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).
Reply Not Fully Responsive, Examiner Discretion Exercised
Applicant’s Reply of 12/15/2025 is not fully responsive as required by 37 CFR 1.111(b). Specifically, Applicant has failed to present any arguments pointing out specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. Applicant appears to simply take the position that since “claim 4 […], claim 5 […] and claim 6 […] weren’t rejected over prior art,” the “independent claims are allowable” (Rem. 9-10). This amounts to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references, and is therefore not fully responsive.
However, as Applicant’s Reply appears otherwise to be a bona fide attempt to advance prosecution and as the time period for reply to the Non-Final Office Action mailed 09/15/2025 has expired (including any possible extension thereof), Applicant’s reply of 12/15/2025 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 12/15/2025 with respect to claim 1 have been considered but are moot in view of the new ground(s) of rejection.
Although Applicant asserts that they “have amended independent claim 1 with the limitations of claim 4,” this is not accurate. Rather, claim 1 has been amended to only include certain features of claim 4. The limitations of claims 2, 3, upon which claim 4 was previously dependent (and thus which were included in claim 4 due to its dependency), as well as all of the claim 4 limitations, have not been included in amended claim 1. This piecemeal amendment of claim 1, excluding certain clarifying limitations of the intervening claims, has introduced unnecessary ambiguity in the “apparatus” set forth in claim 1 and, similarly, the devices set forth in independent claims 18, 19.
Title
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
It is respectfully noted that Applicant’s amended title of “Apparatus With Two Power Generation Units” is appropriately descriptive of a great number of inventions. It does not clearly distinguish Applicant’s invention from the prior art. The title should be clearly indicative of the invention to which the claims are directed.
To assist Applicant, the following title is suggested: —Vehicle-Mounted Wind Turbine Apparatus Comprising Both a Rotary Power Generator and a Turbine Blade Driven Piezoelectric Power Generator—.
Appropriately descriptive titles may result in slightly longer titles, but the loss in brevity of title will be more than offset by the gain in its informative value in indexing, classifying, searching, etc. (MPEP § 606.01).
Claim Objections
Claim 19 is objected to because of the following informalities. Appropriate correction is required.
Regarding claim 19, line 8, the phrase “thought contact” should be, it seems, —through contact— (cf. claim 1 which uses this language).
Regarding claim 19, line 12, the phrase “comprises a one or more” should be, it seems, —comprises [[a]] one or more—.
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 1-3, 9-12, 18-28 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 1-3, 9-12, 18-28, the claims comprise numerous instances of indefinite language. 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).
Regarding claim 1, line 2; and similarly in claims 18, 19; the limitation “a housing comprising a flow passage configured to allow air to flow” is vague and indefinite. The limitation “configured to allow air to flow” does not appear to set forth any specific structure for, or even further limit, the “housing”. Notably, “air,” by its very nature, would already appear to be “configured […] to flow”.
It appears Applicant has amended claim 1 to address a clarity issue raised previously1 for claim 4 but, in simply deleting the limitations including “therein” and “therethrough,” Applicant has created ambiguity to the instant claim. Applicant is again advised to use explicit recitation of claim feature(s) so as to clearly and definitely set forth the metes and bounds of the patent protection sought (for example, Applicant may state, if accurately representative of the intended metes and bounds, that the —flow passage is configured to allow air to flow through the housing via the flow passage—).
It is respectfully noted that simply deleting terms or limitations which may present clarity issues, without consideration for what the claim as a whole is intended to define, does not serve to effectively advance prosecution and, instead, hinders prompt examination. See MPEP 2103(I).
Regarding claim 1, lines 5-7; and similarly in claims 18, 19; the limitation “the power generation part being configured to generate electrical energy when the rotating part rotates by the air flowing through the flow passage” is vague and indefinite.
First, the phrase is generally not idiomatic and fails to clearly set forth what the “power generation part” may be or comprise.
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, the limitation “the air flowing through the flow passage” is recited. There is insufficient antecedent basis for this limitation in the claim. See above for further discussion.
Regarding claim 1, lines 9-10; and similarly in claims 18, 19; the limitation “a second power generation unit mounted to the housing and configured to generate electrical energy through contact with the rotating part during rotation of the rotating part” is vague and indefinite.
First, the claim fails to make clear what other element(s) the “rotating part” may come into “contact with” in order to “generate electrical energy”.
Here, 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).
Second, and relatedly, the instant limitation is unclear in light of the later limitation requiring “the second power generation unit comprises a piezoelectric plate and a support plate”. If it is either the “piezoelectric plate” or the “support plate” or some other portion of the “second power generation unit” which is “contact[ing] with the rotating part” in order to “generate electrical energy,” such should be made clear, including how such “contact” may be achieved.
Regarding claim 1, lines 17-18, the limitation “the piezoelectric plate comprises a through-hole to allow air to flow into the flow passage through the through-hole” is vague and indefinite. The claim fails to make clear the structural arrangement of the “piezoelectric plate,” the “through-hole,” the “support plate,” the “plurality of blades,” and the other claim elements.
Regarding claim 3, lines 3-5, the limitation “the piezoelectric plate is configured to be contactable with the plurality of blades, movable in the flow passage, and to generate the electrical energy through contact with the plurality of blades” is vague and indefinite.
First, the limitation is generally narrative and not idiomatic. 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, the claim fails to make clear how the “piezoelectric plate” may be “movable in the flow passage”—the “plate” would appear to be fixed, rather than “movable”. How would the “piezoelectric plate” be “movable in the flow passage”?
Regarding claim 10, lines 5-6, the limitation “the one or more elastic members are configured to match the one or more second piezoelectric elements” is vague and indefinite. The claim fails to make clear what the phrase “configured to match” is intended to mean—i.e., what is meant by the “elastic members” being “configured to match the […] piezoelectric elements”.
Regarding claim 18, the limitation “the plurality of blades comprises a striking protrusion protruding from a surface thereof of each of the plurality of blades, the striking protrusion facing the piezoelectric plate” is vague and indefinite. The claim fails to make clear how many “striking protrusion” features are being required—e.g., whether each of the plurality of blades comprises a respective “striking protrusion” or whether the “plurality of blades,” collectively, “comprises a [single] striking protrusion”.
Regarding claims 2, 3, 9-12; claims 26-28; and claims 20-25; they are dependent on claims 1, 18, 19, 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.
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/S. MIKAILOFF/Examiner, Art Unit 2834
April 27, 2026
/TULSIDAS C PATEL/Supervisory Patent Examiner, Art Unit 2834
1 See item 15 on page 5 of the Non-Final Office Action mailed 09/15/2025 addressing use of terms such as “therethrough”.
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