Ex Parte Sharon et al

Patent Trials and Appeals Board

Jun 21, 2018

14623876 - (D) (P.T.A.B. Jun. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/623,876 02/17/2015 Andre Sharon
69713 7590 06/25/2018
OCCHIUTI & ROHLICEK LLP
321 Summer St.
Boston, MA 02210
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.
40052-002002 9307
EXAMINER
GIRARDI, VANESSA MARY
ART UNIT PAPER NUMBER
2833
NOTIFICATION DATE DELIVERY MODE
06/25/2018 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):
INFO@ORPATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDRE SHARON, HOLGER WIRZ, JOHN C. BRIGGS,
WILLIAM HARTMAN, and FRITZ KLOCKE
Appeal2017-008988
Application 14/623,876
Technology Center 2800
Before JAMES C. HOUSEL, MONTE T. SQUIRE, and
JANEE. INGLESE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision finally rejecting claims 1-5, 7, and 10-13. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision refers to the Specification (Spec.) filed February 17, 2015, the
Examiner's Final Office Action (Final) dated July 6, 2016, Appellant's
Appeal Brief (Appeal Br.) filed February 14, 2017, the Examiner's Answer
(Ans.) dated April 5, 2017, and Appellant's Reply Brief (Reply Br.) filed
June 5, 2017.
2 Appellant is the Applicant, Fraunhofer USA, Inc., Center for
Manufacturing Innovation (CMI), which is identified as the real party in
interest. Appeal Br. 1.
Appeal2017-008988
Application 14/623,876
STATEMENT OF THE CASE
The invention relates to a system for wave energy harvesting
employing transport of stored energy (Spec. 1: 1-2).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitation at issue
is italicized.
1. A floating wave energy harvesting apparatus, comprising:
a water vessel configured for floating in a body of water
and/or traveling under power; and
a wave energy conversion apparatus mechanically
coupled to the water vessel, the wave energy conversion
apparatus configured to harvest energy from wave activity in
the body of water;
an onboard load configured to receive the harvested
energy in a form suitable for consumption by the onboard load;
and
an energy storage apparatus configured to receive the
harvested energy from the wave energy conversion apparatus,
to store the harvested energy, and to provide at least some of
the harvested energy to the onboard load in the form suitable
for consumption by the onboard load.
Independent claim 10 recites a method of operating a floating wave
energy harvesting apparatus including a wave energy conversion apparatus
mechanically coupled to a water vessel with an onboard load, the method
comprising causing the vessel to travel under power to a wave energy
harvesting location where wave energy is harvested and consumed by the
onboard load.
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection under 35 U.S.C. § 103(a):
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Application 14/623,876
1. Claims 1--4 and 10-13 as unpatentable over Kombluh 3 in view
of Weldon· 4, 5 and
'
2. Claims 5 and 7 as unpatentable over Kombluh in view of
Weldon, and further in view of Smith. 6
ANALYSIS
The dispositive issue before us in this appeal is whether Appellant has
identified reversible error in the Examiner's conclusion that it would have
been obvious to modify Kombluh to travel under power as taught by
Weldon "for the purpose of moving an energy producing vessel anywhere in
the world where such a need exists" (Final 4 ). After review of the opposing
positions articulated by Appellant and the Examiner, the applied prior art,
and Appellant's claims and Specification disclosures, we determine that the
Appellant's arguments are insufficient to identify reversible error in the
Examiner's obviousness rejections. In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011 ). Accordingly, we affirm the stated obviousness rejections based
substantially on the fact findings and for the reasons set forth by the
3 Kombluh et al., US 7 ,53 8,445 B2, issued May 26, 2009 ("Kombluh").
4 Weldon, US 2008/0018114 Al, published January 24, 2008.
5 Although the Examiner's statement of this rejection did not include claims
10-13 in the listing of claims, or in the body of the rejection, the Examiner,
after the second rejection, states "[t]he same reasoning applied in the
rejection of apparatus claims 1-7, mutatis mutandis, applies to the subject-
matter of method Claims 10-13, given the apparatus is considered
inseparable from the method of using the apparatus." Final 6. Because
Appellant understands that method claims 10-13 are included in the
rejection of apparatus claims 1--4 (Appeal Br. 5), we have corrected the
Examiner's listing of claims accordingly.
6 Smith, US 2008/0122225 Al, published May 29, 2008. The Examiner
relies, without objection, on the patent issuing from this patent application,
US 7,808,120 B2, issued October 5, 2010, "for citation purposes." Final 5.
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Application 14/623,876
Examiner in the Examiner's Answer and the Final Office Action. We add
the following for emphasis only.
Appellant provides the same argument for independent claims 1 and
10, and does not otherwise argue the claims or rejections separately.
Accordingly, we select claim 1 to address Appellant's argument, and
remaining claims 2-5, 7, and 10-13 stand or fall with this claim. 37 C.F.R.
§ 41.37(c)(l)(iv) (2016).
The Examiner finds Kombluh discloses a floating wave energy
harvesting apparatus as recited in claim 1, except for the apparatus
"traveling under power" (Final 3). The Examiner finds, however, Weldon
teaches a floating wave energy harvesting apparatus that travels under power
