Ex Parte Rosen

Patent Trial and Appeal Board

Jan 31, 2017

12612830 (P.T.A.B. Jan. 31, 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.
12/612,830 11/05/2009 Alfred Rosen 046354-000002U S P1 5225
70001 7590 02/02/2C
NIXON PEABODY LLP
70 West Madison Street, Suite 3500
CHICAGO, IL 60602
EXAMINER
DRODGE, JOSEPH W
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
docketingchicago @ nixonpeabody.com
ipairlink @ nixonpeabody. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALFRED ROSEN
Appeal 2014-007619
Application 12/612,830
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
AVELYN M. ROSS, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2014—007619
Application 12/612,830
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 3—12. We have jurisdiction under 35 U.S.C. § 6.
Claims 3 and 9 are illustrative of the subject matter on appeal and are
reproduced below. The limitations at issue are italicized.
3. In an ocean region that is populated with fixed-location
offshore structures, a method for reducing the wind force of a
tropical cyclone having an eye that is approaching the general
location of some of said structures, said method comprising
operating in the vicinity of the eye of said cyclone at least one
first mechanism moving with said eye that is operable to reduce
the heat that is available to said cyclone in said vicinity, and
during the approach of said cyclone toward said some structures
operating on at least one of said some structures that is in the
path of said cyclone at least one additional second mechanism
that is operable simultaneously with said first mechanism to
further reduce the heat that will be available to said cyclone
upon reaching the location of said one structure.
9. A method for reducing the wind force of a developed
tropical cyclone that has an eye and is moving over water in a
predicted path toward landfall, said method comprising
operating on the surface of said water under said eye a
navigable vessel that is armed with a plurality of devices that
provide a coolant when operated and control instruments for
said devices, controlling said vessel to follow said hurricane
under its eye toward landfall, and operating said devices to
provide a continual supply of said coolant substantially without
interruption while said vessel is following said hurricane under
its eye, and as said supply is being provided operating said
devices to project said supply away from said vessel over the
surface of said water surrounding said vessel.
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Application 12/612,830
Appellant requests review of the following rejections (App. Br. 6)
from the Examiner’s final office action:
I. Rejection of claim 9 under 35 U.S.C. § 103(a) over the
combination of Feldman (US 2007/0270057 A1 published Nov.
22, 2007), and O’Keefe (US 2007/0114298 A1 published May 24,
2007).
II. Rejection of claim 10 under 35 U.S.C. § 103(a) over the
combination of Feldman O’Keefe and Ross (US 4,356,094 issued
Oct. 26, 1982).
III. Rejection of claims 3, 4, 7, 8, and 11 under 35 U.S.C. § 103(a)
over the combination of Feldman, Zhekov (US 7,520,237 Bl, Apr.
21, 2009), (3) a publication by Pelc et al., Renewable energy from
the ocean Marine Policy 26 (2002) 471-479,(“Pelc”) and Salcido,
Offshore Federalism and Ocean Industrialization (“Salcido”)
IV. Rejection of claims 5, 6, and 12 under 35 U.S.C. § 103(a) over the
combination of Feldman, Hofer et al. (US 2005/0031417 Al, Feb
10, 2005), Zhekov, Kalpins (4,674,918, Jun. 23, 1987), O'Keefe
and Ross.
Discussion
Appellant initially argues that prosecution was not reopened for
claims 7 and 8. (App. Br. 7). The prosecution of the present application
indicates the April 26, 2013 and November 13, 2013 Office Actions
contained a prior art rejection of claims 7 and 8. Appellant acknowledged
and responded to the rejection of these claims in the response filed July 26,
2013 and the April 11, 2014 Appeal Brief. Questions regarding actions
taken by the Examiner, such as the insertion of a new ground of rejection,
are petitionable under 37 CFR § 1.181 to the Director, and therefore are not
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Appeal 2014—007619
Application 12/612,830
within the jurisdiction of the Board. In re Berger, 279 F.3d 975, 984 (Fed.
Cir. 2002) (“There are a host of various kinds of decisions an examiner
makes in the examination proceeding-mostly matters of a discretionary,
procedural or nonsubstantive nature-which have not been and are not now
appealable to the board or to this court when they are not directly connected
with the merits of issues involving rejections of claims, but traditionally
have been settled by petition to the Commissioner.”): see also Ex Parte
Frye, 94 USPQ 2d 1072, 1078 (BPAI 2010) (precedential). Since Appellant
has failed to file a petition, we will address the rejections as presented in the
Examiner’s Final Office Action.
Rejections I and II1
We have reviewed each of Appellant’s arguments for patentability.
We will reverse the Examiner’s rejections for essentially those reasons
expressed by Appellant. We add the following:
The dispositive issue for the rejected subject matter is:
Did the Examiner err in determining that Feldman describes operating
the devices to provide a continual supply of coolant substantially without
interruption while the vessel is following a hurricane under its eye as
required by the claimed invention? We answer this question in the
affirmative.
The Examiner found Feldman discloses methods for reducing the
intensity of hurricanes and tropical cyclones comprising providing
1 The Examiner relies upon Ross in rejection II to address limitations not
related to the dispositive issue.
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Appeal 2014—007619
