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 .
Interview Practice
Beginning October 2025, the USPTO is implementing an updated interview practice for patent examination: One interview per new application or RCE (Request for Continued Examination, see 37 CFR 1.114 and MPEP 706.07(h)) will generally be granted. Additional interview(s) which serve to advance prosecution may be granted with supervisory approval.
Applicants are encouraged to avail themselves of the interview available, as discussions between an Applicant and an Examiner are often indispensable to advance the prosecution of a patent application by improving the mutual understanding of specific issues therein.
To request an interview, Applicant may, preferably, contact the Examiner at the telephone number provided at the end of this Office Action and/or Applicant may file an Applicant Initiated Interview Request (AIR) form (PTOL-413A), which may be found here: https://www.uspto.gov/patents/apply/forms.
It may be useful to also file an Authorization for Internet Communications form (PTO/SB/439, also found at the link provided above), which would allow the Examiner to substantively respond to Applicant using electronic communication (i.e., via email).
If an interview is desired, it is advisable to request the interview sufficiently ahead of the due date of any response to an outstanding Office Action, to allow adequate time to schedule, prepare for, and hold the interview. Submission of an Interview Agenda by Applicant is also generally required (see MPEP 713.01(IV)).
Requests for interviews after final rejection may be denied and generally will be denied in cases where the interview is merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search (see MPEP 713.09).
Preliminary Formalities
All previously-pending claims 1-30 have been canceled.
New claims 31-48 are presented for examination.
Response to Arguments
Applicant's arguments filed 05/01/2026 with respect to now-canceled claims 1-30 have been considered but are moot in view of the new ground(s) of rejection.
Applicant asserts that they have “for sake of convenience, elected to cancel herein all pending claims and instead introduce new claims 31-48” (Rem. 8).
In response, respectfully, although it may have been “convenien[t]” for Applicant to cancel all pending claims, it certainly is not convenient for review by the Office. This manner of prosecution simply places additional burden on the Office for review as it fails to make clear what changes have been made relative to the immediate prior version of the claims, as would otherwise be required by amending the claimed subject matter (37 CFR 1.121(c)(2)). Applicant’s chosen course of action unnecessarily frustrates and unduly delays prosecution.
If such substantial amendments from the originally-presented claims were necessary in order to clearly and definitely set forth Applicant’s invention, then Applicant should take greater care to formulate claims which, upon initial submission, clearly and definitely present the invention for which patent protection is sought in the best possible condition for allowance.
Claim Objections
Claims 31, 34, 36, 46 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 31, line 5; and relatedly in claim 46; the phrase “wherein each of […] are configured” should be —wherein each of […] [[are]] is configured—.
Regarding claim 31, line 6; and relatedly in claim 46; the limitation “the pivot motion” is recited. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the phrase “the pivot motion” will be read as —the pivoting motion—.
Regarding claim 31, line 12; and relatedly in claim 46; the phrase “wherein each foil […] are attached” should be —wherein each foil […] [[are]] is attached—.
Regarding claim 31, line 17; and relatedly in claim 46; the phrase “to the pivot axis; and […]— appears grammatically incorrect as the term “and” should appear prior to the last element in a list—here, there are three additional “wherein” clauses following the “and”. Also, those three “wherein” clauses each end with a comma instead of a semi-colon. Applicant should use consistent punctuation throughout the claims so as to clearly set forth and properly delineate the claimed subject matter.
Regarding claim 34, line 4, the phrase “15° and 15° about […]— is unclear.
Regarding claim 36, line 2, the phrase “wherein a respective first pivot stop and a respective second pivot stop limits the pivoting motion” is grammatically incorrect—“limits” should be —limit—.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for
performing a specified function without the recital of structure, material, or acts in support
thereof, and such claim shall be construed to cover the corresponding structure, material,
or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Regarding claims 31, 46, the limitation “an energy conversion means” meets the three-prong test discussed above and, as such, is being interpreted under, 35 U.S.C. 112(f). Note: upon further review, it is unclear what structure(s) this term may encompass for the elected embodiment (see rejection under 35 U.S.C. § 112(a) below for further discussion).
Regarding claim 44, the limitation “a clutch mechanism” in the phrase “a clutch mechanism configured to convert an oscillatory rotational motion of each pinion into a unidirectional rotational motion” may be interpreted as, e.g., —a means for clutching— and meets the three-prong test discussed above. As such, the term is being interpreted under 35 U.S.C. 112(f). Note: this term appears to be provided with adequate written description, as it refers to “clutch mechanism 86” which is discussed at, e.g., page 26, line 16 to p. 27, l. 7 and illustrated in Fig. 21, which is drawn to the elected embodiment.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 31-48 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 31, 46, the limitation “an energy conversion means” appears to comprise subject matter which was not described in the specification as originally filed.
As discussed above, the limitation appears to invoke, and is being interpreted under, 35 U.S.C. §112(f).
However, the specification fails to make clear what, exactly, an “energy conversion means” may be or what specific corresponding structure(s) it may comprise.
