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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/27/2026 has been entered.
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).
Response to Arguments
Applicant's arguments filed 04/27/2026 with respect to claim 1 have been considered but are moot in view of the new ground(s) of rejection.
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.
Specifically, in addition to the teachings of the prior art which anticipate and/or render obvious the claimed invention, numerous deficiencies, raised under both 35 U.S.C. §112(a) and 35 U.S.C. §112(b), are present. It would not appear possible to overcome at least some of the 35 U.S.C. §112(a) issues without incorporating additional material (i.e., “new matter”) into the disclosure. However, no new matter may be added, pursuant to 35 U.S.C. §132(a) and 35 U.S.C. §112(a).
Should Applicant desire to pursue the claimed subject matter via, e.g., filing of a Continuation-in-Part (CIP) type application (see, e.g., MPEP § 201.08, § 211 et seq. for more information), Applicant’s Representative(s) is/are strongly encouraged to review the requirements of 35 U.S.C. §112(a) and §112(b) and ensure compliance therewith prior to filing, to thereby facilitate more expeditious prosecution.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/07/2026 has been considered.
Note, however, that the author of the “Great Britain […] Search and Examination Report” is not the inventor (“EDMONSON BENNET”) as labeled therein but, rather, the Patent Examiner at the UK Patent Office, Peter Middleton.
Claim Objections
Claim 1 is objected to because of the following informalities. Appropriate correction is required.
Regarding claim 1, lines 28 and 29-30, the limitations “when […] position the” should be amended to: —when […] position, the—.
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 35 U.S.C. 112 (pre-AIA ), 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:
Claim 1: “a control system […] to determine […] and to control […]” (this may be interpreted as, e.g.: —a means for controlling […]— and/or —a means for determining […]— as the term “system” does not connote any specific structure and thus may be considered to be a generic placeholder or nonce term).
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 § 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.
Claim 1 is 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, line 20, the limitation “a camera configured to capture an image of an oncoming vehicle” appears to comprise subject matter which was not described in the specification as originally filed.
Notably, the specification fails to make clear how a “camera” may be “configured to capture,” specifically, “an image of an oncoming vehicle” including what structure(s) may allow the “camera” to “capture” the “image[s]” only of a “vehicle” and only when it is “oncoming”. A camera shutter is typically activated via, e.g., a human or some sensor-based system. The specification discusses the possible use of a “camera” in, e.g., paragraphs ¶¶ 101 and 160 but, though the feature is named, the specification does not provide a written description of what structure(s) the “camera” may comprise which would allow it to perform the claimed functionality, including activation specifically to “capture an image of an oncoming vehicle”.
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, lines 21-23, the limitation “a control system configured to determine at least one of vehicle mass or vehicle speed from the captured image and to control operation of the hydraulic motor based on the determined vehicle mass or vehicle speed” (emphasis added) appears to comprise subject matter which was not described in the specification as originally filed.
As discussed above, the limitation “a control system” appears to invoke, and is being interpreted under, 35 U.S.C. §112(f).
However, the specification fails to make clear what the “control system” may be or what corresponding structure(s) it may comprise (i.e., how the “control system” may be embodied, and with what hardware, software, and/or firmware component(s)), and how such a “control system” may be “configured to” both i) “determine at least one of vehicle mass or vehicle speed from the captured image” and ii) “control operation of the hydraulic motor based on the determined vehicle mass or vehicle speed”. The specification discusses this feature in, e.g., paragraphs ¶¶ 25, 50, 94, and 161 but, though the concepts may be mentioned, the specification does not provide a written description of what the “control system” may be, what structure(s) it may comprise, or how, specifically, whatever structure(s) it may comprise could perform any of the claimed functionality.
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.
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 2-3, the limitation “the system comprising a trench-deployed portion adapted to be deployed in a trench in a road” is vague and indefinite. Whereas the preamble of the claim sets forth a “trench-deployed portion,” the body of the claim fails to identify any element(s) which may belong to or be positioned in the “trench-deployed portion”. Said differently, the claim fails to make clear how the “trench-deployed portion” may be structurally related to any of the other features of the “harvesting system” or, indeed, what the “trench-deployed portion” may comprise.
Regarding claim 1, line 20, the limitation “a camera configured to capture an image of an oncoming vehicle” is vague and indefinite. The claim fails to make clear how the “camera” may be “configured to capture an image of,” specifically, “an oncoming vehicle”. Looking to the disclosure, the Drawings only show a crude illustration of a “Camera” (see Fig. 6) and the specification fails to provide any written description of how such a camera may be “configured to capture an image of” anything on its own (i.e., without a human clicking the shutter), let alone “an oncoming vehicle,” as claimed.
Regarding claim 1, lines 21-23, the limitation “a control system configured to determine at least one of vehicle mass or vehicle speed from the captured image and to control operation of the hydraulic motor based on the determined vehicle mass or vehicle speed” (emphasis added) is vague and indefinite.
