Ex Parte Tsatsis

Board of Patent Appeals and Interferences

Aug 14, 2007

10396244 (B.P.A.I. Aug. 14, 2007)

The opinion in support of the decision being entered today is not binding precedent
of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte CONSTANTINOS TSATSIS

Appeal 2007-1538
Application 10/396,244
Technology Center 2800
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Decided: August 14, 2007
_______________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and ROBERT E.
NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 of the Final Rejection of
claims 1 through 19. For the reasons stated infra we affirm the Examiner’s
rejection of these claims.

Appeal 2007-1538
Application 10/396,244

INVENTION
The invention is directed to an apparatus which makes use of a turbine,
driven by compressed air in a storage tank. The turbine drives a generator which is
used to charge a battery. The power from the battery is used to operate an electric
vehicle and provide emergency power for household operation. The turbine
includes an electric motor which is energized from the battery and generator.1 See
pages 6 and 8 of Appellant’s Specification. Claim 1 is representative of the
invention and reproduced below:
1. Apparatus comprising

means for storing electrical energy; and

pressure means for operating a turbine to charge the electrical storage
means;

wherein the operation of said turbine is supplemented by motor action
thereon.

REFERENCES
The references relied upon by the Examiner are:

Yeh US 4,163,367 Aug. 7, 1979
Kataoka JP 11-178241 Feb, 7, 1999
Tsatsis US 6,054,8382 Apr. 25, 2000

1 We note that the battery and compressed air operating on the turbine provide
energy to the system. Thus, the system does not appear to be directed to a
perpetual motion machine where the electric motor powers an electric generator
which powers the electric motor.
2 The Answer and Briefs contain a typographical error in identifying this Patent as
US 6,054,938.
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Application 10/396,244

REJECTIONS AT ISSUE
Claims 1, 4 through 7, 9 through 13, 18, and 19 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Yeh. The Examiner’s rejection is set
forth on pages 4 and 5 of the Answer.
Claims 2, 3, and 14 through 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yeh in view of Kataoka. The Examiner’s rejection is set
forth on page 5 of the Answer.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Yeh in view of Tsatsis. The Examiner’s rejection is set forth on pages 5 and 6 of
the Answer.
Throughout the opinion we make reference to the Brief, the Reply Brief
(filed June 14, 2006 and November 30, 2006 respectively), and the Answer (mailed
September 15, 2006) for the respective details thereof.
CONTENTIONS
Appellant contends that the Examiner’s rejection of claims 1, 4 through 7, 9
through 13, 18, and 19 based upon Yeh is in error. Appellant asserts that Yen does
not teach that the operation of the turbine is supplemented by action of the motor
thereon as claimed in claim 1. (Reply Br. 4).
Appellant further contends that the Examiner’s rejection of claims 2, 3, and
14 through 17 based upon Yeh and Kataoka is in error. Appellant asserts that it
would not be obvious to combine the references as asserted by the Examiner. (Br.
10). Further, Appellant asserts “Kataoka is the opposite of the invention. Kataoka
requires a disconnect before the battery is connected to an auxiliary load, the
invention does not.” (Reply Br. 6.)
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Application 10/396,244

With respect to claim 8, Appellant contends that the Examiner’s rejection of
claim 8 based upon Yeh and Tsatsis is in error. Appellant states “[c]laim 8…
distinguishes by virtue of its dependence on amended claim 8 [sic, 7]. Although
the Compressor system including the saturator and combustor is disclosed by
Tsatsis, it is not obvious that the prior art system of Tsatsis would work with a
motorized turbine.” (Br. 10). Appellant further argues, on page 10 of the Reply
Brief, that “[i]n claim 8 there is a structural difference, which is provided by the
motorized turbine which is not present in Yeh or in Tsatsis.”
ISSUES
Appellant’s contentions present three issues for us.
The first issue before us is whether Appellant has shown that the Examiner
erred in finding that Yeh discloses a system where the operation of the turbine is
supplemented by motor action thereon as claimed.
The second issue before us is whether Appellant has shown that the
Examiner erred in finding that the combination of Yeh and Kataoka teaches
providing an alternate source of electric power, including emergency power for
household operation as claimed.
The third issue before us is whether Appellant has shown that the Examiner
erred in finding that the combination of Yeh and Tsatsis teaches using a
compressor system including the saturator and combustor as claimed.

