Guang-ming Weng - [2018] APO 69

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Guang-ming Weng [2018] APO 69

Patent Application: 2013202063

Title:Ring, Ultra-Low-Speed, Large-Capacity Generator

Patent Applicant:                   Guang-ming Weng
Delegate:  M. G. Kraefft
Decision Date:  19 October 2018
Hearing Date:  Written submissions filed on 12 September 2018

Catchwords: PATENTS – section 223 – application for extension of time to gain acceptance of patent application – whether error or omission or circumstances beyond control led to failure to gain acceptance – grounds not made out – nature of alleged invention also meant extension of time would serve no useful purpose – extension of time refused.

Representation: Self-represented.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013202063

Title:Ring, Ultra-Low-Speed, Large-Capacity Generator

Patent Applicant: Guang-ming Weng
Date of Decision: 19 October 2018
DECISION
The grounds available under sub-section 223(2) have not been made out. Moreover, in the present case, even if made out, an extension of time would serve no useful purpose.
The application for an extension of time is refused.
REASONS FOR DECISION
BACKGROUND

Guang-ming Weng (“the applicant”) filed patent application 2013202063 on 13 March 2013. This is the priority date of the application. The application was absent of claims defining the invention.
On 12 August 2013, the applicant filed new description pages, a set of claims, drawings and an abstract. This filing was treated as a request to amend the specification under Section 104. The request was allowed on 3 September 2013.
The applicant requested examination of the application on 20 April 2016. Consequently the application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”). Amendments to Sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(e) and 55(4)(b), and Schedule 6, item 133(7)(e), of the Raising the Bar Act. The applicant requested examination after 15 April 2013.
A first examination report was issued on 9 February 2017. As indicated in that report, and pursuant to sub-regulation 13.4(1)(b), the applicant had 12 months until 9 February 2018 to obtain acceptance of the application. The report contained objections that the specification did not comply with Section 40 of the Act (support, disclosure, clarity, lack of unity), and that certain claims were not novel and lacked an inventive step. Furthermore, the report noted an absence of a Statement of Proposed Amendments to formally propose amended claims that the applicant filed with the request for examination. Nonetheless the examiner indicated that he considered those claims when preparing the report.
Despite numerous items of correspondence between the applicant and the Patent Office, by way of further informal amendments to the specification, submissions from the applicant and further examination reports, the applicant was unable to obtain acceptance of the application within the available time. The final examination report dated 29 January 2018, maintained objections under Section 40, included an objection that the claimed invention was not useful, and reserved opinion in respect to novelty and inventive step.
The application subsequently lapsed. On 6 April 2018, the applicant filed an application for an extension of time, initially of 6 months, under Section 223 to gain acceptance of the application. With various items of correspondence, the Section 223 provision under which the application was made was clarified, the applicant filed material and reasoning to support the application for the extension of time, and the extension period sought was extended a further 3 months to 9 months. That is, if the extension is allowed, the applicant would have until 9 November 2018 to obtain acceptance of the application.
APPLICABLE LAW
Subsection 223(2) is the relevant provision in the present case and provides as follows:-
(2) Where, because of:
(a) an error or omission by the person concerned or by his or her agent or attorney; or
(b) circumstances beyond the control of the person concerned;
a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.
Subsection 223(11) reads as follows:-
(11) In this section:
“relevant act” means an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such applications.
Sub-regulation 22.11(4) prescribes actions that are excluded for the purposes of sub-section 223(11), none of which apply in the present case.
In Kimberly-Clark Limited v Commissioner of Patents and Minnesota Mining & Manufacturing Company, [1988] FCA 421, Jenkinson J considered the words “error or omission” in relation to the Patents Act 1952. Section 160 of that Act broadly equated with Section 223 of the present Patents Act 1990. While the language is slightly different, the differences do not affect the relevance of Jenkinson J’s conclusions in respect to the meaning of the words “error or omission”.
At [9], Jenkinson J stated:-
“… It is in my opinion difficult to suppose that only the inadvertences and accidental steps, and not errors resulting from faulty reflection, of the former class of persons were intended by the draftsman to be within s.160(1). Further, the word ‘error’ is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgment by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips. Although the latter kinds of error may be those which the draftsman had principally in mind, I do not think the phrase ‘error or omission’ should be given by construction the restricted meaning which the delegate assigned…”
Moreover, at [10] Jenkinson J did not think that his conclusion reduced Section 160 to a mere general power of extension. In the ordinary meaning of the words “error or omission”, Jenkinson J opined that, in their context, they carried a connotation of obviousness in error.
In reviewing a Patent Office decision to allow an extension of time to gain acceptance in Jiejing Pty Ltd v Commissioner of Patents and Ron Thomas and Allan Garnham, [1995] AATA 100, the tribunal reasoned, at [88], that there was no reason to adopt a different meaning for the words “error or omission” in sub-section 223(1) vis-a vis sub-section 223(2). Moreover at [89], the tribunal stated:-
“If we find that there is an error or omission, that in itself is not enough to require the grant of an extension of time. There must be a causal link between the error or omission and a relevant act that must be done within a certain time and which either is not done or cannot be done within that time. The causal link is described by the use of the word “because” in sub-section 223(1).”
The Federal Court further considered the definition in G S Technology Pty Ltd v Commissioner of Patents, [2004] FCA 1017. At [65], Spender J stated:-
