Bette Korman

Patent Trials and Appeals Board

Apr 27, 2021

2020002621 (P.T.A.B. Apr. 27, 2021)

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.
14/686,565 04/14/2015 Bette Korman 121422-00004 5784
27614 7590 04/27/2021
MCCARTER & ENGLISH, LLP NEWARK
FOUR GATEWAY CENTER
100 MULBERRY STREET
NEWARK, NJ 07102
EXAMINER
CAVALLARI-SEE, DANIEL
ART UNIT PAPER NUMBER
2836
MAIL DATE DELIVERY MODE
04/27/2021 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 BETTE KORMAN
Appeal 2020-002621
Application 14/686,565
Technology Center 2800
Before THU A. DANG, JOHN A. EVANS, and STEVEN M.
AMUNDSON, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, and 6–9. See Non-Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Bette Korman.
Appeal Br. 3.
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Application 14/686,565

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CLAIMED SUBJECT MATTER
According to Appellant, the invention relates to “the field of energy
production and distribution,” and more specifically, “to a modular portable
energy system (or kit) that can be easily transported and set up to generate
electrical power in a variety of environments.” Spec. 1:19–21. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An alternative power generation system, comprising:
a portable electricity harvesting device for generating
electrical power including
a substrate, a first layer formed on the substrate and
including battery electronics therein, a second layer formed on
the first layer and including power electronics therein, and a
third layer formed on the second layer and including materials
for generating electricity;
a power unit coupled to said portable electricity harvesting
device including circuitry for processing electrical power
generated by said portable electricity harvesting device and
storing said electrical power in a battery within said power unit;
a plurality of distribution components in electrical
communication with said power unit and a plurality of devices
to be electrically powered.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Mori US 6,025,555 Feb. 15, 2000
Luch US 2008/0227236 A1 Sept. 18, 2008
Takahashi US 2011/0100437 A1 May 5, 2011
Cowels US 8,203,237 B1 June 19, 2012

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Application 14/686,565

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REJECTIONS
Claims 1, 3, and 6–9 stand rejected under 35 U.S.C. § 112(pre-AIA),
first paragraph, as failing to comply with the written-description
requirement. Non-Final Act. 5.
Claims 1, 3, and 6–9 stand rejected under 35 U.S.C. § 112(pre-AIA),
first paragraph, as failing to comply with the enablement requirement. Non-
Final Act. 7.
Claims 1, 3, and 6–9 stand rejected under 35 U.S.C. § 112(pre-AIA),
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention. Non-Final Act. 9.
Claims 1, 3, 6, 8, and 9 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Cowels US 8,203,237 in view of Luch
2008/0227236. Non-Final Act. 11.
Claim 7 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Cowels US 8,203,237 in view of Luch 2008/0227236 in
view of Takahashi US 2011/0100437 and Mori et al. US 6,025,555. Non-
Final Act. 14.2

2 The Office Action also objects to the drawings and the Specification for
failing to provide antecedent basis and enablement for various claim
limitations. Non-Final Act. 2–4. These objections are petitionable, and we
decline to address these objections in this Appeal.
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Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1, 3, 6–9 112 Written Description
1, 3, 6–9 112 Enablement
1, 3, 6–9 112 Indefiniteness
1, 3, 6–9 103(a) Cowels, Luch
7 103(a) Cowels, Luch, Takahashi,
Mori

OPINION
Except where indicated, we adopt the Examiner’s findings in the
Answer and Non-Final Office Action and we add the following primarily for
emphasis. We note that if Appellant failed to present arguments on a
particular rejection, we decline to review unilaterally those uncontested
aspects of the rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential); Hyatt v. Dudas, 551 F.3d 1307, 1313–14 (Fed. Cir.
2008) (the Board may refuse consideration of arguments Appellant failed to
make for a given ground of rejection).

Rejection of Claims 1, 3, and 6–9 Under 35 U.S.C. § 112 (Lack of Written
Description)
The Examiner rejects claims 1, 3, and 6–9 as lacking of written
description in the Specification as originally filed. Non-Final Act. 5. In
particular, the Examiner contends that the Specification does not provide a
written description of claim limitations “battery electronics,” “power
electronics,” and “materials for generating electricity.” Non-Final Act 5, 6.
In order to satisfy the written-description requirement, “the
specification must describe an invention understandable to [a] skilled artisan
and show that the inventor actually invented the invention claimed.” Ariad
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Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). Id. Compliance with the written-description requirement set forth
in 35 U.S.C. § 112 does not require that the claimed subject matter be
described identically in the Specification. In re Kaslow, 707 F.2d 1366,
1375 (Fed. Cir. 1983). The drawings in an application can be relied upon to
show that an inventor was in possession of the claimed invention as of the
filing date. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1564 (Fed. Cir.
1991) (“[D]rawings alone may be sufficient to provide the ‘written
description of the invention’ required by § 112, first paragraph.”).
Figure 18A of the Specification is reproduced below:

