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).
Response to Arguments
In the amendment of 09/26/2025, Applicant has entirely rewritten claim 1 and has canceled previously-pending claims 2-19.
Applicant's arguments filed 09/26/2025 with respect to claim 1 have been considered but are moot in view of the new ground(s) of rejection.
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.
Claim 1 is 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 1-2, the limitation “A kinetic energy harvesting system for converting mechanical energy into electrical energy adapted to be deployed in a trench in a road or track, the system comprising: […]” (emphasis added) is vague and indefinite. The claim appears to require the “electrical energy” be “adapted to be deployed in a trench in a road or track”—the claim fails to make clear how this may be achieved. It would appear more likely that some physical element/component would be “adapted to be deployed in a trench”.
Regarding claim 1, line 14, the limitation “an alternator operatively connected to receive the compressed working fluid” (emphasis added) is vague and indefinite. The claim appears to be requiring an “alternator” to “receive the compressed working fluid”—if so, this would appear to contradict both the disclosure and the generally understood definition of an “alternator”. Specifically, the disclosure indicates that there may be a “hydraulic motor” which receives “working fluid” from an accumulator, and it is the “hydraulic motor” which “drives an alternator” (see, e.g., [0024]).
Furthermore, as best understood in the art, an “alternator” is a type of generator which produces alternating-current1—i.e., it is a device which transforms mechanical energy, typically rotational energy, into electrical energy, typically in the form of an alternating-current output. An “alternator” generally is not configured to “receive [a] compressed working fluid”—this functionality is typically attributed to, e.g., a “hydraulic motor,” as also indicated by Applicant in the specification (see, e.g., [0024]).
For the purpose of examination, the limitation “an alternator operatively connected to receive the compressed working fluid” will be interpreted as: —a hydraulic motor , and
an alternator connected to the hydraulic motor, the alternator being driven by the motor to generate the electrical energy—.
Regarding claim 1, lines 15-21, the limitations “the lowered position,” “the raised position” are recited. There is insufficient antecedent basis for these limitations in the claim, thereby rendering the claimed invention vague and indefinite. Specifically, the claim introduces two separate “a raised position” and two separate “a lowered position” features. Thus, the recitations of “the lowered position” are indefinite as each fails to make clear to which “a lowered position” reference may be intended; and similarly for the limitations “the raised position”.
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 § 103
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 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 of this title, 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.
Claim 1, as best understood, is rejected under 35 U.S.C. 103 as being unpatentable over Kimball (US 344,911) in view of Erriu (US 2007/0246282 A1).
Regarding claim 1, as best understood, Kimball discloses a kinetic energy harvesting system for converting mechanical energy (mechanical energy of rockers which are moved by wheels of a passing train; see, e.g., ll. 27-31) into another energy (mechanical energy is used to compress a working fluid, air, which is then used to pump water) adapted to be deployed in a trench in a road or track (see, e.g., Fig. 1: several components of the system may be adapted to be deployed in a trench below a road surface), the system comprising:
a first displaceable platform (one of rocker platform/surfaces of double rocker A) and a second displaceable platform (the other one of rocker platform/surfaces A) over which a vehicle passes (a passing train; see, e.g., ll. 27-31);
a rigid strut connecting the first displaceable platform to the second displaceable platform to form a see-saw (see, e.g., Fig. 1: the integrally-formed central portion of the rocker arm, connecting the rocker platform/surfaces of double rocker A, serves as a strut2 and is formed as a seesaw3);
a pivot shaft (pivot rod/pin a, see Fig. 1; and/or extended pivot shaft, not separately labeled; see Fig. 2) supporting the see-saw;
a crank arm (horizontal crank arm, not separately labeled, which is connected to the pivot shaft at its left end and to a long vertical rod at its right end; see Fig. 2) having a first end connected to the pivot shaft and extending radially outward from the pivot shaft (see Fig. 2);
a piston (e.g., one of pistons C);
a cylinder (e.g., one of air-pumps D) containing a working fluid (air), wherein the piston is movable within the cylinder to compress the working fluid, and wherein the crank arm is operatively connected to the piston (piston C) such that rotation of the pivot shaft causes movement of the piston within the cylinder (air-pump D; see, e.g., ll. 24-35),
wherein the first displaceable platform is movable between a raised position above a road surface level and a lowered position below the road surface level in a first void, and the second displaceable platform is movable between a raised position above the road surface level and a lowered position below the road surface level in a second void (see, e.g., Fig. 1: as illustrated, the left-side rocker platform/surface of double rocker A has just been depressed by a passing wheel and is moving upward from its lowered position below the road surface whereas the right-side rocker platform/surface of double rocker A is in its raised position and about to be forced downward into its lowered position by the passing wheel, which is indicated as rolling from left to right), such that when the first displaceable platform is in the lowered position the second displaceable platform is in the raised position, and when the second displaceable platform is in the lowered position the first displaceable platform is in the raised position (see, e.g., Fig. 1, ll. 24-31: this describes the seesaw-like “oscillating motion” of double rocker A).
However, whereas Kimball teaches outputting the pressurized working fluid to pump water, Kimball appears to be silent regarding outputting the pressurized working fluid to a hydraulic motor to drive an alternator to generate electrical energy.
On the other hand, Kenney (Figure 1) discloses a kinetic energy harvesting system for converting mechanical energy into electrical energy adapted to be deployed in a trench in a road or track, the system comprising, inter alia:
a piston (e.g., piston of one of hydraulic jacks 7a-7d);
a cylinder (e.g., cylinder of one of hydraulic jacks 7a-7d) containing a working fluid, wherein the piston is movable within the cylinder to compress the working fluid (see, e.g., ¶¶ 41-44); and
a hydraulic motor (hydraulic motor 17) , and
an alternator (alternator 18) connected to the hydraulic motor (hydraulic motor 17), the alternator being driven by the motor to generate the electrical energy (see, e.g., ¶ 19).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the harvesting system of Kimball by using the working fluid to drive a hydraulic motor to thereby drive a generator, as taught by Erriu, for the purpose of producing electrical energy in a clean way (see, e.g., ¶ 2), to help satisfy the demand for electrical energy in today’s world (see, e.g., Abstract, ¶¶ 2-7).
It would furthermore have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the system of Kimball with the explicit teaching of using a hydraulic motor and alternator to generate electrical energy from a compressed working fluid, as taught by Erriu, where Kimball appears silent regarding further details of using a compressed working fluid to ultimately generate electrical energy, and Erriu teaches a suitable system to do so, where the selection of a known configuration based on its suitability for its intended use supports a prima facie obviousness determination (MPEP §2144.07).
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.
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
January 26, 2026
/TULSIDAS C PATEL/Supervisory Patent Examiner, Art Unit 2834
1 Oxford Dictionary of Physics. © Oxford University Press. 2019.
2 strut (noun): a structural piece designed to resist pressure in the direction of its length. (Merriam Webster Dictionary, "strut." Merriam-Webster.com. Merriam-Webster, 2026.)
3 seesaw (noun): 1) an alternating up-and-down or backward-and-forward motion or movement; 2) b. the plank or apparatus so used. (Merriam Webster Dictionary, "seesaw." Merriam-Webster.com. Merriam-Webster, 2026.)