Ex Parte Jones

Board of Patent Appeals and Interferences

Apr 5, 2010

10962629 (B.P.A.I. Apr. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAN JONES
____________________

Appeal 2009-007415
Application 10/962,629
Technology Center 3700
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Decided: April 5, 2010
____________________

Before LINDA E. HORNER, KEN B. BARRETT, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Dan Jones (Appellant) seeks our review under 35 U.S.C. § 134 of the
final rejection of claims 13-29. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). Appellant’s representative presented oral argument on March 11,
2010.

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SUMMARY OF DECISION
We AFFIRM-IN-PART, and ENTER A NEW GROUND OF
REJECTION PURSUANT TO 37 C.F.R. § 41.50(b).

THE INVENTION
Appellant’s claimed invention is directed to capturing energy from
mechanical actions associated with the recovery of underground fluids
(Spec. 2:6-14).
Claim 13, reproduced below, is representative of the subject matter on
appeal.
13. A system for recovering energy, said system
comprising:
a recovery device, said recovery device
actuated, at least in part, by a mechanism of the
natural environment;
a generating device in communication with
said recovery device, said generating device
operable to generate electrical energy in response
to said actuation of said recovery device; and
a distribution device operable to distribute
said generated electrical energy to at least said
recovery device.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Bailey US 4,255,933 Mar. 17, 1981
Falconer US 4,280,328 Jul. 28, 1981
Erickson US 4,285,401 Aug. 25, 1981
Worst US 4,489,242 Dec. 18, 1984
Lay US 5,141,173 Aug. 25, 1992
Bronicki US 5,448,889 Sep. 12, 1995
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The following rejections by the Examiner are before us for review:
1. Claims 13, 14, 16, 18, 21-23, 25, 28 and 29 are rejected under 35
U.S.C. § 102(b) as being anticipated by Lay.
2. Claims 13, 14, 16, 18, 21-23, 25, 28 and 29 are rejected under 35
U.S.C. § 102(b) as being anticipated by Worst.
3. Claims 13, 14, 18, 21, 22 and 25-29 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Falconer in view of Worst.
4. Claims 15, 19 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Falconer in view of Worst, and further in view of
Erickson.
5. Claims 16 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Falconer in view of Worst, and further in view of
Bronicki.
6. Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Falconer in view of Worst and Bronicki, and further in view of
Bailey.
7. Claim 24 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Falconer in view of Worst, and further in view of Bailey.

ISSUES
The issues before us are:
(1) whether the Examiner erred in finding that Lay describes a
recovery device, a generating device and a distribution device, as called for
in claim 13 (App. Br. 7, 8);
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(2) whether the Examiner erred in finding that Lay describes “a
storage device for receiving and storing said generated electrical energy
from said distribution device,” as called for in claim 14 (App. Br. 9);
(3) whether the Examiner erred in finding that Lay describes “storing
said generated electrical energy,” as called for in claim 22 (App. Br. 9);
(4) whether the Examiner erred in finding that Lay’s flywheel
generator motor 36 functions as a generator when the vehicle (recovery
device) 10 moves in a first direction and functions as a motor when the
vehicle (recovery device) 10 moves in a second direction, as called for in
claims 16 and 23 (App. Br. 9);
(5) whether the Examiner erred in finding that Lay’s control computer
30 is a distribution device, as called for in claim 18, and distributes the
generated electrical energy, as called for in claim 25 (App. Br. 9);
(6) whether the Examiner erred in finding that Worst describes “a
distribution device operable to distribute said generated electrical energy to
at least said recovery device,” as called for in independent claim 13 (App.
Br. 11); and
(7) whether the Examiner erred in finding that the combined teachings
of Falconer and Worst would have led a person having ordinary skill in the
art to “a distribution device operable to distribute said generated electrical
energy to at least said recovery device,” as called for in claim 13 (App. Br.
15).

