Ex Parte Ives

Patent Trial and Appeal Board

Oct 24, 2018

14435805 (P.T.A.B. Oct. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/435,805 04/15/2015 James Ives
26294 7590 10/26/2018
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300EASTNINTH STREET, SUITE 1700
CLEVELAND, OH 44114
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.
FRK-024393 US PCT 5988
EXAMINER
OQUENDO, CARIB A
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
10/26/2018 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):
rkline@tarolli.com
docketing@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES IVES
Appeal2018-001503 1
Application 14/435,8052
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1-11. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
BACKGROUND
According to Appellant:
1 Our decision references the Appeal Brief ("Appeal Br.," filed June 9,
2017), the Reply Brief ("Reply Br.," filed Nov. 29, 2017), the Examiner's
Answer ("Ans.," mailed Oct. 3, 2017), and the Final Office Action ("Final
Act.," mailed Oct. 12, 2016).
2 According to Appellant, the real party in interest is Openhydro IP Limited.
Appeal Br. 2.
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Application 14/435,805
[The] invention relates to a hydroelectric turbine system to be
secured at a deployment site, for example on the seabed and in
an area of significant tidal flow, which system enables the turbine
to be located securely without risk of overturning, in particular
during extreme weather/tidal events, but without requiring the
use of piling or other complex fixing operations, thus
significantly simplifying the installation of such a turbine
system.
Spec. 1, 11. 7-11.
ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. A hydroelectric turbine system comprising a gravity base
comprising a frame, a plurality of legs extending from the frame;
and at least one load bearing member extending from the base at
a position adapted to resist, in use, overturning of the base.
Appeal Br. 11.
REJECTION
The Examiner rejects claims 1-11 under 35 U.S.C. § I03(a) as
unpatentable over Ives3 in view of Withers. 4
DISCUSSION
Claims 1, 2, and 4-11
With respect to claim 1, the Examiner finds that Ives discloses a
system as claimed except that Ives "is silent about at least one load bearing
member extending from the base at a position adapted to resist, in use,
overturning of the base." Final Act. 3. The Examiner finds that "Withers
teaches the use of a frame ... including a plurality of legs (L) and at least
3 Ives et al., US 2010/0232885 Al, pub. Sept. 16, 2010.
4 Withers, US 2009/0314579 Al, pub. Dec. 24, 2009.
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Application 14/435,805
one load bearing member (stabilizer 10) extending from the frame at a
position adapted to resist, in use, overturning of the base." Id. (citing
Withers Fig. 1; ,r,r 12, 13). The Examiner concludes that it would have been
obvious to modify Ives to include stabilizing legs as in Withers because
"such modification would provide added stabilization to the frame." Id.
We agree with and adopt the Examiner's findings with respect to
claim 1. See Final Act. 3; see also Ans. 2-3. As discussed below, we are
not persuaded of reversible error by Appellant's arguments.
Appellant first argues that "the rejection does not show, through
evidence or adequate reasoning, that either Ives or Withers, alone or in
combination, would have led one of ordinary skill in the art to modify" Ives
as claimed. Appeal Br. 5. In support, Appellant asserts that Ives is
concerned with "utilizing telemetry to ensure that the base is sitting within
agreed parameters on the seabed" and that Ives' s "description [ of this
process] does nothing to suggest a need or desirability for a gravity base
including at least one load bearing member" as claimed. Id. Further,
Appellant disagrees with the Examiner that a person of skill in the art would
recognize the stabilization issues related to underwater structure installation
and thus, would have been motivated to modify Ives as claimed. Id. Rather,
Appellant argues that one would simply "sink a pile into the seabed" rather
than modifying Ives's base. Id. at 5---6.
We disagree. First, we agree with the Examiner that the reasoning
supporting the obviousness determination need not come from the art itself
and may be derived from the knowledge of skilled artisans and the nature of
the problem to be solved. See, e.g., KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398,418 (2007) ("a court can take account of the inferences and creative
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Application 14/435,805
steps that a person of ordinary skill in the art would employ."). Second, we
find that Ives at least provides an indication that stability of the frame is an
issue when installing such frames on the seabed. Specifically, Ives discloses
the dangers and difficulty associated with installing and maintaining
hydroelectric turbines "located in relatively fast flowing tidal currents"
including fixing piles into the seabed, which "is considerably problematic
