Ex Parte Farb

Patent Trial and Appeal Board

Jan 3, 2018

12867758 (P.T.A.B. Jan. 3, 2018)

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.
12/867,758 08/16/2010 Daniel Farb 3499/119 2662
44696 7590 01/05/2018
DR MARKM FRIEDMAN
EXAMINER
Moshe Aviv Tower, 54th Floor, 7 Jabotinsky St. WHITE, ALEXANDER A
Ramat Gan, 5252007
ISRAEL ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
01/05/2018 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 @ friedpat. com
friedpat.uspto@gmail.com
rivka_f@friedpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL FARB
Appeal 2017-003858
Application 12/867,758
Technology Center 3700
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Daniel Farb (“Appellant”) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 28, 31, 36, 38, 39, 44, 47, and 48. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2017-003858
Application 12/867,758
CLAIMED SUBJECT MATTER
The claims are directed to a flow deflection device used in connection
with a wind turbine. Claim 28, reproduced below, is illustrative of the
claimed subject matter:
28. A flow deflection device, fixed to the adjacent
environment of and physically separate from a turbine, for
positioning to be in communication with a turbine in a fluid
flow, the deflection device comprising:
a. a plate including an external edge for positioning to
face the fluid flow, the external edge including a plurality of
polygonal panels,
b. the polygonal panels arranged in a conical distribution,
the conical distribution oriented along an axis which is
substantially perpendicular to the direction of the fluid flow,
and,
c. the polygonal panels fixed at their inner and outer edges
and extending inward at predetermined, equivalent intervals
along the external edge of the plate.
THE REJECTIONS1
1) Claim 48 is rejected under 35U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
2) Claims 28, 31, 36, 38, 39, 44, 47, and 48 are rejected under 35
U.S.C. § 112, second paragraph, as being indefinite.
3) Claims 28, 31, 38, 44, and 472 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Boughton (US 6,755,608 B2, issued June 29,
2004) and Russell (US 6,097,104, issued Aug. 1, 2000).
1 The Examiner’s objection to claims 28, 39, and 48 is a petitionable matter,
not an appealable matter, and thus is not within the jurisdiction of the Board.
See Final Act. 4; see also In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
2 We treat the Examiner’s inclusion of claim 39 as a typographical error as
the “winglet” of claim 39 is discussed in Rejection 4. See Final Act. 9. We
2
Appeal 2017-003858
Application 12/867,758
4) Claims 36, 39, and 48 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Boughton, Russell, and Bolie (US 4,017,205, issued Apr.
12, 1977).
ANALYSIS
Rejection 1
The Examiner finds that claim 48 fails to comply with the enablement
requirement, because the disclosure does not describe “how the attachments
may change their shape.” Final Act. 5. According to the Examiner, there
are an unlimited number of ways that an attachment can change shape, but
the disclosure does not provide examples of “how the attachment itself is
changeable in shape.” Id.
Appellant argues that because the Specification discloses terms “such
as ‘aileron’ and ‘winglets’ and ‘flaps’ which are routinely used in the aircraft
industry,” to alter aerodynamics of aircraft, one of ordinary skill would
know “how they operate.” Br. 8 (citing Spec. 134).
The Examiner responds that because claim 48 could “be construed to
mean that it is the attachments themselves that are changing shape, not that
the attachments move to positions that affect a change of shape to the overall
flow deflection device as described in [Appellant’s Specification.” Ans. 3
(emphasis added).
Appellant’s argument does not apprise us of Examiner error. When
rejecting a claim under 35 U.S.C. § 112 for lack of enablement, the
treat the Examiner’s inclusion of claim 40 as a typographical error as claim
40 is cancelled. See Br. 2 (submitted May 17, 2016). The Examiner’s
omission of claim 47 is considered a typographical error as claim 47 appears
in the body of the rejection. See Final Act. 6.
3
Appeal 2017-003858
Application 12/867,758
Examiner bears an initial burden of setting forth a reasonable explanation as
to why the scope of protection provided by the claim is not adequately
enabled by the description of the invention provided in the specification of
the application. See In re Wright, 999 F.2d 1557, 1561—62 (Fed. Cir. 1993).
Here, we agree with the Examiner that although the Specification discloses
that the overall shape of the flow deflection device changes shape (see Ans.
3), claim 48 recites “attachments that change their shape,” and the
Specification does not disclose how the attachments change their shape.