“Most errors and omissions which lead to a failure to do an act or take a step are the result of negligence or incompetence. Where such errors and omissions are made against a clearly demonstrated desire to maintain the application (and thus not have it lapse), and where attempts are made to remedy the error or omission as soon as its consequences are discovered and the existence of the error or omission learnt, as is the case here, the considerations in favour of an extension seem to me to be quite persuasive.”
In the context of the Trade Marks Act, Jenkinson J considered circumstances beyond control in Re Atomic Skifabrik Alois Rohrmoser v Registrar of Trade Marks, [1987] FCA 22. At [18], Jenkinson J concluded:-
“In the context in which it is found, the expression ‘circumstances beyond the control of the person concerned’ does in my opinion designate – and designates only – occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent. The operations of nature and the activities of strangers may result in such occurrences. So, too, may the acts and omissions of certain independent contractors engaged by the person concerned or by his agent, as for example the carrier of mail or the office cleaner, either of whom causes the loss or destruction of a document to be filed. But the acts or omissions of the agent who on behalf of the person concerned is to do the act or take the step are not occurrences of the description specified in paragraph 131(1)(a), in my opinion. Nor, in my opinion, are the acts or omissions of that agent’s servants. The section is, I think, correctly described as a force majeure provision.”
Finally I would note the discretionary nature of sub-section 223(2). That is, the Commissioner may extend the time. The Vangedal-Nielsen v Smith (Commissioner of Patents) decision, [1980] FCA 163, provided some factors for consideration in this regard. Of particular relevance to the present case is the public interest in the issue of a valid patent while also operating the patent system efficiently and without unreasonable delay. While the provisions of sub-section 223(2) are beneficial in nature, the discretion should not be exercised where, for example, it would serve no useful purpose.
SPECIFICATION
The specification, in accordance with the Section 104 amendment allowed on 3 September 2013, purports to relate to an ultra-low-speed, large-capacity power generator. Beyond that, the specification is principally characterised by the supposed theory and principles to enable the described and illustrated ring, magnetic power generator to be fully self-sufficient and not using any externally supplied energy. The theme of the disclosure appears to be that, by using vast numbers of permanent magnets in a ring generator with associated conductive coils, the device can be operated at low speed consuming low amounts of energy while producing vast amounts of power.
While the applicant further enhanced the explanations and advantages regarding the operating principles of the device in correspondence, the descriptive subject matter of the specification has in substance not significantly altered.
The specification relies for its theory on the relationship between the electromotive force (“EMF”), or voltage, induced when a conductor moves through a magnetic field. The applicant quotes the formula:-
Em = BLV
where Em is the peak value of the induced EMF, B is the magnetic field strength, L is the wire length and V is the speed of the generator.
This is the most basic application of the Michael Faraday law of electromagnetic induction, which outlines the EMF produced by a magnetic field interacting with an electrical circuit. For example, the above formula applies where a straight conductor of length L is moved at velocity V through a magnetic field strength B at right angles to the field. In such circumstances the EMF will be induced between the ends of the straight conductor.
The specification though describes the more complex arrangement of a ring-shaped, permanent magnet generator. At their most basic, such arrangements generally consist of sets of permanent magnets on a rotor and wire-wound coils on a stator in proximity under a relative velocity.
Increasing complexities arise in practice though. The specification purports to generate large, quantifiable power output whilst operating at ultra-low rotor speeds. To achieve this, the specification discusses the installation of large numbers of magnets. This would clearly require a large diameter generator and a consequently heavier machine requiring more energy to operate it. Such generators would suffer significantly from both electromagnetic and mechanical losses. For example, electromagnetic losses include resistive losses in the coil windings. Moreover, where the axial length of the generator is smaller than the diameter of the generator, the effects of fringe fields, that is, the peripheral magnetic fields outside the magnet core, are increasingly significant. Furthermore, the air gap flux between coil and magnet is not easily controllable and so the EMF generally cannot be so easily regulated. Mechanical losses include gearing, couplings and/or bearings.
With the allowed Section 104 amendment, the specification contains 20 claims. Claims 1, 7 and 9 are independent claims. Claims 1 and 9 are recited below.
1.Ring, Ultra-low-speed, Large-capacity Generator. The ring center does not have axes a large diameter rotation, the structure is simple and practical, generators ultra-low-speed part of its number of magnetic pole pairs very more, at least more than 10 pairs magnetic pole until large infinite, running the speed is very low, large-capacity generators generate electricity capacity with the number of magnetic pole pairs and ring diameter is proportional.
9.The self-cycle power amplification system, it mainly by the DC power supply, high-speed DC motor, reducer, ultra-low-speed generator, and rectifier components. It need not outside any energy supplement, its unrestricted use of time, which can be infinitely long.
The set of informally amended claims, filed 2 January 2018 and considered in the final examination report, also amounted to 20 claims. In this set, claim 1 is the only independent claim. Claims 1 and 2 are recited below.
1.The Ring, Ultra-low-speed, Large-capacity Generator, it has a self-cycle power amplification system. It is a can produce huge power, and its own energy consumption of the least generator. It is a new type of generator with special features.
