Ex Parte Desbrandes et al

Patent Trial and Appeal Board

Sep 26, 2016

11569357 (P.T.A.B. Sep. 26, 2016)

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.
11/569,357 11/18/2006 Robert Desbrandes 7416
64501 7590 09/27/2016
E-QUANTIC COMMUNICATIONS
1, ALLEE DES CHERINIERS
GIVARLAIS, FR-03190
FRANCE
EXAMINER
IGYARTO, CAROLYN
ART UNIT PAPER NUMBER
2884
MAIL DATE DELIVERY MODE
09/27/2016 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 DESBRANDES and DANIEL LEE VAN GENT
____________

Appeal 2015-004021
Application 11/569,357
Technology Center 2800
____________

Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JON M. JURGOVAN, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 141, 143, 146, 150, 151, 154–156, 160, 162–164,
167–177, 180–184, and 186–191, which are all the claims pending in this
application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the real party in interest is Saquant (App. Br. 4).
2 Claims 1–28, 107–140, 142, 144, 145, 147–149, 152, 153, 157–159, 161,
165, 166, 178, 179, and 185 have been canceled. Claims 29–106 were not
entered by the Examiner.
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STATEMENT OF THE CASE
Appellants’ invention relates to a method and apparatus to remotely
communicate using thermoluminescence (Spec. 6:24–25). Exemplary claim
154 under appeal reads as follows:
154. Method to communicate using a system of entangled
samples comprising at least one kind of thermoluminescent
material being in an excited state comprising entangled
electrons present in traps of the aforesaid thermoluminescent
material, said method comprising the following steps:
(a) separating said entangled samples of the aforesaid
system of entangled samples; and
(b) using said system of entangled samples:
(i) by causing at least one stimulation of said kind
of thermoluminescent material on at least one said
entangled sample, called the master, for sending at least
one piece of information, or at least one control signal;
and
(ii) by measuring at least a partially correlated
variation of luminescence with at least one of the other
aforesaid entangled samples, this sample being called the
slave, during the stimulation of the aforesaid master, for
determining the reception of at least one piece of
information, or at least one remote control signal.

REJECTIONS3
Claims 141, 143, 146, 150, 151, 154–156, 160, 162–164, 167–177,
180–184, and 186–191 stand rejected under 35 U.S.C. § 101 as failing to
comply with the utility requirement (see Final Act. 4).

3 The rejection of claims 183 and 184 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement (see Final Act.
5) has been withdrawn by the Examiner (Ans. 2).
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Claims 141, 143, 146, 150, 151, 154–156, 160, 162–164, 167–177,
180–184, and 186–191 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement (see Final Act. 4–5).

PRINCIPLES OF LAW
Utility
“An inoperative invention, of course, does not satisfy the requirement
of 35 U.S.C. [§] 101 that an invention be useful.” In re Harwood, 390 F.2d
985, 989 (CCPA 1968). However, “[t]o violate [35 U.S.C.] § 101[,] the
claimed device must be totally incapable of achieving a useful result.”
Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1571
(Fed. Cir. 1992).
An Examiner has the initial burden of setting forth a reason to doubt
an Appellant’s presumptively correct assertion of utility. In re Swartz, 232
F.3d 862, 864 (Fed. Cir. 2000). “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 scientific
principles.’” In re Cortright, 165 F.3d 1353, 1357 (Fed. Cir. 1999) (quoting
In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995)). The Examiner must
present evidence necessary to establish a reason for one of ordinary skill in
the art to question the objective truth of the statement of utility. Swartz, 232
F.3d at 864.

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Enablement
“[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). The key word is “undue,” not experimentation. In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988). In determining whether undue
experimentation would have been required to make and use an invention, the
following factors are considered:
(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.
Wands, 858 F.2d at 737.
The state of the art existing at the filing date of the application is used
to determine whether a particular disclosure is enabling as of the filing date.
Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1254 (Fed. Cir. 2004).
Publications dated after the filing date providing information publicly first
disclosed after the filing date generally cannot be used to show what was
known at the time of filing. In re Gunn, 537 F.2d 1123, 1128 (CCPA 1976);
In re Budnick, 537 F.2d 535, 538 (CCPA 1976).

