Is Sikorsky Attempting to Inhibit Others from Developing Electric Rotorcraft?

[Dave_Jackson]

Sikorsky's patent attorney and a few of Sikorsky's current and previous employees, as the Correspondent and the inventors, have obtained a US Patent Application 20090140095 for 'ELECTRIC POWERED ROTARY-WING AIRCRAFT' (http://appft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PG01&p=1&u=%2Fnetahtml%2FPTO%2Fsrchnum.html&r=1&f=G&l=50&s1=%2220090140095%22.PGNR.&OS=DN/20090140095&RS=DN/20090140095), dated June 4,2009.

All of the claims and embodiments in this patent application should be of common sense to practitioners of electrical and rotorcraft engineering. In fact, many of the claims are all ready used by those producing R/C electric helicopters. However, the granting of a patent on the very general and sweeping claims in this patent application could be used to severely constrain the work of others that wish to research and develop electrically driven rotorcraft.

This Patent Application makes nebulous claims to items such as "an overrunning electric motor", but more significant is its claims on features such as;

The rotor system and the electric motor mounted on the same axis of rotation.
The electric motor mounted at least partially within the rotor hub.
The use of a slow speed motor (such as axial-flux motor) to eliminate the need for a gearbox.These are common sense features.

In addition, all three of the above features are incorporated into one or more of the Electrotors (http://www.unicopter.com/Electrotor.html). Also, all of these Electrotor concepts (inventions) were; published on the Internet, and posted to four different forums, and even the Domain name 'Electrotor' was acquired; before US 20090140095's initial filing date of Nov. 30,2007. [The specific dates are given at the end of this posting.]

These Electrotor rotorcraft drives and their 'inventions' were freely placed in the public domain so that all could utilize them and build upon them.


What could or should be done to assure that these obvious and previously known ideas remain available to all companies and individuals who would wish to participate in the future of electrically driven rotorcraft?

Dave Jackson


____________________________________

Patent Application 20090140095 dates;
Publishing date; June 4, 2009
Filed date; January 23, 2008
Provisional Patent Application - Filed date; November 30, 2007

Electrotor - SloMo (http://www.unicopter.com/ElectrotorSloMo.html) dates;
Initially displayed on the Internet: July 23, 2006
Posted on PPRuNe Forum: September 25, 2006 (http://www.pprune.org/rotorheads/244146-challenge-those-who-not-technically-challenged-2.html#post2872688)
Posted on Rotary Wing Forum: September 29, 2006 (http://www.rotaryforum.com/forum/showthread.php?p=136158&highlight=Electrotor#post136158)

Electrotor - Simplex (http://www.unicopter.com/ElectrotorSimplex.html) dates;
Initially displayed on the Internet: September 10, 2007
Posted on Rotary Wing Forum: September 10, 2007
A subsiquent post on Rotary Wing Forum: October 26, 2007 (http://www.rotaryforum.com/forum/showthread.php?p=198635&highlight=Electrotor-Simplex#post198635)

Electrotor - Plus (http://www.unicopter.com/ElectrotorPlus.html) dates;
Initially displayed on the Internet: May 12, 2007
Posted on PPRuNe Forum: June 23, 2007 (http://www.pprune.org/rotorheads/281332-aerodynamics-two-electrically-driven-rotor-concepts-future-rotorcraft.html)
Posted on Rotary Wing Forum: June 24, 2007
Posted on Eng-Tips Forum: June 24, 2007 (http://www.eng-tips.com/viewthread.cfm?qid=190505)

Electrotors - ALL (http://www.unicopter.com/Electrotor.html) dates;
Posted on RC Groups Forum: November 17, 2007 (http://www.rcgroups.com/forums/showthread.php?p=8567967#post8567967)
.

[ramen noodles]

Dave,

Sirohi, the principal inventor, is not a lawyer, he is a distinguished engineering expert on electrical actuation, and part of the University of Maryland faculty that researches in electrical actuation. This invention is probably based on solid work.
Aerospace Engineering and Engineering Mechanics (http://www.ae.utexas.edu/faculty/members/sirohi.html)

[Dave_Jackson]

ramen noodles,

There is no questioning the intelligence of Jayant Sirohi.

However, his primary field appears to be ornithopters, mechanisms for controlled actuation, and micro aircraft (MAV). He has one patent entitled 'Biomimetic mechanism for micro aircraft' and he has a patent pending entitled 'Fluid-Driven Artificial Muscles as Mechanisms for Controlled Actuation'.

None of the above has anything to do with the three primary claims, which were mentioned in the first post on this thread.

After the University of Maryland he worked for Sikorsky for a short period of time and then left for the University of Texas in the Fall of 2008.

Ironically, while at the University of Maryland, Dr. Sirohi co-presented a paper to the AHS entitled "Design and Testing of a Rotary Wing MAV with an Active Structure for Stability and Control" (http://www.vtol.org/pdf/61AircraftDesignII.pdf). A picture of the MAV shows that the motor and the driven rotor have a common axis of rotation. The paper was presented 2-1/2 years before this patent application and this, in and of itself, should negate the first claim in this patent application.

The lack of any substance in the application suggests that the source may not be the named inventors, or even an engineering department.

Perhaps other major rotorcraft companies should be made aware of the future ramifications of such a patent, if it was to be approved.


Dave

[k12479]

Dave,

Can't say I've read the links you posted but I think if something gets patented that can subsequently be shown to have already been in the public domain, then the patent doesn't remain valid/enforceable. Guess it would then become a case of fighting it out in court.

[NonSAC]

Let's not acuse without solid grounds.

(1) This is not a patent. This is the merely the 18-month from earliest priority date publication of the application. The application has not been examined, as such the patentee has no right to exclude the public generally from practice of the invention.

(2) The patent statutory scheme refers to the issues you spoke of as anticipation and obviousness, 35 USC 102 and 35 USC 103 respectively. If there is not a reference which recites the elements of the claims for rejection purposes there will certainly be a combination of references that makes it obvious. The examiner will surely reject these claims, particular the aggressively broad claim 1. It is difficualt to tell what they will actually get, and prosecution will liekly take years.

As a member of the public there is a process for the public to submit references that you believe are relevant to prosecution of the application. This period is limited, so you need to act soon. The examiner's name is Michael Mansen; you can get intructions for how to submit references that you believe he needs to consider through the USPTO's inventor's assistance center at (800)PTO-9199.

(3) In the event that SAC does obtain a patent from this application, it will be in the US only unless they go international, and protection will thus be limited to the US. Since in the rest of the world absolute novelty dictates patentability, the practice of the invention will therefore not be restricted outside of the US. Bell will be hosed, but Eurocopter and Augusta-Westland among others will not be restricted in any way.

(4) This was not filed by a Sikorsky patent attorney. This was filed by a firm in Michegan that I imagine picked it up on an outsourced, firm-fixed basis. It it an extremely brief application, so they probably made decent money drafting it. I'd be curious to see who actually winds up prosecuting it.

SAC does not have an IP department at the moment, I believe, though things may be different by now. There is considerable confusion IP-wise at SAC as can be seen in inability to differentiate between their allowed trademark registrations and their pending applications, compare 'S-92A' and 'X2 Technology' registrations with the USPTO and SAC's use in news releases in view of the rules.

(5) Development of the concept of a mechanical, transmissionless rotor craft by SAC should be encouraged, particularly in view of state of the S-92A 'extremely reliable' transmission, the Couger crash and the vehicle's continued use over water. Senseless death followed additional senseless risk taking needs to be ended any way possible.

I agree with your concerns about SAC generally, but disagree that this is as serious as your post seems to imply.

[Dave_Jackson]

K12479,Guess it would then become a case of fighting it out in court. It appears that some well financed companies acquire 'frivolous' patents because the patent can then be used in court to monetarily outgun a smaller litigant.

