Ex Parte Bar-Gadda

Board of Patent Appeals and Interferences

Aug 15, 2011

10819591 (B.P.A.I. Aug. 15, 2011)

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.
10/819,591 04/06/2004 Ronny Bar-Gadda A-75148-1 6774
40461 7590 08/16/2011
EDWARD S. WRIGHT
1100 ALMA STREET, SUITE 207
MENLO PARK, CA 94025
EXAMINER
WONG, EDNA
ART UNIT PAPER NUMBER
1759
MAIL DATE DELIVERY MODE
08/16/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RONNY BAR-GADDA
__________

Appeal 2009-012528
Application 10/819,591
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

Opinion concurring-in-part and dissenting-in-part filed by GAUDETTE,
Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s
final rejection of claims 1, 3, 6-9, 12, 13, 29, 31, and 33.1 We have jurisdiction
under 35 U.S.C. § 6(b).

1 Claims 2, 4, 5, 10, 11, 14-28, 30, and 32 are also pending but have been
withdrawn from consideration.
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We AFFIRM and enter a new ground of rejection.
The subject matter on appeal is directed to a method of generating hydrogen
and oxygen gas using an electromagnetic field. Claim 1, the sole independent
claim, is reproduced below.
1. A method of generating hydrogen and oxygen gas, comprising
the steps of:
[(a)] exciting water molecules in an electromagnetic field having a
frequency spectrum that only stimulates one or more of the kinetic
and electronic modes of the molecules and an energy level
commensurate with a molecular bonding energy of the molecules to
dissociate the molecules into hydrogen and oxygen species without
the use of externally applied thermal energy;
[(b)] separating the dissociated hydrogen and oxygen species within
the electromagnetic field; and
[(c)] removing the separated species from the electromagnetic field
in a manner such that like species recombine to form hydrogen and
oxygen gas.
App. Br., Claims Appendix (formatting and emphasis added).2
The following Examiner’s rejections are before us on appeal:3
(1) claims 1, 3, 6-9, 12, 13, 29, 31, and 33 are rejected under 35 U.S.C.
§ 112, first paragraph, based on the written description requirement;
(2) claim 29 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the subject
matter which the Appellant regards as the invention;

2 Appeal Brief dated January 16, 2009.
3 The rejection of claims 12, 13, and 31 under 35 U.S.C. § 112, second paragraph,
was withdrawn in the Examiner’s Answer dated March 23, 2009 (“Ans.”).
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(3) claims 1, 3, 6, and 29 are rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over
Monahan4;
(4) claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Monahan;
(5) claims 8, 12, and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Monahan and Toyir5;
(6) claims 9 and 31 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Monahan, Toyir, and Sayama6; and
(7) claim 33 is rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of Monahan and Coury.7
B. DISCUSSION
1. New ground of rejection
The Examiner contends that the Appellant’s application, as originally filed,
does not provide written description support for the limitation “without the use of
externally applied thermal energy” recited in claim 1. In particular, the Examiner
finds that the limitation “without the use of externally applied thermal energy” is a
negative limitation that does not have literal support in the originally filed