and a dangerous operation." Ives ,r 3. Thus, Ives discloses that "anything
that can be done to simplify this task and/or decrease the time taken is of
great benefit." Id. at ,r 5. Thus, we agree with the Examiner that one of
ordinary skill in the art would have recognized that "stabilization plays an
important factor in the engineering design of the structure" of a hydroelectric
turbine. Ans. 2.
Second, Appellant argues that Withers is non-analogous art. In
support, Appellant asserts that Withers is not in the same field of endeavor
and is not reasonably pertinent to the problem face by Appellant. Appeal
Br. 6-7. Appellant argues that the particular problem faced by Appellant
"was the problem posed by the requirement to over engineer the base and the
resulting requirement to use heavy lifting and transport equipment ... at sea
during difficult and unsteady conditions of significant tidal flow and extreme
weather or tidal events." Id. at 6. Appellant also asserts that the Examiner
overgeneralizes and oversimplifies the problem in describing it as
"overturning of the frame." Id. at 7.
We are not persuaded. In order for a reference to be "reasonably
pertinent" to the problem, it must "logically [ ] have commended itself to an
inventor's attention in considering his problem." In re Icon Health &
Fitness, Inc., 496 F.3d 1374, 1379--80 (Fed. Cir. 2007); see also KSR Int'!
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Application 14/435,805
Co., 550 U.S. at 417 ("When a work is available in one field of endeavor,
design incentives and other market forces can prompt variations of it, either
in the same field or a different one."). First, although the Specification
discusses issues related to securing a base in regions of significant tidal flow,
the Specification makes clear that the particular problem with which the
Appellant was concerned relates to avoiding the risk of overturning the base.
See Spec. 1. This particular problem is apparent in the claim itself, which
requires a load bearing member that is "adapted to resist, in use, overturning
of the base." Thus, we disagree that the Examiner's characterization is an
overgeneralization or oversimplification of the problem faced by Appellant.
Second, we find that Withers would logically have commended itself to
Appellant's attention in considering the problem because Withers includes
load bearing members that serve essentially the same purpose and function
as the claimed load bearing members, i.e., they provide stabilization to resist
overturning of a base. See In re Clay, 966 F.2d 656, 659 (Fed.Cir.1992) ("If
a reference disclosure has the same purpose as the claimed invention, the
reference relates to the same problem, and that fact supports use of that
reference in an obviousness rejection.").
Based on the foregoing, we are not persuaded of error in the rejection
of claim 1. For the same reasons and because Appellant does not provide
separate arguments, we are not persuaded of error in the rejection of
dependent claims 2 and 4--11. Accordingly, we sustain the rejection of
claims 1, 2, and 4--11.
Claim 3
Claim 3 depends from claim 1 and further requires that "the load
bearing member is arranged and dimensioned to be at an elevated position
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above a surface of a deployment site when the plurality of legs are engaged
against and supported by the surface." Appeal Br. 11. The Examiner finds
that Withers' s load bearing members are telescoping and thus they are
dimensioned such that they may be elevated when the plurality of legs are
engaged against a surface. Final Act. 3 (citing Withers ,r,r 13, 16).
Appellant argues that the telescopic legs "allow the bottom of the leg to rest
on the ground" and that this is essential "when stabilizing a ladder." Appeal
Br. 8. Appellant asserts that if the legs were at an elevated position as
recited in claim 3, "this would negate the efficacy of the stabilizing member
and render it ineffective." Id.
We are not persuaded by Appellant's argument. Although it may be
true that one would not use Withers' s ladder with the telescopic legs
elevated about the support surface, that fact alone is not sufficient to show
error in the rejection. Specifically, Appellant does not explain why
Withers' s stabilizing legs are not "arranged and dimensioned" as claimed,
regardless of whether they would be elevated when the ladder is put to use.
We agree with the Examiner that the adjustable nature of the stabilizing legs
is sufficient to show that they are arranged and dimensioned to be elevated
as claimed. See Withers ,r 16 ( describing the telescoping structure of the
stabilizer legs 40 that allows for the user to select the appropriate leg length).
Based on the foregoing, we sustain the rejection of claim 3.
CONCLUSION
We AFFIRM the rejection of claims 1-11.
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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 )(iv).
AFFIRMED
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