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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/07/2026 has been entered.
Response to Arguments
Applicant’s arguments filed 04/07//2026, with respect to the Status of Specification have been fully considered and are persuasive. The New Matter of the specification of Office Action dated 10/07/2025 has been withdrawn.
Regarding the 101 & 112(a) Rejection –
The applicant states
As now explicitly recited in amended claim 1: the battery/inverter subsystem “a” provides power only during a starting phase; and after the starting phase, the system operates based on: mechanical energy generated by the reciprocating piston assemblies, and electrical energy generated by the PMG from that mechanical input.
The battery is therefore not the primary energy source, “b” but merely a startup facilitator, analogous to a starter motor in conventional engine systems.
Applicant also submits that the amended claims now expressly recite: "the
reciprocating movement of the piston rotates the shaft to provide the mechanical energy input", which is a critical clarification. “c” The system is not a "battery-powered closed loop," but rather: a mechanically driven system in which energy is generated through physical interactions (magnetic forces and spring dynamics), converted into rotational motion, and then converted into electrical energy. Importantly, Applicant submits that Energy generation = Energy conversion.
Applicant further submits that the Examiner equates "external energy source" exclusively with: grid connection; solar panels; fuel input, however, the claimed system derives energy from: magnetic interaction forces, and spring-based mechanical energy storage and release, and these are physical energy domains, not abstract or nonexistent sources. “d” The amended claims do not require grid input because: the system is self-contained but not energy-creating, and energy is converted from mechanical interactions within the system architecture.
The examiner respectfully disagrees with the applicant. The applicant statements:
“a” provides power only during a starting phase
“b” but merely a startup facilitator, analogous to a starter motor in conventional engine systems.
“c” The system is not a "battery-powered closed loop," but rather: a mechanically driven system in which energy is generated through physical interactions (magnetic forces and spring dynamics), converted into rotational motion, and then converted into electrical energy.
“d” The amended claims do not require grid input because: the system is self-contained but not energy-creating, and energy is converted from mechanical interactions within the system architecture
The applicant’s invention claims a self-sustained and not connected to any grid (refer to d above), is started by a battery (refer to a-b above), and continue to operate by magnetic forces (refer to “c” above). This is the definition of the well-known perpetual motion machine and the basis of rejection by the Office.
The applicant states, “the Examiner's rejection is premised on the assumption that the claimed system lacks any energy input and attempts to generate energy indefinitely. This premise is no longer correct in view of the amended claims. Applicant submits that the amended claims explicitly recite mechanical energy input. For instance, amended claim 1 recites: "...the reciprocating movement of the piston rotates the shaft to provide the mechanical energy input to the at least one permanent magnet generator..." Thus, the claimed energy-generating system of the instant Application is to be properly understood as: mechanical energy -> rotational energy -> electrical energy (PMG), which is a recognized electromechanical conversion architecture, not a perpetual motion system.”
The examiner respectfully disagrees with the applicant. The applicant’s “reciprocating movement of the piston rotates the shaft to provide the mechanical energy input to the at least one permanent magnet generator” would not continue operating after start-up.
The applicant states, “Further, Applicant submits that the Examiner asserts that the system would only perform "a portion of one cycle," however this assertion is contradicted by the evidentiary record: Annexure C - physical prototype of the system; Annexure D - visual evidence of operation; Annexure E (Rule 132 Declaration) - sworn statement confirming that the system operates and supplies real electrical loads. The Declaration explicitly establishes that the system operates beyond an initial cycle and produces usable electrical output, and this constitutes credible evidence of operability.”
The examiner respectfully disagrees with the applicant. In annexure A “based on values disclosed in the specification (Purpose section)” & “defined conditions (test protocol)”, the specification does not provide any values or conditions. Moreover, the “startup phase” is energized by a battery pack which would start the operation but would not get to the “transition-state phase or steady-phase” because NO system can be “receiving the generating electrical energy” as stated in the previous paragraphs, relying on the laws of thermodynamics. Moreover, in the applicant’s Annexure B (1st Paragraph) also states, “It produces continuous clean electricity WITH NO NEED FOR ANY EXTERNAL ENERFY SOURCE” is the foundation of the Examiner’s rejection and is the definition of a perpetual motion machine. Additionally, regarding the remaining “Annextures & Declaration” are not persuasive because of the basis of the rejection previously stated.
The applicant states, “Applicant submits that PMG does not power itself in response to the Examiner' s statement, which assumes: electrical output of the PMG is the sole source sustaining operation. Applicant disagrees with the said statement and submits that the claims, as amended, establish: PMG output is derived from mechanical rotation; mechanical rotation is derived from piston-driven shaft motion. Thus, the PMG is powered by mechanical input, and not by its own electrical output.”
