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 .
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 (i.e., changing from AIA to pre-AIA ) 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.
Response to Arguments
Applicant's arguments filed December 4, 2025 have been fully considered but they are not persuasive.
Claims 1, 13, 16
Applicant argues on pages 5-9 of the remarks regarding claims 1, 13, and 16 that Suzuki does not teach the amended claim limitations:
Amended Claim 1 recites, in part:
a bypass valve positioned within the pipeline and configured to automatically move at least from an open configuration to a closed configuration to selectively divert a portion of the water to the water turbine and control a flow rate and pressure of the water passing through the water turbine.
Amended Claim 13 recites, in part:
the bypass valve being configured to regulate the flow of the water through the water turbine and to direct excess water around the water turbine and back into the irrigation system based at least on changes in the flow of water through the bypass line.
Amended Claim 16 recites, in part:
automatically closing an opening to selectively divert a portion of the water to the water turbine and control a flow rate and pressure of the water passing through the water turbine.
Applicant respectfully submits Suzuki fails to disclose the features of amended Claims 1, 13, and 16 because nowhere does Suzuki mention opening its bypass line 16 during “normal operation.”
The Examiner respectfully disagrees, because the Applicant has simply amended the claim to recite what happens within the water turbine system when the bypass valve is closed vs when the bypass valve is opened. The claim originally recited when in an open configuration the bypass valve bypasses the water turbine. The amended claim now recites when the bypass valve is in a closed configuration it does not bypass the water turbine. The structure and function of the bypass valve and/or the water turbine system as a whole has not been changed.
Suzuki teaches in column 5, lines 1-11 that “closure of the automatic safety valve 106 or the manually operated cutoff valve 120 causes sufficient back pressure to develop within the pipe line 92 to force the normally closed valve 122 to open to provide a bypass for the fluid” diverting the fluid away from the water turbine. In reverse, opening the automatic safety valve 106 or the manually operated cutoff valve 120 causes reduced back pressure within the pipe line 92 allowing the open valve 122 to return to the normally closed position thereby diverting fluid to the water turbine. Therefore, Suzuki clearly teaches the claimed limitations of claims 1, 13, and 16.
Claim 9
Applicant argues on page 9 of the remarks that, “Nowhere does Suzuki disclose or even contemplate diverting a portion of the water back and forth between the pipe 92 and the bypass line 16 during "normal operation", let alone mention "conversion efficiency." For this reason alone, Claim 9 is not anticipated by Suzuki.”
The Examiner respectfully disagrees, because valves (106, 120) are configured to control a conversion efficiency of the water into mechanical energy by regulating the velocity, pressure, and volume of water directed at the water turbine. Therefore, Suzuki teaches the limitations of claim 9.
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 13-15 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 13 recites the limitation "the bypass line" in line 9. There is insufficient antecedent basis for this limitation in the claim.
Dependent claims 14 and 15 are rejected, as they inherit the deficiency of the independent claim.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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 1-3, 9, 10, 12-14, 16, 17, and 20 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Suzuki (US 4,272,686).
Regarding claim 1, Suzuki discloses a water turbine system for generating electricity in an irrigation system (Col. 1:54-58) that includes a pipeline (12 of Figure 3) configured to flow water, comprising:
a water turbine (30 of Figure 3) positioned in the pipeline and configured to convert kinetic energy of the water into mechanical energy;
an electrical generator (70 of Figure 2, 4) coupled to the water turbine and configured to convert the mechanical energy into electrical energy (Col. 4:3-18);
a bypass valve (122 of Figure 3) positioned within the pipeline and configured to automatically move at least from an open configuration to a closed configuration to selectively divert a portion of the water to the water turbine and control a flow rate and pressure of the water passing through the water turbine (Col. 5:1-11, closes a bypass when there is reduced and/or no back pressure in the pipeline); and
a control system (106, 120 of Figure 3) configured to control a position of the bypass valve based on the desired flow rate and pressure of the water passing through the water turbine (Col. 5:1-11, the control system controls a position of the bypass valve by causing sufficient back pressure in the pipeline).
Regarding claim 2, Suzuki discloses further comprising a housing enclosing (22 of Figure 3) the water turbine (30 of Figure 3) and/or the electrical generator (70 of Figure 2, 4).
Regarding claim 3, Suzuki discloses wherein the electrical generator (70 of Figure 2, 4) is configured to be connected to an electrical grid or a battery storage system to supply the generated electrical energy (Col. 2:61 to Col. 3:3; Col. 4:3-18).
Regarding claim 9, Suzuki discloses wherein the control system (106, 120 of Figure 3) is configured to control a conversion efficiency of the water into the mechanical energy (via 108, 112 of Figure 3; Col. 4:53-65).