Figure 18A of the Specification shows a multi-layered solar power
generation device. Spec. 7:11–12.
The Specification as originally filed states, in part,
As shown in FIG. 18A, the device 400 could comprise a layer
of substrate 408 with a first layer 406 formed on the substrate
including battery electronics therein, a second layer 404 formed
on the first layer and including power electronics therein, and a
third layer 402 formed on the second layer and including
photovoltaic material for generating electricity.
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Spec. 17:5–9.
We agree with Appellant that the contested claim limitations “battery
electronics,” “power electronics,” and “materials for generating electricity”
are “sufficiently described by the [S]pecification and drawings.” Appeal Br.
12–14. We find that the Specification and drawings show that the inventor
actually invented the invention claimed. Figure 18A, for example, shows
that the inventor was in possession of the claimed invention as of the filing
date.
Accordingly, based on the record before us, we reverse the
Examiner’s rejection of claims 1, 3, and 6–9 under 35 U.S.C. § 112, first
paragraph, as lacking of written description.

Rejection of Claims 1, 3, and 6–9 Under 35 U.S.C. § 112 (Lack of
Enablement)
The Examiner rejects claims 1, 3, and 6–9 as lacking of enablement.
Non-Final Act. 7.
Any analysis of whether a particular claim is supported by the
disclosure in an application requires a determination of whether that
disclosure, when filed, contained sufficient information regarding the subject
matter of the claims so as to enable one skilled in the pertinent art to make
and use the claimed invention. In particular, “to be enabling, the
specification of a patent must teach those skilled in the art how to make and
use the full scope of the claimed invention without ‘undue
experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993).
The enablement requirement ensures that the public knowledge
is enriched by the patent specification to a degree at least
commensurate with the scope of the claims. . . . The scope of
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enablement, in turn, is that which is disclosed in the specification
plus the scope of what would be known to one of ordinary skill
in the art without undue experimentation.
Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d
1190, 1195–96 (Fed Cir. 1999).
Factors to be considered in determining whether a disclosure
would require undue experimentation . . . include (1) the
quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (“the Wands factors”).
Whether undue experimentation is required is a legal conclusion reached by
weighing several underlying factual inquiries. Id.
Here, Examiner concludes that claim limitations “battery electronics,”
“power electronics,” and “materials for generating electricity” fail to comply
with the enablement requirement. Non-Final Act. 7; see claim 1. More
specifically, Examiner weighs the Wands factors and concludes that: 1) the
breadth of “battery electronics,” “power electronics” and “materials for
generating electricity” in the claims is boundless as the terms are “nominal
and as best understood refer to any and all circuitry” (id. at 8; see Wands
factor 8); 2) “the state of the prior art teaches photovoltaic modules of
layered semiconductor components” and “fail[s] to teach layered (via printed
ink, see claim 8) of fully formed batteries, and converters, if that is what
applicant intend[s] (noting it is unclear what applicant intends)” (id.; see
Wands factor 5); 3) “Applicant has provided an extremely limited amount of
guidance as to what is being taught and intended by said claim terms” (id.;
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see Wands factor 2); and 4) “Applicant has provided no FIGURE or other
form of complete working example of the invention claimed in claim 1
giving no direction as to what said terms ‘battery electronics,’ ‘power
electronics’ and ‘materials for generating electricity’ in the form of said
layers of FIG 18A is intended to be and to comprise.” Id.; see Wands
factor 3.
We agree with the Examiner’s conclusions. In particular, we agree
with Examiner that the Specification and drawings lack of “direction or
guidance presented” by the inventor, and there is an “absence of working
examples” sufficient to connect the discussed theory to the recited claims.
See Wands, 858 F.2d at 737.
Here, the Specification merely provides that the first layer contains
“battery electronics,” the second layer includes “power electronics” and that
the third layer includes “photovoltaic material for generating electricity” (see
Spec. 7:11–12), without providing any further reference to the terms. See
generally Spec. Although Figure18A shows the various “first,” “second”
and “third” layers, the figure fails to provide any “electronics” being used,
let alone showing how the electronics fit within the layers. That is, the
Specification and Figure 18A merely describe a generic solar-power-
generation device comprising a plurality of layers, and we agree with the
Examiner that the disclosure is not enough to enable the full scope of the
alleged inventions encompassed by the claims, i.e., the disclosure does not
describe or otherwise provide enough information to one of ordinary skill in
the art as to the manner and process of making and using “battery
electronics,” “power electronics,” and “materials for generating electricity”
included within the layers without undue experimentation.
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While the Appellant has cited many passages of the Specification,
none of these passages provides enabling details of what the “battery
electronics,” “power electronics” and “materials for generating electricity”
are or how such “electronics” are embedded in the layers. In the Appeal
Brief, Appellant appears to suggest that the power module shown in Figure 3
represents the “battery electronics” and “power electronics” in that the
circuit would be carved up into the claimed “battery electronics” and “power
electronics.” Appeal Br. 12–14. However, the claims also recite a “power
unit coupled to said portable electricity harvesting device including circuitry
for processing electrical power generated by said portable electricity
harvesting device and storing said electrical power in a battery within said
power unit.” See claim 1. Thus, the claimed “power unit” appears to
encompass the power module schematic of Figure 3, rather than “battery
electronics” and “power electronics.”
Appellant also appears to suggest that “power electronics” could
comprise a volt meter which displays wattage. Appeal Br. 13. However,
nothing in the Specification or any claim details how a volt meter, shown in
Figure 3, can be integrated into the layers of Figures 18A.
With little to no guidance from Appellant, a person of ordinary skill in
the art would be required to perform unreasonable experimentation in
determining what the electronic components of the layers are and how they
are combined to form the “battery electronics,” “power electronics” and
“materials for generating electricity” as claimed.
Accordingly, based on the record before us, we affirm the Examiner’s
rejection of claim 1, and claims 3, and 6–9 depending therefrom under
35 U.S.C. § 112, first paragraph, for lacking of enablement.
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Rejection of Claims 1, 3, and 6–9 Under 35 U.S.C. § 112 (Indefiniteness)
The Examiner concludes that claims 1, 3, and 6–9 are indefinite
because the meaning of claim terms “battery electronics,” “power
electronics,” and “materials for generating electricity” are unclear. Non-
Final Act. 9–10. In particular, the Examiner concludes that the terms “are
unintelligible in that the terms are not that of terms of art,” “do not refer to
any particular or identifiable structure,” and “are not defined by applicant.”
Id.
We agree with the Examiner’s conclusion.
Other than in claim 1, the terms “battery electronics,” “power
electronics,” and “materials for generating electricity” only appear in the
description of Figure 18A as follows:
As shown in FIG. 18A, the device 400 could comprise a layer
of substrate 408 with a first layer 406 formed on the substrate
including battery electronics therein, a second layer 404 formed
on the first layer and including power electronics therein, and a
third layer 402 formed on the second layer and including
photovoltaic material for generating electricity.
Spec. 17:5–9.
The Specification makes no further reference to the terms, let alone
provide a clear definition. See generally Spec. Further, although the terms
appear in the description of Figure 18A, the figure shows the first, second
and third layers merely as generic layers, but does not show any
“electronics” respectively therein. See Spec., Fig. 18A.
Thus, we consider the recitation of “battery electronics,” “power
electronics,” and “materials for generating electricity,” so abstract that the
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claims are deemed indefinite. That is, we cannot determine the metes and
bounds of the claims as required to ascertain their scope.
Therefore, we conclude that claim 1, reciting “battery electronics,”
“power electronics,” and “materials for generating electricity,” does not
reasonably apprise those skilled in the art of its scope. Because we conclude
that there are ambiguities with respect to claim 1 and thus claims 3, and 6–9
depending therefrom, we sustain the Examiner’s rejection of claims 1, 3, and
6–9 under 35 U.S.C. § 112 as being indefinite.