As discussed above, the limitation “a control system configured to determine […] and to control” appears to invoke, and is being interpreted under, 35 U.S.C. §112(f). However, neither the claim nor the specification makes clear how the “control system” could “determine at least one of vehicle mass or vehicle speed” specifically “from the captured image” as claimed. The claim also fails to make clear how the “control system” could “control operation of the hydraulic motor based on the determined vehicle mass or vehicle speed” as claimed. See associated rejection under 35 U.S.C. §112(a) above.
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).
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 Erriu (US 2007/0246282 A1) in view of McIntosh (US 2022/0166289 A1).
Regarding claim 1, as best understood, Erriu discloses a kinetic energy harvesting system (device 1 for recovering the kinetic energy of a vehicle) for converting mechanical energy into electrical energy, the system comprising a trench-deployed portion (see Fig. 1) adapted to be deployed in a trench (housing cavity 4) in a road (street/road course 3), the system comprising:
a first displaceable platform (e.g., upper surface of leftward portion of base surface 8, between left edge portion 10b and pin 6) and a second displaceable platform (e.g., upper surface of rightward portion of base surface 8, between pin 6 and right edge portion 10a) over which a vehicle passes (see, e.g., ¶ 15);
a rigid strut (e.g., base surface 8) connecting the first displaceable platform to the second displaceable platform to form a see-saw (platform 5);
a pivot shaft (pins 6 about which platform 5 oscillates) supporting the see-saw;
a crank1 arm (e.g., body of platform 5 which serves to impart oscillatory motion to jacks 7a-7d due to reciprocating motion of surface 8) having a first end connected to the pivot shaft (pins 6) and extending radially outward from the pivot shaft (see Fig. 1);
a piston movable within a cylinder (e.g., piston in one of jacks 7a-7d) containing a working fluid (fluid, no separate number provided), wherein the piston is movable within the cylinder to compress the working fluid, and wherein the crank arm is operatively connected to the piston such that rotation of the pivot shaft causes movement of the piston within the cylinder;
at least one accumulator (e.g., delivery reservoir 14) that functions as a reservoir that stores the working fluid under pressure, the at least one accumulator being connected to receive the compressed working fluid from the cylinder (via pressurized line 15; see Fig. 1);
a hydraulic motor (hydraulic motor 17) connected to the at least one accumulator (reservoir 14);
an alternator (alternator 18) driven by the hydraulic motor (hydraulic motor 17) to generate electrical energy (see, e.g., ¶ 19);
wherein the first displaceable platform is movable between a first raised position above a road surface level and a first lowered position below the road surface level in a first void, and the second displaceable platform is movable between a second raised position above the road surface level and a second lowered position below the road surface level in a second void such that when the first displaceable platform is in the first lowered position the second displaceable platform is in the second raised position, and when the second displaceable platform is in the second lowered position the first displaceable platform is in the first raised position (see Fig. 1: the position illustrated in ghost shows the first/left platform in a lowered position below the road surface in a left-side void/space formed by structure 2 while the second/right platform is in a raised position above the road surface; the platform 5 oscillates between this position where the left-side platform is down and the right-side platform is up to a position, not shown, where the left-side platform is up and the right-side platform is down).
However, Erriu appears to be silent regarding use of a camera to capture an image of an oncoming vehicle and a control system controlling operation based on the image of the vehicle.
On the other hand, McIntosh (Figures 1, 7A-7D) discloses a kinetic energy harvesting system (system 10 for converting vehicular kinetic energy into electricity) for converting mechanical energy into electrical energy (see, e.g., Abstract), the system notably comprising:
a camera configured to capture an image of an oncoming vehicle (e.g., traffic camera 1120); and
a control system (including traffic analysis electronics sub-system 1000 with traffic electrical control unit 1100) configured to use the captured image and at least one of vehicle mass or vehicle speed to control operation of the kinetic energy harvesting system based on the determined vehicle mass or vehicle speed (see, e.g., Fig. 7C: control settings are determined based on, e.g., camera data, vehicle speed data, and vehicle weight data; see also, e.g., ¶¶ 167-169).
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 system of Erriu with the use of a camera and/or other sensors to detect vehicle and traffic data, as taught by McIntosh, for the purpose of optimizing an amount of kinetic energy captured by determining where on a kinetic energy spectrum an approaching vehicle may be and, based thereon, modifying the system settings to appropriately capture a maximum amount of kinetic energy (see, e.g., ¶¶ 168-169).
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.
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.
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
July 13, 2026
/TULSIDAS C PATEL/Supervisory Patent Examiner, Art Unit 2834
1 The term “crank” is being given its broadest reasonable interpretation consistent with the specification—e.g., “any of several types of arms or levers for imparting rotary or oscillatory motion to a shaft” (Random House Unabridged Dictionary, © Random House, Inc. 2024.).
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