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 .
Drawings
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 “rotatable object” of claim 1 introduced in line 1 and referred to in lines 3, 10 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 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 pre-AIA 35 U.S.C. 112, 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “A power generating device adapted to be mounted to a rotatable object” in claim 1 line 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112b
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 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitation “A power generating device adapted to be mounted to a rotatable object…” in Claim 1 line 1 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. In this case the functional language “adapted to” does not provide structural specificity as it relates to the power generating device and the rotatable object. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 1 recites the limitation "and one of said rotor module and said stator module generating electric power according a magnetic field that is provided by another one of said rotor module and said stator module through electromagnetic induction" in lines 13-16. There is insufficient antecedent basis for this limitation in the claim. The wording of the claim implies there is an additional set of rotor and stator modules Examiner will interpret the claim as referring to the single set of rotor and stator modules previously introduced.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites the limitation "the object" in lines 3, and 10 as opposed to the previously introduced “rotatable object”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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)(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 and 5-9 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Chung (US 6382820 B1).
Claim 1
Chung teaches: A power generating device (30) adapted to be mounted to a rotatable object (22), comprising:
a housing (26) adapted to be fixedly mounted to the object (22);
a rotor module (30) fixedly and coaxially mounted to said housing (26) along an axial line that is substantially horizontal;
a stator module (68) mounted to said housing (26) and rotatable relative to said housing (26) about the axial line; and
a counterweight module (66) fixedly mounted to said stator module (68), a center of gravity of said counterweight module (66) being located below the axial line;
when the object (22) rotates, said rotor module (30) being driven to rotate relative to said stator module (68) which does not rotate with said rotor module (30) due to a force of gravity of said counterweight module (66), and one of said rotor module (30) and said stator module (68) generating electric power according a magnetic field that is provided by another one of said rotor module (30) and said stator module (68) through electromagnetic induction.
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Claim 5/1
Chung teaches: The power generating device (30) as claimed in claim 1, wherein said rotor module (30) includes a plurality of magnets (70) that are fixedly mounted to said housing (26) about said axial line and that provide the magnetic field, said stator module (68) including a rotating shaft (60) that extends along the axial line and that is rotatably mounted to said housing (26), and a coil assembly (86) that is sleeved (via 84) on said rotating shaft (60) and that generates the electric power, said counterweight module (66) being mounted to said rotating shaft (60).
Claim 6/5/1
Chung teaches: The power generating device (30) as claimed in claim 5, wherein said magnets (70) of said rotor module (30) are spaced apart from said coil assembly (86) and are located radially outwardly of said coil assembly (86).
Claim 7/5/1
Chung teaches: The power generating device (30) as claimed in claim 5, wherein said magnets (70) of said rotor module (30) are spaced apart from said coil assembly (86) along the axial line.
Claim 8/1
Chung teaches: The power generating device (30) as claimed in claim 1, wherein said housing (26) includes a main body having a side opening (34), and a side cover (formed by seal 40 and hubcap 22) disposed on said main body and covering said side opening (34), said side cover (formed by seal 40 and hubcap 22) and said main body cooperatively defining a mounting space for disposition of said rotor module (30) and said stator module (68), said stator module (68) including a rotating shaft (60) that extends along the axial line and that is rotatably mounted to said main body and said side cover (formed by seal 40 and hubcap 22).
Claim 9/8/1
Chung teaches: The power generating device (30) as claimed in claim 8, wherein said rotating shaft (60) has a mounting end portion (64) protruding out of said side cover (formed by seal 40 and hubcap 22), said counterweight module (66) being mounted to said mounting end portion (64) and being located outside said housing (26).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Chung in view of Li (US 20210167671 A1).
