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 .
35 USC 102 rejections
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) 1-10, 21-22, 25 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by US 2020/0056578 (Sheldon).
Regarding independent claim 1, Sheldon discloses a method of generating a computational product (note figures 126, 133 below), the method comprising: capturing energy from waves of a body of water with a buoyant wave energy converter, wherein the buoyant wave energy converter comprises: a hollow buoyant reservoir 1102; an injection tube (1110, 1111) fluidly coupled to the hollow buoyant reservoir, wherein the injection tube is configured to impel water into the hollow buoyant reservoir when a portion of the injection tube oscillates vertically beneath a waterline 1101; a fluid path (note fluid path 115 below) having an inlet fluidly coupled to an interior of the hollow buoyant reservoir 1102, where the fluid path comprises an outlet, and wherein the fluid path is configured to remove water from the hollow buoyant reservoir; a chamber (nozzle chamber of nozzle 1116 in figure 126) fluidly coupled to the outlet of the fluid path and to the hollow buoyant reservoir, wherein the chamber comprises a fluid drain aperture (note flow 1119 coming out, paragraph 1302); and using the captured energy to power a computing system coupled to the buoyant wave energy converter to generate the computational product (paragraphs 345-350).
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Regarding claims 2-10, Sheldon clearly discloses in paragraphs 345-350 that the captured energy can be used to generate computer products including a digital good (claim 2), computer algorithm (claim 3), a cryptocurrency (claim 4), blockchain (claim 5), machine learning algorithm (claim 6), artificial intelligence output (claim 7), artificial neural network (claim 8), complex computer processing operations (claim 9), and data center (claim 10).
Regarding independent claim 21, Sheldon discloses a method of generating a chemical, the method comprising: capturing energy from waves of a body of water with a buoyant wave energy converter (note the rejection of claim 1 and figures 126, 133 above), wherein the buoyant wave energy converter comprises: a hollow buoyant reservoir 1102; an injection tube 1110, 1111, fluidly coupled to the hollow buoyant reservoir, wherein the injection tube is configured to impel water into the hollow buoyant reservoir when a portion of the injection tube oscillates vertically beneath a waterline; a fluid path 1115 having an inlet fluidly coupled to an interior of the hollow buoyant reservoir, where the fluid path comprises an outlet, and wherein the fluid path is configured to remove water from the hollow buoyant reservoir; a chamber (nozzle chamber of nozzle 1116 in figure 126) fluidly coupled to the outlet of the fluid path and to the hollow buoyant reservoir, wherein the chamber comprises a fluid drain aperture (note flow 1119 coming out, paragraph 1302); and using the captured energy to generate the chemical (paragraph 1472).
Regarding claims 22, 25, paragraph 1472 clearly discloses the generated fuel is hydrogen gas.
35 USC 103 rejections
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.
Claims 23-24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over U.S. 2020/0056578 (Sheldon). Sheldon discloses all the claimed subject matter as set forth above in the rejection of claim 1, but does not disclose the fuel is methanol or HCl. However, according to MPEP 2144.05, II. ROUTINE OPTIMIZATION, A) Optimization Within Prior Art Conditions or Through Routine Experimentation, note In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). The concept of generating different fuels in these claims involves the result of “routine optimization”. It would have been a “routine optimization” to one of ordinary skill in the art at the time the claimed invention was filed generate methanol or HCl as claimed in Sheldon for the purpose of driving machines using those specific fuels.
Obviousness Double Patenting Rejections
Claims 1-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of US 12,435,692, or claim 5 of U.S. Patent No. 11,846,265 or claim 1 of US 12,173,683. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Note the bold words in independent claims 1, 11, 21, and 26 of this application below.
1. A method of generating a computational product, the method comprising: capturing energy from waves of a body of water with a buoyant wave energy converter, wherein the buoyant wave energy converter comprises: a hollow buoyant reservoir; an injection tube fluidly coupled to the hollow buoyant reservoir, wherein the injection tube is configured to impel water into the hollow buoyant reservoir when a portion of the injection tube oscillates vertically beneath a waterline; a fluid path having an inlet fluidly coupled to an interior of the hollow buoyant reservoir, where the fluid path comprises an outlet, and wherein the fluid path is configured to remove water from the hollow buoyant reservoir; a chamber fluidly coupled to the outlet of the fluid path and to the hollow buoyant reservoir, wherein the chamber comprises a fluid drain aperture; and using the captured energy to power a computing system coupled to the buoyant wave energy converter to generate the computational product.
