Ex Parte Theuss

Patent Trials and Appeals Board

Jul 31, 2013

12038275 - (D) (P.T.A.B. Jul. 31, 2013)

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.
12/038,275 02/27/2008 Horst Theuss I560.178.101/2007P52922US 5331
25281 7590 07/31/2013
DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS, MN 55402
EXAMINER
LE, DANG D
ART UNIT PAPER NUMBER
2834
MAIL DATE DELIVERY MODE
07/31/2013 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 HORST THEUSS
____________

Appeal 2010-009933
Application 12/038,275
Technology Center 2800
____________

Before THU A. DANG, JAMES R. HUGHES, and
JEFFREY S. SMITH, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/038,275

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-23 (App. Br. 3). However, Appellant states that “[c]laims 5, 6, 9
and 15 are the subject of the present Appeal” (id.). In particular, Appellant
does not appeal claims 1-4, 7, 8, 10-14, and 16-23 but notes that they are
pending and rejected (id.). The Board has no jurisdiction as to non-appealed
claims, and we consider claims 1-4, 7, 8, 10-14, and 16-23 not before us for
review. The Examiner has the authority to cancel the non-appealed claims.
See Ex parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008) (precedential).
We have jurisdiction as to claims 5, 6, 9, and 15 under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellant’s invention is directed an electronic device for harvesting
energy, which includes a container, a fluid partially filling the container, a
conductive member coiled around the container, and a magnet suspended in
the fluid, such that oscillation of the magnet through the coil induces an
electrical signal (Spec. 1, ¶[0005]).

B. ILLUSTRATIVE CLAIMS
Claims 1 and 5 are exemplary:
1. An electronic device, comprising:

a container;

a conductive member coiled around the container;

a fluid partially filling the container; and

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a magnet at least partially submerged in the fluid so that
the magnet is suspended in the fluid, such that oscillation of the
magnet through the coil to induces an electrical signal.

5. The electronic device of claim 1, further comprising a
plurality of magnets suspended in the fluid with the same polar
orientation.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Idogaki US 4,922,753 May 8, 1990
Fukui US 5,253,525 Oct. 19, 1993
Konotchick US 5,347,186 Sep. 13, 1994
Raj US 5,452,520 Sep. 26, 1995
Cheung US 6,812,583 B2 Nov. 2, 2004
Claims 1, 13, 19, 22, and 23 stand rejected under 35 U.S.C. 102(b) as
being anticipated by Idogaki.1
Claims 1, 13, and 19 stand rejected under 35 U .S.C. 102(b) as being
anticipated by Raj.2
Claims 1-3, 7, 8, 11, 13, 14, 19, and 21 are rejected under 35 U.S.C.
102(b) as being anticipated by Cheung.3
Claims 4-6, 12, 15, 16, 18, and 20 stand rejected under 35 U.S.C.
103(a) as being unpatentable over Cheung and Konotchick.4

1 The Board has no jurisdiction as to these non-appealed claims.
2 The Board has no jurisdiction as to these non-appealed claims.
3 The Board has no jurisdiction as to these non-appealed claims.
4 Because the Board has no jurisdiction as to non-appealed claims, we will
only consider the rejection of claims 5, 6, and 15 as being before us for
review.
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Claims 9, 10, and 17 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Cheung and Fukui.5

II. ISSUE
The dispositive issue before us is whether the Examiner has erred in
concluding that the combination of Cheung and Konotchick would have
taught or suggested “a plurality of magnets suspended in the fluid,” as
recited in claims 5 and 15?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Cheung
1. Cheung discloses that ultra low friction achievable with specific
ferrofluids, wherein a ferrofluid bearing 70 provides an ultra low friction
interface between the magnet 64 and substrate 66 (col. 7, ll. 31-36; FIG. 11).
Konotchick
2. Konotchick discloses that although only one magnet and one coil are
shown in the exemplary embodiment, multiple numbers of each could be
used (col. 3, ll. 64-66).

