DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the AIA first to invent provisions. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Drawings
The drawings are objected to because FIGS. 1, 3, 4, 5, 6, 7, 8, 11, 12, 16, 17 include characters that are enclosed within outlines (boxes). See 37 C.F.R. 1.84(p)(1). Additionally, FIGS. 1, 3, 4, 5, 6, 7, 8, 11, 12, 16, 17, 22 include various characters that are placed upon hatched or shaded surfaces. See 37 C.F.R. 1.84(p)(3). Further, FIGS. 6, 8 include characters that are not oriented in the same direction as the view. See 37 C.F.R. 1.84(p)(1).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 18 is objected to because of the following informalities:
Claim 18 recites “KESS” should recite - - Kinetic Energy Storage System (KESS) - -.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 8, 16, 18-19, and 21-27 are 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.
Regarding claim 8, the phrase "a similarly high tensile strength engineered steel alloy" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "similarly"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Claim 16 recites “metal alloy plates that can be optionally spaced vertically apart” which is an optional recitation which renders the claim indefinite. Optional elements do not narrow the claim because they can always be omitted. In re Johnston, 77 USPQ2d 1788, 1790 (Fed. Cir. 2006). The recitation is vague in the sense that things which may be done are not required to be done. For example, it is unclear as to whether the claim requires the plates to be spaced vertically apart, whether they are merely capable of being spaced apart, and if the latter in what manner (particular structure) they are capable. As such, the limitation renders the claim as indefinite. For purposes of examination, the limitation will be interpreted as not being required.
Claim 18, line 2, recites “ultra-high tensile yield strength metal alloys.” The term “ultra-high” is a relative term which renders the claim indefinite. The term “ultra-high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As such, the tensile yield strength of said metal alloys is indefinite.
Claim 18, line 2, recites “a large entirely open core ring.” The term “large” is a relative term which renders the claim indefinite. The term “ultra-high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As such, the tensile yield strength of said metal alloys is indefinite.
Regarding claim 21, the phrase "the ground, a foundation, or the equivalent thereof" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "equivalent"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d). Claims 22-27 are likewise indefinite per their dependency on claim 21.
Regarding claim 22, the phrase "the poles all similarly aligned" renders the claim(s) indefinite because the claim(s) include(s) elements/structural limitations not actually disclosed (those encompassed by "similarly"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Regarding claim 23, the phrase "magnets disposed with similar alignments that create similar fields" renders the claim(s) indefinite because the claim(s) include(s) elements/structural limitations not actually disclosed (those encompassed by "similar"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 7, 8, 11-15, 18-19, 20 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mayer (WO 2017036799 A1; “Mayer”) in view of Dharan (U.S. P.G. Publication No. 2015/0008778 A1; “Dharan”).
Mayer discloses:
Regarding claim 7:
A Fly-Ring kinetic energy storage system (110; FIG. 1), comprising:
a rotationally symmetrical (pg. 4, “rotationally symmetrical”), open center (FIG. 1 depicts ring 112 having a center hole/opening), ring (112);
a raceway (opening of housing 150 in which ring 112 is disposed) arranged to accommodate the ring as it rotates in place (pg. 5, “The base 140, the rotor device 112 and the stator 113 are advantageously enclosed by a housing 150 in which a negative pressure, preferably a vacuum, is produced. As a result, further losses during the rotation of the rotor device 112 are avoided”);
a raceway associated, magnetic levitation system (140, 142; FIG. 1) with more lifting force than the ring's weight (pg. 5, “Permanent magnets 140, 142, the rotor device 112 is spaced in the axial direction of the base 144, floats above the first permanent magnet 140. This results in a particularly frictionless axial bearing of the rotor device 112”);
power electronics that store power in the form of increased ring rotational speed by using the supplied power to accelerate the ring (pg. 5, “The circuit device 40 may, for example, also include power electronics for the operation of the photovoltaic system 2. . . . In a step S02, the rotor device 112 is acted upon by a torque in order to set the rotor device 112 in rotation about the axis of rotation A, for example by means of the electric machine 114. For this purpose, energy from an energy source is used, for example from the photovoltaic system 2 or from a household electricity grid”) and retrieving power for return by decelerating the ring (pg. 5, “In a step S03, the rotational energy of the rotation of the rotor device 112 is converted into electrical energy, for example by means of the electric machine 114, in a subsequent step. In a subsequent step, the electrical energy can be transferred from the conversion to a consumer, for example by means of a circuit device 40 , as described above”);
Although Mayer teaches/suggests that the ring/rotor ought to be able to sustain “high tensile stresses,” it does not expressly disclose that the rotor is made primarily from a metal alloy.