Regarding claim 10, Suzuki discloses wherein the bypass valve (122 of Figure 3) is further configured to automatically move from a partially open configuration to the closed configuration when the flow rate and/or the pressure of the water falls below a predetermined threshold (Col. 5:1-11, valve opens during increased pressure and closes when pressure subsides).
Regarding claim 12, Suzuki discloses wherein the pipeline (12 of Figure 3) is a pressurized pipe system supplying water to agricultural fields or landscaping areas (Col. 1:46-58, for residential and commercial use).
Regarding claim 13, Suzuki discloses a device for generating electricity in an irrigation system (Col. 1:54-58) that includes a pipeline (12 of Figure 3) configured to flow water, comprising:
a water turbine (30 of Figure 3) for converting a flow of the water into rotational energy;
a generator (70 of Figure 2, 4) connected to the water turbine for converting the rotational energy into electrical energy (Col. 4:3-18); and
a bypass valve (122 of Figure 3) in fluid communication with the water turbine and the irrigation system, the bypass valve being configured to regulate the flow of the water through the water turbine and to direct excess water around the water turbine and back into the irrigation system based at least on changes in the flow of water through the bypass line (16 of Figure 3; Col. 5:1-11, valve opens during increased pressure and closes when pressure subsides maintaining a predetermined flow and pressure);
wherein the device is configured to generate electricity while maintaining a predetermined flow rate in the irrigation system and to direct excess water around the water turbine and back into the irrigation system when the flow of water through the water turbine exceeds the predetermined flow rate (Col. 5:1-11, valve opens during increased pressure and closes when pressure subsides maintaining a predetermined flow and pressure).
Regarding claim 14, Suzuki discloses further comprising a control system (106, 120 of Figure 3) configured to control a position of the bypass valve (122 of Figure 3) based at least in part on the predetermined flow rate (Col. 5:1-11, the control system controls a position of the bypass valve by causing sufficient back pressure in the pipeline).
Regarding claim 16, Suzuki discloses a method for generating electricity in an irrigation system (Col. 1:54-58) that includes a pipeline (12 of Figure 3) configured to flow water, comprising:
rotating a water turbine (30 of Figure 3) positioned in the pipeline to convert kinetic energy of the water into mechanical energy;
converting the mechanical energy into electrical energy (Col. 4:3-18); and
automatically closing an opening to selectively divert a portion of the water to the water turbine and control a flow rate and pressure of the water passing through the water turbine (Col. 4:53-64; Col. 5:1-11).
Regarding claim 17, Suzuki discloses wherein selectively diverting the portion of the water comprises adjusting a size of the opening through which the portion of the water flows (Col. 5:1-11, the size of the opening is dependent based on the amount of back pressure in the pipeline).
Regarding claim 20, Suzuki discloses further comprising:
maintaining a predetermined flow rate in the irrigation system (Col. 1:54-58); and
directing excess water around the water turbine (30 of Figure 3) and back into the irrigation system when the flow of water through the water turbine exceeds the predetermined flow rate (Col. 5:1-11, valve opens during increased pressure and closes when pressure subsides maintaining a predetermined flow and pressure).
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki (US 4,272,686), in view of Van Blerk (US 2014/0265328).
Regarding claim 8, Suzuki discloses all of the elements of the current invention, however does not explicitly disclose further comprising a motorized mechanism configured to change the position of the bypass valve (122 of Figure 3), and wherein the motorized mechanism is controlled by the control system (106, 120 of Figure 3).
Van Blerk discloses further comprising a motorized mechanism (Para. 0087, motorized mechanism of the bypass valve) configured to change the position of the bypass valve (158, 160 of Figure 7A, 7B), and wherein the motorized mechanism is controlled by the control system (Para. 0087).
It would have been obvious to one of ordinary skill in the art before effective filing of the claimed invention to have the bypass valve of Suzuki comprise a motorized mechanism to change the position of the valve controlled by the control system, as taught by Van Blerk, to remotely control the operation of the valve [Van Blerk: Para. 0087].
Claims 4-6, 11, 15, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki (US 4,272,686), in view of Millius (US 2022/0368195).
Regarding claim 4, Suzuki discloses all of the elements of the current invention as mentioned above, however does not explicitly disclose wherein the control system (106, 120 of Figure 3) includes at least one sensor configured to measure the flow rate and/or pressure of the water passing through the water turbine (30 of Figure 3).
Millius discloses wherein the control system (2400, 2420 of Figure 24; Para. 0147) includes at least one sensor configured to measure the flow rate and/or pressure of the water (2404 of Figure 24; Para. 0147) passing through the water turbine.
