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 Rejections - 35 USC § 112
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 1, 3 – 6, 8 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.
Claim 1 discloses cylindrical members moving and a mechanical to electrical energy conversion member configured to movie in water. It is not clear what is moving in the water, the mechanical to electrical conversion member (e.g., generator) or the cylindrical members. It is also not clear what is driving the cylinders to move or how the generator is driven (cylinder movement or water).
It is not clear how the water is move in and where or into what component the water is being moved into (e.g., cylinders or any other component).
It is not clear how the different components interact with each other.
Claims 3 – 6, 8 are rejected due to their dependency on claim 1.
In order to advance prosecution in the merits, the Prior Art will be applied
as best understood by the examiner.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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, 5, 6, 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kenney (US 2008/0224477) or Horianopoulos et al (US 2007/0085342), hereafter refers as “Hori” or Windle (US 4,883,411).
Kenney discloses, regarding,
Claim 1, An apparatus for harvesting energy, the apparatus comprising: a mounting member 201; a plurality of cylindrical members 205 vertically oriented in a patch formation (see Fig. 2), an upper end of each of the plurality of cylindrical members being coupled to the mounting member (see Fig. 2); a securing member (spring, see Fig. 2) flexibly coupling the plurality of cylindrical members (piston 205) to the mounting member (via bottom surface/support 204); and a mechanical-to-electrical energy conversion member 206 configured to move in water (moving an equivalent element, liquid via hydraulic lines to drive a generator 106, 108; see Fig. 1) in response movement of the patch formation of the plurality of cylindrical members, thus generating electricity (via elements 106, 108).
It is noted that to the very broad claims, the following prior art applies.
Hori discloses regarding,
Claim 1, An apparatus for harvesting energy, the apparatus comprising: a mounting member 136, 156, 120 (see annotated Fig. 1 below and Fig. 2); a plurality of cylindrical members 134, 126 vertically oriented in a patch formation (see Fig. 2), an upper end of each of the plurality of cylindrical members being coupled to the mounting member 136, 156, 120; a securing member 132 flexibly coupling the plurality of cylindrical members to the mounting member (see Fig. 1); and a mechanical-to-electrical energy conversion member 114, 118 configured to move in water (equivalent element “fluid”; see abstract) in response movement of the patch formation of the plurality of cylindrical members (see abstract), thus generating electricity.
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Windle discloses, regarding,
Claim 1, An apparatus for harvesting energy, the apparatus comprising: a mounting member 22; a plurality of cylindrical members 40 (cylinders going into elements 24, 26; see annotated Fig. 1 below) vertically oriented in a patch formation (see Fig. 1), an upper end of each of the plurality of cylindrical members being coupled to the mounting member 22 ; a securing member 86 flexibly coupling the plurality of cylindrical members to the mounting member 22 (see Fig. 1; column 8, lines 44 – 46); and a mechanical-to-electrical energy conversion member 20, 110 configured to move in water (via pipe 112) in response movement of the patch formation of the plurality of cylindrical members (column 20, line 43 – column 21, line 15), thus generating electricity (via element 110).
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The Prior Art further discloses, regarding,
Claim 5, the securing member is selected from the group consisting of elastic, a linear spring, and a torsional spring (Kenney, Fig. 2; Hori, Fig. 1; Windle, Fig. 1; column 8, lines 44 – 46).
Claim 6, the mechanical-to-electrical energy conversion member is selected from the group consisting of an electric generator (Windle, element 110, Hori, element 148, Kenney, element 108) , piezo-electric material, wind turbine, pelton wheel, and a hydraulic pump.
Claim 8, the mechanical-to-electrical energy conversion member is coupled to the mounting member (Kenney, see Fig. 1; Hori, see Fig. 1; Windle, see Fig. 1).
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kenney or Hori or Windle in view of Gredy (US 2001/0036782).
The above Prior Art discloses all of the elements above. Gredy is further mentioned for explicitly showing that it is well-known to have a flexible securing member.
Gredy discloses, regarding,
Claim 5, the securing member 104 is selected from the group consisting of elastic [0024], a linear spring, and a torsional spring.
It would have been obvious before the effective filing date of the claimed invention to design the apparatus as disclosed by Kenney or Hori or Windle and to modify the invention per the limitations disclosed by Gredy for the purpose of providing an anchoring device that is secure and robust for a water placement device.
Claim(s) 3, 4, 6, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kenney or Hori or Windle in view of Santos (US 2016/0186717).
Kenney or Hori or Windle discloses all of the elements above. However, the mentioned Prior Art does not disclose the material of the mounting member.
On the other hand, Santos disclose, regarding,
Claim 3, the mounting member comprises a corrosion resistant material [0069].
Claim 4, the corrosion resistant material is selected from the group consisting of stainless steel [0069], aluminum, copper [0069], bronze, brass, galvanized steel, copper steel, alloy steel, polypropylene, polytetrafluorethylene (PTFE), polyvinyl chloride (PVC), and high-density polyethylene.
Claim 6, the mechanical-to-electrical energy conversion member is selected from the group consisting of an electric generator [0063, 0064], piezo-electric material, wind turbine, pelton wheel, and a hydraulic pump.
Claim 8, the mechanical-to-electrical energy conversion member is coupled to the mounting member (Figs. 1 – 7; 0066, 0068).
It would have been obvious before the effective filing date of the claimed invention to design the apparatus as disclosed by Kenney or Hori or Windle and to modify the invention per the limitations disclosed by Santos for the purpose of reliably controlling a power system.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3 – 6, 8 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.
It is further noted that the claim language is very broad.
Conclusion
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 Julio C. Gonzalez whose telephone number is (571)272-2024. The examiner can normally be reached M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abdullah Riyami can be reached at 5712703119. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Julio C. Gonzalez/
Primary Examiner
Art Unit 2831
September 9, 2026
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