ANALYSIS
Rejection under 35 U.S.C. § 101 – Utility
The Examiner finds the claimed system of entangled samples, method
to manufacture entangled samples, and method to communicate using
entangled samples lack credible utility because the claims are inconsistent
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with the known understandings of physics, allowing a signal to travel faster
than the speed of light and allowing a thermoluminescent material to
fluoresce without applying the required thermal energy (Final Act. 4; Ans.
3–5). Appellants contend the laws of physics are not violated because the
claims involve quantum entanglement and decoherence of electron states,
which does not involve an electro-magnetic signal and does not require
transmission of thermal energy from one body to another (Reply Br. 5–10).
The Examiner’s statement that the claims violate the known laws of
physics is not substantiated by any evidence. Thus, on the record before us,
we find the Examiner has not provided 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. Swartz, 232 F.3d at 864. Accordingly, we do not
sustain the Examiner’s rejection of claims 141, 143, 146, 150, 151, 154–156,
160, 162–164, 167–177, 180–184, and 186–191 under 35 U.S.C. § 101 as
lacking utility.

Rejection under 35 U.S.C. § 112, First Paragraph – Enablement
The Examiner finds Appellants’ Specification, as originally filed, does
not describe the claims in such a way as to enable one of skill in the art to
make or use the claimed system of entangled samples, method to
manufacture entangled samples, and method to communicate using
entangled samples (Final Act. 5; Ans. 3–14). The Examiner finds the
specific process parameters for making the entangled samples, such as the
length of time of bombardment irradiation or illumination, have not been
described in adequate detail as to be an enabling disclosure (Final Act. 5;
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Ans. 3–14). In response, Appellants provided experimental data to show
that one skilled in the art can readily duplicate the experiments (see App.
Amend. (filed Feb. 25, 2011); App. Br. 33). Appellants map each claim
under appeal to the experimental results to support enablement of the claims
(see App. Br. 7–25; Reply Br. 5–14).
Appellants’ contentions do not persuade us of Examiner error in the
rejection. As noted by the Examiner, Appellants’ submission of
experimental data was not accompanied by a proper affidavit stating that,
under penalty of perjury, the accompanying submission is true and correct
(Ans. 3; see also 37 C.F.R. §§ 1.68, 1.132; MPEP §§ 602(II), 716).
Nonetheless, the evidence of enablement provided must show the claims
were enabled at the time of filing of the original Specification, and
Appellants’ submissions filed February 25, 2011 do not show enablement as
of the effective filing date of the instant Application (foreign filing date of
May 26, 2004). Gunn, 537 F.2d at 1128; Budnick, 537 F.2d at 538. Thus,
we look to Appellants’ original Specification for an enabling disclosure of
the claimed invention.
Although the Examiner’s determination of non-enablement does not
include an explicit analysis of the Wands factors, the facts on the record are
sufficient to support the position that the amount of experimentation
necessary for a person of ordinary skill in the art to carry out the claimed
invention would be undue. Appellants state that the “present invention,
which uses the quantum couplings of many entangled trapped electrons in
thermoluminescent crystal samples, is explained neither by academic
experimental papers, nor by academic theoretical papers” (App. Amend. 2
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(filed Feb. 25, 2011)). This statement is evidence that one of ordinary skill
would not be familiar with the invention and would need significant
guidance, in the form of detailed description in the Specification, to carry
out the invention. Except for one broad example, Appellants’ Specification
is devoid of specific, detailed working examples of making or using the
entangled samples (see Spec. 16:10–16), and such working examples are not
provided until Appellants submitted detailed experimental results in the
amendment filed February 25, 2011. Thus, we find the original
Specification lacks an enabling disclosure because of (1) the high quantity of
experimentation necessary, (2) the lack of guidance presented, (3) the
absence of working examples, (4) the nature of the invention (i.e., the field
of quantum mechanics), and (5) the lack of relevant prior art. Wands, 858
F.2d at 737. Accordingly, we sustain the Examiner’s rejection of claims
141, 143, 146, 150, 151, 154–156, 160, 162–164, 167–177, 180–184, and
186–191 under 35 U.S.C. § 112, first paragraph, for failing to comply with
the enablement requirement.

DECISION
We reverse the Examiner’s rejection of claims 141, 143, 146, 150,
151, 154–156, 160, 162–164, 167–177, 180–184, and 186–191 under
35 U.S.C. § 101.
We affirm the Examiner’s rejection of claims 141, 143, 146, 150, 151,
154–156, 160, 162–164, 167–177, 180–184, and 186–191 under 35 U.S.C.
§ 112, first paragraph.
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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)(1)(iv).

AFFIRMED