NON-FINAL OFFICE ACTION
This non-final office action addresses U.S. Application No. 18/439602, which is a broadening reissue application of U.S. Application No. 15/074,551 (hereinafter the “551 Application"), entitled ELECTRIC GENERATOR WITH ROTATIONAL GAUSSIAN SURFACE MAGNET AND STATIONARY COIL, which issued as U.S. Patent No. 10,270,301 (hereinafter the “301 Patent") on April 23, 2019.
The status of the claims is as follows:
Claims 1 and 6-12 are pending and examined herein.
Claims 1 and 6-12 are rejected.
I. STATUS OF CLAIMS
Applicant filed a preliminary amendment on February 12, 2024 (hereinafter the "2024 Preliminary Amendment") along with the filing of the present application. In the 2020 Preliminary Amendment, patent claim 1 was amended, patent claims 2-5 were cancelled and new claims 6-12 were added. Furthermore, the specification was amended to change the cross-noting information.
Therefore, claims 1 and 6-12 are pending and will be examined herein.
II. PRIORITY
Examiners acknowledge that the present reissue application is a continuation reissue application of U.S. Patent Application No. 17/237,974, filed April 22, 2021, now U.S. Patent No. RE49,480 (hereinafter the “RE49840 Patent”), which is also a reissue application of the 551 Application. Examiners further acknowledge the claims to priority indicated on the face of the 301 Patent, that the 551 Application is a divisional application of U.S. Application No. 13/775,461, filed on February 25, 2013 (hereinafter the “461 Application”), now U.S. Patent No. 9,343,931 (hereinafter the “931 Patent”).
However, at the filing of the present application on February 12, 2024, Examiners find that Applicant has attempted to add new priority to the present application, i.e., a claim of priority to U.S. Provisional Application No. 61/621,135, filed April 6, 2012 (hereinafter the “135 Provisional Application”), via the Application Data Sheet filed February 12, 2024 (hereinafter the “2024 ADS”) and the amendment to the specification in the 2024 Preliminary Amendment. This claim of priority was not made at any point during the prosecution of the 551 Application, as reflected in the filing receipts during prosecution thereof and the face of the 301 Patent and further was not claimed or corrected via the RE49840 Patent. Examiners further find that more than four months have passed since the filing date of the 551 Application. Examiners further find that no petition for a delayed claim of domestic priority to the 135 Provisional Application has been made. See MPEP §1402(IV) and 37 C.F.R. §1.78(c). and. Accordingly, without a granted petition for a delayed claim of priority, the present application is not entitled to claim priority to the 135 Provisional Application.
Accordingly, based on the record herein, the present application is entitled to priority to only the filing date of the 461 Application on February 25, 2013.1
III. OBJECTION TO THE APPLICATION DATA SHEET
The the latest Application Data Sheet filed on August 19, 2025 (hereinafter the “2025 ADS”) (and similarly the 2024 ADS) is objected to because it contains an improper claim of priority to the 135 Provisional Application. Applicant is not entitled to this claim of priority until a petition for a delayed claim of priority is granted. Appropriate correction is required.
IV. OBJECTION TO THE SPECIFICATION AMENDMENTS
The specification amendments in the 2024 Preliminary Amendment adding cross-noting information is objected to because it contains an improper claim of priority to the 135 Provisional Application. Applicant is not entitled to this claim of priority until a petition for a delayed claim of priority is granted. Appropriate correction is required.
V. OBJECTION TO CLAIM AMENDMENTS
37 C.F.R. §1.173 Reissue specification, drawings, and amendments (in part)
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:…
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression "amended," "twice amended," etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.
(d) Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), and a "Sequence Listing XML" (§ 1.831(a) ) upon filing or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined.
(g) Amendments made relative to the patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.
The amendments to the claims provided in the 2024 Preliminary Amendment are objected to because the presentation of new claims 6-12 is improper. Since these claims are new with respect to the original patent, i.e., the 301 Patent, they should be fully underlined, claim numbers, identifiers and text. See MPEP 1453(V)(D). Appropriate correction is required.
Examiners further object to the 2024 Preliminary Amendment because while Applicant has provided a citation of support, Applicant has not provided an explanation of support for the claim changes. Specifically, Applicant is required to provide an explanation of support that allows for the broadening of claims 1, 6-10 and 12 to remove any recitation to the coil-wire form. Such an explanation goes to the merits of the original patent requirement of 35 U.S.C. §251. Appropriate correction is required in response to this Office action.