11. A method of generating a computational product, the method comprising: capturing energy from waves of a body of water with a buoyant wave energy converter, wherein the buoyant wave energy converter comprises: a hollow buoyant reservoir; an injection tube fluidly coupled to the hollow buoyant reservoir, wherein the injection tube is configured to impel water into the hollow buoyant reservoir when a portion of the injection tube oscillates vertically beneath a waterline; an air ingestion pipe coupled to the hollow buoyant reservoir; an air supply pipe coupled to the air ingestion pipe; a chamber fluidly coupled to an outlet of the air ingestion pipe and to the hollow buoyant reservoir, wherein the chamber comprises a fluid drain aperture; and using the captured energy to power a computing system coupled to the buoyant wave energy converter to generate the computational product.
21. A method of generating a chemical, the method comprising: capturing energy from waves of a body of water with a buoyant wave energy converter, wherein the buoyant wave energy converter comprises: a hollow buoyant reservoir; an injection tube fluidly coupled to the hollow buoyant reservoir, wherein the injection tube is configured to impel water into the hollow buoyant reservoir when a portion of the injection tube oscillates vertically beneath a waterline; a fluid path having an inlet fluidly coupled to an interior of the hollow buoyant reservoir, where the fluid path comprises an outlet, and wherein the fluid path is configured to remove water from the hollow buoyant reservoir; a chamber fluidly coupled to the outlet of the fluid path and to the hollow buoyant reservoir, wherein the chamber comprises a fluid drain aperture; and using the captured energy to generate the chemical.
26. A method of generating a chemical, the method comprising: capturing energy from waves of a body of water with a buoyant wave energy converter, wherein the buoyant wave energy converter comprises: a hollow buoyant reservoir; an injection tube fluidly coupled to the hollow buoyant reservoir, wherein the injection tube is configured to impel water into the hollow buoyant reservoir when a portion of the injection tube oscillates vertically beneath a waterline; an air ingestion pipe coupled to the hollow buoyant reservoir; an air supply pipe coupled to the air ingestion pipe; a chamber fluidly coupled to an outlet of the air ingestion pipe and to the hollow buoyant reservoir, wherein the chamber comprises a fluid drain aperture; and using the captured energy to generate the chemical.
Here is a claim matching table:
Independent claims 1, 14, 21 of US 12,435,692
Claim 5 of US 11,846,265 is a combination of claims 1, 3-5
Claim 1 of US 12,173,683
1. A method of generating a computational product, the method comprising:
capturing energy from waves of a body of water with a buoyant wave energy converter, the buoyant wave energy converter comprising a hollow buoyant reservoir, an injection tube fluidly coupled to the hollow buoyant reservoir, the injection tube configured to impel water into the hollow buoyant reservoir when a portion of the injection tube oscillates vertically beneath a waterline, a fluid path having an inlet fluidly coupled to an interior of the hollow buoyant reservoir, the fluid path having an outlet, and the fluid path configured to remove water from the hollow buoyant reservoir, a chamber fluidly coupled to the outlet of the fluid path and to the hollow buoyant reservoir, the chamber comprising a fluid drain aperture, an air ingestion pipe coupled to the hollow buoyant reservoir and to the chamber, and an air inlet conduit coupled to the air ingestion pipe; and
using the captured energy to power a computing system coupled to the buoyant wave energy converter to generate the computational product.
14. A method of generating a chemical, the method comprising:
capturing energy from waves of a body of water with a buoyant wave energy converter, the buoyant wave energy converter comprising a hollow buoyant reservoir, an injection tube fluidly coupled to the hollow buoyant reservoir, the injection tube configured to impel water into the hollow buoyant reservoir when a portion of the injection tube oscillates vertically beneath a waterline, a fluid path having an inlet fluidly coupled to an interior of the hollow buoyant reservoir, the fluid path having an outlet, and the fluid path configured to remove water from the hollow buoyant reservoir, a chamber fluidly coupled to the outlet of the fluid path and to the hollow buoyant reservoir, the chamber comprising a fluid drain aperture, an air ingestion pipe coupled to the hollow buoyant reservoir and to the chamber, and an air inlet conduit coupled to the air ingestion pipe; and
using the captured energy to generate the chemical.
