Ex Parte Frolov et alDownload PDFPatent Trial and Appeal BoardDec 26, 201713856879 (P.T.A.B. Dec. 26, 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. 13/856,879 04/04/2013 SERGEY V. FROLOV SP015 8881 54698 7590 12/28/2017 MOSFR TAROADA EXAMINER 1030 BROAD STREET DIXON, KEITH L SUITE 203 SHREWSBURY, NJ 07702 ART UNIT PAPER NUMBER 3644 NOTIFICATION DATE DELIVERY MODE 12/28/2017 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): docketing@mtiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SERGEY V. FROLOV, MICHAEL CYRUS, and ALLAN J. BRUCE Appeal 2016-007917 Application 13/856,8791 Technology Center 3600 Before: CHARLES N. GREENHUT, ERIC C. JESCHKE, and BRENT M. DOUGAL, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. § 134 from a rejection of claims 1—9 and 11—20. We have jurisdiction under 35 U.S.C. § 6(b). 1 Sunlight Photonics Inc. (“Appellant”) is the applicant as provided in 37 C.F.R. § 1.46 and is identified as the real party in interest. App. Br. 3. 2 According to Appellants, the real party in interest is Sunlight Photonics Inc. App. Br. 3. Appeal 2016-007917 Application 13/856,879 We affirm-in-part, designating the affirmed portion of our decision as including new grounds of rejection. CLAIMED SUBJECT MATTER The claims are directed to an airborne kinetic energy conversion system. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A wind-powered aircraft, comprising: an airframe suitable for untethered flight in an open airspace; an airborne kinetic energy conversion system attached to the airframe, the airborne kinetic energy conversion system comprising a turbine, a generator connected to the turbine, and an energy storage means configured to be charged by the generator; and a propulsion system including an electric motor and a propeller powered at least in part by the airborne kinetic energy conversion system, wherein the electric motor and propeller provide thrust to the aircraft during untethered flight. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Latos US 5,899,411 May 4, 1999 Miller US 7,762,495 B2 July 27,2010 Decker US 8,002,216 B2 Aug. 23,2011 REJECTIONS Claims 1—9, 11—13, and 15—20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Latos and Decker. 2 Appeal 2016-007917 Application 13/856,879 Claim 14 is rejected under 35 U.S.C. § 103 as being unpatentable over Latos, Decker, and Miller. OPINION In rejecting claims 1 and 20, the Examiner held, “the recitation ‘configured to be charged by ’ is not accorded any patentable weight” and did not further address this limitation. Final Act. 2—3. Appellant correctly points out that the Examiner’s claim construction in this regard was erroneous. App. Br. 8—12. Although phrases that define structural elements by what they do rather than what they are may often be quite broad, we cannot agree with the Examiner that the phrase “configured to be charged by the generator” has no structural implications in claims 1 and 20. Although an apparatus claim does not, as with a method claim, require the actual performance of the particular function involved (here, charging), the phrase “configured to be charged by” implies the presence of at least some structure that can provide an electrical connection between the energy storage means and the generator so that the generator can supply sufficient power to the energy storage means to charge it. In the Examiner’s Answer, the Examiner points to Latos’s air-driven generator 14 in Figure 1 of Latos and cites column 8, lines 36—39 of Latos’s disclosure as demonstrating that Latos discloses a generator for recharging batteries 28. Ans. 2—3. Appellant correctly points out that the cited portion of Latos discusses generators “attached to and powered by [the] engine[s having reached operating speed]” which refers to generators 70, 72, and 74, but not air-driven generator 14. Reply. Br. 3. Air-driven generator 14 is the generator relied on 3 Appeal 2016-007917 Application 13/856,879 by the Examiner to meet the generator limitation of claims 1 and 20. Final Act. 2. Thus, the Examiner has failed to establish that Latos discloses an energy storage means configured to be charged by a generator of an airborne kinetic energy conversion system, as required by claims 1 and 20. Despite this shortcoming in the Examiner’s rejection, Latos discloses structure sufficient for one skilled in the art to conclude that Latos’s batteries 28 are configured to be charged by the generator. With reference to Figure 1, Latos discloses an “emergency power contactor 82 for connecting power produced by the air driven generator 14 to the AC bus 69.” Col. 7,11. 28—30. Latos’s aircraft “further includes DC bus means 84 including a DC bus 86, a cross-start contactor 88 for connecting the DC bus 86 to the battery 28, and a transformer rectifier unit (TRU) 90.” Col. 7,11. 