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.
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:
“thermal conversion unit”
“position measurement device”
The aforementioned limitation meets the three-prong test outlined herein since:
the term “unit” is a generic placeholder, (B) the generic placeholder is modified by functional language (e.g. “thermal conversion”), and (C) the generic placeholder is not modified by sufficient structures, material or acts for performing the claimed function.
the term “device” is a generic placeholder, (B) the generic placeholder is modified by functional language (e.g. “position measurement”), and (C) the generic placeholder is not modified by sufficient structures, material or acts for performing the claimed function.
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.
A review of the specification shows that the following appear to be the corresponding structures for the aforementioned 112(f) limitation(s):
The specification defines thermal conversion unit, “a thermal conversion unit 10 includes a metal plate 11 and a metal wire 12, and these portions have a thermal conversion function”. Therefore, the thermal conversion unit will be construed as a metal plate and a metal wire, and/or equivalents thereof.
The specification defines position measurement device, “The thermal conversion system according to the embodiment includes a Global Positioning System (GPS) 35 that functions as a position measurement device,”. Therefore, the position measurement device will be construed as a Global Positioning System (GPS), and/or 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
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the vicinity". There is insufficient antecedent basis for this limitation in the claim. To expedite prosecution, Examiner interprets the above to read as "a vicinity".
Claims 2-6 are rejected at least insofar as they are dependent on rejected claim(s), and therefore include the same error(s).
Claim 7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 recites the limitation "the vicinity". There is insufficient antecedent basis for this limitation in the claim. To expedite prosecution, Examiner interprets the above to read as "a vicinity".
Claim 7 recites the limitation " the water surface ". There is insufficient antecedent basis for this limitation in the claim. To expedite prosecution, Examiner interprets the above to read as "a water surface ".
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.
Claims 1, 5, and 6 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by OTSUBO (JP2022026899A: Machine Translation is provided by Examiner).
Regarding claim 1, OTSUBO teaches a thermal conversion system (see Figures 2 and 3) comprising: a float (1) floating on water (5); and a thermal conversion unit (the thermoelectric conversion type power generation device of 4a: see ¶ [10]) connected to the float (1) and configured to connect the vicinity of a water surface and a predetermined water depth by a medium (i.e. thermoelectric conversion material) that has thermal conductivity (see ¶¶ [24-26]).
Regarding claim 5, OTSUBO further teaches further comprising: a position measurement device configured to measure a geographical position of the float; and a propulsion unit configured to move the float to a predetermined geographical position based on the geographical position measured by the position measurement device (OTSUBO indicated in ¶ [51] that the system further comprises a device for self-sustaining navigation of the structure which inherently configured to measure a geographical position of the float and includes a propulsion unit configured to move the float to a predetermined geographical position based on the geographical position measured by the position measurement device).
Regarding claim 6, OTSUBO further teaches further comprising: a solar panel configured to convert solar energy into electric power; and a battery configured to supply the electric power generated by the solar panel to the position measurement device and the propulsion unit (OTSUBO indicated in ¶ [47, 48, and 51] that the system includes renewable energy type power generation device ( i.e. solar power generation devices) which inherently includes solar panel for providing electric energy for the system and a power storage device (i.e. a battery)).
Claim 7 is rejected under 35 U.S.C. 102(a) (1) as being anticipated by OTSUBO (JP2022026899A: Machine Translation is provided by Examiner).
Regarding claim 7, OTSUBO teaches a thermal conversion method (see ¶¶ [10 and 24-26] ) comprising: cooling the vicinity of the water surface by a thermal conversion unit (the thermoelectric conversion type power generation device of 4a: see ¶ [10]) that has thermal conductivity by transmitting heat in the vicinity of the water surface to a predetermined water depth (see in ¶¶ [24-26] where OTSUBO teaches lowering the water temperature near the surface via the cooling device 2).
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.