4 US 4,233,127 issued November 11, 1980.
5 Jamil Toyir et al., Methanol synthesis from CO2 and H2 over gallium promoted
copper-based supported catalysts. Effect of hydrocarbon impurities in the CO2/H2
source, 3 Phys. Chem. Chem. Phys. 4837-42 (2001).
6 K. Sayama & H. Arakawa, Photocatalytic Decomposition of Water and
Photocatalytic Reduction of Carbon Dioxide over ZrO2 Catalyst, 97 J. Phys.
Chem. 531-33 (1993).
7 US 4,330,307 issued May 18, 1982.
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disclosure. Ans. 5-6. Relying on MPEP § 2173.05(i), the Examiner explains that
any negative limitation must be supported by the original disclosure and “[t]he
mere absence of a positive recitation is not the basis for an exclusion.” Ans. 16
(emphasis in original).8
In response, the Appellant contends:
[T]he specification describes a process in which water molecules are
excited in the specified manner without the use of externally applied
thermal energy. As described at Page 10, line 23 to Page 12, line 10
of the written description, the water molecules are excited by an
electromagnetic field generated at frequencies which are specifically
chosen to excite the kinetic and/or electronic modes of the water
molecules. No externally applied thermal energy is used, and one
following the written description would indeed achieve the claimed
dissociation of the molecules without the use of externally applied
thermal energy.
App. Br. 4.
Claim 1 recites a method of generating hydrogen and oxygen gas
comprising, inter alia, the step of “exciting water molecules in an electromagnetic
field . . . to dissociate the molecules into hydrogen and oxygen species without the
use of externally applied thermal energy.” App. Br., Claims Appendix (emphasis
added).
We had a difficult time parsing the Appellant’s claim because the metes and
bounds of the phrase “without the use of externally applied thermal energy” cannot
be determined from the Appellant’s original disclosure which is completely silent
as to the claim limitation at issue. See Ans. 17 (“one having ordinary skill in the

8 The Examiner’s Answer dated March 23, 2009, does not contain page numbers.
The page numbers referred to in this opinion are the page numbers that are
automatically generated in the image file wrapper of the instant application.
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art does not know what the externally applied thermal energy is external to”). By
definition, “[t]hermal energy is part of the overall internal energy of a system.”
Thermal Energy Explained, What is Thermal Energy?, http://thermalenergy.org/
(last visited July 28, 2011) (copy attached). More specifically, thermal energy
“refers to the part of the internal energy of a system which is the total present
kinetic energy resulting from the random movements of atoms and molecules.” Id.
Thus, it is not understood how thermal energy can be “externally applied.”
To the extent the Appellant intended to exclude a thermal energy source in
claim 1,9 the metes and bounds of the Appellant’s system are not known.
Therefore, it is not possible to determine whether a thermal energy source is
“external” to the Appellant’s system. For example, it is unclear on this record
whether the Appellant’s system includes the thermal energy source that is used to
generate the steam which is the source of the hydrogen and oxygen species.
Compare Spec., p. 14, l. 12-p. 15, l. 24 and p. 17, ll. 4-10 (describing a system for
developing energy and steam for the reactor 10) with Spec. p. 17, ll. 12-19 (high
temperature steam developed external to the system depicted in Figure 3).
For the reasons set forth above, we enter a new ground of rejection of claims
1, 3, 6-9, 12, 13, 29, 31, and 33 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter
which the Appellant regards as the invention.10

9 The Appellant argues that “dissociation is done solely by magnetic excitation . . .
without the need for an external thermal energy source.” App. Br. 6 (emphasis
added).
10 To the extent that the claim construction offered by the dissent is tenable, the
different claim constructions offered by the majority and the dissent are evidence
that claim 1 is amenable to two interpretations and thus indefinite. See Ex parte
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2. Rejection under 35 U.S.C. § 112, first paragraph
The Examiner contends that the Appellant’s original disclosure does not
provide written description support for the limitation “without the use of externally
applied thermal energy” recited in claim 1. Ans. 5-6. We agree. As discussed
above, the “external” application of thermal energy appears to be inconsistent with
scientific principles. Therefore, the original disclosure cannot be said to “convey
with reasonable clarity to those skilled in the art that, as of the filing date sought,
[the Appellant] was in possession of the invention.” Carnegie Mellon Univ. v.
Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008), quoting Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). For this reason, the
§ 112, first paragraph, rejection of claims 1, 3, 6-9, 12, 13, 29, 31, and 33 is
affirmed.
3. Rejections under 35 U.S.C. §§ 102(b) and 103(a)
The patentability of claims 1, 3, 6-9, 12, 13, 29, 31, and 33 cannot be
assessed in view of the indefiniteness of claim 1. In particular, it is not known
whether the method recited in claim 1 excludes the solar energy used in the
Monahan process where, according to the Monahan process, the thermal energy
from the sunlight is part of the internal energy of the disclosed system and the
thermal energy source is part of the disclosed system.11 See, e.g., Monahan, col. 1,