31—34. “The TRU 90 is configured to supply DC power to the DC bus 86 when AC power is supplied to the input 94 of the TRU 90. A TRU relay 96, disposed in a series circuit relationship between the AC bus 69 and the TRU 90, provides a means for selectively electrically connecting the input 94 of the TRU 90 to the AC bus 69.” Col. 7,11. 37-42. Latos further discloses that “[tjhose skilled in the art will further recognize that the electric power system 16 of our invention provides not only power from the air driven generator 14 for starting of a propulsion or other engine on board the aircraft, but by virtue of the emergency power contactor 82 also allows the air driven generator 14 to be used to provide emergency power to the AC bus for use by flight control systems or other equipment attached to the AC bus.” Col. 12,11. 50—57. Thus, by virtue of contactors 82 and 84, relay 96, TRU 94, and the electrical pathway that can be created by these elements to thereby couple the output of generator 14 to batteries 28, one skilled in the art would reasonably 4 Appeal 2016-007917 Application 13/856,879 conclude that Latos’s batteries 28 are “configured to be charged by” generator 14. Appellant’s remaining argument relates to the alleged incompatibility between Latos and Decker because Latos discloses commercial aircraft while Decker discloses one that may be perpetually airborne. App. Br. 14. First, although the aircraft specifically described by Latos are for commercial or military purposes and typically manned, there is nothing about Latos’s electronics system that makes it incompatible with unmanned or indefinitely airborne aircraft. Latos expressly contemplates application to a variety of aircraft. Col. 4,11. 13—15. The main distinction seems to be the reliance on fuel for Latos’s engines. However, we cannot agree with Appellant that this would in any way negate Latos’s teachings concerning the electrical systems. Second, in staying aloft “indefinitely,” Decker’s goal is extending the ability to stay airborne, not prohibiting the ability to land. Latos’s teachings regarding power generation, storage and redundancy would have been relevant to achieving such a goal. For the foregoing reasons, we sustain the Examiner’s rejection of claims 1 and 20, and of those claims depending therefrom and not separately argued.3 As we have supplemented the Examiner’s findings, we designate our affirmance of these claims as including new grounds of rejection so as to afford Appellant the procedural options associated therewith. Turning to claim 5, the Examiner addresses the autopilot limitation, with (Ans. 6 (adding Rath, U.S. 7,778,744)) and without citing a reference (Final Act. 4), but without addressing the “programmed to” limitation recited in claim 5. Id.', see also Ans. 6. Our reviewing court has held that a 3 With the exception of claim 7 for the reasons discussed below. 5 Appeal 2016-007917 Application 13/856,879 “programmed machine is structurally different from a machine without that program.” In re Noll, 545 F.2d 141, 149 (CCPA 1976); see also In re Bernhart, 417 F.2d 1395, 1399—1400 (CCPA 1969) (“[I]f a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed.”). All words in a claim must be considered in judging the obviousness of the claimed subject matter. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). The Examiner has cited no evidence, nor made any assertion, that the autopilot system of Rath, or autopilot systems generally, are “programmed to” perform the maneuver described in claim 5. See, e.g., Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F. 3d 1376, 1380—82 (Fed. Cir. 2011) (construing limitations involving programming). As this limitation is not addressed by the Examiner, we cannot sustain the rejection of claim 5, or claim 6 depending therefrom, on the grounds set forth by the Examiner. Reply. Br. 6—7. We will assume for purposes of this appeal that Appellant’s failure to include claim 7, which depends from claim 6, in this claim grouping was inadvertent. DECISION The rejection of claims 1—4, 8, 9, 11—13, and 15—20 under 35 U.S.C. § 103(a) as being unpatentable over Latos and Decker is affirmed. The rejection of claims 5—7 under 35 U.S.C. § 103(a) as being unpatentable over Latos and Decker is reversed. 6 Appeal 2016-007917 Application 13/856,879 The rejection of claim 14 under 35 U.S.C. § 103 as being unpatentable over Latos, Decker, and Miller is affirmed. We designate the affirmed rejections as including new grounds under 37 C.F.R. § 41.50(b). This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. 7 Appeal 2016-007917 Application 13/856,879 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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-IN-PART; 37 C.F.R, $ 41.50(b) 8 Copy with citationCopy as parenthetical citation