Ex Parte Todd

Patent Trial and Appeal Board

Jul 18, 2016

12587719 (P.T.A.B. Jul. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/587,719 10/13/2009
26936 7590 07/20/2016
SHOEMAKER AND MATT ARE, LTD
c/o DA VIS & BUJOLD, P.L.L.C.
112 PLEASANT STREET
CONCORD, NH 03301
FIRST NAMED INVENTOR
William James Todd
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.
6446 6431
EXAMINER
SHIRSAT, VIVEK K
ART UNIT PAPER NUMBER
3749
NOTIFICATION DATE DELIVERY MODE
07/20/2016 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):
USPTO@SHOMAT.COM
patent@nhpat.com
PTOL-90A (Rev. 04/07)
lJ}HTED STATES PATENT AND TRADE1\1ARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM JAMES TODD
Appeal2014-004341
Application 12/587,719
Technology Center 3700
Before LINDA E. HORNER, CHARLES N. GREENHUT, and
THOMAS F. SMEGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
William James Todd (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner's decision 1 rejecting claims 4-6, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Action, dated July 26, 2012 ("Final Act.").
Appeal2014-004341
Application 12/587, 719
CLAIMED SUBJECT MATTER
Appellant's claimed subject matter relates to collecting solar radiation
using Fresnel shifting. Spec. 2, title. Claims 4 and 6 are the independent
claims on appeal. Claim 4 is reproduced below.
4. A method for shifting solar radiation onto a solar
energy receptor using a transparent substrate having Fresnel
grooves selected from the category consisting of:
at least one group of Fresnel grooves sufficiently identical
within the group such that parallel waves of solar radiation are
altered in direction of travel to the same extent, as a consequence
of passing through that group,
at least one group of Fresnel grooves sufficiently similar
within that group such that parallel waves of solar radiation
passing through said group remain sufficiently parallel to each
other from said group, such that the majority of the solar
radiation waves interact with the solar energy receptor,
at least one group of Fresnel grooves each group focusing
parallel rays of solar radiation passing through that group to form
a focal area outside the domain of the solar radiation shifting
group, and
Fresnel grooves focusing parallel rays of solar radiation
passing through the grooves such that a focal line is formed
outside the domain of the solar radiation focusing grooves.
EVIDENCE
The Examiner relied upon the following evidence in the Final Action:
Severy
Kubo
us 937,013
JP 56-113957 A (Abstract)
Oct. 12, 1909
Sept. 8, 1981
2 Citations to "Spec." refer to the Substitute Specification filed on January 5,
2010.
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Application 12/587, 719
Mori JP 58-173348 A (Abstract)
REJECTIONS
Oct. 12, 1983
The Final Action from which this appeal is taken contains the
following rejections: 3
1. Claims 4-6 under 35 U.S.C. § 102(b) as anticipated by Severy.
2. Claims 4-6 under 35 U.S.C. § 103(a) as unpatentable over Severy
and either Kubo or Mori.
ANALYSIS
Anticipation by Severy
Appellant argues the claims subject to the first ground of rejection as a
group. Br. 4--5. We select claim 4 as the representative claim for the group,
and claims 5 and 6 stand or fall with claim 4. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that Severy discloses the method of claim 4
including shifting solar radiation onto a solar energy receptor using a
transparent substrate having Fresnel grooves as claimed. Final Act. 8-9.
The Examiner relied, in part, on the ordinary meaning of "Fresnel lens" as "a
lens consisting of a number of concentric annual sections, each of different
curvature and so designed that a parallel beam relatively free from spherical
aberration can be produced." Id. at 9 (quoting Oxford English Dictionary,
second ed., 1989 and online version June 2012,
http://www.oed.com/view/Entry/74553, accessed 20 July 2012, first
3 The Final Action also included a rejection of claim 4 under 35 U.S.C.
§ 112, second paragraph. Final Act. 8. The Examiner withdrew this
rejection in the Examiner's Answer. Ans. 3.
