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 .
Status of Claims
The amendment filed on June 30, 2025 is acknowledged. Claims 1 – 19 are pending in this application. The drawing objections cited in the previous office action dated December 30, 2024 have been withdrawn in view of the accompanying drawings.
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 – 19 are rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a credible asserted utility or a well-established utility.
More specifically, claims 1 – 19 are directed to a mechanical system (“spring driven motor”) that utilizes the cooperative compression and expansion of a plurality of springs to generate power. Paragraphs [0079] and [0082] of the specification discloses:
[0079] In operation of at least one embodiment of the present invention, the pressure bar 338 is lowered to engage the rocker arms 316. Movement of the rocker arms 316 activates rotation of the cam shaft 306. Rotation of the cam shaft 306 causes the crank shaft 304 to start to rotate in response to rotation of the second gear(s) 40, 453 caused by movement of the timing gear(s) 38, 452. As the cam shaft 306 and crank shaft 304 are turning, for example, counterclockwise to each other, the motor 300, and in particular, the cams and rocker arms, of at least one embodiment is/are oriented such that, during at least one phase of rotation, three cams 314 are pushing up three rocker arms 316 in position to compress the corresponding springs 318. As the rotation continues to take place, three rocker arms 316 in position are pushing up on the lower spring cups 322. The springs 318 are preferably compressed 1/3 of their specification. For example, a 9.00 long spring may be compressed to 6.00. At any time when the motor 300 is operating, there are at least three springs 318 under compression- at least two in the holding zone and at least one in the compression zone. Springs 318 that are compressed are always in three positions: at 225 degrees the spring is fully compressed (condensed by 3.00); at 270 degrees, the spring is 50% compressed and holding (condensed by 1.50); at 180 degrees, the spring is 50% compressed (condensed by 1.50).
[0082]In operation, no continuous external power is needed to operate the motor 300 because the power is lock-in and becomes transitional power, going from one power unit to the next 1-8 then repeats the cycle as the motor 300 continues to run. Because no continuous external power is needed to operate the motor, the motor can function without the use of fossil fuels, thereby helping to eliminate greenhouse gases.
The above disclosure suggests a perpetual motion machine, wherein the purported operation of the motor is sustained, in the absence of any external input as a source of energy, by an alternating sequence of compression and expansion of a series springs actuated by the cooperative movement of the rocker arms and rotation of cams mounted on cam shaft. That is, the crankshaft will continuously rotate by torque produced by the action of the aforementioned action sequence of the springs initiated by the engagement of pressure bar with the rocker arms. However, the applicants assertion does not take into account the dissipation of energy attributed by friction losses between internal components (e.g. the rocker arms and camshaft) within the system. The energy recycled between compression and expansion of the springs will dimmish as a result of these friction losses. As a result, a sufficient amount of torque produced by the alternative sequence of spring compression and expansion will longer be available to sustain rotation of the crankshaft. For sustained rotation of the crankshaft, the pressure bar would have to operate in a cyclical sequence between engagement and disengagement of the rocker arms. The pressure bar, in this instance, would operate as the source of energy input, provided that the pressure bar is equipped with the means to operate as such. In other words, additional energy must be supplied to the system to account for these frictional losses in order sustain continuous rotation of the crankshaft. The contrary implies the creation of energy without some form of external energy input, which in turn implies the notion of perpetual motion. Thus, the applicant’s invention is deemed inoperable and, therefore, lacks a credible asserted utility.
Claims 1 – 19 are also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a credible asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to 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).
An invention that is "inoperative" (i.e., it does not operate to produce the results claimed by the patent applicant) is not a "useful" invention in the meaning of the patent law. See, e.g., Newman v. Quigg, 877 F.2d 1575, 1581 (Fed. Cir. 1989).
A disclosure of a utility satisfies the utility requirement of Section 101 unless there are reasons for the artisan to question the truth of such disclosure. In re Gaubert, 524 F.2d 1222, 1224 (CCPA 1975); In re Langer, 503 F.2d 1380, 1391-92 (CCPA 1974).
When a patent applicant presents an application describing an invention that contradicts known scientific principles, the burden is on the Examiner simply to point out this fact to Appellant....The burden shifts to Appellant to demonstrate either that their invention, as claimed, does not violate basic scientific principles or that those basic scientific principles are incorrect. Newman v. Quigg, 681 F. Supp. 16, 18 (D.D.C. 1988).
The 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. Exparte Dash, 27 USPQ2d 1481, 1484 (Bd. Pat. App. & Int. 1992).
Specifically, the Examiner rejected claims 1 – 19 as lacking enablement under § 112, and as inoperative under § 101, because the invention contradicts the principle of conservation of energy, and because the Specification does not explain how to make and use the claimed invention. Specifically, how does the motor sustain rotation after the provision of an initial force provided by the pressure bar is used to initiate the alternating sequence of compression and expansion of springs by the action of the rocker arms and camshaft?
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 their claim that their device sustains energy without some external input. Continuous rotation of the crankshaft without accounting for energy loss attributed by friction between the internal components of the motor would not be possible, because it would contradict the law of conservation of energy.
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.
Response to Arguments
Applicant's arguments filed June 30, 2025 have been fully considered but they are not persuasive for the reasons state below. The rejections of claims 1 – 19 under 35 USC 101 and 35 USC 112, first paragraph are maintained.
On page 8 of the remarks, the applicant argues that “none of the claims presented in the current application specifically recite such operation as suggested by the examiner.” However, the operation described by the examiner is in accord with paragraph [0079] (cited above) of the present application, which describes the purported operation of claimed invention. Paragraphs [0043] and [0083] of the present application cited by the applicant do not address the examiner’s question: How does the motor sustain rotation after the provision of an initial force provided by the pressure bar is used to initiate the alternating sequence of compression and expansion of springs by the action of the rocker arms and camshaft? Paragraph [0043] merely describes the configuration and operation of the hydraulic pump 12 shown in Fig. 1 as it applies to actuation of the pressure bar according to paragraph [0083]. Additionally, paragraph [0080] of the present application merely describes the manipulation of the pressure bar to turn the motor off and how to adjust the speed of the motor by manipulating the height of the pressure bar:
[0080]To turn off the motor 300, the pressure bar 338 is raised and disengaged with the rocker arms 316. When pressure is no longer applied to the rocker arms 316 by the pressure bar 338, the cam shaft 306 stops rotating, which stops rotation of the crank shaft 304. The RPM or speed of the motor 300 can be increased by applying more pressure to the pressure bar 338 (lowering the pressure bar further), or by decreasing the pressure applied to the pressure bar 338 (raising the pressure bar).
Thus, the applicant remarks do not provide any specific reasons as to why either the findings of fact or the legal conclusions of lacking credible utility or well-established utility and lacking enablement are allegedly in error.
Regarding the applicant’s proof operability, access links of the two (2) video clips (Video1.3pg and Video2.mov) provided in the remarks are not accessible by the USPTO. If the applicant wishes to include video proof of operability with a timely response to this final office action, proper submission of videos should be done in accordance with MPEP § 608.03; 37 CFR 1.91.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 PHILLIP A JOHNSON whose telephone number is (571)270-5216. The examiner can normally be reached M-F 9am - 5pm.
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, Richard Ridley can be reached on 571-272-6917. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PHILLIP A JOHNSON/Primary Examiner, Art Unit 3617