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) because they fail to show:
“a converter for converting kinetic energy translated from wave motion into electrical energy”;
“a tethering mechanism in the converter”;
“a passive or active means of modulation”;
“the converter comprises a flywheel and generator”;
“the converter comprises a hydraulic arm”;
“a variable tension mechanism”;
“connecting the converter to a generator, electrolysis apparatus, battery or other mane of distributing or storing the electrical energy”;
“a generator is connected to flywheel in order to generate electricity from the harnessed wave energy”;
“a processor is provided to control the working parameters of the generator for various different wave conditions”;
“motion sensors are provided in order to monitor the movement of the waves”;
“sensors are provided to monitor the velocity of the components of device”;
“sensors are provided to monitor the energy generated by the device”;
“a three axis accelerometer”;
“a converter 10 in the form of a flywheel and/or generator”;
“a converter/generator 10 such that the converter/generator 10 converts the wave energy of the wave as harnessed by the device 100 into an energy form that can be stored or input into a component for use”;
“the converter/generator 10 thus generating energy which is captured and converted into useable electrical energy”; and
“the hydraulic arm 20 contracts and retracts in a cyclical manner as the tension on the tethering cable 4 increases and decreases due to the motion of the floating body 16 thus activating a rotor by hydraulic means”;
as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d).
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:
“tethering mechanism in the converter” (claim 1);
“variable tension mechanism” (claim 5); and
“passive or active means of modulation” (claim 7);
must be shown or the feature canceled from the claim. 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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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 the first paragraph of pre-AIA 35 U.S.C. 112:
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.
Claims 1-15 are 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 claims contain subject matter:
“converting said kinetic wave energy into electrical energy”, “converting kinetic energy translated from wave motion into electrical energy”, “convert kinetic wave movement into electrical energy” in claim 1;
“a variable tension mechanism” in claim 5;
“a passive or active means of modulation” in claim 7;
“converting said kinetic wave energy into electrical energy” in claim 14; and
“converting said wave energy into electrical energy” in claim 15);
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 inventors, at the time the application was filed, had possession of the claimed invention.
Although the word “generator” is present 15 times in the specification, the way in which the applicant intends to mechanically connected a common or know “generator” to the “tethering cable (4)” is not disclosed. Therefore, the applicant has failed to properly describe a mechanical arrangement capable of operating according to the language in the claims. Assuming arguendo that the “generator” disclosed in the specification, but not recited in the claims, is a common rotary generator (see page 7, line 4 of the Specification), the disclosure must clearly describe a means for transforming reciprocating mechanical energy (“an extension of the tethering cable (4)” and “a retraction of the tethering cable (4)” as recited in claim 1) into rotational mechanical energy to be provided to the generator.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the best mode contemplated by the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventors has not been disclosed. Evidence of concealment of the best mode is based upon the fact that the specification is completely silent on:
the way in which the applicant intends to mechanically connected a common or know “generator” to the “tethering cable (4)”; and
the mechanical arrangement capable of operating according to the language in the claims.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The specification is completely silent and fails to disclose:
the way in which the applicant intends to mechanically connected a common or know “generator” to the “tethering cable (4)”;
the mechanical arrangement capable of operating according to the language in the claims; and
the design and/or construction of “a variable tension mechanism”.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for obtaining mechanical energy from waves, does not reasonably provide enablement for “converting said kinetic wave energy into electrical energy”, “converting kinetic energy translated from wave motion into electrical energy”, “convert kinetic wave movement into electrical energy”, “converting said kinetic wave energy into electrical energy”, and “converting said wave energy into electrical energy”.
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Claim 15 is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without a method or sequence of steps for “assessing the wave environment of the location in order to predict wave types, wave heights and a suitable floating body”, which are critical or essential to the practice of the invention but not included in the claim. See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976).
The word “assessing” is present twice in the disclosure (once in page 2, line 22 of the specification and once in line 4 of claim 15). In both instances, there is no suggestion, mention, reference, guidance, teaching, and/or indication of the steps and procedures performed to make said “assessing”.
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 1-15 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Claims 1-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01.
The omitted elements are:
a mechanical arrangement or means for transforming reciprocating mechanical energy (“an extension of the tethering cable (4)” and “a retraction of the tethering cable (4)” as recited in claim 1) into rotational mechanical energy (see page 7, line 4 of the Specification) capable of operating according to the language in the claims;
a means for converting rotational mechanical energy (see page 7, line 4 of the Specification) “into electrical energy” as recited in claim 1; and
a means for performing the “assessing” as recited in claim 15.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01.
