Ex Parte Brady

Patent Trial and Appeal Board

May 7, 2013

12589154 (P.T.A.B. May. 7, 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.
12/589,154 10/19/2009 John Frederick Brady JB10200 3813
23843 7590 05/07/2013
Foothill Law Group
1625 The Alameda
Suite 400
San Jose, CA 95126
EXAMINER
WIECZOREK, MICHAEL P
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
05/07/2013 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 JOHN FREDERICK BRADY
________________

Appeal 2012-002383
Application 12/589,154
Technology Center 1700
________________

Before TERRY J. OWENS, JAMES C. HOUSEL, and
GEORGE C. BEST, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/589,154

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims methods for amplifying the Earth’s surface
albedo so as to affect the Earth’s average temperature. Claims 1, 7, and 14
are illustrative:
1. A method comprising the steps of:
applying to surfaces of the Earth a highly reflective particulate
material in an amount sufficient to prevent a rise in overall average Earth
temperature, wherein said material is applied non-contiguously.

7. A method comprising the steps of:
applying to surfaces of the Earth a highly reflective particulate
material such that Earth’s surface albedo is amplified by at least about 10%,
and measuring the amplification of said albedo via a satellite sensor, wherein
said applying is non-contiguous.

14. A method comprising the steps of:
applying to surfaces of the Earth a highly reflective particulate
material in an amount which is effective to detectably lower average global
atmospheric temperature and wherein said applying is non-contiguous.

The References
References relied upon by the Examiner
Aluisi US 3,120,445 Feb. 4, 1964
Carmon US 4,183,738 Jan. 15, 1980
Johnsen US 2006/0257213 A1 Nov. 16, 2006
Pluta US 2007/0037711 A1 Feb. 15, 2007
Lambert US 2009/0227161 A1 Sep. 10, 2009

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Dust and Sandstorms 1-8, Ministry of the Environment, Tokyo, Japan
(2nd ver., Mar. 2008) (hereinafter DSS).

References relied upon by the Appellant
Robert M. Hamwey, Active Amplification of the Terrestrial Albedo to
Mitigate Climate Change: An Exploratory Study 1-21, MITIGATION AND
ADAPTATION STRATEGIES FOR GLOBAL CHANGE (Nov. 10, 2005).

Hashem Akbari et al., Global cooling: increasing world-wide urban albedos
to offset CO2, CLIMATIC CHANGE (Jan. 29, 2008) (hereinafter Akbari II).

Hashem Akbari, Global Cooling: Increasing World-wide Urban Albedos to
Offset CO2, FIFTH ANN. CALIF. CLIMATE CHANGE CONF. (Sacramento, CA,
Sep. 9, 2008) (hereinafter Akbari I).

