Ex Parte Lewis et al

Patent Trial and Appeal Board

Mar 22, 2016

12841998 (P.T.A.B. Mar. 22, 2016)

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.
12/841,998 07/22/2010 Garrett Lewis OTD-031466
(CMRN:0142)
3193
64833 7590 03/22/2016
FLETCHER YODER (CAMERON INTERNATIONAL CORPORATION)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
PIGGUSH, AARON C
ART UNIT PAPER NUMBER
2859
MAIL DATE DELIVERY MODE
03/22/2016 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 GARRETT LEWIS, GANGBING SONG, DEVENDRA PATIL,
and CLAUDIO OLMI1
____________________

Appeal 2014-008231
Application 12/841,998
Technology Center 2800
____________________

Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1–12, 19–21, and 27–29.2 Claims 13–18 and 22–26 have been withdrawn.
App. Br. 2. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.

1 Appellants identify University of Houston as the real party in interest.
App. Br. 2.
2 In this Decision, we refer to Appellants’ Appeal Brief (“App. Br.,” filed
January 14, 2014), the Reply Brief (“Reply Br.,” filed July 21, 2014), the
Final Office Action (“Final Act.,” mailed August 14, 2013), the Examiner’s
Answer (“Ans.,” mailed on May 21, 2014), and the original Specification
(“Spec.,” filed July 22, 2010).
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Application 12/841,998

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THE INVENTION
Appellants’ invention is directed to utilizing an ultracapacitor to
provide energy and actuate a shape memory alloy (SMA) element. Spec.
¶ 91. “In general, SMAS are materials which have the ability to return to a
predetermined shape when heated.” Spec. ¶ 37.
Independent claim 1, reproduced below, is illustrative:
1. A system, comprising:
a power supply comprising:
an [sic] capacitor configured to be charged by a DC
source;
a first switch configured to enable charging of the
capacitor by the DC source when in a first closed position, and
to disable charging of the capacitor when in a first open
position; and
a second switch configured to enable discharging of the
capacitor when in a second closed position, and to disable
discharging of the capacitor when in a second open position;
wherein the power supply is configured to discharge the
capacitor to provide a current to actuate a shape memory alloy
(SMA) element.

THE REJECTION
Claims 1–12, 19–21, and 27–29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Nebrigic et al. (US 6,370,046 B1;
Apr. 9, 2002) (“Nebrigic”), and Haller et al. (US 7,070,577 B1; July 4,
2006) (“Haller”). Final Act. 3–9.

ANALYSIS
Only those arguments actually made by Appellants have been
considered in this Decision. Arguments that Appellants did not make in the
Briefs have not been considered and are deemed to be waived. See 37
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Application 12/841,998

3
C.F.R. § 41.37(c)(1)(iv). We are not persuaded by Appellants’ contentions
regarding claims 1–12, 19–21, and 27–29. We adopt as our own the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Final Act. 2–11) and as set forth by the Examiner in the
Answer (Ans. 2–9). However, we highlight and address specific arguments
and findings for emphasis as follows.

Claims 1–10, 12, 19–21, and 27–29
Appellants contend neither Haller nor Nebrigic teaches or suggests
“wherein the power supply is configured to discharge the capacitor to
provide a current to actuate a shape memory alloy (SMA) element,” as
recited in independent claim 1. App. Br. 5–7. In particular, Appellants
argue Haller’s capacitor C2 is limited to only piezo-electric embodiments
(App. Br. 6 (citing Haller 2:47–51, 6:18–21, 7:10–33, Figs. 2–4)), and is not
discharged to provide current to operate Haller’s piezo-electric device
(Reply Br. 2–3 (citing Haller 7:34–48)). Appellants further argue, although
Nebrigic’s capacitor CF is discharged to supplement voltage from an energy
source, the capacitor CF does not actuate “any sort of actuation device, e.g.,
the claimed shape memory alloy (SMA) element.” App. Br. 7 (citing
Nebrigic 5:28–40); see also Reply Br. 4.
We are not persuaded the Examiner erred, at least, because
Appellants’ arguments are not responsive to the Examiner’s rejection.
Specifically, the Examiner relies on Nebrigic, not Haller, for disclosing
discharging a capacitor CF to provide a current. Final Act. 3 (citing Nebrigic
21:61–22:8); see also Ans. 4. The Examiner relies on Haller, not Nebrigic,
for disclosing actuating a shape memory alloy (SMA) element in response to
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Application 12/841,998

