Ex Parte Farb et al

Patent Trial and Appeal Board

Mar 28, 2018

13322576 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/322,576 03/28/2012
44696 7590
Dr. Mark M. Friedman
Moshe Aviv Tower, 54th floor
7 Jabotinsky St.
Ramat Gan, 5252007
ISRAEL
03/30/2018
FIRST NAMED INVENTOR
Daniel Farb
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.
4644/51 7515
EXAMINER
WHITE, ALEXANDER A
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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):
patents@friedpat.com
friedpat.uspto@gmail.com
rivka_f@friedpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL FARB, JOE VAN ZW AREN,
AVNER F ARKASH, and KEN KOLMAN
Appeal2017-005548
Application 13/322,576
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Daniel Farb et al. (Appellants) 1 appeal under 35 U.S.C. § 134 from
the rejection of claims 24--26, 28-30, 35, and 37. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM and enter NEW GROUNDS OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).
1 Appellants identify Leviathan Energy Hydroelectric as the real party in
interest. App. Br. 3.
Appeal2017-005548
Application 13/322,576
CLAIMED SUBJECT MATTER
Claims 24 and 35 are independent. Claim 24, reproduced below, is
illustrative of the claimed subject matter:
24. A method of producing electricity from a hydroelectric
turbine in a pipe, comprising:
a. a nozzle with a cross-sectional diameter of
approximately 45-55% cross-sectional diameter of the pipe; 2
b. blades of substantially similar diameters and configured
to revolve at 90-150 times per minute, the blades positioned in
the pipe to be rotated by the existing pressure in the pipe, and to
maintain a substantially constant exit pressure; and,
c. the pipe is at least approximately 100 mm in cross-
sectional diameter.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ramer US 4,372,113 Feb. 8, 1983
Ortiz US 2008/0238105 Al Oct. 2, 2008
Kenneth R. Broome, CFD Analysis of an Undershot Impulse-Jet
Hydropower Generator, IIHR - HYDROSCIENCE AND ENGINEERING, THE
UNIVERSITY OF IOWA, Feb. 23, 2009.
2 Claim 24, reproduced in the Claims Appendix of the Appeal Brief,
contains typographical errors; namely, "A" before "a nozzle" and a period
after "cross-sectional diameter of the pipe." See Appeal Br. 19 (Claims
App.). Claim 24, reproduced above, does not contain these typographical
errors. See Amendment filed Nov. 30 2015.
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REJECTIONS 3
I. Claims 24--26, 28-30, and 37 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written
description requirement.
II. Claims 24--26, 28-30, and 37 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
III. Claim 35 stands rejected under 35 U.S.C. § 101, as being
directed to non-statutory subject matter.
IV. Claims 24--26, 28-30, and 37 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ramer and Ortiz.
V. Claim 35 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ramer and Broome.
DISCUSSION
New Ground of Rejection - 35 US. C. § 112, second paragraph
Claims 24--26, 28-30, 35, and 37 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
A claim is properly rejected as being indefinite under 35 U.S.C. § 112,
second paragraph if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
3 The Final Action also includes objections to claims 24 and 35. Final Act.
4. Review thereof is a petitionable matter not within jurisdiction of the
Board.
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because the claim "contains words or phrases whose meaning is unclear." In
re Packard, 751F.3d1307, 1310 (Fed Cir. 2014).
The preamble of claim 24 identifies that the claim is a method claim,
however, the claim does not require or include any particular step. Claim 24
instead merely recites structural elements and apparent functional
characteristics of the blades. Appeal Br. 19 (Claims App.). As such, it is
unclear what, if any, method steps are required to be performed to produce
electricity from a hydroelectric turbine in a pipe in accordance with claim
24.
In addition, it is unclear what blade diameters are referred to in the
limitation "blades of substantially similar diameters," as the shape of the
blades has not been claimed, nor has a frame of reference been described
based on which such diameters are to be measured. Moreover, it is unclear
if the claimed blade diameters are "substantially similar" to other blade
diameters, or to the diameter or diameters of other components, such as the
pipe or nozzle diameters.
Furthermore, the scope of the claim language "substantially similar" is
unclear. Appeal Br. 19 (Claims App.). Although, the claim terms
"substantially" and "similar" are both relative terms which generally do not
render a claim indefinite, 4 in this instance the Specification does not provide
adequate guidance as to how narrowly or how broadly either of these terms
is to be interpreted. See generally Spec. The lack of clarity that arises
because of this lack of guidance is further compounded by the use of both
4 See e.g., Andrew Corp. v. Gabriel Electronics, 847 F.2d 819 (Fed. Cir.
1988); see also Ex parte Kristensen, 10 USPQ2d 1701 (Bd. Pat. App. &
Inter. 1989).
