Ex Parte EhrnbergDownload PDFPatent Trial and Appeal BoardSep 8, 201512448963 (P.T.A.B. Sep. 8, 2015) Copy Citation 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. 12/448,963 07/16/2009 Daniel Ehrnberg 13097 7186 31424 7590 09/09/2015 BABCOCK IP, PLLC P.O.BOX 488 BRIDGMAN, MI 49106 EXAMINER GONZALEZ, JULIO CESAR ART UNIT PAPER NUMBER 2831 MAIL DATE DELIVERY MODE 09/09/2015 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 DANIEL EHRNBERG ____________ Appeal 2013-008541 Application 12/448,963 Technology Center 2800] ____________ Before CHARLES F. WARREN, PETER F. KRATZ, and WESLEY B. DERRICK, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 49–56. We have jurisdiction pursuant to 35 U.S.C. § 6(b). Appellant’s claimed invention is directed to a method of extracting energy from wave motion in a fluid. Claim 49, which is the sole independent claim on appeal, is illustrative and reproduced below: 49. A method of extracting energy from wave motion in a fluid (12), comprising: a. providing a wave power aggregate comprising at least one container (14) situated at least partially in said fluid (12), the container being equipped with an inflow (16) and an Appeal 2013-008541 Application 12/448,963 2 outflow (18), wherein said container (14) has an extension in an extension direction (30) between said inflow (16) and said outflow (18), and wherein said container further comprises a first (20) and a second (22) part which when under the influence of said wave motion, the first part (20) of said container (14) arranges itself in a first position and the second part (22) of said container (14) arranges in a second position, and wherein said first and second positions correspond to different potential energy; b. alternately supplying to the container (14) at least a first and a second fluid (32,34) via the inflow (16), where the density of said first fluid (32) differs from the density of said second fluid (34); and c. at least during an initial stage of said method, controlling a flow speed in said extension direction (30) in at least one of said first and second fluids (32,34). App. Br. 18 (Claims Appendix). The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Weyers US 4,327,296 Apr. 27, 1982 Bellamy US 4,782,663 Nov. 8, 1988 (hereinafter “Bellamy ’663”) Bellamy US 5,377,485 Jan. 3, 1995 (hereinafter “Bellamy ’485”) Kitazawa1 JP03078569 Apr. 3, 1991 The Examiner maintains the following grounds of rejection: Claims 49–53 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bellamy ’485 in view of Bellamy ’663. Claim 54 stands 1 We refer to the English Translation of Kitazawa prepared for the USPTO by Phoenix Translations (PTO 13-3407 April 2013) which is of record. Appeal 2013-008541 Application 12/448,963 3 rejected under 35 U.S.C. § 103(a) as being unpatentable over Bellamy ’485 in view of Bellamy ’663 and Weyers. Claims 55 and 56 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bellamy ’485 in view of Bellamy ’663 and Kitazawa. We reverse the stated rejections. Our reasoning follows. Concerning the first stated rejection, the Examiner has correctly determined that the container 14 of Bellamy ’485 is not made and/or situated such that the method of Bellamy includes use of a container 14 that includes parts that arrange themselves under the influence of wave action as required by Appellant’s method according to sole independent claim 49 (Final Act. 2; see App. Br. 8–10). In an attempt to make up for this deficiency in the teachings of Bellamy ’485 with respect to suggesting a method corresponding to the claimed method, the Examiner turns to Bellamy ’663. As correctly argued by Appellant, however, Bellamy ‘663 discloses a method that primarily relates to low head water applications wherein water flow and air flow are kept apart via a barrier or membrane and the Examiner has not established that Bellamy ’663 teaches or suggests alone or, in combination with Bellamy ’485, a method corresponding to Appellant’s method that utilizes a container that is situated at least partly in a fluid that includes wave action, wherein the container, which is supplied with both a first and second fluid via an inflow, is under the influence of wave action and includes parts that, under such wave influence, arrange themselves such that a first part is in a first position and a second part is in a second position having a different potential energy than the first position (App. Br. 10–12; Reply Br. 2–6; Bellamy ’663, col. 10, ll. 19–39; Fig. 9). The Examiner has not established that Bellamy ’663, alone or in combination with Bellamy Appeal 2013-008541 Application 12/448,963 4 ’485, teaches or suggests how the device of Bellamy ’663 can be used for harvesting energy from wave motion in a fluid wherein at least one container, as claimed, is situated in a manner corresponding to Appellant’s method. Thus, the record indicates that the Examiner used impermissible hindsight in rejecting the Appellant’s claims. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Accordingly, we do not sustain the Examiner’s first stated rejection. The separate obviousness rejections of certain dependent claims tendered by the Examiner employ additional prior art for allegedly teaching the further limitations set forth in the so rejected dependent claims; however, the Examiner has not established that the additional prior art cures the deficiencies of the base rejection over Bellamy ’485 taken with Bellamy ’663. As such, we shall reverse the separate obviousness rejections pertaining to certain dependent claims, as maintained by the Examiner. CONCLUSION The Examiner’s decision to reject the appealed claims is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REVERSED KRH Copy with citationCopy as parenthetical citation