Dharan teaches a rotor primarily made from a metal alloy (¶ 3, “high strength alloy steel”; alternatively, in ¶ 6, “martensitic steel (a high-strength steel, desirable in flywheels)”) as a more cost-effective alternative (¶ 3-4).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Mayer, with a reasonable expectation of success, such that the ring/rotor is made from a metal alloy, as taught by Dharan, as a more cost-effective alternative; and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Mayer does not expressly disclose that the ring has an outer radius of at least 5 meters and at least 200 metric tons mass.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Mayer, with a reasonable expectation of success, such that the ring has an outer radius of at least 5 meters and at least 200 metric tons mass as a matter of design choice because it has been held that, limitations relating to the size of the claimed invention is not sufficient to patentably distinguish over the prior art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); see also In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). Here, likewise, the aforementioned claim limitation relates to the merely to the size (and weight) of the ring. As such, this limitation does not amount to a patentable difference.
Mayer as modified above further teaches the following:
Regarding claim 8:
A Fly-Ring kinetic energy storage system according to claim 7, wherein the metal alloy is one or more of a maraging steel, a martensitic steel alloy (¶ 6 in Dharan, “martensitic steel (a high-strength steel, desirable in flywheels)”), a similarly high tensile strength engineered steel alloy; and/or has a tensile yield strength of either at least 1000 Mega Pascals or at least 2000 Mega Pascals (¶ 96 in Dharan, “a minimum yield strength of about 1200 MPa (170,000 psi), ultimate tensile strength of about 1300 MPa (185,000 psi)”).
Regarding claim 11, Mayer does not expressly disclose that the ring has an inner radius of at least 8 meters and an outer radius of no more than 11 meters.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Mayer, with a reasonable expectation of success, such that the ring has an inner radius of at least 8 meters and an outer radius of no more than 11 meters as a matter of design choice because it has been held that, limitations relating to the size of the claimed invention is not sufficient to patentably distinguish over the prior art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); see also In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). Here, likewise, the aforementioned claim limitation relates to the merely to the size (and weight) of the ring. In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Mayer, with a reasonable expectation of success, such that the ring has an inner radius of at least 8 meters and an outer radius of no more than 11 meters as a matter of design choice because it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)( the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device); see also MPEP § 2144.04 (IV)(A). Here, nowhere in the original disclosure does it disclose or suggest that the rotor of the claimed invention performs any differently than that of the prior art device. For example, page 8 of the instant specification recites “An alternative geometry for the Fly-Ring is shown by optional outer border 126 that is at a radius R only about a meter larger than the R0 inner border distance 128. Of course, whatever the geometry in the plane of the Fly-Ring 114, capacity can still be varied by varying the height, ,wherein more height equals more capacity for a given planar geometry.” As such, this limitation does not amount to a patentable difference.
Regarding claim 12, Mayer does not expressly disclose that the ring has an inner radius of at least 13 meters and an outer radius of no more than 16 meters.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Mayer, with a reasonable expectation of success, such that the ring has an inner radius of at least 13 meters and an outer radius of no more than 16 meters as a matter of design choice because it has been held that, limitations relating to the size of the claimed invention is not sufficient to patentably distinguish over the prior art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); see also In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). Here, likewise, the aforementioned claim limitation relates to the merely to the size (and weight) of the ring. In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Mayer, with a reasonable expectation of success, such that the ring has an inner radius of at least 13 meters and an outer radius of no more than 16 meters as a matter of design choice because it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)( the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device); see also MPEP § 2144.04 (IV)(A). Here, nowhere in the original disclosure does it disclose or suggest that the rotor of the claimed invention performs any differently than that of the prior art device. For example, page 8 of the instant specification recites “An alternative geometry for the Fly-Ring is shown by optional outer border 126 that is at a radius R only about a meter larger than the R0 inner border distance 128. Of course, whatever the geometry in the plane of the Fly-Ring 114, capacity can still be varied by varying the height, ,wherein more height equals more capacity for a given planar geometry.” As such, this limitation does not amount to a patentable difference.
