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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/26/2025 has been entered.
Response to Arguments
Applicant's arguments filed 08/26/2025 have been fully considered but they are not persuasive.
Regarding the rejections under 35 U.S.C. §112(a) for lacking adequate Written Description, Applicant has submitted “references that provide definitions of the following terms: elevon, deceleron, duckeron and wing sweep” (Rem. 8) and “Applicant respectfully contends that the terms at issue are terms that convey to one skilled in the art that the inventor did in fact possess the claimed invention” (Rem. 9). Applicant provides similar arguments against the related rejections under 35 U.S.C. §112(b) (Rem. 11-12).
Respectfully, Applicant’s position is not well taken. Applicant’s submission, apparently showing that the claimed types of control surfaces (“elevons/tailerons or decelerons/split ailerons”) may have been generally known at the effective filing date of the claimed invention, does not resolve the outstanding issue regarding how Applicant may have incorporated these features into Applicant’s own invention as originally disclosed. The question is not one of enablement—i.e., whether or not one skilled in the art could make and use the claimed invention without undue experimentation—but rather one of written description.
Furthermore, the references submitted all appear to discuss the terms at issue relative to airplanes, whereas Applicant’s claimed invention is drawn to a “submersible power plant”. No discussion is provided in the disclosure as originally filed regarding how these features for airplanes may be used for an underwater power plant. These would appear to be wholly different fields of endeavor.
"The ‘written description’ requirement implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee [inventor] was in possession of the invention that is claimed." Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1084 (Fed. Cir. 2005). Further, the written description requirement promotes the progress of the useful arts by ensuring that patentees adequately describe their inventions in their patent specifications in exchange for the right to exclude others from practicing the invention for the duration of the patent’s term.
To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116.
Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was "ready for patenting" such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the inventor was in possession of the claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68, 119 S.Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998); Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406; Amgen, Inc. v. Chugai Pharm., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991).
Here, the specification as originally filed only makes a single, passing mention of “elevons/tailerons or duckerons/decelerons/split ailerons” (see p. 8, ll. 3-9) without either i) defining what structure(s) any of these features may comprise (Applicant is relying on newly-submitted material to provide an explanation of these); or ii) providing an indication of how “tailerons or decelerons/split ailerons” may be incorporated into Applicant’s invention.
Thus, respectfully, Applicant’s arguments are not found to be persuasive.
Regarding the rejection under 35 U.S.C. §112(b) of the term “essentially,” Applicant argues that “[t]his is a question about geometry” and proceeds to argue that “it follows from geometry that the vehicle moves on the surface of a sphere […]”. Applicant continues, arguing that “the vehicle stays on the surface of the sphere but […] it looks as if the vehicle moves on the plane” (Rem. 10-11).
In response, Applicant’s position is not well taken. Initially, Applicant’s arguments appear to rely solely on conjecture, as no discussion of a “sphere” or “introduce[tion]” of “the plane” appears to be found in the disclosure as originally filed. It is respectfully noted that Applicant has not submitted any documentary evidence to support this allegation. Arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Applicant finally argues that “there is no requisite degree for the "essentially",” asserting that “[t]he word "essentially" is just an acknowledgement that the trajectory is not actually on the plane, but close to it” (Rem. 11).
In response, respectfully, Applicant’s argument is not well taken at all. Applicant appears to be attempting to define the term “essentially” with “close”—both of which are relative terms. The disclosure fails to define what “essentially” may comprise and what the term Applicant introduces here—“close”—may comprise. How close? What is “close”? The public will never know because Applicant has failed to provide a standard for ascertaining the requisite degree of either term.
Next, Applicant argues that “[t]he Office Action argues that claim 1 fails to make clear how the "control surfaces" may be "arranged" specifically "to move the vehicle in a predetermined trajectory essentially in a plane perpendicular to the direction of a fluid stream passing the wing during operation of the submersible power plant". Applicant respectfully traverses this conclusion” (Rem. 11).