The specification discusses an “energy conversion means 39g located at the second end 63 of the vibrational member 61” which is illustrated in Fig. 19, drawn to the elected embodiment. However, it is unclear whether the “energy conversion means 39g” comprises solely the “rack 75,” “pinion 76,” and “axle 77” or if it additionally comprises “electric generator 78”. To resolve this issue, a most straightforward approach would be to: i) Clarify on the record what structure(s) comprise the “energy conversion means 39g” and ii) Positively claim the structure(s) comprised by the “energy conversion means” so as to avoid any possible ambiguity associated with the means-plus-function language invocation.
Thus, it is found that the subject matter noted above was not clearly described in the specification as originally filed in such a way as to reasonably convey to one skilled in the relevant art that the inventor had possession of the claimed invention.
Regarding claim 47, the limitation “characterising a fluid flow comprises characterising the mean fluid flow speed, fluid flow speed distribution, turbulence, fluid flow shear profile, distribution of fluid flow direction and long-term temporal fluid flow variations” appears to comprise subject matter which was not described in the specification as originally filed.
Notably, the specification fails to make clear what “characterising” either “a fluid flow” or “the mean fluid flow speed, fluid flow speed distribution, turbulence, fluid flow shear profile, distribution of fluid flow direction and long-term temporal fluid flow variations” may comprise or how such “characterising” may be performed, including what specific process step(s) may allow the feature(s) to be “characteris[ed]”. The specification discusses this feature very briefly, e.g., on p. 29, ll. 9-13, but essentially the claim language is repeated, without appropriate written description to resolve the above issues.
Thus, it is found that the subject matter noted above was not described in the specification as originally filed in such a way as to reasonably convey to one skilled in the relevant art that the inventor had possession of the claimed invention.
Regarding claim 48, the limitation “determining the parameters of the ducted fluid flow energy harvesting device wherein the ducted fluid flow energy harvesting device is suitable for use with the fluid flow” appears to comprise subject matter which was not described in the specification as originally filed.
Notably, the specification fails to make clear what “the parameters of the ducted fluid flow energy harvesting device” may comprise or how such “parameters” may be “determine[ed],” including whether, for example, the “determining” step is to be performed actively, in real time, or whether the “parameters” may simply be found in a lookup table. The specification discusses this feature on, e.g., p. 29, ll. 20-31 but, though the feature is mentioned, the specification does not provide a written description of how the “determining” of “optimum parameters” may be achieved—it simply lists some general types of “parameters” without providing written description of specifics regarding any actual process step(s) which may be required to achieve the “determining”.
Thus, it is found that the subject matter noted above was not described in the specification as originally filed in such a way as to reasonably convey to one skilled in the relevant art that the inventor had possession of the claimed invention.
Regarding claims 32-45; and claims 47-48; they are dependent on claims 31, 46, respectively, and thereby inherit the deficiencies thereof.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 31-48 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 pre-AIA the applicant regards as the invention.
Regarding claim 31, lines 3-4; and relatedly in claim 46; the limitation “a generator comprising one or more vibrational members and an energy conversion means” is vague and indefinite.
First, as discussed above, the term “an energy conversion means” appears to invoke and is being interpreted under 35 U.S.C. § 112(f). However, the disclosure does not make clear what the structure(s) corresponding to the “energy conversion means” may be (see relevant section above for further discussion).
Second, and relatedly, the claim fails to make clear what the “generator” may comprise as it separate from the “energy conversion means”. Generally, a “generator” would be interpreted as referring to an electrical generator, such as the disclosed “electric generator 78” (see, e.g., ¶ 177 and Fig. 19). However, here the claim requires the “generator” to be “comprising one or more vibrational members”—i.e., apparently referring to “vibrational member[s] 61” and not the “electric generator 78”—and also comprising “an energy conversion means”.
To resolve this, Applicant should clearly indicate what the “generator” is intended to refer to and what the “energy conversion means” is intended to refer to.
Regarding claim 31, lines 8-11; and relatedly in claim 46; the limitation “wherein each duct of the two or more ducts comprises one or more foils located within each duct, the one or more foils located between the inlet opening and the outlet opening of each duct and wherein a leading edge of each of the one or more foils is orientated towards the inlet opening of each duct” (emphasis added) is vague and indefinite.
First, the limitation makes repeated reference to “each duct” but appears to be referring only to a single “duct” of the previously-claimed “two or more ducts,” thereby causing confusion.
Second, and relatedly, the claim fails to make clear whether all of “the one or more foils” are “located” in “each duct,” as the claim currently appears to indicate, or whether only respective “foils” are located in a corresponding “duct”.
Regarding claim 31, lines 16-17; and relatedly in claim 46; the limitation “wherein the rotation axis being parallel to a span direction of the foil, the rotation axis being perpendicular to the pivot axis” is vague and indefinite.
