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 .
Specification
The abstract of the disclosure is objected to because it include language which is implied (i.e. “Provided is”) and should be deleted. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1, 5, 6, 11 and 15 are objected to because of the following informalities:
Claim 1, line 6, “forming in an included angle” should read - - forming an angle - -.
Claim 1, lines 8 – 9, “engaged to the first smooth member and in a slidable state” should read - - engaged with the first smooth member in a slidable state - -.
Claim 1, line 10, “two containers with opening at different directions” should read - - with two containers with different opening directions - -.
Claim 1, line 11, “substance” should read - - a substance - -.
Claim 1, lines 12 – 13, “engaged to the first smooth member and in a slidable state” should read - - engaged with the second smooth member in a slidable state - -.
Claim 1, line 18, “two opening directions” should read - - the different opening directions - -.
Claim 5, lines 6 – 7, “with a concave arc-shaped wide handle and in the shape of a curved spoon” should be deleted.
Claim 6, lines 6 – 7, “with a concave arc-shaped wide handle and in the shape of a curved spoon” should be deleted.
Claim 11, line 6, “forming in an included angle” should read - - forming an angle - -.
Claim 11, lines 8 – 9, “engaged to the first smooth member and in a slidable state” should read - - engaged with the first smooth member in a slidable state - -.
Claim 11, line 10, “substance” should read - - a substance - -.
Claim 11, lines 11 - 12, “engaged to the first smooth member and in a slidable state” should read - - engaged with the second smooth member in a slidable state - -.
Claim 15, lines 6 – 7, “with a concave arc-shaped wide handle and in the shape of a curved spoon” should be deleted.
Appropriate correction is required.
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 – 19 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.
The term “smooth” in claims 1 and 11 is a relative term which renders the claims indefinite. The term “smooth” is not defined by the claims, 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. Accordingly, use of the term renders the limitations “a first smooth member” and “a second smooth member” indefinite.
Claim 1 recites the limitation "the container" in lines 27 – 28. There is insufficient antecedent basis for this limitation in the claim.
The term “appropriate” in claims 4, 5, 6, 14 and 15 is a relative term which renders the claims indefinite. The term “appropriate” is not defined by the claims, 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. Accordingly, use of the term renders the limitation “an appropriate part of the wheel” indefinite.
The term “wide” in claim 5, 6 and 15 is a relative term which renders the claims indefinite. The term “wide” is not defined by the claims, 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. Accordingly, use of the term renders the limitation “wide handle” indefinite.
The term “good” in claims 1 and 11 is a relative term which renders the claims indefinite. The term “good” is not defined by the claims, 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. Accordingly, use of the term renders the limitation “generate a good rotational kinetic energy” indefinite.
Claims 10 and 19, the limitation “two or more wheels” in line 1 is indefinite, as it is not clear if this limitation sets for new structure or further defines “a wheel” recited in line 2 of the antecedent claims 1 and 11, respectively.
The term “considerable” in claim 11 is a relative term which renders the claim indefinite. The term “considerable” 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. Accordingly, use of the term renders the limitation “considerable inclination” indefinite.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 – 19 are rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a credible asserted utility or a well-established utility.
More specifically, claims 1 – 19 are directed to “a device for generating kinetic energy by performing a compound actuation on a rotation shaft” and that “[t]hrough two or more different systems of actuating the rotation shaft, a strong torque is generated to develop a clean, cheap, stable and reliable energy for use” ([0005]). further characterizes the invention as “a compound gravity wheel” combining “gravity, torque, and inertia,” and states it can use “only a small amount of water” as an auxiliary to “develop kinetic energy” ([0006]). The specification further states that the system can be coupled to a generator: “the rotational wheel can drive the power generation system, which converts the kinetic energy of the wheel into electrical energy” ([00113]). Thus, the application’s asserted utility is generation of rotational kinetic energy and power output suitable for conversion to electricity.
The specification further explains that torque is obtained by shifting the second slidable member radially outward during positive-torque portions of rotation and inward during negative-torque portions, while also loading/unloading substance in containers to bias torque in one direction:
The specification states that a first slidable member and a second slidable member are connected so that “the downward sliding of the first slidable member… drives the second slidable member to slide, and both change the length of the force arm” ([0007]).
The specification further states that “Because of weight increase due to the second slidable member and after being pulled, the second actuation system… moves to the outside farther away from the rotation axis… [and] on the other side… moves inward closer to the rotation axis,” thereby “generat[ing] a large torque in one direction” ([0012]).
The specification also states that the first and second actuation systems “both generate torques in the same direction on the rotation shaft, so that the wheel can generate a good rotational kinetic energy” ([0025], [0032]).
Additionally, the “lighter first slidable member” embodiments emphasize that the first member does not slide without added substance, but will slide when substance is placed in the containers at specified angular positions:
The specification states that, prior to loading, “the total weight… is insufficient to fall downward… and cannot pull the second slidable member; but” an auxiliary system loads substance and “makes the first slidable member fall or slide down, and drive the second slidable member” ([0015]–[0016]).