4
a charge being applied. Ans. 4 (citing Haller 6:18–21, 25–29; Figure 3).
Thus, the Examiner finds the combination of Nebrigic and Haller teaches
that a capacitor is discharged to provide a current to actuate an SMA
element. Final Act. 3–4; see also Ans. 3–4. Thus, Appellants’ arguments
are not persuasive, at least, because they do not address the Examiner’s
reliance on the disclosures of each reference. Furthermore, Appellants
improperly attack the references individually though the rejection is based
on the combined teachings. See, e.g., In re Keller, 642 F.2d 413 (CCPA
1981); In re Merck, 800 F.2d 1091 (Fed. Cir. 1986).
Furthermore, the Examiner correctly notes the SMA is not recited as
an element of claim 1 and, instead, recites only that the power supply is
discharged to provide current to actuate an SMA. Ans. 3. Thus, the SMA
recitation could be viewed as merely a recitation of an intended use or
purpose in discharge of the power supply. Our reviewing court guides, “[a]n
intended use or purpose usually will not limit the scope of the claim because
such statements usually do no more than define a context in which the
invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). However, the
Examiner further explains, even if the SMA is deemed a limitation of the
claim, Haller teaches alternative embodiments utilizing an SMA in place of
a piezo-electric membrane. Ans. 3–4 (citing Haller 6:18–21, 6:25–29).
Thus, Haller expressly discloses use of an SMA.
Appellants further contend “Nebrigic’s capacitor CF would be unable
to actuate Haller’s membranes, because Nebrigic’s capacitor CL would
attract the current released by the capacitor CF, thus blocking the flow of
current to the membranes.” App. Br. 7 (citing Nebrigic 5:28–40).
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Application 12/841,998

5
We remain unpersuaded of Examiner error. It is well settled that mere
attorney arguments and conclusory statements, which are unsupported by
factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984). Attorney argument is not evidence. In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974). Nor can such argument take the place of
evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782
(CCPA 1977). Appellants provide only unsupported assertions but fail to
identify persuasive evidence that Nebrigic’s capacitor CL would attract the
current released by the capacitor CF, thus blocking the flow of current to the
membranes. Therefore, we are not persuaded by Appellants’ arguments that
the proposed combination of Nebrigic and Haller would render Nebrigic
inoperable. Furthermore, we remind Appellants that the determination of
obviousness does not demand bodily incorporation of one reference into
another, but, instead, the test is what would be suggested to the ordinary
skilled artisan by the combined teachings. Keller, 642 F.2d at 425.
Furthermore, the Examiner finds Nebrigic discloses discharging its
capacitor CF to apply current to a load (e.g., CL) and, thus, in the proposed
combination, Haller’s membrane is an analogous load that may receive
current from the discharge of Nebrigic’s CF. Ans. 4. The Examiner further
finds. Nebrigic’s CL, in the proposed combination, is merely an intermediate
component that transfers energy from CF to a load — i.e., to Haller’s
membrane as a load. Ans. 5.
Appellants also argue “it is difficult to understand why one of
ordinary skill in the art would combine a dynamically regulated charge
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pump power converter with a shape memory alloy element other than by
resorting to hindsight bias.” Reply Br. 4.
We remain unpersuaded of Examiner error. The Examiner finds “[a]t
the time of invention, it would have been obvious to a person of ordinary
skill in the art to include a shape memory alloy element with the device of
Nebrigic, as did Haller, so that energy in the system could be conserved
which would prolong battery life.” Final Act. 4. Thus, we find the
Examiner has articulated a reason (prolong battery life), based on rational
underpinnings, for the proposed combination discussed supra, and
Appellants have not persuaded us that the Examiner erred in articulating the
motivation. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
In view of the above discussion, we are not persuaded the Examiner
erred in rejecting independent claim 1. Appellants present similar arguments
regarding independent claim 19 (App. Br. 8–10) and for the same reasons as
claim 1, we are not persuaded of Examiner error. Thus, we sustain the
rejection of: (1) independent claim 1; (2) independent claim 19; and (3)
dependent claims 2–10, 12, 20, 21, and 27–29, not separately argued with
particularity (App. Br. 7, 10).

Claim 11
Claim 11 depends from claim 1 and further recites “the SMA element
comprises a plurality of SMA wires extending along one another, or at least
one SMA wire that winds back and forth.” Appellants argue “Haller
discloses membranes 40 and 41, rather than wires.” App. Br. 8 (citing
Haller 6:54–67; Figure 3).
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We are not persuaded by Appellants’ argument. The Examiner finds
Haller’s shape memory alloy membranes 40 and 41 are not limited in size or
shape. Ans. 5 (citing Figure 3). Further, the Examiner finds that “depending
on the application in which they are used . . . wires are not inherently
cylindrical (they can be flat or a variety of other shapes).” Ans. 5–6
(emphasis added). Appellants fail to address these findings or otherwise
provide sufficient evidence or reasoning supporting an interpretation of the
disputed SMA wires that rebut the Examiner’s findings regarding Haller
disclosing such SMA wires. Therefore, in the absence of sufficient
substantive rebuttal, we agree with the Examiner’s findings that Haller’s
shape memory alloy membranes 40 and 41 teach or suggest the disputed
SMA wires of claim 11.

DECISION
For the above reasons, the Examiner’s decision rejecting claims 1–12,
19–21, and 27–29 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED