Ex Parte Litwin

Board of Patent Appeals and Interferences

Jun 21, 2012

11446990 (B.P.A.I. Jun. 21, 2012)

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.
11/446,990 06/05/2006 Robert Z. Litwin 67397-092PUS1;1893-AA 2705
54549 7590 06/21/2012
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
BASICHAS, ALFRED
ART UNIT PAPER NUMBER
3743
MAIL DATE DELIVERY MODE
06/21/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT LITWIN
____________________

Appeal 2010-004214
Application 11/446,990
Technology Center 3700
____________________

Before: GAY ANN SPAHN, CHARLES N. GREENHUT, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/446,990

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 41-49. Claims 1-40 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.
Claim 41, reproduced below, is illustrative of the claimed subject
matter.
41. An apparatus which collects solar energy
comprising:
a receiver operable to receive a heat transfer
fluid;
a concave mirror mounted at least partially
around said receiver;
a concave optical lens which extends from the
concave mirror, said concave optical lens mounted at
least partially around said receiver, said concave optical
lens rigidly attached to at least one end section of said
concave mirror to define a rigid structure; and
a motor operable to position said rigid structure
between at least a first position and a second position,
said fist position operable to reflect solar radiation from
said concave mirror toward said receiver to heat said
heat transfer fluid at a first rate, said second position
operable to direct solar radiation through said concave
optical lens toward said receiver to heat said heat
transfer fluid at a second rate.

REJECTIONS1
I. Claims 41-46, 48, and 49 are rejected under 35 U.S.C. § 102(b) as
anticipated by Maruko (US 4,439,020, iss. Mar. 27, 1984).

1 We alter the order of the rejections from that of the Examiner’s Answer to
facilitate our analysis.
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II. Claim 47 is rejected 35 U.S.C. § 103(a) as unpatentable over
Maruko in view of Popovich (US 4,337,759, iss. Jul. 6, 1982).
III. Claims 46, 48, and 49 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.

OPINION
Rejection I
Appellant raises the issue of whether Maruko discloses “a concave
optical lens which extends from the concave mirror,” as required by sole
independent claim 41. App. Br. 3-4; Reply Br. 1.
Figure 2 of Maruko illustrates that lens 2 is attached to brackets 21,
which are, in turn, attached to a mirror (parabolic reflector assembly 3).
Light passing through the lens 2 reflects off the reflector assembly 3 to focus
on lens 4. See Maruko, col. 2, ll. 39-52 (describing the path of sun rays
through the Maruko focusing device); see also fig. 1 (showing the path of
the sun rays).
The Examiner asserts that the lens 2 is “‘extending’ down and away
looking from the center of the curved portion to the outlying ends from the
concave mirror [(reflector assembly)] 3.” Ans. 4. Looking at figure 1 of
Maruko, we do not see how the lens 2 extends down or away from the
reflector assembly 3. The lens 2 is generally parallel to and constrained by
an imaginary line drawn between the two ends of the reflector 3; this parallel
relationship allows the device to focus the sunlight. See Maruko, fig. 1; col.
2, ll. 46-52 (describing reflector assembly 3 focusing light from the lens 2
into a dot on lens 4). It is not clear to us how such a configuration could be
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considered to satisfy the claimed “extends from” language, and the
Examiner’s explanation (see Ans. 4) is not compelling.
Accordingly, we cannot sustain the Examiner’s finding that Maruko
describes “a concave optical lens which extends from the concave mirror” as
required by sole independent claim 41. As such, we do not sustain the
Examiner’s anticipation rejection of claims 41-46, 48, and 49.
Rejection II
The Examiner’s obviousness rejection of claim 47 fails to cure the
underlying deficiency of Maruko discussed supra. Thus, the obviousness
rejection of claim 47 cannot be sustained.
Rejection III
Claims 46, 48, and 49 specify that the lens and rigid structure (the
concave optical lens rigidly attached to at least one end section of the
concave mirror) define a perimeter extending a certain number of degrees.
The Examiner found that the originally filed Specification did not disclose
the particularly claimed degrees, and subsequently rejected claims 46, 48, 49
for failing to comply with the written description requirement. Ans. 3, 5-6.
“[T]he test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Ariad
Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
“[A] description that merely renders the invention obvious does not satisfy
the requirement, Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72
(Fed.Cir.1997).” Ariad at 1352. In addition, “drawings which accompany
an application for a patent are merely illustrative of the principles embodied
in the alleged invention claimed therein and do not define the precise
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proportions of elements relied upon to endow the claims with patentability.”
In re Olson, 212 F.2d 590, 592 (CCPA 1954) (citing In re Kinderman, 178
F.2d 937, 939 (CCPA 1949)). In the instant case, the Examiner correctly
found that the Specification is silent on the issue of the degree of the
perimeter of the lens and/or rigid structure. While the drawings depict a few
embodiments of the claimed invention, nothing indicates that the particular
configuration depicted is to scale or representative of a certain range of
sizes. Further, even giving full consideration to what the drawings conveyed
with reasonable clarity to those of ordinary skill (see Vas-Cath Inc. v.
Mahurkar, 935 F. 2d 1555, 1567 (Fed.Cir. 1991)), the claims set forth a
range of values (“less than” or “greater than”), encompassing subject matter
differing from the drawings to such a great extent that one skilled in the art
could not possibly derive the claimed ranges from Appellant’s disclosure.
Cf. id.; see also Lockwood at 1571-72. Appellant, by arguing only that the
originally filed figures 4 and 5 “specifically illustrate and do properly
disclose” the claimed dimensions ( App. Br. 7-8), has not apprised us of any
error in the Examiner’s finding that claims 46, 48, and 49 lack descriptive
support.
Accordingly, we sustain the Examiner’s written description rejection
of claims 46, 48, and 49.

CONCLUSION
I. We REVERSE the Examiner’s rejection of claims 41-46, 48, and 49
as anticipated by Maruko.
II. We REVERSE the Examiner’s rejection of claim 47 as unpatentable
over Maruko and Popovich.
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III. We AFFIRM the Examiner’s rejection of claims 46, 48, and 49 as
failing to meet the written description requirement.

AFFIRMED-IN-PART

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