First, the limitations “the rotation axis,” “the foil,” “the pivot axis” are recited. There is insufficient antecedent basis for these limitations in the claim, thereby rendering the claimed invention vague and indefinite. Note that “a respective pivot axis” and “a respective rotation axis” have been set forth, apparently for “each foil of the one or more foils”—thus, there may be a plurality of “rotation axis” and “pivot axis” features. The claim should make clear to which one(s) reference is intended.
Second, the phrase “wherein the rotation axis being parallel to […]” (emphasis added) is grammatically incorrect, thereby adding to a general lack of clarity in the limitation as a whole.
Third, the claim fails to make clear what “a span direction of the foil” may be.
Regarding claim 31, lines 18-19; and relatedly in claim 46; the limitation “wherein each foil is configured so that the rotation motion assists the pivoting motion of the respective vibrational member” is vague and indefinite.
First, the limitation “the rotation motion” is recited. There is insufficient antecedent basis for this limitation in the claim, thereby rendering the claimed invention vague and indefinite.
Second, the claim fails to make clear what “assist[ing] the pivoting motion” may actually comprise. The term to “assist[]” does not appear to entail any specific action or require any specific structure.
Third, the claim fails to make clear how the “foil” may be “configured so that the rotation motion assists the pivoting motion of the respective vibrational member” as claimed.
The limitation recites function rather than structure. It is noted that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Furthermore, it must be noted that “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). See MPEP § 2114(I).
Regarding claim 31, lines 22-23; and relatedly in claim 46; the limitation “whereby the energy conversion means converts movement of each foil into electricity” is vague and indefinite. In light of the ambiguity surrounding what element(s) the “energy conversion means” may actually comprise (see discussion above), the claim fails to make clear how the “energy conversion means” may actually “convert[] movement of each foil into electricity” as claimed.
Regarding claim 39, the limitation “wherein in operation, the weight and or inertia of each of the one or more foils generates a rotation force which induces the rotation motion of the respective the foil” is vague and indefinite.
First, the claim fails to make clear what “operation” is being referred to—e.g., “operation” of what feature(s), the “operation” being performed by what feature(s), etc.
Second, the limitations “the weight and or inertia of each of the one or more foils,” “the rotation motion of the respective the foil,” and “the respective the foil” are recited. There is insufficient antecedent basis for these limitations in the claims, thereby rendering the claimed invention vague and indefinite.
Third, the claim fails to make clear how the “weight and or inertia of each of the one or more foils” may “generate[] a rotation force” and how such a “force” may “induce[] the rotation motion of the respective the foil”
Regarding claim 47, the limitation “characterising a fluid flow comprises characterising the mean fluid flow speed, fluid flow speed distribution, turbulence, fluid flow shear profile, distribution of fluid flow direction and long-term temporal fluid flow variations” is vague and indefinite.
First, the limitation “the mean fluid flow speed, fluid flow speed distribution, turbulence, fluid flow shear profile, distribution of fluid flow direction and long-term temporal fluid flow variations” is recited. There is insufficient antecedent basis for this limitation in the claim, thereby rendering the claimed invention vague and indefinite.
Second, and relatedly, the claim fails to make clear what “characterising” the listed features may comprise, including what each of the “mean fluid flow speed, fluid flow speed distribution, turbulence, fluid flow shear profile, distribution of fluid flow direction and long-term temporal fluid flow variations” may be and how they may be used to “characteris[e]” the “fluid flow” as claimed.
Third, and also relatedly, the claim fails to make clear how values any of the listed features may be obtained—e.g., through historical data, a lookup table, and/or active measurements.
Regarding claim 48, the limitation “determining the parameters of the ducted fluid flow energy harvesting device wherein the ducted fluid flow energy harvesting device is suitable for use with the fluid flow” is vague and indefinite.
First, the limitation “the parameters of the ducted fluid flow energy harvesting device” is recited. There is insufficient antecedent basis for this limitation in the claim, thereby rendering the claimed invention vague and indefinite.
Second, the claim fails to make clear how to “determine[e] the parameters […]”.
Third, the limitation “wherein the ducted fluid flow energy harvesting device is suitable for use with the fluid flow” is vague and indefinite. Initially, it does make clear what being “suitable for use” is intended to require and, consequently, does not clearly set forth any further requirement(s) on the claimed “method of manufacturing” as required by 35 U.S.C. §112(d).
Regarding claims 32-45; and claims 47-48; they are dependent on claims 31, 46, respectively, and thereby inherit the deficiencies thereof.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Applicant should, in response to this Office Action, provide support for all language added to any original claims on amendment and any new claims. See MPEP 2163(II)(A). That is, Applicant should specifically note the page(s) and line number(s) in the original specification and/or feature(s) in the original drawing figure(s) where support for newly added claim language may be found. No new matter may be added. See 35 U.S.C. §132(a).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to S. MIKAILOFF whose telephone number is (571) 270-7894. The examiner can normally be reached Mon. - Thurs. 10am - 6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, T.C. PATEL can be reached at (571) 272-2098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S. MIKAILOFF/Examiner, Art Unit 2834
September 18, 2026
/TULSIDAS C PATEL/Supervisory Patent Examiner, Art Unit 2834
Prosecution Insights