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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-9 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed on 04/09/2026 have been fully considered but they are not persuasive. Regarding the rejection of claim 1 over Prisbrey view of Song, applicant argus that substituting the pump of Prisbrey for a generator would render the Prisbrey structure unsatisfactory for its intended purpose, a result not permitted in an obviousness analysis. The examiner respectfully disagrees. As explained in the rejection, Prisbrey is harvesting energy from the flow of water. Prisbrey uses the harvested energy to drive a pump. Song teaches using harvested energy of water to drive a generator. Substituting the pump of Prisbrey for a generator would not render the Prisbrey structure unsatisfactory for its intended purpose, which is harvesting energy of water to drive a machine. This will obtain the predictable results of producing electrical energy from harvested energy of water.
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 do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: driving member in claim 1. Based on the specification, the driving member is a rod or bar (7) as shown in Fig. 1, 2.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend 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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(a)
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 7-9 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 claim(s) contains subject matter 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 inventor(s), at the time the application was filed, had possession of the claimed invention. In this instance, the limitation “a plurality of horizontal output shafts symmetrically arranged relative to the load-bearing column” of claim 7 is newly presented, has not been previously disclosed in the specification, and does not find direct support in the originally filed disclosure, hence it is considered new matter. There is no mention of a symmetrical arrangement of a plurality of horizontal output shafts in the specification. Thus, the originally filed disclosure does not reasonably convey to one of ordinary skill in the art that Applicant was in possession of the invention as now presented/claimed at the time of the filing of the instant application.
Claims 8-9 are rejected due to their dependency from a previously rejected claim.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (CN 105804914), referred to hereafter as Song in view of Moore et al. (US 2011/0031753), referred to hereafter as Moore.
With regard to claim 1:
Song discloses a hydrokinetic generator set, comprising: a load-bearing structure foundation (Fig. 1. Note that a load-bearing structure foundation is a very broad limitation as most things can be interpreted to be load-bearing as it’s the case with most mechanical elements, and be a structure foundation, as most mechanical elements can be interpreted to be a structure foundation) formed by a foundation (Fig. 1) and an annular load-bearing wall (the wall can be either 12 or the wall under 12 in which 12 is installed, shown in Fig. 1. It can also be one side of the water channel 11. See Fig. 1 and 2), a load-bearing column (1) configured to be driven by hydraulic power to rotate (Fig. 1, 2); a transmission (4 and 5, individually or in combination) installed in the load-bearing structure foundation (Fig. 1, 2), the transmission including; an input shaft connected to the load-bearing column (Fig. 1), and an output shaft, the output shaft being connected to a generator (6); a driving member (8) supported by the annular load-bearing wall (Fig. 1. Note that the claim doesn’t require direct support. Hence, the driving member is supported by 12, and also by the wall under 12 through 12, and also by the wall of 11. See Fig. 1 and 2), the driving member being connected to the load-bearing column and to a water baffle (7); an annular water channel (11), the water baffle being placed in the annular water channel and configured to rotate the driving member as water flows through the annular water channel (Fig. 1, 2); and a separator arranged between a water inlet of the annular water channel and a water outlet of the annular water channel (In Fig. 2, see the separator between a water inlet and a water outlet which separates the water inlet and the water outlet).
Song does not appear to explicitly disclose that the output shaft is a plurality of output shafts, each output shaft being connected to a generator.
However, Moore teaches a hydrokinetic generator set having a transmission and a generator and further teaches as alternatively, it can have a plurality of output shafts, each output shaft being connected to a generator ([0033]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to use a known technique, namely having a plurality of output shafts, each output shaft being connected to a generator, to improve similar devices in the same way.
With regard to claim 4, the combination of Song and Moore further discloses that the driving member is of a rod structure or a disc structure (Fig. 1, 2), and a load-bearing inhaul cable (2 or 3, individually or in combination) is added between the load-bearing column and the driving member (Fig. 1).
With regard to claim 6, the combination of Song and Moore further discloses that the separator is formed by a separating wall higher than a water surface or a plurality of separating plates higher than a water surface (Fig. 1, 2. Note that if the separating wall is not higher than a water surface, the water will overflow until the separating wall is higher than the water surface).
With regard to claim 7:
the combination of Song and Moore discloses the hydrokinetic generator set of claim 1, as set forth above, and further discloses that the plurality of output shafts comprises a plurality of horizontal output shafts arranged relative to the load-bearing column (Song, Fig. 1).
the combination of Song and Moore does not appear to explicitly disclose that the output shafts are symmetrical relative to the load-bearing column.
However, a careful examination of the specification reveals no criticality for the symmetrical arrangement relative to the load-bearing column, nor any reason as to why the hydrokinetic generator set of applicant with the symmetrical arrangement relative to the load-bearing column would operate any different than the hydrokinetic generator set of the combination of Song and Moore, and Applicant has not disclosed that this arrangement provides an advantage, is used for a particular purpose, or solves a stated problem. Hence this symmetrical arrangement is considered to be a design choice by the applicant. One of ordinary skill in the art, furthermore, would have expected the combination of Song and Moore, and Applicant’s invention, to perform equally well, because both would perform the same function.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine the symmetrical arrangement relative to the load-bearing column as claimed with the hydrokinetic generator set of the combination of Song and Moore in order to achieve a desired dimension or configuration, as they are a matter of design choice. Such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art.
