Ex Parte Frazier et al

Patent Trial and Appeal Board

Dec 27, 2018

14596448 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/596,448 01/14/2015 Scott Raymond Frazier
26629 7590 12/31/2018
ZIOLKOWSKI PATENT SOLUTIONS GROUP, SC (ZPS)
136 S WISCONSIN ST
PORT WASHINGTON, WI 53074
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.
0810.012 9625
EXAMINER
LAMBE, PATRICK F
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
12/31/2018 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):
info@zpspatents.com
sml@zpspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT RAYMOND, BRIAN VON HERZEN, and ALEX LAU
Appeal2018-004975
Application 14/596,448
Technology Center 3600
Before EDWARD A. BROWN, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-32 and 36-40. We have jurisdiction under
35 U.S.C. § 6(b ).
We reverse.
1 The real party in interest is identified as Bright Energy Storage
Technologies. Appeal Br. 2.
Appeal2018-004975
Application 14/596,448
STATEMENT OF THE CASE
The Specification
According to the specification, the invention "relates generally to
compressed fluid energy storage and, more particularly, to a method and
apparatus of storing compressed fluid in an underwater storage device."
Spec. i-f2. Once stored, the compressed fluid thereafter may be expanded to
drive a generator to produce electricity. Id. ,I30.
The Rejected Claims
Claims 1-32 and 36-40 stand rejected. Final Act. 1. Claims 33-35
and 41--43 are withdrawn from consideration. Claims 1 and 36 are
representative and reproduced below with emphasis added to limitations
critical to this Decision.
1. A compressed fluid energy storage system
compnsmg:
a. a submersible fluid containment subsystem
disposed longitudinally along a vertical axis when submerged
and ballasted on a bed of a body of water and charged with a
compressed working fluid, the fluid containment system
comprising a substantially flat portion closing a domed portion,
with the flat portion presenting a bottom surface of the fluid
containment system that makes contact with the bed of the body
of water;
b. a compressor disposed in fluid communication
with the fluid containment subsystem and configured to supply
compressed working fluid to the fluid containment subsystem;
and
c. an expander disposed in fluid communication with
the fluid containment subsystem and configured to:
i. receive compressed working fluid from the
fluid containment subsystem; and
11. expand the compressed working fluid;
2
Appeal2018-004975
Application 14/596,448
wherein the fluid containment subsystem is at least in
part flexible.
36. A compressed fluid energy storage system
compnsmg:
a. a flexible fluid containment subsystem
submersible in a body of water;
b. a separate ballast system disposed above the
submersible fluid containment subsystem within the body of
water;
c. a compressor disposed in fluid communication
with the fluid containment subsystem and configured to supply
compressed working fluid to the fluid containment subsystem;
d. an expander disposed in fluid communication with
the fluid containment subsystem and configured to:
i. receive compressed working fluid from the
fluid containment subsystem; and
11. expand the compressed working fluid; and
e. a fluid conduit disposed to place the fluid
containment subsystem in fluid communication with the
compressor and the expander.
Appeal Br. 18, 22-23 ( emphasis added).
The Appealed Rejections
The following rejections are before us for review:
1. claims 1-7, 10-12, 14--28, and 30 under 35 U.S.C. § I02(a)(l)
as anticipated by Frazier2 (Final Act. 2);
2 US 2011/0070031 Al, published Mar. 24, 2011 ("Frazier").
3
Appeal2018-004975
Application 14/596,448
2. claims 8, 9, 29, 31, 32, and 36-40 under 35 U.S.C. § 103 as
unpatentable over Frazier (id. at 4); and
3. claim 13 under 35 U.S.C. § 103 as unpatentable over Frazier
and Webster3 (id. at 6).
DISCUSSION
Rejection 1
The Examiner rejected claims 1-7, 10-12, 14--28, and 30 under
35 U.S.C. § 102(a)(l) as anticipated by Frazier. Final Act. 2. Frazier
discloses a submersible compressed fluid energy storage system. See, e.g.,
Frazier i-f2.
Claim 1 recites "the fluid containment system comprising a
substantially flat portion closing a domed portion, with the flat portion
presenting a bottom surface of the fluid containment system that makes
contact with the bed of the body of water." Appeal Br. 18 ( emphasis added).