I can only go so far, since there is no interest on my part to obtain patents or make money from the research and development. Perhaps one or more of the big players in rotorcraft will realize what a patent with such a sweeping set of claims could do to the future of the industry.


NonSAC,Let's not accuse without solid grounds.
Thank you for your very informative posting, and your concern about the potential for accusation.

Firstly, I trust that no accusation has been made, nor was one intended. However, your concern is appreciated.

Should this concern relate to the 'Sikorsky Aircraft Corporation' and the question that was asked in the title of this thread, I would mention that this question was based on the apparent facts that the Correspondent on the application is Carlson, Gaskey & Olds PC and this attorney represented Sikorsky on over 80 patents during the past seven years, plus at least three of the four inventors do or have worked for Sikorsky.

As a member of the public there is a process for the public to submit references that you believe are relevant to prosecution of the application. This period is limited, so you need to act soon. The examiner's name is Michael Mansen; you can get intructions for how to submit references that you believe he needs to consider through the USPTO's inventor's assistance center at (800)PTO-9199. This I will do. :ok:


Ironically, the following is interesting and perhaps very significant.

Patent Law ~ 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent: (http://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf)

A person shall be entitled to a patent unless —
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United StatesPrior Dissemination of 'so-called inventions' in the Patent Application:

Presented at the AHS 61st Annual Forum, Grapevine, TX, 1-3 June 2005, and placed on the Internet (http://www.vtol.org/pdf/61AircraftDesignII.pdf) 2-1/2 years before the Provisional Patent Application was filed on November, 30,2007; by the very same person who is listed as one of the Inventors in the patent application.

http://www.unicopter.com/Temporary/61AircraftDesignII.gifPerhaps the dissemination of this one paper, in and of itself, may nullify all 16 of the claims in the patent application.


Dave

[zhishengji751]

and placed on the Internet 2-1/2 years before the Provisional Patent Application was filed on November, 30,2007; by the very same person who is listed as one of the Inventors in the patent application.

I would think that example strengthens their case, as that person has established prior art.

[Dave_Jackson]

zhishengji751.

My knowledge of utility patent law is very, very limited. However, it appears that all, or most, of the world's patent offices will not patent an invention after it is in the public domain and is perhaps already being used by others. To me, this makes good sense.

In the instance that you mention, only one of the four presenters of the earlier paper is one of the four inventors on the Patent Application. This earlier paper describes a unique idea (invention) for rotorcraft flight-control, only. All of the claims in the Patent Application are very general and they existed in the public domain well ahead of the paper's research.
__________________________

From a personal perspective, I have approximately 116 Web pages (http://www.google.ca/search?q=%22Reference+patent+law+35+U.S.C.+102+%22+site:unic opter.com&hl=en&lr=&filter=0), which describe in various levels of detail, that which may constitute new ideas (inventions) to improve rotorcraft. They are all in the public domain so that others may utilize any valid ones and then patent any of their own ideas that may be founded on these public ideas.

It would 'piss me off' if someone were to usurp any of these ideas for their own personal gain, and to the detriment of others.


Dave

[NonSAC]

Dave,

Re: "However, it appears that all, or most, of the world's patent offices will not patent an invention after it is in the public domain and is perhaps already being used by others."

As a general proposition this is more right than wrong, though I would be cautious in regard to the US. In the US something publically disclosed can, under certain circumstances, still be patented.

Re: "Should this concern relate to the 'Sikorsky Aircraft Corporation' and the question that was asked in the title of this thread, I would mention that this question was based on the apparent facts that the Correspondent on the application is Carlson, Gaskey & Olds PC and this attorney represented Sikorsky on over 80 patents during the past seven years, plus at least three of the four inventors do or have worked for Sikorsky."

There is no question about the ownership of this patent application. Per the USPTO's assignment database, each of the four inventors assigned their individual ownership rights in the invention to Sikorsky in early 2008. Sikorsky's ownership of this application is public record.

My badly worded challenge cut toward the malevelent intent implied in Sikorsky's pursuit of the application. My suggestion is that they are merely exploiting ideas through a system created with the intent to treat all who do so equally.

Re: "All of the claims in the Patent Application are very general and they existed in the public domain well ahead of the paper's research."

An aggressive, conclusory assertion, though likely true to some degree.

A strategy in preparing patent claims is to present an examiner with a menu of claims varying from extremely broad to extremely narrow scope with the intention of having him select the extent of patentable right given the state of knowledge in the art. in rejecting some claims and allowing others. In the subject patent application I see the applicant pursuing such a strategy in the succession of claims 1 through 5.

I also believe that the reference you cited is material to the patentability of claims 1 and 2, and is therefore of interest to the examiner.

Since the reference is not a patent or a patent publication it will not be made part of the file if filed as a third party submission within 60 days of publication of the patent.

An alternative would be to work it into the application through the applicants' duty of disclosure. You could simply send the reference, any other references that you believe to also be material and a copy of the application with claims by registered mail to each of the four inventors and Carlson, Gaskey & Olds. Include a letter to the affect that you are concerned about the scope of the claims in view of the enclosures and have therefore forwarded same to the applicants. Politely remind the applicants of their duty of disclosure, and indicate that you look forward to seeing the references being made of the record in the above mentioned application through applicants' timely filing of an information disclosure statement, and that you will monitor the application's image file wrapper on the USPTO's PAIR system in expectation of such action.

This would do the applicants, the agent, the USPTO, and public generally a service in dealing with the questions raised in this thread.

Cheers, and take no offense...

[Dave_Jackson]

NonSAC,

Thank you again for your valued information.

I have been unable, with my limited ability, to find earlier patents that would negate some of the claims on this application. Perhaps this is a 'positive' for those that would wish to use these ideas.

At the present time I am trying to utilize your information, and relevant information from the US Patent Office web site, plus obtain printed material on pre-existing usage or pre-existing dissemination of the claimed ideas. From a practical perspective, it looks like all the claims can be challenged, however from the legal perspective things might be quite different.

______________________

To any and all; a favor is asked.

IMHO, assuming the improvements in electric storage are exponential and the broad claims in this application are allowed to become parts of a patent, this seemingly innocuous patent application will place significant restrictions on the abilities of other VTOL manufactures to compete in the future.

Are there readers of this thread who work for, or know an employee in one of these companies? If so, would you try to have that company's Advanced Concepts Manager be aware of this specific patent application US 20090140095 ~ Electric Powered Rotary-Wing Craft (http://appft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PG01&p=1&u=%2Fnetahtml%2FPTO%2Fsrchnum.html&r=1&f=G&l=50&s1=%2220090140095%22.PGNR.&OS=DN/20090140095&RS=DN/20090140095) so that they have the opportunity to evaluate and perhaps defended their company's future.

For me, the pursuit of new electric VTOL concepts is a hobby. For actual manufactures this may be a serious concern.

Dave

[NonSAC]

Regarding places to look for further information:

(1) Sikorsky has filed a related international application with like disclosure and claims as PCT/US08/76962, published on June 25, 2009.
- This application preserves the right to extend patent protection to most of the world outside the United States, potentially including Europe.
- International applications get a search done and search report published, the references identified will sometimes drive claims amendment. It would be worth watching.

It's a bit odd, but the search is being done by the Korean patent office. It would interesting to know if this choice was made for cost or with an eye toward facilitating the prosecution of future, related Asian filings.

(2) Sikorsky filed an information disclosure statement in the US application listing 36 US patents it believes relevant to the application. Each of these applications has a classfication, inventor(s), and likely lists other patents considered during their respective examination. These can also be relevant to this application. Pulling these references through google patent, reviewing them, and further searching the USPTO site by classification and inventor would be a way of coming up with a list of art of interest.