5 We will only consider the rejection of claim 9 as being before us for
review.
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Fuji
3. Fuji discloses magnetic fluid 2 magnetically attached around the
permanent magnet 3 serving not only as a lubricant which allows the
permanent magnet 3 to rotate about its axis but also as a spring and a damper
in the direction of the thickness of the magnet 3, wherein a floating
supporting of the magnet disk 3 in the center of the cylindrical space 100 is
obtained (col. 3, ll. 5-10).

IV. ANALYSIS
Claims 5, 6, and 15
As to claims 5 and 15, Appellant contends that “Konotchick does not
appear to disclose magnets being suspended in fluid” and that Cheung
merely discloses “a single magnet” (App. Br. 7). Appellant then argues that
“either modifying the movable magnet of Cheung to a plurality of fixed
magnets as taught by Konotchick, or modifying the fixed magnets of
Konotchick such that they are movable within a supporting container as
taught by Cheung changes the principle of operation of the respective
devices” (id. at 8).
However, the Examiner finds that Cheung discloses “the surfaces of
the magnet (64, 74) being covered by the fluid 70 and 78”, and that
“Konotchick discloses the use of multiple numbers of magnets and/or coils”
(App. Br. 9). The Examiner concludes that it would have been obvious to
suspend a plurality of magnets in fluid in light of Cheung’s teaching of
suspending one magnet in fluid and Konotchcik’s teaching of including a
plurality of magnets in an apparatus (Ans. 9).
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We agree with the Examiner’s findings of fact and ultimate
conclusions. As the Examiner points out, “the rejections are based on
combinations of references” (id.), and thus, one cannot show
nonobviousness by attaching the references individually. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Cheung discloses providing a ferrofluid bearing interface between a
magnet and a substrate (FF 1). That is, Cheung discloses that the magnet is
partially covered with fluid. Accordingly, we find that Cheung at the least
suggests a magnet suspended “in fluid” as required by claim 1.
Further, Konotchick discloses that multiple magnets may be used in
place of a single magnet (FF 2). Thus, we find no error in the Examiner’s
conclusion that it would have been obvious to suspend a plurality of magnets
in fluid in light of Cheung’s teaching of suspending one magnet in fluid and
Konotchick’s teaching of including a plurality of magnets in an apparatus
(Ans. 9).
Although Appellant argues that “modifying the fixed magnets of
Konotchick such that they are movable within a supporting container as
taught by Cheung changes the principle of operation of the respective
devices” (App. Br. 8), Appellant appears to have viewed the references from
a different perspective than the Examiner. The issue here is not whether it
would have been obvious to modify the operation of Cheung’s magnet with
those of Konotchick, but rather whether a person of ordinary skill, upon
reading Konotchick, would be discouraged from applying a plurality of
magnets to the teaching of Cheung.
The Supreme Court has determined that the conclusion of obviousness
can be based on the interrelated teachings of multiple patents, the effects of
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demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The skilled
artisan would “be able to fit the teachings of multiple patents together like
pieces of a puzzle” since the skilled artisan is “a person of ordinary
creativity, not an automaton.” Id. at 420-21. We conclude that combining
familiar elements taught by Cheung and Konotchick would have yielded
predictable results. Id. at 416 (2007).
Accordingly, we find no error in the Examiner’s rejection of claims 5
and 15 over Cheung and Konotchick. Appellant does not set forth any
separate patentability arguments for claim 6 (App. Br. 15) and thus claim 6
falls with claim 5 from which it depends.
Claim 9
Appellant also argues that the Examiner erred in rejecting claim 9 as
obvious because “[t]here does not appear to be a disclosure [in Fukui]
concerning the density of the magnet or fluid” (App. Br. 9). The Examiner
concluded, however, that “the magnet of Fukui et al. must have a lower
density than that of the fluid if the magnet in Fukui et al., is floating” (Ans.
9). We agree with the Examiner’s conclusion and underlying findings of
fact.
Fukui discloses a magnet floating in a liquid (FF 3). Because the
magnet is floating in the liquid, it has a lower density than the liquid.
Accordingly, we also find no error in the Examiner’s rejection of
claim 9 over Cheung in view of Fukui.

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V. CONCLUSION AND DECISION
We affirm the Examiner’s decision rejecting claims 5, 6, 9, and 15 as
being unpatentable under 35 U.S.C. § 103(a).
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)(iv).

AFFIRMED

Vsh