Miyazaki, 89 UPSQ2d 1207, 1211 (BPAI 2008) (holding that “if a claim is
amenable to two or more plausible claim constructions, the USPTO is justified in
requiring the applicant to more precisely define the metes and bounds of the
claimed invention by holding the claim unpatentable under 35 U.S.C. §112, second
paragraph, as indefinite”).
11 The Examiner equates the solar energy disclosed in the Monahan process with
the claimed electromagnetic field. Ans. 7. The Appellant does not challenge the
Examiner’s finding on appeal.
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l. 53-col. 2, l. 22; Monahan Fig. 1; see also Ans. 17 (“There is no externally
applied thermal energy (source) to the system in the method disclosed by
Monahan.”). Therefore, the §§ 102(b) and 103(a) rejections of claims 1, 3, 6-9, 12,
13, 29, 31, and 33 are reversed.12 See In re Steele, 305 F.2d 859, 862-63 (CCPA
1962) (reversing obviousness rejection because it was based on speculation as to
the meaning of claim terms and assumptions as to claim scope).
4. Rejection under 35 U.S.C. § 112, second paragraph
Claim 1 recites the step of “exciting water molecules in an electromagnetic
field having a frequency spectrum that only stimulates one or more of the kinetic
and electronic modes of the molecules.” Claim 29 depends from claim 1 and
recites that “the frequency of the electromagnetic field is selected to stimulate the
water molecules in a mode selected from the group consisting of a translational
mode, a vibrational mode, a rotational mode, and the electronic mode.” App. Br.,
Claims Appendix (emphasis added).
The Examiner contends that it is unclear whether “a mode” recited in claim
29 further limits the “one or more of the kinetic and electronic modes of the
molecules” recited in claim 1. Ans. 6-7, 18-19.
We disagree. The Appellant discloses that the three kinetic modes of motion
of a molecule are rotational, vibrational, and translational motion. Spec., p. 11, ll.
14-16; Reply Br. 2.13 Thus, we conclude that one of ordinary skill in the art would
have understood that (1) the translational, vibrational, and rotational modes recited
in claim 29 refer to “the kinetic . . . modes of the molecules” recited in claim 1 and
(2) “a mode” recited in claim 29 limits the frequency spectrum recited in claim 1 to

12 In reversing the §§ 102(b) and 103(a) rejections on appeal we have not reached
the merits of the rejections.
13 Reply Brief dated May 26, 2009.
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one mode selected from the group consisting of a translation mode, a vibrational
mode, a rotational mode, and the electronic mode recited in claim 1. For this
reason, we will reverse the § 112, second paragraph, rejection of claim 29.
C. DECISION
In view of the foregoing, it is hereby
ORDERED that the decision of the Examiner is reversed; and it is
FURTHER ORDERED that a new ground of rejection of claims 1, 3,
6-9, 12, 13, 29, 31, and 33 under 35 U.S.C. § 112, second paragraph, is entered
under 37 C.F.R. § 41.50(b) (2010); and it is
FURTHER ORDERED that the Appellant may reopen prosecution or
request rehearing under 37 C.F.R. § 41.50(b) (2010) in response to this Decision
on Appeal; and it is
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)
(2010).

REVERSED;
37 C.F.R. § 41.50(b)

ssl
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GAUDETTE, Administrative Patent Judge, concurring-in-part and dissenting-in-
part.

I respectfully dissent from the majority’s decision to affirm the rejection of
claims 1, 3, 6-9, 12, 13, 29, 31, and 33 under 35 U.S.C. § 112, first paragraph, and
to enter a new ground of rejection of claims 1, 3, 6-9, 12, 13, 29, 31, and 33 under
35 U.S.C. § 112, second paragraph. I concur in the majority’s decision to reverse
the Examiner’s rejections under 35 U.S.C. §§ 102(b) &103(a). I join in the
majority’s decision to reverse the rejection of claim 29 under 35 U.S.C. § 112,
second paragraph.
The issues in this appeal are based on an underlying disagreement between
the Examiner and Appellants over the scope and meaning of the first step of claim
1 (see Majority Opinion (“Dec.”) 2):
exciting water molecules in an electromagnetic field having a
frequency spectrum that only stimulates one or more of the kinetic
and electronic modes of the molecules and an energy level
commensurate with a molecular bonding energy of the molecules to
dissociate the molecules into hydrogen and oxygen species without
the use of externally applied thermal energy.

