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 .
Claim Objections
Claims 1 and 16 are objected to because of the following informalities:
Claim 1, line 1, “supply” should read - - supplying - -.
Claim 16, lines 19 – 20, “rotates a direction” should read - - rotates in a direction - -.
Appropriate correction is required.
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 pre-AIA 35 U.S.C. 112, 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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “a linkage means for maintaining each of the plurality of momentum arms parallel to the ground during rotation” in claim 7.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 9 and 16 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 9, the limitation “the first frame and the second frame further comprise concentric positioning” is indefinite, as it lacks antecedent basis with the limitation “the first frame and the second frame having an eccentric positioning” set forth in claim 1.
Claim 16, the limitation "a horizontal axis" in line 27 is indefinite, as it is not clear if this limitation as the same as or further defines “a first horizontal axis” or sets forth a new axis. There is insufficient antecedent basis for this limitation in the claim.
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.
The specification asserts that the disclosed apparatus supplies torque by arranging momentum arms with weights such that the weights remain “parallel to the ground” while rotating, producing a “relative displacement” that “drives a supply of torque.” The specification further asserts that the system transforms rotary movement “without reaction,” describing “an absolute movement of a torque coupling without reaction.” (See e.g., paragraph [0046], which characterizes the output as a torque coupling “without reaction,” and the surrounding discussion of summations of torque/power and “without reaction” behavior). Paragraphs [0033], [0040], [0047], and [0049] indicate that linear motors, hydraulic forces, wind forces, or other external inputs may provide an initial force to initiate rotation and may further provide a continuous force input to maintain rotation. However, even when such external force inputs are considered, the asserted utility remains not credible for at least the following reasons:
First, the specification attributes the generation and multiplication of torque primarily to the geometric arrangement and motion of the momentum arms and internal linkage structure, rather than to the external motors themselves. The disclosure asserts summation of torque and power outputs that exceed what would be expected from the disclosed external inputs alone, including statements that rotary motion is transformed into “a rotary movement without reaction” and that multiple torque contributions algebraically add without corresponding reaction forces. Such assertions are inconsistent with well-established physical laws, including conservation of energy and conservation of angular momentum, and are characteristic of perpetual motion / reactionless drive type assertions. The equations (e.g., torque summations and constants such as “9.557 N/n”) provided in paragraphs [0041] to [0045] do not provide a scientifically accepted or dimensionally consistent demonstration of operability, and the disclosure does not provide experimental verification or objective evidence showing the device performs as asserted
Second, the disclosure does not reconcile the role of the linear motors with the asserted torque equations and summations described in the specification. The equations presented do not attribute the resulting torque output to motor power input, nor do they provide a conventional power balance showing that output torque is limited by and directly proportional to the supplied motor energy, minus losses.
Third, even with a continuous force input, a mechanical system composed of rotating frames, linkages, and weighted arms remains subject to conservation of energy and angular momentum. The specification’s characterization of reactionless torque coupling and absolute torque output remains inconsistent with these established physical laws.
The specification does not provide objective evidence, such as measured torque, power input/output data, or experimental results, demonstrating that the claimed apparatus operates as asserted when driven by linear motors or other external forces.
The specification further includes statements that the apparatus “does not generate energy from nothing” and is “consistent with the laws of thermodynamics.” However, conclusory disclaimers do not cure a disclosure that affirmatively describes reactionless torque coupling and a net torque output derived from internal mass/geometry arrangements without a commensurate, adequately explained external energy source or measured input-output data supporting the asserted performance.
Because the asserted result—torque coupling “without reaction” and related claimed performance—is not credible in view of established scientific principles and is not adequately supported by objective evidence in the specification, the claims lack credible asserted utility and are rejected under 35 U.S.C. §101
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 his 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 are the magnitude, timing, or control of the linear motor forces are selected? How is linear motor input power transferred through the linkage members and momentum arms to produce the claimed torque output? How does the system avoid internal reaction forces or torque cancellation? How is output torque measured or distinguished from motor-supplied torque?
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 the claim that the apparatus supplies torque.
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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/PHILLIP A JOHNSON/Primary Examiner, Art Unit 3617