The Rejections
The claims stand rejected as follows: claims 1-20 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement, claims 1, 14, and 15 under 35 U.S.C. § 102(b) over DSS,
claims 1 and 4 under 35 U.S.C. § 103 over Johnsen in view of Pluta,
claims 2 and 3 under 35 U.S.C. § 103 over Johnsen in view of Pluta and
Aluisi, claim 5 under 35 U.S.C. § 103 over Johnsen in view of Pluta and
Carmon, claims 6, 7, 9-12, 14, 15, 18, and 20 under 35 U.S.C. § 103 over
Johnsen in view of Pluta and Lambert, claims 8, 13, 17, and 19 under
35 U.S.C. § 103 over Johnsen in view of Pluta, Lambert, and Carmon, and
claim 16 under 35 U.S.C. § 103 over Johnsen in view of Pluta, Lambert, and
Aluisi.
OPINION
We reverse the rejection under 35 U.S.C. § 102(b) and affirm the
other rejections.
Rejection under 35 U.S.C. § 112, first paragraph
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A specification complies with the 35 U.S.C. § 112, first paragraph,
enablement requirement if it allows those of ordinary skill in the art to make
and use the claimed invention without undue experimentation. See In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du
Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). Factors to
consider 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).
Nature of the invention, breadth of the claims and
presence or absence of working examples
The Appellant’s independent claims require “applying to surfaces of
the Earth a highly reflective particulate material in an amount sufficient to
prevent a rise in overall average Earth temperature” (claim 1), “applying to
surfaces of the Earth a highly reflective particulate material such that Earth’s
surface albedo is amplified by at least about 10%” (claim 7) and “applying
to surfaces of the Earth a highly reflective particulate material in an amount
which is effective to detectably lower average global atmospheric
temperature” (claim 14).
The Appellant’s claims encompass all methods for applying to Earth
surfaces a highly reflective particulate material in an amount sufficient to
prevent a rise in overall average Earth temperature, amplify the Earth’s
surface albedo by at least about 10% or detectably lower the average global
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atmospheric temperature. Hence, the claims are very broad. The
Appellant’s Specification provides no working examples.
Amount of direction and guidance presented and
quantity of experimentation necessary
The Appellant’s Specification indicates that the results recited in the
claims can be achieved by applying a sufficient amount of any suitable
reflective particulate material to solid Earth surfaces (Spec. 3:11-22) and that
the Earth’s surface albedo and overall average temperature can be measured
by conventional techniques (Spec. 3:26, 5:8-11). The Specification states
that “[t]he acreage, locations, and quantities of a suitable reflective
crystalline material can be determined by calculation and by empirical
observation” (Spec. 3:23-24), but the Specification provides no guidance as
to how to determine, experimentally or otherwise, the amount and locations
of highly reflective crystalline material required to achieve the results recited
in the claims or to establish that measured Earth overall average temperature
changes are attributable to the claimed method.
State of the prior art, predictability or unpredictability of the art
and relative skill of those in the art
The prior art discloses applying light reflective particles to Earth
surfaces to regulate the Earth surfaces’ albedo and temperature where the
particles are applied (Johnsen ¶¶ 0025, 0041, 0053, 0078; Pluta ¶¶ 0069-74,
0112; Aluisi col. 1, ll. 8-14; col. 2, ll. 15-27), but does not indicate how to
apply the light reflective particles in an amount sufficient to change the
Earth’s overall average temperature. The prior art is limited to simple,
untested mathematical models of the effect of Earth surface albedo
amplification on the Earth’s overall average temperature (Hamwey abstract,
pp. 9, 13-14; Akbari II abstract, 4th page). Thus, the prior art indicates that
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the skill in the art is limited to the ability to develop mathematical models
and that the art of amplifying the Earth’s surface albedo sufficiently to
change the Earth’s overall average temperature is unpredictable.
Thus, the above factors indicate that the Appellant’s disclosure would
not have enabled one of ordinary skill in the art to carry out the claimed
method without undue experimentation.
