Ex Parte Hoffmann et alDownload PDFPatent Trial and Appeal BoardJun 26, 201311504474 (P.T.A.B. Jun. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte EUGENE J. HOFFMANN and DAVID E. LUND ____________________ Appeal 2012-011663 Application 11/504,474 Technology Center 3700 ____________________ Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and KEN B. BARRETT, Administrative Patent Judges. BARRETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Eugene J. Hoffmann and David E. Lund (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection (mailed Sep. 22, 2011) of claims 36-41. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-011663 Application 11/504,474 2 THE INVENTION Appellants’ claimed invention pertains to “a method and system for diminishing the intensity of tropical cyclones by delivering super coolant from aircraft into the eye wall of the tropical cyclone.” Spec. 1:10-12. According to Appellants, “the invention reduces the storm’s intensity and the forming or recently formed storm to that of a tropical rainstorm being moved by prevailing winds.” Id. at 3:7-9. Claim 36, reproduced below, is illustrative of the subject matter on appeal. 36. A process for disrupting a formed or forming tropical cyclone eye wall or eye or center of lowest pressure comprising: Introduction of a super coolant chemical agent sprayed with force (the super coolant is stored in a vessel under pressure) and or released from pre-measured containers from an appropriate number of large aircraft to reduce the temperature within the eye wall (top to bottom at sea level), thereby circulating the super coolant throughout the eye wall by the centrifugal force of the eye wall, alternatively into the eye or center of lowest pressure to reduce the temperature in the eye or center of lowest pressure and the water beneath, thereby reducing the wind and storm surge of the eye wall or raising the pressure in the eye or center of lowest pressure and converting it back to a tropical rainstorm. PROCEDURAL HISTORY This application was the subject of a prior appeal. In that prior appeal (Appeal No. 2010-002699, decision mailed Nov. 1, 2010; hereinafter “Prior Decision”), the Board reviewed the Examiner’s decision rejecting claims 36-42 under 35 U.S.C. § 101 for lack of utility and under § 112 for lack of enablement, failure to comply with the written description requirement, and indefiniteness. The Board affirmed the indefiniteness rejection of claim 42. The Board reversed the remaining rejections, including the enablement Appeal 2012-011663 Application 11/504,474 3 rejection, because the Examiner as of the time of the previous appeal had not satisfied the pertinent burdens. See, e.g., Prior Decision 7 (“We conclude that the Examiner has not satisfied the initial burden of explaining why claims 36-42 fail to satisfy the enablement requirement of § 112, first paragraph. As such, we cannot sustain that rejection.”) Following the Board’s decision in the prior appeal and an amendment by Appellants canceling claim 42, the Examiner reopened prosecution and entered an enablement rejection under 35 U.S.C. § 112, first paragraph, and an anticipation rejection under 35 USC § 102(e) based on O’Keefe (US 2007/0114298 A1, pub. May 24, 2007). Non-Final Office Action dated Apr. 14, 2011. After the exchange of further correspondence between Appellants and the Examiner, the Examiner entered the Final Rejection dated September 22, 2011, that is the subject of the present appeal. After that Final Rejection, Appellants proposed an amendment to the Specification, the entry of which was denied1 for introducing new matter. Advisory Action mailed Jan. 25, 2012. We note that Appellants appear to be under the misconception that the Board in the prior decision ruled that the claims under examination are allowable. See App. Br.2, Status of Claims (facsimile page 6) (“Claims 36- 1 To the extent that Appellants also seek review of the Examiner’s denial of entry of the Specification amendment, that matter is reviewable by petition under 37 C.F.R. § 1.181 (see Manual of Patent Examining Procedure (MPEP) §§ 1002 and 1201(8th Ed., Rev. 9, Aug. 2012)) and is thus not within the jurisdiction of the Board. In re Mindick, 371 F.2d 892, 894 (CCPA 1967). 