Regarding claim 13, Mayer does not expressly disclose that the ring has an inner radius of at least 18 meters and an outer radius of no more than 22 meters.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Mayer, with a reasonable expectation of success, such that the ring has an inner radius of at least 18 meters and an outer radius of no more than 22 meters as a matter of design choice because it has been held that, limitations relating to the size of the claimed invention is not sufficient to patentably distinguish over the prior art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); see also In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). Here, likewise, the aforementioned claim limitation relates to the merely to the size (and weight) of the ring. In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Mayer, with a reasonable expectation of success, such that the ring has an inner radius of at least 18 meters and an outer radius of no more than 22 meters as a matter of design choice because it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)( the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device); see also MPEP § 2144.04 (IV)(A). Here, nowhere in the original disclosure does it disclose or suggest that the rotor of the claimed invention performs any differently than that of the prior art device. For example, page 8 of the instant specification recites “An alternative geometry for the Fly-Ring is shown by optional outer border 126 that is at a radius R only about a meter larger than the R0 inner border distance 128. Of course, whatever the geometry in the plane of the Fly-Ring 114, capacity can still be varied by varying the height, ,wherein more height equals more capacity for a given planar geometry.” As such, this limitation does not amount to a patentable difference.
Regarding claim 14, Mayer does not expressly disclose that the ring has at least 400 metric tons mass.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Mayer, with a reasonable expectation of success, such that the ring the ring has at least 400 metric tons mass as a matter of design choice because it has been held that, limitations relating to the size of the claimed invention is not sufficient to patentably distinguish over the prior art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); see also In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). Here, likewise, the aforementioned claim limitation relates to the merely to the size (weight) of the ring. As such, this limitation does not amount to a patentable difference.
Regarding claim 15, Mayer does not expressly disclose that the ring has at least 900 metric tons mass.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Mayer, with a reasonable expectation of success, such that the ring the ring has at least 900 metric tons mass as a matter of design choice because it has been held that, limitations relating to the size of the claimed invention is not sufficient to patentably distinguish over the prior art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); see also In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). Here, likewise, the aforementioned claim limitation relates to the merely to the size (weight) of the ring. As such, this limitation does not amount to a patentable difference.
Regarding claim 18:
A method of storing energy in the rotations of a Fly-Ring KESS, comprising the steps of:
constituting, primarily from one or more ultra-high tensile yield strength metal alloys (¶ 3 in Dharan, “high strength alloy steel”; ¶ 6, “martensitic steel (a high-strength steel, desirable in flywheels)”), a large entirely open core ring (FIG. 1 depicts ring 112 having a center hole/opening) of inner radius Ri, outer radius R0, and radial thickness delta R = R0-Ri (FIG. 1 depicts ring 112 having an inner radius, as defined by the center opening, and an outer radius, as defined by the outer circumferential surface at reference number 112, both radii defining a thickness of the ring);
levitating the ring magnetically with permanent magnets (140, 142 in FIG. 1; pg. 5, “Permanent magnets 140, 142, the rotor device 112 is spaced in the axial direction of the base 144, floats above the first permanent magnet 140. This results in a particularly frictionless axial bearing of the rotor device 112”), distributed along the extent of the ring and an associated raceway (depicted in FIG. 1; pg. 4, “The thrust bearing 118 comprises at least one first permanent magnet 140, which is arranged on a surface of a base 144, which faces the rotor device 112. The stator 113 is fixed to the pedestal 144. At one, in the axial direction, lower end of the rotor device 112 is a second permanent magnet 142on a surface of the Rotor device 112 is arranged, which faces the base 144. The first and second permanent magnets 140, 142 are in particular formed rotationally symmetrical about the axis of rotation A”), that collectively lift with more force than the ring's weight (pg. 5, supra, the term “float” and “frictionless axial bearing” indicating said lift);
rotating the ring in place such that each section follows the adjacent section stably at varying angular velocities (pg. 3, “Electrodynamic radial bearing device on two radial bearing units, of which a first radial bearing unit is arranged in the axial direction above the electric machine, and of which a second radial bearing unit is arranged in the axial direction below the electric machine. In other words, the device may comprise a plurality of radial bearing devices, which are arranged in the axial direction symmetrical to the electric machine. Thus, a particularly stable orientation and storage of the electrical machine is possible”; pg. 5, “In a step S02, the rotor device 112 is acted upon by a torque in order to set the rotor device 112 in rotation about the axis of rotation A, for example by means of the electric machine 114”) without a stabilizing central structure (FIG. 1 depicts the ring 112 as floating without a central structure directly engaged with the center opening i.e. without a stabilizing central structure);
accelerating and/or decelerating the ring's rotation with power electronics that transfer energy to the ring by speeding the rotation and receive energy from the ring by slowing its rotation (pg. 5, “The circuit device 40 may, for example, also include power electronics for the operation of the photovoltaic system 2. . . . In a step S02, the rotor device 112 is acted upon by a torque in order to set the rotor device 112 in rotation about the axis of rotation A, for example by means of the electric machine 114. For this purpose, energy from an energy source is used, for example from the photovoltaic system 2 or from a household electricity grid”; pg. 5, “In a step S03, the rotational energy of the rotation of the rotor device 112 is converted into electrical energy, for example by means of the electric machine 114, in a subsequent step. In a subsequent step, the electrical energy can be transferred from the conversion to a consumer, for example by means of a circuit device 40 , as described above”).