The Appellant argues that the art of changing the Earth’s overall
average temperature by amplifying the Earth’s surface albedo is predictable
and mature and that Hamwey, Akbari I, Akbari II and Lambert indicate that
the Earth’s global temperature can be altered by modification of the Earth’s
surface albedo (Br. 5-6, 8-9, 14-15).
Hamwey merely uses a static two dimensional radiative transfer
model to explore the potential for changing the Earth’s global temperature
by sufficiently amplifying the Earth’s overall surface albedo (abstract).
Hamwey’s statements that “[a] static two dimensional radiative transfer
model used in this exploratory study suggests that active amplification of
land surface albedo may represent a potential strategy for climate change
mitigation that can complement efforts to reduce greenhouse gas emissions”
(p. 13), ”more detailed dynamic climate modelling would be needed to
confirm the stationary value of the radiative forcing reduction that would
result from land surface albedo amplification” (abstract), “[a]ccurate ex ante
impact assessments would be required to validate global implementation of
related measures as a viable mitigation strategy”, id., “feasibility of
engineering such amplifications on a global scale for climate change
mitigation remains largely unexplored” (p. 9), “these results are preliminary
estimates, serving only to roughly gauge the climate change mitigation
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potential of active efforts to modify the terrestrial albedo” (pp. 13-14) and
“[c]limate feedbacks and feedback loops have not been analyzed” (p. 14)
indicate that the effect of Earth surface albedo amplification on the Earth’s
overall average temperature is unpredictable. The unpredictability further is
indicated by the statement in Akbari II that “through a simple model, we
estimate the decrease in radiative forcing by increasing the albedo of roofs
and paved surfaces in the urban areas” (4th page), the reliance in Akbari I
upon mere calculations based upon numerous estimates (8th to 16th pages),
and Lambert’s mere assumption of a 10% albedo increase (¶ 0058).
The Appellant argues that to carry out the claimed methods a
practitioner merely would need to apply highly reflective particulates to the
Earth’s surface until the desired effect on the Earth’s overall average
temperature is achieved, and that such a person could avoid or compensate
for other influences such as worldwide changes in fuel combustion,
manufacturing activity, factory emissions, precipitation, wind, cloud cover,
vegetation, and solar and volcanic activity on the Earth’s overall average
temperature (Br. 8-12). The Appellant acknowledges that “[w]hat is NOT
common knowledge is the actual effect, the magnitude, frequency, and/or
duration, of such other factors, and in particular, the effect of such other
factors on the methods as claimed” (Br. 9).
The Appellant does not explain how one of ordinary skill in the art
could have avoided or compensated for such other factors so as to establish
that an observed change in the Earth’s overall average temperature was a
result of the Appellant’s claimed method rather than being caused by the
other factors.
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For the above reasons we are not persuaded of reversible error in the
rejection under 35 U.S.C. § 112, first paragraph.
Rejection under 35 U.S.C. § 102(b)
DSS discloses that “[t]he onset and movement of DSS [dust and
sandstorms] depend on various factors such as regional weather, land use,
topography and geological features and these mechanisms are the subject of
continuing research. Even though the direct damage to the environment and
industry caused by DSS is known to some degree, its relation to global
warming and acid rain is still not clear” (p. 5).
The Examiner argues that “[s]ince the particle[s] are highly reflective
and are being applied to the surfaces of the Earth it would be inherent that
the deposition would have resulted in an increase in the Earth’s surface[’]s
albedo and thus at least somewhat preventing a sustained rise in the overall
average Earth temperature” (Ans. 8).
An inherent characteristic must be inevitable, and not merely a
possibility or probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA
1981). DSS’s statement that the relation of DSS to global warming is not
clear (p. 5) indicates a lack of inevitability of an effect of DSS on the Earth’s
overall average temperature and the Examiner has provided no evidence to
the contrary.
Accordingly, we reverse the rejection under 35 U.S.C. § 102(b).