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Application 12/587, 719
published in a supplement to the OED I, 1972). The Examiner
acknowledged that Severy "may not characterize the lens structure as a per
se 'Fresnel' lens" but found that nonetheless "based on the Severy
description[,] the lens used therein necessarily has the same optic properties
as [Appellant's] only broadly claimed Fresnel lens." Id.; see also Ans. 14
(noting that Appellant's Specification provides a definition of "Fresnel
groove").
Appellant contests the Examiner's finding that Severy discloses
shifting solar radiation onto a solar energy receptor using a transparent
substrate having Fresnel grooves. Br. 4. First, Appellant contests the
Examiner's reliance on the Oxford English Dictionary, which "is not a
technical dictionary." Id. We do not need to rely on this dictionary
definition of "Fresnel lens" because Appellant's Specification provides a
definition of the claimed "Fresnel grooves." The Specification describes
that "Fresnel groove and Fresnel facet are interchangeable terms used to
describe the alteration in plane of substrate used to change the direction of
solar radiation travel." Spec., para. 25. Further, Figures 2a, 2b, and 2c show
examples of various Fresnel grooves. Spec., para. 39 (describing that "Figs.
2a - 2c are a general presentation from the public domain literature on the
basic characteristics of Fresnel grooves or facets that can be manipulated to
control the extent to which the travel direction of the light waves are
modified upon passing through the structure").
Second, Appellant asserts that "[t]he Fresnel lens is a modem
invention well known to people of ordinary skill in the art." Br. 4 (citing
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Application 12/587, 719
Declaration of Appellant William James Todd, submitted January 12, 2012
("Todd Dec."), as explaining the difference between a Fresnel lens and the
shifting apparatus of Severy). In particular, Appellant argues that the
present invention shifts blocks of the solar light spectrum (i.e., alters the
direction of travel) without significantly separating groups of different
wavelengths (i.e., without diffraction). Id. Appellant contends that "Severy
brings a narrow range of solar radiation known as heat radiation waves or
'heat rays' ... to a target." Id. (citing Severy, p. 2, 1. 89).
Appellant contends that "[ s ]hifting broad spectrums of wavelengths
was not done, envisioned, or possible at the time of Severy's invention
[because] [a] modem Fresnel magnifier is laser carved into clear plastic."
Id. at 5. Appellant argues that "[p]re-Fresnel, an inventor had to choose
which wavelengths to capture, as parallel travel did not occur following
passage of light through a prismatic device like Severy's." Id. (arguing that
"Severy was in error to say 'the emerging rays all issue parallel"').
Appellant contends that "to use Fresnel grooves to concentrate light on a
target without focusing the light is an improvement over Severy's
invention." Id.
As explained in Appellant's Declaration, in "a Severy-type device, the
diffraction component predominates such that in practice the working
distance (from shifter to target) is too short to allow bringing enough light
onto the target for practical applications." Todd Dec. 11 (arguing that as
Severy-type shifters "are moved more than a few inches from the target the
shaded area where the light was prior to shifting stays about the same, but
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Application 12/587, 719
the area of light shifted greatly expands as the shifted light rays are no
longer parallel"). Appellant attests that modem Fresnel lenses "us[ e]
magnification cuts that not only shift light but also maintain coherency
sufficient to form a clear image" and that the limitations of Severy "can be
corrected by using modem Fresnel technology designed to minimize
diffraction while maintaining sufficient parallel travel to enable usefulness."
Id., see also id. at 12 (attesting that "modem Fresnel grooves, etched using
lasers[,] corrects for most of the dispersion"). For the reasons that follow,
we do not find these arguments or the supporting declaration persuasive of
error in the Examiner's rejection because the arguments are not
commensurate with the scope of the claim.
