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.
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).
Reply Not Fully Responsive, Examiner Discretion Exercised
Applicant’s Reply of 01/09/2026 is not fully responsive as required by 37 CFR 1.111(b). Because the amendment does not fully comply with the requirements of 37 CFR 1.121(c) and (d), it is considered not fully responsive (see MPEP 714.02).
Regarding the claims, Applicant has failed to provide a listing of all claims, as required by 37 CFR 1.121(c)(1)—the claims document lists only claims “1-26” and new claims 48-63, it is missing previously-pending claims 27-47 and the statuses thereof. As Applicant has indicated in the Remarks that “Claims 1-47 have been canceled” (Rem. 9), the status of claims 27-47 will, for the purpose of examination, be understood to be “Canceled”.
Regarding the drawings, the marked-up copies of the amended drawings filed 01/09/2026 are not clearly labeled as “Annotated Sheet,” as required by 37 CFR 1.121(d)(1).
However, as Applicant’s Reply otherwise generally appears to be a bona fide attempt to advance prosecution and as the time period for reply to the Non-Final Office Action mailed 09/10/2025 has expired (including any possible extension thereof), Applicant’s reply of 01/09/2026 is being treated as an adequate reply to avoid abandonment and the Examiner is acting on the amendment (see MPEP 714.03).
Response to Arguments
Applicant's arguments filed 01/09/2026 with respect to claims 27-47 have been considered but are moot in view of i) Applicant’s cancellation of these claims and presentation of new claims 48-63, and ii) the new ground(s) of rejection of new claims 48-63.
Preliminary Formalities
Applicant’s repeated cancellation of previously-pending claims and presentation of new claims fails to comply with the principles of compact prosecution and unnecessarily and unduly hinders efficient examination of the claimed invention.
Moving forward, Applicant is strongly encouraged to amend the currently-pending claims to address all previously- and currently-noted deficiencies, rather than simply canceling the pending claims and presenting new claims. Upon review of the currently-pending claims, there appear to be repeated instances of previously-addressed ambiguities. Repeated failure to resolve previously-noted issues will not result in allowance; this does not substantively advance prosecution and only results in unreasonable and unexplainable delay in prosecution.
Drawings
The drawings were received on 01/09/2026. These drawings are not acceptable.
The drawings are objected to because of the following informalities.
Appropriate correction is required.
The examiner notes that the following may not be an exhaustive list of informalities. It is suggested that the applicant thoroughly review the drawings.
Regarding the Annotated Figures, these do not comply with 37 CFR 1.121(d)(1). Specifically, the marked-up copies of the amended drawings filed 01/09/2026 are not clearly labeled as “Annotated Sheet,” as required. Both sets of drawing sheets are labeled as “Replacement Sheet”.
Regarding all Amended Figures, replacement drawing(s) in compliance with 37 CFR 1.84 and 37 CFR 1.121 (d) are required. The drawing(s) submitted are not acceptable because:
The drawings are generally poor in quality and fail to provide satisfactory reproduction characteristics. See 37 CFR 1.84(l).
The drawings have a line quality that is too light to be reproduced (the weight of all lines and letters must be heavy enough to permit adequate reproduction) and/or text that is illegible (reference characters, sheet numbers, and view numbers must be plain and legible). See 37 CFR 1.84(l) and (p)(1).
The drawings must be reasonably free from erasures and must be free from alterations, overwriting, interlineations, folds, and copy marks. See 37 CFR 1.84(e), (l), and (m).
Reference characters must be oriented in the same direction as the view illustrated so as to avoid having to rotate the drawing sheet. See 37 CFR 1.84(p)(1).
Numbers, letters, and reference characters on the drawings must measure at least 0.32 cm (1/8 inch) in height. See 37 CFR 1.84(p)(3).
Numbers, letters, and reference characters should not be placed in the drawing so as to interfere with its comprehension, cross or mingle with lines, or be placed upon hatched or shaded surfaces. See 37 CFR 1.84(p)(3).
Drawings are to be submitted in black ink (see 37 CFR 1.84(a)(1)). Drawings must also have satisfactory reproduction characteristics; and every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined (see 37 CFR 1.84(l)).
Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
N.B. – Nearly all of the drawings submitted have lines that are pixelated/fuzzy and fail to show details of the elements shown (e.g., the elements indicated by certain reference characters are too small to clearly identify what they are and what structure(s) they may comprise). A thorough review of the current drawings, as well as the USPTO’s drawing requirements, as set forth in 37 CFR 1.84, should be made to ensure Applicant’s amended drawings fully conform with all drawing requirements, to thereby avoid any further unnecessary delays in prosecution.