The examiner respectfully disagrees with the applicant. A mechanical source is not an electrical source. No system operated with “a mechanical source” continuously without any output ELECTRICAL power source.
The applicant states, “Applicant submits that the mechanical system provides ongoing energy input, which is clarified in the claims and specification, where reciprocating pistons -> generate motion; motion -> drives the shaft; and then, the shaft -> drives the PMG. Thus, Applicant submits that continued operation depends on mechanical dynamics, not battery depletion.”
The examiner respectfully disagrees with the applicant. Here is another example of the applicant’s stating “operation depends on mechanical dynamics, not battery depletion” where it is well-known that NO system is capable for the same reasons stated above and previous and current Office Actions.
The applicant states, “While Applicant agrees that a battery is finite, and that a battery alone cannot sustain indefinite operation, however, Applicant submits that this is not the claimed mode of operation of the present invention as claimed in the amended claims of the instant Application.”
The examiner respectfully disagrees with the applicant. The applicant’s amendment is “wherein a generator converts mechanical energy to electrical energy (claim 1, lines 3-5); wherein a battery is an external source to power the system to start the system (claim 1, lines 18-22); wherein an automatic voltage regulator receives electrical energy by the electrical energy created by the generator (claim 1, lines 25-32).” The applicant’s amendment(s) describes the same system powering itself which violates the laws of thermodynamics.
The applicant states, “With respect to the Examiner's rejection of the claimed system being an alleged "closed-loop" system, Applicant has submitted and shown above that the premise is no longer applicable since, the amended claims now expressly recite: mechanical energy generated by reciprocating piston assemblies; transmission of that energy via a shaft; and conversion of that energy by the PMG, and particularly the amended claim 1 explicitly recites the limitation that "the reciprocating movement of the piston rotates the shaft to provide the mechanical energy input", and this establishes a clear mechanical energy source internal to the system architecture, derived from: magnetic interaction forces, and spring- mediated mechanical energy storage and release.
The examiner respectfully disagrees with the applicant. All the mentioned component mentioned and amended in the claim are part of the same closed system, meaning that they are not connected to a grid or other energy sources (as stated several times by the applicant such as in elements a-d above).
The applicant states, “Further, Applicant submits that independent claim 1 has been amended to: explicitly recite mechanical energy input generated via reciprocating piston assemblies and transmitted through a shaft; clarify that the permanent magnet generator (PMG) converts mechanical energy into electrical energy; define the battery and inverter strictly as startup components; define the automatic voltage regulator (AVR) as a distribution/regulation component receiving generated electrical energy; and remove all previously objected language. In addition, Applicant relies on the following previously submitted evidence:
The examiner respectfully disagrees with the applicant. As stated by the applicant “receiving the generating electrical energy”, meaning that the present invention operates under the generated electrical energy is the well-known definition of a perpetual motion machine. Moreover, a battery is a finite electrical energy source that eventually would not be charged without another electrical energy source.
The applicant states –
Annexure A - Technical Appendix (test protocol + engineering calculations); Annexure B - Technical write-up explaining operation and use; Annexure C - Photographs of working prototype;
Annexure D - Screenshots from video showing operation under load; and Annexure E - Declaration under 37 C.F.R. § 1.132 confirming operability and load output. These materials directly address and rebut the Examiner's concerns regarding operability and physical plausibility.
The examiner respectfully disagrees with the applicant. In annexure A “based on values disclosed in the specification (Purpose section)” & “defined conditions (test protocol)”, the specification does not provide any values or conditions. Moreover, the “start-up phase” is energized by a battery pack which would start the operation but would not get to the “transition-state phase or steady-phase” because NO system can be “receiving the generating electrical energy” as stated in the previous paragraphs, relying on the laws of thermodynamics. Moreover, in the applicant’s Annexure B (1st Paragraph) also states, “It produces continuous clean electricity WITH NO NEED FOR ANY EXTERNAL ENERFY SOURCE” is the foundation of the Examiner’s rejection and is the definition of a perpetual motion machine. Additionally, regarding the remaining “Annextures & Declaration” are not persuasive because of the basis of the rejection previously stated.
The applicant states “… Applicant submits that the original specification (as further clarified in Annexure B) explains: how magnetic repulsion generates force; how springs store and release energy; how reciprocation is established; how motion is converted into shaft rotation; how rotational energy drives the PMG; and how electrical energy is produced and routed. This provides a complete functional and operational pathway.