That is, the “movable flaps (24), slats, spoilers, or ailerons” (see Spec. 6:12)
change their position, i.e. pivot, to change the overall shape of the flow
deflection device, but the Specification does not disclose changing the shape
of the attachment per se.
The enablement provision in the first paragraph of35U.S.C. § 112
requires that the full scope of a claim be enabled. ALZA Corp. v. Andrx
Pharmaceuticals, LLC, 603 F.3d 935, 943 (Fed. Cir. 2010) (claim inclusive
of both osmotic and non-osmotic dosage forms not enabled where non-
osmotic dosage forms not enabled); Automotive Technologies Intern., Inc. v.
BMW of North America, Inc., 501 F.3d 1274, 1285 (Fed. Cir. 2007) (claim
inclusive of both electronic and mechanical side impact sensors not enabled
where electronic sensors not enabled). Here, the change of shape of the
attachment, which, as the Examiner notes (see Ans. 3) is within the scope of
claim 48, results in the full scope of claim 48 not being enabled.
Rejection 2
The Examiner finds that “the panel has two vertically extending sides
and two horizontally extending sides and the claims are not clear [] which
sides are considered inner or outer edges.” Final Act. 6.
4
Appeal 2017-003858
Application 12/867,758
According to Appellant, the Specification discloses various instances
of “inner” and “outer” with respect to how the flow deflection device faces
the turbine and that “‘inner’ would refer to the side of the turbine.” Br. 8
(citing Spec. 3:22—4:1 and 6:11—14).
The Examiner responds that the Specification describes the “inner and
outer parts of the overall flow deflection device,” whereas the claims recite
“inner and outer edges of individual panels.” Ans. 4. According to the
Examiner, it is unclear whether the inner and outer edges are panel edges
within “the flow deflection device itself,” or are inner and outer edges of the
flow deflection device. Id.
We agree with the Examiner that the claims are indefinite because the
claim limitation “the polygonal panels fixed at their inner and outer edges,”
as recited in the independent claims, is amenable to at least two plausible
claim constructions as explained below. See Ex parte Miyazaki, 89 USPQ2d
1207, 1211 (BPA1 2008) (precedential) (“if a claim is amenable to two or
more plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim . . . indefinite”).
According to the Examiner, two panels could be connected to each
other along their vertical sides at the inner and outer edges, such that the
inner and outer edges are panel edges within the flow deflection device
itself. See Ans. 4. Appellant’s Figure 5 depicts a plurality of polygonal
panels that are adjacent to each other along their vertical edges and could be
fixed to each other at the inner and outer vertical edges. Accordingly, the
Examiner’s interpretation of fixed along their inner and outer edges to mean
along vertical inner and outer edges is plausible.
5
Appeal 2017-003858
Application 12/867,758
Appellant asserts that “inner” and “outer” refer to how the flow
deflection device faces the turbine. See Br. 8. Appellant’s Figure 14 depicts
a flow deflection device with a flap at “the inner diameter.” Spec. 6:11—13
and Fig. 14; see also Br. 8—9. Thus, Appellant uses the terms “inner” to
mean the edge closest to the turbine and “outer” to mean the edge furthest
from the turbine, i.e., the horizontal edges that could be fixed to pipes (see
Fig. 1) or other support structure (see Spec. 4:16—17). Appellant’s
interpretation is, thus, also plausible. We, therefore, sustain the Examiner’s
rejection of the claims under 35U.S.C. § 112, second paragraph, as
indefinite because the claims are amenable to at least two plausible claim
interpretations.
Rejection 3
Appellants argue claims 28, 31, 38, 44, and 47 as a group. Br. 9—15.
We select claim 28 as representative and claims 31, 38, 44, and 47 stand or
fall with claim 28. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Boughton discloses most of the limitations of
independent claim 28 including a flow deflection device adjacent to and
physically separate from a turbine, and the flow deflection device comprises
a plurality of panels, but does not disclose polygonal panels that extend
inward at predetermined equivalent intervals. Final Act. 7. The Examiner
then finds that Russell discloses a flow deflection device that comprises a
plurality of polygonal panels extending inward at predetermined equivalent
intervals. Id. at 8. According to the Examiner, it would have been obvious
“to construct the flow deflection device of BOUGHTON from a plurality of
polygonal panels that extend inward at predetermined equivalent intervals,
6
Appeal 2017-003858
Application 12/867,758
as taught by RUSSELL, in order to form the mound, i.e. rounded shape to
deflect wind upward to the rotor.” Id. (citing Russell, 11:27—34).