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
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1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Lay describes (a) a vehicle 10 including wheels 14, 16 powered by
four electric wheel motors 20 (col. 5, ll. 29-31), (b) that “the
primary source of power for the wheel motors 20 is a battery pack
24” (col. 5, ll. 36-37), (c) “the battery pack 24 is connected to a
power controller 29 that receives control commands from a logic
control computer 30 to regulate the pulsing of the current from the
battery pack 24 to the wheel motors 20” (col. 5, ll. 45-49), (d)
“[t]he power controller 29 pulses current at variable rates to
maximize efficiency of current flowing to the wheel motors 20”
(col. 5, ll. 53-56).
2. Lay describes that “[t]he wheel motors 20 are . . . used for
pollution free, city driving where the vehicle 10 will likely be
driven a relatively short distance.” (col. 5, ll. 32-35).
3. Lay describes a combustion engine 22 (a) that moves the vehicle
10 by providing electricity to the motor wheels 20 to augment the
power delivered to the motor wheels 20 by the battery pack 24
(col. 5, ll. 57-66) and (b) that drives generator 32, wherein the
generator 32 recharges the battery pack 24 (col. 5, l. 67-col. 6, l.
13).
4. Lay describes a flywheel generator motor 36 comprising a
regenerative braking system, wherein the flywheel 36 conserves
some of the momentum energy created when the vehicle 10 is
moving and acts as a generator to recharge the battery pack 24 on
braking (col. 6, ll. 14-23).
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5. Lay describes (a) “photo-electric cells 82 . . . [that] help regenerate
the stored energy that has been released from the batter[y] [sic]
pack 24 for driving wheel motor 20” and (b) “the photo-electric
cells can be connected directly to the wheel motor 20.” (col. 8, ll.
37-53).
6. In Lay, (a) the vehicle 10 is considered to be the recovery device,
(b) the flywheel generator motor 36 is considered to be the
generating device and (c) the logic control computer 30 is
considered the distribution device as called for in claim 13.
7. Worst describes a battery 19 that provides power for operating
accessories; wherein the battery 19 can be recharged by a generator
14, as driven by an engine 10 or by an electric motor 34, or a solar
cell electric system (col. 5, ll. 19-45).
8. Worst describes that “[i]t is contemplated that during periods of
low power usage, as in the middle of the night, such batteries [19]
can be most economically recharged simply by coupling the input
lead 89 of a recharging unit 84 of conventional design to a wall
outlet 86.” (col. 5, ll. 19-33 and fig. 1).
9. Worst describes that “Figure 8 is an electrical circuit diagram
combining FIGS. 5, 6 and 7 to provide manual or automatic
switching of: dual batteries, generator and selected accessory
drives.” (col. 4, ll. 60-63).
10. Falconer describes a solar panel 6 for recovering natural energy,
the solar panel 6 comprises a front cover 7, tubular elements 11, a
pump 12, reservoirs 13, 21, a line 22, a hydroturbine 23, a
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generator 24, an electrical control 26, lines 37, a transformer 34
and power lines 36 (col. 1, l. 32-col. 2, l. 8, and fig. 1).
11. Falconer describes that (a) solar energy is transmitted to heat air in
the panel 6, (b) water enters elements 11 by pump 12 from
reservoir 13, (c) water, which has turned to steam, condenses and
returns to reservoir 21, and then flows downward from reservoir 21
to hydroturbine 23 via line 22, and (d) the flowing water permits
the hydroturbine 23 to operate generator 24 which provides power
for transmission to electrical control element 26 (col. 1, l. 32-col.
2, l. 8 and fig. 1).
12. Falconer describes that (a) “[c]control 26 can provide power to
drive a motor 31 which in turn operates flywheel 32 providing an
input to generator 33 which delivers power to transformer 34 for
suitable delivery to power lines 36” and (b) “[p]ower from
electrical control 26 can also be delivered through lines 37 to the
transformer [34] if desired.” (col. 2, ll. 3-8 and fig. 1).
13. In Falconer, (a) the solar panel 6 is considered to be the recovery
device and (b) the generator 24, 33 is considered to be the
generating device, as called for in claim 13.
14. Additional findings as necessary appear in the Analysis portion of
this opinion.

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PRINCIPLES OF LAW
Anticipation
“Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention.” RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). It is not necessary that the
reference teach what the subject application teaches, but only that the claim
read on something disclosed in the reference, i.e., that all of the limitations
in the claim be found in or fully met by the reference. Kalman v. Kimberly-
Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983).

Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
In KSR, the Supreme Court held that “if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” Id. at 417.

Claim Construction
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
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interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).

ANALYSIS
Appellant does not present any separate arguments for the
patentability of independent claims 21, 28 and 29 for each ground of
rejection apart from independent claim 13. Thus, in accordance with 37
C.F.R. § 41.37(c)(1)(vii) (2009); independent claims 21, 28 and 29 stand or
fall with representative claim 13 for each ground of rejection.

Rejection of claims 13, 14, 16, 18, 21-23, 25, 28 and 29 under 35 U.S.C.
§ 102(b) as being anticipated by Lay

Claim 13
Appellant contends that (1) Lay’s vehicle or combustion engine
cannot be considered to be a recovery device “actuated, at least in part, by a
mechanism of the natural environment,” as called for in claim 13 (App. Br.
7), (2) Lay’s engine 22 is not actuated by photoelectric cells, as the
photocells power wheel motors 20 and battery pack 24 (App. Br. 7), (3)
Lay’s generator 32 is not “operable to generate electrical energy in response
to the actuation of said recovery device” as called for in claim 13 (App. Br.
8), and (4) Lay’s battery pack 24 does not function as a distribution device
as called for in claim 13 (App. Br. 8).
The Examiner found that, regarding claim 13, in Lay, the vehicle 10
can be considered to be a recovery device (Ans. 4). In particular, the
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Examiner found that since the internal combustion engine 22 is part of the
vehicle 10 and the vehicle 10 accepts energy from the electricity generated
by the photo cells 82, driving the vehicle wheels 16 drives the vehicle 10
(Ans. 8, 9). The Examiner further found that (1) generator 32 and
motor/generator 36 can be considered to be a generating device (Ans. 4), and
(2) the computer 30 can be considered to be a distributing device (Ans. 9).
Claim 13 calls for, inter alia, (1) a recovery device actuated, at least
in part, by a mechanism of the natural environment; (2) a generating device
in communication with the recovery device and operable to generate
electrical energy in response to the actuation of the recovery device; and (3)
a distribution device operable to distribute said generated electrical energy to
at least said recovery device.
In Lay, the vehicle 10 is powered by the wheel motors 20, wherein
the primary source of power for the wheel motors 20 is the battery pack 24
and the battery pack 24 is regenerated by the photo-electric cells 82 (Facts 1,
2, 5). Thus, we find that the vehicle 10 is actuated, at least in part, by a
mechanism of the natural environment, that is, by the energy captured by the
photo-electric cells 82.
Therefore, we find that the vehicle 10 is a recovery device, as called
for in claim 13 (Fact 6).
Lay describes that the generator 32 is part of the vehicle (the
recovery device) 10 and generates electricity when the vehicle 10 is
actuated, that is, when the vehicle is being moved by the internal combustion
engine 22 the generator recharges the battery pack 24 (Fact 3).
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Lay further describes that flywheel generator motor 36 is also part of
the vehicle (the recovery device) 10 and generates electricity when the
vehicle 10 is actuated, that is, moving (Fact 4).
Therefore, both generator 32 and flywheel generator motor 36 are a
part of the vehicle (the recovery device) 10 and are operable to generate
electricity in response to the actuation of the vehicle (the recovery device)
10.
Accordingly, we find that each of the generator 32 and the flywheel
36 is a generating device, as called for in claim 13 (Fact 6).
In Lay, the computer 30 sends commands that control the current
flowing from the battery pack 24 to the wheel motors 20, wherein the wheel
motors 20 power the wheels 14, 16 that move the vehicle 10 (Fact 1).
Further, the flywheel 36 generates electricity that is stored in the battery
pack 24 (Fact 4).
Therefore, since the computer 30 distributes the generated electrical
energy (the generated energy stored in the battery pack 24) to the recovery
device (the vehicle) (Fact 6), we find that the computer 30 is a distribution
device, as called for in claim 13.
Accordingly, we affirm the rejection of claim 13 over Lay. Likewise,
we affirm the rejection of claims 21, 28 and 29 over Lay; which stand or fall
with claim 13.

