Ex Parte Moon

Patent Trial and Appeal Board

Jun 6, 2018

13502932 (P.T.A.B. Jun. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/502,932 08/01/2012
23405 7590 06/07/2018
HESLIN ROTHENBERG FARLEY & MESITI PC
5 COLUMBIA CIRCLE
ALBANY, NY 12203
Francis C. Moon
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.
3193.4937A 7876
EXAMINER
NGUYEN, VIET P
ART UNIT PAPER NUMBER
2831
MAILDATE DELIVERY MODE
06/07/2018 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 FRANCIS C. MOON 1
Appeal2017-007675
Application 13/502,932
Technology Center 2800
Before ROMULO H. DELMENDO, MONTE T. SQUIRE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter "Appellant")2 appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner's final decision to reject claims 16, 21-
26, 28-30, and 32--49. 3 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 A Communication to Correct Inventorship (naming two additional
inventors) was filed October 28, 2014, but it does not appear that this request
was considered and granted.
2 The Appellant identifies the real party in interest as "Cornell University"
(Appeal Brief filed December 8, 2016, hereinafter "Appeal Br.," 3).
3 Appeal Br. 13-72; Reply Brief filed April 24, 2017, hereinafter "Reply
Br.," 1-13; Final Office Action entered June 8, 2016, hereinafter "Final
Act.," 2-35; Examiner's Answer entered February 22, 2017, hereinafter
"Ans.," 2-11.
Appeal2017-007675
Application 13/502,932
I. BACKGROUND
The subject matter on appeal relates to systems for harvesting and
converting energy into electrical energy such as a system for converting
wind energy to electrical energy using mechanical vibration (Specification
filed April 19, 2012, hereinafter "Spec.," i-fi-12, 25; Abstract). Figure 1 is
reproduced from the application as follows:
y
~x
z
fffi 1
Figure 1 above depicts an exemplary harvesting device 100 in accordance
with the Appellant's invention, wherein the device 100 includes: a vibrating
or oscillator element 102 that includes a body 104 with a blunt-body portion
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106 and a flexible structure 108 with a first end 110 to which a blunt-body
portion 106 is secured and a second end 112 that is coupled to a frame 113,
which is configured to be secured or attached to a structure 116 (e.g., a part
of a house) to expose the oscillator element 102 to a moving fluid 118; and
an energy converter 122 comprising a first converter device 124 and a
second converter device 128 configured to modify an input 126 to generate
an output 130, which is coupled to an external device such as a load 134 or a
storage device (e.g., a battery or capacitor) 136 (id. i-f 26).
Representative claim 16 is reproduced from the Claims Appendix to
the Appeal Brief (Appeal Br.), with key limitations emphasized, as follows:
16. A system, comprising:
an array of energy harvesting devices;
wherein an energy harvesting device of the array
includes an energy converter, the energy converter
configured to convert mechanical vibratory motion into
electrical energy; and
wherein the energy harvesting device of the array
has an oscillator element that is configured to vibrate in
response to a moving fluid, the oscillator element having
a flexible structure with a first end on which a blunt body
portion is disposed and a second end fixed in position; and
wherein the blunt body portion includes a two
dimensional cross sectional shape, and wherein a
perimeter of the two dimensional cross sectional shape
includes a first comer and a second comer; and
wherein the oscillator element is configured so
that at wind speeds above a critical wind speed, the
oscillator element goes unstable and vibrates in
accordance with a galloping mode of operation.
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Application 13/502,932
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains rejections under: 35 U.S.C. § 112,
i-f 2, of claims 39 and 41 as indefinite; 35 U.S.C. § 103(a) of claims 16, 22,
24--26, 29, 30, 32, 37, 40, 42--44, and 46--48 as unpatentable over Kolm et
al. 4 (hereinafter "Kolm") in view of Camey; 5 and, additionally on multiple
35 U.S.C. § 103(a) grounds, of claims 21, 23, 28, 33-36, 38, 39, 41, 45, and
49 as unpatentable over Kolm, Camey, and one or more additional prior art
references (Ans. 2-11; Final Act. 2-35.)