Application 12/612,830
devices/vessels in or near the hurricane eye to remove heat from the water
vapor that rises from the ocean. The Examiner found Feldman Paragraph 49
suggests at least frequent, intermittent operation of the moving treatment
stations of Feldman along the path of the moving hurricane. (Final Act 3).
The Examiner found Feldman differs from the claimed invention by failing
to describe continually treating the hurricane by moving vessels comprising
coolant providing devices so as to follow the hurricane under its eye. {Id.).
The Examiner found O’Keefe teaches the application of coolant or other
materials in the vicinity of the eye of a hurricane. {Id.). The Examiner
concluded
ft would have been obvious to have operated the Feldman
method by navigating the devices and vessel to maintain a
position relatively near or proximate the eyewall of the
hurricane and to have continually applied coolant so as to
continually treat the hurricane, as taught by O'Keefe, so as to
optimally weaken the force of the hurricane. {Id.).
Appellant argues the combination of Feldman and O’Keefe does not
describe following a hurricane under its eye while continually treating the
hurricane as required by claims 9 and 10. (App. Br. 8—12). Appellant
further argues the proposed modification of Feldman would not have been
obvious from O’Keefe because it would destroy Feldman’s disclosed
operating conditions. {Id. at 10). Appellant argues Feldman’s operating
state is different from the collapsed state that is required for transporting and
therefore cannot continuously treat the hurricane as required by the claimed
invention. {Id.).
We agree with Appellant that Feldman does not describe operating the
devices to provide a continual supply of coolant substantially without
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Application 12/612,830
interruption while the vessel is following said hurricane under its eye as
required by the claimed invention. The Examiner has relied upon Feldman
for describing the movement of the cooling devices. The Examiner’s
reliance on Feldman 149 for describing the continuous treatment of a
hurricane is misplaced. Feldman 149 describes aspects for increasing the
speed of the cooling stations for relocation purposes. This description does
not disclose the operation of the cooling devices during movement. The
Examiner has only relied upon O’Keefe for describing appropriate coolant.
For the foregoing reasons, we cannot sustain the Examiner’s rejection.
Rejections III and IV
Claim 3
Appellant argues claim 3 requires “operating in the vicinity of the eye
of said cyclone at least one mechanism moving with said eye.” (App. Br.
12). Appellant argues Feldman does not render the subject matter obvious
because there is no coordinated movement of water pumps because they are
anchored. (Id. at 13). Appellant argues Zhekov, Pelc, and Salicido do not
overcome the shortcomings of Feldman because they “are all cited only as
disclosing additional ‘fixed-location structures’ having ‘additional second
mechanisms’ to further reduce the heat available to a cyclone reaching such
fixed locations.” (Id.).
Appellant’s arguments are not persuasive for the reasons provided by
the Examiner. In contrast to claim 9, claim 3 merely recites the step of
“operating in the vicinity of the eye of said cyclone at least one first
mechanism moving with said eye.” Claim 3 does not require that a
continuous supply of coolant be provided while a vessel is following the
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Application 12/612,830
hurricane as recited in claim 9. The Examiner found Feldman describes
mechanisms at fixed location structures such as buildings, roads structures,
and platforms mounted in the sea and free-floating stations that may be
anchored in ocean regions. (Final Act. 5; Feldman [0045] and [0140]). The
Examiner found Feldman teaches the pump mechanisms are transported in
or on navigable vessels such as submarines, responsive to the actual or
predicted movement of the hurricane. (Final Act. 5; Feldman H 53 and
140). Feldman teaches operating relocatable cooling devices in the vicinity
of a tropical disturbance that are operable to reduce the heat that is available
to the tropical disturbance. Feldman teaches that the cooling stations are
reusable against the hurricane in the same position. (Feldman 149).2 A
person of ordinary skill in the art would have recognized that the cooling
devices were suitable for movement to operate for treating a tropical
disturbance in the vicinity of the eye area. A person of ordinary skill in the
art would have reasonably expected from the teachings of Feldman that a
plurality of mechanisms, both fixed and movable, can be used together to
cool the surface of the ocean to aid in the abatement of tropical disturbances.
Claims 4—8 and 11—12
Claims 4—8 and 11—12 like claims 9 and 10 recite operating the
devices to provide a continual supply of coolant substantially without
interruption while the vessel is following said hurricane under its eye.
2 Feldman discloses that stations may move under water at a rate of 5—25 km
an hour. Feldman discloses that this rate is no less than the hurricane
forward motion rate and enables stations to be re-usable against the
hurricane at the new position. Feldman 149.
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Application 12/612,830
We cannot sustain the rejection of these claims for the reasons
provided above when discussing rejections I and II.
ORDER
The prior art rejection of claim 3 is affirmed. The prior art rejections
of claims 4—12 are reversed.
The decision of the Examiner is affirmed-in-part.
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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