Ex Parte Dederick

Patent Trial and Appeal Board

Dec 6, 2016

12978752 (P.T.A.B. Dec. 6, 2016)

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.
12/978,752 12/27/2010 Robert J. Dederick DEDE.5860-NY 1793
5409 7590 12/08/2016
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
WAKS, JOSEPH
ART UNIT PAPER NUMBER
2831
NOTIFICATION DATE DELIVERY MODE
12/08/2016 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):
AZ5409@IPLAWUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT J. DEDERICK
Appeal 2014-007026
Application 12/978,752
Technology Center 2800
Before PETER F. KRATZ, JAMES C. HOUSEL, and JULIA HEANEY,
Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision finally rejecting claims 1—9, 11—18, and 20-223 under
1 Our decision refers to the Specification (Spec.) filed December 27, 2010,
the Examiner’s Final Rejection (Final Act.) delivered July 12, 2013,
Appellants’ Appeal Brief (Appeal Br.) filed January 28, 2014, the
Examiner’s Answer (Ans.) delivered April 3, 2014, and Appellants’ Reply
Brief (Reply Br.) filed June 3, 2014.
2 According to Appellants, the real party in interest is the inventor, Robert J.
Dederick. Appeal Br. 2.
3 Although the Examiner’s statement of rejection (Final Act. 3) omits claims
20—22, this error is harmless as the body of this rejection treats these claims
Appeal 2014-007026
Application 12/978,752
35 U.S.C. § 103(a) as unpatentable over Dederick* * 4 in view of Lepretre.5 We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal relates to systems to provide power to
buildings and the local energy grid, as well as to provide infrastructure for
fuel cell vehicles (FCVs). Spec. 125. According to Appellant, the power is
generated by renewable energy sources such as solar, wind, and hydro with
no transmission lines. Id. Appellant discloses that the buildings are
identified as abandoned or underused structures. Id. at | 51.
Independent claim 1, reproduced below from the Claims Appendix of
the Appeal Brief, is illustrative of the subject matter on appeal. The
limitation at issue is italicized.
1. A system comprising:
an elevated previously abandoned urban building;
an electrical generation subsystem selected from a group
consisting of: a solar panel collector, a wind generator and a
water power generation structure;
an electrical conduction structure for transferring
electrical output of said subsystem to at least one electrolysis
structure, said electrical conduction structure including
switching structure for shunting said electrical output to said
electrolysis structure or to an electrical power storage structure;
at least one water source;
the electrolysis structure being capable of producing
gaseous products while in electrical communication with said
on the merits (id. at 7) and Appellant understood that these claims were
intended to be included in the rejection (Appeal Br. 2, 11, 12).
4 Dederick, US 5,512,787, issued April 30, 1996 (“Dederick”).
5 Lepretre et al., FR 2912442, published August 15, 2008 (“Lepretre”).
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Application 12/978,752
electrical conduction structure and receptive of water from said
water source;
compression and storage structures for receiving said
gaseous products;
a multi-service station network for tapping into said
compression and storage structures containing said gaseous
products, using said gaseous products for generating electrical
power and for dispensing hydrogen and oxygen product
therefrom; and
an electric conversion structure capable of generating
alternating current power, wherein the alternating current power
is used to power the previously abandoned urban building.
Independent claims 12 and 16 similarly recite a system comprising an
elevated, previously abandoned urban building structure. Independent claim
20 recites a method of refueling comprising providing an abandoned urban
building structure.
ANALYSIS
Appellant argues claim 9 separately, but does not argue any of the
other claims separately. As such, we address claim 9 separately, and select
claim 1 as representative of the remaining claims. Claims 2—8 and 11—18
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(iv) (2013).
Claim 1
There is no dispute that Dederick, Appellant’s earlier patent, discloses
substantially the same system as recited in claim 1. Final Act. 3. The
Examiner finds Dederick discloses an elevated previously abandoned
building 99,6 but also acknowledges that Dederick fails to disclose that the
6 Throughout this Opinion, for clarity, we present labels to elements in
figures in bold font, regardless of their presentation in the original document.
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building is a previously abandoned urban building. Id.; also Ans. 3.
Nonetheless, the Examiner finds Lepretre discloses refurbishing of old urban
buildings, such as individual or collective buildings, with renewable energy
sources. Final Act. 3; Ans. 3. The Examiner concludes it would have been
obvious to have used Dederick’s system to refurbish vacant urban buildings
with renewable energy sources as suggested by Lepretre. Final Act. 4; Ans.
