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 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 September 26, 2025 have been fully considered but they are not persuasive.
-Applicant argues on page 6 of the remarks that amendments made to claim 1 overcome the double patenting rejections of claims 1-7 and 11.
The Examiner respectfully disagrees because the amendment to claim 1 changes “low frequency sound system” to “subwoofer”. The Applicant’s specification at paragraph 0024 discloses the low frequency sound system may be a subwoofer. US Patent No. 12,158,113 also claims the “low frequency sound system” which the Applicant’s specification admits is equivalent to a subwoofer. Therefore, the amendments made to claim 1 does not overcome the double patent rejections of claims 1-7 and 11.
-Applicant argues on page 6 of the remarks that amendments made to claims 1 and 10 and cancelled claim 9 overcome the 35 USC 103 rejections of claims 1-11.
The Examiner respectfully disagrees because the only amendment made to the claims were to change “low frequency sound system” to “subwoofer” which is rejected under 35 U.S.C. 103 as being unpatentable over Hector (US 2020/0191109), in view of Murphy (US 6,176,899) and Kirchoff (US 2012/0058405). Hector teaches a low frequency sounds system and Kirchoff explicitly teaches a subwoofer disclosing, “such acoustic means include, but is not limited to…speakers.” Therefore, the amendments made to claims 1 and 10 and cancelled claim 9 do not overcome the 35 USC 103 rejections of claims 1-11.
Drawings
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 following must be shown or the feature(s) canceled from the claim(s):
“vacuum-generation rotor” of claim 6
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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because:
Reference character “15B” has been used to designate both “aerator device” and “square face portion”
Reference character “15C” has been used to designate both “air injection valve” and “triangle portions”
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. 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,158,133. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a submerged hydroelectric generator system, comprising: a peg stock comprising a first end and a second end; an intake valve disposed on the first end of the peg stock; at least one generator disposed within the peg stock; an outlet valve disposed on the second end of the peg stock; wherein the outlet valve is configured to release water from the peg stock; wherein the peg stock is in a vertical configuration; wherein the outlet valve comprises a subwoofer; wherein the outlet valve comprises a plurality of aerator devices; and wherein the outlet valve comprises an air vent.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,158,133. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim wherein the intake valve comprises a filter.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,158,133. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim wherein the intake valve comprises a valve regulator.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,158,133. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim wherein the valve regulator comprises a time valve system.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,158,133. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim wherein the at least one generator comprises a spindle generator.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,158,133. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim wherein the outlet valve comprises a vacuum-generation rotor that flushes water out of the peg stock.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,158,133. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim wherein the outlet valve comprises a turbofan engine that flushes water out of the peg stock.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 12,158,133. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim wherein the generator is disposed on the first end of the peg stock.
Claim Objections
Claim 12 is objected to because of the following informalities:
Claim 12, “through sound displacement.” ends with a period and should be replaced with a semicolon (;).
Appropriate correction is required.
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.
Claims 1, 5, 6, 8, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Hector (US 2020/0191109), in view of Murphy (US 6,176,899) and Kirchoff (US 2012/0058405).
Regarding claim 1, Hector discloses a submerged hydroelectric generator system, comprising:
a peg stock (99 of Figures 6, 7; 150 of Figure 12) comprising a first end and a second end;
an intake valve (98 of Figures 6-7; Para. 0092) receiving the first end of the peg stock;
at least one generator (102 of Figures 6-7; 154, 156 of Figure 12) disposed within the peg stock;
an outlet valve (100 of Figures 6-7) disposed at the second end of the peg stock;
wherein the outlet valve is configured to release water from the peg stock;
wherein the peg stock is in a vertical configuration (see Figures 6, 7, 12); and
wherein the outlet valve comprises an air vent (209 of Figures).
Hector does not disclose includes a subwoofer; and
wherein the outlet valve includes a plurality of aerator devices.
Kirchoff discloses includes a subwoofer (Para. 0076).
It would have been obvious to one of ordinary skill in the art before effective filing of the claimed invention to include a subwoofer in the system of Hector, as taught by Kirchoff, for cavitation purposes that can be used to generate energy or enhance the energy harvesting process.
Murphy discloses wherein the outlet valve includes a plurality of aerator devices (32 of Figures; Col. 3:15-20).
It would have been obvious to one of ordinary skill in the art before effective filing of the claimed invention to have the outlet valve of Hector include an aerator device, as taught by Murphy, to effect removal of dissolved gas in the volume of supersaturated liquid at the top of the volume [Murphy: Col. 2:30-32].
Regarding claim 5, Hector discloses wherein the generator comprises a spindle generator (102 of Figures; 154, 156 of Figures).
