Ex Parte Hu

Patent Trials and Appeals Board

May 16, 2019

11944631 - (D) (P.T.A.B. May. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/944,631 11/25/2007
58055 7590 05/17/2019
HUPINGHU
25 LUBBER STREET
STONY BROOK, NY 11790
FIRST NAMED INVENTOR
HupingHu
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.
5807
EXAMINER
LEWIS, RALPH A
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
05/17/2019 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 HUPING HU
Appeal 2018-007211
Application 11/944,631
Technology Center 3700
Before: CHARLES N. GREENHUT, JEFFREY A. STEPHENS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 7, 9, 10, 16, 18, 19, 25, 27, and 70-81. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 Related appeals are: 2018-003398 in application 13/449,739; 2018-003401
in application 13/492,830; and 2018-003120 in application 11/670,996.
Appeal 2018-007211
Application 11/944,631
CLAIMED SUBJECT MATTER
The claims are directed to a method for producing non-local physical,
chemical, and biological effects. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
Claim 1. A method of producing a non-local effect in a target
substance through manipulating an originating substance and
detecting said non-local effect which comprises the steps of:
selecting a substance which comprises said target
substance and said originating substance;
generating a plurality of quantum entanglements within a
plurality of quantum entities in said substance by irradiating said
substance with magnetic pulse, laser light or microwave, or
letting said substance sit for at least thirty days;
separating said substance into said target substance and
said originating substance;
positioning said target substance at a first location in a first
stable environment and said originating substance at a second
location in a second stable environment;
cooling, heating or adding a third substance to said
originating substance; and
detecting with a high-precision instrument a change in
weight, temperature and/or pH value of said target substance;
whereby said non-local effect is produced through a non-
local process mediated by said quantum entanglements and said
non-local effect is said change in weight, temperature and/or pH
value of said target substance.
REJECTIONS
Claims 1, 7, 9, 10, 16, 18, 19, 25, 27 and 70-81 are rejected under 35
U.S.C. § 101 because the disclosed invention is inoperative and therefore
lacks utility, and also under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement.
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Application 11/944,631
Ancillary matters
OPINION
Objection of Amendment under 35 U.S.C. § 132(a)
Appellant argues "this objection is appealable since the Examiner's
new matter objection to the specification is related to and accompanied by
Examiner's claim rejection under 35 U.S.C. § 112, first paragraph." App.
Br. 52 (citing MPEP §§ 608.04(c), 2163.06). Although the Examiner made
a rejection under§ 112, first paragraph, that rejection is based on the
enablement requirement and is not of the type necessitated by introducing
new matter into the claims-typically premised on the written description
requirement of§ 112, first paragraph. See, e.g., In re Lukach, 442 F.2d 967
( CCP A 1971) ( explaining new or amended claims which introduce elements
or limitations which are not supported by the as-filed disclosure violate the
written description requirement). We recognize that the Examiner did cite
certain shortcomings in Appellant's experimental results, as originally filed,
as part of the Examiner's original analysis concerning enablement. Final
Act. 12. However, for purposes of the enablement analysis the Examiner
has given Appellant the benefit of considering the amended data despite the
Examiner's objection to that data as new matter. In other words, the analysis
of Appellant's experimental results in the enablement rejection is
independent of the issue of whether the amended results constitute new
matter. Further, as discussed below, the entry or non-entry of the
amendments would not affect the outcome of our decision. Thus, we are not
apprised as to how the new matter objection sufficiently relates to a rejection
presently before us so as to bring that objection within our jurisdiction.
Accordingly, we do not reach the merits of the objection herein.
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Application 11/944,631
Alleged New Ground of Rejection
Appellant contends "the Examiner's Answer introduces New Ground
of Rejection by way of Wands [In re Wands, 858 F.2d 731 (Fed. Cir. 1988)]
factors analysis." Reply Br. 5. First, although the Examiner introduced
express citations to Wands and the various enumerated factors listed in
MPEP § 2164.0l(a) (see Ans. 8-9), we are not apprised of any significant
substantive changes in the Examiner's analysis that prejudiced Appellant.
