Ex Parte Chan et al

Patent Trial and Appeal BoardAug 28, 2014

11788394 (P.T.A.B. Aug. 28, 2014)

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. 11/788,394 04/18/2007 Alistair K. Chan 0606-006-003-000000 5235 44765 7590 08/28/2014 THE INVENTION SCIENCE FUND CLARENCE T. TEGREENE 11235 SE 6TH STREET SUITE 200 BELLEVUE, WA 98004 EXAMINER JONAITIS, JUSTIN M ART UNIT PAPER NUMBER 3752 MAIL DATE DELIVERY MODE 08/28/2014 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 ALISTAIR K. CHAN, RODERICK A. HYDE, NATHAN P. MYHRVOLD, CLARENCE T. TEGREENE, and LOWELL L. WOOD JR. ____________ Appeal 2012-004820 Application 11/788,3941 Technology Center 3700 ____________ Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and BART A. GERSTENBLITH, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 76–80, 97, 99, 101–105, 109–112, 122, 124, 125, and 127. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to the Appellants, “[t]he real party in interest is Searete, LLC in Bellevue, WA.” Appeal Br. 1. Appeal 2012-004820 Application 11/788,394 2 Claimed Subject Matter Claims 76 and 122 are the independent claims on appeal. Claim 76, reproduced below, is illustrative of the subject matter on appeal. 76. A method of providing a payload to an altitude, comprising: coupling a payload to and adjacent an elongated member, the elongated member coupled to the surface of the Earth and extending skyward from the surface of the Earth; and generating a lifting force by a carrier external to and coupled to the elongated member to aid in extending the elongated member into the atmosphere to a substantially high altitude. Rejections I. Claims 76, 78–80, 101, 102, 109, 110, and 119–121 are rejected under 35 U.S.C. § 102(b) as anticipated by Badesha (US 2002/0167702 A1, pub. Nov. 14, 2002). II. Claims 76, 77, 97, 99, 101, 102, 105, and 111 are rejected under 35 U.S.C. § 102(b) as anticipated by Redford (US 6,241,160 B1, iss. June 5, 2001). III. Claims 122, 124, 125, and 127 are rejected under 35 U.S.C. § 102(b) as anticipated by Sulger (US 3,062,488, iss. Nov. 6, 1962).2 IV. Claims 103 and 104 are rejected under 35 U.S.C. § 103(a) as unpatentable over Redford. V. Claim 112 is rejected under 35 U.S.C. § 103(a) as unpatentable over Badesha. 2 The Examiner and Appellants refer to this reference as “Sluger,” which appears to be a typographical error. See, e.g., Ans. 6; Appeal Br. 8. Appeal 2012-004820 Application 11/788,394 3 ANALYSIS Rejections I and V Claims 76, 78–80, 109, 110, 112, and 119–121 The Appellants argue that the Examiner’s determination that Badesha anticipates claim 76 is in error. See Appeal Br. 5; Reply Br. 1–2. The Appellants’ argument is unpersuasive. The Examiner finds that Badesha discloses, “coupling a payload to and adjacent an elongated member,” as recited in claim 76. Appeal Br., Claims App.; see Ans. 4. More specifically, the Examiner finds Badesha’s payload 30 constitutes the claimed payload and tether 12 constitutes the claimed elongated member. See Ans. 4. In other words, the Examiner finds that Badesha evidences coupling payload 30 to and adjacent tether 12. The Appellants contend that the Examiner’s application of Badesha’s disclosure to the above-mentioned limitation of claim 76 implies an unreasonable construction of the term “coupling.” See Appeal Br. 5. The Appellants assert that Badesha’s payload 30 has no relationship with tether 12, rather payload 30 is on top of balloon 10, which the Examiner finds constitutes the claimed carrier. See Appeal Br. 5, Reply Br. 2. The Appellants’ contention is unpersuasive. We note that Appellants’ dependent claim 110, which depends directly from claim 76 recites, “wherein the payload is coupled to the elongate member via an intermediate structure between the payload and the elongate member.” Appeal Br., Claims App. (emphases added). Accordingly, in light of claim 110, the term “coupling” in claim 76 includes, within its broadest reasonable interpretation, coupling a payload and an elongate member via an intermediate structure. In this case, Badesha’s Appeal 2012-004820 Application 11/788,394 4 payload 30 is coupled to tether 12 via balloon 10, which is an intermediate structure between payload 30 and tether 12. See Ans. 4; see also Badesha, fig. 2. The Appellants also contend that the Examiner’s application of Badesha’s disclosure to the above-mentioned limitation of claim 76 implies an unreasonable construction of the term “adjacent.” See Appeal Br. 5. The Appellants assert that their “payload is desired to be coupled adjacent the elongated member, along its length.” Appeal Br. 