Claims 14 and 22
Appellant contends that Lay does not describe “a storage device for
receiving and storing said generated electrical energy from said distribution
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device,” as called for in claim 14, and “storing said generated electrical
energy,” as called for in claim 22 (App. Br. 9).
The Examiner found that battery pack 24 is an energy storage device,
which is controlled by the computer 30 (Ans. 9).
Appellant further contends that Lay does not describe that battery
pack 24 receives and stores energy from the computer 30, as required by
claim 14 (Reply Br. 4).
Lay’s battery pack 24 stores electrical energy generated by generator
32 and flywheel generator motor 36 (Facts 3, 4). We previously found,
supra, that Lay’s computer 30 is a distribution device since the computer 30
sends commands that control the current flowing from the battery pack 24 to
the wheel motors 20 (Facts 1, 6). Lay is silent as to the battery pack 24
receiving and storing electrical energy distributed by the computer 30. As
such, it becomes incumbent upon the Examiner to provide a basis in fact
and/or technical reasoning that would support a finding that Lay’s battery
pack 24 receives and stores electrical energy distibuted by the computer 30.
The Examiner has not provided an adequate basis or reasoning. Further, we
do not find that Lay’s battery pack 24 receives and stores electrical energy
distributed by the computer 30. Therefore, we agree with Appellant that
Lay’s battery pack 24 does not receive and store energy from the computer
30.
Accordingly, we reverse the rejection of claim 14 over Lay.
Claim 22 calls for “storing said generated electrical energy” where the
electric energy is generated “in response to said actuation of said recovery
device.”
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Since Lay’s battery pack 24 does store generated electrical energy
(Facts 3, 4), Lay’s battery pack 24 meets the storing step called for in claim
22.
We affirm the rejection of claim 22 over Lay.

Claims 16 and 23
Appellant contends that lay’s flywheel generator motor 36 does not
function as a generator when the recovery device moves in a first direction
and function as a motor when the recovery device moves in a second
direction as called for in claims 16 and 23 (App. Br. 9), since it “puts energy
back into the system upon slowing down, not changing directions.”
The Examiner found that it is well known in the art that the
motor/generator 36 act [sic acts] as a motor when the vehicle move [sic
moves] uphill or in normal condition [sic conditions], acts a generator when
the vehicle moves downhill and gains more energy.” (Emphasis added)
(Ans. 10).
Appellant further contends that the Examiner has taken official notice
of the limitations called for in claims 16 and 23, but has failed to support
such notice with documentary evidence (Reply Br. 4).
We do not agree with the Examiner’s determination and rationale, as
we find that Lay’s generators 32, 36 are described as being independent of
the direction of the vehicle (the recovery device). In particular, Lay’s
generator 32 provides electricity to motor wheels 20 and recharges the
battery pack 24 (Fact 3) and Lay’s flywheel generator motor 36 conserves
some of the momentum energy created when the vehicle 10 is moving
(regardless of the direction of movement of the vehicle) and acts a generator
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to recharge the battery pack 24 on braking (again regardless of the direction
of movement of the vehicle) (Fact 4).
Therefore, we are constrained to reverse the rejection of claims 16 and
23.

Claims 18 and 25
Appellant contends that Lay’s control computer 30 is not a
distribution device, as called for in claim 18 and does not perform the
distributing step of claim 25, since it does not distribute “said generated
electrical energy in accordance with one or more legislative schemes that
favors renewable energy.” (App. Br. 9).
The Examiner found that Lay’s “computer 30 must be programmed by
a specific scheme to control the vehicle [10] including when to accept or
dispense the renewable energy and that meets the claimed limitations.”
(Emphasis added)(Ans. 10).
We previously found, supra, that Lay’s computer 30 can be
considered to be a distribution device since the computer 30 sends
commands that control the current flowing from the battery pack 24 to the
wheel motors 20 (Facts 1, 6).
It was well known that legislation has been implemented to raise the
gas mileage of vehicles. The legislative scheme for raising the gas mileage
of vehicles is to make the U.S. less dependent on foreign oil. A person
having ordinary skill in the field of renewable energy would be a person of
high skill. A person having such high skill would understand that using
renewable energy makes the vehicle less dependent on gasoline and, thus,
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more fuel efficient, which would raise the gas mileage of the vehicle and
comply with the implemented legislation.
Therefore, we conclude that by sending commands that control the
current flowing from the battery pack 24 to the wheel motors 20, Lay’s
computer 30 is distributing generated electrical energy in accordance with
one or more legislative schemes that favors renewable energy.
Therefore, we affirm the rejection of claims 18 and 25 over Lay.
Out of an abundance of caution, we denominate the affirmance of this
rejection as a new ground of rejection pursuant to 37 C.F.R. §41.50(b),
because our fact finding goes well beyond the facts articulated by and relied
on by the Examiner.