III. DISCUSSION
A. Indefiniteness
1. Claim 39
Claim 39 recites: "The system of claim 16, wherein the difference
between a critical wind speed for one or more of the vibrating elements with
a perturbation and a critical wind speed for one or more of the vibrating
elements without a perturbation is less than about 25 %"(Appeal Br. 76-
77; emphases added).
The Examiner states that claim 3 9 does not satisfy the requirements of
35 U.S.C. § 112, i-f 2, because "it is unclear what the perturbation is" and,
although the Appellant "refers to the term 'kick' and 'perturbation to mean
an arbitrary force[,]' ... it is still unclear where the 'kick' or 'arbitrary
force' comes from" (Final Act. 3). In the Answer (Ans. 10), the Examiner
concludes: "[T]he Appellant still has not clearly defined what causes the
perturbation or kick. There is no structural limitation that is clearly defined
4 US 4,387,318, issued June 7, 1983.
5 US 2008/0048455 Al, published February 28, 2008.
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Application 13/502,932
to cause the perturbation or kick. It is unclear how the perturbation or kick
would interact with the energy harvesting device."
The Appellant contends that the term "'perturbation' is expressly
described in the [S]pecification as a force applied to an oscillator" and "[t]he
meaning of the recitations of claim 3 9 are well understood in the context of
[0072]-[0076] Table 5 and Fig 10" (Appeal Br. 69; see also Reply Br. 12).
The Appellant's argument does not reveal any reversible error in the
Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
"[C]laims are required to be cast in clear-as opposed to ambiguous,
vague, indefinite----terms" as "[i]t is the claims that notify the public of what
is within the protections of the patent, and what is not." In re Packard, 751
F.3d 1307, 1313 (Fed. Cir. 2014). When an examiner provides "a well-
grounded identification of clarity problems" during the examination process,
an applicant must provide a satisfactory response. Id. at 1313-14. The
response must "focus on the claim-language difficulties" and may "propose
clarifying changes or show why, on close scrutiny, the existing claim
language really was as reasonably precise as the circumstances permitted."
Id. at 1314.
Applying these principles, we conclude that the Examiner's rejection
is based on "a well-grounded identification of clarity problems," and the
Appellant's arguments on appeal fail to "show why, on close scrutiny, the
existing claim language really was as reasonably precise as the
circumstances permitted." Id. at 1313-14. Although claim 39 specifies a
difference in critical wind speeds between one or more vibrating elements
with a perturbation and one or more vibrating elements without a
perturbation, neither the claim nor the relied-upon descriptions in the
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Application 13/502,932
Specification and Figure 10 provide any explanation as to the nature and
source of the "perturbation"---e.g., how the perturbation is created or
regulated.
Because the Appellant's argument does not address the Examiner's
concerns-which we find reasonable-in any meaningful way, we sustain
the indefiniteness rejection as maintained against claim 39.
2. Claim 41
Claim 41, which depends from claim 29, recites in relevant part:
"wherein the structure extends substantially parallel to a reference y axis of
an x, y, z reference coordinate system, wherein the blunt body defines a
front face that extends substantially transverse to the reference axis"
(Appeal Br. 77; emphasis added).
The Examiner concludes that claim 41 does not satisfy the
requirements of 35 U.S.C. § 112, i-f 2, because the recitation "the reference
axis" lacks sufficient antecedent basis (Final Act. 3). According to the
Examiner, "it is ... unclear if the reference axis is referring to the x-axis, y-
axis, or z-axis" (Ans. 10).
The Appellant contends that the recitation "a reference y axis"
provides adequate and reasonable antecedent basis for "the reference axis"
(Appeal Br. 70). According to the Appellant, explicit antecedent basis is not
required (Reply Br. 12 (citing, inter alia, MPEP § 2173.05(e)).
