Ex Parte Ehrnberg

Patent Trial and Appeal Board

Sep 8, 2015

12448963 (P.T.A.B. Sep. 8, 2015)

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.
12/448,963 07/16/2009 Daniel Ehrnberg 13097 7186
31424 7590 09/09/2015
BABCOCK IP, PLLC
P.O.BOX 488
BRIDGMAN, MI 49106
EXAMINER
GONZALEZ, JULIO CESAR
ART UNIT PAPER NUMBER
2831
MAIL DATE DELIVERY MODE
09/09/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL EHRNBERG
____________

Appeal 2013-008541
Application 12/448,963
Technology Center 2800]
____________

Before CHARLES F. WARREN, PETER F. KRATZ, and
WESLEY B. DERRICK, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 49–56. We have jurisdiction pursuant
to 35 U.S.C. § 6(b).
Appellant’s claimed invention is directed to a method of extracting
energy from wave motion in a fluid.
Claim 49, which is the sole independent claim on appeal, is
illustrative and reproduced below:
49. A method of extracting energy from wave motion in a fluid
(12), comprising:
a. providing a wave power aggregate comprising at least
one container (14) situated at least partially in said fluid (12),
the container being equipped with an inflow (16) and an
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Application 12/448,963

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outflow (18), wherein said container (14) has an extension in an
extension direction (30) between said inflow (16) and said
outflow (18), and wherein said container further comprises a
first (20) and a second (22) part which when under the
influence of said wave motion, the first part (20) of said
container (14) arranges itself in a first position and the second
part (22) of said container (14) arranges in a second position,
and wherein said first and second positions correspond to
different potential energy;
b. alternately supplying to the container (14) at least a
first and a second fluid (32,34) via the inflow (16), where the
density of said first fluid (32) differs from the density of said
second fluid (34); and
c. at least during an initial stage of said method,
controlling a flow speed in said extension direction (30) in at
least one of said first and second fluids (32,34).

App. Br. 18 (Claims Appendix).

The Examiner relies on the following prior art references
as evidence in rejecting the appealed claims:
Weyers US 4,327,296 Apr. 27, 1982

Bellamy US 4,782,663 Nov. 8, 1988
(hereinafter “Bellamy ’663”)
Bellamy US 5,377,485 Jan. 3, 1995
(hereinafter “Bellamy ’485”)
Kitazawa1 JP03078569 Apr. 3, 1991

The Examiner maintains the following grounds of rejection:
Claims 49–53 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bellamy ’485 in view of Bellamy ’663. Claim 54 stands

1 We refer to the English Translation of Kitazawa prepared for the USPTO
by Phoenix Translations (PTO 13-3407 April 2013) which is of record.
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Application 12/448,963

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rejected under 35 U.S.C. § 103(a) as being unpatentable over Bellamy ’485
in view of Bellamy ’663 and Weyers. Claims 55 and 56 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Bellamy ’485 in view of
Bellamy ’663 and Kitazawa.
We reverse the stated rejections. Our reasoning follows.
Concerning the first stated rejection, the Examiner has correctly
determined that the container 14 of Bellamy ’485 is not made and/or situated
such that the method of Bellamy includes use of a container 14 that includes
parts that arrange themselves under the influence of wave action as required
by Appellant’s method according to sole independent claim 49 (Final Act. 2;
see App. Br. 8–10). In an attempt to make up for this deficiency in the
teachings of Bellamy ’485 with respect to suggesting a method
corresponding to the claimed method, the Examiner turns to Bellamy ’663.
As correctly argued by Appellant, however, Bellamy ‘663 discloses a
method that primarily relates to low head water applications wherein water
flow and air flow are kept apart via a barrier or membrane and the Examiner
has not established that Bellamy ’663 teaches or suggests alone or, in
combination with Bellamy ’485, a method corresponding to Appellant’s
method that utilizes a container that is situated at least partly in a fluid that
includes wave action, wherein the container, which is supplied with both a
first and second fluid via an inflow, is under the influence of wave action
and includes parts that, under such wave influence, arrange themselves such
that a first part is in a first position and a second part is in a second position
having a different potential energy than the first position (App. Br. 10–12;
Reply Br. 2–6; Bellamy ’663, col. 10, ll. 19–39; Fig. 9). The Examiner has
not established that Bellamy ’663, alone or in combination with Bellamy
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Application 12/448,963

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’485, teaches or suggests how the device of Bellamy ’663 can be used for
harvesting energy from wave motion in a fluid wherein at least one
container, as claimed, is situated in a manner corresponding to Appellant’s
method.
Thus, the record indicates that the Examiner used impermissible
hindsight in rejecting the Appellant’s claims. See In re Warner, 379 F.2d
1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must
rest on a factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art”). Accordingly, we do not
sustain the Examiner’s first stated rejection.
The separate obviousness rejections of certain dependent claims
tendered by the Examiner employ additional prior art for allegedly teaching
the further limitations set forth in the so rejected dependent claims; however,
the Examiner has not established that the additional prior art cures the
deficiencies of the base rejection over Bellamy ’485 taken with Bellamy
’663. As such, we shall reverse the separate obviousness rejections
pertaining to certain dependent claims, as maintained by the Examiner.

CONCLUSION
The Examiner’s decision to reject the appealed claims is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED

KRH