Ex Parte Chir

Patent Trial and Appeal Board

Apr 8, 2016

14240497 (P.T.A.B. Apr. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/240,497 04/01/2014
27049 7590 04/12/2016
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
FIRST NAMED INVENTOR
AdamP. Chir
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.
160656 6273
EXAMINER
NGUYEN, VIET P
ART UNIT PAPER NUMBER
2831
NOTIFICATION DATE DELIVERY MODE
04/12/2016 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):
OfficeAction27049@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ADAM P. CHIR
Appeal2016-002999
Application 14/240,497
Technology Center 2800
Before ALLEN R. MacDONALD, DANIEL N. FISHMAN, and
AMBER L. HAGY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2016-002999
Application 14/240,497
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A generator arrangement, comprising:
a generator located within a flow passage wherein the flow
passage has an inlet and an outlet, and the generator includes at least
one contra-rotating blade arrangement which is configured to be
rotated about a principle axis of the generator by a flow of liquid in
the flow passage, and wherein at least one of the contra-rotating
blades has an adjustable pitch;
an array of sensors located downstream of the blade
arrangement configured to detect the outlet flow conditions;
a controller for determining the outlet flow conditions on the
basis of conditions sensed by the sensor array; and,
a pitch control system for adjusting the pitch of the at least one
blade so as to affect the flow conditions at the outlet of the flow
passage.
Rejections 1
The Examiner rejected claims 1 and 5 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Carre (WO 2009/087288 A2;
July 16, 2009) and Houvener (US 2010/0310376 Al; Dec. 9, 2010).
1 Separate patentability is not argued for claims 2-10. (App. Br. 9). Except
for our ultimate decision, these claims are not discussed further herein.
2
Appeal2016-002999
Application 14/240,497
The Examiner rejected claims 2, 3, and 7 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Carre, Houvener, and W obben
(US 2009/0289454 Al; Nov. 26, 2009).
The Examiner rejected claims 4 and 10 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Carre, Houvener, and Pedersen
(US 2007/0086893 Al; Apr. 19, 2007).
The Examiner rejected claims 6 and 9 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Carre, Houvener, W obben, and
Kinzie (US 2012/0027592 Al; Feb. 2, 2012).
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Carre, Houvener, and Rooney (US
8,680,704 Bl; Mar. 25, 2014).
Appellant's Contentions
(A) Appellant contends the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because Houvener fails to disclose "an array of
sensors located downstream of the blade arrangement," as recited in claim 1
(App. Br. 3-6; Reply Br. 2-7).
(Al) Particularly, Appellant contends the Examiner erred
because the "Examiner's interpretation that Houvener discloses
sensors located downstream because Houvener discloses control
surfaces can be behind the rotor is wrong" and "a sensor is not a
control surface." (App. Br. 4--5; Reply Br. 3--4)(emphasis and
capitalization omitted).
(A2) Also particularly, Appellant contends the Examiner
erred because "examiner erroneously concludes that Houvener' s fig.
3
Appeal2016-002999
Application 14/240,497
12 shows sensors 12, 14 are disposed downstream of rotor 11;" rather,
in Houvener the "sensors 12, 14 must be disposed upstream of rotor
11." (App. Br. 5-7; Reply Br. 2--4)(emphasis and capitalization
omitted).
(B) Appellant further contends the Examiner erred because
Houvener fails to disclose sensors configured to detect outlet flow
conditions (App. Br. 7-9; Reply Br. 5-7).
Issue on Appeal
Did the Examiner err in concluding "it would have been obvious to
modify Houvener's sensors to be downstream of the blade arrangement and
configured to detect the outlet flow conditions," (App. Br. 8) as recited in
claim 1?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellant's conclusions.
Regarding above contentions (A), (Al), and (A2), Appellant argues
that Fig. 12 of Houvener does not illustrate the location of the sensors on
Houvener' s device, and based on other teachings in Houvener, one of
ordinary skill in the art would not conclude that Houvener's sensors are
located downstream of its blade arrangement (see Ans. 5-8; see Reply Br.
4--7). Appellant cites embodiments of Houvener's device wherein its
sensors are upstream of its blade arrangement (App. Br. 6, citing Houvener
i-fi-17, 12, 39). Appellant's reliance on the teachings of example
4
Appeal2016-002999
Application 14/240,497
embodiments of Houvener, does not persuade us of Examiner error. The
Examiner finds Houvener's Fig. 2 shows the structure of Houvener's turbine
body illustrating the location of its sensors thereon (see Ans. 4). Although
Appellant argues "one of ordinary skill in the art would conclude that
Houvener' s device intends to monitor flow conditions upstream of the
rotor," Appellant provides no evidence that Houvener precludes sensors
being downstream of it rotor (App. Br. 6). 2 Further, contrary to Appellant's
