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 .
Status of Claims
This Office Action is in response to the application file on 01 October 2024. Claims 67-86 are presently pending and are presented for examination. Claims 1-66 are cancelled. Claims 67-86 are new.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. AU2022900860, filed on 01 April 2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01 October 2024 was considered by the examiner.
Drawings
The drawings are objected to because Fig. 2 in view of at least figs. 3-4 show at least “41” as different embodiments (See at least: Examiner modified comparison below). Examiner note: Applicant may either match the drawings or make no corrections to the figures with explanation of the embodiment differences between the two. 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.
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The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: Figs. 12a-12b reference character “431” is not found in the spec. (See at least: paras.[000149]-[000152]). Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
Specification
The disclosure is objected to because of the following informalities: paras. [000149]-[000152] do not recite reference character “431” (See at least: Figs. 12a-12b).
Appropriate correction is required.
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 use the word “means,” and is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations 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 limitations are {underline and bold is for the generic placeholder, italics for functional language}:
“...an anchoring means for operatively connecting the buoyant actuator relative to the seabed, or other permanent structure...” in claim 78. ““...an anchoring means...” in claim 79. (See at least: spec. para. [00033] “The anchoring means may be in the form of one or more tethers extending partially or entirely between the buoyant actuator and the seabed or other permanent structure. The one or more tethers may be angled relative to the buoyant actuator. The one or more tethers may be angled relative to the seabed/ other permanent structure. The one or more tethers may be connected to an energy conversion device which is connected to the hollow body...” and para. [00098] “Referring to Figure 1, the buoyant actuator 11 is installed offshore in a fluid, typically a body of water 13, such as the ocean, having a fluid surface 12 and a seabed 14. The buoyant actuator 11 is secured to the seabed by an anchoring means in the form of three tethers 15, and has a coupling means in the form of a cable 17 through which communications and power can travel. The buoyant actuator 11 also comprises a wave motion conversion device 16 extending between the buoyant actuator 11 and the tethers 15...”. Therefore, examiner interprets “anchoring means” as “tethers”.).
“...a coupling means for operatively connecting the buoyant actuator to an energy conversion device...” in claim 82 (See at least: spec. para. [00098] cited above. Therefore, examiner interprets “coupling means” as “cable 17”.).
“...an anchoring means associated with the hollow body for operatively connecting the buoyant actuator relative to the seabed, or other permanent structure...” in claim 86 (See at least: spec. para. [00033] and para. [00098] both cited above. Therefore, examiner interprets “anchoring means” as “tethers”.).
Because this/these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and 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 limitations 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 limitations recites 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.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation is not in the form of generic placeholder that is coupled with functional language sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation is: “a coupling means” in claim 81.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this limitation 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 to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation do not recite sufficient structure, materials, or acts to perform the claimed function.
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.
Claim 67-86 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.
Claims 67, 84 and 86 each recite the limitation "...whereby when the buoyant actuator has no external downward force acting thereon an upper portion of the body is located above the fluid surface...". The claim language is not clear in view of Earth’s gravity as the physical law of gravity exerts a force on all objects. Therefore, it is not clear as what the Applicant is claiming without further defining the structure(s) that is/are imposing the external force(s) and the interactions that cause them not to apply external force(s). The Examiner reminds the Applicant that no new matter may be added to the disclosure in the amendment, see 35 U.S.C. 132(a), 37 C.F.R. 1.121(f) and MPEP § 608.04. For purposes of compact prosecution, the Examiner interprets claims 67, 84 and 86 each recite "...whereby when an upper portion of the body is located above the fluid surface...".
Claims 68-83 are rejected based on the independent claim 67 rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ).
Claim 85 is rejected based on the independent claim 84 rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ).
Claim 67 recites the limitations “an upper portion” in line 10. Claim 67 recites “an upper portion” in line 5. Therefore, it is not clear if “an upper portion” of line 10 is the same or different than that of line 5. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, the Examiner interprets claim 67 to recite “the upper portion” in line 10.
Claim 68 recites the limitations “at least one opening in an upper portion” and “at least one opening in a lower portion” in lines 1-2. Claim 67 recites “at least one opening in an upper portion” and “at least one opening in a lower portion” in lines 5-6. Therefore, it is not clear if the claim language of claim 68 is the same or different than that of claim 67. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, the Examiner interprets claim 68 to recite “the at least one opening in the upper portion” and “the at least one opening in the lower portion” in lines 1-2.