21. A method of generating a biological product, the method comprising:
capturing energy from waves of a body of water with a buoyant wave energy converter, the buoyant wave energy converter comprising a hollow buoyant reservoir, an injection tube fluidly coupled to the hollow buoyant reservoir, the injection tube configured to impel water into the hollow buoyant reservoir when a portion of the injection tube oscillates vertically beneath a waterline, a fluid path having an inlet fluidly coupled to an interior of the hollow buoyant reservoir, the fluid path having an outlet, and the fluid path configured to remove water from the hollow buoyant reservoir, a chamber fluidly coupled to the outlet of the fluid path and to the hollow buoyant reservoir, the chamber comprising a fluid drain aperture, an air ingestion pipe coupled to the hollow buoyant reservoir and to the chamber, and an air inlet conduit coupled to the air ingestion pipe; and
using the captured energy to generate the biological product.
A pressure regulating wave energy converter, comprising: a hollow buoyant reservoir; an injection tube depending from the hollow buoyant reservoir, the injection tube configured to impel water into the hollow buoyant reservoir when the injection tube oscillates vertically beneath a waterline; a turbine inlet pipe fluidly connected to and extending from the hollow buoyant reservoir at an inlet end; a water turbine disposed in the turbine inlet pipe; an effluent buffer chamber fluidly connected to an outlet end of the turbine inlet pipe, said effluent buffer chamber extending to and in fluid communication with said hollow buoyant reservoir, said effluent buffer chamber further comprising a fluid drain aperture below said waterline.
3. The pressure regulating wave energy converter of claim 1, further comprising an air ingestion pipe extending from an interior of the hollow buoyant reservoir to an air-water inlet at the effluent buffer chamber.
4. The pressure regulating wave energy converter of claim 3, wherein the air ingestion pipe includes a venturi section located outside of the hollow buoyant reservoir.
5. The pressure regulating wave energy converter of claim 4, wherein further comprising an air inlet conduit connecting ambient air to said venturi section of the air ingestion pipe.
1. A hydrodynamic-pump, comprising: a hollow buoyant reservoir; an injection tube fluidly coupled to the hollow buoyant reservoir, the injection tube configured to impel water into the hollow buoyant reservoir when a portion of the injection tube oscillates vertically beneath a waterline; a pipe having an inlet fluidly coupled to an interior of the hollow buoyant reservoir, the pipe having an outlet, and the pipe configured to remove water from the hollow buoyant reservoir; a chamber fluidly coupled to the outlet of the pipe and to the hollow buoyant reservoir, the chamber comprising a fluid drain aperture; an air ingestion pipe coupled to the hollow buoyant reservoir and to the chamber; and an air inlet conduit coupled to the air ingestion pipe.
Anticipation:
US 12,435,692 anticipates the claimed subject matter of this application. The claims of the patent recite more elements than in this application and therefore the claims of this application should be rejected under obviousness double patenting rejection. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).
Note: Claims 1-13 of US 12,435,692 anticipate claims 1-20 of this application. Independent claim 1 of US 12,435,692 recites both the fluid path and the air ingestion pipe while independent claim 1 of this application recites only the fluid path, and independent claim 11 only recites the air ingestion pipe.
Claims 14-20 of US 12,435,692 anticipate claims 21-30 of this application. Independent claim 14 of US 12,435,692 recites both the fluid path and the air ingestion pipe while independent claim 21 of this application recites only the fluid path, and independent claim 26 only recites the air ingestion pipe.
Obviousness:
From the table above, claim 5 of US 11,846,265 or claim 1 of US 12,173,683 recite all the claimed subject matter of independent claims 1, 14, 21, 26 of this application except for using the captured energy to generate computational product in claim 1-20, or chemicals in claims 21-30. However, according to paragraphs 238, 254, 275 of this application, the claimed products are made by simply using the electricity of the waver converter to power different manufacturing devices. Thus, Official Notice is taken that electrical power can be used to make the computational product, chemical, and/or biological product, it would have been obvious for a person having ordinary skill in the art to use the generated electrical product of claim 5 of US 11,846,265 or claim 1 of US 12,173,683 to make computational product, and/or chemical product as claimed for the purpose of converting electrical energy to different types of products.
Regarding dependent claims 2-10, 12-20, 22-25, 27-30, again, it would have been obvious to use the generated electrical product of claim 5 of US 11,846,265 or claim 1 of US 12,173,683 to make different types of computational product, and/or chemicals as claimed for the purpose of converting electrical energy to different types of products.
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.
Conclusions
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Examiner Nguyen whose telephone number is (571) 272-4861. The examiner can normally be reached on Monday--Thursday from 9:00 AM to 7:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Laurenzi, can be reached on (571) 270-7878.
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HOANG M NGUYEN/Primary Examiner, Art Unit 3746
HOANG NGUYEN
PRIMARY EXAMINER
ART UNIT 3746
Hoang Minh Nguyen
2/27/2026