Again, we agree with the Examiner. Although the Appellant is
correct that explicit antecedent basis is not required, the language "the
reference axis" in claim 41 is ambiguous because earlier language recited in
the claim ("x, y, z reference coordinate system") reasonably informs one
skilled in the relevant art that other reference axes-i.e., an x reference axis
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and/or a z reference axis-are also possible. If the Appellant intended "the
reference axis" to refer to the "reference y axis," the claim should have been
amended to reflect such an intent to resolve any ambiguity during the
examination process. Packard, 751 F.3d at 1311 ("In the USPTO, an
applicant's 'claim is, or is supposed to be, examined, scrutinized, limited,
and made to conform to what he is entitled to."') internal citation omitted);
id. at 1310, 1314 ("Because Mr. Packard had an opportunity to bring clarity
to his claim language, we affirm the Board's findings as to indefiniteness
under the MPEP [§ 2173.05(e)] standard properly applied by the USPTO,
the standard which we have here approved.").
For these reasons, we also uphold the indefiniteness rejection as
entered against claim 41.
B. Obviousness
The Examiner finds that Kolm describes a generator including most of
the limitations recited in claim 16, but acknowledges the reference "fails to
explicitly disclose wherein the body portion is a blunt body portion and
vibrates in accordance with a galloping mode of operation" (Final Act. 5).
The Examiner finds further, however, that Camey teaches a blunt body
portion that "vibrates in accordance with a galloping mode of operation (due
to the blunt body)" (id. at 6). Based on these findings, the Examiner
concludes that "[i]t would have been obvious to one having ordinary skill in
the art ... to use the teaching of the blunt body portion as disclosed by
Camey to the generator disclosed by Kolm" (id.). According to the
Examiner, "there is no ordinary and customary meaning for the term
'galloping' as the term is only understood by those well beyond one of
ordinary skill in the art" (Ans. 4) and that, during an interview held on April
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12, 2016, "inventor Moon ... admitted that an oscillating blunt body results
in galloping mode, limit cycle instability, and hysteretic behavior" (id. at 5).
The Appellant contends, inter alia, that the term "galloping mode" is
a term that is understood by those of ordinary skill in the art, as evidenced
by the documents identified in the Specification (Appeal Br. 15 (referring to
Spec. i-f 52 [sic, 56])). According to the Appellant, the Examiner ignored
structural limitations expressed in terms of function (i.e., "the oscillator
element is configured so that at wind speeds above a critical wind speed, the
oscillator element goes unstable and vibrates in accordance with a galloping
mode of operation" in claim 16) by relying on purported admissions not
supported by the record (Appeal Br. 16-20). The Appellant argues that
because "the file record does not support the conclusion that the Examiner's
characterization of [the] inventor's purported admissions are accurate and
further given that the Office's inherency positions [as to the disputed
functional limitations] are not supported in any respect[,] the Office has not
presented a prima facie case of obviousness" (id. at 21 ).
We agree with the Appellant that the Examiner's reasoning is not
supported by the relied-upon evidence. Our reasons follow.
Camey, which the Examiner cites for the disputed functional or
operational limitations highlighted above in representative claim 16,
discloses a bluff body coupled to a gyroscopic electrical generator (Camey
Abstract; Fig. 7). Camey teaches that the bluff body consists of a three-
dimensional physical object that obstructs a fluid streamline when placed in
a cross-flowing fluid (id. i-f 12). According to Camey, "[t]he geometry of
such an object would be circular in its most basic exemplary embodiment[,]
although it could be rectangular, triangular, trapezoidal or any other object
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whose geometry is contoured, as has been shown in other similar
constructions" (id.). Additionally, although Camey teaches taking
advantage of von Karman Vortex Street and vortex induced vibrations as
described in the prior art and the disclosed oscillating bodies convert
unidirectional fluid flow into turbulent flow, the reference does not mention
the disputed functional limitations recited in claim 16 above.