The specification further asserts that the substance loading at different heights/orientations breaks steady state and yields net positive torque: “the first actuation system breaks the steady state… and generates positive torque on the rotation shaft in the clockwise direction” ([0023]).
Despite repeated assertions of “strong torque,” “huge torque,” “stable and reliable energy,” and “power generation,” the application fails to provide a credible, reproducible teaching demonstrating that the wheel is operable to generate sustained usable output in the manner asserted.
For example:
The specification asserts the second actuation system will generate “a huge torque in the clockwise direction” due to changing force-arm lengths ([0024], [0031]).
The specification asserts that the invention can “use a small amount of water as an auxiliary… thus causing imbalance force arm… to jointly drive the wheel” and presents this as “a powerful power generation solution” ([00114]).
However, the specification provides no energy accounting to show that the wheel achieves the purported net rotational output and power generation beyond what would be expected from the externally supplied energy required to load/transport the substance and overcome system losses. The invention repeatedly relies on an auxiliary system for transporting substances that inputs water/substance “from a high position” and/or at designated positions ([0017], [0028], [0092]–[0094]), yet the disclosure does not account for or quantify the energy required to lift/transport that substance to the claimed loading positions, and thus does not credibly establish that the wheel generates “clean, cheap, stable and reliable energy” as asserted ([0005]) in an operable and reproducible way.
Accordingly, because the asserted utility of stable energy/power generation through compound torque imbalance is not supported by credible technical disclosure, the applicant's invention is deemed inoperable and, therefore, lacks a credible asserted utility.
Claims 1 – 19 are also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a credible asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
The standard for determining whether the Specification meets the enablement requirement is whether a person skilled in the art can make and use the claimed invention without undue experimentation. In re Wands, 858F.2d 731,737 (Fed. Cir. 1988).
If the examiner's basis for questioning the sufficiency of the disclosure is reasonable, the burden shifts to appellants to come forward with evidence to rebut this challenge. In re Doyle, 482 F.2d 1385, 1392 (CCPA 1973).
An invention that is "inoperative" (i.e., it does not operate to produce the results claimed by the patent applicant) is not a "useful" invention in the meaning of the patent law. See, e.g., Newman v. Quigg, 877 F.2d 1575, 1581 (Fed. Cir. 1989).
A disclosure of a utility satisfies the utility requirement of Section 101 unless there are reasons for the artisan to question the truth of such disclosure. In re Gaubert, 524 F.2d 1222, 1224 (CCPA 1975); In re Langer, 503 F.2d 1380, 1391-92 (CCPA 1974).
When a patent applicant presents an application describing an invention that contradicts known scientific principles, the burden is on the Examiner simply to point out this fact to Appellant....The burden shifts to Appellant to demonstrate either that their invention, as claimed, does not violate basic scientific principles or that those basic scientific principles are incorrect. Newman v. Quigg, 681 F. Supp. 16, 18 (D.D.C. 1988).
The examiner addressed the rejections of the claims under 35 U.S.C. § 112, first paragraph, and 35 U.S.C. § 101 together. The lack of utility because of inoperativeness (a question of fact), and the absence of enablement (a question of law), are closely related grounds of unpatentability. Exparte Dash, 27 USPQ2d 1481, 1484 (Bd. Pat. App. & Int. 1992).
Specifically, the Examiner rejected claims 1 – 19 as lacking enablement under § 112, and as inoperative under § 101, because the invention contradicts the principle of conservation of energy, and because the Specification does not explain how to make and use the claimed invention. Specifically, how does the wheel generate sustained usable energy output in the manner asserted?
Under the rule expressed in Newman, 681 F. Supp. at 18, the Examiner established a reasonable basis for questioning the sufficiency of the disclosure, and shifted the burden of proof to Appellant to come forward with evidence to support their claim that their device generates energy without some external input. The wheel sustaining rotating under the influence of gravity and inertia to generate sustained usable energy output is not possible, because it would contradict the law of conservation of energy.
Applicant is required to furnish a proof of operability of the claimed invention, which would be considered as adequate evidence (*) to overcome this Office rejection based on the doctrine of the conservation of energy. See MPEP § 608.03; 37 CFR 1.91.
(*) The adequate evidence is such evidence, which a reasonable mind of one of the ordinary skill in the art would accept as adequate for the objective truth of the statement. A working model of the invention is one example of the adequate evidence. An existing operable device working on the same principle as the claimed invention is another example of the adequate evidence. Scientific publications and a personal declaration without actual proof of operability are not considered adequate evidence.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILLIP A JOHNSON whose telephone number is (571)270-5216. The examiner can normally be reached M-F 9am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Olszewski can be reached at 571-272-2706. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILLIP A JOHNSON/Primary Examiner, Art Unit 3617