Ex Parte THINGULDSTAD et al

Patent Trials and Appeals BoardJan 7, 2019

13289301 - (D) (P.T.A.B. Jan. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/289,301 11/04/2011 15624 7590 01/09/2019 Ryan Alley IP (GE Docket) P.O. Box 87 Alexandria, VA 22313 FIRST NAMED INVENTOR Arthur M THINGULDSTAD 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. 5.0005.1 (24SE252416) 9060 EXAMINER DA VIS, SHARON M ART UNIT PAPER NUMBER 3646 NOTIFICATION DATE DELIVERY MODE 01/09/2019 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): office@alleylegal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ARTHUR M. THINGULDSTAD and MARK A. BERGMAN Appeal2018-004344 Application 13/289,301 Technology Center 3600 Before EDWARD A. BROWN, JEREMY M. PLENZLER, and LEE L. STEPINA, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's Decision rejecting claims 2-5, 8-14, and 21-28 under 35 U.S.C. Â§ 103(a) as unpatentable over Applicants' disclosure (Spec. ,r,r 1-3, Figure 1) 1 and Nazareno (US 5,120,494, issued June 9, 1992).2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Whether the disclosure in the Specification is Admitted Prior Art is a disputed issue. 2 The rejection of claim 29 under 35 U.S.C. Â§ 112, first paragraph, was withdrawn in the Examiner's Answer. Ans. 3. Appeal2018-004344 Application 13/289,301 CLAIMED SUBJECT MATTER Claim 10 is independent, with claims 2-5, 8-14, and 21-28 depending therefrom. Claim 10 is reproduced below: 10. A nuclear plant emergency power system comprising: a turbine configured to power a coolant pump for a nuclear reactor; a speed controller configured to monitor a speed of the turbine and control a speed of the turbine; a control room flow controller configured to receive turbine information from the speed controller and transmit turbine speed commands to the speed controller; an emergency power distribution system electrically connected to the speed controller and the control room flow controller; and a generator electrically connected to the speed controller and the control room flow controller, wherein the generator is a maximum 200 Watt electric generator, wherein the generator is configured to generate electrical power from the turbine and provide the electrical power to the speed controller and the control room flow controller. OPINION The Examiner's rejection requires that Appellants' disclosure at paragraphs 1-3 of the Specification, and illustrated in Figure 1, is admitted prior art. See Final Act. 5; Ans. 3-5. A statement by an applicant in the specification or made during prosecution identifying the work of another as "prior art" is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 2 Appeal2018-004344 Application 13/289,301 U.S.C. Â§ 102. Riverwood Int'! Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003). There is no dispute that neither Appellants' Specification, nor Figure 1, labels the relevant disclosure as "prior art." Rather, that disclosure is labeled as "conventional." See Spec. ,r 1, Fig. 1. Appellants contend that their disclosure cited by the Examiner is not admitted prior art. Appeal Br. 8-9; Reply Br. 1-5. The Examiner has provided no reason to determine that the disclosure in Appellants' Specification is the work of another. Appellants, on the other hand, affirmatively state that it is not. See Reply Br. 2 ("FIG. 1 is applicant's own work."). We acknowledge that the Specification describes "FIG. 1 [a]s a schematic diagram of a conventional turbine control system in commercial nuclear power stations." Spec. ,r 1. Nevertheless, Section 102( a), for example, precludes patentability where "the invention was known or used by others in this country ... before the invention thereof by the applicant for patent." As noted above, even if used at commercial nuclear power stations, based on the record before us, we have no reason to believe that the "conventional turbine control system" was "known or used by others ... before the invention thereof by the applicant." Further, even if "the invention was known or used by others ... before the invention thereof by the applicant," the Examiner fails to provide sufficient reason for us to believe those commercial nuclear power stations including the "conventional" turbine control system were known or used in this country. Our Decision is based on an understanding that the representations made in the briefs (see, e.g., Reply Br. 2) are an express statement, based the personal knowledge of the practitioner, that the subject matter described in 3 Appeal2018-004344 Application 13/289,301 the Specification at paragraphs 1-3 and shown in Figure 1 is the work of the inventors. 3 Our Decision is also based on an understanding that any failure to disclose that the commercial systems including that subject matter noted in paragraph 1 of the Specification were known or used by others in this country before the invention of the claimed subject matter indicates that, based on the knowledge of the individuals associated with the filing and prosecution of this patent application, they were not. We note the duty of disclosure required by 37 C.F.R. Â§ 1.56, which requires that "[ e Jach individual associated with the filing and prosecution of a patent application has ... a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section." We additionally note that by presenting the Appeal Brief and the Reply Brief to the Office, the practitioner is certifying that "all statements made therein on information and belief are believed to be true" (37 C.F.R. Â§ 11.18(b )( 1)) and that "[a] practitioner shall not knowingly ... fail to correct a false statement of material fact ... previously made to the tribunal by the practitioner" (37 C.F.R. Â§ 11.303(a)(l)). That Section further requires that "[i]n an ex parte proceeding, a practitioner shall inform the tribunal of all material facts known to the practitioner that will enable the tribunal to make an informed decision, whether or not the facts are adverse." 37 C.F.R. Â§ 11.303(d). That is, if Appellants (including the practitioner) are aware that paragraphs 1-3 of the Specification and Figure 1 of the 3 That is, the statement on page 2 of the Reply Brief that "FIG. 1 is applicant's own work" does not simply indicate that Appellants created the figure, but also indicates that the figure is not based on something other than their own work. 4 Appeal2018-004344 Application 13/289,301 Application qualify as prior art, there is a continuing duty to disclose such information. For the reasons set forth above, the preponderance of the evidence does not support the Examiner's position that Appellants' Specification paragraphs 1-3 and Figure 1 are prior art. Accordingly, we do not sustain the Examiner's decision to reject claims 2-5, 8-14 and 21-28. DECISION We REVERSE the Examiner's decision to reject claims 2-5, 8-14 and 21-28. REVERSED 5