Ex Parte Wille et al

Patent Trial and Appeal Board

Sep 14, 2016

13109743 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/109,743 05/17/2011
466 7590
YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314
09/16/2016
FIRST NAMED INVENTOR
Hein Wille
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.
2001-2142 2037
EXAMINER
NGUYEN, VIET P
ART UNIT PAPER NUMBER
2831
NOTIFICATION DATE DELIVERY MODE
09/16/2016 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):
DocketingDept@young-thompson.com
yandtpair@firs ttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEIN WILLE and SOPHIE BODREAU
Appeal2013-006685
Application 13/109,743
Technology Center 2800
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
ST A TEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 14--16 under 35 U.S.C. § 103(a) as unpatentable
over Kombluh (US 2007 /0257491 Al, pub. Nov. 8, 2007) in view of
1 Appellants identify the real party in interest as "Single Buoy Moorings, Inc."
(App. Br. 1 ).
Appeal2013-006685
Application 13/109,743
Whittaker (US 2008/0191485 Al, pub. Aug. 14, 2008).2 We have
jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
Claim 14, the sole independent claim on appeal, is illustrative of the
subject matter (emphasis added to highlight key limitations for purposes of
this appeal):
14. Apparatus for converting energy of sea waves into
electrical energy which includes a base (2) anchored to the sea
floor to limit drift, a panel ( 4) that lies at least partially in said
sea and that is pivotally mounted on said base to pivot back and
forth between spaced panel positions when moved by the
waves, and power extraction means for extracting electrical
power from movement of said panel, wherein:
said power extraction means includes a pair of capacitor
devices that each includes a sheet (70) of stretchable material
and a pair of electrodes (72, 7 4) that lie at opposite faces of the
sheet, with the sheet of each capacitor device being stretched
and with a voltage between the corresponding pair of
electrodes, and said power extraction means includes means for
adding said voltages;
said capacitor devices each being coupled to said panel
and to said base so pivoting of the panel changes the amount of
stretching of the sheets of the capacitor devices, with said pair
of capacitor devices (106, 110) coupled to said panel and base
so that when stretching of the sheet of a first of said capacitor
devices is increased, stretching of the sheet of the other of said
capacitor devices is decreased, and vice versa.
2 Appellants state that the Examiner's final rejection of claims 18 and 19 is
"not appealed" (App. Br. 2). Accordingly, these claims are not before us.
2
Appeal2013-006685
Application 13/109,743
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence on this
record supports the Examiner's conclusion that the subject matter of
Appellants' claims is unpatentable over the applied prior art. We sustain the
Examiner's§ 103 rejection because we are unpersuaded of reversible error
in the Examiner's determination of obviousness essentially for the reasons
set out by the Examiner in the Answer.
We add the following primarily for emphasis.
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264--
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellants' main argument is that neither Kombluh nor Whittaker
teach a pair of capacitor devices "where one is always relaxing when the
other is tensioned" (App. Br. 4; see also Reply Br. 2 (stating that "Applicant
believes" claim 14 "describes devices [that are] always 180° out of phase")).
None of the claims, however, specify that one capacitor is always relaxing
while the other is tensioned, nor that they are always 180° degrees out of
phase; this argument, therefore, is unavailing. In re Self, 671 F .2d 1344,
1348 (CCP A 1982) (it is well established that limitations not appearing in
the claims cannot be relied upon for patentability). As the Examiner points
3
Appeal2013-006685
Application 13/109,743
out, Kombluh suggests use of capacitor devices where when one is
tensioned, the other is relaxing (Ans. 2, 3; Kombluh Figs. 15A, 15B, i-fi-f 125,
108, 85).
Appellants also argue that the references do not teach means for
adding voltages of a pair of capacitor devices (App. Br. 4) "to obtain a
constant voltage" (Reply Br. 2). None of the claims recite that the voltages
from the generators are added to obtain a constant voltage. Self, 671 F.2d at
1348. The Examiner points out that the voltages of the capacitor devices in
Kombluh are indeed added via the circuitry to generate electricity (Ans. 3).
One of ordinary skill in the art would have readily appreciated that the
voltages of devices used to harvest electricity from wave energy would have
been added together (Id.).
Appellants have not directed our attention to any persuasive reasoning
or credible evidence to establish that the Examiner's interpretation that the
claim encompasses the Kombluh/Whitaker combination is unreasonable. In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (it is
well established that "the PTO must give claims their broadest reasonable
construction consistent with the specification" and if the Specification does
not provide a definition for claim terms, the PTO applies a broad
interpretation).
Appellants' arguments with respect to dependent claims 15 and 16 are
not persuasive for reasons set out by the Examiner (Ans. 4). Appellants'
statement that claim 16 describes "two cylinders" is in error (Reply Br. 3), as
claim 16 only recites one cylinder (Claims Appendix). To the extent
Appellants meant to refer to claim 15, the Examiner adequately explains
4
Appeal2013-006685
Application 13/109,743
how the combination of Kombluh/Whitaker suggest cylinders on opposite
sides of a panel (e.g., Final Rejection 3).
Thus, on this record, Appellants have not shown error in the
Examiner's determination that one of ordinary skill in the art, using no more
than ordinary creativity, would have used a known panel as exemplified in
Whitaker for Kombluh's flotation structure (id.). KSR, 550 U.S. at 417 (the
predictable use of known prior art elements performing the same functions
they have been known to perform is normally obvious; the combination of
familiar elements is likely to be obvious when it does no more than yield
predictable results); Ball Aerosol & Specialty Container, Inc. v. Limited
Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry
set forth by the Supreme Court, the PTO must take account of the
"inferences and creative steps," as well as routine steps, that an ordinary
artisan would employ).
Consequently, after consideration of Appellants' arguments, we are
unpersuaded of error in the Examiner's determination of obviousness.
Accordingly, we affirm the Examiner's prior art rejection under 35 U.S.C.
§ 103(a) of all the claims on appeal for the reasons given above and
presented by the Examiner.
DECISION
The Examiner's§ 103 rejection is affirmed.
5
Appeal2013-006685
Application 13/109,743
THvIE PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
6