Ex Parte Hu et al

Patent Trials and Appeals Board

May 16, 2019

13492830 - (D) (P.T.A.B. May. 16, 2019)

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.
13/492,830 06/09/2012 Huping Hu 1003
58055 7590
HUPING HU
25 LUBBER STREET
STONY BROOK, NY 11790
05/16/2019 EXAMINER
KUHLMAN, CATHERINE BURK
ART UNIT PAPER NUMBER
3791
MAIL DATE DELIVERY MODE
05/16/2019 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 and MAOXIN WU
Appeal 2018-003401
Application 13/492,830
Technology Center 3700
Before: CHARLES N. GREENHUT, JEFFREY A. STEPHENS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
5, 7—9, 11 and 12.2 We have jurisdiction under 35 U.S.C. § 6(b). Because it
concerns a matter of examination practice that does not sufficiently relate to
a specific rejection of the claims before us, we lack jurisdiction over the
1 Related appeals are: 2018-003398 in application 13/449,739; 2018-003120
in application 11/670,996; and 2018-007211 in application 11/944,631.
2 The copy of the claims in the Claims Appendix attached to the Appeal
Brief is incorrect. We refer herein to the finally rejected claims as presented
in an amendment filed September 4, 2016.
Appeal 2018-003401
Application 13/492,830
issues of pro se treatment. In re Hengehold, 440 F.2d 1395 (CCPA 1971);
37 C.F.R. § 1.181; see App. Br. 28; Reply. Br 10.
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a method and apparatus for producing and
detecting non-local effects of substances. Claim 5, reproduced below, is
illustrative of the claimed subject matter:
Claim 5: A method of producing and detecting a second
plurality of quantum entanglements between a third plurality of
quantum entities in a first target and a fourth plurality of quantum
entities in a second target, a first non-local effect of said second
target on said first target through said second plurality of
quantum entanglements and/or a second non-local effect of said
first target on said second target through said second plurality of
quantum entanglements which comprises the steps of:
selecting said first target which comprises a first chemical
substance, human or animal at a first location;
selecting said second target which comprises a second
chemical substance, human or animal at a second location;
providing a first water-based medium at said first location
and a second water-based medium at said second location, a first
plurality of quantum entities in said first medium being in a first
plurality of quantum entanglements with a second plurality of
quantum entities in said second medium;
providing a detecting means for detecting said second
plurality of quantum entanglements, said first non-local effect
and/or said second non-local effect when said detecting means
operates;
causing said first target to interact with said first water-
based medium through a first contact or radiation from a first
photon or magnetic pulse generating source;
causing said second target to interact with said second
water-based medium through a second contact or radiation from
a second photon or magnetic pulse generating source; and
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detecting said second plurality of quantum entanglements,
said first non-local effect and/or said second non-local effect;
whereby said second plurality of quantum entanglements
between said third plurality of quantum entities in said first target
and said fourth plurality of quantum entities in said second target
is generated through said interaction between said third plurality
of quantum entities in said first target and said first plurality of
quantum entities in said first water-based medium and said
interaction between said fourth plurality of quantum entities in
said second target and said second plurality of quantum entities
in said second water-based medium, and detected through said
detecting means; and said first non-local effect of said second
target on said first target, comprising a first effect of said second
target on a first physical, chemical or biological property or
process of said first target, and/or said second non-local effect of
said first target on said second target, comprising a second effect
of said first target on a second physical, chemical or biological
property or process of said second target, are generated through
said second plurality of quantum entanglements between said
third plurality of quantum entities in said first target and said
fourth plurality of quantum entities in said second target and
detected through said detecting means.
REJECTIONS3
Claims 5, 7—9, 11, and 12 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 5, 7—9, 11, and 12 are rejected under 35 U.S.C. 112, first
paragraph, as failing to comply with the enablement requirement.
Claims 5, 7—9, 11, and 12 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 5, 7—9, 11, and 12 are rejected under 35 U.S.C. § 101 because
the claimed invention lacks patentable utility.
3 The Examiner withdrew the anticipation rejection. Ans. 2.
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Claims 5, 7—9, 11, and 12 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 14, 18, 19,
23, and 24 of copending Application No. 11/670,996.4
OPINION
Enablement under § 112, first paragraph and utility under §101
For each of these rejections, Appellants argue the claims as a group
(App. Br. 12—23; 29—64), for which claim 5 is representative under 37
C.F.R. § 41.37(c)(l)(iv).5 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 § 112,11, and whether an application
satisfies the utility requirement of § 101 are closely related. To
satisfy the enablement requirement of § 112, | 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
4 The double-patenting rejection is not contested and therefore not further
addressed herein. “Once the provisional rejection has been made, there is
nothing the examiner and the applicant must do until the other application
issues.” In re Mott, 539 F. 2d 1291, 1295-96 (CCPA 1976); see also MPEP
§ 804(1).