VI. OBJECTION TO THE ABSTRACT
Examiners object to the Abstract for the 301 Patent because it is not directed to the claimed invention. Examiners find the Abstract is directed to a treble quantum dot strip array whereas the claims are directed to an electrical generator. Appropriate correction is required.
VII. REISSUE OATH/DECLARATION
37 C.F.R. §1.175 Reissue oath or declaration (in part).
(a) The inventor’s oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor's oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.
The reissue declaration filed along with this reissue application (hereinafter the “2025 Reissue Declaration”) is acknowledged. Examiners acknowledge the error statement as follows:
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However, Examiners object to this error statement and thus the 2025 Reissue Declaration because this error was already corrected via the issuance of the RE49840 Patent and further was corrected in similar manner via the amendments to claim 1 in this reissue application.
Accordingly, Applicant is required to file a new reissue declaration under the rule quoted above stating a new error in the 301 Patent that Applicant seeks to correct via this reissue application. If Applicant wishes to rely on the same error that was already corrected in the RE49840 Patent, the error statement should further state how this error is being corrected in a different way in this reissue application.
VIII. REJECTIONS UNDER 35 U.S.C. §251
The following is a quotation of 35 U.S.C. §251:
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
VIII.A. Rejections Based on Improper Error Corrected
Claim 1 and this application as a whole are rejected under 35 U.S.C. §251 because these claims are not correcting any error in the original patent, i.e., the 301 Patent. Claims 1-5 of the 301 Patent were superseded by the issuance of the RE49840 Patent and thus no longer exist in the 301 Patent. Therefore, Examiners find that it is improper for Applicant to use these claim numbers (i.e., claim 1) in any continuation reissue application or divisional reissue application or other any other reissue application. See MPEP §1451. Any claim listing in the present reissue application should state that patent claims 1-5 are cancelled and any new claims added thereafter. If Applicant intends on pursuing the subject matter of pending claim 1 and 6-12 further in this reissue application, Examiners suggest and require Applicant to simply add them following the last patent claim, i.e., as “New” claims 6+. See 37 C.F.R. §1.177(b) (“The numbering of any added claims in any of the multiple reissue applications must follow the number of the highest numbered original patent claim”).
VIII.B. Rejection Based on Original Patent Requirement
MPEP §1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP §1412.01 further provides guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent” as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
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(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
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(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
The Fed. Cir. addressed the “original patent” requirement in Antares Pharma, Inc. v. Medac Pharma Inc., 112 USPQ2d 1865 (Fed. Cir. 2014). The court stated that “a reissue claim is for the ‘same invention’ if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification.” Antares, 112 USPQ2d at 1868 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals). Further, the court stated “‘it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.’ Rather, the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 112 USPQ2d at 1871 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals) (citation omitted), or that “the exact embodiment claimed on reissue [be] expressly disclosed in the specification.” Id.
Recently, the Fed. Cir. stated:
Thus, for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[I]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” Indus Chems, 315 US at 676 (emphasis in Forum US). Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 771 F.3d at 1362.2
Claims 1, 6-10 and 12 are rejected under 35 U.S.C. §251 because they are not for the same invention as that disclosed as being the invention in the original patent, i.e., the 301 Patent.
First for example, Examiners find that each of patent claims 1-5 of the 301 Patent and claims 1 and 6-12 in this reissue application are directed to electrical generators. Upon comparison with the patent claims, Examiners find claims 1 and 6-12 in this reissue application have been broadened by removing any recitation to a coil-wire form. Thus, the new invention now being claimed in claims 1 and 6-12 is directed to an electrical generator that does not require such a coil-wire form.
However, Examiners do not find an unequivocal disclosure in the 301 Patent for this new invention, i.e., an electrical generator that does not have a coil-wire form. First for example, such a requirement was patented in all the claims of the 301 Patent. Furthermore, Examiners find every embodiment of invention in the 301 Patent and every drawing specifically includes a coil-wire form for supporting the turns of wire and further finding support for the focus magnets on the outer surface thereof. Furthermore, Examiners find such a coil-wire form is an important or critical feature as this form provides the support for the turns of wire and the focus magnets about the rotating magnet. Thus, Examiners are unable to find any unequivocal support for a disclosure of an electric generator having a central rotating magnet within a coil comprising turns of wires and focus magnets without having a coil-wire form for support and association of such features.
