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 .
Response to Arguments
Applicant’s arguments, see page 5, filed on April 28, 2026, with respect to the recitation of “a hydraulic motor” have been fully considered and are persuasive in view of the claim amendments correcting said element to “a second hydraulic motor”. The objection of claim 5 has been withdrawn.
Applicant’s arguments, see pages 6 and 7, filed on April 28, 2026, with respect to omission of operational elements deemed essential by the examiner for bridging the gap between an energy source and a mechanically operated structural component have been fully considered but they are not persuasive because even though the Applicant has not expressly stated in the Specification that the omitted elements are “essential”, the claimed invention cannot function and/or operate without said structural elements.
Therefore, since said element are necessary for the operation of the claimed invention, the 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph rejection of claims 1-3 and 5-10 has been sustained because although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s arguments, see pages 6 and 7, filed on April 28, 2026, with respect to omission of operational elements deemed essential by the examiner for bridging the gap between an energy source and a mechanically operated structural component have been fully considered but they are not persuasive because even though the Applicant has not expressly stated in the Specification that the omitted elements are “essential”, the claimed invention cannot function and/or operate without said structural elements.
Therefore, since said element are necessary for the operation of the claimed invention, the 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph rejection of claims 1-4 and 6-10 has been sustained because although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s arguments, see pages 6 and 7, filed on April 28, 2026, with respect to omission of operational elements deemed essential by the examiner for bridging the gap between an energy source and a mechanically operated structural component have been fully considered but they are not persuasive because even though the Applicant has not expressly stated in the Specification that the omitted elements are “essential”, the claimed invention cannot function and/or operate without said structural elements.
Therefore, since said element are necessary for the operation of the claimed invention, the 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph rejection of claims 1-7 and 10 has been sustained because although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s arguments, see pages 6 and 7, filed on April 28, 2026, with respect to omission of operational elements deemed essential by the examiner for bridging the gap between an energy source and a mechanically operated structural component have been fully considered but they are not persuasive because even though the Applicant has not expressly stated in the Specification that the omitted elements are “essential”, the claimed invention cannot function and/or operate without said structural elements.
Therefore, since said element are necessary for the operation of the claimed invention, the 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph rejection of claims 1-10 has been sustained because although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s arguments, see pages 9 and 10, filed on April 28, 2026, with respect to inoperability and lack of patentable utility have been fully considered but they are not persuasive because components missing from the independent claim (recited in claims 4, 5, and 8) bridge a structural and operational gap between the elements. The Examiner is not questioning the clamed invention’s capacity to “achieve all intended functions in a professed manner” and “whether it is capable of any useful result”. The Examiner is merely pointing out that the elements currently claimed are not capable of functioning and operated as recited.
For example, since the first position is a low elevation position and the second position is a high elevation position, applicant’s treaded rod is not capable of lifting the weight without an element or component capable of transforming the energy from an energy source (in the particular case of this application, electrical anergy from “Solar photovoltaic systems and wind turbines” as stated in paragraph [0002] of the Specification) into rotational motion. Without this motion caused by the hydraulic motor, the treaded rod is incapable of moving and therefore the claimed invention, as recited, cannot physically operate.
Additionally, all claims fail to recite a “hydraulic system” as described in paragraphs [0041], [0066], [0074], [0075], and [0079]-[0085] of the Specification) for the purpose of operating the “first hydraulic motor” (claim 4) and the “hydraulic motor” (claim 5). Without said “hydraulic system”, the electrical energy cannot be transformed into hydraulic pressure to operate the hydraulic motor that motivates the first threaded rod to operate the barrel cam to lift the weight to store potential energy.
Moreover, without said “hydraulic system”, the potential energy from the elevated weight acting through the barrel cam on the second threaded rod that rotates the second hydraulic motor cannot be provided to the generator because the hydraulic motor transforms mechanical rotational energy (from the second threaded rod) into hydraulic pressure and the claims do not provide any means for hydraulically connecting the second hydraulic motor to the generator.
