Ex Parte Choi

Patent Trial and Appeal Board

Sep 27, 2016

13253248 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/253,248 10/05/2011
23464 7590 09/29/2016
BUCHANAN INGERSOLL & ROONEY PC
P.O. BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Kyusun Choi
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0080059-000001 5344
EXAMINER
COOK, WILLIAM J
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
09/29/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KYUSUN CHOI
Appeal2014-006813
Application 13/253,248
Technology Center 3600
Before LYNNE H. BROWNE, LISA M. GUIJT, and ERIC C. JESCHKE,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
decision1 rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 Appeal is taken from the Final Office Action dated July 26, 2013 ("Final
Act.").
Appeal2014-006813
Application 13/253,248
CLAHvfED SUBJECT ~vfATTER
Claims 1 and 14 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claims on appeal.
utility.
1. A device comprising:
a housing; and
at least one vibration causing mechanism comprising at
least one of:
at least one vibratable diaphragm attached to the housing,
the at least one vibratable diaphragm positioned such that each
of the at least one vibratable diaphragm moves from an extended
position extending away from the housing to a retracted position
that is positioned closer to an interior of the housing than the
extended position to drive movement of the device, and
at least one vibration causing device positioned in the
housing that moves a weight forwardly and rearwardly within the
housing to vibrate the housing to drive movement of the device.
REJECTIONS
I. Claims 1-20 stand rejected under 35 U.S.C. § 101 as lacking
II. Claims 1-20 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
III. Claims 1-20 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
ANALYSIS
Rejection 1
The Examiner finds that the invention "is inoperative and therefore
lacks utility" required under 35 U.S.C. § 101. Final Act. 2. Specifically,
the Examiner determines that
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Application 13/253,248
[t]he disclosed device would undergo a vibratory motion;
however, a controlled, unidirectional propulsive force would not
be generated due to the opposing inertial forces produced by the
motion of the reciprocating mass. In order for the device to
operate in the manner disclosed, the forces produced by the mass
acting in a direction opposite to that of the desired motion would
have to be ignored, which would violate Newton's first and
second laws of motion. Therefore, the device is inoperative.
Id. The Examiner concludes that "one of ordinary skill in the art would
question the operability of a device which is propelled by a vibrating mass,"
because "[t]he forces produced by the vibrating mass in one direction would
counteract the forces produced by the vibrating mass in the opposite
direction." Ans. 5. However, the Examiner acknowledges that "any net
movement result would be due entirely to the shape of the housing and its
interaction with the environment, and not [from vibrations] produced by a
vibrating mass." Ans. 8.
Appellant responds that "the claimed device would function properly
and would not violate the laws of physics." Br. 9. In support, Appellant
states that "the Specification expressly discloses how a vibration causing
mechanism within a housing can drive movement of a device," referring to
the Specification's discussion of "how differences in drag can permit
embodiments of the claimed device to move in a net direction when a
vibration mechanism[] drives movement of the device." Id. at 9-10 (citing
Spec. 12-14). Appellant further refers to the Specification's discussion of
"ways in which the differences in drag or friction may be accentuated to
improve the efficiency by which embodiments of the claimed device may
move in a net direction." Id. at 10 (citing Spec. 16-17, 18-19, 20-21 ).
Appellant submits that "[w]hen in a fluid, a device that vibrates and has [a]
configuration such that it has less drag within the fluid in one of the two
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Application 13/253,248
directions will clearly permit a net movement of the device." Id. at 15
(emphasis added). As further evidence, Appellant submits that the
declarations ofKyusun Choi, John M. Cimbala, Thomas N. Jackson, and
Eric D. Prescott (hereafter the "Declarations") "confirm that the claimed
device would function properly and would not violate the laws of physics."
Id. at 9; Choi Deel. i-f 3 ("My application discloses that a vibration system
can cause motion by a vibration mechanism that is included in [a] device
that has a housing shaped to take advantage of differences in drag or other
friction that occurs when the device vibrates to effect a net movement in a
desired direction."); see also Cimbala Deel. i-f 6; Jackson Deel. i-f 6; Prescott
Deel. ,-r 5.2
The test for utility is whether the application shows that the invention
is useful to the public as disclosed. "Simply put, to satisfy the 'substantial'
utility requirement, an asserted use must show that the claimed invention has
a significant and presently available benefit to the public." In re Fisher, 421
F.3d 1365, 1371 (Fed. Cir. 2005). "An inoperative invention, of course,
does not satisfy the requirement of 3 5 U.S. C. § 101 that an invention be
useful." In re Harwood, 390 F.2d 985, 989 (CCPA 1968). The Examiner
must present the evidence necessary to establish a reason for one of ordinary
skill in the art to question the objective truth of the statement of utility. In re
Cortright, 165 F.3d 1353, 1357 (Fed. Cir. 1999). "The PTO may establish a
reason to doubt an invention's asserted utility when the written description
'suggest[s] an inherently unbelievable undertaking or involve[s] implausible
2 The video evidence submitted by Appellant was not entered into the
record by the Examiner; therefore, we have not considered this evidence.