3. Moreover, the Examiner cites Ex parte Masham, 2 USPQ2d 1647 (BPAI
1987) in apparent support of the position that the description of the building
as a “previously abandoned urban building” is merely a recitation with
respect to the manner in which the system is intended to be used and does
not differentiate the claimed system from that of Dederick and Lepretre.
Final Act. 4.
As to the recitation, “abandoned,” the Examiner finds this term is
directed to the manner in which the apparatus is intended to be employed
and, therefore, does not differentiate the apparatus from the prior art which
otherwise satisfies the structural limitations of claim 1. Ans. 3. Moreover,
the Examiner finds this recitation to be merely directed to the “legal status of
the building (and the manner the building is used) and not to any structural
limitation.” Ans. 4. The Examiner further finds that once a request is made
to retrofit a building with Dederick’s system, the legal status of the building
will automatically change and the building will no longer be “abandoned.”
Id.
Appellant contends that the combination of Dederick and Lepretre
does not teach or suggest “an elevated previously abandoned urban
building.” Appeal Br. 12. In particular, Appellant argues that Dederick fails
to teach either previously abandoned buildings or urban buildings. Reply
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Application 12/978,752
Br. 3. Appellant also argues that nothing in Lepretre teaches or suggests
abandoned urban buildings. Appeal Br. 13. Instead, Appellant asserts that
Lepretre’s teaching of new or old buildings does not satisfy the claim
recitation to both “abandoned” and “urban.” Id.1 Appellant also argues that
“the abandoned nature is not an intended employment of the claimed
structure,” but is “a definable structure.” Id. at 13—14. Appellant urges that
“[o]ld buildings are not [necessarily] abandoned, and abandoned buildings
are not necessarily old.” Id. at 14. Appellant further urges that “a
previously abandoned urban building imparts significant structure,” in that
“an abandoned building is not occupied, and does not include access to
utilities and the like.” Reply Br. 5—6.
Thus, the dispositive issue before us on appeal is whether Appellant
has identified reversible error in the Examiner’s conclusion that it would
have been obvious to provide Dederick’s system on an elevated previously
abandoned urban building. We answer this question in the negative and,
therefore, will sustain the Examiner’s obviousness rejection.
We first note that claim 1 does not require that any of the recited
electrical generation, electrolysis, compression and storage, or multi-serve
station network, be physically connected to or otherwise associated with the
recited building. Only the electric conversion structure is associated with
the building and, even then, merely to power the building. While neither
7 We note that Appellant argues, contrary to this admission that Lepretre
teaches new or old buildings, that Lepretre fails to suggest old buildings or
even use the term, “old.” Reply Br. 4. This latter argument is inconsistent
with Appellant’s admission in the Appeal Br. and to Lepretre, page 3 (“all
types of buildings, new or old”).
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Appellants nor the Examiner offer a definition for the terms, “abandoned”
and “urban”, we note that their meanings are central to the issue before us.
See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351
(Fed. Cir. 2001) (“Only when a claim is properly understood can a
determination be made . . . whether the prior art anticipates and/or renders
obvious the claimed invention.”). We find “urban” as an adjective refers to
the geographic location of the building, i.e., within a city. The term,
“urban,” generally means “(Human Geography) of, relating to, or
constituting a city or town,”8 consistent with the Specification’s references
to “inner-city”. Spec, 23, 57, and 63. It is axiomatic that during
examination proceedings, claims are given their broadest reasonable
interpretation consistent with the specification. In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Am. Acad. ofSci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
To the extent that the term, “urban,” refers to a geographic location,
we find this term does not further structurally limit the building itself.
Indeed, structurally identical buildings may be located in different
geographic locations, one “urban”, the other “non-urban” such as suburban
or rural. Appellant has not shown any structural or functional distinction of
a building based on its geographical location, nor do we find any. Claim
recitations that are directed merely to a geographic location of an apparatus
neither functionally nor structurally distinguish that apparatus from the prior
art. The art does not need to explicitly teach this intended location so long
8 http://www.thefreedictionary.com/urban, last visited on November 28,
2016.
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as it is teaches structure that otherwise meets the claimed apparatus. Cf. In
re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (“It is well settled that
the recitation of a new intended use for an old product does not make a claim
to that old product patentable.”).