The omitted steps are the steps and procedures performed to make said “assessing”.
Claim 15 is generally narrative and indefinite, failing to conform with current U.S. practice. It appears to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Claim 15 recites the following limitations for which there is insufficient antecedent basis in the claim:
“the device (100)”;
“the wave environment”;
“the predicted wave environment”;
“the pressure receptacle (101)”; and
“the converter (10)”.
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 1-15 are rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks utility.
The claimed invention of claims 1-14 intends to produce electrical energy from wave energy by utilizing the vertical reciprocating motion of a “pressure receptacle”. Said “pressure receptacle” is intended to be connected to:
“a flywheel and generator”; or
“a hydraulic arm”, or
“a generator, electrolysis apparatus, battery or other means of distributing or storing the electrical energy”, or
“converter/generator 10”, or
“a flywheel and/or generator”.
According to page 7, lines 3 and 4 of the Specification, “the tension reeling cable 4 is being reeled out from the tension reeling device 8 thus rotating the converter/generator 10”.
According to page 11, lines 16 and 17 of the Specification, “the tethering cable 4 is reeled out from the converter/generator 10, exerting rotational or cyclical movement within the converter/generator 10”.
According to page 11, lines 23 and 24 of the Specification, “Any power generating means which requires rotation, gyration or motion to generate electricity may be used in conjunction with device 100.”
Therefore, since the goal of the claimed invention is to generate electrical energy (see preamble of independent claims 1 and 15) and the mechanical energy produced by the claimed structural arrangement is reciprocates linearly, a means for transforming said linearly reciprocating motion into the rotational motion needed by the disclosed “generator”, or “flywheel and generator”; or “hydraulic arm”, or “generator, electrolysis apparatus, battery or other means of distributing or storing the electrical energy”, or “converter/generator 10”, or “flywheel and/or generator” must be disclosed in the Specification, illustrated in the drawings, and recited in the claims.
Moreover, since the “tension reeling cable 4” or “tethering cable 4” is not a rigid element/component, it is only capable of transmitting mechanical motion in a single direction by pulling. A “cable” is not capable of pushing a load. Therefore, a means for releasing or disconnecting the generator from the cable in one direction must be disclosed, illustrated, and claimed for the claimed invention to operate properly. Without such a releasing or disconnecting mechanism, the generator would stop rotating in a proper direction.
It is the opinion of the examiner that the arrangement as disclosed, illustrated, and claimed fails to provide one of ordinary skill in the art with a complete operational device capable of operating as intended and obtaining the desired results.
The claimed invention of claim 15 intends to perform an “assessing” without reciting a means for “assessing”. Therefore, the claimed invention cannot operate as intended and lacks patentable utility.
Claims 1-14 are rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks utility.
The claimed invention intends to produce electrical energy from wave energy by utilizing the vertical reciprocating motion of a “pressure receptacle”.
According to claim 1, “flow of water through the pressure receptacle (101) on downward wave movement decreases pressure on the pressure receptable (101) thus resulting in a retraction of the tethering cable (4).”
If water flows “through the pressure receptacle (101) on downward wave movement”, the “pressure receptacle (101)” will not be capable of exerting any upwards or downwards force on the cable as the “floating body (16)” moves over the waves.
If the application was actually directed to a working device the following rejection would apply. This rejection is based on the broadest possible interpretation of the claims.
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 (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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 6-9, 11, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2009/0322092 A1 to Werjefelt in view of U.S. Patent Application Publication No. 208/0206077 A1 to Royset.
Werjefelt discloses a wave action electric generating system, comprising:
a pressure receptacle (4), comprising:
an impervious sidewall (see Figure 1) through which fluids cannot pass;
at least one integrated buoyancy unit (see Figure 1) on the impervious sidewall;
a base (see Figure 1) which is connected to the sidewall to form a closed end; and
an open upper end (see Figure 1);
a tethering cable (6);
a converter (8) for converting kinetic energy translated from wave motion into electrical energy; and
a means for connection to a floating body (9);
wherein, in use, the pressure receptacle is connected in tension within a water column via the tethering cable to a tethering mechanism (7) in the converter which, in use, is located on a floating body (see Figure 1);
such that, fluctuations of waves cause movement of the floating body on which the converter is located, thus varying the tension in the tethering cable in a cyclical manner to convert kinetic wave movement into electrical energy.
