Ex Parte Aylor

Patent Trial and Appeal Board

Jan 4, 2013

11706676 (P.T.A.B. Jan. 4, 2013)

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.
11/706,676 02/15/2007 Robert Benson Aylor AYLOR-US3 7845
7590 05/15/2014
ROBERT B. AYLOR
9502 BLUEWING TERRACE
CINCINNATI, OH 45241
EXAMINER
ABDOSH, SAMIR
ART UNIT PAPER NUMBER
3641
MAIL DATE DELIVERY MODE
05/15/2014 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 ROBERT BENSON AYLOR
____________

Appeal 2010-009556
Application 11/706,676
Technology Center 3600
____________

Before JOHN C. KERINS, HYUN J. JUNG, and RICHARD E. RICE,
Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Robert Benson Aylor (Appellant) has filed a Request for Rehearing
(“Request”) under 37 C.F.R. § 41.52. The Request seeks reconsideration of
the Board’s Decision dated January 7, 2013 (“Decision”). We have
jurisdiction under 35 U.S.C. § 6(b).

Appeal 2010-009556
Application 11/706,676

2

A request for rehearing is limited to points that Appellant believes
have been misapprehended or overlooked by the Board. 37 C.F.R.
§ 41.52(a)(1). That is, a request for rehearing must state with particularity
the points believed to have been misapprehended or overlooked by the
Board; and arguments not raised and evidence not relied upon previously are
not permitted, with few exceptions. Id. § 41.52(a)(1)-(4).
Appellant argues in the Request for Rehearing that the Board
misapprehended or overlooked points with respect to non-enablement and
anticipation. We first discuss Appellant’s arguments with respect to non-
enablement, and then turn to Appellant’s arguments with respect to
anticipation.

Background with respect to Non-Enablement
The Examiner rejected claims 21-39 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement. Final
Office Action mailed April 13, 2009, at 2-4; Ans. 3-5.1 The Examiner
determined that the Specification fails to describe the claimed subject matter
(“steering or attenuating hurricanes or tornados via directed explosions
directed against the central eye”) in such a way as to enable one of ordinary
skill in the art to make or use the claimed invention without undue
experimentation. Id. at 4. With respect to tornadoes, the Examiner found
that “[t]he specification fails to teach one how or in what manner the method
of sending a projectile to the eye wall of a tornado can be accomplished”; “it
is questionable whether or not an explosion will disrupt a tornado”; and “if
an explosion can stop a twister, it is unknown and undisclosed by

1 We cite to the Examiner’s supplemental Answer filed April 13, 2010.
Appeal 2010-009556
Application 11/706,676

3

[Appellant] what size and strength such an explosion should be.” Id. at 4-5.
The Examiner also found that “Appellant’s method concerns the utilization
of a system that has never before been successfully constructed and/or
proven to be feasible.” Id. at 13.
Appellant’s briefs explained the theoretical basis for the claimed
invention, but did not address or provide rebuttal to the Examiner’s
determination that if an explosion can stop a twister, it is unknown and
undisclosed by Appellant what size and strength such an explosion should
be. See App. Br. 9-14; Reply Br. 2-4.

Arguments in the Request with respect to Non-Enablement
Appellant argues that the Board misapprehended or overlooked points
with respect to the portion of the Board’s Decision sustaining the
Examiner’s rejection of claims 21-39 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement. Request 1-6.
In the Decision, the Board agreed with the Examiner’s determination
that the Specification did not enable one skilled in the art to perform the
method of claim 21 without undue experimentation. Decision 7. The Board
found that the Examiner, in determining that the claims were non-enabled,
had analyzed such Wands factors2 as the nature of the invention, the
unpredictability of the art, and the amount of guidance presented in the
Specification. Id. at 5 (citing Ans. 3-5, 12-14). The Board determined that
Appellant had not responded adequately to the Examiner’s finding that “if an
explosion can stop a twister, it is unknown and undisclosed by applicant
what size and strength such an explosion should be.” Decision 7 (citing