Claim 2/1
Chung teaches: The power generating device (30) as claimed in claim 1, wherein the rotor module (30) carries a plurality of magnets (70) and a stator module (68) carries a coil assembly (86). Chung does not however explicitly disclose the rotor as having the coil assembly and the stator as having the plurality of magnets such that the following limitation may be realized:
wherein said rotor module (30) is a coil assembly that generates the electric power, said stator module (68) including a rotating shaft that extends along the axial line and that is rotatably mounted to said housing (26), and a plurality of magnets that are disposed on said rotating shaft about the axial line and that provide the magnetic field, said counterweight module (66) being disposed on said rotating shaft.
It is a known functionally equivalent concept however within the art however to interchange the locations of coils and magnets on either a stator or a rotor depending on design considerations. For example, Li teaches a similar power generating device to that of Chung however Li’s power generating device conversely comprises a rotor module (104) that carries a coil assembly (103) generating electric power, and a stator module (101) that carries a plurality of magnets (1012) that are that provide a magnetic field, and a counterweight module (102) fixedly arranged.
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Li explicitly demonstrates that an electric machine can operate with a rotor having permanent magnets and a stator having coils. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have recognized that both configurations (i.e. Chung’s coiled stator and magnetic rotor vs Li’s coiled rotor and magnetic stator) produce a similar electromagnetic coupling and power generation functionality, with differences primarily in design trade-offs such as inertia, cooling, and ease of electrical connections. Swapping the locations of coils and magnets is a predictable variation well within the art. As established in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417, 82 USPQ2d 1385, 1396 (2007), combining known elements according to known methods to yield predictable results is obvious. The modification would simply substitute one known and functionally equivalent arrangement (rotating coils, stationary magnets) for another known and functionally equivalent one (rotating magnets, stationary coils). Such a change might be motivated for reasons such as ease of electrical connection, thermal management and mechanical balancing optimization.
Claim 3/2/1
Chung teaches: The power generating device (30) as claimed in claim 2, wherein said magnets (1012; Li) of said stator module (101; Li) are disposed on a radially outer periphery of said rotating shaft (60), are spaced apart from said rotor module (104; Li), and are located radially inwardly (as a result of design change of Li’s configuration by Chung) of said rotor module (104; Li).
Claim 4/2/1
Chung teaches: The power generating device (30) as claimed in claim 2, wherein said magnets (1012; Li) of said stator module (101; Li) are spaced apart from said rotor module (104; Li) along the axial line.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Chung in view of Chiu (US 20070085411 A1).
Claim 10/9/8/1
Chung teaches Chung teaches: The power generating device (30) as claimed in claim 9. but is silent to: wherein said counterweight module includes a cover member that is configured as a circular plate and that is centered at said rotating shaft, and a counterweight body that is disposed on said cover member and that makes the center of gravity of said counterweight module located below the axial line, one of said cover member and said counterweight body of said counterweight module being fixedly mounted to said mounting end portion.
The concept of attaching a counterweight to a plate-shaped cover member in wheel-hub based applications similar to that taught by Chung is well known within the art however. For example, Chiu teaches a counterweight module (40) that includes a cover member (50) that is configured as a circular plate and that is centered at a rotating shaft (24).
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It would have been obvious to a person of ordinary skill in the art of the claimed invention to modify Chung’s counterweight to be attached to a plate-shaped cover member in view of Chiu because both references concern wheel-based rotational structures and therefore address fundamentally similar engineering problems associated with rotating bodies. Chiu expressly teaches that a counterweight may be mounted on a plate-shaped cover via screws to achieve proper balance about a rotating shaft which is a universally recognized requirement in wheel assemblies to ensure smooth rotation and reduce vibrational loads. The concept of Chiu’s cover is a transferable design practice applicable across wheel systems. Applying a known wheel balanced technique such as that of Chiu is therefore a predictable use of prior art elements according to established functions, fully consistent with KSR’s guidance that such straightforward substitutions fall squarely within the realm of obviousness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHMED F SECK whose telephone number is (571)272-4638. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Koehler can be reached at (571) 272-3560. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AHMED F SECK/Examiner, Art Unit 2834
/CHRISTOPHER M KOEHLER/Supervisory Patent Examiner, Art Unit 2834