Rejection of Claims 1, 3, and 6–9 Under 35 U.S.C. § 103.
We reverse the outstanding rejection of the claims under 35 U.S.C.
§ 103(a), pro forma, because we conclude that at least independent claim 1
is indefinite under 35 U.S.C. § 112, second paragraph. That is, the claims on
appeal must be reasonably understood without resorting to speculation to
thereby prevent the rejections of the claims over prior art from being based
on speculation and assumptions as to the scope of the claims. See In re
Steele, 305 F.2d 859, 862 (CCPA 1962). Presently, the claims on appeal are
indefinite and the metes and bounds of the claims cannot be ascertained. We
are therefore declining from utilizing speculation and conjecture in an
attempt to ascertain the scope of the claims.
CONCLUSION
We affirm the Examiner’s rejections of claims 1, 3, and 6–9 as being
non-enabled under 35 U.S.C. § 112(pre-AIA), first paragraph and as being
indefinite under 35 U.S.C. § 112(pre-AIA), second paragraph. However, we
reverse Examiner’s rejection of claims 1, 3, and 6–9 as lacking written
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description under 35 U.S.C. § 112(pre-AIA), first paragraph, and reverse pro
forma, the Examiner’s rejections of claims 1, 3, and 6–9 under 35 U.S.C.
§ 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 6–9 112 Written Description 1, 3, 6–9
1, 3, 6–9 112 Enablement 1, 3, 6–9
1, 3, 6–9 112 Indefiniteness 1, 3, 6–9
1, 3, 6, 8, 9 103(a) Cowels, Luch 1, 3, 6, 8, 9
7 103(a) Cowels, Luch,
Takahashi, Mori
7
Overall
Outcome
1, 3, 6–9

TIME PERIOD FOR RESPONSE
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)(2018).
AFFIRMED