(3) Should Sikorsky file before the European patent office you can expect to get a good search with decent, European references. Such eventual supplemental European search would be years out, but worth watching for if you are truly interested in this technology.

Alternatively, you can watch the proscution history of this application out on the USPTO web site and see what the examiner comes up with - I would expect to see multiple 102 and 103 objections, as well as objections to the form of at least two claims due to typos in the application.

Personally, I like the style of the application. It appears to be authored by a practicioner of the 'less is more' school, and a good read due the amount of ground covered in an compartively compact package.

Cheers!

[Graviman]

Two general questions:

How does the SAC engineer behind the idea benefit from the patent?
Is SAC different from other US companies in this respect?


There seem to be two systems in play in Europe:

Germany - the engineer owns the patent along with all the rights, and the company then pays royalties to the engineer. This even though the engineer is still working for the company. :ok:

Britain - the engineer gives all rights to the company being worked for. The company then pays the engineer nothing, with the caveat that the engineer is getting the prestige of having their name on the patent. :hmm:


Personally, i think this is the biggest single reason that the UK struggles to stay competitive in all sectors of engineering. If there is no financial benefit, and the very real risk of being ripped off, why bother patenting? :rolleyes:

[sikrosky]

Most companies in the US include assignment of all generated IP to the company as a condition of employment. Google search came up with this answer for UTC (Sikorsky) patent benefit. People who generate useful ideas generally benefit through merit raises, promotion, and other forms of recognition. In addition, for those individuals whose ideas warrant the filing of a U.S. Patent Application, a cash award of up to $1,000 is given at filing, with an additional $200 awarded if the patent is granted, and most business units of the Company provide other forms of special recognition to inventors.

[Dave_Jackson]

Thank you for those who posted in support of openness and fairness, in perhaps what may likely be the next generation of rotorcraft.

The following is a draft of my proposed 'PROTEST' to The US Patent Office regarding Patent Application for 'ELECTRIC POWERED ROTARY-WING AIRCRAFT' Patent Application 20090140095; U.S. Provisional Patent Application No. 60/991/395.

It is posted here so that interested and patent savvy people will critique it before the final version is submitted. Critique and patent related comments would be appreciated.

Dave J
__________________________________________________

Protest

CLAIMS
Claim 1; "A rotary-wing aircraft comprising:a rotor system rotatable about an axis of rotation; andan electric motor mounted along said axis of rotation to drive said rotor system about said axis of rotation."


Prior Usage;Main Rotor;Popular Science Article, April 2006 ~ http://www.proxdynamics.com/news/popular_science/ (http://www.proxdynamics.com/news/popular_science/)Jayant Sirohi, the first named inventor in the patent application, made and publicly disclosed on 1-3 June 2005 at the AHS Annual Forum the work on a model helicopter where the motor and aerodynamic rotors were of a coaxial arraignment. However, this model was used to develop a specific and 'unique' type of rotor blade flight-control. Design and Testing of a Rotary Wing MAV with an Active Structure for Stability and Control, ~ http://www.vtol.org/pdf/61AircraftDesignII.pdf (http://www.vtol.org/pdf/61AircraftDesignII.pdf)Tail Rotor;Many R/C electric helicopters have tail rotors that have a coaxial arraignment with their dedicated motors. Prior Publication (website);Internet page; Electrotor-Simplex - Simple Electric Principal Assembly for Ultralight Twin Rotor UAV and ULR, ~ http://www.unicopter.com/ElectrotorSimplex.html (http://www.unicopter.com/ElectrotorSimplex.html)~ Initially published on Internet: September 10, 2007 ~ Posted to Rotary Wing Forum: September 10, 2007Internet page; ELECTROTOR-SloMo - Rotor Driven by Direct Coupling to Slow Turning Motor (1;1 ratio), ~ http://www.unicopter.com/ElectrotorSloMo.html (http://www.unicopter.com/ElectrotorSloMo.html)~ Initially published on Internet: July 23, 2006 ~ Posted to Rotary Wing Forum: September 28, 2006 ~ Posted on PPRuNe: June 23, 2007 Electrotor-Plus - Direct Torque Control Moment Gyroscope - Enhanced Flight Control from a Two-bladed Rotor, ~ http://www.unicopter.com/ElectrotorPlus.html (http://www.unicopter.com/ElectrotorPlus.html)~ Initially published on Internet: May 12, 2007 ~ Posted on PPRuNe: June 23, 2007 ~ Posted on Rotary Wing Forum: June 24, 2007 ~ Posted on Eng-Tips Forum: June 24, 2007 Claim 2; "The aircraft as recited in claim 1, wherein said rotor system comprises a main rotor system. "Argument;The above 'Claim 1 - Prior Usage - Main Rotor' and 'Claim 1 - Prior Publication (website)' apply to this claim. Claim 3; "The aircraft as recited in claim 2, further comprising an airframe having an extending tail which mounts an anti-torque system "Argument;The above 'Claim 1 - Prior Usage - Tail Rotor' applies to this claim. Claim 4; "The aircraft as recited in claim 3, further comprising an on-board power source which powers said main rotor system and said anti-torque system."Argument;The use of batteries, fuel cells, capacitors, and generator sets etc. are all obvious, even to a layman. Claim 5; "The aircraft as recited in claim 4, further comprising a servo system powered by said on-board power source."Prior Usage;I suspect that all prior Vertical Takeoff and Landing aircraft that comply with claims 1, 2, 3, and 4 utilize electro-mechanical servo systems. Prior Publication;Internet page; DESIGN: Electrotor-Simplex~Control ~ http://www.unicopter.com/A143.html (http://www.unicopter.com/A143.html) ~ Initially published on Internet: November 28, 2007Claim 6; "The aircraft as recited in claim 1, further comprising a servo system mounted within said rotor system to pitch a rotor blade mounted to a rotor hub."Prior Publication;Internet page; DESIGN: Electrotor-SloMo ~ Motor -Miscellaneous- Blade Pitch Control ~ http://www.unicopter.com/B372.html (http://www.unicopter.com/B372.html)~Initially published on Internet: July 31, 2006 Argument;In addition to the above, this should be obvious to a person having ordinary skill in the art to which this subject matter pertains.Claim 7; "The aircraft as recited in claim 6, further comprising a controller within said rotary-wing aircraft to operate said servo system."Argument;The blade pitch control noted in 'Claim 6 - Prior Publication' and the obvious requirement for a controller for the servo system. Claim 8; "A rotary-wing aircraft comprising:a rotor system rotatable about an axis of rotation; andan electric motor mounted along said axis of rotation to drive said rotor system about said axis of rotation, said electric motor mounted at least partially within a rotor hub of said rotor system "Argument;This claim is identical to claim 1 in that both involve the rotation of an electric rotor and an aerodynamic rotor about a fixed stator and stator support. The only difference between the two claims is nothing more than an incremental variation in the vertical distance between the center of the aerodynamic rotor and the center of the motor's rotor and stator.