Rejection of claims 13, 14, 16, 18, 21-23, 25, 28 and 29 under 35 U.S.C.
§ 102(b) as being anticipated by Worst

Appellant contends that Worst does not describe “a distribution device
operable to distribute said generated electrical energy to at least said
recovery device,” as called for in independent claim 13 (App. Br. 11).
The Examiner found in Worst that, “the control circuit is used to meet
the distributing device . . . (note the control circuit diagram in figure 8).”
(Ans. 11). Worst describes that “Figure 8 is an electrical circuit diagram
combining Figs. 5, 6 and 7 to provide manual or automatic switching of:
dual batteries, generator and selected accessory drives” (Fact 9).
It is not clear to us how Worst’s control circuit satisfies the claimed
distribution device or performs the claimed distributing step. Accordingly,
we cannot find by a preponderance of the evidence that the pertinent
limitations are described in Worst, and are constrained to reverse the
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rejection of independent claims 13, 21, 28, and 29 over Worst. Also, we
also are constrained to reverse the rejection of claims 14, 16, 18, 22, 23 and
25, which depend from claims 12 and 21, respectively.

Rejections of claims 13-29 under 35 U.S.C. § 103(a) as being unpatentable
over Falconer and Worst and one or more of Erickson, Bronicki and Bailey,
supra
Claims 13, 14, 18, 21, 22 and 25-29
Appellant contends that the combined teachings of Falconer and
Worst do not describe “a distribution device operable to distribute said
generated electrical energy to at least said recovery device,” as called for in
claim 13 (App. Br. 15).
The Examiner found (1) that Falconer describes a system for
recovering solar energy, but does not describe “the concept of inputting
electricity from the transformer back to the system,” and (2) that Worst
describes “the concept of using a transformer 87 to input energy back to the
system if energy is low.” (Ans. 6).
Appellant contends that Worst’s transformer 87 distributes generated
electrical energy from an external source and, therefore, does not distribute
the electrical energy generated by the generating device, as called for in
claim 13 (App. Br. 15).
We agree with the Examiner that Falconer does not describe “the
concept of inputting electricity from the transformer back to the system,”
that is, recycling generated electrical energy (see Facts 10-13).
Worst describes recharging a battery 19 by coupling the input lead 89
of a recharging unit 84 to a wall outlet 86 (Fact 8, see also Fact 7). We
agree with Appellant that this particular charging of Worst’s battery 19 is
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not from recycled electrical energy generated by Worst’s device. The
Examiner concluded that it would have been obvious to modify Falconer’s
transformer to recycle the generated electricity. (Ans. 6). However, the
Examiner has not adequately explained why it would have been obvious to
make this modification. (Ans. 12-13).
Therefore, we are constrained to reverse the rejection of claim 13 over
Falconer and Worst. Likewise, we are constrained to reverse the rejection of
claims 14, 18, 21, 22 and 25-29 over Falconer and Worst.

Claims 15-17, 19, 20, 23 and 24
The Examiner has not relied on Erickson, Bronicki or Bailey for any
teaching that would remedy the deficiency in the combination of Falconer
and Worst (Ans. 6, 7, 8). We thus conclude that the Examiner also erred in
rejecting claims 15-17, 19, 20, 23 and 24 over the combined teachings of
Falconer and Worst and one or more of Erickson, Bronicki and Bailey,
supra.