I do not agree with the majority view that the claim language is indefinite. I
interpret the disputed claim language in a different way than the majority. See
Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008) (“A
determination of claim indefiniteness is a legal conclusion that is drawn from the
court’s performance of its duty as the construer of patent claims.” (quoting
Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 705
(Fed. Cir. 1998))). Based on my claim interpretation, I would reverse all grounds
of rejection and would not enter a new ground of rejection.

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FINDINGS OF FACT
At the time of Appellant’s invention, one of ordinary skill in the art would
have been familiar with methods of using solar energy to separate hydrogen and
oxygen from water. (Monahan col. 1, ll. 22-29 (citing Diggs (US 4,030,890,
issued Jun. 21, 1977)).) The ordinary artisan would have been familiar with
devices of the type disclosed by Diggs which “rely solely on thermal energy to
promote dissociation” of water molecules. (Monahan col. 1, ll. 30-31; see also,
Diggs, col. 1, l. 65-col. 2, l. 18); cf. Thermal Energy Explained (“The ultimate
source of thermal energy available to mankind is the sun.”).) One of ordinary skill
in the art would also have been aware that “certain frequencies of the light
spectrum, primarily [] near ultraviolet wave ranges [have the ability] to fracture the
molecular bonds in the molecules of water vapor, causing direct dissociation
through the medium of wave form irradiation.” (Monahan col. 1, ll. 32-36.) The
ordinary artisan would have understood from Monahan’s disclosure that it is
possible to use both the thermal and photolytic properties of solar energy to
dissociate water molecules into hydrogen and oxygen. (See Monahan col. 1, ll. 39-
50.) Monahan describes the mechanism by which this combined reaction is
believed to take place as follows:
First, a portion of the concentrated incoming radiant energy
(sunlight) primarily the infra-red frequencies . . . is converted to
thermal energy (heat) upon contact with water vapor. This thermal
energy is then absorbed by the molecules of the water vapor, agitating
(heating) the water molecules and gradually increasing the frequency
level of molecular vibrations to the level required for rupture of the
molecular bonds and dissociation of the water molecules into their
components. . . .

Second, radiant wave form energy in the form of concentrated
sunlight directly bombards the agitated molecular bonds of the water
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vapor molecules and the near ultra-violet wave lengths . . . of the light
spectrum directly excite the vibrational level of the molecular bonds
beyond the level required for fracturing of the molecular bonds
resulting in the dissociation of the water molecules into atoms
molecules and ions. . . . Thus, the near ultra-violet wave frequencies
of the natural light spectrum can supply additional energy for breaking
the molecular bonds in water vapor.

(Monahan col. 1, l. 51-col. 2, l. 19.) At the time of Appellant’s invention, one of
one of ordinary skill in the art would have understood from Monahan that “solar
energy [can be] utilized to heat water in a boiler to a sufficient temperature to
operate a steam turbine, which in turn runs a generator. The power generated [in
turn can be used to] operate[] an electrolytic cell in which hydrogen and oxygen
are formed from water.” (Monahan, col. 6, ll. 46-50.)
According to the Specification, a significant disadvantage of electrolysis
methods for producing hydrogen and oxygen from water is the high electrical
power requirement. (Spec. 2:26-28.) A goal of the present invention is to
“overcome the[] inherent disadvantages and limitations of electrolysis to split
water into its constituent elements of hydrogen and oxygen.” (Spec. 3:9-11.) The
invention relies on an electromagnetic field developed within the reaction zone of a
reactor as “the primary source to effect dissociation of the molecular water.”
(Spec. 13:23-24.) According to the Specification, “molecules absorb energy
throughout the entire electromagnetic spectrum14. . . . [T]he absorbed energy may
increase or decrease any of three kinetic modes of motion of the molecule, these

