Ex Parte Santoro

Patent Trial and Appeal Board

Jun 7, 2016

12695684 (P.T.A.B. Jun. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/695,684 01/28/2010
80711 7590
BGL/ Ann Arbor
524 South Main Street
Suite 200
Ann Arbor, MI 48104
06/08/2016
FIRST NAMED INVENTOR
Stephen P. Santoro
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.
14140-4 8432
EXAMINER
BEEBE, JOSHUA R
ART UNIT PAPER NUMBER
3745
MAILDATE DELIVERY MODE
06/08/2016 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 STEPHEN P. SANTORO
Appeal 2014-004838
Application 12/695,684
Technology Center 3700
Before JAMES P. CALVE, AMANDA F. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stephen P. Santoro ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's final rejection of claims 1-7, 9-15, and 17-20. 1 We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION under
37 C.F.R. § 41.50(b).
1 Claims 8 and 16 have been cancelled. Appeal Br. 2.
Appeal2014-004838
Application 12/695,684
CLAIMED SUBJECT MATTER
The invention concerns an energy conversion system. Spec.,
Abstract. Claim 1 is illustrative of the subject matter on appeal, and recites:
1. An energy conversion system for converting energy of a
naturally occurring air flow into output power, said system
compnsmg:
an accelerator plate that has:
a leading edge; and
an upper surface,
said upper surface of the accelerator plate has a
configuration that receives a naturally occurring air flow
upstream of the leading edge and compresses the air flow at a
ratio of 5: 1 as the airflow moves across the upper surface of the
accelerator plate from the leading edge to a rear portion of the
accelerator plate so as to form a vortex at the rear portion of the
accelerator plate,
said configuration of said accelerator plate consists of:
a first substantially linearly portion that is inclined
upward beginning from the leading edge for a distance; and
a second cuP1ed portion that extends bet\~1een the
first portion and the trailing edge and has a gradually increasing
inclined shape,
said energy conversion system further comprising
a turbine having turbine blades positioned at the rear
portion of the accelerator plate to rotate in the vortex created by
the accelerator plate.
Appeal Br., Claims App. (emphasis added). Independent claims 9 and 17
contain the same language as emphasized in claim 1. Id.
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Appeal2014-004838
Application 12/695,684
REJECTION
Claims 1-7, 9-15, and 17-20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Gran (US 705,922, iss. July 29, 1902) and Brill (US
6,481,957 Bl, iss. Nov. 19, 2002). 2
ANALYSIS
Obviousness over Gran and Brill
Claims 1-7, 9-15, and 17-20
Because we determine that claims 1-7, 9-15, and 17-20 are
indefinite, as discussed below, we reverse the Examiner's rejection under
35 U.S.C. § 103(a), as any analysis of the prior art would involve a
speculative interpretation of the claims. See In re Wilson, 424 F.2d 1382,
1385(CCPA1970); In re Steele, 305 F.2d 859, 862---63(CCPA1962)
(determinations as to obviousness cannot be made for indefinite claims).
New Ground of Rejection under 35 US. C. § 112, Second Paragraph
Claims 1-7, 9-15, and 17-20
Pursuant to our authority under 3 7 C.F .R. § 41. 50(b ), we enter a new
ground of rejection of claims 1-7, 9-15, and 17-20 under 35 U.S.C. § 112,
second paragraph, as indefinite.
Independent claims 1, 9, and 17 each recite that an accelerator plate
"compresses the air flow at a ratio of 5: 1 as the airflow moves across the
upper surface of the accelerator plate." Appeal Br., Claims App. We
determine that a person of ordinary skill in the art would not understand the
metes and bounds of this claim language, when read in light of the
2 The heading of the Examiner's rejection lists claim 16 among the rejected
claims; however, claim 16 has been cancelled. Final Act. 3-12; Appeal Br.
2. This appears to be a typographical error.
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Appeal2014-004838
Application 12/695,684
specification. See Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875
(Fed. Cir. 1993).
Appellant identifies the Abstract (at lines 7-10) and the Specification
(at page 6, lines 7-12) as describing this claim limitation. Appeal Br. 2-5
("Summary of Claimed Subject Matter"). These portions of Appellant's
Specification disclose that the shape of the claimed accelerator plate "causes
the fluid flow to increase up to five times and [sic] before turbulence is
created." Spec., Abstract, 6:9-11 (disclosing that the shape "increases wind
flow speed"). Therefore, these portions of the Specification suggest that the
claimed compression refers to a change in wind flow speed. See also id. at
8:20-9:6.
However, Figures 3A--4 of Appellant's Specification suggest that the
claimed compression refers to a reduction in air volume over a cross-
sectional flow path, not a change in wind flow speed. For example,
Appellant's Figure 3A appears to depict five numbered "rows" of air
converging together before being directed to turbine 5.
Figures 3A--4 are consistent with Appellant's arguments in the Appeal
Brief, wherein Appellant contends "[t]he compression of the airflow
necessarily occurs over the distance between where the natural parallel
airflow streams begin to become deflected to where the compressed airflow
impinges on the turbine." Appeal Br. 12-13. Moreover, in the Appeal
Brief, Appellant purports to calculate compression ratio as a function of
volume, identifying "the height of area at which the airflow impinges on the
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Appeal2014-004838
Application 12/695,684
turbine" and transposing that height "to the point where the airflow departs
from a natural parallel flow" to determine the ratio. Id. at 13-14, Ex. A. 3
In light of these conflicting disclosures, we determine that a person of
ordinary skill in the art would not be apprised of the scope of Appellant's
claims 1, 9, or 1 7, because it is unclear whether the claimed "compress [ion
of] the air flow at a ratio of 5: 1" refers to a change in wind flow speed or a
change in volume. Accordingly, we enter a new ground of rejection under
35 U.S.C. § 112, second paragraph, for independent claims 1, 9, and 17.
Dependent claims 2-7, 10-15, and 18-20 incorporate the indefiniteness of
the independent claim from which they depend, and are likewise rejected.
DECISION
The rejection of claims 1-7, 9-15, and 17-20 as unpatentable under
35 U.S.C. § 103(a) is REVERSED.
We enter a NEW GROUND OF REJECTION for claims 1-7, 9-15,
and 17-20 under 35 U.S.C. § 112, second paragraph, as indefinite.
This decision contains a new ground 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
3 We note that when Appellant's method of calculating compression ratio is
applied to Appellant's own Figure 3A, the result is a compression ratio of
approximately 5:2, not 5:1. See Appeal Br. 13-14.
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Appeal2014-004838
Application 12/695,684
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.
REVERSED; 37 C.F.R. § 41.50(b)
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