Ex Parte Hyde et al

Patent Trial and Appeal Board

Feb 24, 2017

12315616 (P.T.A.B. Feb. 24, 2017)

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.
12/315,616 12/04/2008 Roderick A. Hyde 0705-004-002B-000000
1016
2602
138951 7590 02/28/2017
Advent, LLP/INTELLECTUAL VENTURES
The Advent Building
17838 Burke Street
Suite 200
Omaha, NE 68118
EXAMINER
CUEVAS, PEDRO J
ART UNIT PAPER NUMBER
2831
NOTIFICATION DATE DELIVERY MODE
02/28/2017 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):
u spto @ adventip .com
sloma@adventip.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODERICK A. HYDE, MURIEL Y. ISHIKAWA,
ERIC C. LEUTHARDT, MICHAEL A. SMITH,
LOWELL L. WOOD JR., and VICTORIA Y. H. WOOD
Appeal 2014-006437
Application 12/315,6161
Technology Center 2800
Before JEFFREY T. SMITH, JEFFREY W. ABRAHAM and
MICHAEL G. McMANUS, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the Examiner’s final
decision rejecting claims 1, 3—10, 12—25, and 32. We have jurisdiction
under 35 U.S.C. § 6.
The ’616 Application describes an intraluminal power generation
device. Spec. 4. Independent claim 1 is representative of the subject matter
on appeal and is reproduced below:
1 According to Appellants, the real party in interest is Searete LLC. App.
Br. 4.
Appeal 2014-006437
Application 12/315,616
1. A method comprising:
receiving an intraluminal pressure change with an
intraluminal, deformable pressure change receiving structure
that includes an intraluminal piezoelectric material and that
generates an electric current energy under deformation, said
intraluminal pressure change associated with an intraluminal
fluid, said intraluminal, deformable pressure change receiving
structure in physical contact with said intraluminal fluid;
providing the electric current energy to at least one
energy storage apparatus; and
storing the electric current energy in said at least one
energy storage apparatus, said at least one energy storage
apparatus selected from at least one of:
an ultracapacitor, a mechanical energy storage apparatus,
a pressure energy storage apparatus, a chemical energy storage
apparatus and a fuel cell.
App. Br. 54 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 9, 10, 12, and 32 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Lehr (US 3,906,960,
issued Sept. 23, 1975) and Schroeppel (US 4,690,143, issued Sept.
1, 1987). Final Act. 4—5.
2. Claims 1, 4, 5, 13, 14, 24, 25, and 32 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Bugge
(US 6,827,682 B2, issued Dec. 7, 2004) and Schroeppel. Final
Act. 5—7
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Application 12/315,616
3. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Lehr, Schroeppel, and Tiemann (US 6,291,900
Bl, issued Sept. 18, 2001). Final Act. 7—8.
4. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Bugge, Schroeppel, and Tiemann. Final Act. 8.
5. Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lehr, Schroeppel, and
Estevez (US 6,822,343 B2, issued Nov. 23, 2004). Final Act. 8—9.
6. Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bugge, Schroeppel, and
Estevez. Final Act. 9—10.
7. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Lehr, Schroeppel, Estevez, and Yao
(US 4,294,891, issued Oct. 13, 1981). Final Act. 10.
8. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Bugge, Schroeppel Estevez, and Yao. Final
Act. 10-11.
9. Claims 15—17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lehr, Schroeppel, and Ayazi
(US 2006/0044078 Al, published Mar. 2, 2006). Final Act. 11—12.
10. Claims 15—17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bugge, Schroeppel, and
Ayazi. Final Act. 12.
11. Claims 18—20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lehr, Schroeppel, and
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Application 12/315,616
Tolkoff (US 2004/0039242 Al, published Feb. 26, 2004). Final
Act. 13.
12. Claims 18—20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bugge, Schroeppel, and
Tolkoff. Final Act. 13—14.
13. Claims 18 and 21—23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lehr, Schroeppel, and
Gianchandani (US 2005/0080346 Al, published Apr. 14, 2005).
Final Act. 14—15.
14. Claims 18 and 21—23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bugge, Schroeppel, and
Gianchandani. Final Act. 15—16.
OPINION
Rejections over the combination of Lehr and Schroeppel.
Rejection 1
The Examiner rejected claims 1, 9, 10, 12, and 32 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Lehr and Schroeppel.
Final Act. 4—5. Appellants’ arguments for reversal of this rejection are
principally based on the discussion of independent claim 1. Appellants rely
on the same arguments presented for independent claim 1 when addressing
independent claim 32. Appellants also rely on the same arguments
presented for independent claim 1 when addressing dependent claims 9, 10,
and 12. (App. Br. 13—23). We limit our discussion to independent claim 1.