Appellant's Specification defines "Fresnel grooves" as referring to the
alteration in plane of substrate used to change the direction of solar radiation
travel. Neither the Specification nor the claim language calls for the entire
spectrum of light to be changed in direction, a receptor or target to be placed
at a particular distance from the transparent substrate, or that the transparent
substrate is a modem Fresnel magnifier that is laser carved into clear plastic.
Severy discloses using transparent plates configured to refract light
incident upon it so as to concentrate light on a target without focusing the
light. Severy, p. 1, 11. 9-13, p. 2, 11. 85-102, Fig. 5. The question before us
is whether the transparent plates of Severy contain the claimed "Fresnel
grooves." Severy's plates Bare "formed with prismatic ridges of such a
formation as to deflect to the boiler the heat rays which would otherwise
pass to one side thereof." Id. at p. 2, 11. 87-91. Severy discloses that the
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Application 12/587, 719
deflection is accomplished, for example, by refractions, as illustrated in
Figures 5-9. Id. at p. 2, 11. 91-93.
Figure 5 of Severy is reproduced below:
Figure 5 shows a transparent plate B with prismatic ridges b.
Severy describes that "in Fig. 5, each of said ridges, b, is given an
angle of refraction just sufficient to deflect to the boiler the solar rays
passing through them. In this case, the emerging rays all issue parallel and
strike a surface upon the boiler equal in width to the plate, B, itself." Id. at
p. 2, 11. 94-99.
We find that the Examiner's interpretation of the Fresnel grooves to
encompass the plate B of Severy including prismatic ridges is reasonable
and consistent with Appellant's Specification. As noted supra, the
Specification describes that "Fresnel groove and Fresnel facet are
interchangeable terms used to describe the alteration in plane of substrate
used to change the direction of solar radiation travel." Spec., para. 25. The
solar radiation passing through plate B of Severy undergoes a change in the
direction of radiation by virtue of refraction, as evidenced, for example, in
Figure 5 of Severy. Thus, we agree with the Examiner's finding that
Severy's plate B, as shown in Figure 5 for example, discloses a transparent
plate having "at least one group of Fresnel grooves sufficiently identical
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within the group such that parallel waves of solar radiation are altered in
direction of travel to the same extent, as a consequence of passing through
that group," as recited in claim 4.
Further, we agree with the Examiner's assessment of the deficiencies
in the evidence provided in the Todd Declaration. Final Act. 3-5 (finding
that the Declaration is insufficient to overcome the anticipation rejection
because it "fails to set forth evidence supported facts" and because it "sets
forth information which is not commensurate in scope with the claims");
Ans. 14-15. Appellant has not persuaded us of a structural or functional
difference between the transparent plate of Severy and the claimed
transparent substrate having Fresnel grooves. In particular, as noted by the
Examiner in the discussion of the Todd Declaration, Appellant's claim is not
limited to "modem Fresnel grooves" and does not require a particular
working distance between the plate and a target receptor. Further, Appellant
admits that the plate B of Severy results in the emitted radiation waves
maintaining their coherence and operating in the manner claimed at least up
to some distance between the plate and the receptor. As noted by the
Examiner (Final Act. 3), Appellant's Declaration also fails to provide
supporting evidence of the prototypes used to test the principles of shifting
light or the specific "types of cuts" employed in these prototypes, or
objective evidence of the results of such testing. See Br. 10 (Todd Dec. 1,
last paragraph), 11-12 (Todd Dec. 2-3, carryover paragraph).
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For these reasons, Appellant has not demonstrated error in the
rejection of claims 4-6 under 35 U.S.C. § 102(b) as anticipated by Severy.
As such, we sustain the first ground of rejection of claims 4-6.
Second Ground of Rejection
Appellant argues the claims subject to the second ground of rejection
as a group. Br. 5. We select claim 4 as the representative claim for the
group, and claims 5 and 6 stand or fall with claim 4. 37 C.F.R.
§ 41.37(c)(l)(iv).