As noted above, the original patent requirement puts a limit on the manner to which reissue applicants can broaden the patent claims in reissue. Specifically, claims that are broadened in reissue that cover a new scope/class of invention must have an unequivocal disclosure on the face of the original patent for that new class of invention as a separate invention. Following a careful review of claims 1, 6-10 and 12 in this reissue application with respect to the patent claims as patented in the 301 Patent, Examiners find the new scope of claims 1, 6-10 and 12 covers a new invention that is not unequivocally disclosed on the face the 301 Patent as a separate invention. Specifically, Examiners do not find an unequivocal disclosure or a discussion of the new invention of providing an electronic generator that does not have a coil-wire form. Thus, Examiners conclude claims 1, 6-10 and 12 presented in this reissue application fail the original patent requirement and thus are rejected under 35 U.S.C. §251.
This situation is also somewhat analogous to the recent Federal Circuit decision in Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed. Cir. 2019). In Forum US, the original patent claims were drawn to a workpiece having a body member and a plurality of arbors (arbors circled):
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Forum US, 926 F.3d at 1348-49.
In reissue, patentee broadened the claims to remove the requirement as to arbors. Id. at 1349. The Federal Circuit determined that the new claims did not comply with the original patent requirement of section 251 because the face of the patent did not disclose any arbor-less embodiment, and the abstract, summary of invention, and all disclosed embodiments including arbors. Id. at 1352. The Court concluded that the specification did not clearly and unequivocally disclose an embodiment without arbors, thus the original patent requirement was violated by broadening the claims to no longer require arbors. Id.
In the present reissue, Examiners similarly find original claims of the 301 Patent and the disclosure of the 301 Patent as a whole are focused on an electronic generator that has a coil-wire form for supporting the inductor wires and focus magnets around the rotating magnet as recited in patent claims 1-5 of the 301 Patent. Examiners do not find an unequivocal disclosure as a separate invention an electronic generator that does not have a coil-wire form. Accordingly, Examiners conclude that claims 1, 6-10 and 12 in this reissue application do not have unequivocal support in the 301 Patent and thus are not proper claims in reissue under the original patent requirement following the same reasoning as held in Forum US.
VIII.B. Rejections Based on Defective Declaration
Claims 1 and 6-12 and this application as a whole are rejected under 35 U.S.C. §251 on the basis of a defective oath or declaration. The nature of the defects in the 2025 Reissue Declaration are noted above.
IX. CLAIM INTERPRETATION
After careful review of the original specification, the prosecution history, and unless expressly noted otherwise by the Examiners, the Examiners find that they are unable to locate any lexicographic definitions (either express or implied) with the required clarity, deliberateness, and precision with regard to pending and examined claims. Because the Examiners are unable to locate any lexicographic definitions with the required clarity, deliberateness, and precision, the Examiners conclude that Applicant is not his own lexicographer for the pending and examined claims. See MPEP §2111.01(IV).
The Examiners further find that because the pending and examined claims herein recite neither “step for” nor “means for” nor any substitute therefore, the examined claims fail Prong (A) as set forth in MPEP §2181(I). Because all examined claims fail Prong (A) as set forth in MPEP §2181(I), the Examiners conclude that all examined claims do not invoke 35 U.S.C. §112(f). See also Ex parte Miyazaki, 89 USPQ2d 1207, 1215-16 (B.P.A.I. 2008)(precedential)(where the Board did not invoke 35 U.S.C. § 112(f) because “means for” was not recited and because applicant still possessed an opportunity to amend the claims).
Because of the Examiners’ findings above that Applicant is not his own lexicographer and the pending and examined claims do not invoke 35 U.S.C. §112(f) the pending and examined claims will be given the broadest reasonable interpretation consistent with the specification since patentee has an opportunity to amend claims. See MPEP §2111, MPEP §2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP §2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01(II).
X. DOUBLE PATENTING REJECTIONS
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 C.F.R. §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 C.F.R. §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 C.F.R. §1.111(a). For a reply to final Office action, see 37 C.F.R. §1.113(c). A request for reconsideration while not provided for in 37 C.F.R. §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.