With regard to claim 8, the combination of Song and Moore further discloses that the plurality of output shafts comprises two horizontal output shafts (see the rejection of claim 1 in which Song was modified to have a plurality of output shafts, each output shaft being connected to a generator, which includes two. Regarding horizontal, see Song, Fig. 1).
With regard to claim 9, the combination of Song and Moore further discloses that the plurality of output shafts comprises four horizontal output shafts (see the rejection of claim 1 in which Song was modified to have a plurality of output shafts, each output shaft being connected to a generator, which includes four. Regarding horizontal, see Song, Fig. 1).
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Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (CN 105804914), referred to hereafter as Song in view of Moore et al. (US 2011/0031753), referred to hereafter as Moore, as applied to claim 1 above, and further in view of in view of Downing (US 2002/0141858).
With regard to claim 2:
the combination of Song and Moore discloses the efficient hydrokinetic rotating disc generator set of claim 1, as set forth above, and further discloses that the plurality of output shafts comprises a horizontal shaft (Song, Fig. 1).
the combination of Song and Moore does not appear to explicitly disclose that the plurality of output shafts comprises a vertical shaft.
However, Downing teaches an efficient hydrokinetic rotating disc generator set to rotate as push of water flow and further teaches an output shaft connected to a generator, the generator being a vertical generator.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine prior art elements according to known methods, and add a vertical generator to the Song, to yield predictable results of producing electrical energy. This addition furthermore would provide more electrical energy production and also provides redundancy in the system in case the horizontal generators fail or break.
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Claims 1, 4, 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Prisbrey (US 1,480,299) in view of Song et al. (CN 105804914), referred to hereafter as Song and Moore et al. (US 2011/0031753), referred to hereafter as Moore.
With regard to claim 1:
Prisbrey discloses a hydrokinetic generator set, comprising: a load-bearing structure foundation (Fig. 1, “a load-bearing structure foundation” is the area where pump 9 is installed) formed by a foundation (Prisbrey, in Fig. 1, see the foundation under pump 9) and an annular load-bearing wall (see Fig. 1 of Prisbrey. In a first interpretation, “an annular load-bearing wall” is the wall immediately next to pump 9. In a second interpretation, “an annular load-bearing wall” is the inner wall of trough 1. In a third interpretation, “an annular load-bearing wall” is the outer wall of trough 1); a load-bearing column (6) configured to be driven by hydraulic power to rotate; wherein a pump (9) is installed in the load-bearing structure foundation (Fig. 1), an input shaft of the pump is connected to a load-bearing column (6) driven by hydraulic power (the water flow in trough 1) to rotate; a driving member (14 and 15) supported by the annular load-bearing wall (Fig. 2, 3, 5, and 6. The rollers are installed on the wall by virtue of being on the wall as depicted in Fig. 5 and 6), the driving member being connected to the load-bearing column and to a water baffle (see “reversible water baffle” 34 in Fig. 2, 3, 5, and 6); an annular water channel (1, see Fig. 1, 2), the water baffle being placed in the annular water channel and configured to rotate the driving member as water flows through the annular water channel (Fig. 1, 2); and a separator (see the separator between inlet 2 and outlet 3 in Fig. 1 and 2) arranged between a water inlet of the annular water channel and a water outlet of the annular water channel (Fig. 1, 2). In Prisbrey, a pump (9) is installed in the load-bearing structure foundation (Fig. 1), and an input shaft of the pump is connected to a load-bearing column (6) driven by hydraulic power (the water flow in trough 1) to rotate.
Prisbrey uses its efficient hydrokinetic rotating disc generator set to generate energy to rotate a pump (9) instead of the recited generators, hence Prisbrey does not appear to explicitly disclose a plurality of generators, and a plurality of output shafts, each output shaft being connected to a generator. Also, Prisbrey does not appear to explicitly disclose a transmission between the load-bearing column and the generator.
However, Song teaches an efficient hydrokinetic rotating disc generator set (Fig. 1, 2), comprising a load-bearing structure foundation (Fig. 1), wherein a transmission (4 and 5, individually or in combination) is installed in the load-bearing structure foundation (Fig. 1), an input shaft of the transmission is connected to a load-bearing column (1) driven by hydraulic power to rotate (Fig. 2), the transmission is connected to one or more output shafts arranged in a balanced mode (Fig. 1), and each output shaft is connected to a generator (6).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to do a simple substitution of one known element for another, and substitute the pump of Prisbrey with the generator and transmission of Song, to obtain predictable results of producing electrical energy.