5 Claims 7, 8, 11, and 12 are cited by Appellant to contest the Examiner’s
determination regarding the breadth of claim 5 under In re Wands, 858 F.2d
731 (Fed. Cir. 1988). App. Br. 12—13. Claims 7, 8, 11, and 12 are not
considered separately argued.
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the absence of enablement is a legal conclusion based on
underlying factual inquiries.
In re Swartz, 232 F. 3d 862, 863 (Fed. Cir. 2000) (quotations and internal
citations omitted); see also MPEP § 2164.07.
The paragraphs of Appellants’ Specification reproduced below
summarize the invention as follows:
[Para 6] My invention and discovery were made against such
background. No process has previously been known which can
produce non-local effects of substances through quantum
entanglement on responsive targets such as biological or
chemical systems, so that beneficial effects of the said substances
can be delivered through quantum-entangling media such as
photons of various sources.
[Para 10] 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) it can persist in biological,
chemical and other systems at room and higher temperatures
despite of quantum decoherence; and (3) it 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 health,
medicine and even recreation besides the already emerging fields
of quantum computation.
[Para 11] For example, using the apparatus and method
developed in this invention I have discovered that applying
magnetic pulses to a biological system such as the human brain
when a substance such as a general anesthetic was placed in
between caused the brain to feel the effect of said anesthetic for
several hours after the treatment as if the test subject had actually
inhaled the same.
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[Para 12] For another example, using the apparatus and method
developed in this invention I have further discovered that
drinking water exposed to magnetic pulses, laser light,
microwave or even flashlight when a substance such as a general
anesthetic was placed in between also caused the brain to feel the
effect of said anesthetic in various degrees as if the test subject
had actually inhaled the same.
[Paral3] Further, I have verified as detailed below that said
biological effect was the consequence of quantum entanglement
between quantum entities inside the biological system such as the
human brain and those of the substance under study induced by
the photons of the magnetic pulses, laser light, microwave or
flashlight.
[Para 14] For yet another example, using the objective and
quantitative detecting and measuring apparatus and method
developed in this invention, we have further discovered that after
consumption by a voluntary human subject of one part of water
quantum entangled with a second part of water as disclosed in
this invention, the subject’s heart rate was increased by adding a
heart stimulant to the second part of water.
[Para 16] Key to the objective and quantitative detection and
measurement in biological systems in the present invention is a
high-sensitivity and/or high-precision apparatus for detecting
and measuring a physiological and/or biological parameter.
The Examiner provided a detailed analysis, citing various evidentiary
sources, including, but not limited to, those submitted by Appellants, in
considering the Wands factors as they relate to enablement, and the question
of whether the claimed invention contravenes established scientific
principles, as that question relates to the utility requirement. See Final Act.
4—6, 8—11. We agree with the Examiner’s analysis, which raised reasonable
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doubts as to operability of Appellants’ invention and the Specification’s
compliance with the enablement requirement. Appellants’ arguments rely
mainly on extrinsic sources that seem to bear little relevance to the particular
subject matter in question here and patentability determinations made in
other jurisdictions. The focus of this inquiry is on Appellants’ Specification.
In that regard, Appellants cite, inter alia, paragraphs 78, 79, 84 of the
Specification (App. Br. 15) which, along with Figure 7, are reproduced
below to summarize an embodiment of Appellants’ invention:
[Para 78] Again, in one particular embodiment 104, the said
source 110 is a microwave oven enclosing the medium 180. In
another particular embodiment 105, the said source 110 is made
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up of a magnetic coil 111 and an audio system 112 connected to
the said magnetic coil with the said magnetic coil disposed
adjacent to the medium 180. In yet another embodiment 106, the
said source 110 is a laser disposed adjacent to the medium 180.
[Para 79] To use each apparatus 104, 105 or 106 having the
respective embodiment, one operates the quantum entanglement
source 110 with a desired output power and for a desired length
of time whereby the photons generated by the said source 110
first entangle with some quantum entities inside the medium 180,
and second entangle with some other quantum entities inside the
same medium 180 producing quantum entanglement within the
medium 180. Subsequently, to use the quantum-entangled
medium 180, the said medium is divided into two or more parts.