The examiner respectfully disagrees with the applicant. Based on the laws of thermodynamics no system can operated with ANY EXTERNAL ENERFY SOURCE, including the applicant’s “magnetic repulsion generating force”. The applicant’s “battery” would start the process, but the operation would eventually stop since a battery is a finite electrical source.
The applicant states, “Accordingly, Applicant also submits that enablement is fully satisfied for the amended claims of the instant Application since, the original specification provides detailed disclosure of: piston assemblies; magnetic interaction mechanisms; spring-based motion; shaft coupling; generator integration; and AVR and electrical routing. A POSITA would readily be able to: construct the system, and operate it as claimed without undue experimentation.”
The examiner respectfully disagrees with the applicant. The rejection is based that the applicant’s invention is inoperable under the circumstances previous stated and previous office actions. The present invention appears to be a perpetual motion machine that operates under “magnetic repulsion force”.
The applicant states, “electrical output corresponds to mechanical input conditions; no assumption of energy creation is required. This directly rebuts the Examiner's assertion that the system implies energy output without input. Thus, Annexure A provides test methodology; measurable parameters; and system behavior under operation. This assists a POSITA in: validating system performance; and understanding operational constraints.”
The examiner respectfully disagrees with the applicant. Saying “electrical output corresponds to mechanical input conditions” may describe a conversion process, but it does not answer the central question; is there an external energy source or energy loss? Moreover, considering that all power electrical outputs in similar systems, including the present invention, have energy losses.
The applicant states, “Applicant specifically submits that Annexure E, Declaration under 37 C.F.R. §1.132 provides a sworn declaration confirming that: the system has been constructed and tested; the system operates as described; the system delivers electrical energy to real loads; and the observations are based on actual experimental results. This declaration constitutes competent evidence of operability under USPTO practice.
The examiner respectfully disagrees with the applicant. The rejection is not whether a machine (including the applicant’s present invention) works or not, but whether the asserted result is credible in light of laws of thermodynamics. The examiner’s position is that no machine can operate indefinitely without ANY EXTERNAL ENERFY SOURCE, including the applicant’s “magnetic repulsion generating force”. A battery will start the process as claimed but would not continue operating.
THEREFORE, it is the examiner’s opinion that the applicant’s system is a perpetual motion machine.
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, 3 & 5-13 are rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks utility; furthermore, what appears to be Applicant’s assertion of specific and substantial utility for the invention is not credible.
Applicant appears to assert specific utility of the claimed invention Specification filed 09/17/2024) as follows:
Page 3, Lines 22-27 – “Further, the at least one automatic voltage regulator may be configured for powering the at least one drive system after the starting phase based on the electrical energy receivable by the at least one automatic voltage regulator from the at least one permanent magnet generator. Further, the driving of the at least one permanent magnet generator after the starting phase may be based on the powering of the at least one drive system after the starting phase.”
Page 13, Lines 27-34 – “Further, the Newcomen dual PMG may not require any AC coupled or battery bank on or off-grid which saves money and improves safety. Further, the on-demand renewable energy generator may operate on-demand 24/7 365 days regardless of the environment. Further, the on-demand renewable energy generator may not require fuels, nuclear, sun, wind, or water to operate and may produce electricity at an efficiency greater than 85%. Further, the on-demand renewable energy generator has the highest efficiency in renewable electricity and or public utilities on the earth today.”
Page 14, Lines 20-26 – “Further, a radial flux rare earth permanent magnet generator (PMG) may be synchronous, where the rotor windings have been replaced with permanent magnets for eliminating the excitation losses in a rotor, otherwise, typically 20 to 30 percent of the total generator losses may happen and leads to considerable higher part-load efficiency for the PMG compared to asynchronous generators. Further, the performance features may include a brushless structure, free maintenance, and electrical efficiency of 85%.”
Thus, it appears the Applicant’s asserted utility is an “energy generating system that produces power by the at least one permanent magnet generator, may operate on-demand 24/7 365 days regardless of the environment, and may not require any AC coupled or battery bank on or off-grid and may not require fuels, nuclear, sun, wind, or water to operate and may produce electricity at an efficiency greater than 85%.”
However, after careful and considered examination of the above asserted utility and the claimed structure, the device, as disclosed and claimed, would appear to be inoperative and a person skilled in the art would not consider the asserted utility as credible. See MPEP § 2164.
As best understood, and with particular attention to Figures 1-2, 15-17 & 27, the invention is understood to allegedly function as follows. The energy is allegedly generated by magnets FIG. 2:240 & 242 reciprocated by shafts FIG. 2:234 & 236 and springs FIG. 2:214 & 216, transitioning from an extended state to a compressed state based on the moving of the piston FIG. 2:206 and 208 within the cylinder FIG. 2:202 and 204.