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Application 13/322,576
relative terms in the phrase "substantially similar." In other words, it is
unknown to what extent the modifier "substantially" extends or contracts the
scope of the claim language "similar diameters," itself a relative term. Thus,
the meaning of the claim language "substantially similar" cannot readily be
ascertained. Accordingly, claim 24 and its dependent claims 25, 26, 28-30
and 37 are indefinite.
The method of claim 35 requires the step of "simulating an in-pipe
turbine system" in paragraph (a). Id. at 20 (Claims App.). However,
paragraph (a) does not include any parameters for running the claimed
simulation. Rather, it recites components of an in-pipe turbine system and a
plurality of inputs recited as members of a Markush group, and does not
describe how "a minimum of inputs" selected from the Markush group are
used in a simulation. As such, it is unclear what exactly is being simulated,
how the inputs are utilized in the simulation, and how the in-pipe turbine
system is simulated. Nor is it clear what is meant by "a minimum number of
inputs." Accordingly, claim 35 is indefinite.
Rejection I- Written Description
Claims 24--26, 28-30, and 37
Claims 25, 26, 28-30, and 37 depend from claim 24. Appeal Br. 19-
20 (Claims App.). Appellants do not present separate arguments for claims
25, 28-30, and 37. Appellants' arguments pertaining to claim 26 are limited
to the separate rejection of claim 26 discussed infra. Thus, for the
limitations at issue in this section of the rejection, claims 25, 26, 28-30, and
37 stand or fall with claim 24.
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The Examiner determines that the following limitations of claim 24
are not supported by the original disclosure: (i) "approximately 45-55%,"
(ii) "blades of substantially similar diameters," and (iii) "the blades
positioned in the pipe to be rotated by the existing pressure in the pipe, and
to maintain a substantially constant exit pressure." Final Act. 5. In regard to
limitation (i), "approximately 45-55%," the Examiner's position is that
"[ w ]hile the specification provides basis for a nozzle diameter of 45-55% of
the cross-sectional diameter of the pipe, the original disclosure fails to
provide a basis for a range of 'approximately 45-55%', which broadens the
scope of the claim beyond that found in applicant's original disclosure." Id.
Whether an application provides written descriptive support is a
question of fact, and determining whether a patent complies with the written
description requirement will necessarily vary depending on the context.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en bane). Specifically, the level of detail required to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant
technology. Id. When the original written description describes something
more broadly than what is claimed, the burden is on the Examiner to provide
convincing reasoning or evidence showing why the broader disclosure does
not provide support for the narrower limitation of the claim. See In re
Wertheim, 541F.2d,257, 263-65 (CCPA 1976) (holding that when the
claimed range is outside the range disclosed in the original specification, the
PTO need only point out that fact to support a written description rejection,
but when the claimed range is subsumed within a range disclosed in the
original specification, the PTO must present a sufficient reason to doubt that
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the broader described range does not also describe the somewhat narrower
range.)
For the first limitation at issue, the Examiner's rejection as set forth in
the Final Action consists of referring only to the 45-55% range as disclosed
in the Specification, and an assertion that claiming this as an "approximate"
range renders the claim broader than the disclosure, and not supported
thereby. Final Act. 5. However, the Specification also discloses a broader
range of 40-60%. Spec. 3. The disclosed 40-60% range encompasses
"approximately 45-55%." As discussed supra, in this instance it is
incumbent upon the Examiner to present convincing reasoning or evidence
showing why the disclosure of 40-60% does not provide support for the
"approximately 45-55%" range as claimed. The Examiner does not provide
such evidence.
In regard to limitation (ii) "blades of substantially similar diameters,"
the Examiner's position is that "there is no mention of the blade diameters"
in the Specification, and "[ w ]hile the blades are stated to have similar cross-
sectional areas, this does not inherently imply similar diameters for the
blades." Final Act. 5.
However, the Specification discloses that a "Pelton Turbine-like
arrangement of cups ... is used, as [shown] in Figure 1." Spec. 2. The
Examiner acknowledges that "it is old and well known in the art that Pelton
Turbines have blades substantially similar in diameter." Final Act. 8. We
also note that, as shown in Figure 1, all of the blades of the turbine appear to
be identical. See Spec., Fig. 1. Thus, those of ordinary skill in the art would
understand the blades shown in Figure 1 to have "substantially similar
diameters." As such, we determine that at the time the invention was made,
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Appellants had possession of the limitation "blades of substantially similar
diameters."
Concerning limitation (iii) "the blades positioned in the pipe to be
rotated by the existing pressure in the pipe, and to maintain a substantially
constant exit pressure," the Examiner asserts that"[ w ]hile the specification
and cancelled claim 3 6 discuss maintaining a constant pressure drop across
the turbine, this does not inherently imply a constant exit pressure." Final
Act. 5.