14 At the time of Appellant’s invention, the ordinary artisan would have understood
that the “electromagnetic spectrum” includes, “in order of decreasing frequency,
cosmic-ray photons, gamma rays, x-rays, ultraviolet radiation, visible light,
infrared radiation, microwaves, and radio waves.” The American Heritage®
Dictionary of the English Language (2007), available at
http://www.credoreference.com/entry/hmdictenglang/electromagnetic spectrum.
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modes being rotational, vibrational and translational motion.” (Spec. 11:12-16.)
“[E]lectromagnetic energy at selected wavelengths may also be absorbed to excite
the electronic mode of the molecule.” (Spec. 11:24-25.) “With sufficient energy
absorption, the molecular bond will be overcome thereby allowing dissociation of
the molecule into its constituent parts.” (Spec. 11:27-28.)
Appellant’s Specification explicitly describes developing an electromagnetic
field within a reactor adapted to receive water molecules by applying electrical
energy to a coil within the reactor. (Spec. 10:26-27.) However, the Specification
states that other structures capable of developing an electromagnetic field in the
reaction zone of the reactor may be utilized, for example, “the electromagnetic
field within the reaction zone of the reactor [] can be developed by applying
electrical energy across radially opposed field plates, axially spaced field rings, or
by a waveguide.” (Spec. 11:7-9.)
Similar to Monahan’s use of solar energy to generate the electrical power for
operation of an electrolysis unit (see Monahan, col. 6, ll. 46-50 supra p. 3), the
present invention contemplates the use of energy sources such as solar and wind to
generate the electrical power for the reactor and to develop high temperature
steam, which is then introduced into the reactor as the source of water molecules
for dissociation. As indicated in the Specification, by using water molecules in the
form of high temperature steam, energy input into the reactor is primarily utilized
for the absorption at the specified frequency for dissociation, i.e., energy used for
dissociation is not consumed to develop the steam. (Spec. 12:29-13:3.)
CLAIM INTERPRETATION
The appropriate starting point for claim construction is always with the
language of the asserted claim itself. Z4 Techs., Inc. v. Microsoft Corp., 507 F.3d
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1340, 1348 (Fed. Cir. 2007) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005)).
Generally, terms in a patent claim are given their plain, ordinary, and
accustomed meaning to one of ordinary skill in the relevant art. After
identifying the plain meaning of a disputed claim term, the court
examines the written description and the drawings to determine
whether use of that term is consistent with the ordinary meaning of the
term.

Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143, 1148 (Fed. Cir. 2003)
(citations omitted). Prior art references may be “indicative of what all those skilled
in the art generally believe a certain term means” and “can often help to
demonstrate how a disputed term is used by those skilled in the art.” Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).
The Specification neither explicitly uses the phrase “without the use of
externally applied thermal energy” nor the term “thermal energy.” However, one
of ordinary skill in the art would have understood that applying thermal energy, in
the context of the invention, refers to applying heat, for example by converting
certain frequencies of sunlight (solar energy) to thermal energy. 15 One of ordinary
skill in the art would have known that water vapor molecules can be excited to an
energy level at which they dissociate by exposure to certain wave frequencies
without applying heat. (See Monahan col. 1, l. 51-col. 2, l. 19 supra pp. 2-3; cf.