The pump of Prisbrey is already in the load-bearing structure foundation (see Fig. 1 of Prisbrey), hence after the above modification and substituting the pump of Prisbrey with the generator and transmission of Song, the combination of Prisbrey and Song discloses a transmission that is installed in the load-bearing structure foundation, an input shaft of the transmission is connected to the load-bearing column (as taught by Song), the transmission is connected to one or more output shafts (as taught by Song), and each output shaft is connected to a generator (as taught by Song).
Although Prisbrey has a water connection from the trough (1) to the load-bearing structure foundation, the person of ordinary skill can close this line when they substitute the pump with the generator and transmission because it no longer be needed. Note that "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396. Hence, in the above combination, when the water line connection to the load-bearing structure foundation is not needed as a result of the modification, the person of ordinary skill in the art would be able to simply close that line or just remove it.
Regarding the output shaft being a plurality of output shafts that each one is connected to a generator, Moore teaches a hydrokinetic generator set having a transmission and a generator and further teaches as alternatively, it can have a plurality of output shafts, each output shaft being connected to a generator ([0033]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to use a known technique, namely having a plurality of output shafts, each output shaft being connected to a generator, to improve similar devices in the same way.
With regard to claim 4, the combination of Prisbrey, Song, and Moore further discloses that the driving member is of a rod structure or a disc structure (Prisbrey, Fig. 2, 3, 5, and 6), and a load-bearing inhaul cable (Prisbrey, 8) is added between the load-bearing column and the driving member (Prisbrey, Fig. 1).
With regard to claim 6, the combination of Prisbrey, Song, and Moore further discloses that the separator is formed by a separating wall higher than a water surface or a plurality of separating plates higher than a water surface (Prisbrey, see Fig. 1, 2).
With regard to claim 7:
the combination of Prisbrey, Song, and Moore discloses the hydrokinetic generator set of claim 1, as set forth above, and further discloses that the plurality of output shafts comprises a plurality of horizontal output shafts arranged relative to the load-bearing column (Song, Fig. 1).
the combination of Prisbrey, Song, and Moore does not appear to explicitly disclose that the output shafts are symmetrical relative to the load-bearing column.
However, a careful examination of the specification reveals no criticality for the symmetrical arrangement relative to the load-bearing column, nor any reason as to why the hydrokinetic generator set of applicant with the symmetrical arrangement relative to the load-bearing column would operate any different than the hydrokinetic generator set of the combination of Prisbrey, Song, and Moore, and Applicant has not disclosed that this arrangement provides an advantage, is used for a particular purpose, or solves a stated problem. Hence this symmetrical arrangement is considered to be a design choice by the applicant. One of ordinary skill in the art, furthermore, would have expected the combination of Prisbrey, Song, and Moore, and Applicant’s invention, to perform equally well, because both would perform the same function.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine the symmetrical arrangement relative to the load-bearing column as claimed with the hydrokinetic generator set of the combination of Prisbrey, Song, and Moore in order to achieve a desired dimension or configuration, as they are a matter of design choice. Such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art.
With regard to claim 8, the combination of Prisbrey, Song, and Moore further discloses that the plurality of output shafts comprises two horizontal output shafts (see the rejection of claim 1 in which Prisbrey was modified to have a plurality of output shafts, each output shaft being connected to a generator, which includes two. Regarding horizontal, see Song, Fig. 1).
With regard to claim 9, the combination of Prisbrey, Song, and Moore further discloses that the plurality of output shafts comprises four horizontal output shafts (see the rejection of claim 1 in which Prisbrey was modified to have a plurality of output shafts, each output shaft being connected to a generator, which includes four. Regarding horizontal, see Song, Fig. 1).
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Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Prisbrey (US 1,480,299) in view of Song et al. (CN 105804914), referred to hereafter as Song and Moore et al. (US 2011/0031753), referred to hereafter as Moore, as applied to claim 1 above, and further in view of Downing (US 2002/0141858).
With regard to claim 2:
The combination of Prisbrey, Song, and Moore discloses the efficient hydrokinetic rotating disc generator set of claim 1, as set forth above, and further discloses that the plurality of output shafts comprises a horizontal shaft (Song, Fig. 1).
The combination of Prisbrey, Song, and Moore does not appear to explicitly disclose that the plurality of output shafts comprises a vertical shaft.
However, Downing teaches an efficient hydrokinetic rotating disc generator set to rotate as push of water flow and further teaches an output shaft connected to a generator, the generator being a vertical generator.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine prior art elements according to known methods, and add a vertical generator to the combination of Prisbrey, Song, and Moore, to yield predictable results of producing electrical energy. This addition furthermore would provide more electrical energy production and also provides redundancy in the system in case the horizontal generator fails or breaks.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Refer to the attached form PTO-892 for pertinent prior art disclosing similar generator sets such as US 5137423.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 BEHNOUSH HAGHIGHIAN whose telephone number is (571)270-7558. The examiner can normally be reached Mon-Fri, 7:00am-15:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Courtney D Heinle can be reached at (571) 270-3508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BEHNOUSH HAGHIGHIAN/
Examiner
Art Unit 3745
/COURTNEY D HEINLE/Supervisory Patent Examiner, Art Unit 3745
Prosecution Insights