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 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.
In this case, the term “connection means” of claim 1 has taken as an invocation of 112 f. The corresponding structure from Applicant’s specification could be bolts, rivets, threaded studs or equivalents thereof.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, 4, 12, 16, 23 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Nakayama et al. (USP 4538079).
Regarding claim 1, Nakayama et al. discloses a flywheel comprising
a plurality of discs (fig.2, 14) arranged in a stack, including at least first and second end discs (seen in fig.2) at either end of the stack, each of the plurality of discs including a plurality of disc apertures (seen in figures) therethrough,
first and second plate members (fig.2, interpreted as 21 and the flange portion of 16) disposed at opposing ends of the stack, one or both of the first and second plate members including a plurality of plate apertures (top portion of apertures that are lined up with the apertures in the disc and receive fastener/spacer 15) therethrough for alignment with a corresponding series of disc apertures through the stack, in which one or both of the plate members includes one or more recesses (fig.2, recesses for 24) which are disposed on a disc-facing side thereof and the one of more recesses include a disc-facing surface positioned adjacent to one or more of the plurality of plate apertures (seen in fig.2; the recesses are countersunk on the disc facing side of plate 21 and thus have disc facing surface), and
connection means (15) for clamping the first and second plate members together about the stack of discs, the connection means extending through each of the plurality of disc apertures, in which a spacer or space-filling means (24) is provided along a length of the or each connection means within the stack between the or each connection means and the respective series of disc apertures for supporting an external sidewall of the connection means, the spacer or space-filling means extending from a position within the stack into the one or more recesses of one of the plate members (as seen in fig.2, the spacer extends along a length or rather at least a portion of the connection means within the stack and into the recess).
Regarding claim 2, Nakayama discloses a flywheel as claimed in claim 1, in which the spacer or space-filling means is in the form of a sleeve fitted around the connection means (fig.2, it’s a washer/sleeve type element).
Regarding claim 4, Nakayama discloses a flywheel as claimed in claim 2, in which the sleeve is rigid (sleeves could be interpreted as rigid as they are a solid structure).
Regarding claim 12, Nakayama discloses a flywheel as claimed in any preceding claim 1, in which the connection means includes one or more bolts or threaded studs (15) including a sidewall with an outer surface, and in which a cross section of each bolt or threaded stud is constant (the bolts have a side wall, see fig.2, the cross section is constant).
Regarding claim 16, Nakayama discloses a flywheel assembly comprising one or more flywheels as claimed in any preceding claim 1, the or each flywheel being mounted on or to a drive assembly for facilitating rotation of the or each flywheel for storing energy in or deploying energy from at least one of the flywheels (as described in the background of the disclosure).
Regarding claim 23, Nakayama discloses a flywheel as claimed in claim 1, in which at least one of the plurality of the plate apertures has a minimum width at a first position in one or both of the first and second plate members, at least one of the one or more recesses is disposed at a second position in the one or both of the first and second plate members, wherein the second position is adjacent to the first position, and wherein the second position is closer to the stack of discs than the first position (readily seen in fig.2).
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.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakayama et al. (USP 4538079) in view of Ridley (USP 6250608).
Regarding claim 13, Nakayama fails to disclose flywheel as claimed in claim 12, in which each bolt or threaded stud is hollow.
Ridley teaches and/or suggests the use of a threaded hollow bolt or sleeve (50). Note this solves the same problem of securely fastening elements together.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have simply substituted the bolt utilized in Nakayama with a hollow bolt as taught/suggested in Ridley as doing so would provide the same predictable result of securely fastening the elements together. This would also have the added benefit of providing a lighter fastener in weight.
Allowable Subject Matter
Claims 3, 5, 6, 7, 9, 10, 11, 15, 17, 18, 21, 22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 8 is allowed.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 2, 4, 12, 13, 16, 23 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. Regarding the 103, there is no explicit reason why the bolts couldn’t be simply substituted as they perform the same functionality. Arguments regarding the claim interpretation are not persuasive as the recitation is written in 112 f format and meets the three prong test and in addition the elements recited by Applicant in the arguments pertain to the prior art not their invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
USP 4538079 is of particular relevance because it could be readily used to teach the aspect of a counter sunk recess in a plate member which has a spacer therein.
GB 520513 A also shows the use of a spacer means or key 3 which is also disposed in counter sunk regions of plate members (see fig.1). This reference in particular may be applicable to a lot of claims dependent on any changes in scope made.
JP 2005102460 A is relevant to using a set material around a bolt.
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 THOMAS C DIAZ whose telephone number is (571)270-5461. The examiner can normally be reached M-F 9am-6pm.
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/THOMAS C DIAZ/Primary Examiner, Art Unit 3617