The Examiner provided a very thorough and detailed analysis in support of
the enablement rejection that touched on a variety of the Wands factors even
if they were not mentioned specifically by name or provided with a specific
citation. See Final Act. 9-37. Second, Appellant elected to file a reply brief
addressing the merits of the Examiner's position and, in doing so, waived
"any arguments that a rejection must be designated as a new ground of
rejection." See 37 C.F.R. § 41.40(a). Appellant's Reply Brief provided
sufficient opportunity to respond to the merits of the Examiner's rejection.
See, e.g., In re Anderson, 662 F. App'x 958 (Fed. Cir. 2016)
(nonprecedential). Accordingly, we do not reach the issue of whether the
Examiner's Answer included an undesignated new grounds of rejection.
Enablement under§ 112, first paragraph, and utility under§ 1 OJ
For each of these rejections, Appellant argues the claims as a group
(App. Br. 9-52), for which claim 1 is representative under 37 C.F.R.
§ 41.37(c)(l)(iv). With regard to the questions of enablement and utility,
our reviewing court has summarized:
The questions of whether a specification provides an enabling
disclosure under§ 112, ,-J 1, and whether an application satisfies
the utility requirement of§ 101 are closely related. To satisfy
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Application 11/944,631
the enablement requirement of§ 112, ,i 1, a patent application
must adequately disclose the claimed invention so as to enable a
person skilled in the art to practice the invention at the time the
application was filed without undue experimentation. The utility
requirement of§ 101 mandates that the invention be operable to
achieve useful results. Thus, if the claims in an application fail
to meet the utility requirement because the invention is
inoperative, they also fail to meet the enablement requirement
because a person skilled in the art cannot practice the invention.
The how to use prong of section 112 incorporates as a matter of
law the requirement of 35 U.S.C. § 101 that the specification
disclose as a matter of fact a practical utility for the invention.
Lack of utility is a question of fact, and the absence of
enablement is a legal conclusion based on underlying factual
mqmnes.
In re Swartz, 232 F. 3d 862, 863 (Fed. Cir. 2000) (quotations and internal
citations omitted); see also MPEP § 2164.07.
Paragraphs 8 and 9 of Appellant's Specification summarize the
invention as follows:
[Para 8] The subject invention is therefore based on my
realizations that (1) quantum entanglement means genuine
interconnectedness and inseparableness of once interacting
quantum entities and can be directly sensed and utilized by the
entangled quantum entities; (2) quantum entanglement can
persist in biological, chemical and physical systems at room and
higher temperatures despite of quantum decoherence; and (3)
quantum entanglement can influence chemical and biochemical
reactions, other physical processes and micro- and macroscopic
properties of all forms of matters. Therefore, it can be harnessed
and developed into useful technologies to serve the mankind in
many areas such as communication, engineering, health,
medicine and recreation.
[Para 9] For example, using the apparatus and method developed
in this invention I have discovered that the pH value of water in
a detecting reservoir can be non-locally affected through
manipulating water in a remote reservoir quantum-entangled
with the water in the detecting reservoir.
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Application 11/944,631
The Examiner provided a detailed analysis, citing various evidentiary
sources, including, but not limited to, those submitted by Appellant, in
considering the question of enablement, and the question of whether the
claimed invention contravenes established scientific principles, as that
question relates to the utility requirement. See Final Act. 3-37; Ans. 11-39.
We agree with the Examiner's analysis, which raised reasonable doubts as to
operability of Appellant's invention and the Specification's compliance with
the enablement requirement.
In response, Appellant cites, inter alia, paragraphs 47-49 of the
Specification (App. Br. 43-44), which, along with Figure 1, are reproduced
below to summarize an embodiment of Appellant's invention:
: 1 ::: .. ---~"'--=··--f~~:·e~~~~~TI
...
rn u:
~··':."':.'.:' ";.';.':.";.";.'· ....
17X/.J
[Para 47] Considering first FIG. 1, the apparatus 100 of the
present invention in one embodiment includes a target 110, a
source 120 and said mean 130 for manipulating said source 120.
Said target 110 further includes the target substance 111, said
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Application 11/944,631
first container 112 holding said substance 111 and said internal
probe 113 inserted into said container 112. Said source further
including said originating substance 121 and said second
container 122 holding said substance 121.