In response, it is respectfully noted that Applicant fails to provide any arguments in support of their traversal. As no actual arguments are provided, the rejection is respectfully maintained.
Lastly, regarding the term “backswept,” Applicant argues that “Applicant has provided reference materials regarding the term swept wing” (Rem. 12).
In response, respectfully, though the term(s) for which Applicant has provided documentation may have been known in the art, this does not remove from the fact that Applicant has failed to provide any adequate written description or clarification regarding how these terms may be used to describe Applicant’s own invention.
Here, both the claim and the disclosure fail to make clear what is intended by the term “backswept,” and fails to clearly set forth any point or frame of reference with respect to which the “wing” may be deemed “backswept” from.
Regarding the rejection under 35 U.S.C. §102/§103, Applicant argues that “Blumer fails to disclose the generator is arranged inside the at least one wing of the vehicle as is recited in claim 1” (Rem. 12).
In response, it is respectfully noted that Applicant’s position is not well taken. Applicant himself has failed to illustrate where his “generator” may be located relative to the “wing”—no such feature is illustrated in either of Applicant’s drawing figures.
Furthermore, though Applicant alleges benefits regarding “mak[ing] it possible to design cooling channels with openings directly from the wing to the generator” (Rem. 13), absolutely none of these features are shown or even disclosed in the application as originally filed.
Furthermore, Applicant has not submitted any documentary evidence to support this allegation. Arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Thus, most respectfully, Applicant’s arguments are not found to be persuasive.
Preliminary Formalities
A thorough review of both the claims and the disclosure has been made. Pursuant to MPEP 707.07(j), and for the purposes of assisting Applicant and expediting prosecution, it is respectfully noted that there does not appear to be any patentable subject matter disclosed in the application.
Drawings
The drawings were received on 08/26/2025. These drawings are unacceptable.
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.
The amendment filed 08/26/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
Regarding Figs. 1, 2: the addition of “predetermined trajectory 20” as indicated by an upward arrow.
Regarding Fig. 2: the addition of reference numeral “16” to indicate “decelerons”; a possibility of providing “decelerons” was discussed only once in the entire specification, and in the Summary section of the disclosure at that. No written description of “decelerons” was provided in the Detailed Description of the Invention or in the Drawings as originally filed.
Applicant is required to cancel the new matter in the reply to this Office Action.
Regarding Figures 1-2, the drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
- “a predetermined trajectory” of the vehicle,
- “a plane perpendicular to the direction of a fluid stream passing the wing,”
- “decelerons” (all in claim 1).
N.B. – As it does not appear that the features listed above could be shown in the drawings without adding new matter, the features should be canceled from the claim(s).
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.
Specification
The disclosure is 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 specification.
N.B. – As discussed in the Response to Arguments section above, it is initially noted that Applicant’s Amendments to the Specification does not comply with either 37 CFR 1.121(b)(1)(i) or 37 CFR 1.121(b)(1)(ii).
Specifically, 37 CFR 1.121(b)(1)(i) requires that Applicant, in making amendments to the specification, must unambiguously identify the location of the amendment. Here, Applicant does not reference the specification as originally filed, but rather references the Patent Application Publication, “US20240318621”. This does not unambiguously identify the location of the amendment relative to the original version of the specification as filed, as is required.
Furthermore, 37 CFR 1.121(b)(1)(ii) requires that markings to show all the changes relative to the previous version of the paragraph must be provided. Here, no markings are provided for the paragraph intended to replace “paragraph [0025]”.
The amendment filed 08/26/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: both the amendment to “paragraph [0025]” and the “new paragraph” to be added “after [0033]”. As this amendment is non-compliant, it should not be entered. Furthermore, it appears that both paragraphs comprise new matter.
Applicant is required to cancel the new matter in the reply to this Office Action.
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 1, 12 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 1, the limitation “the control surfaces being elevons/tailerons or decelerons/split ailerons” (emphasis added) appears to comprise subject matter which was not described in the specification as originally filed.