Lirst, Appellant argues that Boughton’s mound, which the Examiner
finds corresponds to the flow deflection device, is not adjacent to and
separate from the turbine. Br. 10. According to Appellant, “Boughton
teaches one large structure connected to the turbine and it is very difficult to
claim that the angled part of the mound is physically separate. It looks more
like a support for the mound, not a separate object.” Br. 12.
The Examiner responds that Boughton discloses an alternate
arrangement wherein “the deflector may be physically separate from the
wind turbine.” Ans. 8 (relying on Boughton, 6:11—13 that discloses “the
mound 20 may be built adjacent to an existing wind turbine 10.”) The
Examiner contrasts this to the disclosure in Boughton’s Figure 2 of a turbine
built on a mound (Ans. 10) and notes that even mound 20 in Boughton’s
Figure 2 is “separate from the turbine” because claim 28 requires the
deflector to “be separate from the turbine and not the structure upon which
the turbine is mounted.”
Appellant’s first argument is not persuasive because although some of
Boughton’s Figures show a turbine on top of a mound, the Examiner is
correct in that Boughton discloses that “mound 20 [(flow deflection device)]
may be built adjacent to an existing wind turbine 10.” Boughton, 6:11—14;
see also Ans. 10. As Boughton’s flow deflection device is constructed after
the turbine is built, we agree with the Examiner that the above noted passage
of Boughton discloses an alternate embodiment that is not formed around the
turbine support. Further, Appellant does not address the Examiner’s
argument that Boughton’s Figure 2 discloses that the turbine itself is
7
Appeal 2017-003858
Application 12/867,758
separate from the mound. A preponderance of the evidence, thus, supports
the Examiner’s position that Boughton discloses a deflector that is
“physically separate from the wind turbine.” Ans. 8.
Second, Appellant argues that Boughton has curved surfaces that form
a rounded mound and does not suggest polygonal panels arranged in a
conical distribution. Br. 9. According to Appellant, “the use of panels as
opposed to curved surfaces, would have approximately the same effect but
much lower costs.” Id.
The Examiner responds that because the claims do not require a plate
or panels that are “flat, curved or otherwise,” that “the curved structure of
the flow deflection device taught by Boughton does not disqualify it from
meeting the claim limitations.” Ans. 7—8. According to the Examiner,
Boughton’s deflector is made up of sheets that “may be considered to be
panels” and are conically distributed because “a cone is itself merely a three
dimensional extension of a circle.” Ans. 8—9.
Appellant’s arguments are not persuasive because the claims do not
exclude curved panels forming a rounded structure. The Specification
discloses that the flow deflection device may have a full or partial doughnut
shape, and the panels can be curved or flat. See Spec. 4:11 and 6:5—6; Fig.
12. Appellant does not persuasively explain why Boughton’s mound, as
modified by Russell, is not a conical distribution, because as the Examiner
correctly notes, the claims do not require the panels to be “arranged as a
cone,” but rather, be “in a conical distribution.” See Ans. 9. Appellant’s
second argument, thus, likewise does not apprise us of Examiner error.
Third, Appellant argues that Russell requires a plurality of collars that
are not adjacent to and not physically separate from the turbine. Br. 11.
8
Appeal 2017-003858
Application 12/867,758
According to Appellant, Russell does not describe the collars as including
separate panels and does “not state[] whether those panels are circular or
polygonal.” Br. 10-11.
The Examiner responds that Boughton is relied upon for adjacent and
separate structures, and that Russell is relied upon “for teaching polygonal
panels that extend inward at predetermined equivalent intervals.” Ans. 8—9.
According to the Examiner, Russell’s Figure 7 shows a collar formed of
rectangular panels that extend inward at predetermined intervals. Id.
We agree with the Examiner that Russell is relied on for the shape
(polygonal) and orientation (extending inward) of the panels, and not the
quantity or location of the panels. See Ans. 9; Final Act. 8. With respect to
Russell’s panels, we agree with the Examiner that “the figures may be relied
upon to teach components that are clearly visible within the structure shown
in the figures.” Ans. 9. When we review the disclosure of drawings in a
prior art reference, we should “evaluate and apply the teachings ... on the
basis of what they reasonably disclose and suggest to one skilled in the art.”