Claims 2-7, 10-12, 14--28, and 30 ultimately depend from claim 1. Id. at
18-22.
To meet this claim language, the Examiner asserted:
The [Frazier] fluid containment system comprises a substantially
flat portion closing a domed portion (194) with a flat portion
presenting a bottom surface of the fluid containment surface that
makes contact with the bed of the body of water (see Figures 6,
7 showing flat portion of sediment 146 making flat bottom
portion of bag 144; see also Figure 10 below).
Final Act. 2. We are not persuaded.
3 US 2004/0191000 Al, published Sept. 30, 2004 ("Webster").
4
Appeal2018-004975
Application 14/596,448
The asserted "dome portion (194)" is an explicit feature of the
embodiments shown in Figures 15-18. See, e.g., Frazier, Fig. 15, ref. 194.
The Examiner has not shown that the feature relied upon from the
embodiments of Figures 6 and 7 (i.e., "flat bottom portion of bag") is present
in the embodiments of Figure 15-18. Likewise, the Examiner has not shown
that the feature relied upon from the embodiments of Figures 15-18 (i.e.,
"dome portion (194)") is present in the embodiments of Figures 6 and 7.
The Examiner's attempt to rely on the embodiments of Figures 6 and 7 to
meet the "substantially flat portion" limitation and on different embodiments
(Figures 15-18) for the "domed portion" limitation is legally flawed. See
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
(To anticipate "it is not enough that the prior art reference discloses part of
the claimed invention, which an ordinary artisan might supplement to make
the whole, or that it includes multiple, distinct teachings that the artisan
might somehow combine to achieve the claimed invention.").
However, the Examiner also relied on Figure 10. See Final Act. 2
( stating "see also Figure 10 below"), 7 ("Figure 10 shows a system with tube
144 having a flat bottom on the sea surface."). Figure 10 is reproduced
below, as annotated by the Examiner.
Portion
5
Appeal2018-004975
Application 14/596,448
Figure 10 as annotated by the Examiner, reproduced above, shows "a
technique for deploying a fluid storage tube 144 ... according to an
embodiment of the invention." Frazier i-f70. However, Frazier does not
describe the bottom portion of tube 144 as flat or substantially flat. The
Examiner's annotation of Figure 10 is not supported by the disclosure. The
fact that a straight line is used to show the outer boundary of the bottom
portion of tube 144 does not mean that the bottom portion is flat in a two-
dimensional plane. Indeed, as Appellant points out, tube 144 is described as
being shaped like a "cylindrical tube." Appeal Br. 7 ( quoting Frazier i-f 68).
In the Answer, the Examiner additionally relies on Figure 11 of
Frazier. Ans. 4. Figure 11 is reproduced below.
FIG. 11
140,
150
142
Figure 11, reproduced above, shows "tube assembly 140 on the sea floor
142" comprising "a plurality of open-ballast ballast bags 150 ... deployed
side-by-side on top of the sea floor 142." Frazier i-f72. The Examiner asserts
that Figure 11 shows the bottom portions of these bags being substantially
flat. Ans. 4. We are not persuaded, as the bottom of each appears rounded.
6
Appeal2018-004975
Application 14/596,448
See Frazier Fig. 11. Also, Frazier does not describe the bottom portions as
flat or substantially flat.
The Examiner has not shown that the asserted Frazier submersible
compressed fluid energy storage system has a "substantially flat portion" let
alone that is "closing a domed portion," as recited in claim 1.
With respect to the latter claim language, Appellant argues that the
upper, rounded surface of the Frazier tube 144 is not a dome. Appellant
quotes a dictionary definition as "shaped like a hemisphere or inverted
bowl." Appeal Br. 6 (quoting http://www.dictionary.com/browse/dome).
The Examiner proposes an alternative dictionary definition: "a rounded
vault forming the roof of a structure." Ans. 4 ( quoting https://en.oxford
dictionaries.com/ definition/ dome).
However, the intrinsic evidence is more pertinent and it supports
Appellant's position, not the Examiner's. With respect to Figures 1 and 2,
the specification states that the system includes "a substantially flat portion
151 closing a substantially paraboloid, ellipsoidal, or conically shaped
portion, which we refer to in this specification as the 'domed portion' 159."