Claim 9; "The aircraft as recited in claim 8, further comprising a rotationally fixed rotor shaft which mounts said rotor hub." Prior Usage;Outrunner motors, particularly brushless outrunner motors, are extremely popular. In most cases the permanent magnets are external to the winding and the ring of permanent magnets rotates the aerodynamic rotor or propeller. The central stator is fixed to a non-rotating member, which might be identified by a number of names. Prior Publication;The drawings on the published web page Electrotor-SloMo~ Rotor (All) ~ http://www.unicopter.com/ElectrotorSloMo_Rotor.html (http://www.unicopter.com/ElectrotorSloMo_Rotor.html)~ Initially published on Internet: August 6, 2006 ~ show various of arraignments where the motors are located totally within and partially within the aerodynamic rotor hub and mounted on rotationally fixed rotor shafts.Claim 10; "The aircraft as recited in claim 8, wherein said electric motor is an overrunning motor." Argument;I can find no reference to the expression 'overrunning motor', in respect to how it would apply to to drive of a rotary-wing VTOL aircraft. 1/ It might refer to a braking action upon the landing of the craft. so as to slow the rotational speed of the aerodynamic rotor. 2/ It might apply to a charging of an electrical storage device during an autorotation, so as to provide a short-term power for use upon landing. Both features imply using the regenerative capability of the motor.Both of these features will not work if an overrunning clutch is located between the aerodynamic rotor and the electrical motor. Or, if the overrunning clutch was located between the aerodynamic rotor and the planetary gearbox + electrical motor. Both of the above applications are published on the web page DESIGN: Electrotor-SloMo - Motor ~ http://www.unicopter.com/A131.html (http://www.unicopter.com/A131.html) at the bottom of the 'Random Notes:' section. The date that this information was published may or may not have been before the filing date of U.S. Provisional Patent Application No. 60/991/395 (Nov. 30, 2007). However, I assume that it was published before this application described what their 'overrunning motor' is.Claim 11; "The aircraft as recited in claim 8, further comprising a servo system mounted within said rotor system to pitch a rotor blade mounted to a rotor hub. "Prior Publication;The same prior Publication as that which is used above in 'Claim 6 - Prior Publication';Argument;The same argument as that which is used above in 'Claim 6 - Argument';Claim 12; "The aircraft as recited in claim 11, further comprising a controller within said rotary-wing aircraft to operate said main rotor servo system. " Argument;The blade pitch control noted in 'Claim 6 - Prior Publication' and the obvious requirement for a controller for the servo system. Claim 13; "A rotary-wing aircraft comprising:a rotor system rotatable about an axis of rotation; andan electric motor mounted along said axis of rotation to drive said rotor system about said axis of rotation, said electric motor mounted at least partially within a rotor shaft of said rotor system."Argument;This claim is identical to claim 8 in that both involve the rotation of an electric rotor and an aerodynamic rotor about a fixed stator and stator support. The only difference between the two claims is nothing more than a greater vertical distance between the center of the aerodynamic rotor and the center of the motor's rotor and stator. Claim 14; "The aircraft as recited in claim 13, wherein said electric motor is an overrunning motor." Argument;The argument in claim 10 is to be applied to claim 14 in that claim 13, claim 8, and claim 1 are essentially identical.Claim 15; "The aircraft as recited in claim 13, further comprising a servo system mounted within said rotor system to pitch a rotor blade mounted to a rotor hub."Argument;The same argument as that which is used above in 'Claim 6 - Argument';Claim 16,"The aircraft as recited in claim 15, further comprising a controller within said rotary-wing aircraft to operate said servo system." Prior Publication;The same prior Publication as that which is used above in 'Claim 6 - Prior Publication';Argument;The same argument as that which is used above in 'Claim 6 - Argument'.


DESCRIPTION

[0010] "The main rotor system 12 is driven about an axis of rotation R through an electric motor 24 such as a high torque, low speed electric motor. The electric motor 24 may directly drive the main rotor system 12 without a main rotor gearbox ......"
Prior Publication;Internet page; High torque, low speed motor is what the Electrotor-SloMo ~ http://www.unicopter.com/ElectrotorSloMo.html (http://www.unicopter.com/ElectrotorSloMo.html) was designed to do ~ Initially published on Internet: September 10, 2007 ~ Initially published on Internet: July 23, 2006 ~ Posted to Rotary Wing Forum: September 28, 2006 ~ Posted on PPRuNe: June 23, 2007.

[NonSAC]

Dave,

In terms of procedure, I suggest you review the Chapter 1900 of the MPEP.

The MPEP lays out the boundaries of 'Protests by the Public Against Pending Applications' under 37 CFR 1.291; the service requirements upon the applicant under 37 CFR 1.248 are further explained in this chapter.

See http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r5_1900.pdf.

I have not looked at your post substantively, though it is interesting. I understand the concern about retarding development an important technology due to the shadow cast by an application that you, as an expert in the field, consider dubious application.

Patent systems are about balancing public and private interests. The degree of success obtained in the balance chosen is always debatable, hence the incessant parada of patent reform legislation in the US.

[Dave_Jackson]

NonSAC

Thanks, as always, for the additional information.

I have printed and read (but not yet fully comprehended) Chapter 1900

The original 60/991,395 has now expired and has split into Child; 12/018,217 and PCT/US08/76962. I am assuming that the Application Number to be used is 12/018,217, since this is the only one with an Examiner's Name, and it is the Michael Mansen, which you mentioned on June 28th.

I phoned the number you gave and got thought the front door. Then there was a constant busy-signal at the next door. I will try again on Monday, if necessary.

Also, I am not yet sure whether to used form PTO/SB/08a or, simply write a letter c/w the appropriate Application Number and other referencing data.
Apparently, the US Patent Office doesn't take well to mistakes.

All of your previous postings have been printed out and are being re-digested while work through the maze.

In addition, I have been unable to find the addresses of all four of the inventors. Will a registered mailing to the lawyer c/w four copies of the material suffice?

Dave

[NonSAC]

Dave,

"The original 60/991,395 ..."

You've got the right idea in the way you've described the relationship. What the applicants have done is filed a US nonprovisional application, US 12/018,217, and an international application, PCT/US08/76962, claiming priority to the earlier filed US provisional application, 60/991,395. The disclosures of the three applications are similiar.

I'll recap because the processes can be confusing. There are at least three ways to get the references you believe relevant considered in the prosecution of the US nonprovisional application.

(1) Within 60 days of the publication of the US 12/018,217 file a 37 CFR 1.99, a 'Third-party submission in published application." See http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r7_appxr.pdf.

(2) Trigger the applicants' duty of disclosure by providing to applicants references that you believe are relevent. See http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r7_appxr.pdf.

(3) Lodge a protest as to the merits of the application. See http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r5_1900.pdf.

My suggestion as to (2) is that you provide the references, your explanation of why you believe them relevant, and a copy of the US nonprovisional application claims to the attorney and each of the applicants by certified mail. The addresses of the four inventors are available to the public in image file wrapper of the application on the document called the 'Oath or Declaration.' The image file wrapper can be accessed by going to the USPTO website, finding the link to 'Public PAIR', searching by the application number, and finding the above-mentioned document of the 'Image File Wrapper' tab. The pending claims are there as well.

You can then 'check' for good faith by periodically checking the image file wrapper to watch for a responsive filing by the applicant. Should they choose not to identify the reference(s) to the examiner, and the reference be relevant to the claims ultimately allowed the patent can be challenged. The practicioner understands this, and I expect will accordingly act responsibly.

"I am not yet sure whether to used form PTO/SB/08a...."

This form is what the practicioner will likely use to submit references to the USPTO. In your circumstances, it is more important to list the references, cite the relevant sections and explain why you believe them to be relevant to the US nonprovisional rather than be concerned about the form. The USPTO is fairly flexible in dealing with the public genernally, which makes sense because they are, after all, public employees. They will likely cut you slack on formality issues.

Good luck!

[NonSAC]

Germany - the engineer owns the patent along with all the rights, and the company then pays royalties to the engineer. This even though the engineer is still working for the company.

We're a bit different in the US. Wikipedia explains in a general way how, in the US, employer shop-rights can attach to employee inventions created at work and owned by the employee. These can allow the employer the right to use an employee's invention.

In the instance of an employee with an employment agreement there are at least two classes of benefits - those that in accordance with performance of the contract (on-the-contract benefits), and those obtained employee ownership of an invention due to badly drafted agreements (off-the-contract benefits.) These can arise out of ambiguity, inconsistancy in agreement language, consideration problems, and a host of other problems.