In response to applicant’s argument, see page 11, filed on April 28, 2026, stating that “Systems for storing energy via gravitational potential are well-established and grounded in known physical principles.”, it must be noted that the Examiner’s rejections are not questioning “well-established and grounded in known physical principles.” acting or present in the claimed invention. The Examiner is merely pointing out the fact that the claims fail to recite a complete device with structural gaps between necessary structural and operational elements.
In response to applicant’s argument, see page 11, filed on April 28, 2026, stating that the prior art of record fails to teach “at least one of the first threaded rod or the second threaded rod is segmented such that each segment is joined to an adjacent segment by a segmented joint”, it must be noted that it would have been obvious to one having ordinary skill in the art at the time the invention was made to use a solid or segmented threaded rod, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. MPEP 2144 [R-6](V)(C), In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961). Therefore, the 35 U.S.C. § 103 rejection of claims 1-3 and 7-9 has been sustained.
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 1-10 and 17-20 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.
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 “energy source” in claim 1 is used by the claim to mean “a first hydraulic motor” (as recited in claim 4), while the accepted meaning is “any material or phenomenon that can be converted into usable energy for performing work, generating heat, or producing electricity. This includes natural resources like coal, oil, natural gas, sunlight, wind, and water, as well as biological sources such as food for living organisms, and nuclear materials like uranium used in reactors.”
The term, as used in claims 1 and 4 is indefinite because the specification does not clearly redefine the term. More specifically, paragraph [0002] of the specification states “Solar photovoltaic systems and wind turbines have added large amounts of power to the grid, but both systems are intermittent sources of energy. To solve this problem, massive amounts of energy storage are needed to supply energy to the grid when these sources are not available.” The use of het term “energy source” is said paragraph is consistent with the well-known definition of energy sources.
Moreover, it is well-known in the art that a “hydraulic motor” is a device that transforms hydraulic pressure into rotational motion. This makes hydraulic pressure the motor’s energy source. Said hydraulic pressure is obtained from a hydraulic pump (see paragraphs [0066] and [0079]), which transforms rotational energy into hydraulic pressure. Said rotational energy is sourced from an electric motor, which sources electric energy from the “intermittent sources of energy” disclosed in paragraph [0002]. Claims 1 and 4 are not clear which of the multiple “energy sources” the applicant is referring to and intends to claim.
Claims 1-3, 7-10, and 17-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting an essential operational element, such omission amounting to a gap between the elements. See MPEP § 2172.01.
The omitted element is the “first hydraulic motor connected to the first threaded rod and configured to drive the first threaded rod”. Without this motor, the claimed invention cannot “move the weight from the first position to the second position” as disclosed in paragraph [0004] of the specification.
Claims 1-4, 6-10, and 17-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting an essential operational element, such omission amounting to a gap between the elements. See MPEP § 2172.01.
The omitted element is the “hydraulic motor connected to the second threaded rod and configured to drive a generator”. Without this motor, the claimed invention cannot “drive a generator” as recited by the claim.
Claims 1-7, 10, and 17-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential operational elements, such omission amounting to a gap between the elements. See MPEP § 2172.01.
The omitted elements are the “one or more rollers and/or balls disposed on an interior surface of each of the barrel cams in a helical configuration”. Without these “one or more rollers and/or balls”, the claimed invention cannot “convert rotational motion to linear motion and move the weight from the first position to the second position and convert linear motion to rotational motion and be driven by the weight moving from the second position to the first position” as recited by claim 1.
Claims 1-10 and 17-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential operational elements, such omission amounting to a gap between the elements. See MPEP § 2172.01.
The omitted elements are:
a hydraulic system (see paragraphs [0041], [0066], [0074], [0075], and [0079]-[0085]) to operate the “first hydraulic motor” (claim 4) and the “hydraulic motor” (claim 5); and
a means for providing energy to operate a hydraulic system.
Claims 1-10 and 17-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01.
The omitted structural cooperative relationships are:
how is the “first hydraulic motor” supported or held in order to “drive the first threaded rod”;
how is thew “hydraulic motor” supported or held in order to “drive a generator”; and
how is the “generator” supported or held in order to operate.