However, it appears that, rather than operating as described, the system will not operate at all, or, if it does, it would only perform a portion of one cycle.
The system as claimed and disclosed is a closed system (i.e., no input of external energy is set forth in the claims or appears to be disclosed) describing at least one permanent magnet generator: conversion from potential energy (i.e., potential energy of magnets in an extended state to a compressed state by springs) to kinetic energy (i.e., kinetic energy of reciprocating magnets by springs), kinetic energy to mechanical energy (i.e., rotational energy of shaft(s)), allegedly “causing rotation of the generator(s) to generate electricity)”, electrical energy back to mechanical energy (i.e., rotational energy of shaft(s) and finally mechanical energy to potential energy (magnets in an extended state to a compressed state by springs), repeating the cycle 27/7, 365 days regardless of the environment. Further, the on-demand renewable energy generator may not require fuels, nuclear, sun, wind, or water to operate and may produce electricity at an efficiency greater than 85%.
All energy conversions taking place in the real world—i.e., those which are not “ideal” or theoretical—incur energy losses. Here, too, each conversion taking place will necessarily incur energy losses. Thus, even if a total electrical energy extracted from the system will be significantly less than the total potential energy originally present in the system. Said differently, there will be a net loss of energy when operating the system through even one “power producing cycle”.
Even, in arguendo, if the generating system’s least one permanent magnet generator was to be started by the starting phase, though some electrical energy is generated, thereby actuating one or more permanent magnet generator, there would not be enough electrical energy produced to continue the operation; thus, ultimately, any energy produced by the system would be less than the energy needed to run it.
Indeed, to operate the system continuously—i.e., “24/7/365” as appears to be alleged—the system would require an input of energy rather than providing any output of “electricity”. The system, as described and claimed, will therefore not “generate electrical energy” but will rather consume energy to operate on a continuous basis. However, the disclosure fails to show any source of external power, and therefore it is presumed that the power supposedly produced by the electrical generator(s) is the sole source of energy used to run the “least one permanent magnet generator”. This effectively makes the claimed device a “perpetual motion machine.”
There is no system or machine known in the art, which would operate without an input of power or fuel. Such a device teaches against the Law of Conservation of Energy. The attempts to create such a device have received the name of “perpetual motion” machines. The instant case is a similar attempt to claim a structure, which can be considered only as a “perpetual motion machine” because the asserted utility of the claimed invention is an attempt to generate a mechanical power without any initial source of power.
The principle of the Conservation of Energy denies the possibility of “perpetual motion” devices. The term “perpetual motion device” is understood by the examiner as:
(I) a device having an arrangement in which energy, in any one form, can be produced without energy, in some other form, being provided to and used by the device;
(ii) a device which could be made to perform work for an indefinite time (thus giving out energy) without being supplied with or consuming external energy; and/or
(iii) a device capable of producing more energy than what it requires to operate.
In this particular case, the claimed invention alleges, at least, to be capable of performing work for an indefinite time—i.e., operating “24/7/” by “providing a continuous reciprocating magnets in the least one permanent magnet generator to produce the desired amount of energy without requiring fuel, nuclear energy, sun, wind, or water, providing the kinetic force” (i.e., ii above); and of “produc[ing] electrical energy”—i.e., producing more energy than what it requires to operate (i.e., iii above).
A person skilled in the art must consider the utility of this type of structure only as “incredible in view of contemporary knowledge” since it contradicts the laws of thermodynamics. In re Gazzve, 379 F.2d 973, 978, 154 USPQ 92, 96 (CCPA 1967).
Applicant has not provided any evidence that the claimed structure will perform as stated, i.e., that the device will be able to generate electrical power on a sustained basis.
When a patent applicant presents an application describing an invention that contradicts known scientific principles, or relies on previously undiscovered scientific phenomenon, the burden is on the examiner simply to point out this fact to the applicant. The burden shifts to applicant to demonstrate that his invention, as claimed, is either operable or does not violate said basic scientific principles, or those basic scientific principles are incorrect. As stated by the Patent Office Board of Appeals, Newman v. Quigg 681 F. Supp. 16, at 18, 5 U.S.P.Q. 2d 1880 (1988).
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 & 5-13 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.
Regarding Claims 1, 3 & 5-13, see the Claim Rejections – 35 USC § 101 section above for further discussion.
Conclusion
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/JOSEPH ORTEGA/Primary Examiner, Art Unit 2834
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