(A) On-the-contract benefits can include peer recognition in the field, employer recognition in the workplace, and modest bonuses.

(B) Off-the-contract benefits can include the financial benefit associated with exercising the right to exclude others from the practice of an invention. Where the invention is commercially successful these benefits can be considerable.

This is a complicated area, confounded by inconsistant state laws, state precedent and differing views in different courts. It is not uncommon for these agreements to vary state-to-state, employer-to-employer, and employee-to-employee. The circumstances have considerable influence, ie. the language of the agreement, where the agreement was performed, the circumstances of the invention in view of the language of the agreement, ect. As always, 'actual mileage may vary'.....

[Dave_Jackson]

NonSAC,(1) Within 60 days of the publication of the US 12/018,217 file a 37 CFR 1.99, a 'Third-party submission in published application." See http://www.uspto.gov/web/offices/pac...e8r7_appxr.pdf (http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r7_appxr.pdf).
There has been no opportunity yet to look into this document, however, 12/018,217 shows 'Earliest Publication Date: 06-04-2009'. I assume that this is the date that the "Within 60 days" is referring to and that there is approximately one month remaining for this first (1) way to be used.

___________________________________

A question of concern.

The accepted definition of the word 'publication' includes the Internet.

However, '35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.' makes mention of 'printed publication'.

The Internet disseminates information far more widely that an individual printed publication. In addition, this material on the Internet can be printed-out by interested parties.

My ELECTROTORs were only displayed on the Internet; in a web site, plus referenced and discussed on four separate forums.

Does anyone know if the US Patent Office considers the Internet as an acceptable means of describing and disseminating technical concepts in the context of 'printed publication'?


Dave

[NonSAC]

(1) The 60 day period commenced the date the patent application was published, which I believe is June 4, 2009. The date will be printed on the face of the publication which is readily available, free of charge at www.pat2pdf.org (http://www.pat2pdf.org). The window to present information under 1.99 is comparatively brief.

(2) "Does anyone know if the US Patent Office considers the Internet as an acceptable means of describing and disseminating technical concepts in the context of 'printed publication'?"

Generally, yes. Whether an electronic publication is a printed publication for anticipation purposes depends on whether you have a retrieval date or an electronic publication date. I beleive that the publication from which the previous image of the electric motor powered helicopter was taken would most likely count for 102 purposes; your list of publications would take a bit of analysis on a document by document basis. I suspect most would qualify in one respect or another.

'An elecronic publication, including an on-line database or Internet publication, is considered to be a "printed publication" within the meaning of 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates.' see http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r6_2100.pdf;

'Prior art disclosures on the Internet or on an on-line database are considered to be publicaly available as of the date the item was publically posted, though the publication must have a publication date or a retrieval date for these purposes. see section cited above.

[Dave_Jackson]

NonSAC,

And again, thank you for the invaluable support.

The US Patent Office's acceptance of the Internet as a means of broadcasting information should help with the objective of keeping the fundamentals of 'electric powered rotary-wing aircraft' in the public domain.

I will be making reference to 'non-patent literature documents', which prceed this patent application, not to previous patents or patent applications. Therefore it is difficult to decide upon whether to use the terse '3rd Party Submission' or the more expansive 'Protest'.

I also assume, wrightly or wrongly, that a person cannot submit both; one within 60 days and then the other one at a later date. Perhaps I should select one of them and then another very interested person might select the other.
http://www.unicopter.com/NoIdea.gif

Dave

[Dave_Jackson]

It now appears that the 'Protest' must be filed before the publication of the non-provisional 'Patent Application'. That removes the 'Protest' from the choices.

[NonSAC]

Yes, the Protest window closes upon publication.

The 1.99 rule has some limitations as well, including that the references be patents or publications, that no explanation be provided, a limit of no more than ten references in the submission, and that the submission be made within 60 days of the publication of the application.

[Dave_Jackson]

Thanks to all for the support; and particular thanks to NonSAC. The 'Disclosure Statement by 3rd Party Submission' has been sent to the applicants lawyer and to the US Patent Office.

Every one of the 16 Claims and the Embodiments have been countered by references to the previous conceptualizations, publications and implementations that openly preceded this brazen Patent Application.


A final (perhaps :uhoh:) question.
The Korean Intellectual Property office only shows their acknowledgment of the International Application PCT/US2008/076962. Is there a way, or a reason, to pursue this application further?


Dave

[NonSAC]

Hmm, not sure. This would take some digging - a quick search found a document whereby WIPO recently discussed changing the rules to allow both applicant and third party art submissions, so I believe the likely answer to be 'very little.'

I can tell you this about the application.
(1) International applications simply reserve the right to extend protection in other countries, an applicant does not receive an 'international patent' extending the right to exclude to multiple countries on the basis of a single applicaiton. The laws and requirements are still, at this point of globalization, very local in this regard.

(2) The international application can be monitored at least two ways.
A. The application can be monitored through Public PAIR out on the USPTO website.
B. The application can be monitored through the WIPO website.

(3) You can expect to see an International Search Report published by KIPO, and possibly a patentability report as well - though I think this is optional and requires that the applicant pay an additional fee, I am not certain. The applicant may also change the claims in view of the art you provided and any action taken by the US examiner in the US applicaiton, these would show up in PAIR and on WIPO as Article 19 or 34 amendments. These claims are clearly way too broad at this point, but SAC may not bother changing them at this point, preferring instead to leave it to the examiners to drive country specific claims adjustments.

Good luck; I am glad to see some effort to keep SAC honest as to the extent of their technical contributions to the field.

[Dave_Jackson]

NonSAC

Thanks again (& again) .....

Dave

[NonSAC]

Dave,

The ten rNPL references you submitted to the USPTO to consider in the examination of this application were made of record on July 17, 2009. They are visible out in PAIR, and accessible from the USPTO's website.

It will be interesting to see if they are used by the examiner in the subsequent office actions.

It's also good to see the process work.

Cheers!

[Dave_Jackson]

NonSAC,It will be interesting to see if they are used by the examiner in the subsequent office actions. Yes. It might give some clarification on the US Patent Office's position as to the Internet as an 'electronic publisher' and disseminator of 'prior art'.

It has been an interesting and educational experience, in large part due to your guidance.

____________________________________

It appears that a self-produced patent application will cost less than $1,000.00.

Should any part of this sweeping patent application be accepted, it might create a desire to submit a patent application for a Teleportation Machine. The single claim will cover the transportation of; anything, over any distance, in any direction, through any time warp, and into any parallel universe. Of course, the accompanying image will be that of a blank box; perhaps with a drawing of Schroedinger's cat on it. :E


Dave

[riff_raff]

Dave,

As I'm sure you're well aware, the value of any patent ultimately is not even worth the paper it's printed on. The strength of any patent is only as good as the skills of the IP attorney that you hire to defend it in court.

Large companies like Sikorsky, tend to have lots of IP attorneys on retainer with nothing to do, so they have them file lots of patent applications with lots of speculative claims, since it doesn't really cost them anything.

On the other hand, for a small guy like you to litigate a patent infringement case in court, against a wealthy corporation like Sikorsky, would cost millions. Sikorsky knows this, and would drag out the legal process for years, in order to bankrupt you.

After reading Sikorsky's electrical rotor patent application, I was kind of surprised at how general the scope of their claims was. I can't honestly believe that the USPTO examiner would approve any of those claims. But I guess that they just decided to toss all of it against the wall and see what stuck.

Honestly, if push came to shove, I think you have a solid IP case against Sikorsky. But unfortunately, the financial damages you would recoup would be nothing, since you have not incurred any demonstrable financial injuries due to Sikorsky's IP infringement.