[Para 48] In one particular embodiment, the target substance 111
and originating substance 121 are quantum-entangled water
prepared according to one of the said quantum entanglement
process, the internal probe is a traceable-calibration digital
thermometer with a resolution of 0.001 °C and repeatability of
0.002°C in liquid near 25°C, container 112 is a small flat
glassware of the dimensions about l "x4"x6" (thickness, width,
height) with a useful internal volume of about 250ml, container
122 is a round plastic ware of the dimensions 2 "x7" ( diameter,
height) with a useful internal volume of about 350ml, and the
manipulation mean 130 is a particular embodiment of mean 131
shown in FIG. 2 which includes a 25-liter Dewar and 10-25 liters
of liquid nitrogen filling said Dewar. The container 112 has a
removable cap so that it can be filled, emptied, closed and fitted
with the said probe 113. The container 122 also has a removable
cap so that container 122 can be filled, emptied and closed. It
will be understood, however, that the invention is not limited
only to quantum-entangled water but also applies to other
quantum-entangled media. It will be further understood that the
internal probe is not limited only to the said digital thermometer
but also applies to other internal probes such as pH meter and
conductivity meter depending on a particular purpose.
[Para 49] To use the apparatus having this particular embodiment
for a desired purpose such as non-local signaling, control of a
device or manipulation of the physical and or chemical properties
of the target substance, one disposes the said target 110 to a
desired location A with well-controlled environment and the said
source 120 to another desired location B, operates the
manipulation mean 131 by submerging the container 122
containing substance 121 into the 25-litre Dewar filled with 10-
25 liters of liquid nitrogen for a desired length of time whereby
the target substance 111 are remotely influenced by the operation
of the said manipulation mean through non-local process 190
mediated by quantum entanglement between the target substance
111 and originating substance 121, and records readings of said
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Application 11/944,631
probe 113 both before and during the operation of the said mean
131 for a desired period of time depending on a desired purpose.
We have no doubt that if Appellant's invention is able to use quantum
entanglement to alter the weight, temperature and/or pH value of a first
substance by modifying only some other second substance that had
previously been exposed to "magnetic pulses, laser light, or microwave,"
with the first substance it would be both groundbreaking and revolutionary.
See Reply Br. 6. However, due to the absence of any known scientific
principles explaining how Appellant's invention could possibly operate in
this manner, the absence of any cogent explanation in Appellant's
Specification regarding the general principals or mechanisms causing this to
occur,2 and the absence of any verifiable test data reasonably attributable to
the purported result, the Examiner reasonably characterized Appellant's
invention as being of an incredible nature. See, e.g., MPEP § 2107.01 (II).
2 That is not to say that Appellant must, in all cases, explain the scientific
principles governing how a device operates if they are not known. See In re
Anjhauser, 399 F.2d 275,283 (CCPA 1968) (explaining an applicant "is not
legally required to comprehend the scientific principles on which the
practical effectiveness of his invention rests"). However, Appellant makes
no assertion here that the governing principles are unknown. Rather
Appellant repeatedly asserts, citing various sources of extrinsic evidence,
that the principles would be readily understood by those skilled in the art
(App. Br. 43, 47, 50, and 53-57) even if they are misunderstood by the
Examiner (App. Br. 15, 16, 43, 57, 60, 66, 89, 91, and 93). If the principles
governing the operation of Appellant's method were so readily amenable to
understanding we see no reason to omit an explanation of them from
Appellant's Specification and Appellant's extensive briefing. The cited
articles do not fill in these gaps with specific relevance to the subject matter
in question presently before us. Furthermore, the fundamental issue is not
whether Appellant has explained how the claimed invention works. Rather,
the requirements of utility and enablement consider whether Appellant's
invention works as claimed.