It would have been obvious to one of ordinary skill in the art before effective filing of the claimed invention to have at least one sensor in the arrangement of Suzuki configured to measure the flow rate and/or pressure of the water, as taught by Millius, to communicate the information to one or more self-powered valve systems, generator systems, or other actuator systems in response to a detected threshold condition, threshold change or other such triggers [Millius: Para. 0154-0155].
Regarding claim 5, Suzuki discloses wherein the bypass valve (122 of Figure 3) comprises an opening (Col. 5:1-3) configured for flowing the portion of the water away from the water turbine (30 of Figure 3).
Regarding claim 6, Suzuki discloses all of the elements of the current invention as mentioned above, however does not explicitly disclose wherein a size of the opening is adjusted at least in part based on the measurements obtained from the at least one sensor.
Millius discloses wherein a size of the opening is adjusted at least in part based on the measurements (Para. 0154-0155, the control circuit communicates measurements from the sensors to the valve systems in response to threshold conditions and/or changes) obtained from the at least one sensor (2404 of Figure 24; Para. 0147).
It would have been obvious to one of ordinary skill in the art before effective filing of the claimed invention to have the bypass valve of Suzuki have the size of the opening adjusted at least in part based on measurements from a sensor configured to measure the flow rate and/or pressure of the water, as taught by Millius, to control the supply of electrical power [Millius: Para. 0156].
Regarding claim 11, Suzuki discloses all of the elements of the current invention as mentioned above, however does not explicitly disclose further comprising a protective screen positioned upstream of the water turbine (30 of Figure 3) to prevent debris and/or solid particles from entering the water turbine and causing damage.
Millius discloses further comprising a protective screen (3810 of Figure 38) positioned upstream of the water turbine (310 of Figure 38; Para. 0223) to prevent debris and/or solid particles from entering the water turbine and causing damage (Para. 0220).
It would have been obvious to one of ordinary skill in the art before effective filing of the claimed invention to have a protective screen positioned upstream of the water turbine of Suzuki, as taught by Millius, to limit debris greater than a threshold size from flowing into the rotor stram conduit and/or damaging the generator [Millius: Para. 0220].
Regarding claim 15, Suzuki discloses all of the elements of the current invention as mentioned above, however does not explicitly disclose further comprising at least one sensor configured to measure the flow rate and/or pressure of the water passing through the water turbine (30 of Figure 3).
Millius discloses further comprising at least one sensor configured to measure the flow rate and/or pressure of the water (2404 of Figure 24; Para. 0147) passing through the water turbine.
It would have been obvious to one of ordinary skill in the art before effective filing of the claimed invention to control a position of the bypass valve of Suzuki based on a predetermined threshold and at least one sensor in the arrangement configured to measure the flow rate and/or pressure of the water, as taught by Millius, to provide an additional or alternative control of fluid flow into the generator conduit and the amount of electrical power that is generated by the generator and to communicate the information to one or more self-powered valve systems, generator systems, or other actuator systems in response to a detected threshold condition, threshold change or other such triggers [Millius: Para. 0154-0155, 0158].
Regarding claims 18, 19, Suzuki discloses all of the elements of the current invention as mentioned above, however does not explicitly disclose further comprising measuring the flow rate and/or pressure of the water passing through the water turbine (30 of Figure 3) (claim 18);
wherein selectively diverting the portion of the water is based at least in part on the measurement of the flow rate and/or the pressure of the water (claim 19).
Millius discloses further comprising measuring the flow rate and/or pressure of the water (2404 of Figure 24; Para. 0147) passing through the water turbine (claim 18);
wherein selectively diverting the portion of the water is based at least in part on the measurement of the flow rate and/or the pressure of the water (Para. 0158, valve remains in a closed state maintaining a predetermined flow rate until a threshold amount of pressure is applied) (claim 19).
It would have been obvious to one of ordinary skill in the art before effective filing of the claimed invention to measure the flow rate and/or pressure of the water in the system of Suzuki and selectively divert portions of the water based on the measurements, as taught by Millius, to communicate the information to one or more self-powered valve systems, generator systems, or other actuator systems in response to a detected threshold condition, threshold change or other such triggers and to provide an additional or alternative control of fluid flow into the generator conduit and the amount of electrical power that is generated by the generator [Millius: Para. 0154-0155, 0158].
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES H REID whose telephone number is (571)272-9248. The examiner can normally be reached M-F 9:30-4:45 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tulsidas 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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/Charles Reid Jr./Primary Examiner, Art Unit 2834