The only joy you might feel from the whole affair would be, as the Germans say, "Scheudenfraud". Or as we say in America, "Stickin' it to the man!".

Best of luck to you.
Terry

[NonSAC]

Dave,

Shortly after this discussion WIPO published a search report addressing the related international application. The international search report is available at http://www.wipo.int/pctdb/images1/PCT-PAGES/2009/402009/09079049/09079049.pdf.

Of note is that the search report identifies an 'X' type reference, that is one that, in the view of the searcher, makes the identified claims unpatentable in view of the prior art. The reference is a patent application publication to Leonard Clark and H. Peter Greene, published as US 2004-0200924. The KIPO searcher believes that this reference reads on all 15 claims appearing in the international application, making them unpatentable in some WIPO countries under existing local law.

Sikorsky, in keeping with its duty of disclosure in prosecution of the related US application, has duly disclosed the international search report and the references it identifies individually, to the USPTO.

It will be interesting to see if the USPTO examiner applies the reference in an initial, non-final rejection.

- Cheers

[Dave_Jackson]

NonSAC

Thank you for the link to the International Application Report and your clarification of it.

You have answered my previous naive curiosity as to what caused the lawyer for Sikorsky to submit this additional information in the 'Information Disclosure Statement By Applicant' dated 09-14-2009.

Seasons greetings to you and to all.


Dave

[riff_raff]

Dave,

Here's a fairly large electrically driven rotor with TE servo flaps (from Boeing):

http://c0378172.cdn.cloudfiles.rackspacecloud.com/nasa-investigates-shape-changing-helicopter-rotor.jpg

The electric drive system in that Ames 40 ft. tunnel is at least a couple hundred HP.

[Dave_Jackson]

Hi riff raff,

Thanks for the picture. It certainly looks like electric controls, and eventually electric drives, will be part of rotorcraft's future.

The trailing flap and the blade tip are of a different color than the rest of the blade. Maybe, or maybe not, they are considering something at the tip also. Boeing and Ames produced a report entitled 'Wind Tunnel Test of a Model Rotor with a Free-tip' many years ago.


Dave

[Dave_Jackson]

The abstract in Sikorsky's patent application states "A rotary-wing aircraft with an electric motor mounted along an axis of rotation to drive a rotor system about the axis of rotation" In addition, claim 11 states "The aircraft recited in claim 8, further comprising a servo system mounted within said rotor system to pitch a rotor blade mounted to a rotor hub."

US patent 4,720,059 (http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=%2Fnetahtml%2FPTO%2Fsrchnum.htm&r=1&f=G&l=50&s1=4,720,059.PN.&OS=PN/4,720,059&RS=PN/4,720,059), issued January 19, 1988 to Hoyt Stearns, states the use of a motor that is mounted along the same axis of rotation as the rotor that it drives. It also states "... individual electric pitch control motors are mounted for individually adjusting the pitch of each of the blades."

I wonder if the examiner will uncover this previous patent? :uhoh:

[NonSAC]

Dave,

I expect the examiner will use what he considers the 'best reference' or 'references' to reject the claims he deems unpatenable in Sikorsky's application. Whether that includes US 4,720,059 depends on what the examiner uncovers in the search, prior art dates, and whether a single reference encompasses the claimed subject matter or there is a need to need to combine multiple references.

As a preliminary matter, the examiner will only reject claims; the abstract may garner objection(s) if violative of the rules or possibly limit the scope of the claims if written so as to narrow the claim breadth during subsequent litigation. Hence a common technique is to write the abstract to mirror broadest independent claim, as reflected here by the abstract being essentially claim 1 verbatum.

In the Sikorsky application claim 11 depends from claim 8, so its coverage is limited by the limitations recited in both claim 8 and claim 11. Claim 8, though independent, appears to be claim 1 with the added limitation that the motor be incorporated in the hub. So for US 4,720,059 to anticipate claim 11 it would need to teach both the limitation that an electric motor driving the rotor about an axis of rotation be incorproated in the hub and that it include a servo system to pitch a rotor blade, thereby teaching each limitation of claim 8 and 11.

Looking at the motor (see element 30 in Fig, 1 in US 4,720,059) it does not appear to me that it teaches an 'electric motor mounted at least partially within a hub,' though the drawing is tough and one could argue that the motor shaft extends into the hub in Fig. 1 thereby teaching the limitation. I don't find this argument persuasive, and accordingly see a claim 11 rejection solely on US 4,720,059 unlikely.

The examiner could, however, find another reference which teaches the the claim 8 limitations, combine it with US 4,720,059's teaching of the 'servo system to pitch the blade', and reject claim 11 as obvious in view of the combined references. These sort of rejections are extremely fashionable at the PTO due to recent judicial interpretations of the governing patentability statute, and are commonly applied in the mechanical arts.

Indeed, it appears that the PTO is permitted to provide successively thinner justifications for reference combinations - seemingly irrespective of the field from which it was drawn.

It will be interesting to see the first action on the Sikorsky application.

- Cheers

[Dave_Jackson]

NonSAC,

As always, your remarks are appreciated and educational.

As you state, Hoyt Stearns' patent will probably have no effect on Sikorsky's claim 8 and its dependent claims. By the same reasoning, this should also apply to claim 13 and its dependent claims.

IMHO, it still appears that my 'Information Disclosure Statement By 3rd Party Submission' counters every single claim; with the exception of the minor claims 10 and 14 [overrunning clutch between drive and rotor], and these two claims are totally obvious to all in the rotorcraft industry.

It will be interesting to see the first action on the Sikorsky application. Yes.
It will also be interesting to see if the Internet is deemed to be a means of public disclosure.


Dave

[riff_raff]

Dave,

Based on my recent experiences with US patent examiners, I would not expect them to do a thorough job.

As an example, I filed for a US patent early in 2006. It had 32 claims. I finally got a response late in 2007 and the examiner initially rejected 29 of the 32 claims, mostly based on what he stated was "obviousness to one skilled in the art" taking into account bits and pieces of 3 or 4 different patents. What was particularly frustrating was that the examiner's references had absolutely nothing to do with the subject matter contained in my application. Most of his objections were just fill-in-the-blank boiler plate responses. The logic and examples the examiner cited were, frankly, rather bizarre and incoherent. Regardless, I had to submit a costly response outlining where and why he was wrong.

I received another office action from the examiner a few months later, agreeing with most of my objections. So now he was going to allow 26 of my 32 claims, but he also had some additional objections to the remaining claims. At this point, I decided to give up and accept the 26 of 32 claims the examiner was going to allow. Mostly for financial reasons.

To make a long story short, the guys working as examiners at the US patent office are apparently not "the cream of the crop". For the most part, they're likely just federal office drones doing just enough not to get fired. Sad but true. And to make it worse, my patent attorney charges over $300/hr. to file responses to the sloppy paperwork these patent examiners generate.

That's my sad story, just so you don't feel alone.

Regards,
riff_raff

[Dave_Jackson]

riff_raff

It is a sad situation. I agree with your comments about government employees. In addition, the low cost of the actual filing of a Patent Application will resulted in approximately 300,000 new US Patent Applications in 2009. These employees may not have the time to properly process these applications, even if they are consciences individuals.

It has been reported that the Congress is unable to revise the patent situation in the US due to resistance from the drug industry in general, plus United Technologies and 3M specifically. Why would large companies want it changed when they can be granted nebulous patents? They can then use these patents as the crowbar to pry open the Court's door and then use their financial resources as the mallet to knockout the financially handicapped opponent.

Occasionally we read about a 'small guy' winning against a large corporation. However, it is probably the rarity of this event that gave cause for the article.