In this alternative rejection, the Examiner found that even if Severy
were deemed not to disclose a transparent plate having Fresnel grooves, the
claimed subject matter would have been obvious to one having ordinary skill
in the art at the time of Appellant's invention in light of Mori or Kubo. In
particular, the Examiner found that both Mori and Kubo teach Fresnel lenses
used in the manner set forth in claim 4 and that it would have been obvious
to modify the transparent plates B of Severy to be of the Fresnel lens type as
disclosed in either Mori or Kubo "for the purpose of providing a suitable
grooved lens structure for causing parallel waves of solar radiation to be
altered in direction of travel to the same extent, as a consequence of passing
through a group of said grooved areas." Final Act. 16. Alternatively, the
Examiner found that in view of the teachings of Mori and Kubo, the
transparent plates B of Severy "would have been understood by a person
having ordinary skill in the art at the time of the invention as a Fresnel-type
lens." Id. We agree with the Examiner's determination of obviousness.
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Application 12/587, 719
In particular, Severy' s transparent plates B, an example of which is
shown in Figure 5, look very similar to the straight Fresnel-type prism plate
6 shown in Figure 2 of Kubo. A side-by-side comparison is provided below.
Figure 5 of Severy Figure 2 of Kubo
Appellant admits that "[Kubo] shows that straight prism plates were
known at the time of the present invention, a fact which is not disputed."
Br. 6. Kubo describes plate 6 as a "straight Fresnel-type prism plate."
Kubo, Abst. Further, Kubo depicts in Figure 1 that the parallel waves of
incident light are refracted as they pass through plate 6 such that they are
altered in the direction of travel to the same extent as a consequence of
passing through the plate and the parallel waves remain parallel to each
other after passing through the plate.
Appellant argues that the Examiner erred in rejecting the claims over
Severy and Kubo because "[Kubo] does not suggest combining multiple
such devices as the present applicant has done." Br. 6. To the extent claim
4 calls for multiple substrates, we agree with the Examiner's finding that
Severy shows the use of multiple transparent plates B to divert solar
radiation to the receptor. Ans. 25. Appellant's argument does not address
the Examiner's proposed modification of Severy to substitute straight
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Application 12/587, 719
Fresnel-type prism plates, as taught in Kubo, in place of Severy's transparent
plates B, the result of which is a method that uses multiple such plates
having Fresnel grooves.
Appellant further reasons that the age of the references and "the
intense interest there has been in solar energy collection at least since the
publication of [Kubo]" suggests that the invention now claimed would not
have been obvious. We find this argument alone does not demonstrate non-
obviousness of the claimed subject matter for the reasons set forth on pages
25-26 of the Examiner's Answer.
Appellant further argues that the Examiner erred in rejecting the
claims over Severy and Mori because "Fig. 4 [of Mori] appears to show
plural lenses, but they are arranged in parallel and do not shift light to a
common target." Br. 6. This argument is not responsive to the Examiner's
rejection, which pointed to Figure 9 of ivfori for the disclosure of a Fresnel-
type prism plate (10) to shift solar radiation, and proposed to modify Severy
to replace the multiple transparent plates B with the plate 10 of Mori. Final
Act. 15-16. As noted by the Examiner, Severy shows the use of plural
transparent plates B (Figs. 3, 10) and discloses that the plates B could be of
the type, such as disclosed in Mori, that focuses the solar rays (Figs. 8, 9).
Final Act. 9. We further agree with the Examiner's finding that both Kubo
and Mori demonstrate that the lens structures taught by Severy would be
understood by one of ordinary skill in the art as being "transparent plates
having Fresnel grooves" as claimed. Final Act. 16; Ans. 26.
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For these reasons, Appellant has not demonstrated error in the
rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable over Severy
and either Mori or Kubo. As such, we sustain the second ground of rejection
of claim 4, and claims 5 and 6 which fall with claim 4.
DECISION
The decision of the Examiner to reject claims 4-6 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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