Ex Parte Rastegar et al

Patent Trial and Appeal Board

Jun 30, 2014

12839316 (P.T.A.B. Jun. 30, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/839,316 07/19/2010 Jahangir S. Rastegar 10049B 7950
79998 7590 06/30/2014
Thomas Spinelli, Esq.
14 Mystic Lane
Northprot, NY 11768
EXAMINER
ROSENAU, DEREK JOHN
ART UNIT PAPER NUMBER
2837
MAIL DATE DELIVERY MODE
06/30/2014 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 JAHANGIR S. RASTEGAR and THOMAS SPINELLI
__________

Appeal 2012-009091
Application 12/839,316
Technology Center 2800
____________

Before CHARLES F. WARREN, MICHAEL P. COLAIANNI, and
N. WHITNEY WILSON, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-3. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is directed to a method of powering devices by
energy generated by impacts, such as flashlights powered by an impact
(Spec. 1).
Claim 1 is illustrative:
1. A method for powering a device, the method
comprising:
impacting a portion of an exterior surface of the device
against a surface;
Appeal 2012-009091
Application 12/839,316

2
storing potential energy in one or more elastic elements;
converting the stored potential energy to electrical energy
by vibration of the one or more elastic elements over a plurality
of cycles resulting from the impact; and
providing at least a portion of the electrical energy to at
least one powered element associated with the device.

Appellants appeal the following rejections:
1. Claims 1 and 2 are rejected under 35 U.S.C. § 103(a), as being
unpatentable over Umeda (US 6,411,016 B1 issued June 25, 2002) in
view of Face (US 2006/0021261 A1 published Feb. 2, 2006).
2. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Umeda in view of Face and Tanner (US 2007/0145861 A1
published June 28, 2007).

Appellants’ arguments focus on the subject matter of claim 1 (App. Br. 5-
7). Claims 2 and 3 will stand or fall with our analysis of the rejection of
claim 1.

ISSUE
Did the Examiner reversibly err in concluding that the combined
teachings of Umeda and Face would have rendered obvious the subject
matter of claim 1 that includes the step of “impacting a portion of an exterior
surface of the device against a surface”? We decide this issue in the
negative.

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Application 12/839,316

3
FINDINGS OF FACT AND ANALYSES
The Examiner’s findings and conclusions are located on pages 4-6 of
the Answer. The Examiner finds that Umeda discloses the steps of claim 1,
but does not disclose impacting an exterior surface portion of the device
(Ans. 4-5). The Examiner finds that Face discloses a shoe-based
piezoelectric harvesting device where impacts of an exterior surface of the
device result in the generation of electricity from the energy harvesting
device (id. at 5). The Examiner finds that Umeda further teaches that its
piezoelectric power generating device may be incorporated into a shoe. Id.
The Examiner concludes that it would have been prima facie obvious to
combine the energy harvesting device of Umeda with the shoe-based energy
harvesting device of Face because Umeda teaches that the energy harvesting
device may be used in shoes and to make use of the energy available from
impacts of the shoe with the ground. Id.
Appellants argue that in Umeda an impact results from the vibration
of the device, which is the opposite of the claim limitation that requires
impacting of the device to produce the vibration (App. Br. 5-6). Appellants
contend that Umeda’s device functions if the amplitude of the vibration is
large enough to cause a steel ball (4) attached to spring (18) as shown in
Umeda’s Figure 5 to impact a piezoelectric element (1), which is not the
same as Appellants’ claimed invention which provides a more efficient
method of producing the electricity as any impact will continue to generate
power regardless of the amplitude of the vibration (id. at 6). Appellants
contend that Face does not cure the deficiencies of Umeda. Id. Appellants
argue that Face does not apply an impact to the device, but rather pressure to
the ground. Id. Appellants contend that Face does not teach storing
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Application 12/839,316

4
potential energy in an elastic element and converting the potential energy to
electric energy over a plurality of cycles resulting from the impact motion.
Id. Appellants contend that Umeda’s and Face’s devices are inconsistent in
structure and methodology such that it would have been difficult for
Appellants to construct a device from such a combination (id. at 7).
Contrary to Appellants’ arguments, the Examiner’s rejection is based
upon the teachings of Umeda and Face, as a whole, and what they would
have suggested to the ordinarily skilled artisan. Appellants’ arguments
attack the references individually instead of accounting for what the
combined teachings as a whole would have suggested to the ordinarily
skilled artisan. In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
Examiner agrees with Appellants that Umeda does not teach impacting a
portion of the device is an exterior surface portion of the device (Ans. 5).
The Examiner relies on Face to teach that placing a piezoelectric energy-
harvesting device in the sole of a shoe where impacts by the shoe with the
ground provide the mechanical force for generating electrical charge that
may be stored. The Examiner further finds that Umeda teaches that the
energy-harvesting piezoelectric device includes a spring assembly attached
to ball (id. at 4). The Examiner finds that Umeda teaches that the energy-
harvesting devices may be implemented in a shoe and that human action is
used to initiate motion of the ball (id. at 4-5).
In light of the Examiner’s findings, we agree that the combined
teachings of Umeda and Face would have suggested forming Umeda’s
energy-harvesting piezoelectric device in a shoe sole as taught by Face
where impacts of the shoe with the ground provide the human action (i.e.,
impact) required to generate electric charge.
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Application 12/839,316

5
Appellants’ argument regarding the amplitude required for Umeda’s
device to function relative to the allegedly more efficient method of
Appellants is not persuasive. The method claims do not require any
particular amplitude or amount of impact.
Appellants’ argument that based on Umeda’s and Face’s teachings it
would have been difficult for them to construct a device, does not address
what would have been obvious to the ordinarily skilled artisan. In our view,
the teachings of Umeda and Face evince the level of ordinary skill in the art,
which we find supports the Examiner’s obviousness conclusion.
On this record, we affirm the Examiner’s § 103 rejections over Umeda
and Face, and Umeda, Face and Tanner.
DECISION
The Examiner’s decision 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)(1)(iv).
ORDER
AFFIRMED

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