I. ACKNOWLEDGEMENTS
This Office Action addresses U.S. Application No. 18/198228 (“the ’228 Application” or “instant application”). Based upon a review of the instant application, the actual filing date of the instant application is May 16, 2023. For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
The instant application is a reissue application of U.S. Patent No. 8,358,020, (“’020 Patent”). The ‘020 Patent was filed as US Application 12/744447 (‘447 application”), which is a national stage entry of PCT/EP2008/009948, filed on November 24, 2008, with a 371 date of July 8, 2010. The ‘447 application is entitled “METHOD AND APPARATUS FOR STORING ENERGY.”
Based upon Applicant’s statements as set forth in the instant application and after the Examiner's independent review of the ‘020 Patent itself and its prosecution history, the Examiner finds that he cannot locate any current ongoing litigation involving the ‘020 Patent. Also based upon the Examiner's independent review of the ‘020 Patent itself and the prosecution history, the Examiner cannot locate any previous reexaminations, or supplemental examinations.
II. CLAIM STATUS
The ’020 Patent issued with claims 1-9 (“Patented Claims”). The preliminary amendment of May 16, 2023 amends claim 6 and adds claims 10-25.
Therefore, as of the date of this Office Action, the status of the claims is:
a. Claims 1-25 (“Pending Claims”).
b. Claims 1-25 are treated on the merits below (“Examined Claims”).
III. PRELIMINARY AMENDMENT
The preliminary amendment to the specification and claims filed May 16, 2023 has been entered and considered.
IV. CONTINUING AND PRIORITY
The current application is a continuation reissue of US Application 14/461,239, which is a reissue of the ‘744 Application, which is a national stage entry of PCT/EP2008/009948, filed on November 24, 2008. For applications filed before March 16, 2013, the AIA First Inventor to File (“AIA -FITF”) provisions do not apply. Instead, the earlier ‘First to Invent’ sections of 35 USC 102, 103, and 112 apply.
In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the ‘532 application. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record in the prior applications are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the prior applications need not be resubmitted in this application unless Applicant(s) desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicant(s) are reminded that the prosecution histories of the prior applications are relevant in this application.
V. REISSUE DECLARATION
The reissue declaration filed 5/16/2023 is approved.
The Examiner notes that the declaration is a copy of the declaration from 14/461,239. "If the same error corrected in the parent is also being corrected in the continuation reissue application, but the error is being corrected in a different way, a statement is needed to explain compliance with 37 CFR 1.175(f)(2). As per MPEP 1414 II D, Applicant should comment in the response that the error presented in the declaration is still applicable to the claims of the new reissue and that it is being corrected in a different way. .
VI. SPECIFICATION OBJECTIONS
The specification is objected to because it does not contain the proper notice of multiple reissues. The following format should be used: Notice: More than one reissue application has been filed for the reissue of Patent No. 99,999,999. The reissue applications are application number 99/999,994 (the present application); and application numbers 99/999,995 and 99/999,998, both of which are divisional reissues of Patent No. 99,999,999. See MPEP 1451 and 37 CFR 1.177(a).
VII. REJECTIONS UNDER 35 USC 251
Claims 1-5 are rejected under 35 USC 251 because the reissue application is not correcting an error in the original patent. Applicant has presented the same original patent claim numbers in the current application and application 14/461239, which is now reissue patent RE49532. As such, the same original patent claim exists in varying scopes. It is noted that the same claim of the patent cannot be presented for examination in more than one of the reissue applications, in either its original or amended versions. If a patent claim is presented in one of the continuing reissue applications as a pending claim, then that patent claim must be presented as a canceled claim in all the other reissue applications of that family. MPEP 1451 I. Accordingly, claims 1-5 would be superseded by the reissuance of claims 1-5 in application 14/461239.
MPEP 1451 I dictates that if there are patent claims 1 – 10 in two reissue applications and an applicant wishes to revise claim 1, which is directed to AB (for example) to ABC in one divisional reissue application, and to ABD in a second divisional reissue application, applicant should do the following: Claim 1 in the first divisional reissue application can be revised to recite ABC. Claim 1 in the second divisional reissue application would be canceled, and new claim 11 would be added to recite ABD. The physical cancellation of claim 1 in the second divisional reissue application will not prejudice applicant’s rights in the amended version of claim 1 because those rights are retained via the first reissue application. Claim 1 continues to exist in the first reissue application, and both the first and second reissue applications taken together make up the totality of the correction of the original patent.