X.A. Double Patenting Rejection Over the RE49840 Patent
Claims 1 and 6-12 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 6-14 of the RE49840 Patent. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 6-14 of the RE49840 Patent read directly on one or more of claims 1 and 6-12 in this reissue application. For example, both claims 1 and 10 of the RE49840 Patent read on claim 1 in this reissue application, both claims 6 and 11 of the RE49840 Patent reads on claim 6 in this reissue application, both claims 7 and 12 of the RE49840 Patent reads on claim 7 in this reissue application, claim 8 of the RE49840 Patent reads on claim 8 in this reissue application, claim 9 of the RE49840 Patent reads on claim 9 in this reissue application, both claims 1 and 10 of the RE49840 Patent reads on claim 10 in this reissue application, both claims 1 and 10 of the RE49840 Patent reads on claim 11 in this reissue application, and both claims 13 and 14 of the RE49840 Patent reads on claim 12 in this reissue application, except for minor re-wording of the language.
X.B. Double Patenting Rejection Over the 931 Patent
Claims 1, 7, 8, 9, 10 and 11 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 4 of the 931 Patent. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 6-14 of the 931 Patent read directly on one or more of claims 1 and 6-12 in this reissue application. For example, claim 1 of the 931 Patent read on claims 1, 8, 9, 10 and 11 in this reissue application and claim 4 of the 931 Patent reads on claim 7.
XI. CLAIM REJECTIONS – 35 U.S.C. §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 –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(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.
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
XI.A. Anticipation Rejections Applying Thundat
Claims 1, 6-8 and 10-12 are rejected under pre-AIA 35 U.S.C. §102(b) or (a) as being anticipated by U.S. Patent Application Publication No. 2010/0308676 to Thomas Thundat et al. (hereinafter “Thundat”).
Regarding claim 1, Thundat discloses:
1. An electrical generator comprising:
See Thundat FIG. 1, reprinted below, illustrating a generator.
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Thundat FIG. 1
a permanent magnet disposed to be rotational about a central axis within a plurality of turns of wire, the permanent magnet having North and South magnetic poles, and
See Thundat FIG. 1 above, permanent rotary permanent magnet 108 within inductor 114 comprising “one or more conductive windings.”
a focus permanent magnet pair disposed outside of and adjacent to the plurality of turns of wire, wherein the focus permanent magnet pair includes a first focus permanent magnet and a second focus permanent magnet positioned on an opposite side of the plurality of turns of wire from the first focus permanent magnet,
See Thundat FIG. 1 above, focus magnets 116 and 118.
wherein rotation of the permanent magnet induces an electrical voltage within the plurality of turns of wire.
See FIG. 1, this is a property of the structures shown. See also ¶0037.
Regarding claim 6, Thundat discloses the generator of claim 1 and further wherein:
6. (New) The electrical generator of claim 1, wherein the permanent magnet is at least partially encapsulated in a cover.
See Thundat FIG. 1 above, cover 112.
Regarding claim 7, Thundat discloses the generator of claim 1 and further wherein:
7. (New) The electrical generator of claim 1, wherein the permanent magnet is configured to rotate in response to an applied force.
See Thundat ¶0006 for general operation of an electrical generator.
Regarding claim 8, Thundat discloses the generator of claim 1 and further wherein:
8. (New) The electrical generator of claim 1, wherein the first focus permanent magnet and the second focus permanent magnet of the focus permanent magnet pair are aligned to be coplanar with one another.
See Thundat FIG. 1 above, note focus magnets 116 and 118 are coplanar at least in the plane of the figure.
Regarding claim 10, Thundat discloses the generator of claim 1 and further wherein:
10. (New) The electrical generator of claim 1, further comprising the plurality of turns of wire.
See Thundat FIG. 1 above inductor 114 comprising “one or more conductive windings.”
Regarding claim 11, Thundat discloses the generator of claim 10 and further wherein:
11. (New) The electrical generator of claim 10, further comprising a coil-wire form configured to contain the permanent magnet therein and configured to have the plurality of turns of wire wrapped around an exterior thereof in a plane parallel to the central axis.
See Thundat FIG. 1 above, coil form 112.
Regarding claims 1 and 12, Thundat discloses:
1 (Amended)/12 (New). An electrical generator comprising:
See Thundat FIG. 14, reprinted below, illustrating a generator.