However, Mayer does not expressly disclose that Ri is 2 meters or greater, that delta R is less than Ri and less than 3 meters.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Mayer, with a reasonable expectation of success, such Ri is 2 meters or greater, that delta R is less than Ri and less than 3 meters as a matter of design choice because it has been held that, limitations relating to the size of the claimed invention is not sufficient to patentably distinguish over the prior art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); see also In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). Here, likewise, the aforementioned claim limitation relates to the merely to the size (and weight) of the ring. In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Mayer, with a reasonable expectation of success, such that Ri is 2 meters or greater, that delta R is less than Ri and less than 3 meters as a matter of design choice because it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)( the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device); see also MPEP § 2144.04 (IV)(A). Here, nowhere in the original disclosure does it disclose or suggest that the rotor of the claimed invention performs any differently than that of the prior art device. For example, page 8 of the instant specification recites “An alternative geometry for the Fly-Ring is shown by optional outer border 126 that is at a radius R only about a meter larger than the R0 inner border distance 128. Of course, whatever the geometry in the plane of the Fly-Ring 114, capacity can still be varied by varying the height, ,wherein more height equals more capacity for a given planar geometry.” As such, this limitation does not amount to a patentable difference.
Mayer as modified above further teaches the following:
Regarding claim 19
A method of storing energy in the rotations of a Fly-Ring KESS according to claim 18, wherein R; is 4 meters or greater, AR is less than 1.5 meter, and the space in which the ring rotates is at least partially evacuated (pg. 5, “The base 140, the rotor device 112 and the stator 113 are advantageously enclosed by a housing 150 in which a negative pressure, preferably a vacuum, is produce”).
However, Mayer does not expressly disclose that Ri is 4 meters or greater and that delta R is less than 1.5 meters.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Mayer, with a reasonable expectation of success, such that Ri is 4 meters or greater and that delta R is less than 1.5 meters as a matter of design choice because it has been held that, limitations relating to the size of the claimed invention is not sufficient to patentably distinguish over the prior art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); see also In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). Here, likewise, the aforementioned claim limitation relates to the merely to the size (and weight) of the ring. In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Mayer, with a reasonable expectation of success, such that Ri is 4 meters or greater and that delta R is less than 1.5 meters as a matter of design choice because it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)( the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device); see also MPEP § 2144.04 (IV)(A). Here, nowhere in the original disclosure does it disclose or suggest that the rotor of the claimed invention performs any differently than that of the prior art device. For example, page 8 of the instant specification recites “An alternative geometry for the Fly-Ring is shown by optional outer border 126 that is at a radius R only about a meter larger than the R0 inner border distance 128. Of course, whatever the geometry in the plane of the Fly-Ring 114, capacity can still be varied by varying the height, ,wherein more height equals more capacity for a given planar geometry.” As such, this limitation does not amount to a patentable difference.