Notably, the specification fails to make clear: i) what a “taileron” or “deceleron” or “split aileron” may comprise; ii) how such a “taileron” or “deceleron” or “split aileron” may be different from an “elevon”; and iii) how such a “taileron” or “deceleron” or “split aileron,” even if generally known in the field of airplanes, may be used by Applicant in the make and use of their invention, which is an underwater/submersible power plant—i.e., a different field of endeavor. The specification mentions these features only once—in, paragraph [0015] (i.e., “The control mechanism arranged on the rear edge of the wing may comprise control surfaces in the form of for instance water brake, elevons/tailerons or duckerons/decelerons/split ailerons”) but, though the feature is named, the specification fails to provide any written description to adequately answer at least the three issues identified above.
It is also noted that no “taileron” or “deceleron” or “split aileron” was illustrated in the drawings as originally filed either. Applicant only identified and illustrated “elevons 14” (see Fig. 2), without providing any further written description of any of the other three claimed options (including failure to illustrate any of these alleged possibilities for the claimed “control surfaces”).
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 1, line 3, the limitation “a structure and a vehicle comprising at least one wing” (emphasis added) appears to comprise subject matter which was not described in the specification as originally filed.
Notably, although the specification discusses and clearly shows a “submersible power plant” comprising a “structure 2” and a single “wing 4,” the specification fails to provide any written description of a “submersible power plant” comprising two or more “wing” features. Thus, whereas there does appear to be adequate written description for “one wing,” there does not appear to be any written description for an embodiment comprising more than one “wing,” which the limitation “at least one wing” would encompass.
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 1, line 15, the limitation “the submersible power plant further comprises at least one turbine connected to a generator” (emphasis added) appears to comprise subject matter which was not described in the specification as originally filed.
Notably, although the specification discusses and clearly shows a “submersible power plant” comprising a single “turbine 9,” the specification fails to provide any written description of a “submersible power plant” comprising two or more “turbine” features. Thus, whereas there does appear to be adequate written description for “one turbine,” there does not appear to be any written description for an embodiment comprising more than one “turbine,” which the limitation “at least one turbine” would encompass.
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 12, it is dependent on claim 1 and thereby inherits 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 1, 12 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 1, lines 6-10, the limitation “the vehicle comprising a control mechanism, the control mechanism comprising control surfaces, the control surfaces being configured to steer the vehicle along a predetermined trajectory […] essentially in a plane perpendicular to a direction of a fluid stream passing the at least one wing” is vague and indefinite.
First, the phrase “the vehicle comprising a control mechanism comprising control surfaces being arranged to move the vehicle […]” is narrative and unclear. Unless the “control mechanism” comprises other element(s) in addition to the “control surfaces,” it would be clearer to simply state, e.g., —the vehicle comprising control surfaces arranged to move the vehicle […]—.
Second, the phrase “a predetermined trajectory essentially in a plane perpendicular to the direction of a fluid stream passing the wing during operation of the submersible power plant” is generally narrative and unclear. The claim fails to make clear what “a plane perpendicular to the direction of a fluid stream passing the wing during operation of the submersible power plant” may comprise. Note that no such “plane” or “predetermined trajectory” was illustrated in the drawings as originally filed.
Third, and relatedly, the term “essentially” is a relative term which renders the claim indefinite. The term “essentially” 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.
Fourth, and perhaps most importantly, the claim fails to make clear how the “control surfaces” may be “configured” specifically “to move the vehicle along a predetermined trajectory […] essentially in a plane perpendicular to a direction of a fluid stream passing the at least one wing”. The limitation recites function rather than structure and, 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).
For the purpose of examination, the limitation will be interpreted as: —the vehicle comprising a control mechanism comprising control surfaces being arranged to move the vehicle in a predetermined trajectory during operation of the submersible power plant—.
Regarding claim 1, line 8, the limitation “by means of a fluid stream” is vague and indefinite. Specifically, the claim fails to make clear whether “means-plus-function” interpretation under 35 U.S.C. §112(f) is intended or whether Applicant has amended the claim using the phrasing “by means of” simply as a synonym to, e.g., —using—. Applicant is advised to avoid the phrase “by means of” unless interpretation under 35 U.S.C. §112(f) is expressly intended.