5. The Appellants’ contention is unpersuasive. At the outset, we note that the claim does not require the payload to be coupled adjacent the elongated member, along its length. See Ans. 8 (emphasis added). We also note that the Appellants’ Specification lacks an explicit definition of the term “adjacent.” The Examiner offers two definitions of the term “adjacent.”3 Answer 9. One of the definitions offered by the Examiner is “not distant (nearby),” which we determine is included in the broadest reasonable interpretation of the term consistent with the Specification as understood by one having ordinary skill in the art. Turning to the Examiner’s rejection, the Examiner finds that Badesha’s payload 30 is nearby the end of the tether 12. See Ans. 9. We agree. For the foregoing reasons, the Examiner’s finding that Badesha evidences coupling payload 30 to and adjacent tether 12 is adequately supported. 3 The Examiner cites to Merriam-Webster Dictionary. See http://www.merriam-webster.com/dictionary/adjacent (last visited Aug. 20, 2014). Appeal 2012-004820 Application 11/788,394 5 Thus, the rejection of claim 76 as anticipated by Badesha is sustained. The Appellants do not separately argue the rejection of claims 78–80. As such, the rejection of claims 78–80 as anticipated by Badesha is sustained. Further, the Appellants do not provide a separate heading or a separate argument for the rejection of claims 109, 110, and 119–121 as anticipated by Badesha. As such, the rejection of claims 109, 110, and 119–121 as anticipated by Badesha is sustained. Claim 101 Claim 101 directly depends from claim 76 and recites, “wherein the carrier comprises at least one lifting surface.” Appeal Br., Claims App. The Examiner finds Badesha’s balloon 10 constitutes the claimed carrier, and that the walls of the balloon constitute the claimed lifting surface. See Ans. 5. The Appellants contend that “[t]he carrier in Badesha . . . is a balloon and Badesha . . . does not contemplate an addition of a lifting surface that generates aerodynamic lift for aiding in the support of the elongated member.” Appeal Br. 5–6 (emphasis added). The Appellants assert “[i]f any surface on any carrier could be interpreted as a lifting surface, there would be no claim differentiation between claim 101 and independent claim 76.” Appeal Br. 6. The Appellants’ contention is unpersuasive because it is not commensurate in scope with claim 101. Put simply, claim 101 does not require the carrier to be a separate surface from the lifting surface. Rather, claim 101 recites that the carrier “comprises,” i.e., includes, “at least one lifting surface.” In this case, balloon 10 includes a lifting surface, i.e., the walls of balloon 10. Appeal 2012-004820 Application 11/788,394 6 Thus, the rejection of claim 101 as anticipated by Badesha is sustained. Claim 102 Claim 102 directly depends from claim 76 and recites, “wherein the carrier comprises an orbital anchor.” Appeal Br., Claims App. The Examiner finds balloon 10 “act[s] like an orbital anchor” because it “orbits over both the earth and elongated member[, i.e., tether 12,] to keep it in the air.” Ans. 5. The Appellants contend balloon 10 is not an orbital anchor because “[a]n orbital anchor implies a spaceborne carrier in which centrifugal force of the anchor substantially counteracts the weight of the structure and payload.” Appeal Br. 6. The Appellants’ contention is persuasive. In response to the Appellants’ contention the Examiner finds Badesha’s balloon is in “a relatively geosynchronous orbit above the earth with respect to the tether in which it is attached.” Ans. 10. However, this finding is not supported with adequate evidence or technical reasoning because there appears to be a lack of support for finding: that balloon 10 is in “a relatively geosynchronous orbit;” and that balloon 10 can function as an orbital anchor. As for the Examiner’s explanation concerning the election of “Figure 6[,] which only depicts the balloons providing the force to hold the structure aloft” (Ans. 10) the continued prosecution of claim 102, rather than being withdrawn by the Examiner, does not act as support for evidencing a finding of inherency or an admission by the Appellants that all balloons can act as orbital anchors. Appeal 2012-004820 Application 11/788,394 7 Thus, the rejection of claim 102 as anticipated by Badesha is reversed. Claim 112 Claim 112 directly depends from claim 76 and recites, “wherein the payload comprises an electromagnetic transmitter.” Appeal Br., Claims App. The Appellants contend Badesha “provides no logical rationale