2 See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Appeal 2010-009556
Application 11/706,676

4

Ans. 5). As discussed above, Appellant failed to address that finding in his
briefs.
The Board noted, furthermore, that the Specification explicitly
supports the Examiner’s finding that the magnitude of the explosive force
required to practice the invention is “unknown.” Id. The Board quoted the
description in the Specification that: “To destroy a sufficient part of the wall
of the tornado . . . requires an explosive force of unknown magnitude, but
one that can be approximated by doing some research, which can be
accomplished with tornado generators or by destroying ‘dust devils.’” Id.
(citing Spec. 8, ll. 4-9) (emphasis added).3 In addition, the Board stated:
“To approximate the magnitude of the explosive force required, the
Specification suggests ‘doing some research’ of an unspecified nature ‘with
tornado generators’ or ‘by destroying ‘dust devils.’’” Id. The Board noted
that “[t]he Specification does describe ‘[s]ome calculations of the maximum
force required to disrupt the flow of air in a tornado’ (by solving for 1/2mv2
where m is the weight and v is the velocity of the air in a tornado).” Id.
(citing Spec. 8, ll. 10-18). The Board determined, however, that it was
“unclear from the Specification how the calculations relate to the suggested
research involving tornado generators or dust devils.” Id.
The Board also determined that the Specification does not enable one
of ordinary skill in the art to perform the full scope of claim 21, which is not
limited to “a directed explosion” of maximum force as determined by the
disclosed calculations, but rather broadly encompasses any size or
magnitude of explosion, including explosions much smaller, or much larger,

3 We cite to the original Specification filed February 15, 2007.
Appeal 2010-009556
Application 11/706,676

5

than the maximum force calculations would indicate. Id. at 8 (citations
omitted).
Appellant argues that the Board misinterpreted the reference to “an
explosive force of unknown magnitude” (see Request 4-6) in the paragraph
of the Specification that states:
Although a gun can be used to direct an explosion,
shaped charges are especially desirable, since the shaped
charges can be delivered, using rockets, to a point where they
can be detonated and the rockets do not need to carry the weight
of a gun barrel, etc. Shaped charges can be created in a variety
of sizes, but the size required for a particular tornado cannot be
calculated with any degree of accuracy in advance. It will be
desirable to have a selection of charges including one large
enough to destroy an F5 tornado and have a margin of error.
The force created by an F5 tornado would be the largest force
expected. To destroy a sufficient part of the wall of the tornado
to allow the outside pressure to raise the density inside the
tornado, thus eliminating the mechanism by which the tornado
generates the cyclonic flow, requires an explosive force of
unknown magnitude, but one that can be approximated by doing
some research, which can be accomplished with tornado
generators or by destroying “dust devils”.
Spec. 7, l. 46 ‒ 8, l. 9 (emphasis added). Appellant argues that, in the
context of the surrounding language of the paragraph, “[t]he statement
relating to the ‘unknown magnitude’ was directed to the selection of
different sizes of charges for particular tornados.” Request 4.
Appellant draws the Board’s attention to the disclosure in the same
paragraph “that the force required to destroy a sufficient amount of the wall
of an F5 tornado would be the largest force required.” Id. With this
predicate, Appellant argues that the next paragraph of the Specification
Appeal 2010-009556
Application 11/706,676

6

discloses “us[ing] the wind speed for an F5 tornado for calculating how
much force would be required.” Id. The next paragraph states:
Some calculations of the maximum force required to
disrupt the flow of air in a tornado can be made by solving for
1/2mv2 where m is the weight of the air and v is the velocity.
For example, an approximately 100 meter cube of air, using an
air density of 1.2 kg per cubic meter, would weigh about
1,200,000 kg., and when moving at about 500 kilometers per
hour would have a kinetic energy of about 1.1 X 1010 joules.
The explosive force needed for stopping this mass totally,
would be the equivalent of about 2.5 tons of TNT, an explosive
charge that can well be delivered by a rocket. It is unlikely that
this total amount of energy would be required, and for smaller
tornados, the energy needed would be much less.
Spec. 8, ll. 10-18 (emphasis added). Appellant asserts that “the calculations
clearly provide a specific size of an explosive that would be sufficient for
any tornado” and “[t]hus, the specification clearly teaches an explosive of a
size suitable for practice of the invention.” Request 4.
Appellant additionally argues that “[s]ince the specification teaches an
explosive that would be sufficient to destroy any normal tornado, the only
experiment required would be to deploy an explosive of the indicated size
against a tornado and determine if the invention works.” Id. at 5. Appellant
contends that “a single trial is not undue experimentation.” Id.
With respect to the Board’s determination that the Specification does
not enable the full scope of claim 21, Appellant argues that “[t]he
enablement herein clearly meets the requirement that it cover the scope of
the claims since an F5 tornado is the largest size of tornado[, i.e.,] the
enablement is more than, or equal to the scope of the claims.” Id.

