Ex Parte BalasingamDownload PDFPatent Trial and Appeal BoardNov 9, 201713842203 (P.T.A.B. Nov. 9, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/842,203 03/15/2013 Arjun Balasingam JPEX-001 7075 70406 7590 11/14/2017 WAGNER BLECHER LLP 123 WESTRIDGE DRIVE WATSONVTT.T.E, CA 95076 EXAMINER ROSENAU, DEREK JOHN ART UNIT PAPER NUMBER 2837 NOTIFICATION DATE DELIVERY MODE 11/14/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patents @ wagnerblecher.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ARJUN BALASINGAM Appeal 2016-007914 Application 13/842,203 Technology Center 2800 Before TERRY J. OWENS, BRIAN D. RANGE, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests our review under 35 U.S.C. § 134(a) of a final rejection of claims 1—13. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Appellant claims a method for improving wind-based piezoelectric power conversion, and a flexural enhancing system for improving power output of a wind-powered piezoelectric generator. Br. 3. Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A method for improving wind-based piezoelectric power conversion, comprising: 1 Appellant identifies the real party in interest as the inventor, Arjun Balasingam. Appeal Brief filed December 29, 2015 (“Br.”), 1. Appeal 2016-007914 Application 13/842,203 providing a piezoelectric element affixed to a vibratory member, providing a rigid mounting system for said vibratory member on one end of the vibratory member; and providing at least one obstacle located on the flexing side of the vibratory member, wherein the obstacle induces a vortex in the wind passing the obstacle and arriving at the vibratory member, which enhances wind-induced displacement in the vibratory member. Br. 18 (Claims Appendix) (emphasis added). The Examiner sets forth the following rejections in the Final Office Action entered October 5, 2015 (“Final Act.”), and maintains the rejections in the Answer entered May 31, 2016 (“Ans.”): I. Claims 1—6 and 9-12 under 35 U.S.C. § 103(a) as unpatentable over Chang (US 5,223,763, issued June 29, 1993) in view of Tsou (US 2010/0164231 Al, published July 1, 2010); and II. Claims 7, 8, and 13 under 35 U.S.C. § 103(a) as unpatentable over Chang in view Tsou and Hayamizu (US 2011/0018396 Al, published January 27, 2011). DISCUSSION Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions, we affirm the Examiner’s rejections of claims 1—13 under 35 U.S.C. § 103(a) for the reasons set forth in the Final Action, the Answer, and below. Rejection I Appellant argues claims 1—6 and 9-12 as a group on the basis of claims 1 and 9. Br. 5—15. Although Appellant presents separate arguments 2 Appeal 2016-007914 Application 13/842,203 for claims 1 and 9, Appellant provides the same arguments for each claim. Id. Therefore, we select claim 1 as representative, and decide the appeal as to Rejection I based on claim 1 alone. 37 C.F.R. § 41.37(c)(l)(iv). Chang discloses a method of producing electrical power from wind flow comprising channeling the wind flow along a predetermined path 23 through a conduit 13 comprising a cylindrical portion 19, forming vortices 27—33 in the flow by positioning a baffle 25 or other obstacle in the path 23 of the flow, and positioning a plurality of piezoelectric transducers 35—45 (piezoelectric elements) in the path of the vortices 27—33 at successively greater distance from the baffle 25. Chang col. 2,11. 34^44; col. 2,1. 67—col. 3,1. 16; Fig. 1. Chang discloses that each transducer 35—45 is mounted on a flexible member 47 (vibratory member) by an adhesive or fastener, to facilitate vibration of the transducers 35—45 with passage of the vortices 27— 33. Chang col. 3,11. 21—24, 36—38; Fig. 2. Chang further discloses that the base 57 of each flexible member 47 is mounted onto the inside wall of the cylinder 19 by an appropriate adhesive or fastener such as epoxy. Chang col. 3,11. 38-41; Fig. 3. Chang discloses that each transducer is stressed in one direction 49 in response to pressure applied by a vortex, and then stressed in another direction 51 upon rebound of the transducer after passage of the vortex. Chang col. 3,11. 24—29; Fig. 2. Chang discloses that the transducer outputs an alternating current signal in response to the periodic pressure (stress) applied by vortices. Chang col. 3,11. 29-31. The Examiner finds that Chang does not disclose providing a rigid mounting system for the flexible member 47 (vibratory member) on one end of the flexible member 47 (vibratory member), and the Examiner relies on 3 Appeal 2016-007914 Application 13/842,203 Tsou for disclosing this feature. Final Act. 3. Tsou discloses a vibration power-generation device 100 comprising a brace 10 and a blade 20. Tsou 115; Fig. 1. Tsou discloses that the blade 20 is a thin and flexible vibration element, and a piezoelectric transducer 21 is embedded in the blade. Id. Tsou discloses that one side of the blade 20 is attached to the brace 10. Id. The Examiner finds that one of ordinary skill in the art would have been led at the time of Appellant’s invention to combine “the arrangement of the vibratory member” disclosed in Tsou with the piezoelectric generator disclosed in Chang “for the benefit of allowing for power generation in various wind conditions.” Final Act. 3 (citing Tsou Abstract). Appellant argues that Chang discloses, in the only embodiment described in the reference, mounting the bases 57 of the flexible members 47 to the inside wall of the cylinder 19. Br. 7—8 (citing Chang col. 3,11. 