Ex Parte AylorDownload PDFPatent Trial and Appeal BoardJan 4, 201311706676 (P.T.A.B. Jan. 4, 2013) Copy Citation 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. 11/706,676 02/15/2007 Robert Benson Aylor AYLOR-US3 7845 7590 01/07/2013 ROBERT B. AYLOR 9502 BLUEWING TERRACE CINCINNATI, OH 45241 EXAMINER ABDOSH, SAMIR ART UNIT PAPER NUMBER 3641 MAIL DATE DELIVERY MODE 01/07/2013 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 APPEAL STATEMENT OF THE CASE Robert Benson Aylor (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 21-39. Claims 1-20 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2010-009556 Application 11/706,676 2 The Claimed Subject Matter The claimed subject matter “relates to reducing the damaging effects of cyclonic winds by disrupting the stability required to maintain the cyclonic wind.” Spec. 1, ll. 34-35.1 Claim 21, reproduced below, is representative of the subject matter on appeal: 21. A method for reducing the damage from a tornado or hurricane, said method comprising at least one of either: (1) using a directed explosion to provide a directed explosive force in at least one direction that is either: directed against the wind in the eye wall of a tornado; directed into the center of the tornado; or directed down the center of the tornado, any projectile that is used to deliver said directed explosive force comprising a finely divided material used as a projectile; (2) providing a tunnel with multiple openings to allow air to flow from outside a tornado to the center of the tornado; or (3) at least one of: using a directed explosion to provide a directed force in a direction that is against the wind at the eye wall of a hurricane; or deploying incendiary devices around the eye wall of a hurricane near the top of the eye wall. The Rejections The following Examiner’s rejections are before us for review: (1) Claims 21-39 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement; (2) Claims 21-23, 26, 29, 34 and 39 stand rejected under 35 U.S.C. § 102(b) as anticipated by Yi2; (3) Claims 24 and 35-37 stand rejected under 35 U.S.C. 1 “Spec.” refers to the Specification filed February 15, 2007. 2 US 2005/0039626, pub. Feb. 24, 2005. Appeal 2010-009556 Application 11/706,676 3 § 103(a) as unpatentable over Yi and Griffith3; (4) Claims 27, 32 and 33 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yi and Morales4; (5) Claims 25 and 30 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yi and Krauch5; (6) Claim 28 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Yi, Morales and Griffith; (7) Claim 31 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Yi and Atlas6; and (8) Claim 38 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Yi. OPINION Rejection (1) – Non-Enablement Appellant argues claims 21-39 as a group. App. Br. 9-14; Reply Br. 2-4. We select claim 21 as representative. See 37 C.F.R. § 1.37(c)(1)(vii) (2011). When rejecting a claim for lack of enablement, “the [United States Patent and Trademark Office] bears an initial burden of setting forth a reasonable explanation as to why it believes that the scope of protection 3 US 2,860,041, iss. Nov. 11, 1958. 4 The Examiner erroneously refers to Morales as “US 3,271,764.” Ans. 8. However, the correct reference is US 2004/0011881 A1, pub. Jan. 22, 2004. See Notice of References Cited, filed Nov. 4, 2008. 5 US 4,259,906, iss. Apr. 7, 1981. 6 The Examiner erroneously refers to Atlas as “US 3,271,764.” Ans. 11. However, the correct reference is US Re. 33,152, iss. Jan. 23, 1990. See Information Disclosure Statement, filed May 17, 2007. Appeal 2010-009556 Application 11/706,676 4 provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application . . . .” In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). “Section 112 requires that the patent specification enable ‘those skilled in the art to make and use the full scope of the claimed invention without ‘undue experimentation”’ in order to extract meaningful disclosure of the invention and, by this disclosure, advance the technical arts. Koito Mfg. Co., Ltd. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1155 (Fed. Cir. 2004) (quoting Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed.Cir.1997) (citation omitted)). Some experimentation, even a considerable amount, is not “undue” if it is merely routine, or if the specification provides a reasonable amount of guidance as to the direction in which the experimentation should proceed. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (quoting Ex parte Jackson, 217 USPQ 804, 807 (Bd. App. 1982)). The “undue experimentation” analysis involves the consideration of such factors as: (1) the quantity of experimentation; (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 (the “Wands factors”). Wands, 858 F.2d at 737. The Examiner’s position is that claim 21 pertains “to steering or attenuating hurricanes or tornados via directed explosions directed against the central eye” and that “[t]he specification and the claim language both fail to clearly describe how this is accomplished in a manner enabling one of ordinary skill in the art at the time the invention was made to perform the Appeal 2010-009556 Application 11/706,676 5 method without undue experimentation.” Ans. 4. In support of this position, the Examiner analyzes a number of the Wands factors without identifying them as such. Ans. 3-5 and 12-14. The Examiner finds, for example, 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), that “it is questionable whether or not an explosion will disrupt a tornado” (id. at 5) and that “if an explosion can stop a twister, it is unknown and undisclosed by applicant what size and strength such an explosion should be” (id.). These findings bear on such Wands factors as the nature of the invention, the unpredictability of the art and the amount of guidance presented. The Examiner also finds that [a]n appropriate experiment of the invention would involve a controlled environment where variables and factors relevant to the invention are tested against real or simulated tornados[;] that way should the test fail in disseminating the storm, corrections and further experiments could be conducted without substantial collateral losses. Id. at 13. Appellant argues that the Examiner’s position that an explosive cannot be used to disrupt a tornado relies on an article and the Examiner’s own viewing of television programs, which do not take into account Appellant’s approach of using a directed explosion to disrupt a tornado. App. Br. 10. Appellant also argues that “the [S]pecification provides ample suggestion for experimentation” and that “there is no reason provided for doubting whether directed explosions will disrupt tornados or hurricanes.” Id. at 11. Appellant contends that the rejection contains an assertion that one of ordinary skill in the art is a meteorologist and that the Specification must instruct a meteorologist on how to practice the invention. Id. at 12. Appeal 2010-009556 Application 11/706,676 6 Appellant also contends that “ones of ordinary skill in the arts relating to the individual elements of the claims” can create systems to carry out the claimed methods. Id. Appellant further contends that it is not necessary to exemplify every embodiment. Id. at 14. Appellant argues that the Examiner’s position “negates the concept of constructive reduction to practice” and “assumes that it is essential to completely reduce the invention to practice and prove its ‘feasibility’ before filing.” Reply Br. 2. Appellant further argues that, “[i]n the case of the present invention, as a practical matter, one would probably have to obtain many official clearances and permits before ever actually trying the invention” and that “[t]hus, as a practical matter, applying the ruling set forth in the Answer would prevent any individual from ever filing.” Id. at 3. With respect to the Examiner’s analysis of the experimentation issue, Appellant argues: The proposed experimentation sounds very much like the current extremely stringent standard for clinical trials required by the FDA for drug approval. . . . [S]etting up ordinance around a high value property like a chemical plant or an air force base that is surrounded by open areas would only involve the relatively minimal expense of putting together an explosive warhead on a rocket with, e.g., sand as the projectile, a shaped charge for propelling the projectile forward, and a conventional means for initiating the explosion, e.g., by radio waves as the rocket nears the debris field around a tornado. Since an approaching tornado is going to cause considerable damage whether or not one uses an explosive, and since the explosion is directed so as to avoid collateral damage, it seems reasonable to try [A]ppellant's proposed “experiment”. However, [A]ppellant agrees that it would be better to make the first trial in a more deserted area and to use a remotely controlled drone to track down the tornado to avoid having to wait until a tornado comes to a defended site. Appeal 2010-009556 Application 11/706,676 7 Id. at 4. We agree with the Examiner that the Specification does not enable one skilled in the art to perform the method of claim 21 without undue experimentation. Even accepting Appellant’s premise that an explosion will disrupt a tornado, Appellant has not adequately responded to the Examiner’s finding that “it is unknown and undisclosed by applicant what size and strength such an explosion should be.” See Ans. 5. The Specification explicitly supports the Examiner’s finding that the magnitude of the explosive force required to practice the invention is “unknown,” where it states: 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. 8, ll. 4-9 (emphasis added). 