Regarding claim 20:
A kinetic energy storage system, comprising:
a steel ring (112; regarding steel, see Dharan’s teaching to claim 1, supra),
an electromagnetic (EM) power transfer assembly (114, 40) that causes the ring to selectively rotate faster and/or slower in order to store energy as or retrieve energy from the ring's rotation (pg. 5, “In a step S02, the rotor device 112 is acted upon by a torque in order to set the rotor device 112 in rotation about the axis of rotation A, for example by means of the electric machine 114. For this purpose, energy from an energy source is used, for example from the photovoltaic system 2 or from a household electricity grid. In a step S03, the rotational energy of the rotation of the rotor device 112 is converted into electrical energy, for example by means of the electric machine 114, in a subsequent step. In a subsequent step, the electrical energy can be transferred from the conversion to a consumer, for example by means of a circuit device 40 , as described above”), and
one or more arrays of permanent magnets (140, 142) arranged to provide sufficient lift to the ring so that the ring is levitated off of the ground (pg. 5, “Permanent magnets 140, 142, the rotor device 112 is spaced in the axial direction of the base 144, i. floats above the first permanent magnet 140. This results in a particularly frictionless axial bearing of the rotor device 112”).
However, although Mayer discloses an inner radius (FIG. 1 depicts inner radius defined by center hole e.g. at or near reference number 132) does not expressly disclose an inner radius of at least 4 meter and an outer radius 2 meters or less larger than the inner radius.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Mayer, with a reasonable expectation of success, such that an inner radius of at least 4 meter and an outer radius 2 meters or less larger than the inner radius as a matter of design choice because it has been held that, limitations relating to the size of the claimed invention is not sufficient to patentably distinguish over the prior art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); see also In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). Here, likewise, the aforementioned claim limitation relates to the merely to the size (and weight) of the ring. In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Mayer, with a reasonable expectation of success, such that an inner radius of at least 4 meter and an outer radius 2 meters or less larger than the inner radius as a matter of design choice because it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)( the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device); see also MPEP § 2144.04 (IV)(A). Here, nowhere in the original disclosure does it disclose or suggest that the rotor of the claimed invention performs any differently than that of the prior art device. For example, page 8 of the instant specification recites “An alternative geometry for the Fly-Ring is shown by optional outer border 126 that is at a radius R only about a meter larger than the R0 inner border distance 128. Of course, whatever the geometry in the plane of the Fly-Ring 114, capacity can still be varied by varying the height, ,wherein more height equals more capacity for a given planar geometry.” As such, this limitation does not amount to a patentable difference.
Mayer as modified above further teaches the following:
Regarding claim 31:
The Fly-Ring kinetic energy storage system according to claim 7, wherein the raceway accommodates the rotating ring in an at least partially evacuated space ((pg. 5, “The base 140, the rotor device 112 and the stator 113 are advantageously enclosed by a housing 150 in which a negative pressure, preferably a vacuum, is produce”).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mayer in view of Dharan, as applied to claim 7 above, and further in view of Prober (U.S. P.G. Publication No. 2014/0260779 A1; “Prober”).
Regarding claim 16, Mayer as modified above teaches the limitations of claim 7, see above, but does not expressly disclose that the ring/rotor is composed of a plurality of vertically stacked metal alloy plates.
Prober teaches a ring/rotor is composed of a plurality of vertically stacked metal alloy plates (¶ 9, “The flywheel may be formed from a plurality of stacked, disc-shaped flywheel sections for ease of construction and assembly. Each flywheel section is preferably formed from pelletized metal such as steel”; see stacks 37a, 37b, 37c in at least FIG. 1A ) for ease of construction and assembly (¶ 9, supra).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, Mayer such that the ring/rotor is composed of a plurality of vertically stacked metal alloy plates, as taught by Prober, for ease of construction and assembly.
Claim(s) 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mayer in view of Dharan, as applied to claim 7 above, and further in view of Gabrys (U.S. Patent No. 6,710,489 B1; “Gabrys”).
Mayer discloses:
Regarding claim 21:
A kinetic energy storage system according to claim 20, said magnet array comprising a first component affixed to the ring (142) and a second component (140) supported, directly or indirectly, by the ground, a foundation or the equivalent thereof (base 144);
wherein the components are disposed in cooperative positions such that the magnetic interaction between them partially provides, via the first component lifting the ring due to the magnetic interaction, sufficient force to levitate the ring (pg. 5, “Permanent magnets 140, 142, the rotor device 112 is spaced in the axial direction of the base 144, i. floats above the first permanent magnet 140. This results in a particularly frictionless axial bearing of the rotor device 112.”).
Although Mayer teaches a first magnet component 142 and a second magnet component 140, it does not expressly disclose each having an array of magnets.