Spec. i-f32. All of these shapes have rotational symmetry about a central
axis, unlike a mere arch or an extended arch like that forming a vaulted
ceiling.
The term "substantially paraboloid, ellipsoidal, or conically
shaped" is used in the present specification to describe the hollow
three-dimensional shape of the domed portion that has
substantial rotational symmetry about a longitudinal axis and is
either substantially conic in shape, or approximates in cross-
section along that longitudinal axis a parabola, or approximates
a portion of a hemisphere of an ellipsoid having the longitudinal
. . . .
axis as semi-maJor axis.
7
Appeal2018-004975
Application 14/596,448
Id. ,T33.
As properly construed, Frazier's tube 144 does not have a dome
portion, let alone a "substantially flat portion closing a domed portion," as
recited by claim 1.
For the foregoing reasons, we reverse the rejection of claims 1-7,
10-12, 14--28, and 30 under 35 U.S.C. § 102(a)(l) as anticipated by Frazier.
Rejection 2
The Examiner rejects claims 8, 9, 29, 31, 32, and 36-40 under
35 U.S.C. § 103 as unpatentable over Frazier. Final Act. 4.
A subset of these claims, namely, claims 8, 9, 29, 31, and 32, depend
ultimately from claim 1. However, the Examiner does not cure ( or even
attempt to cure) the deficiency that Frazier does not disclose a "substantially
flat portion closing a domed portion," as recited by claim 1. See Final
Act. 4--5.
The remaining claims are independent claim 36 and claims 37--40,
which depend ultimately from claim 36. Claim 36 recites "a separate ballast
system disposed above the submersible fluid containment subsystem within
the body of water." Appeal Br. 23 (emphasis added); see also Spec. ,T63 and
Fig. 5 (describing and illustrating such a separate ballast).
The Examiner conceded that Frazier does not teach this limitation.
Final Act. 5 ("Frazier fails to disclose the ballast system disposed above the
subsystem, instead it is below."). However, the Examiner concluded:
It would have been obvious to one of ordinary skill in the art at
the time of filing to modify the system of Frazier to have the
ballast system above the subsystem as described in the claim as
a rearrangement of parts as the ballast would supply a downward
8
Appeal2018-004975
Application 14/596,448
force from either position and bed of the body of water would
determine the feasibility of supporting the ballast means.
Id. at 5-6; see also id. at 7 ("The supporting rationale comes from legal
precedent establishing that it would be obvious to rearrange the parts of the
system. See MPEP §2144.04. Shifting the position of the ballast system
would not change the operation of the device.").
But what the Examiner has proposed is not a mere rearrangement of
parts. As Appellant argues,
the system in Frazier is specifically directed to compressed fluid
storage vessels (i.e., open ballast bags 150 and closed ballast
bags 184) that are deployable on a floor of an ocean and that are
ballasted by putting sea floor sediment 146 inside the fluid
storage bags 144 so they do not rise when inflated.
Appeal Br. 15 ( citing Frazier reference numerals). In other words, Frazier's
ballast system is integrated into its submersible fluid containment system.
Thus, Frazier does not have a "separate" ballast system that could be
rearranged such that it is "disposed above the submersible fluid containment
subsystem," as recited in claim 36.
For the foregoing reasons, we reverse the rejection of claims 8, 9, 29,
31, 32, and 36-40 under 35 U.S.C. § 103 as unpatentable over Frazier.
Rejection 3
The Examiner rejects claim 13 under 35 U.S.C. § 103 as unpatentable
over Frazier and Webster. Final Act. 6.
Claim 13 depends ultimately from claim 1. However, the Examiner
does not cure ( or even attempt to cure) the deficiency that Frazier does not
disclose a "substantially flat portion closing a domed portion," as recited by
claim 1. See Final Act. 6-7.
9
Appeal2018-004975
Application 14/596,448
Accordingly, we reverse the rejection of claim 13 under 35 U.S.C.
§ 103 as unpatentable over Frazier and Webster.
CONCLUSION
The Examiner's rejections of claims 1-32 and 36-40 are reversed.
REVERSED
10