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, 5-10, and 17-20 are rejected under 35 U.S.C. 101 because the disclosed invention, as recited in the claims, is inoperative and therefore lacks patentable utility.
Without the “first hydraulic motor connected to the first threaded rod and configured to drive the first threaded rod” recited in claim 4, the claimed invention cannot “move the weight from the first position to the second position” as disclosed in paragraph [0004] of the specification. Therefore, the claimed invention cannot operate as intended and lacks patentable utility.
Claims 1-4, 6-10, and 17-20 are rejected under 35 U.S.C. 101 because the disclosed invention, as recited in the claims, is inoperative and therefore lacks patentable utility.
Without the “hydraulic motor connected to the second threaded rod and configured to drive a generator” recited in claim 5, the claimed invention cannot “drive a generator” as recited by the claim. Therefore, the claimed invention cannot operate as intended and lacks patentable utility.
Claims 1-7, 10, and 17-20 are rejected under 35 U.S.C. 101 because the disclosed invention, as recited in the claims, is inoperative and therefore lacks patentable utility.
Without the “one or more rollers and/or balls disposed on an interior surface of each of the barrel cams in a helical configuration” recited in claim 8, the claimed invention cannot “convert rotational motion to linear motion and move the weight from the first position to the second position and convert linear motion to rotational motion and be driven by the weight moving from the second position to the first position” as recited by claim 1. Therefore, the claimed invention cannot operate as intended and lacks patentable utility.
Claims 1-10 and 17-20 are rejected under 35 U.S.C. 101 because the disclosed invention, as recited in the claims, is inoperative and therefore lacks patentable utility.
Without:
a hydraulic system as disclosed in paragraphs [0041], [0066], [0074], [0075], and [0079]-[0085] of the specification and illustrated in Figure 24; and
a means for providing energy to operate a hydraulic system;
the claimed invention cannot operate the “first hydraulic motor” (recited in claim 4) and the “hydraulic motor” (recited in claim 5). Therefore, the claimed invention cannot operate as intended and lacks patentable utility.
If the claims were to recite a complete working device, the following rejection would apply. This rejection is based on the broadest possible interpretation of the claim language and the following assumption:
a hydraulic system as disclosed in paragraphs [0041], [0066], [0074], [0075], and [0079]-[0085] of the specification and illustrated in Figure 24; and
a means for providing energy to operate a hydraulic system;
were added/included in the independent claim.
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 1-3, 7-9, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 8,796,877 B2 to Shinohara in view of U.S. Patent No. 7,043,909 B1 to Steele.
Shinohara discloses a liquid power generation apparatus and liquid power generation system, comprising:
a weight (1; see column 3, line 62 to column 4, line 4) configured to store energy when moved from a first position (low) to a second position (elevated);
a first threaded rod (21; see Figure 6, left side) configured to be driven by an energy source (711) to convert rotational motion to linear motion and move the weight from the first position to the second position;
a second threaded rod (21; see Figure 6, right side) configured to convert linear motion to rotational motion and be driven by the weight moving from the second position to the first position;
a first screw body (22; see Figure 6, left side) configured to couple to the first threaded rod and move the weight from the first position to the second position; and
a second screw body (22; see Figure 6, right side) configured to couple to the second threaded rod and rotate the second threaded rod as the weight moves from the second position to the first position;
wherein at least one of the first threaded rod or the second threaded rod is segmented (see Figure 7 in which element 21 is connected to rotary shaft 25 above and rotary shaft 27 below) such that each segment is joined to an adjacent segment by a segmented joint.
However, it fails to disclose the use of barrel cams on the threaded rods.
Steele discloses a beta type Stirling cycle device, comprising:
“an inventive linkage” that “is provided so that an engine can be engaged with cam grooves provided in a cam body such as a face cam or a barrel cam” (see column 1, lines 60-63).