NEW GROUND OF REJECTION
In addition to our designation of our affirmance of the rejection of
claims 18 and 25, we enter a new ground of rejection pursuant to 37 C.F.R. §
41.50(b).
Claim 13
Claim 131 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Falconer.

1 Claim 13 has been reproduced on page 2 of this Decision on Appeal.
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Falconer describes a solar panel 6 for recovering natural energy, a
hydroturbine 23, a generator 24, and power lines 36 (Fact 10). Falconer
describes that water flows downward from reservoir 21 to hydroturbine 23
via line 22, wherein the flowing water permits the hydroturbine 23 to operate
generator 24 which provides power for transmission to electrical control
element 26 (Fact 11). Falconer describes that (a) “[c]control 26 can provide
power to drive a motor 31 which in turn operates flywheel 32 providing an
input to generator 33 which delivers power to transformer 34 for suitable
delivery to power lines 36.” (Fact 12).
Therefore, in Falconer, (a) the solar panel 6 is considered to be the
recovery device and (b) generator 24, 33 is considered to be the generating
device, as called for in claim 13 (Fact 13, see also Facts 10-12). Falconer is
silent as to describing a distribution device operable to distribute the
generated electrical energy to the recovery device, that is, to the solar panel.
As we previously found, supra, a person having ordinary skill in the
field of renewable energy is a person of high skill. A person having such
high skill would understand that using recycled generated energy to power a
power plant saves money and is better for the environment, and would know
how to distribute a portion of the generated energy back to the power plant
to recycle the energy generated at Falconer’s power lines 36.
Therefore, it would have been obvious to a person having ordinary
skill in the art to modify Falconer to recycle the energy generated at power
lines 36 to power the hydroturbine 23 and generators 24, 33.
We conclude that recycling generated electrical energy could have
been reasonably predicted to yield the result of saving money. See KSR, 550
U.S. at 417.
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Claims 14-29
The Board of Patent Appeals and Interferences is a review body,
rather than a place of initial examination. We have made a rejection above
under 37 C.F.R. § 41.50(b). However, we have not reviewed claims 14-29
to the extent necessary to determine whether these claims are unpatentable
over Falconer, either alone or in combination with any of the other patents
cited in the record. We leave it to the Examiner to determine the
appropriateness of any further rejections based on these references.

CONCLUSIONS
The Examiner has not erred in finding that Lay describes a recovery
device, a generating device and a distribution device, as called for in claim
13.
The Examiner has erred in finding that Lay describes “a storage
device for receiving and storing said generated electrical energy from said
distribution device,” as called for in claim 14.
The Examiner has not erred in finding that Lay describes “storing said
generated electrical energy,” as called for in claim 22.
The Examiner has erred in finding that Lay’s flywheel generator
motor 36 functions as a generator when the vehicle (recovery device) 10
moves in a first direction and functions as a motor when the vehicle
(recovery device) 10 moves in a second direction, as called for in claims 16
and 23.
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The Examiner has not erred in finding that Lay’s control computer 30
is a distribution device, as called for in claim 18, and performs the
distributing step, as called for in claim 25.
The Examiner has erred finding that Worst describes “a distribution
device operable to distribute said generated electrical energy to at least said
recovery device,” as called for in independent claim 13.
The Examiner has erred in finding that the combined teachings of
Falconer and Worst would have led a person having ordinary skill in the art
to “a distribution device operable to distribute said generated electrical
energy to at least said recovery device,” as called for in claim 13.

DECISION
The decision of the Examiner to reject claims 13, 18, 21, 22, 25, 28
and 29 over Lay is affirmed.
The decision of the Examiner to reject claims 14, 16 and 23 over Lay
is reversed.
The decision of the Examiner to reject claims 13, 14, 16, 18, 21-23,
25, 28 and 29 over Worst; claims 13-29 over Falconer and Worst and one or
more of Erickson, Bronicki and Bailey, supra, is reversed.
Pursuant our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over Falconer.

FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
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"Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection of claim 13, and a
designation of our affirmance of the rejection of claims 18 and 25 as a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2007). 37 C.F.R. §
41.50(b) provides "[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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 proceeding
will be remanded to the Examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
Appeal 2009-007415
Application 10/962,629

22
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

Klh

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