(id. at 4). The Examiner concludes that it would have been obvious to
modify Kombluh's apparatus such that it travels under power "for the
purpose of moving an energy producing vessel anywhere in the world where
such a need exists" (id.).
Appellant argues that there would be no motivation to modify
Kombluh according to the teaching of Weldon (Appeal Br. 6). Appellant
contends that there would be no motivation for a person of ordinary skill in
the art to modify Kombluh' s marine device to travel under its own power
according to the teaching of Weldon (id.). In particular, Appellant asserts
that Kombluh describes a buoy which is remotely implemented for
navigation purposes and is not intended to travel, much less travel under
power, but to be moored in a single location (id.). Moreover, Appellant
urges that Kombluh's navigational buoy requires it to be anchored or
moored in order to harvest energy (id. at 7). To modify Kombluh's
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Application 14/623,876
navigational buoy to travel under power, according to Appellant, would run
counter to its purpose (id.).
Moreover, Appellant argues that the Examiner has interpreted
"traveling under power" to include any way of arriving at a location in a
body of water, including using Weldon's vessel to tow Kombluh's buoy to a
desired location (Reply Br. 2-3). Appellant asserts this interpretation
presents a new ground of rejection and, therefore, requests that prosecution
be reopened (id. at 3). Appellant further contends that this interpretation is
inconsistent with the terminology used in common nautical practice (id.).
Initially, we note that the matter as to whether the Examiner's alleged
interpretation is both new and presents a new ground of rejection such that
prosecution is reopened is a matter properly raised by way of a petition to
the Director under 3 7 C.F .R. § 1.181. See 3 7 C.F .R. § 41.40( a) and MPEP
§ 1207 .03(b ). Petitionable matters are not appealable to the Patent Trial and
Appeal Board. In re Berger, 279 F.3d 975, 984--985 (Fed. Cir. 2002) (citing
In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)). Further, we need not
address whether the recitation, "a water vessel configured ... for traveling
under power," in claim 1, may be properly interpreted, under the broadest
reasonable interpretation standard, to include a water vessel that may be
towed or pushed by another apparatus that is powered.
Instead, adopting Appellant's interpretation that the recitation requires
that the water vessel be configured to travel under its own power, we are not
persuaded that the Examiner's rejection contains harmful error. We note
Appellant does not challenge the Examiner's finding that Weldon teaches a
floating wave energy harvesting apparatus including a water vessel
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Application 14/623,876
configured to travel under its own power. 7 Instead, Appellant's argument
focuses on Kombluh's disclosed buoy as a marine device, without
considering the other marine devices Kombluh teaches. For example,
Kombluh discloses that the floating wave energy harvesting apparatus may
be any floating marine device including a marine generator deployed
specifically for electrical energy production (Kombluh 18:27-34, 22:8-12).
Such a marine generator may be located near a shore or an island to supply
energy to installations on shore, near the shore, or on seawall and
breakwaters (id. at 18:34--43).
Weldon similarly discloses that the floating vessel can be used to
produce electricity anywhere in the world where there is some water wave
action, including isolated islands and communities on land near the ocean
(Weldon i-f 35). Accordingly, the teachings ofKombluh and Weldon
provide sufficient support for the Examiner's stated motivation ("for the
purpose of moving an energy producing vessel anywhere in the world where
such a need exists" (Final 4; Ans. 4)) for the modification of Kombluh's
apparatus to be configured for traveling under power.
Moreover, Appellant fails to respond to the Examiner's findings that,
even as a navigational buoy, Kombluh's marine device must be deployed at
a selected location and must occasionally be moved (see Ans. 5). Such
deployment and occasional movement is consistent with both Kombluh's
disclosure of deployment of other floating marine devices such as a marine
7 We note that Weldon also teaches the apparatus may use some of the
electricity generated by waves to perform a variety of on board functions
and, therefore, includes an on board load. Weldon i-f 3 7.
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Application 14/623,876
generator and Weldon's disclosure of deployment of the floating vessel to a
location where electricity is needed.
After review of the opposing positions articulated by Appellant and
the Examiner, the applied prior art, and Appellant's claims and Specification
disclosures, we determine that the Appellant's arguments are insufficient to
identify reversible error in the Examiner's obviousness rejections. Jung, 637
F.3d at 1365. Accordingly, we affirm the stated obviousness rejections for
substantially the fact findings and the reasons set forth by the Examiner in
the Examiner's Answer and the Final Office Action.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Final Office Action and the Examiner's Answer, the decision of the
Examiner rejecting claims 1-5, 7, and 10-13 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kombluh and Weldon, alone or further
in view of Smith, 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)(l ).
AFFIRMED
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