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 .
Information Disclosure Statement
The listing of references in the specification (para 1 of USPGPUB US 20250088055 A1) is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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.
Claim 1 is rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks utility.
Applicant(s) have asserted specific utility of the claimed invention as follows: Specification (US 2025/0088055) paras 14 & 15: “a non-magnetic electrically conductive rotor, causing it to spin”. Is the rotor both electrically and magnetically non-conductive or just non-magnetically conductive? If it is non-magnetically conductive but electrically conductive – how does it conduct electricity? What material is the rotor made of? Applicant’s observation is not scientifically proven nor tangibly measurable (it contradicts with conventional and known physics associated with motors and magnetic flux generation to permit rotation).
Specification paras 14 & 15: “The magnetic field produced by the stator windings will create an opposite corresponding current and associated magnetic field in the non-magnetic electrically conductive rotor, causing it to spin. The induced current will produce a magnetic field opposing the change in magnetic flux in the stator windings, generating the force to induce rotor motion”. Applicant appears to claim a new phenomenon? How is the rotor rotating if there is no electrical nor magnetic flux influence (since applicant’s admit there are no magnets in the rotor nor any windings)? Per applicant’s disclosure, the rotor is not made of iron or any other magnetically conductive material. Applicant’s belief does not appear to be scientifically proven nor tangibly measurable. Applicant’s assertion appears to violate known laws of physics. See MPEP §§ 2105 - 2107.03 for additional guidance.
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.
Claim 1 is 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 and as inoperative under § 101. 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. The invention contradicts the principle of conservation of energy, and because the specification does not explain how to make and use the claimed invention properly:
There is no mention of how the rotor rotates without using any iron, magnets, coils or magnetically conductive material for the flux.
In para 15: “The non-magnetic electrically conductive rotor, as described in more detail below, will have an induced current such that the induced current always tends to oppose the cause which produced it” how can it have an induced current if it is not electrically nor magnetically conductive? If it is opposing the produced current by the stator – wouldn’t the effect thereof be negated and/or nullified and the rotor remain stationary?
The specification does not enable or contain a full, clear, concise, and exact written description of a device that will provide a person having ordinary skill in the art to make or use the claimed invention.
The standard for determining whether the specification meets the enablement requirement is whether a person skilled in the art can make and use the claimed invention without undue experimentation. In re Wands, 858F.2d 731,737 (Fed. Cir. 1988).
If the examiner's basis for questioning the sufficiency of the disclosure is reasonable, the burden shifts to appellants to come forward with evidence to rebut this challenge. In re Doyle, 482 F.2d 1385, 1392 (CCPA 1973).
Examiner addressed the rejections of the claims under 35 U.S.C. § 112, first paragraph, and 35 U.S.C. § 101 together. The lack of utility because of inoperativeness (a question of fact), and the absence of enablement (a question of law), are closely related grounds of unpatentability. Ex parte Dash, 27 USPQ2d 1481, 1484 (Bd. Pat. App. & Int. 1992).
Under the rule expressed in Newman, 681 F. Supp. at 18, the Examiner established a reasonable basis for questioning the sufficiency of the disclosure, and shifted the burden of proof to Appellant to come forward with evidence to support his claim that his device generates rotation without the use of magnets, coils, iron or electrically/magnetically conductive material used for the rotor”. Applicant(s) have not supplied the Office with such evidence.
Applicant is required to furnish a proof of operability of the claimed invention, which would be considered as adequate evidence (*) to overcome this Office rejection based on the doctrine of the conservation of energy. See MPEP § 608.03; 37 CFR 1.91.
(*) The adequate evidence is such evidence, which a reasonable mind of one of the ordinary skill in the art would accept as adequate for the objective truth of the statement. A working model of the invention is one example of the adequate evidence. An existing operable device working on the same principle as the claimed invention is another example of the adequate evidence. Scientific publications and a personal declaration without actual proof of operability are not considered adequate evidence.
The Applicant's are required to furnish a working model of their invention to demonstrate its operability. See MPEP 608.03; 37 CFR 1.91.
When a patent applicant presents an application describing an invention that contradicts known scientific principles, or relies on previously undiscovered or unproven scientific phenomenon, the burden is on the examiner simply to point out this fact to the appellant. The burden shifts to appellant to demonstrate either that his invention, as claimed, is operable or does not violate basic scientific principles, or that those basic scientific principles are incorrect. As stated by the Patent Office Board of Appeals, Newman v. Quigg 681 F.Supp 16, at18, 5 U.S.P.Q. 2d 1880(1988).
Examiner carefully studied the invention in view of the above asserted utility by examining the operation of the claimed structure, which has revealed clearly and conclusively that there is a good reason to question the truth of the statement of the asserted utility because the structure of the device, as disclosed and claimed, is inoperative and a person skilled in the art would not consider the asserted utility as credible or that the claimed structure has any specific and substantial utility, since the claimed device operation contradicts the law of conservation of energy. See MPEP 2164.07.I.B. There are numerous examples in the art of the attempts to utilize the force of magnets, magnetic flux and electricity for energy production. However, there is no system or machine known in the art, which would function without transfer of magnetic flux or electrical currents of some sort. A person skilled in the art must consider utility of this type of structure only as “incredible” in view of contemporary knowledge since it contradicts the laws of thermodynamics. In re Gazzve, 379 F.2d 973, 978, 154 USPQ 92, 96 (CCPA 1967). Applicant has not provided any evidence that his claimed structure will perform as stated in the asserted utility, i.e., that the device will be able to generate rotation without the use of magnets, iron, coils or specific materials for the rotor. Evaluation of the disclosure clearly shows that the claimed structure has an “incredible utility” and the burden of proof is now shifted to the applicant to show otherwise.
See MPEP §§ 2164.01-08 for additional guidance
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 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
It is not clear what applicant means by “a non-magnetic conductive rotor”? It is best understood as applicant meant to claim “a non-magnetically conductive rotor”. Examiner interprets it as applicant meant to claim a rotor which is not magnetically nor electrically conductive (or is the rotor electrically conductive?). In case the rotor is non-magnetic, but conductive, how is it conductive? Electrically or by some other means? Appropriate clarification and correction are required.
It appears the inventor(s) filed the current application pro se (i.e., without the benefit of representation by a registered patent practitioner). While inventors named as applicants in a patent application may prosecute the application pro se, lack of familiarity with patent examination practice and procedure may result in missed opportunities in obtaining optimal protection for the invention disclosed. The inventor(s) may wish to secure the services of a registered patent practitioner to prosecute the application, because the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting a patent practitioner.
A listing of registered patent practitioners is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent practitioners located in their area by writing to Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NAISHADH N DESAI whose telephone number is (571)270-3038. The examiner can normally be reached 9-5.
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, Christopher M Koehler can be reached at 571-272-3560. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NAISHADH N DESAI/Primary Examiner, Art Unit 2834