Applicant was notified of these requirements in the last Office Action and has failed to comply with the requirements clearly set forth previously. This failure unnecessarily and unduly delays prosecution.
Note that if Applicant chooses to upload drawings electronically via Patent Center, no color (including any shade of grey) should be used. All markings—e.g., reference characters and drawing lines—should be in black color only to avoid possible pixelation/greyscale issues upon upload. See MPEP 502.05(K)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 48 is objected to because of the following informalities. Appropriate correction is required.
Regarding claim 48, line 10, the limitation “the water body” is recited. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the phrase “the water body” will be read as —the body of water—. Claim terminology should be consistent throughout the claims to avoid any unnecessary ambiguities.
Regarding claim 48, each element and/or step should be separated by a line indentation. See 37 CFR 1.75(i), MPEP 608.01(m). Whereas the claim appears to set forth each element and/or step on a new line, each new line is not appropriately indented. Indentations of, e.g., 0.5in are recommended.
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 48-63 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 claim 48, the limitation “at least one compression module comprising a piston inside a cylinder, the piston dividing the cylinder into an upper chamber and a lower chamber containing a working fluid” (emphasis added) appears to comprise subject matter which was not described in the specification as originally filed.
Notably, the specification fails to provide a written description of any embodiment (including the elected embodiment illustrated in Fig. 1A) where only “one compression module” may be used. Both the “first embodiment” and the “second embodiment,” according to Fig. 1A and Fig. 1B, respectively, are disclosed as requiring “six compression modules 18A, 18B” (see, e.g., Figs. 1A, 1B; and page 18, lines 16-17). Thus, the invention as currently claimed, requiring only a single “one compression module” is not commensurate in scope with the invention as described in the originally-filed disclosure.
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.
N.B. – This issue was noted in the Non-Final Office Action (NFOA) of 09/10/2025 (see item 31 on p. 10 of the NFOA) but has not been appropriately corrected by Applicant herein.
Regarding claims 49-63, they are dependent on claim 48 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.
Claims 48-63 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 claims 48-63, the claims are generally narrative and indefinite and are replete with ambiguities. The structure which goes to make up the claimed apparatus must be clearly and positively specified in such a manner as to present a complete operative device.
The following examples of language failing to meet the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, are given for Applicant’s benefit. The following, however, may not constitute a complete listing of ambiguous language present in the pending claim(s).
Due to the numerous instances of ambiguous language, should Applicant decide to pursue prosecution, revision of the pending claims is recommended, to clearly and definitely set forth both the structure of the claimed invention as well as the structural and functional relationship(s) between the claimed features.
Regarding claim 48, lines 4-5, the limitation “the piston dividing the cylinder into an upper chamber and a lower chamber containing a working fluid” is vague and indefinite. The claim fails to make clear whether it is both the “upper chamber and a lower chamber” which “contain[] a working fluid” or whether only the “lower chamber” is required to “contain[] a working fluid”.
Regarding claim 48, lines 9-10, the limitations “the heave and sinking motion of the water surface,” “the water surface” are recited. There is insufficient antecedent basis for these limitations in the claim.
N.B. –Issues similar to those above were noted in the Office Action of 09/10/2025 but have not been appropriately corrected by Applicant herein.
Regarding claim 48, lines 11-13, the limitation “at least one dynamic compensation tank forming a first weight-changing mechanism of the reciprocating assembly, the dynamic compensation tank being configured to […]” is vague and indefinite.
First, the claim fails to make clear what either a “dynamic compensation tank” or a “weight-changing mechanism” may be or comprise.
The limitation recites function rather than structure (i.e., the “tank” being defined as “forming a first weight-changing mechanism” and “being configured to […]”). 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).
Second, the claim appears to introduce the “dynamic compensation tank” as being a “first weight-changing mechanism of the reciprocating assembly”—i.e., identifying the “dynamic compensation tank” as a component/feature “of the reciprocating assembly”. However, the “tank” is initially introduced as being a separate and distinct element/feature of the “apparatus”—this dual introduction is contradictory and thus introduces ambiguity into the claim. Is the “dynamic compensation tank” a feature of the “apparatus” or of the “reciprocating assembly”?
Regarding claim 48, lines 12-15, the limitation “the dynamic compensation tank being configured to be permanently flooded with water that remains in open communication with the ocean when the reciprocating assembly moves upward” is vague and indefinite.
First, the claim fails to make clear how the “dynamic compensation tank” may be “configured to be permanently flooded […]” as claimed.
Second, the claim fails to make clear what the phrase “water that remains in open communication with the ocean” is intended to mean, especially with the further requirement that such occur “when the reciprocating assembly moves upward”.