Gabrys teaches the use of an array of magnets (79, 80; col 6, ll. 40-46) to prevent development of excessive hoop stresses that could otherwise cause a magnetic ring magnet to fail mechanically (col. 6, ll. 40-46).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify said magnetic components in Mayer, with a reasonable expectation of success, to be an array of magnets, as taught by Gabrys, to prevent development of excessive hoop stresses that could otherwise cause a magnetic ring magnet to fail mechanically.
Although Mayer discloses magnetic interactions between magnetic components 142 and 140, to does not expressly disclose an EM interaction therebetween.
Dharan teaches an EM interaction as an acceptable form/alternative to a magnetic interaction (¶ 58).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify said magnetic interaction in Mayer, with a reasonable expectation of success, to be an EM interaction, as taught by Dharan, as it is an acceptable form/alternative to a magnetic interaction.
Mayer as modified above further teaches the following:
Regarding claim 22:
A kinetic energy storage system according to claim 21, wherein said first and second arrays each consist of magnets disposed with their poles all similarly aligned (FIG. 3 in Gabrys depicts magnets 79 aligned the same way and magnets 80 aligned the same way ), normal to the width of the ring (FIG. 3 in Gabrys depicts magnets 79, 80 aligned in the vertical direction i.e. perpendicular to the radius of the rotor), and such that the same magnetic pole face of the first array are all disposed closest to the same magnetic pole face of the second array (see close proximity of magnets 79, 80 in FIG. 3 in Gabrys).
Regarding claim 23:
A kinetic energy storage system according to claim 21, wherein said first and second arrays each consist of magnets disposed with similar alignments that create similar fields normal to the width of the ring and are placed in mirror image facing dispositions (FIG. 3 in Gabrys depicts magnets 79 aligned the same way and therefore producing similar fields, magnets 80 aligned the same way and therefore producing similar fields, magnets 79, 80 depicted as being mirrored in the lateral direction; see MPEP § 2125) producing a repulsive magnetic force between them (col. 6, ll. 47-52 in Gabrys, “Magnets with axial magnetization are generally easier to manufacture and are lower in cost than radially magnetized magnets. Several designs of axial repulsion magnetic bearings can be constructed and used with the invention The magnetic bearings generate axial repulsive forces between the flywheel and the rest of the system.”).
Claim(s) 24-27 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mayer in view of Dharan and Gabrys, as applied to claim 21, and further in view of Gabrys et al. (U.G. 6,727,616 B1; “Gabrys II”).
Regarding claim 24, Mayer as modified above teaches the limitations of claim 21, see above, but does not expressly disclose that said first and second arrays consist of magnets disposed with opposite poles facing each other and are placed in dispositions producing an attractive magnetic force between them.
Gabrys II teaches first and second arrays (198, 199) consist of magnets disposed with opposite poles facing each other and are placed in dispositions producing an attractive magnetic force between them (col. 7, ll. 25-31) as an acceptable alternative configuration to provide a greater load carrying capacity than the weight of the rotor (col. 7, ll. 25-34).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Mayer, with a reasonable expectation of success, such that said first and second arrays consist of magnets disposed with opposite poles facing each other and are placed in dispositions producing an attractive magnetic force between them, as taught by Gabrys II, as an acceptable alternative configuration to provide a greater load carrying capacity than the weight of the rotor.
Mayer as modified above further teaches the following:
Regarding claim 25:
A kinetic energy storage system according to claim 21 further comprising third and fourth arrays (200, 201 in FIG. 4 of Gabrys II), wherein said first and second arrays consist of magnets disposed with opposite poles facing each other and are placed in dispositions producing an attractive magnetic force between them (col. 7, ll. 25-31 in Gabrys II), and said third and fourth arrays produce a repulsive force between them (col. 7, ll. 31-34 in Gabrys II) with the first and second arrays' attraction pulling the ring upward from above and the third and fourth arrays pushing the ring upward from below (col. 7, ll. 31-34 in Gabrys II).
Regarding claim 26:
A kinetic energy storage system according to claim 25, wherein said attractive and repulsive EM forces are arranged such that as a vertical displacement of the ring occurs (col. 7, ll. 31-34 in Gabrys II).
However, Mayer as modified above does not expressly disclose that the repulsive force pushing upward from below drops in aggregate magnitude faster than the attractive force pulling upward from above grows in aggregate magnitude.
Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); see also Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."); see also In