2.According to claim 1 wherein said the rotational speed of the generator is directly related to the number of magnetic pole pairs installed inside the generator, the higher the number of mounting, the lower the rotational speed of the generator and the less the consumption of the mechanical energy. These are the most basic principles of physics and electrotechnics (sic). This can be proved from the generator speed formula. Generator speed formula: ft/p—(1). Where: f is the frequency; t is unit time; p is number of the magnetic pole pairs. When the number of magnetic pole pairs installed inside the generator is one pair, the power generation of the generator is the magnetic pole pair itself, and the speed of the generator can reach 3000 rpm/min. When the number of magnetic pole pairs installed inside the generator is 1000 pairs, the generator’s power generation can be increased to 1000 times, while the generator’s speed is only 3 rpm/min. And so on.
From the above, it is questionable whether any invention has been described and defined that could be proper subject matter for a patent, notwithstanding theoretical discrepancies and the language and grammatical difficulties with the specification. The principal obstacle is that the claimed invention does not appear to satisfy the requirement of being useful (sub-section 18(1)(c)) in that the specification does not disclose a specific, substantial and credible use for the purported invention (Section 7A) such that the promised benefit of producing vast amounts of power, whilst operating at ultra-low rotational speed with minimal energy input, can be achieved.
Moreover, the concept of generating an electric current by relative movement between a magnet and a coil of electrically conductive wires has been well known for a significant period of time. The concept is based on the above-mentioned Faraday law of electromagnetic induction. Furthermore the use of wire coils wound around a rotating bank of magnets has been common practice in electric power generation since well before the priority date.
DISCUSSION
Whether There Was Error or Omission
The prosecution history of the present application has been difficult. This may be evidenced by a perusal of the correspondence during the examination stage. For example, the applicant repeatedly re-filed substantially the same material at times. The differences in content generally amounted to an embellishment of the supposed theory, advantages and operating principles of the device. There have been no formal proposed amendments to the specification. Similarly the first three examination reports repeated substantially the same content. After the third examination report, the applicant informally filed a substantially different set of claims. While that would have overcome the lack of unity objection, the fourth report maintained other Section 40 objections, and included the objection that the subject matter of the new claims was not useful. The latter objection was on the basis that the specification disclosed a self-cyclic system generating more power than it consumes independently without any energy supplement from outside the system. The examiner thus stated the system defined in the claims was contrary to the laws of nature and so was not useful and would not achieve the promise of the invention. In summary one may easily form the conclusion that substantive progress of the application towards acceptance is not evident over the relevant 12 month period, and would even have been unlikely, and that this is the reason the application failed to gain acceptance within the required time.
To support the application for an extension of time, the applicant provided numerous responses, concurrently with the application for an extension of time and subsequent thereto. The applicant indicated the existence of a language barrier, an inability to find a suitable patent lawyer, and that it was the first time he had filed a standard patent application and therefore knew little about the procedures. Moreover the applicant indicated that the examiner had misunderstood the applicant’s application. In particular, the applicant challenged the examiner’s contention that the alleged invention contravened well-established laws of nature. Furthermore, the applicant stated that he had answered all issues raised in the examination reports.
The applicant further stated he had been provided with erroneous information in the final stages that prevented the application being accepted within the set time frame. The applicant did not specify what that information was. In perusing the correspondence, the only substantive error I am aware of is that the fifth examination report was designated to be the sixth report. This error was acknowledged to the applicant. I regard this error to be of no consequence in preventing acceptance of the application.
In written submissions for the hearing, filed 12 September 2018, the applicant re-filed numerous amounts of previous correspondence. The only substantive further statement was a summary that the invention can completely solve worldwide energy problems and protect Earth’s environment. The applicant also provided some documents seemingly in support of that proposition, including material related to two other patent applications by the applicant.
As indicated above, an error or omission in the context of sub-section 223(2)(a) denotes obviousness in error, and that the application of sub-section 223(2)(a) may be viewed favourably where attempts are made to promptly remedy the error or omission when discovered. In this vein, the applicant’s references to a language barrier and unfamiliarity with patent procedures do not constitute errors or omissions in the context of sub-section 223(2). Furthermore, the present case is characterised by a dispute over the patentability of the subject matter remaining unresolved for the duration of the examination stage. Moreover, the applicant has consistently demonstrated a lack of understanding of the requirements for acceptance of a patent application. The same may be said of the present Section 223 matter. Despite office correspondence (dated 31 August 2018) prompting the applicant to clearly identify an error or omission, or circumstances beyond control, and an explanation how that led to failure to gain acceptance in time, the applicant principally continued to focus on the perceived merits of the alleged invention. The decision not to engage an attorney or any other person to provide substantive advice in any of the above respects is also noteworthy. The prosecution history of this case would indicate the applicant has adopted a deliberate, although largely futile, approach in attempting to gain acceptance of the application. I consider that approach, rather than an inadvertent error, caused the failure of the application to gain acceptance.