Regarding claim 1, line 10, the limitation “a direction of a fluid stream” is vague and indefinite. The claim fails to make clear whether this “a fluid stream” is the same as, or is separate and distinct from, the previously-recited “a fluid stream” introduced on line 8.
Regarding claim 12, the limitation “the wing of the vehicle is backswept” (emphasis added) is vague and indefinite. The claim fails to make clear what is intended by the term “backswept,” and fails to clearly set forth any point or frame of reference with respect to which the “wing” may be deemed “backswept” from.
Regarding claim 12, it is dependent on claim 1 and thereby inherits the deficiencies thereof.
For the purpose of expediting prosecution, prior art will be applied in reference to the claims as best understood by the examiner.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 12, as best understood, are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Blumer et al. (US 2011/0095530 A1).
Regarding claim 1, as best understood, Blumer et al. discloses a submersible power plant (system for hydrokinetic energy conversion 100) for producing electrical power (see Abstract), the submersible power plant comprising:
a structure (base station 108) and a vehicle (tethered aquatic device [TAD] 102/202; see Figs. 1, 4) comprising at least one wing (hydrofoil 103/204),
the vehicle configured to be secured to the structure at least one tether (tether 106),
the vehicle comprising a control mechanism, the control mechanism comprising control surfaces (e.g., first and second wing tips 208, 210, see Fig. 4; inboard and outboard elevons 522, see Fig. 7), the control surfaces being arranged to steer the vehicle (TAD 102/202) along a predetermined trajectory (e.g., figure-eight trajectory 112) by means of a fluid stream passing the at least one wing during operation of the submersible power plant,
wherein the control surfaces are arranged on a rear edge of the wing or on nacelles attached to the rear edge of the wing (inboard and outboard elevons 522 are arranged on rear edge of wing 504, see Fig. 7; such a configuration may be applied to any of the disclosed embodiments, see, e.g., ¶ 42) the control surfaces being elevons (elevons 522),
wherein the submersible power plant further comprises at least one turbine (e.g., water power turbine 105/206; details shown in Fig. 12) connected to a generator (high-speed generator 1008),
wherein the at least one turbine is connected to the rear edge of the wing (see, e.g., Figs. 1, 4).
Furthermore, Blumer et al. appears to disclose that the generator (generator 1008) is arranged inside the wing of the vehicle. Specifically, as shown in, e.g., Figs. 1, 4, the turbine 105/206 is shown as connecting directly to hydrofoil 103/204 and being integrated therein. As shown in Fig. 12, a cross-section of the wing appears to be shown, with the rotor (comprising rotor blades 1001), analogous to the rotors of turbines 105/206, being connected to generator 1008. Thus interpreted, generator 1008 would be arranged inside the wing of the TAD 102/202, especially absent disclosure of any other housing structure in Figs. 1, 4, thereby meeting the claimed limitations.
However, even if it could be argued that Blumer does not inherently teach that the generator is arranged inside the wing of the vehicle, this would nonetheless be obvious to one of ordinary skill in the art.
Specifically, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to understand that the generator of Blumer would be housed within/arranged inside the wing of the vehicle, for the purpose of streamlining the vehicle and minimizing material used and, thus, minimizing production costs.
Conclusion
The Examiner has pointed out particular references contained in the prior art of record within the body of this action for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claims, other passages and figures may apply.
Applicant, in preparing a response, should fully consider each of the references in its entirety as potentially teaching all or part of the claimed invention.
The Examiner requests, in response to this Office Action, that support be shown for all language added to any original claims on amendment and any new claims. That is, to specifically note the page(s) and line number(s) in the original specification and/or drawing figure(s) where support for newly added claim language may be found. No new matter may be added.
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 30, 2025
/TULSIDAS C PATEL/Supervisory Patent Examiner, Art Unit 2834