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 Objections
Claim 5 is objected to because of the following informalities: claim 5 (which is dependent on claim 4) recites “a hydraulic motor” even though claim 4 previously recites “a first hydraulic motor”. It is not clear if the “hydraulic motor” in claim 5 is the same “first hydraulic motor” of claim 4 or a second hydraulic motor.
Appropriate correction is required.
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 1-3 and 5-10 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 and 6-10 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 and 10 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 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 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 and 5-10 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 and 6-10 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 and 10 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 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 and 7-9 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 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.
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).
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 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 motor 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 is 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.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Han can be reached at (571) 272-2078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PEDRO J CUEVAS/Primary Examiner, Art Unit 2896 October 24, 2025