Ans. 9-10.
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Application 13/253,248
scientific principles.'" Id. (quoting In re Brana, 51 F .3d 1560, 1566 (Fed.
Cir. 1995).
The Specification discloses a vibration propulsion system useful as "a
medical tool, medical diagnostic device, watercraft, toy, or other device."
Spec. 2. As stated supra, the Examiner and Appellant agree that movement
of the device in fluid results from a cycle of vibrations created by the system
and drag or friction also created by the system during the vibration cycle.
For example, the Specification states that "in some embodiments, the
housing of device may be shaped such that a cycle of movement of the ...
vibratable diaphragm from the extended position to the retracted position
provides a drag characteristic such that when the housing is within a fluid ..
. , the housing moves forwardly for each of the cycle of movement of the ...
vibratable diaphragm" (id. at 3); see also id. ("a 'bullet-like' shape or a steep
domed shape [housing] will move more distance forward due to less
resistance from the fluid ... when the diaphragm pushes out[,] ... less
distance backward due to more resistance from the fluid when the diaphragm
pushes in"). Thus, the Examiner has failed to present sufficient evidence to
establish a reason for one of ordinary skill in the art to question the objective
truth of the statement of utility.
Accordingly, we do not sustain the Examiner's rejection of claims 1-
20 under 35 U.S.C. § 101.
Rejection II
The Examiner determines that "the claimed vibration based
propulsion system is not adequately enabled by the disclosure because in
order for one having ordinary skill in the art to make and use the invention,
undue experimentation would be required." Final Act. 2. Specifically, the
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Examiner finds that "the disclosure fails to teach how such a propulsion
system actually functions in such a way to produce a controlled propulsive
force," and that "the state of the art ... does not teach the necessary
structure to enable one having ordinary skill in the art to make and use the
invention to have the claimed results." Id. at 3. Appellant argues that
"[c]laims 1-20 are clearly enabled." Br. 17. In support, Appellant
maintains that "[ o ]ne can read the Specification and know how to make and
use the innovation of claims 1-20," and that "[t]he [D]eclarations ... all
confirm this fact," in that "[e]ach of these declarants testified that no undue
experimentation is needed to understand, make or use the ... invention of
claims 1-20." Id.
"[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without 'undue experimentation."' In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993). When rejecting a claim under the enablement requirement, the
PTO bears an initial burden of setting forth a reasonable explanation as to
why it believes that the scope of protection provided by the claim is not
adequately enabled by the description of the invention provided in the
specification of the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the scope of
enablement. Id. at 1561-62.
Independent claim 1 and dependent claims 2, 5, 10, and 12
Independent claim 1 recites, in relevant part, "a housing" and "[a]
vibration causing mechanism," which is either "[a] vibratable diaphragm
attached to the housing ... to drive movement of the device," or "[a]
vibration causing device positioned within the housing that moves a weight
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... to drive movement of the device." Br. 31 (Claims App.). Regarding
embodiments wherein the vibration causing mechanism is a diaphragm, the
Specification states that "[a]n embodiment of the device [that] includes a
housing and at least one vibratable diaphragm attached to the housing"
(Spec. 2, Figs. 1, IA, IB, 2A, 2B, 7A-7D); however, the Specification
further states that "[a] vibrating diaphragm may be part of a propulsion
system" (id. at 12 (emphasis added)), and that "[t]he net movement result is
due at least in part to the shape of the device's housing, or exterior surface
(id. at 13 (emphasis added)).
Regarding embodiments wherein the vibration causing mechanism is
a vibration causing device that moves a weight, the Specification discloses
that
[a] weight may have its cycle of movement adjusted so that the
weight moves further forwardly and less rearwardly or may be
moved between forward and rearward positions more quickly or
less quickly to adjust the movement of the device. The path of
the weight's movement could also be tilted or rotated to generate
a sideward element to the movements for adjusting the
movement of the device.
