Ex Parte Carpenter

Board of Patent Appeals and Interferences

Aug 5, 2008

09935936 (B.P.A.I. Aug. 5, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DONALD G. CARPENTER
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Appeal 2007-3573
Application 09/935,9361
Technology Center 2800
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Decided: August 5, 2008
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and MARC S.
HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a non-final rejection of
claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s invention relates to method and apparatus for converting
mechanical energy into electrical energy (Spec. 1). Two pistons move in a
reciprocating, synchronous manner, driven by respective piston rods with
speeds that are a sinusoidal function of their separation from each other

1 Application filed August 23, 2001.
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(Spec. 22). Each of the facing surfaces of the two pistons has four circular
openings, disposed directly opposite one another. Magnetized objects are to
be ejected at high speed from one piston to the other repeatedly (Spec. 22-
23). Kinetic energy is to be extracted from the received magnetized objects
and converted into electrical energy (Spec. 24).
Claim 1 is exemplary:
1. A device for converting kinetic energy into electrical energy
comprising, a first moving system, a second moving system for relative
movement toward and away from said first moving system, an object for
transfer between said first moving system and said second moving system
for developing the kinetic energy relative thereto, means for converting the
kinetic energy from said object at second moving system into electrical
energy

The Examiner does not rely upon prior art in rejecting the claims
under appeal.
Claims 1-8 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
Claims 1-8 stand rejected under 35 U.S.C. § 101 as not being
supported by either a known asserted utility or a well-established utility.
Appellant contends that the principle of conservation of energy is not
valid, or at least is not universally true (App. Br. 14), and provides a
declaration from the inventor which includes a description of an experiment
that purports to demonstrate the operability of Appellant’s invention.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the (Fourth Supplemental) Brief (filed November 14,
2005), the Examiner’s Answer (mailed July 3, 2006), and the Reply Brief
(filed August 28, 2006) for their respective details.
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ISSUES
The two principal issues in the appeal before us, closely related to one
another, are whether the Examiner erred in finding that the Specification
does not enable one of ordinary skill in the art to make and use the invention
without undue experimentation, and whether the Examiner erred in holding
Appellant’s invention to be inoperative because it contradicts known
scientific principles.
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, he has invented a method and
apparatus for converting mechanical energy into electrical energy (Spec. 1).
Two pistons move in a reciprocating, synchronous manner, driven by
respective piston rods with speeds that are a sinusoidal function of their
separation from each other (Spec. 22). Each of the facing surfaces of the two
pistons has four circular openings, disposed directly opposite one another.
Magnetized objects are to be ejected at high speed from one piston to the
other repeatedly (Spec. 22-23). Kinetic energy is to be extracted from the
received magnetized objects and converted into electrical energy (Spec. 24).
PRINCIPLES OF LAW
The standard for determining whether the Specification meets the
enablement requirement is whether a person skilled in the art can make and
use the claimed invention without undue experimentation. In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988). If the examiner's basis for questioning the
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sufficiency of the disclosure is reasonable the burden shifts to appellants to
come forward with evidence to rebut this challenge. In re Doyle, 482 F.2d
1385, 1392 (CCPA 1973).
An invention that is “inoperative” (i.e., it does not operate to produce
the results claimed by the patent applicant) is not a “useful” invention in the
meaning of the patent law. See, e.g., Newman v. Quigg, 877 F.2d 1575, 1581
(Fed. Cir. 1989). A disclosure of a utility satisfies the utility requirement of
Section 101 unless there are reasons for the artisan to question the truth of
such disclosure. In re Gaubert, 524 F.2d 1222, 1224 (CCPA 1975); In re
Langer, 503 F.2d 1380, 1391-92 (CCPA 1974).
When a patent applicant presents an application describing an
invention that contradicts known scientific principles, the burden is on the
Examiner simply to point out this fact to Appellant …. The burden shifts to
Appellant to demonstrate either that his invention, as claimed, does not
violate basic scientific principles or that those basic scientific principles are
incorrect. Newman v. Quigg, 681 F. Supp. 16, 18 (D.D.C. 1988).