Appeal 2010-009556
Application 11/706,676

7

Analysis of Arguments with respect to Non-Enablement
When rejecting a claim for lack of enablement, the initial burden is on
the PTO to set forth “a reasonable explanation” of why it believes the
specification is not enabling. In re Wright, 999 F.2d 1557, 1561-62 (Fed.
Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). In
this case, the Examiner’s determination of non-enablement met that burden,
and the burden then shifted to Appellant to show that the Specification “is
indeed enabling.” See In re Wright, 999 F.2d at 1562.
In the Decision, the Board determined that Appellant failed to meet
his burden to show that the Specification is enabling. In particular, the
Board determined that Appellant had not responded adequately to the
Examiner’s finding that “if an explosion can stop a twister, it is unknown
and undisclosed by [Appellant] what size and strength such an explosion
should be.” See Decision 7 (citing Ans. 5) (emphasis added).
In the Request for Rehearing, Appellant argues, for the first time, that
the Specification discloses calculations for determining the size of explosive
for use against an F5 tornado. See Request 4. Appellant does not contend
that he made this argument in his briefs. A request for rehearing is not an
opportunity to raise arguments that could have been made earlier. See
37 C.F.R. § 41.52(a)(1). Accordingly, Appellant has not shown that the
Board misapprehended or overlooked any point in determining that
Appellant did not respond adequately to the Examiner’s finding that if an
explosion can stop a twister, it is unknown and undisclosed by Appellant
what size and strength such an explosion should be.
Appellant’s argument that the Specification discloses calculations for
determining the size of explosive for use against an F5 tornado (see Request
Appeal 2010-009556
Application 11/706,676

8

4), moreover, is not consistent with the disclosure in the Specification,
quoted above. For example, Appellant’s argument contradicts the disclosure
that “the size required for a particular tornado cannot be calculated with any
degree of accuracy in advance.” Compare Request 4-5 with Spec. 7, l. 49 ‒
8, l. 2. In that regard, Appellant’s argument does not explain why, if the
disclosed calculations can be used to determine the size of explosive for use
against an F5 tornado, similar values would not be ascertainable for tornados
of lower intensity, such that a required size of explosive could be calculated
in advance with some degree of accuracy for any particular tornado.
Similarly, Appellant’s argument that the Specification discloses calculating
the size of explosive for an F5 tornado is not consistent with the disclosure
that destroying a sufficient part of the wall of a tornado “requires an
explosive force of unknown magnitude, but one that can be approximated by
doing some research, which can be accomplished with tornado generators or
by destroying ‘dust devils.’” Spec. 8, ll. 4-9.
It is more reasonable that a person of ordinary skill would interpret the
calculations as having little or no practical application, consistent with the
disclosure that “the size required for a particular tornado cannot be
calculated with any degree of accuracy in advance.” Id. at 7, l. 49 ‒ 8, l. 2.
Indeed, by arguing that “the only experiment required would be to deploy an
explosive of the indicated size against a tornado and determine if the
invention works” (Request 5, emphasis added), Appellant acknowledges, as
the Examiner found, that the very efficacy of the method itself is subject to
doubt. In conclusion, the inconsistencies in the Specification brought to
light by Appellant’s new arguments reinforce the Board’s conclusion in the
Decision that, on the record, the experimentation needed to practice the
Appeal 2010-009556
Application 11/706,676