It would have been obvious to one skilled in the art before the effective filling date of the invention to use the barrel cam disclosed by Steele on the power generation apparatus and system disclosed by Shinohara, for the purpose of allowing “a plurality of single-cylinder engines can be engaged into a common barrel cam, thus making a composite multi-cylinder barrel-cam or "clustered" engine” (see column 2, lines 10-13).
With regards to claim 2, Shinohara discloses:
an arm (surfaces having bearings 24 and 26) configured to support the first threaded rod and the second threaded rod.
With regards to claim 3, Shinohara discloses:
a base (surface having bearing 23) configured to support the arm.
With regards to claim 7, Shinohara discloses:
a locking mechanism (41); and
an aperture configured to enable each of the barrel cams to pass through when the locking mechanism is in a released position (see Figure 6).
With regards to claim 8, Steele discloses:
one or more rollers (303) and/or balls disposed on an interior surface of each of the barrel cams in a helical configuration (see Figures 2 and 3).
With regards to claim 9, Shinohara in view of Steele disclose:
each of the threaded rods includes threads (see Figure 6 of Shinohara); and
the rollers and/or balls being configured to track the threads as each of the threaded rods rotates (see Figures 2 and 3 of Steele).
With regards to claim 17, Shinohara discloses:
a support (24, 26) mounted to the arm and configured to receive the segmented joint.
With regards to claim 18, Steele disclose:
the support being configured to permit traversal of the first barrel cam or the second barrel cam across the segmented joint.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 8,796,877 B2 to Shinohara in view of U.S. Patent No. 7,043,909 B1 to Steele as applied to claims 1-3 and 7-10 above, and further in view of U.S. Patent Application Publication No. 2012/0019008 A1 to Hughley.
Shinohara in view of Steele discloses a liquid power generation apparatus and liquid power generation system as described in paragraph 18 above.
However, it fails to disclose:
a first hydraulic motor connected to the first threaded rod and configured to drive the first threaded rod; and
a second hydraulic motor connected to the second threaded rod and configured to drive a generator.
Hughley discloses a hybrid vertical energy storage system, comprising:
a hydraulic motor (123) connected to fluid accumulators (104 and 107) and configured to drive fluid between the accumulators and an electric generator.
It would have been obvious to one skilled in the art before the effective filling date of the invention to use the hydraulic motors (see Abstract, where it is stated that “hydraulic pumps and motors” are used) disclosed by Hughley on the power generation apparatus and system disclosed by Shinohara in view of Steele, for the purpose of transferring fluid between the accumulators and providing mechanical energy to the electric generator.
With regards to claim 6, Shinohara discloses:
a stopper (41; see column 8, line 24) disposed on an end portion of a connecting shaft configured to prevent each of the barrel cams from moving along each of the threaded rods.
Allowable Subject Matter
Claim 10 and 20 are objected to as being dependent upon rejected independent base claim 1, but would be allowable:
if rewritten in independent form including all of the limitations of the base claim and any intervening claims;
if rewritten to overcome the rejections 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; and
if rewritten to overcome the rejections under 35 U.S.C. 101.
The following is a statement of reasons for the indication of allowable subject matter.
The prior art of record, taken alone or in combination, does not teach or suggest a system as recited by dependent claim 10, comprising:
a finger disposed on an exterior of each of the barrel cams configured to engage with and support the weight as the weight traverses the threaded rod.
The prior art of record, taken alone or in combination, does not teach or suggest a system as recited by dependent claim 19, wherein:
the first threaded rod has a first thread pitch and the second threaded rod has a second thread pitch different from the first thread pitch.
The prior art of record, taken alone or in combination, does not teach or suggest a system as recited by dependent claim 20, comprising:
a synchronizer configured to concurrently rotate the first threaded rod and the second threaded rod to maintain the weight level.
Conclusion
THIS ACTION IS MADE FINAL. 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 PEDRO J CUEVAS whose telephone number is (571)272-2021. The examiner can normally be reached 9:00 AM - 6:00 PM.
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/PEDRO J CUEVAS/Primary Examiner, Art Unit 2896 October 24, 2025
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