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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show the functionality of the invention. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.83(b) because they are incomplete. 37 CFR 1.83(b) reads as follows:
When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because the Figures 1 – 3 introduced new matter (e.g., inverters for the panel and wind turbine, positioning of the panels with respect to the wind turbine) that was not originally disclosed at the time the application was filed. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because the Figures lack labels (e.g., Figure 1) and the figures contain dark areas. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 3 – 11 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.
The below claims disclose NEW MATTER.
Claim 3 discloses that bifacial solar panel and simple transparent panel are fitted around the wind turbine to deflect wind towards the wind turbine. The originally disclosure does not explain or show or identify which were the bifacial solar panel and which were the simple panels fitter around the wind turbine. From the original disclosure, it is unclear which are the panels deflecting the air and which are not. The original disclosure also does not explain or disclose which solar panels (bifacial or simple) are supposed to be attached to the upper/lower base of the wind turbine and which are not.
Claim 4, the original disclosure does not mention in any way, how the position of the solar panels is to be changed (manually or electronically).
Claim 5, the optimization of the solar panels via tracking system using data and calculations was not originally disclosed by the disclosure at all.
Claim 6, the original disclosure does not mention anything about using calculation related to the sun, air speed and direction taken into account.
Claim 7, no inverter is disclosed by the original disclosure at all.
Claim 9, the original disclosure does not mention that the bifacial panels are indeed, the ones being positioned in an east-west relationship and/or that the simple panels are placed in a north-south relationship.
Claim 10, no mention of a battery is disclosed at all by the original disclosure.
Claim 11, no mention of positioning the solar panels at an inclination angle so at to act as a solar collector and aerodynamic element to increase the airflow for the rotor is mentioned at all by the original disclosure.
Moreover, the present disclosure does not explain how the solar panels would be able to interact with the wind turbine or if the power collected from the panel would be combined with the power from the wind turbine or if both power sources (wind and solar) function independently from each other. It is not clear how the panels would be adjusted or what device is adjusting the panels or what variables are taken into consideration for adjusting the panels or how and what device are deflecting the panels. The present disclosure does not explain what variables and constant are taken into account for changing/deflecting the angles of the panels.
Just reciting that a person skilled in the art would be able to practice the present invention without recourse to undue experimentation as described in the specifications is not enough proof that a system would function as intended. Furthermore, in Atmel Corp, v. Information Storage Devices, Inc., 198 F.3d 1374, 1380[, 53 USPQ2d 1225, 1230] (Fed. Cir. 1999), the court embraced the proposition that ‘consideration of the understanding of one skilled in the art in no wav relieves the patentee of adequately disclosing sufficient structure in the specification.’
It is not enough for the patentee simply to state or later argue that persons of ordinary skill in the art would know what structures to use to accomplish the claimed function. The court in Biomedino, LLC v. Waters Technologies Carp, 490 F.3d 946, 953[, 83 USPQ2d 1118, 1123] (Fed. Cir. 2007), put the point this way: "The inquiry is whether one of skill in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing that structure."
It is reminded that it is a MPEP requirement to provide a full and concise explanation/disclosure of a patent application.
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 3 – 11 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.
In claim 1, the statement “simple transparent panel” is vague. It is not clear what would be the difference between the simple panel and the bifacial panel. It is reminded that a bifacial solar panel can be considered a “simple panel”. It is not clear if the simplicity of the “simple panel” is related to the material choice design or any other factor. The disclosure is silent with such respect.
In claim 7, the statement “the solar panel” and “the turbine” lack antecedent basis.
In claims 10, 11, the statement “the solar panel” lack antecedent basis.
Also, the statement “thereby reducing battery requirement” is indefinite since it is not clear if the apparatus claim is relaying on an inherent method operation of a battery or the system.
In order to advance prosecution in the merits, the Prior Art will be applied
as best understood by the examiner.
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) 3 – 6, 8 – 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gilbert (US 2008/0047270) in view of Chentnik et al (US 2020/0343852).
Gilbert discloses regarding,
Claim 3, A hybrid system comprising: a wind turbine (see abstract); and air deflectors having bifacial solar panels 40 and simple transparent panels 50, fitted around the wind turbine to deflect wind towards the wind turbine (see Fig. 1), the solar panels being fixed in an upper base (upper panels 40; see Fig. 1) and a lower base of the wind turbine (lower panels being installed on lower part of the frame or blade; see Figs. 1, 2).
Chentnik et al is being cited for the purpose of showing explicitly that having a wind turbine [0029, 0111] using bifacial solar panels 14 and simple transparent panels [0061, 0097, 0112, 0114; see Figs. 1, 11, 12, 13] and the panels are fixed in an upper and lower base of the wind turbine (see Figs. 11, 12, 13).
Chentnik et al further discloses, regarding,
Claim 4, the position of the solar panels can be changed manually or electronically to receive optimized solar radiation [0133, 0054].
Claim 5, to electronically change the position the solar panels, calculations are used that account for conservation of momentum and the angle of incidence equaling the angle of reflection; and the solar panels are configured to be moved into an optimized position using a mechanical vehicle that uses a track and is controlled using data obtained from the calculations [via tracker; 0137, 0055, 0116].
Claim 6, the calculations also relate to: sun position; and air speed and direction [0063, 0065, 0066, 0133].
Claim 8, the bifacial solar panels of the hybrid system consists of one pair of bifacial solar panels; and the simple transparent panels of the hybrid system consists of one pair of simple transparent panels (see Figs. 1, 2, 11).
Claim 9, the air deflectors having the pair of bifacial solar panels have a substantially east-west orientation (see Fig. 11; paragraphs 0054, 0135); and the air deflectors having the pair of simple transparent panels have a substantially north-south orientation (see Figs. 11, 13).
Claim 10, the solar panels are arranged side-by-side in a substantially east-west orientation see Fig. 11; paragraphs 0054, 0135), providing optimized solar exposure with a morning yield peak and an evening yield peak (since a tracking system is used; 0137, 0055, 0116), thereby reducing battery requirements for storing electricity generated by the hybrid system (due to the tracking system optimizing the sun exposure; 0116, 0137).
Claim 11, solar panels are positioned at an inclination relative to the wind turbine so as to act both as solar energy collectors and as aerodynamic elements that increase the airflow directed to the turbine rotor (see Gilbert, Fig. 1; Chentnik et al, Fig. 11).
It would have been obvious before the effective filing date of the claimed invention to design the hybrid system as disclosed by Gilbert and to modify the invention per the limitations disclosed by Chentnik et al for the purpose of increasing the energy output of a power installation.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gilbert and Chentnik et al as applied to claim 3 above, and further in view of Seymour et al (US 2021/0363651).
The combined system discloses all of the elements above.
Seymour et al is being cited for explicitly showing regarding,
Claim 7, the solar panels 116 are connected to an electrical grid via a first inverter 108; and the turbine 114 is connected to the electrical grid via a second inverter 115 (see Fig. 1).
It would have been obvious before the effective filing date of the claimed invention to design the combined hybrid system as disclosed above and to show explicitly per the limitations disclosed by Seymour et al for the purpose of providing a constant power output to a grid.
Response to Arguments
Applicant’s arguments with respect to claim(s) 3 – 11 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.
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
January 22, 2026