In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (citation omitted); In re
Mraz, 455 F.2d 1069, 1072 (CCPA 1972). Here, based on the plurality of
lines in Russell’s collar 88, one of ordinary skill in the art would reasonably
understand from Russell’s Figure 7 that frustoconical collar 88 is divided
into a plurality of sections, or panels. Russell, Fig. 7. Appellant’s
Specification discloses that panels “could be both flat and rounded.” Spec.
6:1—3. Thus, Russell’s curved polygonal panels are consistent with the
Specification. The Examiner’s determination that Russell discloses the
limitation “a plurality of polygonal panels extending inward at
9
Appeal 2017-003858
Application 12/867,758
predetermined equivalent intervals” is, thus, supported by a preponderance
of the evidence. Final Act. 8.
Fourth, Appellant argues that the Examiner has misread the “sheets”
of Boughton as panels. Br. 13. According to Appellant, ‘“sheets’ can refer
to subjects like panels, but here it is obviously a description of layers of a
synthetic product that are inflatable.” Id.
The Examiner responds that the claimed panels do not have a specific
structure that defines over the sheets of Boughton. See Ans. 10—11.
According to the Examiner, because Appellant “has admitted that in some
contexts that sheets of something may be considered to be panels, the Office
maintains that Boughton effectively teaches panels of material comprising
the surface of the deflector structure.” Ans. 11.
Appellant’s fourth argument does not apprise us of Examiner error.
Boughton discloses that
Hollow structures may typically have a lightweight frame that
is covered with a thin, lightweight material such as nylon or
polymer sheets or reinforced fabric, for example. Other
materials suitable for covering the frame will be apparent to
those having ordinary skill in the art of building hollow
structures.
Boughton 5:20-25; see also Final Act. 7. Appellant’s Specification
discloses a flow deflection device supported by a frame (see Spec. 4:22—23),
and that “panels could in various embodiments be of metal such as steel or
aluminum, plastic, wood, and earth, and could be both flat and rounded, and
the generally round shape could be approximated by using sheet metal
construction or other flat panels placed side by side.” Spec. 6:1—3.
10
Appeal 2017-003858
Application 12/867,758
Appellant does not adequately explain why Boughton’s polymer (plastic)
sheets that are placed on a frame and are inflatable are not “panels” as the
Examiner finds in light of this disclosure in the Specification. See Final Act.
7.
Fifth, Appellant argues that Boughton does not disclose a “conical
distribution oriented along an axis which is substantially perpendicular to the
direction of the fluid flow,” because Boughton does not focus flow on the
turbine, and because Boughton’s has “a spherical shape, which has no axis.”
Br. 14.
In response, the Examiner notes that Boughton has an axis through the
center of the flow deflection device, and that “any direction in which the
wind flows there is a portion of the face of the [Boughton] deflector [] which
is perpendicular to the fluid flow direction.” Ans. 11.
Appellant’s fifth argument is not persuasive. Figure 3 of Boughton
shows a mound 20 with an “X” in the center of the mound. Boughton, Fig.
3. Because an axis through the “X” is an axis of the flow deflection device,
we agree with the Examiner that Boughton’s flow deflection device has a
central axis. Boughton’s Figure 3 further shows wind 12 perpendicular to
the central axis, and Boughton discloses that “the mound 20 may be built to
direct the wind 12 into the rotor 11. A wind path 24 depicts how the mound
20 redirects wind 12 near the ground and focuses the wind 12 onto the rotor
11.” Boughton, 4: 38-41; Fig. 3. As such, Boughton’s flow deflection
device focuses the flow on the turbine, and includes “an axis which is
substantially perpendicular to the direction of the fluid flow,” as the
Examiner finds. Final Act. 7.
11
Appeal 2017-003858
Application 12/867,758
Sixth, Appellant argues that Boughton and Russell are “fundamentally
incompatible because they relate to different types of turbines that convert
the force of the wind differently.” Br. 15. According to Appellant, the
Examiner cannot “take a feature here and a feature there and paste them
together as prior art.” Br. 14.
The Examiner responds that the reason for combining the references
comes from the references themselves, and that “Russell states that one
would utilize the polygonal panels as taught in order to properly deflect
wind upward and into an associated wind turbine rotor. Ans. 11 (citing
Russell, 11:27—34).
