DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 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 1-12 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 1-12 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The claims are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. Note the format of the claims in the patents cited.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “electromagnets” in claims 1, 3, 7, and 9 is used by the claim to mean “permanent magnet,” while the accepted meaning is “a type of magnet in which the magnetic field is produced by an electric current.” The term is indefinite because the specification does not clearly redefine the term.
Moreover, the magnets used by the applicant in the invention cannot be “electromagnets” because the specification fails to include, disclose, and teach the use of coils, slip rings, and brushes on the rotor. Therefore, since the necessary components for electrifying a coil on the rotor are not present in the specification, the claimed magnets MUST be permanent magnets.
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 1-12 are rejected under 35 U.S.C. 101 because the disclosed invention, as recited by the claims, is inoperative and therefore lacks utility.
Since the “electromagnets” recited by independent claims 1 and 7 MUST be permanent magnets (see paragraph 7 above), the use of “magnets” instead of “windings” on the stator would not result in the construction of an electrical generator. Therefore, the claimed invention cannot operate to “provide electrical energy” as recited and intended.
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, 3, 5-7, 9, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2016/0315523 A1 to Schuttenbach Von et al.
Schuttenbach Von et al. clearly teaches a reciprocating piston engine, comprising:
one or more electrical generators (see Figures 1A, 1B, 1C, 4A, 5A, 6, and 7A), each generator configured and positioned at a different interior point or position along the length of a crankshaft (3) or a crank case to provide electrical energy;
each generator comprising:
a rotor; and
a stator;
wherein:
the rotor comprises magnetic field units (8a, 8b, 8c, and 8d) positioned on and around the circumferential end or rim of each rotor; and
the stator comprises windings (11a, 11b, 11c, and 11d) that are adjacent to 50% or more of the electromagnets of the rotor.
With regards to claim 3, Schuttenbach Von et al. discloses:
the electromagnets comprise strips of magnetic material.
With regards to claim 5, Schuttenbach Von et al. discloses:
a volume equal to, or less than, a volume of no more than 12.5 inches in height, 24 inches in width and 32 to 50 inches in length.
With regards to claim 6, Schuttenbach Von et al. discloses:
the one or more electrical generators generating 35 to 40 kilowatts of power.
With regards to claim 7, Schuttenbach Von et al. discloses the steps of:
configuring and positioning one or more electrical generators (see Figures 1A, 1B, 1C, 4A, 5A, 6, and 7A) at a different interior point or position along the length of a crankshaft (3) or a crank case of an engine to provide electrical energy, where each generator comprises:
a rotor and a stator; and
the method further comprises the steps of:
positioning magnetic field units (8a, 8b, 8c, and 8d) positioned on and around the circumferential end or rim of each rotor; and
positioning windings (11a, 11b, 11c, and 11d) of the stator adjacent to 50% or more of the electromagnets of the rotor.
With regards to claim 9, Schuttenbach Von et al. discloses:
the electromagnets comprising strips of magnetic material.
With regards to claim 11, Schuttenbach Von et al. discloses:
a volume equal to, or less than, a volume of no more than 12.5 inches in height, 24 inches in width and 32 to 50 inches in length.
With regards to claim 12, Schuttenbach Von et al. discloses the step of:
generating 35 to 40 kilowatts of power.
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.
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.
Claims 2, 4, 8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2016/0315523 A1 to Schuttenbach Von et al. in view of U.S. Patent Application Publication No. 2016/0252044 A1 to Mc Clearen et al.
Schuttenbach Von et al. clearly teaches a reciprocating piston engine as described in paragraph 12 above.
However, it fails to disclose the engine being an inwardly opposed piston engine.
Mc Clearen et al. discloses engine block construction for opposed piston engine, comprising:
an inwardly opposed piston engine (see Figures 1-3).
It would have been obvious to one skilled in the art before the effective filling date of the invention to use the inwardly opposed piston engine configuration disclosed by Mc Clearen et al. for the reciprocating piston engine disclosed by Schuttenbach Von et al., for the purpose of providing an engine in which “fewer cylinders may be required to properly propel and provide adequate power to the vehicle when compared to a heavier vehicle” (see paragraph [0005]).
With regards to claims 4, Mc Clearen et al. discloses:
an inwardly opposed piston engine (see Figures 1-3) configured as an L-head or "flat-head" engine, wherein the engine further comprises:
a first and a second engine block (92a, 92b, 94, 96; see paragraphs [0045] and [0050]), the first engine block comprising one or more first cylinders and the second engine block comprising one or more second cylinders, where each first cylinder may comprise a first piston and each second cylinder may comprise a second piston;
one or more bolts (“tensile members 142”, see paragraph [0053]) configured to mate the first engine block to the second engine block such that each first cylinder and its respective piston is inwardly, opposedly aligned with one of the second cylinders and its respective piston; and
one or more spacers (see Figures 1-3) configured between the first and second engine blocks, each spacer comprising one or more openings or perforations to allow the one or more bolts to pass through unimpeded, wherein the one or more bolts passthrough approximately an entire length comprising the first engine block, the one or more spacers, and the second engine block.
With regards to claim 8, Mc Clearen et al. discloses:
an inwardly opposed piston engine (see Figures 1-3).
With regards to claim 10, Mc Clearen et al. discloses:
an inwardly opposed piston engine (see Figures 1-3) configured as an L-head or "flat-head" engine, wherein the method further comprises the steps of:
mating a first engine block to a second engine block using one or more bolts (“tensile members 142”, see paragraph [0053]); and
configuring one or more spacers (see Figures 1-3) between the first and second engine blocks, where each spacer comprises one or more openings or perforations to allow the one or more bolts to pass through unimpeded, wherein the one or more bolts pass through approximately an entire length comprising the first engine block, the one or more spacers, and the second engine block.
Conclusion
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/PEDRO J CUEVAS/Primary Examiner, Art Unit 2896 November 14, 2025