Ex Parte Nelson

Patent Trial and Appeal Board

Apr 25, 2014

11850951 (P.T.A.B. Apr. 25, 2014)

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.
11/850,951 09/06/2007 Robert J. Nelson 2007P17840US 8406
28524 7590 04/25/2014
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
BAUER, SCOTT ALLEN
ART UNIT PAPER NUMBER
2836
MAIL DATE DELIVERY MODE
04/25/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT J. NELSON
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Appeal 2012-001708
Application 11/850,951
Technology Center 2800
____________

Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2012-001708
Application 11/850,951

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Appellant requests reconsideration of our Decision1 affirming the
Examiner’s rejection of claims 1, 5-11, 14, and 16-21. (Request for Rehearing
(“Req. Reh’g”) filed Apr. 9, 2014.)
Appellant argues that, in rendering its Decision, this Board panel
misapprehended or overlooked the arguments that: (1) the Examiner erred in
finding one of ordinary skill in the art would have been motivated to combine the
applied prior art (Req. Reh’g. 3); and (2) the Examiner erred in failing to identify a
teaching or suggestion of a step of configuring the superconducting fault current
limiter to limit current in at least one coil during a non-ground fault current surge
as recited in appealed claim 1. (Id. at 4-6.) We address each of these arguments in
turn.
Appellant contends we overlooked or misapprehended the arguments on
page 15, line 18-page 16, line 7 of the Appeal Brief2 (Req. Reh’g 3) wherein
Appellant argued the Examiner relied on improper hindsight reasoning (App. Br.
16) in finding one of ordinary skill in the art at the time of the invention would
have been motivated “to combine the teachings of Mikheyev with Kliman, by
using the scheme of Mikheyev and Parton to sense a ground fault and protect a
generator as opposed to a transformer” (Ans.3 7). Appellant argued “Kliman does
not discuss or otherwise teach detecting ‘over currents’ to limit current in coils in
the sense of Mikheyev and Parton” and that “one of ordinary skill in the art would
implement an approach in which a sensed current leakage leads to a warning or
trip, such as a predictive approach by using incipient leakage fault detection, as

1 DECISION ON APPEAL (“Dec.”) mailed Feb. 18, 2014.
2 Appeal Brief filed Apr. 13, 2011 (“App. Br.”).
3 Answer mailed Jul. 25, 2011.
Appeal 2012-001708
Application 11/850,951

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taught by Kliman, to protect generators against fault conditions.” (App. Br. 15-
16.)
“[I]t has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.” In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (“The panel then reviews the obviousness rejection for error based
upon the issues identified by appellant, and in light of the arguments and evidence
produced thereon.”)). In rendering our decision, Appellant’s arguments were fully
considered, but found unpersuasive of error in the Examiner’s conclusion of
obviousness “for the reasons expressed by the Examiner in the Answer. (See
generally, Ans. 11-16.)” (Dec. 3). (See, e.g., Ans. 14 (wherein the Examiner
provided a detailed response to the foregoing arguments:
While it is true that Kliman is monitoring for a leakage current and
not an overcurrent, it is believed that one of ordinary skill in the art
would have recognized that a superconducting fault current limiter
taught by Mikheyev and Parton to prevent overcurrents in a
transformer could also prevent overcurrents in a similarly formed
generator and that the windings of a generator and transformer can be
monitored in the same manner to detect various current faults. Upon a
viewing of the Mikheyev, Parton and Kliman references one of
ordinary skill in the art would recognize that the current limiting
schemes of Mikheyev and Parton would just as adequately stop an
overcurrent fault in a generator as it would a transformer as both
devices comprise three phase coils joined together at a neutral point
that is connected to ground.).)
We add that Appellant’s opinion that one of ordinary skill in the art would not have
made the Examiner’s proposed combination (App. Br. 16) was of little probative
value since it was unsupported by evidence. See In re Geisler, 116 F.3d 1465,
1471 (Fed. Cir. 1997) (argument by counsel cannot take the place of evidence).

Appeal 2012-001708
Application 11/850,951

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Appellant contends we overlooked or misapprehended the arguments on
page 15, lines 3-17 of the Appeal Brief wherein Appellant argued the Examiner
failed to explain how the proposed combination of Mikheyev, Parton, and Kliman
would sense a non-ground fault current to protect a generator as required by
appealed claim 1. (Req. Reh’g 4-5.) Appellant is directed to page 15 of the
Answer wherein this argument was fully addressed by the Examiner. Appellant is
also directed to page 3 of the Final Office Action, mailed Oct. 21, 2010, and page 3
of the Answer which read:
Parton teaches that the super conducting limiter is placed proximate to
the coils (column 3 lines 52-62) and that the limiter is placed between
the coils and a common neutral point (27). This would allow
situations wherein said superconducting fault current limiter limits
said current in said at least one coil during a non-ground fault current
surge in said at least one coil.
Appellant additionally argues this Board Panel mischaracterized the
Examiner’s Answer in stating: “As indicated by the Examiner, Appellant’s
arguments, in general, are directed to differences between the claims and the
disclosure of each, individual reference” (Dec. 3). (Req. Reh’g 2 (“[T]he first
occurrence of this characterization of the Appellant’s arguments is presented in the
Decision.”). We are not persuaded that our Decision failed to accurately state the
Examiner’s position as set forth in the Answer. (See, e.g., Ans. 12 (“Appellant
argues that because the issue of protecting a generator from electromechanical
forces caused by a large current fault is not addressed in any of the references that
the references do not teach all limitations of the claim. . . . It is the examiner’s
position that the combination of the three references teach this feature.”); id. at 15
(“Appellant argues that neither Mikheyev nor Parton teach protection against the
electromechanical forces as claimed because they protect a transformer with no
Appeal 2012-001708
Application 11/850,951

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moving parts. This feature of the claims is provided by the combination of the
three references.”).)
In conclusion, based on the foregoing, we have granted Appellant’s Request
to the extent that we have reconsidered our Decision, but we deny Appellant’s
request to make any change therein.
DENIED

cdc