contention that "Houvener expressly discloses that sensors 12, 14 must be
disposed upstream of rotor 11" (Reply Br. 2, emphasis added), Houvener
discloses, in the Abstract, that its system "continually senses the current (12,
14) at the deployment site and based on the current profile, adjusts the pitch
of the blades in real-time, thereby leveling out the forces on the turbine
rotor," without any mention of the sensors being located downstream or
upstream (Reply Br. 7).
Appellant disagrees with the Examiner's finding that Houvener
teaches that control surfaces for the non-rotor components of its turbine may
be located behind (e.g., downstream from) its rotor3, and because both
2 Appellant has not shown, nor have we found, any portion of Houvener that
describes modifying this structure to relocate the sensors in order to
accommodate operation of Houvener's device as depicted in Figure 12.
3 The Examiner points out:
Houvener discloses that these control surface can be used
downstream of rotor 11. This is disclosed in paragraph [0041],
"Although many of the control surfaces for the non-rotor
components of the turbine are shown in various figures, in front
(upstream) of the rotor 11, in some embodiments, some or all of
these surfaces may be behind [downstream] the rotor 11 ".
5
Appeal2016-002999
Application 14/240,497
Houvener's control surfaces and sensors control the pitch of its turbine,
Houvener's control surfaces may include the sensors (Ans. 3--4). Appellant
argues that (i) the term "control surface" as used in Houvener does not refer
to its sensors, rather the term means a surface that can be moved to effect
movement of a larger surface within an aerodynamic or hydrodynamic flow
(see App. Br. 4). Appellant further argues, (ii) simply because two features
have interrelated functions does not necessarily mean that they would be
located in the same place. Thus, (iii) one of ordinary skill in the art would
not automatically conclude that the control surfaces and sensor of Houvener
must be both located downstream of the rotors (Reply Br. 3). We disagree
with Appellant's reasoning. Even if we accept Appellant's above argument
(i) as correct, we still agree with the Examiner's conclusion that it would
have been obvious to move the sensors along with moving the control
surfaces. We reach this conclusion because we disagree with Appellant's
above arguments (ii) and (iii). Contrary to these arguments, there is no
requirement in 35 U.S.C. § 103 that a feature "necessarily" flow from the
reference, and there is no requirement that a feature "must be" as claimed.
Rather, there is only a requirement that the subject matter as a whole would
have been obvious. Appellant's "necessarily" and "must be" conditions
overstate the requirements under 35 U.S.C. § 103.
Regarding above contention (B), Appellant argues because Houvener
discloses only embodiments measuring inlet flow conditions, Houvener does
not disclose detection of outlet flow conditions (App. Br. 7-8; Reply Br. 5-
Final Act. 8.
6
Appeal2016-002999
Application 14/240,497
7). The Examiner finds, and we agree, because Houvener renders obvious
downstream sensors, such sensors would detect outflow conditions.
We have agreed with the Examiner's conclusion for the reasons of
record. Separately, we deem changing the placement of known in-flow
sensors to be out-flow sensors to be obvious to try. Our reviewing court
guides: Where "the problem is known, the possible approaches to solving
the problem are known and finite, and the solution is predictable through use
of a known option," a solution that is obvious to try may indeed be obvious.
Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008), citing
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). See also Ortho-
McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364 (Fed. Cir.
2008) (stating the number of options must be "small or easily traversed").
This reasoning is applicable here. Because there are only two possible
arrangements regarding the respective "placement" of the flow sensors, we
conclude Appellant's claimed out-flow placement would have been
"obvious to try." That is, we conclude it would have been well within the
level of ordinary skill of an artisan.
Additionally, Appellant has presented no evidence that combining and
modifying the prior art was "uniquely challenging or difficult for one of
ordinary skill in the art" or "represented an unobvious step over the prior
art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418-19). Accordingly, for the reasons
provided supra, we are not persuaded that the Examiner erred in finding
Houvener renders obvious an array of sensors located downstream of its
blade arrangement configured to detect the outlet flow conditions.
Accordingly, we sustain the rejection of claims 1-10.
7
Appeal2016-002999
Application 14/240,497
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-10 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-10 are not patentable.
DECISION
The Examiner's rejections of claims 1-10 are 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 )(iv).
AFFIRMED
8