ANALYSIS
Enablement and utility
We will address the rejections of the claims under 35 U.S.C. § 112,
first paragraph, and 35 U.S.C. § 101 together. The lack of utility because of
inoperativeness (a question of fact), and the absence of enablement (a
question of law), are closely related grounds of unpatentability. Ex parte
Dash, 27 USPQ2d 1481, 1484 (Bd. Pat. App. & Int. 1992).
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The Examiner rejected claims 1-8 as lacking enablement under § 112,
and as inoperative under § 101, because the invention contradicts the
principle of conservation of energy, and because the Specification does not
explain how to make and use the claimed “means for converting kinetic
energy… into electrical energy” (Ans. 5; Non-Final Rejection mailed
September 15, 2004, at 6). We agree with the Examiner that claim 1 invokes
35 U.S.C. § 112, sixth paragraph, by reciting “means for converting the
kinetic energy from said object at second moving system into electrical
energy” (Ans. 5). The corresponding structure in the Specification
purportedly produces more energy than it consumes (Appellant’s so-called
“excess-energy” ΔE, Spec. 28), giving rise to the Examiner’s rejection.
From the beginning of prosecution, the Examiner has required
Appellant to submit a working model (see Non-Final Rejection mailed
November 7, 2002; Final Rejection mailed July 24, 2003; Non-Final
Rejection mailed September 15, 2004; and the Examiner’s Answer).
Under the rule expressed in Newman, 681 F. Supp. at 18, the
Examiner established a reasonable basis for questioning the sufficiency of
the disclosure, and shifted the burden of proof to Appellant to come forward
with evidence to support his claim that his device generates more energy
than it consumes (Spec. 28). Despite the Examiner’s requirements,
Appellant has never supplied the Office with a working model. Appellant’s
efforts to carry his burden of proof consist of (a) argument that the principle
of conservation of energy is not valid, or at least is not universally true (App.
Br. 14), and (b) a declaration under 37 CFR § 1.132 from the inventor,
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which includes a description of an experiment that purports to demonstrate
the operability of Appellant’s invention.
The cited textbook section (Peebles, Principles of Physical
Cosmology) falls far short of establishing the falsity of the principle of
conservation of energy. Prof. Peebles can only establish that “energy
conservation is a good local concept” but that “there is not a general global
energy conservation law in general relativity theory” (Peebles 139, emphasis
added). We note that Prof. Peebles writes that “in a closed universe energy
decreases as 1/a(t) as the universe expands,” and ponders, “Where does the
lost energy go?” (Id.) In the context of the energy of the universe as a whole,
we have ample reason to conclude that Appellant’s invention qualifies as
“local” for the purposes of applying the principle of conservation of energy.
We do not find Peebles persuasive to refute the Examiner’s contention that
the invention contradicts established scientific principles.
Appellant’s Declaration under 37 C.F.R. § 1.132 (originally filed
March 7, 2003; hereinafter, “Declaration”) is not considered persuasive
because the experiment described is not commensurate in scope with
Appellant’s claims. Appellant’s experimental apparatus consists of a wooden
bar suspended at each end (Declaration 2). Hanging by stranded picture
wires from the wooden bar are identical metal hex-head screws, which
engage endwise and compress a spring mounted between them when at the
end of their respective swings (Id.). The screws are each swung back from
the other and released, depositing their kinetic energy into the spring (Id.).
The compression of the spring under various conditions is measured (Id.).
From the amount of compression measured, Appellant computes from
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theory, rather than measuring directly, the “differential Energy or work,”
and concludes that extra energy has been produced from “some source” not
identified (Declaration 4).
We observe, however, that no means for converting kinetic energy
from the object in the “second moving system” into electrical energy, as is
required by the claims, is present in the experimental apparatus. Without the
presence of such energy conversion means in the experiment, we cannot find
the experimental results persuasive of the operability of the claimed
invention.
Because Appellant has not satisfied his burden of proving that one of
ordinary skill can make and use the claimed invention without undue
experimentation, or that his invention is not inoperable, we do not find error
in the Examiner’s rejections of claim 1, nor in that of claims 2-8 not
separately argued, under 35 U.S.C. §§ 101 and 112.
CONCLUSION OF LAW
We conclude that Appellant have not shown that the Examiner erred
in rejecting claims 1-8. Claims 1-8 are not patentable.
DECISION
The Examiner’s rejection of claims 1-8 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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