15 (Cf. Rep. Br. 2-3 (“The Examiner, for the first time in her Answer, argues that the
heating of the water vapor with solar energy to its dissociation temperature, as
taught by Monahan, is not the use of externally applied thermal energy because the
thermal energy is applied internally. That, however, overlooks the fact that the
thermal energy that heats the water vapor comes from an external source (the sun)
even though the actual heating of the water vapor may take place within the
reaction chamber. Without that external source, the water vapor would not be
heated, and the system would not work.”).)
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Ans. 8-9; cf. App. Br. 5-6 (“The Monahan Reference”).) The ordinary artisan
would have understood from the Specification that energy sufficient to dissociate
water molecules could be generated by wave frequencies in an electromagnetic
field, without heating the water molecules using an external source of thermal
energy. (Spec. 13:23-26 (“[T]he electromagnetic field developed within the
reaction zone of the reactor . . . [is] the primary source to effect dissociation of the
molecular water . . . [, although] other sources of energy for dissociation may be
used in addition thereto to enhance overall efficiency of the dissociation
process.”).)
From the language of claim 1, it is clear that the “exciting” step is being
performed while the water molecules are in an electromagnetic field. Thus, the use
of externally applied thermal energy in the claimed method is only precluded when
the water molecules are being excited in the electromagnetic field.
THE NEW GROUND OF REJECTION
New Ground of Rejection of claims 1, 3, 6-9, 12, 13, 29, 31, and 33
under 35 U.S.C. § 112, second paragraph, as indefinite

The majority, relying on a common definition of “thermal energy,” finds that
“[t]hermal energy is part of the overall internal energy of a system” (Dec. 5). The
majority thus determines the claim language is indefinite because it is unclear how
thermal energy can be “externally applied.” (Id.)16 I do not agree that one of

16 The majority also intimates the phrase “without the use of externally applied
thermal energy” would preclude the use of thermal energy to heat water molecules
which are subsequently supplied to the reactor in which they are subjected to an
electromagnetic field. (See Dec. 5.) As explained above, I interpret claim 1 as
precluding the use of externally applied thermal energy only when the water
molecules are being excited in the electromagnetic field.

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ordinary skill in the art would have interpreted the term “thermal energy” as
suggested by the majority. Rather, as explained in the above Claim Interpretation
section, I maintain the ordinary artisan would have clearly understood the scope
and meaning of the claim phrase “without the use of externally applied thermal
energy” upon considering the term “thermal energy” in the context of technologies
for dissociating water to form hydrogen and oxygen, and in light of the inventor’s
goal and description of the invention in the Specification. See In re NTP, Inc.,
2011 WL 3250543 at *3 (Fed. Cir. 2011) (citing In re Suitco Surface, 603 F.3d
1255, 1259 (Fed. Cir. 2010)) (“While the Board must give the terms their broadest
reasonable construction, the construction cannot be divorced from the specification
and the record evidence.”); cf. Telcordia Techs., Inc. v Cisco Systems, Inc., 612
F.3d 1365, 1377 (Fed. Cir. 2010) (citing Intel Corp. v. VIA Techs., Inc., 319 F.3d
1357, 1365-66 (Fed. Cir. 2003)) (“[C]laim definiteness depends on the skill level
of an ordinary artisan. . . . Therefore, the specification need only disclose adequate
defining structure to render the bounds of the claim understandable to an ordinary
artisan.”).
Therefore, I would not enter a new ground of rejection under 35 U.S.C.
§ 112, second paragraph.
THE EXAMINER’S REJECTIONS
Rejection of claims 1, 3, 6-9, 12, 13, 29, 31, and 33
under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement

The Examiner maintains the Specification does not provide support for the
claim limitation “without the use of externally applied thermal energy” (claim 1).
(Ans. 4.) The Examiner states that “the entire specification as originally filed,”
“has been carefully considered,” “however, there is found no literal support in the
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specification for the newly added limitation in amended claim 1.” (Id.) The
Examiner further asserts “the claim limitation of ‘without the use of externally
applied thermal energy’ appears to contradict what is disclosed in Appellant’s Fig.
3, which shows an externally applied thermal energy that is generated by the
electric coil 42.” (Ans. 5.)
The Examiner’s rejection is based on a misunderstanding of the written
description requirement of 35 U.S.C. § 112, first paragraph, as requiring literal
support in the Specification for newly added claim limitations. In re Gosteli, 872
F.2d 1008, 1012 (Fed. Cir. 1989) (noting that later claimed subject matter need not
be expressed in ipsis verbis in the application disclosure as originally filed, as long
as persons of ordinary skill in the art clearly recognize that the inventor invented
what is claimed); see also, PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299,
1306 (Fed. Cir. 2008) (explaining that § 112, ¶ 1 “requires that the written
description actually or inherently disclose the claim element”). The Examiner’s
rejection is also based on an erroneous finding that the electric coil used to
generate a magnetic field in a preferred embodiment of the invention constitutes
“externally applied thermal energy.” (See Rep. Br. 1 (“[T]he Examiner has
mischaracterized coil 42 as generating an externally applied thermal energy. That
coil is not a heating coil, but rather a magneto coil in which an electric current is
developed by the flow of ions within the magnetic field produced by coil 16. . . .
The energy that dissociates the molecules into hydrogen and oxygen species
without the use of externally applied thermal energy comes from the magnetic
field, not from coil 42.”)). As discussed above (see Spec. 10:26-27 supra p. 4;
CLAIM INTERPRETATION supra pp. 4-6), the Specification describes applying
electrical energy to a coil to develop an electromagnetic field within a reactor
adapted to receive water molecules; the energy required to dissociate the water
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molecules is generated by wave frequencies in the electromagnetic field. The coil
is not, as suggested by the Examiner, used to generate heat.
For the reasons explained in the Claim Interpretation section above, I am in
agreement with Appellant (see App. Br. 4) that one of ordinary skill in the art
would have understood from the originally filed application that the inventor
invented a method of generating hydrogen and oxygen gas in which water
molecules were dissociated in an electromagnetic field by exposure to certain wave
frequencies without applying heat. In re Alonso, 545 F.3d 1015, 1019 (Fed. Cir.
2008) (citations omitted) (“To satisfy [the written description] requirement, the
specification must describe the invention in sufficient detail so ‘that one skilled in
the art can clearly conclude that the inventor invented the claimed invention as of
the filing date sought.’” (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565,
1572 (Fed. Cir. 1997))). Therefore, I would reverse the rejection of claims 1, 3, 6-
9, 12, 13, 29, 31, and 33 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
Rejections under 35 U.S.C. §§ 102(b) &103(a)
Having determined the appealed claims are indefinite, the majority reversed
the Examiner’s prior art rejections as improperly based on speculations and
assumptions as to the scope and meaning of the claims. I do not subscribe to the
majority’s determination of indefiniteness. Therefore, I have considered the merits
of the Appellant’s and Examiner’s positions.
The Examiner’s prior art rejections are based on a finding that the solar
energy used in Monahan’s method of dissociating water molecules meets the claim
1 limitation of “an electromagnetic field having a frequency spectrum” because
sunlight includes infrared and ultraviolet wave frequencies which are part of the
frequency spectrum of an electromagnetic field. (Ans. 6, 19.)
Appeal 2009-012528
Application 10/819,591

10

Appellant argues Monahan uses unfiltered solar energy having a large
number of frequencies “[w]ith no discrimination between frequencies that assist in
dissociation and those that inhibit dissociation.” (App. Br. 6.) Appellant thus
maintains the Examiner has failed to identify a teaching or suggestion of using “a
frequency spectrum that only stimulates one or more of the kinetic and electronic
modes of the molecules and an energy level commensurate with a molecular
bonding energy of the molecules to dissociate the molecules into hydrogen and
oxygen species” (claim 1 (emphasis added)). (Id.) The Specification (see Spec.
11:12-12:10) supports Appellant’s contention that water molecules do not
dissociate at all wavelengths and frequencies within the electromagnetic spectrum
and, therefore, the claimed “exciting” step would not necessarily or inherently
result from Monahan’s use of solar energy to dissociate water molecules. For this
reason, I would reverse the Examiner’s prior art rejections of the claims.
Accordingly, I concur in the majority’s decision to reverse the rejections
under 35 U.S.C. §§ 102(b) &103(a).
Rejection of claim 29 under 35 U.S.C. § 112, second paragraph
I agree with the majority’s decision to reverse this ground of rejection for the
reasons stated (Dec. 7-8).
CONCLUSION
I would reverse the Examiner’s decision to reject claims 1, 3, 6-9, 12, 13, 29,
31, and 33. I would not enter a new ground of rejection under 35 U.S.C. § 112,
second paragraph.