Regarding claim 6, Hector discloses wherein the outlet valve comprises a vacuum-generation rotor (154, 156 of Figures) that flushes water out of the peg stock (99 of Figures 6, 7; 150 of Figure 12).
Regarding claim 8, Hector discloses wherein the outlet valve comprises an air injection valve (96 of Figures; Para. 0066, 0070).
Regarding claim 10, Hector discloses all of the elements of the current invention as mentioned above, however does not explicitly disclose wherein the subwoofer produces sound that falls within the range of 20 Hz to 200 Hz.
Kirchoff discloses wherein the subwoofer (Para. 0076) produces sound that falls within the range of 20 Hz to 200 Hz (Para. 0055, 0099).
It would have been obvious to one of ordinary skill in the art before effective filing of the claimed invention to have the subwoofer produce sounds that falls within the range of 20 Hz to 200 Hz, as taught by Kirchoff, for cavitation purposes that can be used to generate energy or enhance the energy harvesting process.
Regarding claim 11, Hector discloses wherein the generator (102 of Figures; 154, 156 of Figures) is disposed at the first end of the peg stock (99 of Figures; 150 of Figures).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Hector (US 2020/0191109), in view of Murphy (US 6,176,899) and Kirchoff (US 2012/0058405) as applied to claim 1 above, and further in view of Ullman (US 2009/0302613).
Regarding claim 2, Hector discloses all of the elements of the current invention as mentioned above, however does not explicitly disclose wherein the intake valve (98 of Figures; Para. 0092) comprises a filter.
Ullman discloses wherein the intake valve comprises a filter (Para. 0022).
It would have been obvious to one of ordinary skill in the art before effective filing of the claimed invention to provide a filter for the intake valve of Hector, as taught by Ullman, to filter out indigenous aquatic material and inhibit it from being ingested into the unit [Ullman: Para. 0022].
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hector (US 2020/0191109), in view of Murphy (US 6,176,899) and Kirchoff (US 2012/0058405) as applied to claim 1 above, and further in view of Katta (US 2017/0122148).
Regarding claims 3, 4, Hector discloses all of the elements of the current invention as mentioned above, however does not explicitly disclose wherein the intake valve (98 of Figures; Para. 0092) comprises a valve regulator (claim 3);
wherein the valve regulator comprises a time valve system (claim 4).
Katta discloses wherein the intake valve comprises a valve regulator (Para. 0004-0006) (claim 3);
wherein the valve regulator comprises a time valve system (Para. 0004-0006) (claim 4).
It would have been obvious to one of ordinary skill in the art before effective filing of the claimed invention to use a time valve system with the intake valve of Hector, as taught by Katta, to control an amount of cushioning fluid for the valves to affect the rate at which the intake valve opens or closes [Katta: abstract].
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Hector (US 2020/0191109), in view of Murphy (US 6,176,899) and Kirchoff (US 2012/0058405) as applied to claim 1 above, and further in view of Ahn (KR 20110003846 A).
Regarding claim 7, Hector discloses all of the elements of the current invention as mentioned above, however does not explicitly disclose wherein the outlet valve comprises a turbofan engine that flushes water out of the peg stock.
Ahn discloses wherein the outlet valve comprises a turbofan engine that flushes water out of the peg stock (see disclosure under section of background art).
It would have been obvious to one of ordinary skill in the art before effective filing of the claimed invention to use a turbofan engine to flush the water out of the peg stock in Hector, as taught by Ahn, to apply the principle of turbofan engine of aircraft installed on a drain to make the speed of the water flow quicken [Ahn: abstract; background art].
Allowable Subject Matter
Claims 12-17, and 20 are allowed.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claim 12 and claims dependent thereon, the prior art of record when considered as a whole, alone or in combination, neither anticipates nor renders obvious a submerged hydroelectric generator system as recited by independent claim 12, comprising:
a plurality of peg stocks each comprising a first end and a second end;
an intake valve disposed on the first end of each of the peg stocks;
at least one generator disposed within each of the peg stocks;
an outlet valve disposed on the second end of each of the peg stocks;
wherein the outlet valve is configured to release water from each of the peg stocks;
wherein the outlet valve has a cuboctahedron shape;
wherein the cuboctahedron shape includes a plurality of square face portions and a plurality of triangle portions;
wherein the triangle portions of the cuboctahedron-shaped outlet valve comprise a subwoofer, such that water is displaced from the outlet valve through sound displacement;
wherein the peg stocks are connected to the square face portions of the cuboctahedron-shaped outlet valve; and
wherein the peg stocks are in a vertical configuration.
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.
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/Charles Reid Jr./Primary Examiner, Art Unit 2834