DETAILED ACION
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 8 is objected to because of the following informalities: “values” in line 2 should read “valves”. 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 1-12 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.
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 claims and specification recite a “planetary gear” which in the art is defined by a gear train that includes a sun gear surrounded by one or more planetary gears enclosed by a ring gear that allow a carrier attached to the planetary gears to rotate about the axis of the sun gear:
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However, the figures only depict a gearset including bevel gears (982, 1082, 1182) that do not provide the characteristic motion of a planetary gearset. While a planetary gear may be a bevel gear the two terms are not interchangeable. The term is indefinite because the specification does not clearly redefine the term. For purposes of examination “planetary gear” will be interpreted as “bevel gear” to be consistent with the figures and the motion described in the specification.
In reference to claim 2, the recitation “the two bearings are coupled to vertical sides of the square relative to a body of water comprising the floating body” is unclear. Specifically, it is unclear which two elements are coupled and how/what two elements are “relative to” each other. The two bearings referred to in claim 1 (992a, 992b; Fig. 9) as “appl[ying] a single directional torque to a drive shaft” appear to be coupled to only the shaft, spools and gears and not the “vertical sides of the square” as recited in claim 2. This coupling appears to be accomplished by mechanisms 1055 (which are recited in claim 3). For purposes of examination the sides will be interpreted as being vertical relative to the surface of the body of water and the bearings recited in the claim will be interpreted as being “indirectly coupled” by means of intermediate elements.
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.
Claim(s) 1-4, 9, 10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 4,803,839 A to Russo III (Russo) in view of US 1,066,396 A to Frame (Frame).
In reference to claim 1, Russo discloses an apparatus comprising: a floating body (300; Fig. 3), wherein the floating body reciprocates in a vertical direction based on motion (col. 3; lines 13-17); and a drive assembly (330; Figs. 3-4), the drive assembly comprising: two bearings (348, 332) coupled to opposing sides of a frame (310, 312, 314), wherein each bearing applies a single directional torque (by means of teeth 332, 352) to a drive shaft (328); the drive shaft threaded through the bearings (see Figs. 3-4), wherein the drive shaft rotates based on the movement of the floating body (see Figs. 3-4); and a spool (348, 334) attached to each bearing, wherein a cable (342, 354) is affixed to each spool (by being wrapped around), wherein each cable is affixed to an opposing side of the frame relative to another cable (see Fig. 3); and a generator (col. 5; lines 56-65) coupled to the drive assembly via the drive shaft, wherein the generator serves as a power takeoff mechanism, converting rotating engine power into electrical power (col. 5; lines 56-65), but fails to explicitly disclose a gear wheel attached to each bearing wherein the gear wheels are bridged with a planetary gear. However, Frame discloses a similar apparatus including a floating body (74; Fig. 1) and a drive assembly comprising: two bearings (the bodies housing 22, 23); a drive shaft (7) threaded through the bearings; a gear wheel (22, 23) attached to each bearing, wherein the gear wheels are bridged with a planetary gear (24); and a spool (8) attached to each bearing. It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to have simply substituted the known one-way drive mechanism and spool arrangement disclosed by Frame for the known mechanism of Russo. A person of ordinary skill would have been motivated to do so, with a reasonable expectation of success, as it has been held that the simple substitution of one known element for another to obtain predictable results is obvious (see MPEP 2141).
In reference to claim 2, the modified Russo teaches the apparatus of claim 1, wherein the frame is a square (see Fig. 3), wherein the two bearings (332, 346) are coupled (by means of the cables and top/bottom sides) to vertical sides (320, 322) of the square relative to a body of water comprising the floating body and each cable is affixed to a horizontal side (316, 318) of the square.
In reference to claim 3, the modified Russo teaches the apparatus of claim 1, wherein the two bearings are coupled to the frame via mechanisms that travel up and down the opposing sides of the frame responsive to the motion (310/312 are coupled to the housing; col. 3, lines 17-19).
In reference to claim 4, the modified Russo teaches the apparatus of claim 1, wherein the drive assembly moves upwards and downwards in the vertical direction based on the movement of the floating body (the assembly moves upwards and downward in relation to the floating body; see Figs.).
In reference to claim 9, the modified Russo teaches the apparatus of claim 1, wherein the floating body is positioned proximate to a body of water, and wherein the reciprocating of the floating body in a vertical direction is based on the motion comprising motion of waves within the body of water (col. 4; lines 55-60).
In reference to claim 10, the modified Russo teaches the apparatus of claim 1, but fails to explicitly teach a group of floating bodies. However, Frame further discloses a group of floating bodies connected in series to the drive assembly (see Fig. 1). It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the additional floating bodies disclosed by Frame into the assembly of the modified Russo. A person of ordinary skill would have been motivated to do so, with a reasonable expectation of success, as the arrangement would advantageously improve the force, speed and consistency of power output.
In reference to claim(s) 12, under the principles of inherency, the prior art apparatus of the modified Russo would necessarily perform the method(s) claimed in its normal and usual operation and thereby meets the limitations of the claim(s).
Claim(s) 5-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over the modified Russo as applied to claim 1 above, and further in view of US 2010/0043425 A1 to Dragic (Dragic).
In reference to claims 5 and 6, the modified Russo teaches the apparatus of claim 1, but fails to explicitly disclose the combination of the apparatus and the particulars features of the float. However, Dragic discloses a floating body (IIf; Figs. 13, 14, 19) comprising a sealed flotation container (at symbols 2f, IIf; Fig. 19b); and a skirt (formed by the sidewalls of Figs. 19a, 19b) attached to the sealed floatation container and extending in the vertical direction, downward from the sealed floatation container, wherein the skirt comprises air bleed valves (69). It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to have simply substituted the known floating body disclosed by Dragic for the known floating body the modified Russo. A person of ordinary skill would have been motivated to do so, with a reasonable expectation of success, as it has been held that the simple substitution of one known element for another to obtain predictable results is obvious (see MPEP 2141).
In reference to claim 7, the modified Russo teaches the apparatus of claim 6, wherein a first surface of the skirt is closed and a second surface of the skirt is open (see Fig. 19), but fails to explicitly disclose the skirt is a cylinder and the first and second surfaces are circular. However, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to have selected any shape, including a cylinder, for the floating body of the modified Russo. A person of ordinary skill would have been motivated to do so, with a reasonable expectation of success, as it has been held that changes in shape are a matter of choice which a person of ordinary skill in the art would find obvious absent persuasive evidence that a particular configuration is significant (see MPEP 2144.04).
In reference to claim 8, the modified Russo teaches the apparatus of claim 7, wherein the air bleed valves comprise one-way air bleed values (par. 0103, “irreversible”).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over the modified Russo as applied to claim 1 above, and further in view of US 4,145,885 A to Solell (Solell).
In reference to claim 11, the modified Russo teaches the apparatus of claim 1, but fails to explicitly disclose one or more additional drive assemblies. However, Solell discloses a similar apparatus that utilizes the vertical motion of floating bodies to generate power, comprising a first (left half of Fig. 2) and additional (right half of Fig. 2) drive assembly. It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the concept of additional drive assemblies and floating bodies in series as disclosed by Solell into the apparatus of the modified Russo. A person of ordinary skill would have been motivated to do so, with a reasonable expectation of success, in order to advantageously increase the power output of the apparatus.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN MATTHIAS whose telephone number is (571)272-5168. The examiner can normally be reached Monday-Wednesday 10am - 6pm Pacific Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Laurenzi III 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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/JONATHAN R MATTHIAS/Primary Examiner, Art Unit 3746
30 September 2026