Claim 70 recites the limitation “a valve” in line 2. Claim 69 recites “a valve” in line 2. Therefore, it is not clear if “a valve” of claim 70 is the same or different than “a valve” of claim 69. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, the Examiner interprets claim 69 to recite “a first valve” in line 2 and claim 70 to recite “a second valve” in line 2, where all other instances of “the valve” would be to an associated “first” or “second” one.
Claim 72 recites the limitation “at least one tank” in line 1. Claim 67 recites “at least one tank” in line 2. Therefore, it is not clear if “at least one tank” of claim 72 is the same or different than “at least one tank” of claim 67. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, the Examiner interprets claim 72 to recite “the at least one tank” in line 1.
Claim 72 recites the limitation “the pressure” in line 3. However, claim 67 nor 72 previously recite “a pressure”. Therefore, “a pressure” has yet to be introduced. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, the Examiner interprets claim 72 to recite “a pressure” in line 3.
Claim 75 recites the limitation “the seabed” in line 3. However, claim 67 nor 75 previously recite “a seabed”. Therefore, “a seabed” has yet to be introduced. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, the Examiner interprets claim 75 to recite “a seabed” in line 3.
Claim 76 recites the limitation “the depth” in line 2. Claims 76, 75 and 67 do not previous recite “a depth”. Therefore, “a depth” has yet to be introduced. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, the Examiner interprets claim 76 to recite “a depth” in line 2.
Claim 77 recites the limitation “tank” in line 3. Claim 67 recites “at least one tank” in line 2. Therefore, it is not clear if “tank” of claim 77 is the same or different than “at least one tank” of claim 67. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, the Examiner interprets claim 77 to recite “whether the at least one tank” in line 1.
Claim 78 recites the limitation “the seabed” in line 3. However, claim 67 nor 78 previously recite “a seabed”. Therefore, “a seabed” has yet to be introduced. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, the Examiner interprets claim 78 to recite “a seabed” in line 3.
Claim 84 recites the limitations “an upper portion” in line 10. Claim 84 recites “an upper portion” in line 5. Therefore, it is not clear if “an upper portion” of line 10 is the same or different than that of line 5. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, the Examiner interprets claim 84 to recite “the upper portion” in line 10.
Claim 85 recites the limitations “an upper portion” twice, in lines 2-3. Claim 84 recites “an upper portion” in line 5. Therefore, it is not clear if “an upper portion” of claim 85 is the same or different than that of claim 84. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, the Examiner interprets claim 85 to recite “the upper portion” in lines 2-3.
Claim 86 recites the limitations “an upper portion” in line 10. Claim 86 recites “an upper portion” in lines 4-5. Therefore, it is not clear if “an upper portion” of line 10 is the same or different than that of lines 4-5. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, the Examiner interprets claim 86 to recite “the upper portion” in line 10.
Claim 86 recites the limitation “the at least one tank” in line 11. Claim 86 recites “a tank” in line 4. Therefore, it is not clear if “the at least one tank” of line 11 is the same or different than “a tank” of line 4. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, the Examiner interprets claim 86 to recite “the tank” in line 11.
Claim 86 recites the limitation “the seabed” in line 14. However, claim 86 does not previously recite “a seabed”. Therefore, “a seabed” has yet to be introduced. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, the Examiner interprets claim 86 to recite “a seabed” in line 14.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 83 and 84 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 83, recites “A wave energy conversion system comprising a buoyant actuator according to claim 67.” Where the preamble’s structure of “a wave energy conversion system” is found not to further limit claim 67, therefore is patentably indistinct from claim 67. Examiner note: Applicant may further claim what a “a wave energy conversion system” is so as not to read on any previous claim to overcome this rejection without introducing new matter.
Regarding claim 84, recites “at least one first tank” where claim 67 recites “at least one tank”. A side-to-side comparison shows that all other claim language between the two claims to be the same. Therefore, claim 84’s difference of adding “first” to claim 67’s “at least one tank” is found not to further limit claim 67 (Stated another way: claim 84 would be rejected with the same prior art as applied to claim 67). Claim 84 is patentably indistinct from claim 67. Examiner note: Applicant may incorporate claim 85 into claim 84 to overcome this rejection.