[Para 84] FIG. 7 illustrates one method of beneficially using two
parts 181 and 182 of a quantum-entangled medium 180 produced
with apparatus 104,1 05 or 106 illustrated in FIG. 4B (or 140 and
160 produced with apparatus 101, 102 or 103 illustrated in FIG.
4A). The essential steps include providing two parts 181 and 1
82of a quantum-entangled medium 180, applying one part 181 to
a biological system 500 such as a human, and contacting the
other part 182 with a desired substance 120 such as a particular
medication or substance encoded with a message whereby non­
local effect of the substance 120 on the said biological system
500 is produced for a beneficial purpose.
With regard to the specific step of “detecting said second plurality of
quantum entanglements” paragraph 85 and Figure 8A respectively describe
and illustrate the heart rate monitor used to detect quantum entanglements:
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FIG&4
[Para 85] FIG. 8A illustrates one method of using a detecting
device for objectively and quantitatively detecting and
measuring a non-local effect in a biological system 500 such as
a human. The essential steps include providing a detecting device
(such as a heart rate monitor) comprising a probe 201 attached to
the biological system 500 (such as chest area of the human) and
a display mechanism 202 connected to said probe 201, or a
wireless probe plus transmitter 201 attached to the biological
system 500 (such as chest area of the human) and a wireless
receiver plus display mechanism 202, and detecting a change of
a physical, chemical or biological parameter (such as heart rate
of the human) produced through quantum entanglement.
As with the inventions in the related cases mentioned above, we have
no doubt that if Appellants’ invention is able to use quantum entanglement
to cause a therapeutic response in a subject by administering a
pharmaceutical substance to water that is not actually consumed by that
subject but was previously microwaved with water that is consumed by the
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subject it would be groundbreaking and revolutionary. See App. Br. 28.
However, due to the absence of any known scientific principles explaining
how Appellants’ invention could possibly operate in this manner, the
absence of any cogent explanation in Appellants’ Specification regarding the
general principals or mechanisms causing this to occur,6 and the absence of
any verifiable test data reasonably attributable to the purported result, the
Examiner reasonably characterized Appellants’ invention as being of an
incredible nature. See, e.g., MPEP § 2107.01(11); see also MPEP
§§ 2107.01(111), 2107.03 (regarding asserted therapeutic or pharmacological
utilities). Despite forty-six pages of arguments and more than five-hundred
pages of articles on the subject, we are not apprised of any concrete evidence
or cogent technical explanations apprising us of error in the Examiner’s
determinations. We find no explanation as to why ordinary and conventional
microwaving of water produces any meaningful quantum entanglements.
Even if such entanglements did occur, there is neither sufficient evidence to
6 That is not to say that Appellants must, in all cases, explain the scientific
principles governing how a device operates if they are not known. See In re
Anfhauser, 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, Appellants make
no assertion here that the governing principles are unknown. Rather
Appellants repeatedly asserts, citing various sources of extrinsic evidence,
that the principles would be readily understood by those skilled in the art
(App. Br. 20, 22) even if they are misunderstood by the Examiner (App. Br.
31—32, 53, 64). If the principles governing the operation of Appellants’
method were so readily amenable to understanding we see no reason to omit
an explanation of them from Appellants’ Specification and Appellants’
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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demonstrate, nor cogent theory to explain why, those quantum
entanglements would result in an unaltered portion of the water exhibiting
therapeutic properties like those expected from water containing a
therapeutic substance only by adding that substance to a different, non-
consumed, portion of the water. There is no explanation offered as to why
spin or any other quantum property of entangled particles would cause
pharmacological changes in a discrete water sample only by virtue of having
previously been microwaved with a water sample to which a
pharmacological substance is added. We are also not apprised of any data
logically evincing such a pharmacological interaction has actually occurred.
We agree with the Examiner that heart rate changes (App. Br. 57; Spec,
para. 85), even if present, do not amount to such evidence because heart rate
changes do not necessarily demonstrate a specific pharmacological
interaction. Ans. 4. The various articles cited by Appellants 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,7 or both.
In 1931 the predecessor to our reviewing court considered a case
involving a “Method and Apparatus for Accumulating and Transforming
7 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/KanalTidsskriftInfo.action?id=47
8691; NeuroQuantology, available at
https://dbh.nsd.uib.no/publiseringskanaler/KAN ALTiDSskriftInfo.action?id=4
73508; Progress in Physics, available at
https://dbh.nsd.uib.no/publiseringskanaler/KAN ALTiDSskriftInfo.action?id=4
73750.
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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 appellants’ 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 (Ans. 3,
5—6, 9—12), 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.
Written Description under § 112, first paragraph
The claims subject to the written-description rejection are argued as a
group (App. Br. 6—11) for which claim 5 is representative under 37 C.F.R.