Turning to the term, “abandoned,” we find this term as an adjective
refers to the state of use of a building, based primarily on the intent of a prior
occupant/owner. The term, “abandoned,” in reference to property, i.e., a
building, generally means “unoccupied, empty, deserted, vacant, derelict,
uninhabited.”9 We note this definition is partially consistent with
Appellant’s assertion that “an abandoned building is not occupied, and does
not include access to utilities and the like,” i.e., that an abandoned building
is not occupied. There is nothing in the above definition explicitly stating or
implicitly inferring that an abandoned building does not include access to
utilities. Appellant does not direct our attention to any support in the
Specification limiting an abandoned building to those not including utility
access, nor do we find any. Importantly, as Appellant correctly asserted,
claim 1 recites a previously abandoned building, i.e., a building that was
unoccupied in the past. Thus, claim 1 does not recite that the building is
currently unoccupied.
Importantly, Appellant fails to identify any functional or structural
distinction between a previously abandoned/unoccupied building and a
building that was previously occupied prior to receiving power from the
electric conversion structure. As Appellant admits, “[o]ld buildings are not
9 http://www.thefreedictionary.com/abandoned, last visited on November 28,
2016.
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Application 12/978,752
[necessarily] abandoned, and abandoned buildings are not necessarily old.”
Appeal Br. 14. In other words, the prior occupation status of a building does
not alone determine any functional or structural change to the building. As
such, we find that a previously abandoned building is neither functionally
nor structurally distinct from a building that was not previously abandoned.
Moreover, we note that Lepretre specifically teaches that retrofitting
“all types of buildings, new or old” (Lepretre 3), “whether industrial,
agricultural or tertiary, sports or medical, new as well as remodeled, and at
any geographic point on the globe” {id. at 7). Lepretre’s teaching
encompasses any building, whether new or remodeled, located anywhere in
the world. Thus, it is reasonable to conclude that one of ordinary skill in the
art would have considered a “previously abandoned urban building” to be
within the scope of Lepretre’s teaching, and would have found it obvious to
provide Dederick’s system for such a building. KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (an obviousness analysis requires that the
prior art be read in context, taking account of “demands known to the design
community,” “the background knowledge possessed by a person having
ordinary skill in the art,” and “the inferences and creative steps that a person
of ordinary skill in the art would employ.”)
Accordingly, a preponderance of the evidence supports the
Examiner’s obviousness rejection of claim 1.
Claim 9
Claim 9 depends from claim 1, and further requires that the previously
abandoned urban building is located on or proximate to a polluted brown­
field. Claim 9 does not require any functional purpose or association
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between the recited system structures and the brown-field. Again, neither
Appellant nor the Examiner provide a definition for “brown-field.” We find
the term “brown-field” to mean “an industrial or commercial site that is idle
or underused because of real or perceived environmental contamination.”10
Thus, a polluted brown-field as required by claim 9 refers to such a site with
real, rather than perceived, environmental contamination.
The Examiner treats the requirement of claim 9 as a recitation with
respect to the manner in which the claimed apparatus is intended to be
employed, similarly to the Examiner’s prior treatment of claim 1 ’s
requirement that the building be previously abandoned and urban. Final Act.
5. Asa result, the Examiner finds the claim 9 recitation fails to differentiate
the claimed apparatus from that of Dederick and Lepretre, again citing Ex
parte Masham. Id.
Appellant contends that the claim 9 recitation imparts additional
structure to the claimed system. Appeal Br. 14. This structure, according to
Appellant, is a brown-field and the building’s location on or proximate to
this brown-field. Id. In addition, Appellant attempts to distinguish claim 9
from Masham by noting there that the claimed device was clearly movable
into various configurations, whereas Appellant’s system is required to be
located on or proximate to a polluted brown-field. Id', see also Reply Br. 7.
Appellant’s arguments are not persuasive of reversible error in the
Examiner’s rejection of claim 9. As the Examiner correctly responds,
Appellant has not disclosed any functional interaction between the disclosed
10 http://www.dictionary.com/browse/brownfield, last visited November 28,
2016.
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energy system, or even the building, and the proximate polluted brown-field.
Ans. 5. Moreover, similar to our treatment of the recitation in claim 1 that
the building be “urban,” we likewise find the recitation of claim 9 to be a
geographic location that is neither functionally nor structurally limiting.
Appellant has not shown that the building’s “proximate location ... to a
brownfield” (Reply Br. 8) as opposed to any other location, in any way
affects the building functionally or structurally. As the above definition for
brown-field implies, such locations are well-known, and locating Dederick’s
system on a building on or proximate to such a location would not be
beyond the ordinary skill in the art. KSR Int’l Co., 550 U.S. at 421 (A
person of ordinary skill in the art is also a person of ordinary creativity, not
an automaton.)
DECISION
Upon consideration of the record, and for the reasons given above and
in the Answer, the decision of the Examiner rejecting claims 1—9, 11—18,
and 20—22 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Dederick and Lepretre is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
10