Spec. 5---6; see also, e.g., id. at 6, 11. 9-22. Figures 9A-9G depict
embodiments involving the movement of weights (id. at 10). With respect
to the embodiment depicted in Figure 9E, the Specification explains that
"movable members ... provide gr[e]ater drag as the weight is moved
forwardly to create a rearward movement so that the net movement of the
device within a cycle of weight motion is forwardly." Id. With respect to
Figure 9G, the Specification explains that, in this embodiment, a vibration
generating device is "configured to utilize symmetric vibrations by moving a
weight at the same speed forwardly and rearwardly for generating symmetric
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vibrations," or the vibration generating device "may be adjusted to move the
weight forwardly more slowly than the speed at which the weight is moved
rearwardly to generate asymmetric vibrations." Id. at 11 (Fig. 9G depicts a
housing having a symmetric shape.)
We agree with the Examiner that the scope of protection provided by
claim 1 is not adequately enabled by the description of the invention in the
Specification, because claim 1 does not recite structure for creating the
differences in drag or other friction during the vibration cycle, which the
Specification and Declarations, as stated supra, describe as necessary to
effect a net movement of the device in a desired direction. Where claims fail
to recite a feature described in the specification as being essential to the
claimed invention, the claims fail to comply with the enablement
requirement of 35 U.S.C. § 112, first paragraph. See In re Mayhew, 527
F.2d 1229, 1233 (CCPA 1976). For example, claim 1 does not specify a
shape of the housing or a particular movement of the weights.
Accordingly, we sustain the Examiner's rejection of claim 1 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement. Appellant chose not to separately argue the patentability of
claims 2, 5, 10, and 12, which depend from independent claim 1, and
therefore, we also sustain the Examiner's rejections of claims 2, 5, 10, and
12 under 35 U.S.C. § 112, first paragraph.
Dependent claims 3 and 4
part:
Claim 3 depends from independent claim 1 and recites, in relevant
[a] power source connected to the . . . vibration causing
mechanism ... [and] to a controller device ... ; and wherein the
... vibration causing mechanism is comprised of [a] vibration
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• ,..J • • • c: ·1 • • ,..J • causmg uevice . . . compnsmg a in-st vwratwn causmg uevice
having a motor that moves the weight ... at a first rate of speed
when moving from [a] first position to [a] second position and
. . . at a second rate of speed when moving from the second
position to the first position ... to generate asymmetric vibrations
to provide a net movement in a desired direction.
Br. 31-32 (Claims App.). Claim 4 depends from claim 3 and recites, in
relevant part, that the connection may be wireless or wired, and that the
controller device for steering the device is wireless. Id. at 32 (Claims App.).
Claims 3 and 4 do not cure the deficiency in the scope of protection
provided by claim 1, which is not adequately enabled by the description of
the invention in the Specification, as discussed supra.
Accordingly, we sustain the Examiner's rejection of dependent claims
3 and 4 under 35 U.S.C. § 112, first paragraph, for the reasons stated supra.
Dependent claims 6 and 11
Claim 6 depends from claim 1 and recites, in relevant part, "wherein
the housing has a bullet-like shape ... and [the] diaphragm vibrates by
moving parallel to a flow direction of a fluid." Br. 32 (Claims App.). Claim
11 depends from claim 1 and recites, in relevant part, "wherein the housing .
. . is shaped such that a cycle of movement of the ... vibration causing
mechanism provides a drag characteristic such that when the housing is
within a fluid ... , the housing moves forwardly for each of the cycle of
movement of the ... vibratable diaphragm." Id. at 33 (Claims App.). Thus,
claims 6 and 11 cure the deficiency in the scope of protection provided by
claim 1, as discussed supra.
Accordingly, we do not sustain the Examiner's rejection of claims 6
and 11 under 35 U.S.C. § 112, first paragraph.
Dependent claims 7-9
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Claim 7 depends from independent claim 1 and recites, in relevant
part, "[a] covering attached to the housing ... [that] flop[s] during
movement of the device." Br. 32 (Claims App.). Claim 8 depends from
claim 7 and recites, in relevant part, "wherein ... a width or height of the
device is greater when the ... covering is in [a] second position relative to
when the ... covering is in [a] first position." Id. at 33 (Claims App.).
Claim 9 also depends from claim 7 and recites, in relevant part, "wherein the
... covering flops between first and second position for every vibration
cycle." Id.
