Ex Parte THINGULDSTAD et al

Patent Trial and Appeal Board

Jan 7, 2019

13289301 (P.T.A.B. Jan. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/289,301 11/04/2011
15624 7590 01/09/2019
Ryan Alley IP
(GE Docket)
P.O. Box 87
Alexandria, VA 22313
FIRST NAMED INVENTOR
Arthur M THINGULDSTAD
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5.0005.1 (24SE252416) 9060
EXAMINER
DA VIS, SHARON M
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
01/09/2019 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):
office@alleylegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARTHUR M. THINGULDSTAD and MARK A. BERGMAN
Appeal2018-004344
Application 13/289,301
Technology Center 3600
Before EDWARD A. BROWN, JEREMY M. PLENZLER, and
LEE L. STEPINA, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Decision rejecting claims 2-5, 8-14, and 21-28 under 35 U.S.C.
§ 103(a) as unpatentable over Applicants' disclosure (Spec. ,r,r 1-3, Figure
1) 1 and Nazareno (US 5,120,494, issued June 9, 1992).2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Whether the disclosure in the Specification is Admitted Prior Art is a
disputed issue.
2 The rejection of claim 29 under 35 U.S.C. § 112, first paragraph, was
withdrawn in the Examiner's Answer. Ans. 3.
Appeal2018-004344
Application 13/289,301
CLAIMED SUBJECT MATTER
Claim 10 is independent, with claims 2-5, 8-14, and 21-28 depending
therefrom. Claim 10 is reproduced below:
10. A nuclear plant emergency power system comprising:
a turbine configured to power a coolant pump for a nuclear
reactor;
a speed controller configured to monitor a speed of the
turbine and control a speed of the turbine;
a control room flow controller configured to receive
turbine information from the speed controller and transmit
turbine speed commands to the speed controller;
an emergency power distribution system electrically
connected to the speed controller and the control room flow
controller; and
a generator electrically connected to the speed controller
and the control room flow controller, wherein the generator is a
maximum 200 Watt electric generator, wherein the generator is
configured to generate electrical power from the turbine and
provide the electrical power to the speed controller and the
control room flow controller.
OPINION
The Examiner's rejection requires that Appellants' disclosure at
paragraphs 1-3 of the Specification, and illustrated in Figure 1, is admitted
prior art. See Final Act. 5; Ans. 3-5. A statement by an applicant in the
specification or made during prosecution identifying the work of another as
"prior art" is an admission which can be relied upon for both anticipation
and obviousness determinations, regardless of whether the admitted prior art
would otherwise qualify as prior art under the statutory categories of 35
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Appeal2018-004344
Application 13/289,301
U.S.C. § 102. Riverwood Int'! Corp. v. R.A. Jones & Co., 324 F.3d 1346,
1354 (Fed. Cir. 2003).
There is no dispute that neither Appellants' Specification, nor Figure
1, labels the relevant disclosure as "prior art." Rather, that disclosure is
labeled as "conventional." See Spec. ,r 1, Fig. 1. Appellants contend that
their disclosure cited by the Examiner is not admitted prior art. Appeal Br.
8-9; Reply Br. 1-5.
The Examiner has provided no reason to determine that the disclosure
in Appellants' Specification is the work of another. Appellants, on the other
hand, affirmatively state that it is not. See Reply Br. 2 ("FIG. 1 is
applicant's own work."). We acknowledge that the Specification describes
"FIG. 1 [a]s a schematic diagram of a conventional turbine control system in
commercial nuclear power stations." Spec. ,r 1. Nevertheless, Section
102( a), for example, precludes patentability where "the invention was
known or used by others in this country ... before the invention thereof by
the applicant for patent." As noted above, even if used at commercial
nuclear power stations, based on the record before us, we have no reason to
believe that the "conventional turbine control system" was "known or used
by others ... before the invention thereof by the applicant." Further, even if
"the invention was known or used by others ... before the invention thereof
by the applicant," the Examiner fails to provide sufficient reason for us to
believe those commercial nuclear power stations including the
"conventional" turbine control system were known or used in this country.
Our Decision is based on an understanding that the representations
made in the briefs (see, e.g., Reply Br. 2) are an express statement, based the
personal knowledge of the practitioner, that the subject matter described in
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Appeal2018-004344
Application 13/289,301
the Specification at paragraphs 1-3 and shown in Figure 1 is the work of the
inventors. 3 Our Decision is also based on an understanding that any failure
to disclose that the commercial systems including that subject matter noted
in paragraph 1 of the Specification were known or used by others in this
country before the invention of the claimed subject matter indicates that,
based on the knowledge of the individuals associated with the filing and
prosecution of this patent application, they were not.
We note the duty of disclosure required by 37 C.F.R. § 1.56, which
requires that "[ e Jach individual associated with the filing and prosecution of
a patent application has ... a duty to disclose to the Office all information
known to that individual to be material to patentability as defined in this
section." We additionally note that by presenting the Appeal Brief and the
Reply Brief to the Office, the practitioner is certifying that "all statements
made therein on information and belief are believed to be true" (37 C.F.R.
§ 11.18(b )( 1)) and that "[a] practitioner shall not knowingly ... fail to
correct a false statement of material fact ... previously made to the tribunal
by the practitioner" (37 C.F.R. § 11.303(a)(l)). That Section further
requires that "[i]n an ex parte proceeding, a practitioner shall inform the
tribunal of all material facts known to the practitioner that will enable the
tribunal to make an informed decision, whether or not the facts are adverse."
37 C.F.R. § 11.303(d). That is, if Appellants (including the practitioner) are
aware that paragraphs 1-3 of the Specification and Figure 1 of the
3 That is, the statement on page 2 of the Reply Brief that "FIG. 1 is
applicant's own work" does not simply indicate that Appellants created the
figure, but also indicates that the figure is not based on something other than
their own work.
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Appeal2018-004344
Application 13/289,301
Application qualify as prior art, there is a continuing duty to disclose such
information.
For the reasons set forth above, the preponderance of the evidence
does not support the Examiner's position that Appellants' Specification
paragraphs 1-3 and Figure 1 are prior art. Accordingly, we do not sustain
the Examiner's decision to reject claims 2-5, 8-14 and 21-28.
DECISION
We REVERSE the Examiner's decision to reject claims 2-5, 8-14
and 21-28.
REVERSED
5