2 References herein to the Appeal Brief are to the document bearing a USPTO Central Fax Center date of May 31, 2012, and entitled “REPLY BRIEF TO EXAMINER’S ANSWER MAILED JANUARY 25, 2012.” Appeal 2012-011663 Application 11/504,474 4 41 are still pending in this application and have already been approved by the 3-Man Appeal Court over Jason’s objections.”) In the prior appeal, the Board merely reviewed the adverse decision by the Examiner (the rejections), but did not hold that the claims are patentable. See Ex parte Frye, 94 USPQ2d 1072, 1077 (BPAI 2010) (precedential) (In an ex parte appeal, “[t]he Board does not ‘allow’ claims of an application and cannot direct an examiner to pass an application to issuance. Rather, the Board’s primary role is to review adverse decisions of examiners including the findings and conclusions made by the examiner.”); cf. In re Voss, 557 F.2d 812, 816 n.11 (CCPA 1977) (“reversal is not a mandate to the PTO to issue a patent and does not preclude the PTO from reopening prosecution.”) THE REJECTIONS The following Examiner’s rejections are before us for review: 1. Claims 36-41 are rejected under 35 U.S.C. § 112, first paragraph, for failing to comply with the enablement requirement; and 2. Claims 36-41 are rejected under 35 U.S.C. § 102(e) as being anticipated by O’Keefe (US 2007/0114298 A1, pub. May 24, 2007). OPINION The Enablement Rejection Appellants argue the rejected claims as a group. We select claim 36 as representative, and claims 37-41 stand or fall with claim 36. When rejecting a claim for lack of enablement, “the [United States Patent and Trademark Office] bears an initial burden of setting forth a reasonable explanation as to why it believes that the scope of protection Appeal 2012-011663 Application 11/504,474 5 provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application . . . .” In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). The test for compliance with the enablement requirement is whether the disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Some experimentation, even a considerable amount, is not “undue” if, e.g., it is merely routine, or if the specification provides a reasonable amount of guidance as to the direction in which the experimentation should proceed. Id. (quoting Ex parte Jackson, 217 USPQ 804, 807 (Bd. App. 1982)). The “undue experimentation” analysis involves the consideration of several factors, including: (1) the quantity of experimentation; (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. Claim 36 requires that a super coolant chemical agent be introduced into the tropical cyclone such that the cyclone is converted to a tropical rainstorm. See Prior Decision, page 8 (stating in the context of reversing the indefiniteness rejection: “In light of the last phrase in claim 36 – ‘thereby . . . converting it back to a tropical rainstorm’ - we conclude that one of ordinary skill in the art would understand the magnitude of disruption to be that necessary to downgrade a tropical cyclone having an eye or center of Appeal 2012-011663 Application 11/504,474 6 lowest pressure, e.g., a hurricane, to a tropical rainstorm.”) It is this claimed invention that must be enabled by the Specification. The Examiner determined that Appellants have “failed to provide a disclosure of the invention which would enable one of ordinary skill in the art to make and/or use the invention without undue experimentation.” Final Rej. 5. In reaching this conclusion, the Examiner makes several fact findings and cites to multiple non-patent references for support. See id. at 5- 25. Although the Examiner does not reference specifically the Wands factors, the Examiner makes findings bearing on the most pertinent of those factors. The first Wands factor is the quantity of experimentation. The Examiner finds that a substantial amount of experimentation would be necessary. Final Rej. 8. The Examiner points out that some of the exemplary calculations in Appellants’ Specification are flawed. See Final Rej. 9, 14-15. Appellants concede the formula contained error(s) and were in need of correction. See, e.g., App. Br., Status of Amendments (facsimile page 6); id. at 5 (facsimile page 19), Reply Br.3 2. The Examiner also expresses doubts concerning some calculations and questions Appellants’ selection of certain factors utilized in the exemplary calculations, see Final Rej. 9-10, 11-14, 18-19, and maintains that one of ordinary skill of art would need to understand the basis of the selection in order to practice the invention, id. at 16, 19. The Examiner points out that the table on page 19 of the Specification, without 3 References herein to the Reply Brief are to the document bearing a USPTO Central Fax Center date of July 18, 2012, and entitled “REPLY BRIEF TO EXAMINER’S OFFICE COMMUNICATIONS MAILED 06/27/2012.” Appeal 2012-011663 Application 11/504,474 7 explanation, has two columns with the same heading but different values. Id. at 18. These findings bear on factors such as the amount of direction or guidance presented and the presence or absence of working examples. The Examiner also points to several articles and websites, including that of the National Oceanic and Atmospheric Administration (NOAA), which raise serious doubts as to the ability to control the weather in the manner claimed by Appellants. Final Rej. 19-24. The Examiner’s findings in this regard bear on factors including the nature of the invention, the state of the prior art, the relative