In response to this argument, Appellants direct our attention to
paragraph 20 of the Specification. Appeal Br. 9. Paragraph 20 describes
factors that are relevant to achieving "a substantially exact decrease in
pressure before and after an in-pipe turbine." Spec. i-f 20. One of the
enumerated factors is "pressure out" or exit pressure. Id. However, this
paragraph does not indicate that the "pressure out" is maintained at a
substantially constant pressure. See id. Further, our review of the entire
Specification reveals no discussion of maintaining the exit pressure at a
substantially constant pressure. See generally Spec. Moreover, Appellants
provide no persuasive argument or evidence to show that one skilled in the
art would understand a Pelton Turbine to inherently require a constant exit
pressure. Thus, Appellants do not apprise us of error in this part of the
rejection.
Accordingly, for this reason, we sustain the Examiner's decision
rejecting claims 24--26, 28-30, and 37 as failing to comply with the written
description requirement.
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Claim 26
In addition, the Examiner determines that the limitation of claim 26,
"wherein the blades operate as propellers" is not supported by the original
disclosure. Final Act. 6. The Examiner's position is that "[ w ]hile the
specification may describe propeller-like blades, this does not suggest that
the blades operate as propellers." Id.
The Specification does not disclose using "propeller-like blades" but
instead, discloses that "Figure 4 is a diagram of a nozzle with guide vanes.
This kind of nozzle may be used with cup or propeller types of blades."
Spec. 4 (emphasis added). Accordingly, an ordinary artisan would
understand that Appellants had possession of the limitation "wherein the
blades operate as propellers" because the blades as described in the
Specification are "propeller types."
For these reasons, we do not sustain the rejection of claim 26 under 35
U.S.C. § 112, first paragraph.
Rejection II-Indefiniteness
Appellants do not contest this rejection. See Appeal Br. 9.
Accordingly, we summarily sustain the rejection of claims 24--26, 28-30,
and 37 as indefinite, on the grounds presented in the Final Action. We note
that these grounds are in addition to the grounds presented above in the new
ground of rejection.
Rejection III-Non-Patent Elligible Subject Matter
The Examiner determines that claim 3 5 is directed to an abstract idea
and does not include additional elements that are sufficient to amount to
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significantly more than the abstract idea. Final Act. 7. The Examiner
asserts that "the claim establishes a method of manufacturing a hydroelectric
turbine nozzle comprising the steps of simulating an in-pipe turbine system
based upon a set of inputs and then producing a system based upon the
results of the simulation." Id. at 7-8. The Examiner further asserts that
"[a]s the simulation simply involves a computer aided design process based
upon iterative routine testing, it does not add any meaningful limitation to
the claimed method since there is no substantial system or structure created
by this process," "the provision of a system based upon the results of an
optimizing design process is well known to one having ordinary skill in the
art," and therefore, "as the steps do not substantially alter the structure of the
manufactured system that is otherwise known in the art, the method is not
directed to significantly more than an abstract idea." Id. at 8.
Appellants contend that step (b) of claim 3 5 provides a physical
structure and "[c]laim 35 is directed to a process, which is patentable matter
under 101." Appeal Br. 10. Appellants argue that "[ t ]he examiner did not
find th[ e] association of pressure control with flow and generator rpm in
prior art even with combinations of prior art." Id. at 11. According to
Appellants, "[ d]efining the exit pressure is an important goal, which has not
been done before." Id. Appellants further argue that "[a]lthough some of
the inputs covered in the claim may seem self-evident, the association of
these factors for a certain and specific purpose is highly innovative and the
Examiner has not provided any specific refutation of the specific ones
chosen." Id.; see also Reply Br. 2-3.
The Supreme Court has set forth "a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
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from those that claim patent-eligible applications of those concepts." Alice
Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1296-1297
(2012)). According to the Supreme Court's framework, we must first
determine whether the claims at issue are directed to one of those concepts
(i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, we
must secondly "consider the elements of each claim both individually and
'as an ordered combination' to determine whether the additional elements
'transform the nature of the claim' into a patent-eligible application." Id.
The Supreme Court characterizes the second step of the analysis as "a search
for an 'inventive concept' - i.e., an element or combination of elements
that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Id.
(alteration in the original) (quoting Mayo, 132 S. Ct. at 1294).
For the first part of our inquiry, we observe that claim 35, step (a),
recites "simulating an in-pipe turbine system." Appeal Br. 20 (Claims App.)
(emphasis added). As the Examiner points out, "the method of claim 35
may be broken down into a step of simulating a turbine system given a select
set of inputs, and providing that system based upon the results of the
simulation. None of this requires anything more than a thought experiment."