Third, the limitation “the ocean” is recited. There is insufficient antecedent basis for this limitation in the claim, thereby rendering the claimed invention vague and indefinite.
Regarding claim 48, lines 15-16, the limitation “and remains in closed communication with the ocean retaining water when the reciprocating assembly moves downward” is vague and indefinite.
First, the claim fails to make clear what element/feature “remains in closed communication with […]”.
Second, the limitation “the ocean retaining water” is recited. There is insufficient antecedent basis for this limitation in the claim.
Third, and relatedly, the phrase “the ocean retaining water” is not idiomatic and is thus unclear.
Fourth, the term “downward” is a relative term which renders the limitation indefinite. The claim fails to clearly set forth a point or plane of reference by which to define the term “downward”. To resolve this, it is advised to introduce a clear frame of reference by which to define “downward,” “upward,” and/or any other related relative terminology.
Regarding claim 48, line 17, the limitation “the reciprocating motion of the reciprocating assembly” is recited. There is insufficient antecedent basis for this limitation in the claim, thereby rendering the claimed invention vague and indefinite. Note that the “reciprocating motion” is introduced as belonging to the “cylinder” and not to the “reciprocating assembly”.
Regarding claim 48, lines 18-21, the limitation “at least one static compensation tank forming a second weight-changing mechanism of the reciprocating assembly, the static compensation tank providing ballast to balance the apparatus during the commissioning operation, adjusting buoyancy or providing storage” is vague and indefinite.
First, the claim fails to make clear what either a “static compensation tank” or a “weight-changing mechanism” may be or comprise.
The limitation recites function rather than structure (i.e., the “tank” being defined as “forming a second weight-changing mechanism” and “being configured to […]”). 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).
Second, the claim appears to introduce the “static compensation tank” as being a “second weight-changing mechanism of the reciprocating assembly”—i.e., identifying the “dynamic compensation tank” as a component/feature “of the reciprocating assembly”. However, the “tank” is initially introduced as being a separate and distinct element/feature of the “apparatus”—this dual introduction is contradictory and thus introduces ambiguity into the claim. Is the “static compensation tank” a feature of the “apparatus” or of the “reciprocating assembly”?
Third, the limitation “the commissioning operation” is recited. There is insufficient antecedent basis for this limitation in the claim, thereby rendering the claimed invention vague and indefinite.
Fourth, the claim fails to make clear to what element(s)/feature(s) the “buoyancy” or “storage” may belong, as well as what may be “stor[ed]”.
Regarding claim 48, lines 22-28, the limitation “a first fluid circuit fluidly connected to the upper and lower chambers of the compression module(s), the first fluid circuit being configured to transform oscillating pressure differentials generated by the reciprocating motion of the cylinder relative to the piston of the at least one compression module into a pressure differential between permanent high- and low-pressure points in generation mode, or reversibly transform pressure differential into motion in storage mode” (emphasis added) is vague and indefinite.
First, the limitation “the first fluid circuit being configured to transform […]” fails to make clear how the “first fluid circuit” may be “configured to transform oscillating pressure differentials […] into a pressure differential […]” 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).
Second, and relatedly, the claim fails to make clear what the “permanent high- and low-pressure points” may comprise, including whether these are, e.g., “points” on a graph or physical “points”—and, if so, to what element(s)/feature(s) these “points” may belong.
Third, and also relatedly, the claim fails to make clear what either the “generation mode” or the “storage mode” may comprise and how the “mode” may be switched from one to the other.
Regarding claim 48, lines 29-31, the limitation “a second fluid circuit fluidly connected to the permanent high- and low-pressure points of the first fluid circuit, the second fluid circuit being configured to drive at least one turbine” is vague and indefinite.
First, the limitation “the permanent high- and low-pressure points of the first fluid circuit” is recited. There is insufficient antecedent basis for this limitation in the claim, thereby rendering the claimed invention vague and indefinite. As discussed above, the “first fluid circuit” limitation fails to identify to what element(s)/feature(s) these “points” may belong, thereby failing to provide clear antecedent basis for the limitation recited herein.
Second, the claim fails to make clear how the “second fluid circuit” may be “configured to drive at least one turbine” as claimed.
Again, 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 claims 49-63, they are dependent on claim 48 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
/TULSIDAS C PATEL/Supervisory Patent Examiner, Art Unit 2834
1 Note that the legacy system EFS-Web was retired November 15, 2023, and has been replaced by Patent Center (the USPTO patent electronic filing system). References to “EFS-Web” should therefore be construed as applying to Patent Center.
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