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, 7 – 9, 13, 14 and 15 are objected to because of the following informalities:
Claim 1, line 5, “each of which fixed plates” should read - - each of the fixed plates - -.
Claim 7, line 1, “mobile support wheel” should read - - shifting shaft mechanism - -.
Claims 7 – 9, line 1, “in which” should read - -, wherein - -.
Claims 13, 14 and 16, line 3, “a weight on it” should read - - a weight - -.
Appropriate correction is required.
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 – 18 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 claimed gravitation engine and shifting shaft mechanism produce excess energy over the energy input. Specifically, the specification states that:
Net energy output from gravity
The specification asserts that “the energy required to turn the rotating wheel 70 is less than the energy produced by the force of gravity on the weight 90 plus the energy from the movement of the rotating wheel 70 caused by the shifting shaft 40” (paragraph [0053]).
Self-resetting operation with excess energy
The specification further states that when the camshaft reaches the third position, “the force of the weight 90…rotates the hub 60…to bring the weight 90 on the rotating wheel 70 back up past 360 degrees” (paragraph [0053]), thereby returning the system to its initial position without disclosure of an equivalent energy input.
Energy generation from imbalance and shaft drop
The specification attributes additional energy to an imbalance created by the off-center plate opening and camshaft geometry, stating that “an imbalance…creates energy from the first to the second position with the drop of the shaft 40” (paragraph [0054]).
Sufficient energy to exceed a full rotation
The specification further asserts that “the energy from the drop of the weight 90 from 0 to 180 degrees is enough to turn the rotating wheel 70 and weight 90 from 180 degrees to over 360 degrees” (paragraph [0055]).
Excess energy beyond initial input
The specification explicitly states that “the drop of the weight 90 from 0 to 180 degrees and the energy from the shift of the shaft 40 provides enough energy to send the weight 90 back up past 360 degrees plus excess energy over the initial input” (paragraph [0056]).
Energy capture and self-powering capability
The specification further states that the “excess energy is sent back into the motor or otherwise captured” (paragraph [0056]), and that the gravitation engine “creates excess energy over what is input” provided proper balancing (paragraph [0056]).
These statements describe a machine that allegedly produces net energy output from gravity and internal mechanical motion, including energy in excess of that required to restore the system to its initial state. However, gravity is a conservative force, and well-established scientific principles teach that no net energy can be obtained from gravity over a closed mechanical cycle.
The present application provides no experimental data, test results, working examples, or other corroborating evidence demonstrating that the claimed invention operates as asserted. Argument alone is insufficient where the asserted utility contradicts settled physical laws. Thus, the applicant' s invention is deemed inoperable and, therefore, does not satisfy the utility requirement of 35 U.S.C. §101.
Claims 1 – 18 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 their 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 – 18 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 does the system produce net energy in excess of the energy required to raise the weight back to its original position? How does the shifting mechanism contribute additional energy rather redistributing existing energy? How losses due to friction, inertia and inefficiencies are overcome? What are the quantitative parameters (e.g. masses, forces, energy balances) that demonstrate operability?
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 their claim that their device produces excess energy over the energy required for operation, because it would contradict the law of conservation of energy.
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