FINDINGS OF FACT
1. Yeh teaches a hybrid flywheel and compressed fluid propulsion
system for a vehicle. Abstract.
2. Yeh teaches that the turbine receives compressed air from one of
two tanks. Col. 3, ll. 30-43, col. 4, ll. 23-26.
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3. The turbine in Yeh is connected to a flywheel/motor/alternator via
a clutch and through the drive chain to the wheels. See Figure 1,
and col. 4, ll. 66-70.
4. From facts 2 and 3 we find that there are three elements which exert
force to operate the turbine, the compressed air, the
flywheel/motor/generator and the rotation of the drive train.
5. Yeh teaches that the alternator is constantly recharging a battery on
the vehicle. Col. 4, ll. 2-5, ll. 14-17.
6. Yeh teaches that the flywheel/motor/alternator is one unit that has
several functions. The functions include motoring the turbine to
compress air or storage in one of the tanks. Col. 4, ll. 16-22, col. 5,
ll. 2-5.
7. Kataoka teaches a system to provide emergency power from a
vehicle for household operation in the event of a power failure. See
paragraphs [0003] and [0008].
8. Tsatsis teaches a system in a vehicle which uses a turbine that
receives compressed air to drive a generator that charges the
vehicle’s battery. See Figures 1 and 2, col.1, ll. 30-35.
9. Tsatsis teaches that to improve the efficiency of the turbine, a
compressor and saturator are used. Col. 4, ll. 25-34.
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PRINCIPLES OF LAW
Office personnel may rely on Appellant’s disclosure to properly determine
the meaning of the terms used in the claims. Markman v. Westview Instruments,
Inc., 52 F.3d 967, 980, 34 USPQ2d 1321, 1330 (Fed. Cir. 1995). “[I]nterpreting
what is meant by a word in a claim ‘is not to be confused with adding an
extraneous limitation appearing in the specification, which is improper.’” In re
Cruciferous Sprout Litigation, 301 F.3d 1343, 1348, 64 USPQ2d 1202, 1205, (Fed.
Cir. 2002) (emphasis in original) (citing Intervet Am., Inc. v. Kee-Vet Labs., Inc.,
887 F.2d 1050, 1053, 12 USPQ2d 1474, 1476 (Fed.Cir.1989)).
On the issue of obviousness the Supreme Court has recently stated that
“[t]he combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co. v.
Teleflex Inc., 127 S. Ct. 1727, 1739, 82 USPQ2d 1385, 1395 (U.S. 2007).
If a person of ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill. . .
. [A] court must ask whether the improvement is more than the predictable
use of prior art elements according to their established functions.

Id. at 1740, 82 USPQ2d at 1396. “One of the ways in which a patent’s subject
matter can be proved obvious is by noting that there existed at the time of the
invention a known problem for which there was an obvious solution encompassed
by the patent’s claims.” Id. at 1742, 82 USPQ2d at 1397.

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ANALYSIS

First Issue.
Appellant states, on page 7 of the Reply Brief, that claim 1 recites “wherein
the operation of said turbine is supplemented by motor action thereon.” Appellant
asserts, on page 8 of the Reply Brief, that when this limitation is interpreted in light
of the Specification, “it is clear that supplementation means combining motor and
pressure action.” It is apparent from, page 9 of the Reply Brief, that Appellant is
referring to the turbine being driven by air pressure as “pressure action.” The
Examiner states that the motor action of the turbine being independent of the claim
is not recited in the claim. (Answer 7). Further, the Examiner states “Yeh clearly
meets the claimed limitation of the motor turbine operation being supplemented by
the motor action thereon and in particular by running the turbine to refill the air
tanks or by assisting the turbine to provide peak power during acceleration.”
(Answer 7.)
We concur with the Examiner. Claim 1 recites an apparatus as “comprising”
elements; as such, the claim is open ended. Claim 1 also recites a pressure means
for operating a turbine to charge the electrical storage means. Claim 1 does not
recite that this is the only operation of the turbine. Claim 1 further recites that
operation of the turbine is supplemented by motor action thereon. Claim 1 does
not recite that a “pressure operation” is supplemented by the motor or that the
turbine is supplemented by the motor to charge the battery.
As discussed in our findings of fact, Yeh teaches a system where there is a
turbine operated by three forces; the motor, compressed air and motion transmitted
through the drive shaft. Fact 4. Thus, the system of Yeh discloses the claimed
feature that operation of the turbine is supplemented by motor action thereon.
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Further, Yeh teaches that the turbine and flywheel/motor/alternator unit can be used to
recharge a battery. Fact 5. As Yeh teaches that the alternator is constantly charging
the battery, that the flywheel/motor/alternator is one unit, and that the motor can be
used to operate the turbine, we find that Yeh teaches that the alternator is charging the
battery when the motor is supplementing the operation of the turbine. Thus, we find
ample evidence to support the Examiner’s finding that Yeh discloses the invention of
claim 1.
37 C.F.R. § 41.37 sets forth the requirements for an Appeal Brief. 37 C.F.R.
§ 41.37 (c)(1)(vii) states:
For each ground of rejection applying to two or more claims, the claims may be
argued separately or as a group. When multiple claims subject to the same
ground of rejection are argued as a group by appellant, the Board may select a
single claim from the group of claims that are argued together to decide the
appeal with respect to the group of claims as to the ground of rejection on the
basis of the selected claim alone. Notwithstanding any other provision of this
paragraph, the failure of appellant to separately argue claims which appellant
has grouped together shall constitute a waiver of any argument that the Board
must consider the patentability of any grouped claim separately.