I am not satisfied, on the material before me, that there has been a requisite error or omission in the present case that caused the failure of the application to be accepted in the available time.
Whether There Were Circumstances Beyond Control
As mentioned above, circumstances beyond the control of the person designates occurrences which neither the person concerned, nor any person acting on their behalf to do the act or take the step, could prevent. That is, they relate to chance events that are unavoidable.
The applicant has not provided any indications of any occurrence in the present case that fits that description.
I am not satisfied that circumstances beyond control existed that led to the failure of the application being accepted.
Whether Discretion to Extend the Time Could Have Applied
I have found above that there has been no error or omission, or circumstances beyond control, such that the provisions of sub-section 223(2) apply in the present case. Nonetheless, for the sake of completeness and in case I were wrong with the above determinations, I will briefly consider whether the discretion to extend the time could otherwise have been exercised in the present case.
Earlier I indicated that the claimed invention does not appear to satisfy the requirement of being useful (sub-section 18(1)(c)) in that the specification does not disclose a specific, substantial and credible use for the purported invention (Section 7A) such that the promised benefit of producing vast amounts of power, whilst operating at ultra-low rotational speed with minimal energy input, can be achieved. In addition the concept of generating power by relative movement between magnets and coils of electrically conductive wires has been well known. In the present case, there would appear to be no remedy to overcome these obstacles. Accordingly an extension of time would serve no useful purpose.
I determine that an extension of time in the present case would serve no useful purpose and therefore the discretion to extend the time could not apply.
CONCLUSION
The grounds available under sub-section 223(2) have not been made out. Moreover, in the present case, even if made out, an extension of time would serve no useful purpose.
In the present case, it is appropriate that the application for an extension of time is refused.
M. G. Kraefft
Delegate of the Commissioner of Patents