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Thundat FIG. 14
a permanent magnet disposed to be rotational about a central axis within a plurality of turns of wire, the permanent magnet having North and South magnetic poles, and
See Thundat FIG. 14 above, one of the permanent rotary permanent magnets 104 within inductor 114 comprising “one or more conductive windings.”
a focus permanent magnet pair disposed outside of and adjacent to the plurality of turns of wire, wherein the focus permanent magnet pair includes a first focus permanent magnet and a second focus permanent magnet positioned on an opposite side of the plurality of turns of wire from the first focus permanent magnet,
See Thundat FIG. 14 above, focus magnets 1404 and 1406.
wherein rotation of the permanent magnet induces an electrical voltage within the plurality of turns of wire.
See FIG. 14, this is a property of the structures shown. See also ¶0037.
12. (New) The electrical generator of claim 1, further comprising: a second permanent magnet disposed to be rotational about the central axis within the plurality of turns of wire, the second permanent magnet having North and South magnetic poles;
See Thundat FIG. 14 above, other of the permanent rotary permanent magnets 104 within inductor 114 comprising “one or more conductive windings.”
a second focus magnet pair disposed outside of and adjacent to the plurality of turns of wire, wherein the second focus permanent magnet pair includes a third focus permanent magnet and a fourth focus permanent magnet positioned on an opposite side of the plurality of turns of wire from the third focus permanent magnet,
See Thundat FIG. 14 above, focus magnets 1408 and 1410.
wherein rotation of the second permanent magnet induces an electrical voltage in the plurality of turns of wire.
See FIG. 14, this is a property of the structures shown. See also ¶0037.
XI.B. Anticipation Rejections Applying Summers
Claims 1 and 9 are rejected under pre-AIA 35 U.S.C. §102(b) or (a) as being anticipated by U.S. Patent Application Publication No. 2011/0169363 to Douglas Summers et al. (hereinafter “Summers”).
Regarding claim 1, Summers discloses:
1. An electrical generator comprising:
See Summers FIGS. 1 and 2, reprinted below, illustrating a generator.
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Summers FIG. 1 Summers FIG. 2
a permanent magnet disposed to be rotational about a central axis within a plurality of turns of wire, the permanent magnet having North and South magnetic poles, and
See Summers FIGS. 1 and 2 above, permanent rotary permanent magnet 24 within inductors 32/34.
a focus permanent magnet pair disposed outside of and adjacent to the plurality of turns of wire, wherein the focus permanent magnet pair includes a first focus permanent magnet and a second focus permanent magnet positioned on an opposite side of the plurality of turns of wire from the first focus permanent magnet,
See Summers FIGS. 1 and 2 above, focus magnets 26 and 28.
wherein rotation of the permanent magnet induces an electrical voltage within the plurality of turns of wire.
See FIGS. 1 and 2 above, this is a property of the structures shown. See also ¶0002.
Regarding claim 9, Summers discloses the generator of claim 1 as evidence above and further wherein:
9. (New) The electrical generator of claim 1, wherein the focus permanent magnet pair is aligned on an axis perpendicular to the central axis.
See Summers FIGS. 1 and 2 above, note focus magnets are aligned on axis perpendicular to rotation axis of magnet 24.
XII. PRIOR OR CONCURRENT PROCEEDINGS
Applicant is reminded of the obligation apprise the Office of any prior or concurrent proceedings in which the 301 Patent is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings.
XIII. INFORMATION MATERIAL TO PATENTABILITY
Applicant is further reminded of the continuing obligation under 37 C.F.R. §1.56 to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
XIV. CONCLUSION
Claims 1 and 6-12 are pending.
Claims 1 and 6-12 are rejected.
The prior art made of record which is considered pertinent to Applicant’s disclosure is listed on the document titled ‘Notice of Reference Cited’ (“PTO-892”). Unless expressly noted otherwise by the Examiners, all documents listed on the PTO-892 are cited in their entirety.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to KENNETH WHITTINGTON whose telephone number is (571) 272-2264. The Examiner can normally be reached on 8:30am - 5:00pm, Monday - Friday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, SPE Art Unit 3992, can be reached at (571) 272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
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/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
Conferees:
/MY TRANG TON/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 In order to properly correct the priority claims to the 135 Prov Application, Examiners suggest Applicant following the procedures outlined in MPEP §1402(IV) and 37 C.F.R. §1.78(c).
2 Forum US Inc. v. Flow Valve LLC, 926 F.3d 1346 (Fed. Cir. 2019).
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