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 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over OTSUBO (JP2022026899A: Machine Translation is provided by Examiner) as applied to claim 1 above, and further in view of Nakagawa (US20170338393A1).
Regarding claim 2, OTSUBO does not teach wherein the thermal conversion unit includes a metal plate disposed in the vicinity of the water surface and a metal wire extending from the metal plate in a water depth direction.
However, it’s old and well known in the art for thermal conversion systems to use a metal plate and wire type of thermal conversion unit, as evidenced by Nakagawa, see Nakagawa’s Figures 4A-4C where thermal conversion device (1) includes a metal plate (3A) disposed in the vicinity of the water surface (i.e. water surface of 5) and a metal wire (3) extending from the metal plate (3A) in a water depth direction (see Figures 4A-4C and ¶¶ [0038 & 0043]).
It would, therefore, have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the thermal conversion unit of OTSUBO with a metal plate disposed in the vicinity of the water surface and a metal wire extending from the metal plate in a water depth direction, since as evidenced by Nakagawa, such provision was old and well-known in the art, and would provide the predictable benefit of increasing the heat transfer rate by increasing the surface area of the thermal conversion unit.
Regarding claim 3, OTSUBO in view of Nakagawa does not teach wherein a cross-sectional shape of the metal wire is polygonal.
However, there is no evidence of record that establishes that changing the cross-sectional shape of the metal wire would result in a difference in function of the OTSUBO in view of Nakagawa system. Further, a person having ordinary skill in the art, being faced with modifying the cross-sectional shape of the metal wire of OTSUBO in view of Nakagawa, would have a reasonable expectation of success in making such a modification and it appears the device would function as intended being given the claimed cross-sectional shape. Lastly, applicant has not disclosed that the claimed cross-sectional shape solves any stated problem, indicating that the cross-sectional shape “may” be polygonal, and offering other acceptable cross-sectional shapes (e.g., circle, specification at paragraphs. [0012 and 0021]) and therefore there appears to be no criticality placed on the cross-sectional shape of the metal wire as claimed such that it produces an unexpected result.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the cross-sectional shape of the metal wire of OTSUBO in view of Nakagawa to have polygonal shape as an obvious matter of design choice within the skill of the art.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over OTSUBO (JP2022026899A: Machine Translation is provided by Examiner) as applied to claim 1 above, and further in view of Hideki (JP-H02240533-A: Machine Translation is provided by Examiner).
Regarding claim 4, OTSUBO teaches further comprising: a temperature sensor configured to sense a temperature in water without any particular restrictions on the types of the temperature sensors.
OTSUBO does not specifically teach that the temperature sensor is an optical fiber type of temperature measurement device. Therefore, OTSUBO does not teach an optical fiber configured to sense a temperature in water; and a temperature measurement device configured to measure a temperature sensed by the optical fiber.
However, it’s old and well known in the art to use optical fiber type of temperature measurement device in underwater applications, as evidenced by Hideki, see Hideki’s Figures 1-4 and where the temperature measurement device comprises an optical fiber (12) configured to sense a temperature in water and a temperature measurement device (6) configured to measure a temperature sensed by the optical fiber (see ¶ [0001]).
It would, therefore, have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the system of OTSUBO with the temperature sensor configured to sense a temperature in water without any particular restrictions on the types of the temperature sensors, since as evidenced by Hideki, such provision was old and well-known in the art, and would provide the predictable benefit of improving the temperature measuring time underwater where the water temperature distribution in a depth direction can also be continuously measured during the navigation of OTSUBO’s float.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHALED AL SAMIRI whose telephone number is (571)272-8685. The examiner can normally be reached 10:30AM~3:30PM, M-F (E.S.T.).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jianying Atkisson can be reached at (571) 270-7740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KHALED AHMED ALI AL SAMIRI/ Examiner, Art Unit 3763 /JOEL M ATTEY/Primary Examiner, Art Unit 3763