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Application 12/315,616
We affirm the rejection of claim 1. Appellants argue the Examiner
has not established that Lehr and Schroeppel discloses each and every
element recited in independent claim 1. Appellants argue the Examiner has
failed to provide evidence or explanation to support the conclusion that Lehr
teaches an intraluminal pressure change associated with an intraluminal
fluid, said intraluminal, deformable pressure change receiving structure in
physical contact with said intraluminal fluid. (App. Br. 16—17).
Contrary to Appellants’ arguments, the Examiner has provided the
record with sufficient evidence and explanation to support the obviousness
determination. The Examiner found that Lehr describes a method of
converting energy comprising utilizing a deformable intraluminal pressure
change-receiving structure that generates an electric current energy under
deformation. (Ans. 3^4; Final Act. 4—5; Lehr col. 1,1. 60 to col. 2,1. 15,
Figs. 1—2). Thus, the Examiner has identified the elements considered to be
equivalent to a particular claim feature or recitation. Appellants have not
explained why Lehr’s description of the Figures is insufficient to identify the
elements relied upon by the Examiner. As explained in In re Jung, 637 F.3d
1356,1363 (Fed. Cir. 2011):
[A]ll that is required of the office to meet its prima facie burden
of production is to set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of [35 U.S.C.] § 132.
Appellants also argue the Examiner failed to provide evidence as to
how one of ordinary skill in the art would have modified or combined Lehr
and Schroeppel. App. Br. 16—20.
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Application 12/315,616
Appellants’ argument is premised on bodily incorporation and does
not focus on the Examiner’s reasons for combining the cited art. The
Examiner adequately explains that Lehr teaches the production of electrical
energy by transforming intraluminal fluid pressure change to mechanical
motion, and that using the piezoelectric generator disclosed by Schroeppel
on the energy converter disclosed by Lehr for the purpose of reducing the
size of the generator and the number of moving components needed to
produce electrical energy would have been obvious to one of ordinary skill
in the art at the time the invention was made. Final Act. 5—6; Ans. 4—5
It is well established that the obviousness inquiry does not ask
“whether the references could be physically combined but whether the
claimed inventions are rendered obvious by the teachings of the prior art as a
whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (stating “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference”). Appellants
have not adequately explained why one skilled in the art would not have
been capable of adapting an intraluminal piezoelectric generator for
incorporation into the device of Lehr. See In re Sovish, 769 F.2d 738, 743
(Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the
art); In reBozek, 416 F.2d 1385, 1390 (CCPA 1969).
Rejection 3
The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lehr, Schroeppel, and Tiemann. Final
Act. 7—8.
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Application 12/315,616
Appellants’ arguments for reversal of this rejection are principally
based on the discussion of independent claim 1. Appellants have not
separately addressed claim 3. App. Br. 35—36.
As stated above, we do not find Appellants’ arguments regarding the
patentability of claim 1 persuasive. Consequently, we sustain the rejection
of claim 3 for the reasons presented by the Examiner and stated above.
Rejection 5
The Examiner rejected claims 6 and 7 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lehr, Schroeppel, and Estevez. Final
Act. 8—9.
Appellants’ arguments for reversal of this rejection are principally
based on the discussion of independent claim 1. Appellants have not
separately addressed claims 6 and 7. App. Br. 37—38.
As stated above, we do not find Appellants’ arguments regarding the
patentability of claim 1 persuasive. Consequently, we sustain the rejection
of claims 6 and 7 for the reasons presented by the Examiner and stated
above.
Rejection 7
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lehr, Schroeppel, Estevez, and Yao.
Final Act. 10.
Appellants’ arguments for reversal of this rejection are principally
based on the discussion of independent claim 1. Appellants have not
separately addressed claim 8. App. Br. 39-40.
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Application 12/315,616
As stated above, we do not find Appellants’ arguments regarding the
patentability of claim 1 persuasive. Consequently, we sustain the rejection
of claim 8 for the reasons presented by the Examiner and stated above.
Rejection 9
The Examiner rejected claims 15—17 under 35 U.S.C. § 103(a) as
unpatentable over the combination Lehr, Schroeppel, and Ayazi. Final Act.
11-12.
We reverse the rejection of claims 15—17 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lehr, Schroeppel, and Ayazi. Claims
15—17 require “an acoustical coupling” to provide the electric current energy
to an energy storage apparatus.