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims comply with the statutory requirements.
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 67-73, 75-76, 78-79 and 86 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Gerber (US 20080146103 A1). See below for selected figs. from the prior art.
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Regarding claim 67, Gerber discloses a buoyant actuator (floating wave energy converter (WEC) 10; See at least: Fig. 1, abstract and para. [0021] “WEC 10”) comprising: a body (float 12; See at least: para. [0021] “float 12 comprises two secured together annular members 18 and 20” and para [0022] “vessel 20”) presenting an exterior surface (See at least: figs. 1-5), the body being adapted to be continuously located below a fluid surface (line 44; See at least: para. [0024] “a body of water, the intercept of the water surface with the float is along a line 44”) during operation, the body providing at least one tank in an upper portion of the body (compartments 104-108 or 1A-8A; See at least: figs. 5 and 7 and paras. [0042]-[0043] where each compartment is a tank), the at least one tank having at least one opening in an upper portion (a plurality of holes 40 or a pattern of small openings 99; See at least: figs. 1 and 5 and para. [0041] “a pattern of small openings 90” where the examiner interprets “90” to be 99 of fig. 5), and at least one opening in a lower portion (a plurality of holes 40 or a pattern of small openings 99; See at least: figs. 1 and 5) such that fluid (water; See at least: para. [0022] “water flow into and out of the vessel during the passage of single waves past the WEC”, para. [0041] “free flow of water between compartments”) can pass through the openings of the at least one tank as the buoyant actuator is repositioned relative to the fluid surface (See at least: figs. 9-10 where figs. 9A-9F is represented on fig. 10 as A-F and figs. 9-9F show relation relative to the water surface); whereby when the buoyant actuator has no external downward force acting thereon an upper portion of the body is located above the fluid surface and thus allows a volume of the at least one tank above a waterline of the buoyant actuator to drain by the action of gravity(See at least: figs. 9A-9C and 9F which all show outflow with differential pressure).
Regarding claim 68, Gerber discloses all the limitations of claim 67 as noted above. Additionally, Gerber discloses wherein at least one opening in an upper portion and at least one opening in a lower portion are permanently open (See at least: para. [0044] “A preferred way to minimize the amount of water inside the upper chamber in operational wave conditions is by providing at least some of the wall holes with valves so that fluid flow is preferentially outward. Thus, it would be possible to arrange, say, a ratio of 5 valves which only allow outward flow to 1 hole which allows bi-directional flow” therefore plurality of holes 40 or a pattern of small openings 99 may be either through holes (“permanently open”), holes with valves, or a mix of the combination of the two).
Regarding claim 69, Gerber discloses all the limitations of claim 67 as noted above. Additionally, Gerber discloses wherein the at least one upper opening of the at least one tank has a valve (“wall holes with valves”; See at least: fig. 8 and para. [0044]-[0046]) to regulate the flow of fluid through the at least one tank (See at least: fig. 8 and para. [0044] “bi-directional flow”, para. [0045] “directional flow”), whereupon selective operation of the valve causes fluid to pass through the at least one upper opening, selectively enabling the at least one tank to self-fill and self-drain by the action of gravity based on the state of the valve and the position of the buoyant actuator relative to the fluid surface (See at least: figs. 9-10 and para. [0044] “This assures that almost all water which comes in during a wave crest flows out during the subsequent wave trough”).
Regarding claim 70, Gerber discloses all the limitations of claim 69 as noted above. Additionally, Gerber discloses wherein the at least one lower opening of the at least one tank has a valve (“wall holes with valves”; See at least: fig. 8 and para. [0044]-[0046]) to regulate the flow of fluid through the at least one tank (See at least: fig. 8 and para. [0044] “bi-directional flow”, para. [0045] “directional flow”), whereupon selective operation of the valve causes fluid to pass through the at least one lower opening, selectively enabling the at least one tank to self-fill and self-drain by the action of gravity based on the state of the valve and the position of the buoyant actuator relative to the fluid surface (See at least: figs. 9-10 and para. [0044] “This assures that almost all water which comes in during a wave crest flows out during the subsequent wave trough”).
