Ex Parte Morgal

Board of Patent Appeals and Interferences

Dec 22, 2011

10821593 (B.P.A.I. Dec. 22, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/821,593 04/09/2004 Richard Alan Morgal MORGAL-11-CIP 1563
7590 12/23/2011
William C. Boling, Esq.
5656 Hamill Avenue
San Diego, CA 92120
EXAMINER
GARDNER, SHANNON M
ART UNIT PAPER NUMBER
1723
MAIL DATE DELIVERY MODE
12/23/2011 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 RICHARD ALAN MORGAL
____________

Appeal 2009-011643
Application 10/821,593
Technology Center 1700
____________

Before CHARLES F. WARREN, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-14. We have jurisdiction pursuant to
35 U.S.C. § 6.

Appeal 2009-011643
Application 10/821,593

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Appellant’s claimed invention is directed to a method and apparatus
for converting incoming light to electricity.
Claims 1 and 8, the only independent claims on appeal, are illustrative
and reproduced below:
1. A solar converter apparatus for converting incoming
light to electricity, comprising:
a) a support structure for floating on a liquid bath, the
structure having:
i) a substantially fixed relationship to an incoming
light axis that is parallel to useful incoming light,
ii) an elevation rotation axis at a fixed azimuth
alignment angle from the incoming light axis, the support
structure being rotatable about the elevation rotation axis, and
iii) guidance interface features connecting the
support structure to a guidance frame that aligns the elevation
rotation axis at the fixed azimuth alignment angle to an azimuth
of the source of incoming light, and that provide a rotation
reference for the support structure rotation about the elevation
rotation axis to align the incoming light axis with the source of
incoming light;
b) at least one photovoltaic conversion device mounted
within the support structure and adapted for converting
concentrated sunlight into electricity; and
c) a lens coupled to the support structure for guiding light
that is parallel to the incoming light axis and is received over a
receiving region toward a conversion device that is mounted
within the support structure, the conversion device having an
active area that is smaller than an area of the receiving region;
wherein the liquid bath is a coolant that provides primary
cooling of the conversion device through thermal contact with
an exterior of the support structure.
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8. A method of collecting incoming light for conversion
to electricity, comprising:
a) mounting a conversion device at a mounting site
within a support structure having an elevation rotation axis;
b) coupling a lens to the support structure to concentrate
and guide incident light arriving parallel to an incoming light
axis toward the conversion device;
c) floating the support structure on a liquid bath;
d) aligning the support structure so that the elevation
rotation axis is at an azimuth alignment angle with respect to a
source of light energy;
e) rotating the support structure about the elevation
rotation axis to align the incoming light axis toward the source
of light energy; and
(f) cooling the conversion device primarily through
thermal contact between the liquid bath and an exterior of the
support structure.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Genequand et al. US 4,238,246 Dec. 9, 1980
Cluff US 4,771,764 Sept. 20, 1988
Laing et al. US 5,445,177 Aug. 29, 1995
Claims 1-4, 7-10, 13, and 14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Cluff in view of Laing. Claims 5, 6, 11, and 12
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cluff in
view of Laing and Genequand.
We reverse the stated rejections for reasons argued by Appellant. Our
reasoning follows.
Appeal 2009-011643
Application 10/821,593

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It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984). Here, the Examiner’s reliance on a
combination of features from Cluff together with Laing to underpin all of the
stated obviousness rejections is not well founded.
As revealed by reviewing independent claim 1, all of the appealed
apparatus claims require a solar converter apparatus for converting incoming
light to electricity including a support structure for floating on a liquid bath
that includes at least one photovoltaic conversion device mounted within the
support structure. In addition, the support structure has: (1) a substantially
fixed relationship to an incoming light axis that is parallel to useful
incoming light; (2) a rotational capability about an elevation rotation axis
that is at a fixed azimuth alignment angle from the incoming light axis; (3)
guidance interface features connecting the support structure to a guidance
frame that aligns the elevation rotation axis to an azimuth of the source of
incoming light; and (4) a lens coupled to the support structure.
The Examiner applies floating platform 32 of Cluff as providing
structure corresponding to the support structure (Ans. 3-4). However, the
Examiner has not reasonably explained how the floating platform 32 of
Cluff has a fixed relationship to an incoming light axis that is parallel to
useful incoming light, has rotational ability about an elevation rotation axis,
and has at least one photovoltaic conversion device mounted within the
support structure such that Cluff’s floating platform corresponds to
Appellant’s claimed support structure.
In this regard, photovoltaic conversion device (42, 43) of Cluff is
mounted on top of or above the floating platform 32 as depicted in Figure 7
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(see also Figs. 1, 2, 4), not within the floating platform 32, as required by
independent apparatus claim 1, as well as independent method claim 8 (see;
e.g., Reply Br. 6-7).
Also, the Examiner has not articulated how Cluff’s floating platform
32 has a fixed relationship to an incoming light axis that is parallel to useful
incoming light by referring to the azimuth tracking solar panel of Cluff (Ans.
3; Cluff, col. 4, ll. 39-51; Reply Br. 4-5). Nor has the Examiner reasonably
advocated how the floating platform 32 of Cluff is capable of rotating about
an elevation rotational axis, as required by apparatus claim 1 and method
claim 8 by reference to the pivotal movement of the panels 40 (Ans. 3, Cluff,
col. 4, ll. 52-58; Reply Br. 4-5).
Moreover, even if we could agree with the Examiner that it would
have been obvious to modify Cluff based on the additional teachings of
Laing to employ the liquid bath of Cluff as a coolant for the photovoltaic
conversion device of Cluff, the Examiner has not reasonably explained how
the combination of the teachings of Cluff and Laing would have suggested
“cooling the conversion device primarily through thermal contact between
the liquid bath and an exterior of the support structure” as required by
method claim 8 for reasons set forth by Appellants (App. Br. 8-10; Reply Br.
7-9).
On this record, we do not sustain the Examiner’s first stated
obviousness rejection.
Concerning the separate obviousness rejection of dependent claims 5,
6, 11, and 12, the Examiner relies on Genequand for the additional features
set forth in these dependent claims and does not explain how Genequand
would remedy the aforementioned deficiencies in the base rejection. It
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follows that we shall likewise reverse the separate obviousness rejection of
claims 5, 6, 11, and 12.
CONCLUSION/ORDER
The Examiner’s decision to reject claims 1-4, 7-10, 13, and 14 under
35 U.S.C. § 103(a) as being unpatentable over Cluff in view of Laing; and to
reject claims 5, 6, 11, and 12 under 35 U.S.C. § 103(a) as being unpatentable
over Cluff in view of Laing and Genequand is reversed.

REVERSED

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