Happy New Year,
Dave

[Dave_Jackson]

The US Patent Office gave a 'non-final' rejection of all 16 claims in Sikorsky's Patent Application filed Jan/23/2008; as previously mentioned by nonSAC (http://www.pprune.org/rotorheads/421752-200hp-electric-sikorsky.html#post5825676).

My July/14/2009 3rd-party Submission to this Patent Application included a hard-copy of a Sept/28/2006 Internet web page; which was also linked to on a PPRuNe posting. This particular page says, "One axial flux electric motor (disk motor) located in each rotor". This page also has 2 drawings showing the electric motor as being completely within the rotor hub.

As required, a duplicate of this 3rd-party Submission was sent directly to Sikorsky's lawyer.

Two weeks ago Sikorsky's lawyer submitted an Amendment to the original Patent Application. It retains the original 16 rejected claims, plus 7 new claims.

The original claims in Sikorsky's Patent Application are on an electric motor and a rotor mounted on a common axis of rotation and to an electric motor mounted at least partially within the rotor hub or within the rotor shaft. The new claims are narrowed to, "... wherein said electric motor is mounted completely within said rotor hub."

The lawyer's new claims in the Amendment are for all intent and purposes identical to that in the 3rd-party submission, which was previously mailed to him.
http://www.unicopter.com/Think.gif


____________________________

Sikorsky Innovations

Progressive Innovations; by engineers developing better products?
~ or ~
Regressive Innovations; by lawyers impeding others from developing better products?


.

[Dave_Jackson]

On Nov/19/2010 the US Patent Office rendered a 'Final Action'.

ALL 23 CLAIMS HAVE BEEN REJECTED.

It appears that this rejection was strongly based on the fact that the ideas, which Sikorsky was attempting to patent, were previously known and obvious.

[500e]

They only do it to wind you up Dave :E, perhaps if they concentrated on the jobs in hand !!

[Dave_Jackson]

They only do it to wind you up Dave http://images.ibsrv.net/ibsrv/res/src:www.pprune.org/get/images/smilies/evil.gif, perhaps if they concentrated on the jobs in hand !!

Perhaps action like this will wind them up. http://www.unicopter.com/StickPoke.gif

[NonSAC]

Dave,

Interesting news.

It appears that the claimed invention is novel, as in never been done before, but obvious in view of the US Examiner's view of what is known in the art. As you pointed out, there had been consdierable work done in the field prior to Sikorsky's filing.

They have three months from November 19th within which to respond without extension fees, six months with extension fees, so we'll have a better understanding of their intent by May 19th.

They've got at least three options at this point. First, they could a abandon the application and move on to other things. Second, they could amend the claims, file a Request for Continued Examination, and pay for another examination of the application with a narrower set of claims. They would, however, be limited to the subject matter that was disclosed in the original specification. The original application was thin, so options are limited. Finally, they could appeal the Examiner's rejection and start down the judicial review route of the twice rejected claims.

Internationally, it's unclear what plans the have for protection in other countries. I don't see any foreign counterparts - and I specifically looked for a counterpart filing with the European Patent Office to cover Eurocopter and AW. However, in the event they did file with the EPO, I would expect to see the Europeans hammer them on inventiveness (similiar, but different from the US obviousness standard) based on the application's treatement by the US Examiner.

It's great to see the technical community engaged in the prosecution of an application as demonstrated here.

Cheers
- NonSAC

[Dave_Jackson]

Hi NonSAC,

You mean that when the US Patent Office puts "THIS ACTION IS MADE FINIAL", in uppercase and bold, it ain"t really final? :{


Seriously, thanks for explaining the current state of the application and the options that Sikorsky might take.

A thanks must also be given to PPRuNe-Rotorhead management who allowed the discussion of rotorcraft technical subjects, and specifically the directly related electric postings that preceded Sikorsky's application.

I agree with the examiner on the mater of prior art and obviousness.

The claimed invention and its components may have never been patented before, however they certainly have been built before. There must be numerous model builders who have made rotorcraft with the attributes of this application. In fact, one model builder was the primary inventor, Jayant Sirohi, who made an open presentation and then a Web publication of his micro-craft (http://www.unicopter.com/Temporary/Sirohi.gif). This open presentation preceded the patent application by more than a year.

In addition, a billion people can look inside their computers and see a servo-controlled rotor with an embedded coaxial electric motor, which is referred to as a fan. Many billions more have seen pictures of coaxial electric producing, servo controlled rotor blades (http://agreenliving.org/tag/4-mw-wind-turbine/), which are referred to as wind turbines.

Perhaps Sikorsky could advance rotorcraft if it came up with something original.

Dave

[Dave_Jackson]

NonSAC,

Sikorsky's lawyer sent a 'REQUEST FOR RECONSIDERATION' to the US Patent Office a few days ago.

It would appear that they are attempting to argue all 23 claims. Is this the judicial review route that you mentioned in your previous posting?


Dave

[riff_raff]

Dave,

I have to agree that Sikorsky's application claims don't pass the "obvious to one skilled in the arts" standard. But it does pay to keep arguing the examiner's cause for rejecting claims as long as you can.

I submitted a patent application with 22 claims about 4 years ago. At first, all 22 claims were rejected by the examiner. After reading the reasons for rejection, it seemed apparent that what the examiner wrote was mostly cut-and-paste boilerplate. And most of the references cited were incorrect or misinterpreted. Frankly, it seemed as though the examiner was in a hurry writing his rejections and hoping that they would not be carefully checked. I checked every reference cited carefully and prepared detailed responses. After it was all over, the patent office allowed 20 of the 22 claims.

The fact that the original examiner was not careful and thorough reviewing my patent and issuing his findings kind of made me mad. Preparing and filing the responses to correct his sloppy work cost me time and money.

[Dave_Jackson]

riff raff,

Thanks for mentioning your similar experience. Was the examiner's rejection of claims, which you challenged, the initial 'Non-Final Rejection' or the latter 'Final Rejection'?

I have not looked deeply into the examiner's rejection of Sikorsky's claims, nor do I know the nuances of 'Claims'. However, a cursory review suggests that the references he cited to previous patents may also be partially incorrect or misinterpreted.


What appears interesting about Sikorsky's application is that the examiner preceded the specific claim rejections with the following text.

http://www.unicopter.com/Temporary/PatentRejection.jpg


Sikorsky is contesting the references to previous patents, however, they are not addressing the fact that all their claims were openly available and in the public domain. My 3rd-party submission, alone, covered 10 examples of previous public disclosures on the claims, which Sikorsky is attempting to usurp.

This is a excerpt from the US Manual of Patent Examining Procedure.

http://www.unicopter.com/Temporary/PatentRejection2.jpg


Dave

[NonSAC]

Dave,

No, this is not the beginning of a judicial appeal of the Examiner's rejection. It may, however, be a lookahead of what Sikorsky's appeal brief might include.

Generally, once a final rejection has issued, an applicant has 6-months to either (1) pay for another examination and file a request for continuation, or (2) appeal the rejection to the Board of Patent Appeals and Interferences. If the applicant does neither, the application goes abandoned.

That said, an applicant may also file a response/amendment after a final office action prior to the six month period tolling. However, the proposed changes may only be minimal, and are entered only at the discretion of the examiner. The applicant no longer has the right to make amendments to the application.

Here, Sikorsky's Attorney elected to enter argument for allowability of the rejected claims and to not amend the claims further. It's a bit of Mexican standoff in that sense, and there may be a telephone discussion between the Attorney and Examiner to see if they can agree on any patentable subject matter. I have not read the references, so I can't make any statement regarding stength and weaknesses of the Attorney argument.