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 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). Spec. 8, ll. 10-18. However, it is unclear from the Specification how the calculations relate to the suggested research involving tornado generators or dust devils. On the record before us, we find that the experimentation needed to practice the invention is not merely routine, and that the Specification does not provide a reasonable amount of guidance as Appeal 2010-009556 Application 11/706,676 8 to the direction in which such experimentation should proceed. See Wands, 858 F.2d at 737. Appellant’s arguments do not persuade us that one skilled in the art could arrive at the correct size and strength of explosion without undue experimentation. See, e.g., App. Br. 9-14; Reply Br. 2-4. Furthermore, 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, than the calculations would indicate. See Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999) (“The scope of [patent] claims must be less than or equal to the scope of the enablement. The scope of 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.”); see also In re Goodman, 11 F.3d 1046, 1050 (Fed. Cir. 1993) (“[T]he specification must teach those of skill in the art ‘how to make and how to use the invention as broadly as it is claimed.’”); In re Fisher, 427 F.2d 833, 839 (CCPA 1970) (“[T]he scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in the art.”). Accordingly, we sustain the rejection of claims 21-39 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Appeal 2010-009556 Application 11/706,676 9 Rejections (2) – Anticipation Claims 21-23, 26, 29 and 34 Appellant argues persuasively that Yi does not disclose the limitation “a finely divided material used as a projectile,” as recited in independent claim 21. App. Br. 14. The Examiner contends that the recitation of the phrase “a finely divided material used as a projectile” fails to include which materials are considered finely divided nor does it differentiate, in any manner, how a finely divided projectile is any different from any projectile. Yi illustrates, in Figure 9, the use of a launching system in delivering an explosion via material device that collapses the eye walls of cyclonic wind. The material used in this system is considered to fulfill the broadly asserted limitation of being a finely divided material. Ans. 14. Appellant responds, and we agree, that the claim term “a finely divided material” should be construed in light of the Specification,7 which pertinently discloses that “‘[i]t is especially desirable to have some kind of relatively non-lethal material as a projectile to carry the force of the explosion . . . . Such materials include finely divided salts, sand, dry ice, ice, light plastic pellets, etc.’” Reply Br. 5 (quoting Spec. 6, ll. 41-44). The plain meaning of “finely divided” is “separated into small particles.” WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH LANGUAGE UNABRIDGED 663, 852 (1971). Because the Specification uses the term “finely divided” in accordance with its plain meaning, we give it that meaning in claim 21. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (the words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification). 7 See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc). Appeal 2010-009556 Application 11/706,676 10 To anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). Yi discloses launching “a material device” at a tornado and detonating the device inside the core flow of the funnel of the tornado to create “a material explosion.” Yi, para. [0042]. However, Yi does not disclose that the material device is separated into small particles, or otherwise disclose “a finely divided material used as a projectile” as recited in claim 21. Accordingly, we do not sustain the rejection of claim 21, and claims 22, 23, 26, 29 and 34 dependent thereon, under 35 U.S.C. § 102(b) as anticipated by Yi. Claim 39 Independent 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.” Claim 39 does not include a limitation similar to “a finely divided material used as a projectile” in claim 21, discussed above, and Appellant has not argued the patentability of claim 39. See App. Br. 14-15; Reply Br. 4-6. Thus, Appellant has waived any argument for patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Accordingly, we sustain the rejection of claim 39 under 35 U.S.C. § 102(b) as anticipated by Yi. Rejections (3)-(8) − Obviousness As noted supra, the Examiner rejects dependent claims 24, 25, 27, 28, 30-33 and 35-38 under 35 U.S.C. § 103(a) as unpatentable over Yi alone or Appeal 2010-009556 Application 11/706,676 11 in combination with Griffith, Morales, Krauch, and/or Atlas. In each rejection, the Examiner relies on Yi as disclosing the limitation “a finely divided material used as a projectile,” as recited in independent claim 21. Ans. 7-12. For the reasons discussed supra with respect to claim 21, Yi does not disclose this limitation. Accordingly, we do not sustain the rejections of claims 24, 25, 27, 28, 30-33 and 35-38 under 35 U.S.C. § 103(a) as unpatentable over Yi alone or in combination with Griffith, Morales, Krauch, and/or Atlas. DECISION We affirm the rejection of claims 21-39 as failing to comply with the enablement requirement. We reverse the rejection of claims 21-23, 26, 29 and 34, and affirm the rejection of claim 39, as anticipated by Yi. We reverse the rejections of claims 24 and 35-37 as unpatentable over Yi and Griffith; claims 27, 32 and 33 as unpatentable over Yi and Morales; claims 25 and 30 as unpatentable over Yi and Krauch; claim 28 as unpatentable over Yi, Morales and Griffith; claim 31 as unpatentable over Yi and Atlas; and claim 38 as unpatentable over Yi. 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). AFFIRMED mls Copy with citationCopy as parenthetical citation