To bridge this gap, the Examiner takes the position that the Appellant
has admitted on the record that the disputed functional or operational
limitations are directly attributed to the blunt body characteristic, which is
disclosed in Camey (Ans. 5). That position is not supported. As the
Appellant argues (Appeal Br. 16), the Applicant-Initiated Interview
Summary entered April 21, 2016, which summarizes the discussions held
during an April 12, 2016 telephone interview, does not indicate that the
Appellant admitted all oscillators with a blunt body will inherently or
necessarily go unstable and vibrate in the galloping mode 6 at wind speeds
above a critical wind speed, as required by claim 16.
Contrary to the Examiner's position, the Specification indicates that
factors or variables other than solely the blunt body characteristic (e.g.,
characteristic length) also affect whether the oscillator will operate in the
manner claimed (Spec. i-fi-156---64). Therefore, regardless of the metes and
6 As indicated above, the Examiner states that "there is no ordinary and
customary meaning for the term 'galloping' as the term is only understood
by those well beyond one of ordinary skill in the art" (Ans. 4). The level of
ordinary skill in the art, however, varies depending on the factual
circumstances and could be at a relatively high level. In any event, a
rejection of the claims under the second paragraph of 35 U.S.C. § 112 on the
basis that the recited functional or operational limitations are indefinite,
although possibly viable as discussed in the next footnote, is not before us.
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bounds of "galloping mode of operation," the Examiner's inherency theory
as to the disputed functional or operational limitations is-at most-based
on mere possibilities or probabilities, which is insufficient. See, e.g., In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). 7
Relatedly, the Examiner appears to be taking that the position that a
person of ordinary skill in the art would have optimized certain variables in
the manner claimed (Ans. 7). The Examiner, however, does not direct us to
sufficient evidence that optimization according to Kolm and Camey would
necessarily or inherently result in the functional or operational limitations
recited in claim 16.
Because the Examiner's rejections against all three independent
claims (i.e., claims 16, 29, and 49) are flawed for the same reasons discussed
above, we cannot uphold any of the obviousness rejections.
7 Notwithstanding our ruling that the Examiner's articulated reasoning is
flawed, the term "galloping mode of operation" as recited in independent
claims 16, 29, and 49 may very well be indefinite. Without any reasonably
specific discussion, the Appellant refers to three references on "galloping
dynamics" (Appeal Br. 15). But two of the three documents identified in the
Specification (Spec. i-f 56) do not appear to relate to energy harvesting
systems of the type claimed, and the third-namely, G. V. Parkinson, et al.,
"The Square Prism as an Aeroelastic Non-Linear Oscillator," 17 Quart. J.
Mech. and Applied Mech. 225-239 (1964}-defines "galloping" in purely
relative terms (e.g., "unstable," "small-amplitude," or "large values" as
disclosed on page 225), for which clear bases in the context of the current
invention are not readily apparent. The Specification also appears to be
unhelpful in ascertaining the scope of what constitutes a "galloping mode of
operation" (Spec. i-fi-157---64). On return of the application to the Examiner's
jurisdiction, the Examiner should consider fully whether a rejection under
35 U.S.C. § 112, i-f 2, is warranted on the basis that the scope of "galloping
mode of operation" is unclear.
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IV. SUMMARY
The Examiner's rejection under 35 U.S.C. § 112, i-f 2, of claims 39 and
41 is sustained. The Examiner's rejections under 35 U.S.C. § 103(a) of
claims 16, 22, 24--26, 29, 30, 32, 37, 40, 42--44, and 46--48 is not sustained.
Therefore, the Examiner's final decision to reject claims 16, 21-26, 28-30,
and 32--49 is affirmed as to claims 39 and 41 but reversed as to claims 16,
21-26, 28-30, 32-38, 40, and 42--49.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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