Regarding claim 71, Gerber discloses all the limitations of claim 67 as noted above. Additionally, Gerber discloses wherein the body provides a plurality of tanks (compartments 104-108 or 1A-8A; See at least: figs. 5 and 7 and paras. [0042]-[0043] where each compartment is a tank), wherein one or more of the plurality of tanks (compartments 104-108 or 1A-8A; See at least: figs. 5 and 7 and paras. [0042]-[0043] where each compartment is a tank) have an opening (a pattern of small openings 99; See at least: 5 and para. [0041] “a pattern of small openings 90” where the examiner interprets “90” to be 99 of fig. 5) therebetween.
Regarding claim 72, Gerber discloses all the limitations of claim 67 as noted above. Additionally, Gerber discloses wherein at least one tank either is formed from or incorporates a compressible medium (air; See at least: figs. 1-2 where this is an inherent characteristic; Examiner Rationale: this is an inherent characteristic that the invention of Gerber has air internal to the float 12 due to the plurality of holes 40. Additionally, the application's buoyant actuator 11 and the prior art WEC 10 are substantially identical and therefore it is understood that both perform the same when operating above the water’s surface.) wherein the compressible medium is exposed to the pressure (See at least: figs. 9-10 difference of pressure) of the fluid entering the at least one tank (See at least: figs. 9-10 where the air volume internal to the WEC 10 changes due to the water volume due to the inflow/outflow of water and air. Examiner note: para. [0022] “In FIGS. 1 and 2, the upper end 30 of the vessel 20, which is optionally open or closed” where fig. 2 shows an “open” embodiment.).
Regarding claim 73, Gerber discloses all the limitations of claim 72 as noted above. Additionally, Gerber discloses wherein the compressible medium is pre-pressurized (atmospheric pressure; See at least: figs. 1-2 where this is an inherent characteristic; Examiner Rationale: this is an inherent characteristic that the invention of Gerber has air internal to the float 12 due to the plurality of holes 40 at atmospheric pressure. Additionally, the application's buoyant actuator 11 and the prior art WEC 10 are substantially identical and therefore it is understood that both perform the same with regards to air at atmospheric pressure.).
Regarding claim 75, Gerber discloses all the limitations of claim 67 as noted above. Additionally, Gerber discloses wherein the buoyant actuator comprises or is coupled to one or more tethers (anchor cable 46 or cable 72; See at least: fig. 1 or fig. 4) which are adapted to secure the buoyant actuator to the seabed (“water body floor”; See at least: para. [0023] and fig. 1) or other structure (ocean platform 76; See at least: fig. 4 and para. [0034]).
Regarding claim 76, Gerber discloses all the limitations of claim 75 as noted above. Additionally, Gerber discloses wherein the one or more tethers are retracted or extended relative to the body to change the depth (drum 50 rotatable in either direction by a motor 52; See at least: fig. 1 and para. [0023] “drum 50 rotatable in either direction by a motor 52” and para. [0027] “motor 52 (FIG. 1) is activated to begin winding the WEC anchor cable 46 onto the drum 50”) at which the body is positioned in the fluid body (See at least: fig. 1).
Regarding claim 78, Gerber discloses all the limitations of claim 67 as noted above. Additionally, Gerber discloses wherein the body of the buoyant actuator is associated with an anchoring means (anchor cable 46 or cable 72; See at least: fig. 1 or fig. 4) for operatively connecting the buoyant actuator relative to the seabed (“water body floor”; See at least: para. [0023] and fig. 1), or other permanent structure (ocean platform 76; See at least: fig. 4 and para. [0034]).
Regarding claim 79, Gerber discloses all the limitations of claim 78 as noted above. Additionally, Gerber discloses wherein the anchoring means is in the form of one or more tethers (anchor cable 46 or cable 72; See at least: fig. 1 or fig. 4) extending partially or entirely between the buoyant actuator and the seabed or other permanent structure (See at least: figs. 1 and 4).
Regarding claim 86, Gerber discloses a buoyant actuator (floating wave energy converter (WEC) 10; See at least: Fig. 1, abstract and para. [0021] “WEC 10”) comprising: a hollow body (float 12; See at least: para. [0021] “float 12 comprises two secured together annular members 18 and 20” and para [0022] “the lower member 18 of the composite float 12 is of fixed buoyancy and can be hollow or at least partially filled with water. The upper member 20 of the composite float comprises a normally hollow vessel defined by inner 24 and outer 26 walls and a bottom wall 28”, emphasis added by examiner) presenting an exterior surface (See at least: figs. 1-5), the hollow body being adapted to be continuously located below a fluid surface (line 44; See at least: para. [0024] “a body of water, the intercept of the water surface with the float is along a line 44”) during operation, the hollow body providing a (compartments 104-108 or 1A-8A; See at least: figs. 5 and 7 and paras. [0042]-[0043] where each compartment is a tank), the tank having at least one opening in an upper portion (a plurality of holes 40 or a pattern of small openings 99; See at least: figs. 1 and 5 and para. [0041] “a pattern of small openings 90” where the examiner interprets “90” to be 99 of fig. 5), and at least one opening in a lower portion (a plurality of holes 40 or a pattern of small openings 99; See at least: figs. 1 and 5), wherein both openings of the tank are permanently open (See at least: para. [0044] “A preferred way to minimize the amount of water inside the upper chamber in operational wave conditions is by providing at least some of the wall holes with valves so that fluid flow is preferentially outward. Thus, it would be possible to arrange, say, a ratio of 5 valves which only allow outward flow to 1 hole which allows bi-directional flow” therefore plurality of holes 40 or a pattern of small openings 99 may be either through holes (“permanently open”) holes with valves, or a mix of the combination of the two) such that fluid (water; See at least: para. [0022] “water flow into and out of the vessel during the passage of single waves past the WEC”, para. [0041] “free flow of water between compartments”) can pass through the openings and the tank as the buoyant actuator is repositioned relative to the fluid surface (See at least: figs. 9-10 where figs. 9A-9F is represented on fig. 10 as A-F and figs. 9-9F show relation relative to the water surface); whereby when the buoyant actuator has no external downward force acting thereon an upper portion of the body is located above the fluid surface (See at least: figs. 9-10 where para. [0047] “upper vessel 20” is shown above the water surface line of figs. 9-9F) and a volume of the at least one tank above a waterline (See at least: figs. 9-9F and para. [0049] “n Vertical elevation of water surface from mean waterline”, where at least fig. 9 shows the external water surface) of the buoyant actuator are empty (See at least: figs. 9-9F and para. [0051] “d Amount of water remaining in the upper chamber in the steady state” therefore the remaining empty volume would be that of the total volume of “upper vessel 20” minus the “d amount of water remaining”); an anchoring means (anchor cable 46 or cable 72; See at least: fig. 1 or fig. 4) associated with the hollow body for operatively connecting the buoyant actuator relative to the seabed (“water body floor”; See at least: para. [0023] and fig. 1), or other permanent structure (ocean platform 76; See at least: fig. 4 and para. [0034]).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 77 and 80-82 are rejected under 35 U.S.C. 103 as being unpatentable over Gerber (US 20080146103 A1) in view of Dick (US 6392314 B1). See below for selected figs. from the prior art.
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Regarding claim 77, Gerber discloses all the limitations of claim 75 as noted above.
However, Gerber does not disclose wherein the buoyant actuator is configured to maintain a substantially taut connection between the body and the tether (See at least: fig. 1 and 4) regardless of whether any tank is full, empty, or partially full (See at least: figs. 9-10).
Tillotson in a similar field of endeavor, teaches wherein the buoyant actuator (buoyant member of variable buoyancy 6; See at least: fig. 1a) is configured to maintain a substantially taut connection between the body (buoyant member of variable buoyancy 6; See at least: fig. 1a) and the tether (cables 2, 9 with energy conversion unit 8; See at least: fig. 1a and abstract) regardless of whether any tank is full, empty, or partially full (See at least: col. 4 lines 15-18 “The buoyant member of variable buoyancy preferably includes means for altering the volume of the buoyant member of variable buoyancy in response to changes in pressure on the buoyant member of variable buoyancy.”).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified anchor cable 46 of Gerber with cables 2, 9 with energy conversion unit 8 of Dick with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to make this modification for the benefit of providing a conversion means for converting the change in buoyancy of the buoyant member to an energy output device (See at least: Dick col. 3 lines 46-49).
Regarding claim 80, Gerber discloses all the limitations of claim 79 as noted above. Additionally, Gerber discloses wherein the one or more tethers are connected to an energy conversion device (energy conversion unit 8; See at least: fig. 9 and abstract) which is connected to the body (See at least: fig. 1a).