Rejections under 35 U.S.C. § 103
Claims 1-6 and 14-19
Johnsen discloses a mixture of an organic powder, a thickening and/or
setting agent and one or more pigments which, when applied to soil by a
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method such as spraying or sprinkling, forms a gas permeable film or
membrane which can regulate the soil’s albedo such that the amount of the
sun’s radiation absorbed by the ground is reduced, thereby reducing the
temperature of the ground surface and, when the mixture is used on a large
scale, reducing the average temperature of the lower atmosphere (¶¶ 0025,
0027, 0038, 0041, 0053, 0058, 0077-78).
Pluta facilitates delivery of a continuous, semi-continuous or
intermittent sprayed film by including in the spray a high molecular weight
water-soluble hydroxypolymer compound containing lipophilic functional
groups (¶¶ 0018, 0114). The film can contain particles such as kaolin and
can be used as a ground-applied light reflectant (¶¶ 0069-70, 0112).
The Appellant argues that scaling up Johnsen’s method such that the
Appellant’s claim 4 requirement of preventing a sustained rise of more than
1 ºC in overall average Earth temperature over 10 years is met requires
improper reliance upon a per se rule of obviousness (Br. 19).
Johnsen discloses that the method is effective to increase the Earth
surface’s albedo so as to reduce the sun’s incident radiation and thereby
lower the ground and lower atmosphere temperatures, and is applicable to
large areas (¶¶ 0025, 0036, 0039, 0041, 0058, 0077-78). That disclosure
would have led one of ordinary skill in the art, through no more than
ordinary creativity, to reduce the Earth surface’s temperature or prevent a
rise in the Earth surface’s temperature to the extent desired by applying the
method to a sufficiently large land area, where the required land coverage is
determined through no more than routine experimentation, since, as argued
by Appellant, the prior art would have enabled one of ordinary skill in the art
to measure a change in the Earth’s surface albedo and a resulting change in
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the Earth’s overall average temperature (Br. 8-15). See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an obviousness
determination one “can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ”).
The Appellant argues that Johnsen discloses that the spray is applied
evenly and homogeneously and that, therefore, one of ordinary skill in the
art, in view of Pluta, would not have applied the spray noncontiguously
(Br. 20).
Johnsen’s disclosures (¶¶ 0102, 0112) relied upon by the Appellant in
support of that argument pertain to applying the spray evenly over the area
to which it is applied. They do not indicate that the areas to which the spray
is applied must be contiguous. Johnsen’s disclosure that the spray can be
applied to large areas to reduce the sun’s incident radiation and thereby
lower the ground and lower atmosphere temperatures (¶¶ 0025, 0036, 0039,
0041, 0058, 0077-78) would have led one of ordinary skill in the art, through
no more than ordinary creativity, to apply the spray to the areas required to
bring about the desired temperature effect regardless of whether the areas are
contiguous or noncontiguous.
The Appellant argues that one of ordinary skill in the art would not
have applied Johnsen’s spray noncontiguously because permitting water
evaporation between the areas to which the spray is applied would defeat
Johnsen’s stated objective of regulating water evaporation (Br. 20-21).
Johnsen discloses that the method helps solve a number of problems,
only one of which is undesired water evaporation (¶¶ 0040-49). Another of
the problems is global warming (¶ 0041). Regardless of the problem
addressed, Johnsen does not indicate that the land areas to which the spray is
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applied must be contiguous. Thus, Johnsen would have led one of ordinary
skill in the art, through no more than ordinary creativity, to apply the method
to contiguous or noncontiguous land areas to bring about the desired effect
in those areas, whether the effect is reducing the Earth’s surface temperature
or reducing water evaporation.
Claims 7-13 and 20
Regarding independent claim 7 and its dependent claims 8-13 and 20
the Appellant provides a substantive argument only as to claims 8 and 11
(Br. 22-23). The Appellant argues, regarding claims 8 and 11, that Pluta
would not have suggested applying spray to primarily (claim 8) or only
(claim 11) plants’ skyward facing surfaces (Br. 23-24).
To meet those claim requirements the Examiner relies upon Johnsen
(Ans. 12, 16, 19). The Appellant does not explain how that reliance upon
Johnsen is in error.
For the above reasons we are not convinced of reversible error in the
rejections under 35 U.S.C. § 103.
DECISION/ORDER
The rejection of claims 1, 14 and 15 under 35 U.S.C. § 102(b) over
DSS is reversed. The rejection under 35 U.S.C. § 112, first paragraph of
claims 1-20 and the rejections under 35 U.S.C. § 103 of claims 1 and 4 over
Johnsen in view of Pluta, claims 2 and 3 over Johnsen in view of Pluta and
Aluisi, claim 5 over Johnsen in view of Pluta and Carmon, claims 6, 7, 9-12,
14, 15, 18, and 20 over Johnsen in view of Pluta and Lambert, claims 8, 13,
17 and 19 over Johnsen in view of Pluta, Lambert and Carmon, and claim 16
over Johnsen in view of Pluta, Lambert and Aluisi are affirmed.
It is ordered that the Examiner’s decision is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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