skill of those in the art, and the predictability or unpredictability of the art. Appellants have not presented persuasive argument or evidence that suggests any error in these findings pertaining to the Wands factors. Appellants make the implied argument – based on the assertion the Government for years has been using the invention to successfully mitigate hurricane risk – that the claimed invention must be enabled. See, e.g., App. Br. 5 (facsimile page 19); id., Status of Amendments (facsimile page 6); id., Argument (facsimile page 7); Reply Br. 2. Appellants maintain that there have been few hurricanes of late and conclude that the Government therefore must have successfully implemented Appellants’ claimed method. App. Br., Status of Amendments (facsimile page 6). However, Appellants fail to point to any persuasive evidence that supports the speculative assumption that the Government has used, with or without undue experimentation, the claimed invention. The Examiner also addresses the declarations of John Patrick Crocker and John Lewis English submitted by Appellants on July 11, 2007. Final Rej. 28-29. Mr. Crocker testified that the calculations in the Specification Appeal 2012-011663 Application 11/504,474 8 “appears [sic] to be reasonable and well formulated.” Crocker Decl., para. 11. Similarly, Mr. English testifies that the meteorological calculations in the Specification “are theoretically sound and that there is good reason to believe that the specific quantities of super cooled fluids listed . . . will be effective for diminishing the intensity of tropical cyclones . . . .” English Decl., para. 12. We agree with the Examiner that, because the calculations in the Specification contain errors, “this is reason enough to discredit the declaration[s].” Final Rej. 28-29. Additionally, it is noted that both Declarants’ testimony concerned claims that have since been canceled and which required, at most, diminishing the intensity of a tropical cyclone rather than the converting the cyclone into a tropical storm as is currently claimed. See English Decl., paras. 7, 8, Exh. B.; Crocker Decl., paras. 7, 8, Exh. B. The testimony is entitled to little or no weight. We agree with the Examiner that the Specification does not enable one skilled in the art to perform the method of claim 36 without undue experimentation. The rejection of claims 36-41 under 35 U.S.C. § 112, first paragraph, for failing to comply with the enablement requirement is affirmed. The Anticipation Rejection based on O’Keefe Appellants argue that the O’Keefe reference is not enabled. See App. Br., Argument (facsimile page 8) (“The information I provided not only pointed out the differences but also why Mr. O’Keefe’s invention would not Appeal 2012-011663 Application 11/504,474 9 work in addition to all the variations many of which would also not work in addition to a lack of implementation information.”4); see also Reply Br. 4-5. The Examiner initially need not come forward with evidence of enablement before relying upon a prior art reference. In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013). “Once an applicant makes a non-frivolous argument that cited prior art is not enabling, however, the examiner must address that challenge.” Id. We find Appellants’ argument that O’Keefe lacks “implementation information” to be non-frivolous and persuasive, particularly in light of the Examiner’s findings regarding the lack of enablement by Appellants’ Specification.5 We cannot find that O’Keefe is enabling, and thus do not sustain the rejection of claims 36-41 as being anticipated by O’Keefe. 4 Appellants may be referring, inter alia, to arguments made in a letter bearing the date of November 19, 2010, located at facsimile page 54 of the document identified in the record as Miscellaneous Incoming Letter, dated July 11, 2011 (total of 64 pages). In that document, the assertion is made that: Based on all of the above information in Mr. O’Keefe’s Pending Patent, I feel that it would be very difficult, complicated, time consuming, and expensive for our Government Agencies to figure out what atmospheric disturbances to deal with, which coolants to use, how much coolant to use, what sources to use for disbursement, and how much of all of the above would be necessary to deal with a specific sized atmospheric disturbance. Id. at facsimile page 57. 5 O’Keefe is the publication of US Application No. 11/555,607, filed November 1, 2006. That application was held abandoned on April 18, 2012, after all of the claims then pending in the application were rejected Appeal 2012-011663 Application 11/504,474 10 DECISION The decision of the Examiner to reject claims 36-41 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED hh for, among other grounds, lack of enablement under 35 U.S.C. § 112, first paragraph. Copy with citationCopy as parenthetical citation