38—41; col. 2,11. 51—53; Figs. 1, 3). Appellant argues that the flexing side of the flexible members 47 is therefore the top side of the flexible members 47. Br. 8. Appellant contends that Chang does not disclose that the baffle 25 is located on the top, flexing side of the flexible members 47, but instead discloses that the baffle 25 must be located in front of an edge of the flexible members 47 that forms a 90 degree angle with the bases 57, to allow the baffle 25 to be in the flow path. Id. Appellant argues that Chang therefore teaches away from “providing at least one obstacle located on the flexing side of the vibratory member,” as recited in claim 1. Br. 8, 11. However, Appellant’s Specification does not require the flexing side of the vibratory member to be the side opposite the side mounted to the rigid mounting system. Rather, Appellant’s Specification describes “embodiments” and “examples” of Appellant’s invention in which the 4 Appeal 2016-007914 Application 13/842,203 flexing side is the side opposite the mounted side. Spec. H 16, 17, 26, 29, 31, Figs 1—3, 6, 7. Accordingly, under a broadest reasonable interpretation consistent with Appellant’ Specification, claim 1 does not exclude a flexible member 47 (vibratory member) as disclosed in Chang mounted at its base to the inside wall of a cylinder, and a baffle 25 facing a lateral side of the flexible member 47, as shown in Chang’s Figure 1, such that Chang’s baffle 25 and a lateral side of Chang’s flexible member 47 are both in flow path 23. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (During prosecution of patent applications, “the PTO must give claims their broadest reasonable construction consistent with the specification . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.”). Appellant further argues that Tsou requires a piezoelectric transducer to be embedded inside a blade and makes disparaging statements about piezoelectric transducers that are not embedded inside a blade. Br. 8—9 (citing Tsou Abstract, claim 1,14). Appellant argues that such disclosures do not teach or suggest, and even teach away from, “providing a piezoelectric element affixed to a vibratory member,” as recited in claim 1. Id. However, Appellant’s arguments are improperly based on Tsou alone, and do not take into consideration what the combined disclosures Chang and Tsou would have suggested to one of ordinary skill in the art at the time of the invention. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981) 5 Appeal 2016-007914 Application 13/842,203 (The test for obviousness “is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”) One of ordinary skill in the art would have understood from Chang’s disclosure of producing electrical power from wind flow using piezoelectric transducers mounted on a flexible member (vibratory member) by an adhesive or fastener, that piezoelectric transducers need not be embedded inside a flexible member to generate electrical power. Tsou’s disclosure of an alternate approach for mounting a piezoelectric transducer to a flexible member or blade—embedding the transducer inside the blade—would not have discouraged one of ordinary skill in the art from utilizing Chang’s approach because, contrary to Appellant’s arguments, Tsou does not criticize or discredit mounting piezoelectric transducers on a flexible member. Although Appellant asserts that Tsou makes “disparaging statements” about piezoelectric transducers that are not embedded inside a blade, the cited disclosures in Tsou merely state that embedding a piezoelectric transducer inside a blade improves power generation capability. Tsou 14. Therefore, Tsou does not teach away from “providing a piezoelectric element affixed to a vibratory member” as recited in claim 1. In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (a claimed product “does not become patentable simply because it has been described as somewhat inferior to some other product for the same use” quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed”) 6 Appeal 2016-007914 Application 13/842,203 Appellant’s arguments are therefore unpersuasive of reversible error in the Examiner’s rejection of claim 1. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). We accordingly sustain the rejection of claims 1—6 and 9—12 under 35 U.S.C. § 103(a). Rejection II To address this rejection, Appellant relies on the arguments made for Rejection I (discussed above), and argues that the additional reference applied in this rejection (Hayazimu) fails to cure the deficiencies of Chang and Tsou. Br. 16. Because we are unpersuaded of reversible error in Rejection I for the reasons discussed above, Appellant’s position as to this rejection is also without merit. We accordingly sustain the Examiner’s rejection of 7, 8, and 13 under 35 U.S.C. § 103(a). DECISION In view of the reasons set forth above and in the Final Action and the Answer, we affirm the Examiner’s rejections of claims 1—13 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 7 Copy with citationCopy as parenthetical citation