Proceduraly, one of two things will happen next. First, should the Examiner conclude that the argument is not persuasive, the Examiner will issue an Advisory Action explaining the reasoning for not allowing the application. Alternatively, in the event the Examiner finds this latest argument persuasive, the Examiner will issue a Notice of Allowance. And if there is a telephone call between the Examiner and Attorney of substance, an Interview Summary will put in the file.

Once one of an Advisory Action or Notice of Allowance hits the file the ball will be back in Sikorsky's court to file an RCE, appeal, or allow the application to go abandoned. The filing of a Notice of Appeal would indicate a choice to go the judicial appeal route to which I previously referred.

Cheers!

[NonSAC]

Riff Raff,

I understand frustration at the process.

It's not uncommon that, upon review of the application, office action, and cited references, that an inventor/attorney gets frustrated with the examiner. In fairness however, when one considers the amount of time allocated by the PTO to the examiner to review the application, search the art, review the relevant art, and disposition the application, it at times precludes an examiner from generating a rejection that an engineer would describe as thorough. Right, wrong, or indifferent it's the nature of the beast.

And it's one reason why it is in the applicant's best interest to pursue similar claims in other countries. If only because a second set of eyes is a good thing, it makes sense. It also has the potential benefits of the search looking more closely at other art databases, testing the claims against different legal standards, and greater geographic coverage.

That said, prosecution is like a calibration. The applicant should present a continuum of rights, extending from a relatively broad, independent claim to comparatively narrow, set of dependent claims. The Examiner then surveys the art, and picks the place on the continuum where inventive activity begins and where rights therefor start. In Sikorsky's application the Examiner finds no such point on the presented continuum, either in the original set of claims, or withinthe narrower, amended set of claims.

In the example to which you make reference, such negotiation may explain difference between the claims ultimately issued in comparison to those orginally filed. It may take some time to review the application image file wrapper, but it should be discernable.

Regardless, I do agree that the process can be frustrating to an inventor. Particularly if the attorney fails to explain the process to the inventor when corresponding with an inventor to request assistance in reviewing cited art.

Cheers!

[NonSAC]

Dave,

With respect to the grounds for rejection under 35 USC 103, this is the obviousness statute. And in the mechanical arts, it is relatively unsettled. The trend is for the PTO to be more strict today that prior to a 2007 due to judicial decision that caused the PTO to make it harder to allow applications in view of this statute.

Of note in connection with our original discussion on this application is the second sentence of the statute. Judicially, the phrase 'not negatived by the manner in which it was made' has been interpreted in dispensing with what was at one time known as the "flash of creative genius" test/requirement/standard. As such, it provides some explanation as to why disclosures that one of skill in the art like yourself might consider to be thin ultimately yield rights to at least a portion of the disclosure.

With respect to the Examiner choosing to not cite to your submission, you could call the Examiner and pose the question directly. The Examiner may tell you that he cannot provide an explanation, but he might also explain his reasoning to you. But understand that his only binding obligation was to consider the submission, and reflect such in the application image file wrapper.

- Cheers!

[Dave_Jackson]

NonSAC,

As previously, and previously, and previously .......... :ok: , thank you.

Since Sikorsky's lawyer and the Examiner are passing their telephone numbers back and forth, I will take your suggestion and phone the Examiner.

___________________


Overview:

The likelihood is that electric propulsion will follow the same path that was taken by the internal combustion engine and the turbine. This path was one of moving through the levels of vehicle efficiency/payload ratio, until reaching the helicopter. So far, Sikorsky has only shown the static placement of an electric motor in the hole that was previously filled by a reciprocating engine [the Firefly] (http://en.wikipedia.org/wiki/Sikorsky_Firefly). This method has actually been flown in the past, albeit most or all were without onboard batteries.

In addition, this direct substitution of motor for engine is not the most effective configuration. The most effective configuration is to have the motor inline with the propeller/rotor. This inline configuration has been realized in thousands of ships, submarines, and airplanes, etc. Initial by the use of engines and later by the use of motors. This coaxial relationship of motor and propeller already exists in unmanned and manned airplanes.

IMHO, it would be a shame if one company was able to claim ownership to this blatantly obvious method of electrically driving a helicopter. And then, 'lockup' the rights to the future production and sales of efficient electric rotorcraft in the United States.


Dave

[Dave_Jackson]

riff raff,

You will likely find the following Bloomberg Businessweek article very interesting.
It expands on NonSAC's comments to you, and on the action that is taking place with the Sikorsky Patent Application.

Are Patent Problems Stifling U.S. Innovation?
(http://www.businessweek.com/innovate/content/apr2009/id2009048_138177.htm)

Dave

[Dave_Jackson]

On Friday the Patent Office responded to Sikorsky's lawyer. It informs the lawyer that "reply filed 20 January 2011 fails to place this application in condition for allowance".

This USPTO response concludes by saying "Lastly, it is clear that the Applicant did not take into account the cited NPL prior art cited by a third party on 7/17/2009, as these references, as well as the combination of prior art discussed disclose the applicants invention."

__________________________


Sikorsky's #1 claim is: "A rotary-wing aircraft comprising: a rotor system rotatable about an axis of rotation; and an electric motor mounted along said axis of rotation to drive said rotor system about said axis of rotation."


75 years of electric motors and helicopter rotors rotating about a common axis?

A picture from Steve Coates book 'Helicopters of the Third Reich'. (http://www.unicopter.com/Temporary/Focke_Electric.jpg)

An article in the April 1938 issue of Flight, which has a similar picture. (http://www.flightglobal.com/pdfarchive/view/1938/1938%20-%201074.html)

If anyone can e-mail me with a means of obtaining additional information on Focke's test craft, or any other relevant information, IMHO it will eventually be appreciated by the rotorcraft industry.


Dave

[Dave_Jackson]

Today the US Patent Office sent their response from 'The Board of Patent Appeals and Interferences' to Sikorsky's lawyer.

All 23 claims have been rejected!

Also, no 'period for reply' was given, which possibly implies that any further action on the part of Sikorsky will have to take place in a Court.


Dave

[NonSAC]

Dave,

It is interesting to see the Examiner's comment regarding the NPL in the advisory action as it's not my understanding that the Applicant is under any obligation wahtsoever to discuss, much less argue over, art not cited in a rejection.

It will be interesting to see if Sikorsky takes the rejection to the Board of Patent Appeals and Interferences. That Sikorsky allowed the European counterpart to the US application, EP08861121.5, to be 'deemed withdrawn' by not paying the third annuity suggests that they will not.

Cheers!

[Dave_Jackson]

NonSAC,

Shoot! Are you politely saying that the document 'BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES' is TO the board not FROM the board?
____________________________________

Thank you for the considerable procedural assistance that you provide. The Third Party Submission would have been difficult, if not impossible, without your coaching.

I took your earlier advice and telephoned the examiner. Subsequently, two days before the Notice of Appeal was received, the following links were e-mailed to him. They are in addition to the Third Party Submission of Non-Patent Literature.

The so-called 'new ideas' in Sikorsky's patent application;

were used in the wind tunnel testing of the worlds first successful helicopter and published in An article in the April 1938 issue of Flight (http://www.flightglobal.com/pdfarchive/view/1938/1938%20-%201074.html). Then, published again in Steve Coates 2003 book 'Helicopters of the Third Reich' (http://www.unicopter.com/Temporary/Focke_Electric.jpg).
were published in NASA's 1981 public report; Practical Feasibility Assessment of Electric Power Propulsion in Small Helicopters using Lithium Hydroxide Battery Technology (http://ntrs.nasa.gov/archive/nasa/casi.ntrs.nasa.gov/19830072375_1983072375.pdf).
I speculate that Sikorsky will have a difficulty arguing against the 'obvious' [Claim Rejections - 35 USC 103(a)], and an impossibility arguing against the 'pre-existing'.


As always, thank's.

Dave