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Application 11/944,631
Despite providing eighty-six pages of arguments and voluminous amounts of
papers and articles on the subject, we are not apprised of any error in the
Examiner's determinations. We find no explanation as to why ordinary and
conventional magnetic pulse, laser light, or microwave produces any
meaningful quantum entanglements and, even if it did, why it would have
any meaningful long-lasting effects on a substance so as to cause a substance
to exhibit changes in weight, temperature, and/or pH due to alterations made
to a separate and discrete portion of that substance. There is no explanation
offered as to why spin or any other quantum property of entangled particles
would bring about these types of changes in a remote, "non-local" portion of
a sample or substance. We are also not apprised of any data logically
evincing such an interaction has actually occurred. We agree with the
Examiner that Appellant's pH data, as amended or as originally filed, is not
readily decipherable and is of questionable validity. Ans. 38-39. The
various articles cited by Appellant are either generic in nature and discuss
only the possibility of quantum entanglements occurring without explaining
any reason they would cause the interactions alleged in the present
application, from sources regarded as having no scientific value, 3 or both.
In 1931, the predecessor to our reviewing court considered a case
involving a "Method and Apparatus for Accumulating and Transforming
3 See, e.g., IN THE NORWEGIAN REGISTER FOR SCIENTIFIC JOURNALS, SERIES
AND PUBLISHERS: JOURNAL OF BIOPHYSICAL CHEMISTRY, available at
https:// dbh.nsd. uib .no/publiseringskanaler/Kanal Tidsskriftlnfo .action ?id=4 7
8691; NEUROQUANTOLOGY, available at
https:// dbh.nsd. uib .no/publiseringskanaler/Kanal Tidsskriftlnfo .action ?id=4 7
3508; PROGRESS IN PHYSICS, available at
https:// dbh.nsd. uib .no/publiseringskanaler/Kanal Tidsskriftlnfo .action ?id=4 7
3750.
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Ether Electric Energy." The court's reasoning there is equally applicable
here:
It is fundamental in patent law that an alleged invention,
to be patentable, must be not only new but useful, and that it must
appear capable of doing the things claimed in order to be a device
of practical utility.
The rule of doubt may only be applied in favor of an
applicant where the doubt is a reasonable one, that is, one
founded in reason and engendered by testing the alleged
invention by known scientific laws and principles.
Neither the Patent Office tribunals nor the courts may
properly grant patents upon a mere possibility that a device might
do the things claimed for it, and be useful. There must be
definiteness. Neither the Constitution nor the statutes
contemplate the granting of patents upon theories, nor giving a
monopoly upon intellectual speculations embodied in devices
incapable of scientific analysis.
The question of patentable invention ordinarily must be
determined by applied science, as understood by those skilled in
the art to which the invention relates, and, if one presents a device
which cannot be tested by any known scientific principles, he
must, at least, demonstrate its workability and utility and make
clear the principles upon which it operates.
No such demonstration here appears from appellant's
application, or otherwise. Three affidavits are presented of
parties who claim to have seen appellant's device in operation
and who vouch for its working. These affidavits, however, are
brief, general in character, and give no description of the device
which affiants saw. Nor do they give any explanation which
contains anything tending to clarify the terminology of the
specification, or to render the device measurable by engineering
principles or known natural laws.
In re Perrigo, 48 F.2d 965, 966 (CCPA 1931) (citations omitted); accord In
re Ferens, 417 F.2d 1072, 1074 (CCPA 1969) ("[W]here an applicant
predicates utility for the claimed invention on allegations of the sort here
which are or border on the incredible in light of contemporary knowledge of
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the particular art, those allegations must be substantiated by acceptable
evidence."); In re Eltgroth, 419 F.2d 918,922 (CCPA 1970) ("The invention
relates to the control of growth, aging and degeneration in living organisms,
particularly to appellant's alleged discovery of what appears to be a key for
the solution of the problems associated with these life
processes .... Undoubtedly, the alleged utility of control of the aging
process in living organisms and the significant beneficial results flowing
therefrom is adequate. Yet, there is a conspicuous absence of proof
thereof.").
For the foregoing reasons and those stated by the Examiner (Final
Act. 3-37; Ans. 11-39), after consideration of the evidence and arguments
of record, we are not apprised of error in the Examiner's position concerning
a lack of utility under§ 101 and a lack of enablement under§ 112, first
paragraph.
DECISION
The Examiner's rejections are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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