9

claimed invention is not merely routine, and that the Specification does not
provide a reasonable amount of guidance as to the direction in which such
experimentation should proceed. See Decision 7-8 (citing Wands, 858 F.2d
at 737).
Finally, Appellant’s argument with respect to the Board’s
determination of non-enablement of the full scope of claim 21
misunderstands the Board’s analysis. The scope of claim 21 encompasses
use of explosives of all sizes against tornados of all intensities. For example,
claim 21 encompasses use of a very small-size explosion against a very
high-intensity tornado. Even if, as Appellant argues, the Specification
enables (provides calculations for) use of a large-size explosion against an
F5 tornado, and thus also enables use of such a large-size explosion against
tornados of lesser intensities, the Specification does not enable use of a
smaller-size explosion against any tornado, regardless of intensity.
Accordingly, Appellant’s argument does not establish that the Specification
enables those skilled in the art to make and use the full scope of claim 21
without undue experimentation.
For the foregoing reasons, Appellant’s arguments do not show that the
Board misapprehended or overlooked any point in sustaining the Examiner’s
rejection of claims 21-39 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement.

Background with respect to Anticipation
The Examiner rejected claims 21-23, 26, 29, 34, and 39 under
35 U.S.C. § 102(b), as anticipated by US 2005/0039626 A1 (pub. Feb. 24,
2005) (“Yi”). Ans. 6. As to claims 21, 22, and 39, the Examiner found “Yi
Appeal 2010-009556
Application 11/706,676

10

teaches the directing of an explosive force against the eye wall of the
cyclonic wind near its base.” Id. (citing Yi, fig. 9). The Examiner made
separate findings with respect to each of claims 23, 26, 29, and 34. Id.
at 6-7.
Appellant argued with respect to all of the rejected claims that “[t]here
is no disclosure in Yi of a finely divided material used as a projectile or a
directed explosion against the winds of a tornado or from outside the center
into a tornado.” App. Br. 14; see Reply Br. 4-5. Appellant made separate
arguments for claims 23, 26, and 34. App. Br. 14-15; Reply Br. 6.
Appellant did not make a separate argument for claim 39.
Claim 39 recites: “A method for steering a hurricane comprising
using at least one directed explosion that is directed against the wind at the
edge of eye of the hurricane.”
In the Decision, the Board determined Appellant’s arguments were
not commensurate in scope with the subject matter of claim 39 and
Appellant had waived any other argument. See Decision 10.

Arguments in the Request with respect to Anticipation
Appellant requests rehearing with respect to the portion of the Board’s
Decision sustaining the Examiner’s rejection of claim 39 as anticipated by
Yi.
In the Request for Rehearing, Appellant relies on the statement in the
Appeal Brief: “‘With respect to Claims 21-23, 26, 29, 34, and 39, it is clear
that the Yi reference does not teach the claimed invention.’” Request 7
(quoting App. Br. 14). Appellant argues that: “It is necessary for the
Appeal 2010-009556
Application 11/706,676

11

rejection of the claim to actually make a case for the claim being anticipated
before any argument by applicant is required.” Id.
The vague statement that Yi does not teach the claimed invention,
however, does not constitute a substantive argument for patentability of
claim 39 pursuant to 37 C.F.R. § 41.37(c)(1)(vii). See In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (holding that the Board reasonably interpreted
its rule as requiring “more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art”).
Appellant further argues: “As pointed out in the brief, Yi does not
relate to, or teach anything with respect to hurricanes.” Request 7 (emphasis
added).
Appellant, however, has not directed the Board to any location in
either of Appellant’s briefs where it is argued, with respect to the rejection
of claim 39 as anticipated by Yi, that “Yi does not relate to, or teach
anything with respect to hurricanes,” as Appellant argues in the Request for
Rehearing. See id. As stated above, a request for rehearing is not an
opportunity to raise arguments that could have been made earlier. See
37 C.F.R. § 41.52(a)(1).
For the foregoing reasons, Appellant’s arguments in the Request for
Rehearing do not show that the Board misapprehended or overlooked any
point in sustaining the Examiner’s rejection of claim 39 under 35 U.S.C.
§ 102(b), as anticipated by Yi.

Appeal 2010-009556
Application 11/706,676

12

DECISION
The Board has carefully reviewed and considered Appellant’s Request
for Rehearing. We have granted the Request only to the extent that
Appellant’s arguments have been considered. The Request is denied with
respect to making any changes in the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REQUEST DENIED

Vsh