The Examiner has failed to direct us to evidence to support the
position that it would have been obvious to modify the teachings of Lehr and
Schroeppel in view of Ayazi’s description of “the construction of a
capacitive vertical silicon bulk acoustic resonator, comprising a
transmitter/receiver system providing acoustical coupling of energy.” (Final
Act. 11). The Examiner has failed to adequately explain how or why the
teachings of Ayazi would have been combined with Lehr and Schroeppel.
Rejection 11
Claims 18—20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Lehr, Schroeppel, and Tolkoff. Final Act. 13.
Appellants argue the Examiner failed to demonstrate how the optical
coupling of Tolkoff could be modified or combined with Lehr and/or
Schroeppel to provide “electric current energy to at least one energy storage
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Application 12/315,616
apparatus via an electromagnetic radiation coupling” as required by claim
18. App. Br. 46
We agree with Appellants that the Examiner’s rejection cannot be
sustained. The Examiner found Tolkoff discloses an apparatus and methods
using visible light (electromagnetic radiation coupling) for debilitating
and/or killing microorganisms within the body (paragraph [0014]). Final
Act. 13; Ans. 14. The Examiner determined that since the combination of
Lehr and Schroeppel teach the production of electrical energy by
transforming intraluminal fluid pressure change to mechanical motion and
transforming said mechanical motion into electricity using a piezoelectric
generator, it would have been obvious to use the visible light disclosed by
Tolkoff to debilitate and/or kill microorganisms within the body. Final Act.
13; Ans. 14.
The Examiner has failed to provide an adequate explanation of the
relevance of Tolkoff s disclosure of an apparatus and methods using visible
light for debilitating and/or killing microorganisms within the body, or why
such a disclosure would have suggested to a person of ordinary skill in the
art to utilize electromagnetic radiation coupling for transmitting electric
current energy to at least one energy storage apparatus as required by the
claimed invention.
Because claims 19 and 20 depend from claim 18, we reverse the
Examiner’s rejection of these claims as well.
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Appeal 2014-006437
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Rejection 13
Claims 18 and 21—23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lehr, Schroeppel, and Gianchandani.
Final Act. 14—15.
Appellants’ arguments for reversal of this rejection are principally
based on the discussion of independent claim 1. Appellants have not
separately addressed claims 18 and 21—23. App. Br. 49-50.
As stated above, we do not find Appellants’ arguments regarding the
patentability of claim 1 persuasive. Consequently, we sustain the rejection
of claim 8 for the reasons presented by the Examiner and stated above.
Rejections over the combination of Bugge and Schroeppel.
Bugge and Schroeppel are used together, optionally with other
references, as the basis of rejections 2, 4, 6, 8, 10, 12, and 14. For the
reasons provided below, we agree with Appellants that the Examiner’s
rejection of independent claims 1 and 32 cannot be sustained. We limit our
discussion to Rejection 2 which contains independent claims 1 and 32.
Rejection 2
The Examiner rejected claims 1, 4, 5, 13, 14, 24, 25, and 32 under
35 U.S.C. § 103(a) as unpatentable over the combination of Bugge and
Schroeppel. Final Act. 5—7. Our discussion applies to independent claims 1
and 32.
We agree with Appellants that the Examiner’s rejection cannot be
sustained. The Examiner has failed to adequately explain which of the
features of Bugge’s Figure 4 correspond to the claim recitation “receiving an
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Application 12/315,616
intraluminal pressure change with an intraluminal, deformable pressure
change receiving structure that includes an intraluminal piezoelectric
material and that generates an electrical current energy under deformation”
as required by independent claims 1 and 32. We further agree with
Appellants that the Examiner has failed to adequately explain which features
of Bugge and Schroeppel would have been combined or modified to render
the claimed subject matter obvious. App. Br. 25—27. The Examiner’s
citation to Bugge reference character 26 and the additional assertions in the
Answer fail to establish how one of ordinary skill in the art would have
sought to combine or modify Bugge and Schroeppel to achieve the
recitations of Appellants’claims. Ans. 5—7. We agree with Appellants that
the Examiner has failed to adequately identify evidence in the record
demonstrating that Bugge reference character 26 (piston 26) is a deformable
pressure change receiving structure or that piston 26 is intraluminal as
required by the claims, Reply Br. 13—15.
Thus, the Examiner has not established that the relied-upon
disclosures of Bugge and Schroeppel are sufficient to support obviousness of
independent claims 1 and 32. 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 reverse
the rejection.
Rejections 2, 4, 6, 8, 10, 12, and 14 are reversed.
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ORDER
The Examiner’s prior art rejections are affirmed-in-part.
TIME PERIOD
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-IN-PART
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