Ans. 5. We thus understand the Examiner's position to be that claim 35 is
directed to an abstract idea of simulating an in-pipe turbine system. Step (a)
of claim 35 merely identifies components of an in-pipe turbine system that is
to be simulated, i.e., does not physically exist, and inputs used in the
simulation. Considering claim 35 in its entirety, including the limitations
above, we find that the claimed subject matter is directed to the concept of
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simulating an in-pipe turbine system. Accordingly, claim 35 is directed to
an abstract idea.
Having determined that claim 35 is directed to an abstract idea, we
must determine whether the additional elements of the claim transform it
into patent-eligible subject matter. Although claim 35 sets forth in step (a) a
group of inputs, from which "a minimum of inputs" are to be selected for
use in the simulation, it does not specify how the inputs are selected or used
other than that they are to achieve "provid[ing] a substantially exact decrease
in pressure before and after [the] turbine." The Examiner's assertions that
"[a]s the simulation simply involves a computer aided design process based
upon iterative routine testing, it does not add any meaningful limitation to
the claimed method since there is no substantial system or structure created
by this process," and "the provision of a system based upon the results of an
optimizing design process is well known to one having ordinary skill in the
art," distill down to a determination that step (a) requires well-understood,
routine, conventional activity or simple instruction to implement an abstract
idea. Final Act. 8. However, claims must include additional features that
are significantly beyond "well-understood, routine, conventional activity" or
beyond a simple "instruction to implement or apply the abstract idea on a
computer." Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (quoting Mayo, 566 U.S. at 79.); Bascom Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). Thus, the
limitations in step (a) of claim 35 do not transform the abstract idea
embodied in the claim. Rather, it simply implements the idea.
Regarding step (b) of claim 35, as noted above, this step is merely a
post-solution activity. Thus, the combination of limitations of claim 35 does
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not transform the abstract idea embodied in the claim but simply implements
that idea.
Accordingly, the elements of claim 35, when considered "both
individually and 'as an ordered combination,"' amount to nothing more than
an attempt to patent the abstract idea embodied in the steps of this claim.
See Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298). Thus, the
limitations of claim 35 fail to transform the nature of this claim into patent-
eligible subject matter. See id. (citing Mayo, 132 S. Ct. at 1297, 1298).
Concerning Appellants' contentions that: ( 1) "[ t ]he examiner did not
find th[ e] association of pressure control with flow and generator rpm in
prior art even with combinations of prior art" (Appeal Br. 11); (2)
"[ d]efining the exit pressure is an important goal, which has not been done
before" (id.); and (3) "[a]lthough some of the inputs covered in the claim
may seem self-evident, the association of these factors for a certain and
specific purpose is highly innovative and the Examiner has not provided any
specific refutation of the specific ones chosen" (id.), as the Supreme Court
stated, "[t]he 'novelty' of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981). Thus, we are not
apprised of error based on this argument.
For these reasons, we sustain the Examiner's decision rejecting claim
35 as being directed to non-statutory subject matter.
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Rejections IV-V--Obviousness
The Examiner rejected claims 24--26, 28-30, and 37 under 35 U.S.C.
§ 103(a) as unpatentable over Ramer and Ortiz (Final Act. 8-12), and
rejected claim 35 under 35 U.S.C. § 103(a) as unpatentable over Ramer and
Broome (id. at 12-15).
Having determined that claims 24--26, 28-30, 35, and 37 are
indefinite, we cannot sustain the rejections of these claims under 35 U.S.C.
§ 103(a) because to do so would require speculation as to the scope of the
claims. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding
that the Board erred in affirming an anticipation rejection of indefinite
claims); In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) (holding that the
Board erred in affirming a rejection of indefinite claims under 35 U.S.C.
§ 103(a)).
DECISION
The Examiner's rejection of claims 24--26, 28-30, and 37 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is AFFIRMED.
The Examiner's rejection of claims 24--26, 28-30, and 37 under 35
U.S.C. § 112, second paragraph, as being indefinite is AFFIRMED.
The Examiner's rejection of claim 35 under 35 U.S.C. § 101, as being
directed to non-statutory subject matter is AFFIRMED.
The Examiner's rejection of claims 24--26, 28-30, and 37 under 35
U.S.C. § 103(a) as unpatentable over Ramer and Ortiz is REVERSED.
The Examiner's rejection of claim 35 under 35 U.S.C. § 103(a) as
unpatentable over Ramer and Broome is REVERSED.
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We enter NEW GROUNDS OF REJECTION for claims 24--26, 28-
30, 35, and 37 under 35 U.S.C. § 112, second paragraph.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b ). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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