However, it fails to disclose a flow of water through the pressure receptacle on upward wave movement increases pressure on the pressure receptacle thus resulting in an extension of the tethering cable and flow of water through the pressure receptacle on downward wave movement decreases pressure on the pressure receptable thus resulting in a retraction of the tethering cable.
Royset discloses a wave pump device, comprising:
a pressure receptacle (12); and
a tethering cable (40);
whereby, a flow of water through the pressure receptacle on upward wave movement increases pressure on the pressure receptacle thus resulting in an extension of the tethering cable and flow of water through the pressure receptacle on downward wave movement decreases pressure on the pressure receptable thus resulting in a retraction of the tethering cable.
It would have been obvious to one skilled in the art before the effective filling date of the invention to use the pressure receptacle design that allows water flow through the pressure receptacle as disclosed by Royset on the wave action electric generating system disclosed by Werjefelt, for the purpose of allowing water flow through the pressure receptacle.
With regards to claim 2, Royset discloses:
at least one check valve (26 or 32; see paragraphs [0013], [0034], [0036], [0039], [0041, and [0042]).
With regards to claim 3, Werjefelt discloses:
a flywheel (13).
With regards to claim 4, Werjefelt discloses:
a hydraulic (see paragraphs [0003] and [0018]) arm (“levers” in paragraph [0018]).
With regards to claim 6, both Werjefelt and Royset independently disclose:
non elastic sidewalls.
With regards to claim 7, both Werjefelt and Royset independently disclose:
a passive means of modulation.
With regards to claim 8, both Werjefelt and Royset independently disclose:
a plurality of pressure receptacles (see Figure 1 of Werjefelt; see Figure 6 Royset) and one or more converters(see Figure 1 of Werjefelt; see Figure 6 Royset)) located on a floating body.
With regards to claim 9, Royset discloses:
the pressure receptacles being integrated together into a single unit (see Figure 6).
With regards to claim 11, Werjefelt discloses:
a means (30) of attaching the device to a floating body (32).
With regards to claim 15, Werjefelt in view of Royset disclose:
a method of harnessing wave energy from a particular location and converting said wave energy into electrical energy using a device as described above, the method comprising the steps of:
assessing a wave environment of the location in order to predict wave types, wave heights, and a suitable floating body;
based on the predicted wave environment configuring a pressure receptacle of suitable size and strength, with suitable integrated buoyancy units, a tethering cable of suitable length for use with a floating body of suitable buoyancy volume and properties;
connecting the device to the floating body;
connecting the floating body to a mooring point such that the device is fixed in the location and able to sway; and
connecting the converter to any means of storage or distribution of energy.
Claims 5, 10, and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2009/0322092 A1 to Werjefelt in view of U.S. Patent Application Publication No. 208/0206077 A1 to Royset as applied to claims 1-4, 6-9, 11, and 15 above, and further in view of U.S. Patent Application Publication No. 2022/0403809 A1 to Sidenmark et al.
Werjefelt in view of Royset discloses a wave action electric generating system as described in paragraph 26 above.
However, it fails to disclose a variable tension mechanism.
Sidenmark et al. discloses a wave energy converter and buoy, comprising:
a pressure receptacle (15);
a tethering cable (22); and
a variable tension mechanism (see paragraph [0003]).
It would have been obvious to one skilled in the art before the effective filling date of the invention to use the variable tension mechanism disclosed by Sidenmark et al. on the wave action electric generating system disclosed by Werjefelt in view of Royset, for the purpose of “provide the necessary force control features in the PTO device.”
With regards to claim 10, Werjefelt in view of Royset and Sidenmark et al. disclose:
a plurality of pressure receptacles (see Figure 9a of Sidenmark et al.) and one or more converters located on a plurality of floating bodies (see Figure 1 of Werjefelt).
With regards to claim 12, Sidenmark et al. discloses:
an inflatable (see paragraphs [0014], [0058], and [0061]-[0064]) or deflatable submergible floating body.
With regards to claim 13, Sidenmark et al. discloses:
a means (see Figure 9a) of storage or distribution of energy which is connected to the converter.
With regards to claim 14, Sidenmark et al. discloses:
the devices (see Figure 1) being interconnected (see Figure 9a).
Conclusion
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/PEDRO J CUEVAS/Primary Examiner, Art Unit 2896 February 13, 2026