Appellant has not presented separate arguments directed to claims 4 through 7,
9 through 13, 18, and 19, which are similarly rejected under 35 U.S.C. § 102(b) as
being anticipated by Yeh. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), we
group claims 1, 4 through 7, 9 through 13, 18, and 19, and affirm the Examiner’s
rejection of all of the claims so grouped.

Second Issue.
Appellant argues, on page 10 of the Brief, that the combination of Yeh and
Kataoka is not obvious and that the Examiner’s rejection is made in light of
Appellant’s disclosed invention. Further, on page 6 of the Reply Brief, Appellant
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argues that Kataoka differs from the invention in that Kataoka requires a
disconnect before the battery is connected to the auxiliary load.
Appellant’s arguments have not persuaded us of error in the Examiner’s
rejection, as they are not commensurate with the scope of the claim 2. Claim 2 is
dependent upon claim 1 and recites, “said electrical storage means comprises a
battery for providing an alternative source of electric power, including emergency
power for household operation in the event of an interruption in public utility
power.” The limitation directed to “household operation in the event of an
interruption in public utility power” is broad, as it is drawn to the use of the power
and not the structure of the apparatus. Nonetheless, neither claim 1 nor claim 2
recites limitations directed to switching of power, or the lack thereof. Thus, the
fact that Kataoka requires disconnecting the household electrical loads from the
public utility and connecting the loads to the vehicle battery has no bearing on
whether the reference teaches the claim limitation.
Further, Appellant’s argument that the combination of Yeh and Kataoka is
not obvious is similarly not convincing. Yeh teaches a vehicle which contains a
battery. Fact 5. Kataoka teaches that it was known to use a vehicle battery to
provide emergency power for household operation in the event of a power failure.
Fact 7. We consider the combination of these references to be nothing more than
the combination of known systems, which is obvious as it will provide the
predictable result of providing an emergency power source. Thus, we affirm the
Examiner’s rejection of claim 2.
Appellant has not presented separate arguments directed to claims 3, and 14
through 17, which are similarly rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yeh and Kataoka. Thus, in accordance with 37 C.F.R. § 41.37
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(c)(1)(vii), we group claims 2, 3, and 14 through 17 and affirm the Examiner’s
rejection of all of the claims so grouped.

Third issue.
With regard to claim 8, on page 10 of the Brief, Appellant asserts that it is
not obvious that the saturator and combustor disclosed by Tsatsis would work with
a motorized turbine. Further, on page 10 of the Reply Brief, Appellant contends
that claim 8 distinguishes over the combination of Yeh and Tsatsis as the
references do not teach a motorized turbine.
Appellant’s argument directed to the combination of the teachings of Yeh
and Tsatsis have not persuaded us of error in the Examiner’s rejection. Yeh
teaches a use of a turbine in a vehicle to charge a battery. Facts 1 and 5. Tsatsis
teaches that it was known to use a saturator and combustor in a vehicle with a
turbine. Facts 8 and 9. We consider the combination of these references to be
nothing more than the combination of known systems, which is obvious as it will
provide predictable results of improving turbine efficiency.
Similarly, we are not persuaded by Appellant’s argument that the
combination does not teach a motorized turbine as claimed. As discussed supra
with respect to claim 1, we find that Yeh teaches a motorized turbine. Thus, for
the forgoing reasons, we affirm the Examiner’s rejection of claim 8.

CONCLUSION
Appellant has not shown that the Examiner erred in finding that Yeh
discloses a system where the operation of the turbine is supplemented by motor
action thereon as claimed.
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Application 10/396,244

Appellant has not shown that that the Examiner erred in finding that the
combination of Yeh and Kataoka teach providing an alternate source of electric
power, including emergency power for household operation as claimed.
Appellant has not shown that that the Examiner erred in finding that the
combination of Yeh and Tsatsis teaches using a compressor system including the
saturator and combustor as claimed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

rwk

George E. Kersey
P.O. Box 1073
Framingham MA 01701

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