Therefore, claim 80 is rejected for at least the same reasoning as applied to claim 77 above.
Regarding claim 81, Gerber discloses all the limitations of claim 67 as noted above. Additionally, Gerber discloses wherein the buoyant actuator is associated with a coupling means (cable 9; See at least: fig. 1a and claim 7 “7. The apparatus as claimed in claim 1 characterized in that the variable buoyancy (6) is coupled by coupling means (9) to the conversion means (8)”), the coupling means incorporates an energy conversion device (energy conversion unit 8; See at least: fig. 9 and abstract).
Therefore, claim 81 is rejected for at least the same reasoning as applied to claim 77 above.
Regarding claim 82, Gerber discloses all the limitations of claim 67 as noted above. Additionally, Gerber discloses wherein the body of the buoyant actuator is associated with a coupling means (cable 9; See at least: fig. 1a and claim 7 “7. The apparatus as claimed in claim 1 characterized in that the variable buoyancy (6) is coupled by coupling means (9) to the conversion means (8)”) for operatively connecting the buoyant actuator to an energy conversion device (energy conversion unit 8; See at least: fig. 9 and abstract).
Therefore, claim 82 is rejected for at least the same reasoning as applied to claim 77 above.
Allowable Subject Matter
Claims 74 and 85 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 74, in combination with the other structures required by the base claim and intervening claims, the prior art fails to disclose, teach, suggest, or render obvious the claimed configuration’s element “…wherein the compressible medium is selected from or is a combination of: a sealed bladder, a compressible foam, a flexible membrane dividing the tank, or a combination of each…”. The closest prior art is Gerber (US 20080146103 A1) in view of either Dick (US 6392314 B1) or Allen et al. (US 20120141207 A1). The prior art of Gerber inherently uses air and water to vary the buoyancy of the float 12. Dick teaches a buoyant member of variable buoyancy with at least two embodiments; the first being (1) a substantially air-tight non-rigid flexible or otherwise elastic material which may be subdivided into two or more compartments while the second (2) is a substantially rigid container, substantially open at the bottom, such that the changes in surrounding pressure causes a fluctuation in liquid level within the container. The second embodiment of Dick is the closest to that of the primary reference of Gerber. However, Dick does not provide the combination of the two embodiments as they are listed separate. Allen et al. teaches it is known in the art to use buoyant material such as air, bladders containing air, low density materials, foams, etc. in a buoyant actuator 10 (See at least: para. [0146]) however the placement of such materials is not in the actuator where the water flows within the specific chambers. Therefore, Allen et al. did not directly show the placement to be properly combined with the prior art of Gerber. Therefore, the Applicant’s specifying the types of “compressible medium” is novel in view of the prior art. See selected figs. from the prior art below.
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Regarding claim 85, in combination with the other structures required by the base claim and intervening claims, the prior art fails to disclose, teach, suggest, or render obvious the claimed configuration’s element “…whereas the at least one second tank remains empty when positioned below the fluid surface with the valve closed…”. The closest prior art is Gerber (US 20080146103 A1) which discloses “at least one second tank” (compartments 104-108 or 1A-8A; See at least: figs. 5 and 7 and paras. [0042]-[0043] where each compartment is a tank) “at least one opening” (a plurality of holes 40 or a pattern of small openings 99; See at least: figs. 1 and 5) and “a valve” (“wall holes with valves”; See at least: fig. 8 and para. [0044]-[0046]), therefore all structure is known. As best understood by the Examiner the operation of the water flowing into the compartments of Gerber would allow them to fill up when WEC 10 is submerged (See at least: Abstract and Claim 19). The Examiner interprets Gerber’s “wall holes with valves” are installed or provide flow of water in a direction that permits the compartments to fill and NOT “remain empty” when the WEC 10 is submerged. Therefore, the Applicant’s specifying the operation of the buoyant actuator is novel in view of the prior art to which the Applicant’s “valve” is installed or controlled differently than the prior art to allow for such operation of the buoyant actuator.
Additional Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure and may be found in the accompanying PTO-892 Notice of References Cited:
Allen et al. (US 20120141207 A1) is relevant to at least claim 74 (See discussion above).
Conclusion
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/ERIC ANTHONY STARCK/Examiner, Art Unit 3615B
/LARS A OLSON/Primary Examiner, Art Unit 3615B
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