VII. REJECTIONS UNDER 35 USC 112
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 1-25 are rejected under 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.
Claims 1-5 are presented with one scope in RE49532 and another scope in the current application. As such, the scope of the claim is indeterminable. See MPEP 1451 I. See above for a suggested method to correct this issue.
Claims 1, 6, 10, and 18 are rejected as being indefinite in that the claims are incomplete. Specifically, each of the claims state that lifting the weight to the second storage unit “thereby converting electrical energy to potential energy.” The term thereby means thus. The phrase following the thereby must necessarily follow the claim terms before the thereby. That is not the case at present. The claim does not require electrically lifting the weight. If I lift a barbell above my head, electrical energy is not converted to potential energy. The claim therefore lacks the means to start with electrical energy that is later converted. Furthermore, the claims later state that lowering the weight converts potential energy to electrical energy. However, there is no structure in the claim that allows for such a conversion. Using the barbell example, lowing the barbell does not convert potential energy to electrical energy. Some type of generator is required. As such, the claims are indefinite.
Claims 2-5, 7-9, 11-17, and 19-25 are rejected as being dependent on a rejected base claim.
IX. DOUBLE PATENTING
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 and 10-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 10-19 RE49532. Although the claims at issue are not identical, they are not patentably distinct from each other because current claims are broader versions of the patented claims and, as such, are covered by the patented claims.
X. ART REJECTIONS
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 6-12 and 17-22 and 25 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Powell US Patent 6,990,906.
As to claim 6, Powell shows a system and method for storing energy in figure 3, that lifts a plurality of weights 54 from a first level 54 to a second level 60, i.e. first storing unit at the bottom and second storing unit at the top. The weights are lifted during a first period, when energy is being taken from the grid and stored at the top. Then, when it is desired to deliver energy back to the grid, the weights are lowered from the second level to the first level, i.e. during a second period. The periods are variable and therefore can be different. Furthermore, in column 3, lines 3+, Powell teaches that the rate of lifting or lowering the weights is variable. As such, there the rate at which the weight is lifted is capable of being different from the lowering rate.
As to claims 7 and 8, the lowering and lifting is performed on an as needed basis. As such, the first and second periods are variable depending on need and one can be longer than the other., or vice versa.
As to claim 9, as noted in column 1, lines 25+, the two periods correspond to peak and off-peak power demand.
As to claim 10, Powell also shows a system for performing the method. The system has a loading unit, 52, first and second storing units 54 and 60 at different elevations which store a plurality of weights, where the loading collects a mass at the first storing unit and lifts it to the second storing unit, to convert electrical energy to potential energy, during a first lifting time period, and then collect the mass at the second storing unit and lower it to the first storing unit during a lowing time period, thereby converting potential energy to electrical energy, wherein the lifting and lowering durations are capable of being different, as discussed above,
As to claim 11, the two time periods are capable of being varied.
As to claim 12, Powell has a track at each storing unit for storing the masses (see figure 31).
As to claim 17, the second (upper) storage unit has a plurality of tracks (see figure 32).
Claims 18-22 and 25 are rejected for the reasons given above.
XI. ALLOWABLE SUBJECT MATTER
Claims 1-5 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112 and 251, set forth in this Office action.
Claims 13-16 and 23-24 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 1-5 define over the art of record in that none of the art teaches
“wherein the first storing unit (14) is arranged below the second storing unit (16) and each of the storing units (14, 16) comprises a guiding track (18, 20) on which the plurality of weights (12) can be placed for storage and along which weights (12) can be moved, wherein each of said guiding tracks(18, 20) comprises a first portion (22, 26) and a second portion, (24, 28) wherein the second portion (24, 28) is arranged below the first portion; (22, 26).”
Claims 13-16 and 23-24 define over the art of record in that none of the art teaches that each track extends between a first portion and a second portion of the storing unit, where the first and second portions are at different elevations.
XII. CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT L NASSER whose telephone number is (571)272-4731. The examiner can normally be reached M-F 8-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Kosowski can be reached at (571) 272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT L NASSER/ Primary Examiner, Art Unit 3992
Conferees:
/ADAM L BASEHOAR/Primary Examiner, Art Unit 3992 /ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
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