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 .
Information Disclosure Statement
The information disclosure statement filed 04/29/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed.
Despite Applicant’s failure to comply with 37 C.F.R. 1.98 (d)(1), Examiner has nonetheless considered the non-patent literature cited by Applicant. Examiner extends the one-time courtesy of citing the relevant NPL and attaching it to this Office Action, but Applicant is reminded that copies of cited prior art must be provided unless Applicant properly identifies the earlier application.
For Applicant’s future reference, the IDS form submitted by Applicant includes a checkbox indicating attachment of the appropriate statement under 37 C.F.R. 1.98(d)(1) under the “COPIES” section on page 4 of the IDS, immediately following the Timing Statement section.
Double Patenting
Statutory Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 3-6, 8, 9, and 11 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-9 of prior U.S. Patent No. 12,209,568. This is a statutory double patenting rejection.
Regarding instant claim 3, the claim depends from claim 1 and therefore incorporates the limitations of claim 1. When considered in this context, claim 3 effectively recites the following (parenthetical expressions refer to text of the patented claims):
A power generator (claim 1, “a triboelectric-electromagnetic hybrid generator”) comprising:
a ball-based triboelectric nanogenerator (col. 13, l. 47 through col. 14, l. 7) and an electromagnetic generator (col. 14, ll. 8-12) for harvesting wave energy (inherent; exterior fluid movement within a body of water represents wave energy), wherein the generator includes a buoyant, waterproof and enclosed shell that includes a plurality of cavities within the shell defined by a plurality of substantially parallel dividers (col. 13, ll. 45-47) and wherein the generator is configured to move due to exterior fluid movement to generate triboelectric and electromagnetic charging (col. 14, ll. 13-17);
wherein the TENG include spaced apart electrodes affixed to the upper surfaces of middle dividers and a plurality of freely moveable chargers located on the upper surfaces of each middle divider (col. 13, l. 47 through col. 14, l. 7);
wherein the EMG includes a conductive coil positioned below a lower divider on a bottom interior surface of the shell and freely moveable magnet positioned on an upper surface of lower divider (col. 14, ll. 8-12); and
wherein the shell is configured to move due to the exterior fluid movement to move the chargers between the separated electrodes and the magnet across the upper surface of the lower divider to generate, respectively, the triboelectric and electromagnetic charging (col. 14, ll. 13-17).
While Applicant has reordered the limitations, the scope of instant claim 3 is identical to that of patented claim 1; thus, a rejection based on statutory double patenting is proper.
Regarding instant claims 4-6, Applicant recites limitations identical to those found in patented claims 2-4, respectively; thus, instant claims 4-6 are identical in scope to patented claims 2-4.
Regarding instant claim 8, the instant claim depends from instant claim 7 and therefore incorporates the subject matter of instant claim 7. Claim 8 is, therefore, identical in scope to patented claim 5.
Regarding instant claims 9 and 11, Applicant recites limitations identical to those found in claims 6 and 8, respectively; thus, instant claims 9 and 11 are identical in scope to patented claims 6 and 8.
Non-Statutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 7, and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,209,568. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims disclose the instant claim limitations, despite differing in scope.
Regarding instant claim 1, the instant claim is clearly disclosed by the patented claim, as evidenced by the corresponding elements as discussed in the rejection of claim 3, above. As the patented claim discloses each and every limitation of the instant claim, instant claim 1 is not patentably distinct.
Regarding instant claim 7, Applicant recites the majority of the limitations found in patented claim 16 but broadens the claim to instead recite “a liquid within the outer silicone shell” rather than “a liquid polymer” as is done in the patented claim. As the patented claim discloses each and every limitation of the instant claim, instant claim 7 is not patentably distinct.
Regarding instant claim 10, Applicant recites an intended operational condition of the generator of claim 3. While the patented claims do not disclose the specific operational frequency and outputs, these parameters amount to nothing more than routine optimization of the explicitly recited elements to achieve a desired operational outcome.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). As the specific operational parameters are nothing more than routine optimization, claim 10 does not patentably distinguish over patented claim 1.
It would have therefore been obvious to one of ordinary skill in the art (prior to the effective filing date) to modify the patented claims by routinely optimizing the operational parameters of the patented generator to achieve the instant recited output values for the purposes of optimizing power output under specific wave characteristics.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “A Hybridized Triboelectric-Electromagnetic Water Wave Energy Harvester Based on a Magnetic Sphere” to Wu et. al. (“Wu”).
Regarding claim 1, Wu discloses
A power generator (title, abstract) comprising:
a ball-based triboelectric nanogenerator (TENG) (FIG 1, “Mover” in conjunction with friction layers; as the TENG is located within a sphere, and since Applicant has not provided a definition for “ball-based,” the TENG of Wu may be broadly construed as being “ball-based” as it is within a “ball” shaped sphere) and an electromagnetic generator (EMG) (FIG 1, “Magnetic Sphere” in conjunction with “Coils”), wherein the generator includes a buoyant, waterproof, and enclosed shell (see FIG 1:a; as the sphere is “placed on a buoy,” it may be construed as “buoyant” as presently recited; despite not disclosing that the sphere is waterproof, those of ordinary skill would interpret the prior art as disclosing such waterproofing as it would be transparently detrimental to the system were water to make it into the sphere; thus, the disclosed sphere is explicitly buoyant and inherently waterproof) that includes a plurality of cavities within the shell defined by a plurality of substantially parallel dividers (see FIG 1:a) and wherein the generator is configured to move due to exterior fluid movement (“the WWEH is usually placed on some flotation device, such as buoys…to swing with the water wave”) to generate triboelectric and electromagnetic charging (inherent; as the sphere moves, both generative elements are driven to produce electrical power).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS K QUIGLEY whose telephone number is (571)272-4050. The examiner can normally be reached Monday - Friday, 8:30 AM - 4:30 PM EST.
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/THOMAS K QUIGLEY/Examiner, Art Unit 2834
/TULSIDAS C PATEL/Supervisory Patent Examiner, Art Unit 2834