To the extent that Appellant is arguing that the references are non-
analogous art, both references are in the field of wind turbines. Compare
Boughton, 1:10-13 with Russel 3:57-4:8. Moreover, the Examiner did not
base the rejection on a bodily incorporation of RusselEs flow deflection
device into the flow deflection device of Boughton. See In re Keller, 642
F.2d 413, 425 (CCPA 1981)(citations omitted) (“The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference. . . . Rather, the test
is what the combined teachings of those references would have suggested to
those of ordinary skill in the art.”). Here, the Examiner is using Russell’s
polygonal shaped panels to form Boughton’s mound, and Appellant has not
asserted that the proposed modification would have been beyond the
capabilities of a person of ordinary skill in the art. Absent such an assertion,
the Examiner may “take account of the inferences and creative steps that a
person of ordinary skill in the art would employ,” and find a person of
ordinary skill in the art would overcome those difficulties within their level
12
Appeal 2017-003858
Application 12/867,758
of skill. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id.
at 421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”).
We have considered all of Appellant’s arguments and determine that
Appellant fails to persuasively apprise us of error in the Examiner’s factual
findings or reasoning, quoted above, for the combination of Boughton and
Russell, which we determine to be reasonable and supported by rational
underpinnings. See KSR, 550 U.S. at 416 (“[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”). We thus, sustain the rejection of
claim 28 under 35 U.S.C. § 103(a). Claims 31, 38, 44, and 47 fall with
claim 28.
Rejection 4
The Examiner finds that Bolie discloses an “attachment (i.e. a fin or
winglet (32) BOLIE Fig. 1) protruding at a different angle from the edge of
the dome (14).” Final Act. 9. According to the Examiner, it would have
been obvious to a person of ordinary skill in the art to modify the flow
deflection device of Boughton to include an attachment at the lower edge of
the flow deflection device “in order to improve the aerodynamic
characteristics of the mound, by more effectively directing air upwards into
the rotor.” Id. (citing Bolie, 3:1—3). The Examiner notes that although the
modified Boughton device does not adjust the attachment in response to
wind parameters, adjustability would have been obvious because “the
provision of adjustability, where needed, involves routine skill in the art.”
Id. (citing MPEP 2144.04 V.D.).
13
Appeal 2017-003858
Application 12/867,758
Appellant argues that the Examiner “misinterpreted element (32) of
Bolie, which is a horizontal rim, as a winglet,” because rim 32 would
impede air flow from below, whereas ailerons and winglets enhance flow
“and are never in front of wings but always on the side or the rear.” Br. 15.
According to Appellant, “Bolie is incompatible” with the smooth, rimless
mound of Boughton, and that one of ordinary skill “would likely reject Bolie
for creating unwanted currents of air.” Id.
The Examiner responds that Bolie’s “horizontal rim has a different
and distinct shape that differentiates it from the rest of the dome,” as
required by the claim, and is a winglet because it has “a small wing-like
structure that aids in directing flow around the structure to which it is
attached.” Ans. 12. According to the Examiner, Appellant’s assertion that
Bolie’s “rim would hinder flow are speculative,” because “Bolie states that
their taught structure aids in the overall functionality of an associated
turbine.” Id. The Examiner states that because the rim/winglet structure of
Bolie is attached to a dome-like structure, modifying “Boughton would not
be improper due to the fact that Boughton teaches a dome-like structure.”
Id.
Appellant’s arguments that Bolie’s rim impedes flow and is
incompatible with Boughton’s mound are not persuasive because Bolie
discloses that rim portion 32 is used to “improve the aerodynamic
characteristics” of dome roof 14. Bolie, 2:64—3:3. The Examiner’s
reasoning that Bolie’s rim 32 would improve Boughton’s device in a similar
manner is supported by a rational underpinning because Boughton has a
dome embodiment (see Boughton, 8:38—39 “dome 40”). In addition,
Appellant’s argument that attaching the rim to the “front” is never done, is
14
Appeal 2017-003858
Application 12/867,758
not well taken because Appellant’s Specification discloses that the flow
deflection device “structure could have movable flaps (24), slats, spoilers, or
ailerons attached to any side.” Spec. 6:11—12.
For these reasons, we sustain the rejection of claims 36, 39, and 48.
DECISION
The Examiner’s decision rejecting claim 48 as failing to comply with
the enablement requirement is affirmed.
The Examiner’s decision rejecting claims 28, 31, 36, 38, 39, 44, 47,
and 48 as being indefinite is affirmed.
The Examiner’s decision rejecting claims 28, 31, 38, 44, and 47 as
unpatentable over Boughton and Russell is affirmed.
The Examiner’s decision rejecting claims 36, 39, and 48 as
unpatentable over Boughton, Russell, and Bolie 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
15