that places the application in condition for allowance, or an RCE has been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Andrews whose telephone number is (571)270-7554. The examiner can normally be reached on Monday-Thursday, 8:30am-3:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Oluseye Iwarere can be reached at 571-270-5112. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael Andrews/
Primary Examiner, Art Unit 2834
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