The Specification discloses that
[a ]t least one covering may be attached to the housing of
the device so that the covering flops during movement of the
device. The at least one covering may flop between a first
position and a second position such that a width or height of the
device is greater when the at least one covering is in the second
position relative to when the at least one covering is in the first
position. The flopping may occur to affect drag characteristics
of the device so that the extending and retracting of the device
results in a positive forward movement of the device or increases
the amount of forward movement the device will experience
from movement of the at least one collapsible section.
Id. at 4 (emphasis added); see also id. at 16 ("[ t ]he moving speed of the
device may be improved or may be made more efficient by adding a
covering to the housing."), Figs. 7 A, 7B, 8. Thus, the Specification supports
that claims 7-9 cure the deficiency in the scope of protection provided by
claim 1, as discussed supra. Moreover, the Examiner does not present
specific findings as to why the Specification fails to enable the subject
matter of claims 7-9. See Final Act. 2-3.
Accordingly, we do not sustain the Examiner's rejection of claims 7-9
under 35 U.S.C. § 112, first paragraph.
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Dependent clainz 13
Claim 13 depends from claim 1 and recites, in relevant part, "wherein
the housing has at least one collapsible section sized and configured so that
cycling of the at least one collapsible section between extended and
contracted positions contributes to movement of the device." Br. 34 (Claims
App.). The Examiner does not present specific findings as to why the
Specification fails to enable the subject matter of claim 13. The Examiner's
evidence only addresses embodiments wherein the device "is propelled by
vibrations that are induced by a reciprocating mass," but not embodiments
wherein the device has a collapsible section. See Final Act. 2-3.
Accordingly, we do not sustain the Examiner's rejection of claim 13
under 35 U.S.C. § 112, first paragraph.
Independent claim 14 and dependent claims 15-20
Independent claim 14 recites, in relevant part, a housing having a
collapsible section, wherein the housing is sized and configured so that
cycling the collapsible section moves the device when the device is
positioned in a fluid. See Br. 34 (Claims App.). As stated supra, the
Examiner's evidence is limited to an embodiment of the invention wherein
the device "is propelled by vibrations that are induced by a reciprocating
mass." Final Act. 2. Claim 14 recites structure that the Examiner does not
address when presenting evidence that the Specification fails to enable the
claimed invention. See Final Act. 2-3.
Accordingly, we do not sustain the Examiner's rejection of claim 14
under 35 U.S.C. § 112, first paragraph. The Examiner also does not present
specific findings as to why the subject matter of claims 15-20 are not
enabled by the Specification. Id. Therefore, we also do not sustain the
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Examiner's rejections of claims 15-20 under 35 U.S.C. § 112, first
paragraph.
Rejection III
The Examiner finds that "[c]laims 1-20 are directed to a device
having vibratory based propulsion induced by a reciprocating mass," and
that "[as] it appears that such a device would only vibrate, due to the
opposite acting forces produced to the reciprocating mass[,] ... it is unclear
how the claimed invention would function." Final Act. 3. Thus, the
Examiner concludes that the claims are "unclear and rendered indefinite,
since one of ordinary skill in the art would not be able to determine what
[Appellant] regards as [the] invention." Id.
The legal standard for indefiniteness is whether a claim reasonably
apprises those of ordinary skill in the art of its scope. In re Warmerdam, 33
F.3d 1354, 1361 (Fed. Cir. 1994); In re Merat, 519 F.2d 1390, 1396 (CCPA
1975). The purpose of 35 U.S.C. § 112, second paragraph, is to provide
reasonable notice as to the boundaries of the patent protection involved. In
re Hammack, 427 F.2d 1378, 1382 (CCPA 1970). Although claims 1-5, 10
and 12 lack enablement, we do not agree with the Examiner that one skilled
in the art would not understand the bounds of these claims when read in light
of the Specification. Otherwise, the Examiner has not explained why claims
1-20 are indefinite.
Accordingly, we do not sustain the Examiner's rejection of claims 1-
20 under 35 U.S.C. § 112, second paragraph, as indefinite.
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DECISION
The Examiner's decision to reject claims 1-20 under 35 U.S.C. § 101
as lacking utility is reversed.
The Examiner's decision to reject claims 1-5, 10, and 12 under 35
U.S.C. § 112, first paragraph, is affirmed.
The Examiner's decision to reject claims 6-9, 11, and 13-20 under 35
U.S.C. § 112, first paragraph, is reversed.
The Examiner's decision to reject claims 1-20 under 35 U.S.C. § 112,
second paragraph, is reversed.
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)(l )(iv).
AFFIRMED-IN-PART
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