for using an electromagnetic transmitter” because Badesha “is concerned with line of sight optical communications.” Appeal Br. 9. The Appellants’ contention is unpersuasive because, as pointed out by the Examiner, Badesha is not relied upon to disclose or suggest the use of an electromagnetic transmitter. See Ans. 13. Rather, the Examiner finds Bahesda fails to disclose its payload including an electromagnetic transmitter, but takes Official Notice that “electromagnetic transmitters are conventional or well-known devices or methods for transmitting and receiving a communication signal.” Ans. 8. The Examiner concludes, “it would have been obvious to a person having ordinary skill in the art to use an electromagnetic transmitter with the device disclosed by Badesha in order to send and receive communications.” Ans. 8. Thus, the rejection of claim 112 as unpatentable over Bahesda is sustained. Rejections II and IV The Appellants argue that the Examiner’s determination that Redford anticipates claim 76 is in error. See Appeal Br. 6–7. The Appellants’ argument is persuasive. Appeal 2012-004820 Application 11/788,394 8 Claim 76 recites, “the elongated member coupled to the surface of the Earth and extending skyward from the surface of the Earth.” Appeal Br., Claims App. (emphasis added). The Examiner finds that Redford’s air transportation means 40 constitutes the claimed elongated member. See Ans. 6, 10. However, the Appellants point out that Redford’s air transportation means 40 fails to extend skyward from the surface of the Earth because Redford’s air transportation means 40 must touch the ground to extend skyward from the surface of the Earth and it does not do so. Although vertical cable 102 extends from the surface of the Earth, air transportation means 40 does not. See Appeal Br. 6. Thus, the rejection of claim 76, and claims 77, 97, 99, 101, 102, 105, and 111, which depend from claim 76, as anticipated by Reford is reversed. For similar reasons, the rejection of claims 103 and 104, which depend from claim 76, as unpatentable over Reford is reversed. Rejection III The Appellants argue that the Examiner’s finding that Sulger’s stop 17 constitutes a “platform,” as required by claim 122, is unreasonable. Appeal Br. 8. The Appellants’ argument is unpersuasive. The Appellants contend that “[i]n paragraphs [0036] and [0039] of Appellants’ Specification, platforms are described as launching platform 430 and platform 490 for other recreational activities, thus it was contemplated that platform would be at least big enough to accommodate a person atop it.” Appeal Br. 8; see also Reply Br. 4. However, as pointed out by the Examiner, neither claim 122 nor the Specification requires an interpretation of the term “platform” to be big enough to accommodate a person atop it. Appeal 2012-004820 Application 11/788,394 9 See Ans. 12. Further, the Specification at paragraph 36 suggests that a platform may be a launching platform, which launches, among other things, unmanned vehicles, balloons, and bombs. Notably, unmanned vehicles, balloons, and bombs do not require a person to be atop a platform to be launched. As such, the Appellants’ contention is unpersuasive. The Appellants also contend that the claimed term “platform” does not read on Sulger’s stop 17 because it is referred to as a “stop” and is “designed to stop any further sliding of kite line traveler 2 up the line.” Reply Br. 4. The Appellants’ contention is unpersuasive. Merely, because a structure is referred to and functions as a stop does not mean that it does not meet the structural characteristics of the claimed platform. See also Ans. 12–13. As such, the Appellants’ contention is unpersuasive. Thus, the rejection of claim 122 as anticipated by Sulger is sustained. The Appellants do not separately argue the rejection of claims 124, 125, and 127. As such, the rejection of claims 124, 125, and 127 is sustained. DECISION We AFFIRM the rejections of: claims 76, 78–80, 101, 109, 110, and 119–121 under 35 U.S.C. § 102(b) as anticipated by Badesha; claims 122, 124, 125, and 127 under 35 U.S.C. § 102(b) as anticipated by Sulger; and claim 112 under 35 U.S.C. § 103(a) as unpatentable over Badesha. We REVERSE the rejections of: claim 102 under 35 U.S.C. § 102(b) as anticipated by Badesha; claims 76, 77, 97, 99, 101, 102, 105, and 111 under 35 U.S.C. § 102(b) as anticipated by Redford; and claims 103 and 104 under 35 U.S.C. § 103(a) as unpatentable over Redford. Appeal 2012-004820 Application 11/788,394 10 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). AFFIRMED-IN-PART Klh