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 suspension period for the suspension of action filed April 29, 2024 has expired. The amendment filed on April 29, 2024 is acknowledged. Claims 1 – 21 are pending in this application. As amended, claims 12, 14, 17 and 18 overcome(s) the claim objection(s) cited in the previous office action.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 – 21 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 – 2 are directed to a mechanical system (“an engine”) that, as described on page 2, lines 6 – 8 of the present application, purportedly “harnesses the power of gravity through directly transmitting the energy of two interconnected reciprocating falling weights into the reciprocating linear motion of two piston rods,” in order to “generate electricity.” Page 11, lines 4 – 14 discloses:
As illustrated by FIG. 2, when the piston chambers 103, 104, are filled with fluid and the first piston 101 is at the top of its upstroke while the second piston 102 is at the bottom of its downstroke, downward movement of the first piston 101 will cause a reciprocating upward motion from the second piston 102, as fluid within the piston chambers 103, 104 is displaced. The diameters of the first piston 101 and the corresponding first piston chamber 103 are materially smaller than the diameters of the second piston 102 and the corresponding second piston chamber 104.The difference in diameters between the first piston 101 and first piston chamber 103 and the second piston 102 and second piston chamber 104 results in the first piston having 101 hydraulic leverage over the second piston 102, based upon Pascal’s Law.
However, gravity alone cannot raise a heavier weight using Pascals principle. Pascal’s principle applies to fluids in a closed system and allows for the transmission of pressure evenly throughout the fluid, but it does not change the fundamental relationship between force and gravity. Gravity pulls objects downward, and unless there is an external force applied to counteract gravity (e.g. a mechanical advantage from a hydraulic system), a heavier weight cannot be raised solely by Pascal’s principle and gravity. In terms of the present invention, this means the larger second piston 102 (heavier weight), under the influence of gravity, cannot be raised by the smaller first piston 101 (lighter weight) in the absence of an externally applied force if energy must be conserved and thus not created, according to the law of conservation of energy. Thus, the applicant’s invention is deemed inoperable and, therefore, lacks a credible asserted utility.
Claims 1 – 21 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 – 21 as lacking enablement under § 112, and as inoperative under § 101, because the invention contradicts the conservation of energy, and because the Specification does not explain how to make and use the claimed invention. Specifically, how does the lighter and smaller first piston under the influence of gravity raise the heavier and larger second piston without an externally applied force?
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 leverages the falling action of a lighter weight under the influence of gravity to raise a heavier weight without some externally applied force. Raising a heavier weight in this manner is not 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 April 29, 2025 have been fully considered. However, the rejections of claims 1 – 21 under 35 USC 101 and 112, first paragraph are deemed proper and are, therefore, maintained.
One page 9 of the remarks, the Applicant argues with reference to the first illustration (“seesaw”) provided, “we have two different weights that are in balance. If the fulcrum is moved slightly further to the left, the smaller weight will use gravity to lift the larger weight. If the fulcrum is moved slightly to the right, the larger weight will use gravity to lift the smaller weight. If we could move the fulcrum left and right in an alternating motion, alternating mechanical leverage, we could cause the two weight to oscillate up and down like a child's seesaw, relying on the power of gravity and leverage to lift the weights.”
With reference to the second illustration (image from “Britannica.com”) provided in the remarks, Applicant further argues “[r]ather than alternating locations of the fulcrum, the pending application seeks to alternate levers. The mechanical lever is used to lift the smaller weight and the hydraulic lever is used to lift the larger weight. The mechanical lever is required by claim 1, ‘a mechanical connection extending between the first piston rod and the second piston rod, wherein the second piston rod has a leverage advantage over the first piston rod when the mechanical connection is enabled.’ The hydraulic lever is required in claim 1, ‘a fluid control connected to the fluid chamber wherein the first piston has a hydraulic leverage advantage over the second piston when the fluid chamber is filled with fluid.’…if force is mass x acceleration and acceleration for both objects is defined by gravity, then a mass that is less than the mass of the car and greater than 1/10 of the mass of the car would lift the car as it seeks to find balance. This illustration is in contrast to the assertion in the office action that ‘a heavier weight cannot be raised solely by Pascal's principle and gravity.’ Further, it is noted that Pascal's principle requires a closed fluid system. Thus, if the system were opened when seeking to lift the lighter weight and the system were closed when seeking to lift the heavier weight, the hydraulic system would not prevent the heavier weight from lifting the lighter weight. If a system is constructed to alternate between the mechanical leverage system and the hydraulic leverage system and continue moving utilizing the force of 11 gravity, one skilled in the art would clearly find use for the invention. It is not believed that the Examiner is questioning whether one skilled in the art would be able to utilize reciprocating motion.”
The Applicant’s arguments regarding alternating leverage are not persuasive. The Applicant argues that a smaller weight may lift a larger weight using gravity and leverage, analogizing the invention to a seesaw with alternating fulcrum positions or alternating leverage systems. While the Examiner agrees that leverage allows a tradeoff between force and distance, leverage does not create energy. The Applicant’s analogy fails to address the central issue: alternating between mechanical leverage and hydraulic leverage does not introduce additional energy into the system. Any energy gained in one phase must be expended in another, with net losses due to inefficiencies. A seesaw, absent external input, reaches equilibrium and ceases motion.
The Applicant further argues that Pascal’s principle applies only to closed systems and that opening and closing the hydraulic system permits lifting of different weights. However, opening a hydraulic system dissipates energy, and closing the system requires pumping work, which introduces additional losses. The specification does not disclose how such pumping work is supplied without negating the claimed electrical output.
The Applicant’s response relies on conceptual analogies and general principles of leverage but does not overcome the fundamental deficiencies identified in the prior Office Action. Accordingly, the rejections under 35 USC 101 and 112, first paragraph are FINAL.
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Olszewski can be reached at 571-272-2706. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILLIP A JOHNSON/Primary Examiner, Art Unit 3617