I have questions concerning a Nonprovisional Patent I recently…

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Thank you.

Thanks Alex – sorry for delay reply / am having internet issues but think I now have that resolve.

Specifically, I have invented a novel and unique Biomass Combustion Unit (an apparatus) such as not know to have ever existed which would be engineered by the most world renowned extreme and precise engineers’ Chief Technologist - collaborating partner) as well as a method whereby the latest in a Supercritical Power Generating Cycle (Fortune 100 Company - collaborating partner) may be deployed for a ground-breaking and game changing system for turning waste and other no to negative value (taken to landfill / open burned) biomass into renewable electricity. The highest departments of the federal government Defense have now considered this novel and want it deployed at a major military installation. Such departments as well as the nation’s largest national laboratory and have just approved the technology and stated there exists no technical barriers and it is economically viable. I already have published patent pending which may be seen by searching "Duane Julian Patent" as well as a small scale working prototype exporting power to a Fortune 500 company since 2010 - search You Tube "Duane Julian Biomass" SCANA video. I just recently filed a very extensive and detailed Nonprovisional Utility Patent application (out of desperation from attorneys’ foot dragging – that literally took me 900 man hours with very detailed and professional drawing) and have questions concerning my claims.

After reviewing this issue for the past 3 days and nights I find conflicting information concerning having both a method and apparatus in the same application. I then find the below on the internet coming from a well-respected patent attorney in CA:

Combined Method and Apparatus Claims

Attorneys sometimes want to know whether it is proper to combine method claims with apparatus or composition claims. The answer is yes.

My question involves whether is is correct or not and if so how to best proceed to correct my claims as I am filing an amended specification and drawing to correct minor typos and the like.

These questions involve the method and apparatus being set forth in the same application. Are you following me so far?

Here is copy of what I prefer to say - would this fly at patent office?

Claim 1. A novel apparatus for producing useful heat, by means of combusting Non-To-Minimally Fractionalized Biomass comprised of:

(i) of atypical, inconsistent, and infinitely different sizes, shapes, and moisture contents, of varying species and varieties; and

(ii) which can be up to 5’ in diameter by 40’ in length;

whereby said Biomass:

(i) is deposited via vertical opening and closing side steel door(s) into a water jacketed steel Burn Box;

(ii) is provided the proper volumes of forced air;

(iii) is completely combusted;

(iv) does releases all its heat energy;

(v) produces useful, renewable, and consistent heat; and

(vi) is converted to a consistent and useful ash byproduct.

Claim 2. A method for the generation of useful renewable electricity, said method comprising the steps of:

combusting Non-To-Minimally Fractionalized Biomass:

(i) comprised of atypical, inconsistent, and infinitely different sizes, shapes, and moisture contents, of varying species and varieties; and

(ii) which can be up to 5’ in diameter by 40’ in length;

for the particular purpose of producing direct heating of a working fluid using the hot flue gases from said combusting step;

carrying out a modified Rankine Cycle by;

(i) pressurizing the working fluid;

(ii) heating said working fluid to a supercritical phase using heat from said hot flue gases;

(iii) expanding and reducing the pressure of said supercritical working fluid using a positive displacement mechanical device to generate mechanical power;

(iv) condensing said working fluid to a liquid state; and

transferring at least a portion of said mechanical power to a generator;

generating electricity using said generator.

Claim 3. A system for the generation of useful renewable electricity consisting of the utilization of the novel apparatus of Claim 1 to produce the heat energy as required in the method of Claim 2.

Claim 4. A method for cogeneration of useful renewable electricity and heat, said method comprising the steps of:

combusting Non-To-Minimally Fractionalized Biomass comprised of:

(i) atypical, inconsistent, and infinitely different sizes, shapes, and moisture contents, of varying species and varieties; and

(ii) which can be up to 5’ in diameter by 40’ in length;

for the particular purpose of producing consistent heat;

heating water using said heat from said combusting step;

carrying out a subcritical organic Rankine Cycle by:

(i) pressurizing a liquid organic refrigerant;

(ii) boiling said organic refrigerant using heat from said heated water;

(iii) expanding and reducing the pressure of said boiling organic refrigerant using a positive displacement mechanical device to generate mechanical power; and

(iv) condensing said organic refrigerant to a liquid state thereby liberating heat; and

transferring at least a portion of said mechanical power to a generator:

generating electricity using said generator and

capturing as useful heat, said useful heat comprising at least a portion of said heat liberated in said condensing substep of said organic Rankine Cycle.

Claim 5. A system consisting of utilizing the hot water produced by the water jacketing of the novel apparatus of Claim 1 for the generation of useful renewable electricity and heat in the method of Claim 4.

Am I allowed to tip IP attys btw?

prototype video link:

http://www.youtube.com/watch?v=Uf6riuBwG1I

Prior patent I had atty file - was a nightmare and took forever.

http://www.google.com/patents/US20110314816

here is ash removal video I did for Oak Ridge National Lab.

http://www.youtube.com/watch?v=NpTOWMtw2Bo

I also have 45 page specification and very detailed professional drawings

I think I have found part of the answer - It appears that you cannot file an novel apparatus claim with a method claim - although you can cite an existing appartus in a method claim. If so, what should I do? Just looked up a divisonal patent and have a basic understanding of that - would filing the same thing over again and listing in the cross referenced to related patent (listing the one I just filed be an answer and just change the claim? Thanks, Duane

Looks like I found part of my answer but need you to confirm:

A divisional patent application should contain identical drawings and specifications as the original application, which is called the parent application. The only aspect that should differ is the claims. A single invention can be patented as many times as necessary to cover all of its legitimately patentable uses. A new filing fee will apply each time, and each divisional patent will undergo the same examination process as a new application.

Do I put on the face of it that this is a Divisonal Patent?

Hi Alex,

The Invention involves a novel Biomass Combustion Unit whereby the heat energy uses two methods: (i) Supercritical and (ii) Subcritical - which I alrady have a patent published for. Are you saying I need to do a continution in part on the appartus? I know feel certain there are at least two patent inventions in the appication I just filed, the third (the subcritical) portion is probably already covered by what I have published and pending.

BTW - there is no new matter presented as the application I recently filed is extremely comprehensive.

It is my understanding that only one invention may be granted a patent. Does a continuation in part provide for more than one patent? It appears we most definitely have an appartaus invention and then method(s) invention(s).

Correction: A Continuation (not a Continuation-in-Part). Looks to me what I have done is crated two to three inventions in the same patent. If the patent examiner looks at it as it is written, it appears to me he will request I pick one of the inventions (assuming they are all patentable which I feel very strongly they will be) and then disallow the others. If this is the case, would not I be wise to go ahead and correct the docs now and file the Contination?

Thanks,

Duane

A continuation is a second application for the same invention claimed in a prior nonprovisional application and filed before the original prior application becomes abandoned or patented. The continuation application may be filed under 37 CFR 1.53(b). The applicant in the continuation application must include at least one inventor named (no problem as I am sole inventor) in the prior nonprovisional application. The disclosure presented in the continuation must be the same as that of the original application; i.e., the continuation should not include anything which would constitute new matter if inserted in the original application (no problem as the specification covers it all without adding anything). The continuation application must claim the benefit of the prior nonprovisional application under 35 U.S.C. 120 or 365(c). >For more information on claiming the benefit of a prior nonprovisional application, see MPEP § 201.11

Does this mean I simply use the exact same specification and simply change the amend the claims of the first application (picking the combustion unit) and then file the Continuation with the new claims (using the method).?

It also brings up the inssue of the first one although I am concerned the first one is not broad enough to catch the matter in the second but it may be. Note I have the DOE and DOD breathing down my neck at this moment.

Alex,

I appreciate your assistance however have grave concerns over taking the approach to let the PTO examiner request a divsional(s). If he does not make such request and they issue a patent then, from what case law I have review, I would be required to either file on my own ininative or risk the patent nullifed as having been improperly issued in the first place. Do you agree or disagee?

Thanks,

Duane

I understand it is their duty however if they fail in that duty would not the courts invalidate the patent? It is my undertanding the USPTO has no liability for errors, is that correct?

that is to say that if they granted the patent as filed (containing a novel apparatus AND methods) and I did not file divisionals, would not the court strike in an infrigement action.

Yes I think so and appreciate your help. You may want to check with the recent cases and confirm what I have been reviewing about the patent being flawed and thus provided no protection. Thanks you again and signing off and going to click you advise as great. May ask you further questions later in a separate session. Duane