§ 41.37(c)(l)(iv).
The purpose of the “written description” requirement is broader
than to merely explain how to “make and use”; the applicant
must also convey with reasonable clarity to those skilled in the
art that, as of the filing date sought, he or she was in possession
of the invention. The invention is, for purposes of the “written
description” inquiry, whatever is now claimed.
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir. 1991)
(emphasis omitted).
Some of the Examiner’s discussion (Final Act. 2—3; Ans. 3—5)
regarding the written description requirement arguably relates to the
operability of the device and may be more suited to the enablement/utility
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analysis discussed above. Nevertheless, the Examiner raises a valid point
with regard to the written description requirement:
Although some examples are listed, the examples are widely
disparate and unrelated and don’t provide guidance or limits as
to what could or could not be a source. Similarly, Applicant
discloses that any substance and any detection device can be used
(see specification paragraphs 52-54). . . . The Specification does
not provide any description of a mechanism for detecting
quantum entanglement, but rather only discusses detecting non­
local effects such as increased heart rate. This claimed subject
matter is therefore not described in a way which reasonably
conveys the inventor had possession of the claimed invention,
i.e. a method of detecting quantum entanglement between the
two targets.
Final Act. 3.
The issue raised by the Examiner concerns the breadth of the
recitations related to the source and detecting aspects of the claim.
Regarding the source, Appellants’ Specification provides:
[Para 51 ] The said source will be, depending on a particular use,
any source, such as a magnetic coil connected to a driving device,
laser, microwave oven, flashlight or even a biological system,
which is capable of generating quantum-entangling members
such as photons, electrons, atoms or molecules when said source
operates. The selection and operating specifications of the source
will vary according to the use. The person skilled in the art will
be able readily to determine the appropriate source and operating
specifications of said source, with only routine experimentation,
for optimum performance of the specific use intended.
Regarding detection, Appellants’ Specification provides:
[Para 85] FIG. 8A illustrates one method of using a detecting
device for objectively and quantitatively detecting and
measuring a non-local effect in a biological system 500 such as
a human. The essential steps include providing a detecting device
(such as a heart rate monitor) comprising a probe 201 attached to
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the biological system 500 (such as chest area of the human) and
a display mechanism 202 connected to said probe 201, or a
wireless probe plus transmitter 201 attached to the biological
system 500 (such as chest area of the human) and a wireless
receiver plus display mechanism 202, and detecting a change of
a physical, chemical or biological parameter (such as heart rate
of the human) produced through quantum entanglement.
The Specification provides a few examples of suitable sources and
one example of a detecting method. However, claim 5 encompasses subject
matter wherein anything capable of generating photons or magnetic pulses
for causing quantum entanglements, whether known or unknown, described
in Appellants’ Specification or not, can be the source. Similarly, claim 5
encompasses subject matter wherein any method for detecting quantum
entanglements, whether known or unknown, described in Appellants’
Specification or not, can perform the detecting steps. In this emerging field
of technology it is relatively clear that Appellants have not demonstrated
possession of a sufficient number of sources and detecting techniques to
broadly claim subject matter that covers all possible photon and magnetic
sources that may generate quantum entanglements and all possible
techniques for detecting them. Even if we were to set aside the question of
operability and assume that Appellants have demonstrated possession of a
limited number of sources and at least one detecting technique, the scope of
the right to exclude that would be granted by claim 5 would far exceed
Appellants’ contribution to the art—preempting the future before it has
arrived:
Patents are not awarded for academic theories, no matter how
groundbreaking or necessary to the later patentable inventions of
others. “[A] patent is not a hunting license. It is not a reward for
the search, but compensation for its successful conclusion.”
Requiring a written description of the invention limits patent
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protection to those who actually perform the difficult work of
“invention”—that is, conceive of the complete and final
invention with all its claimed limitations—and disclose the fruits
of that effort to the public.
That research hypotheses do not qualify for patent protection
possibly results in some loss of incentive .... But claims to
research plans also impose costs on downstream research,
discouraging later invention. The goal is to get the right balance,
and the written description doctrine does so by giving the
incentive to actual invention and not attempt[s] to preempt the
future before it has arrived. As this court has repeatedly stated,
the purpose of the written description requirement is to ensure
that the scope of the right to exclude, as set forth in the claims,
does not overreach the scope of the inventor’s contribution to the
field of art as described in the patent specification. It is part of
the quid pro quo of the patent grant and ensures that the public
receives a meaningful disclosure in exchange for being excluded
from practicing an invention for a period of time.
AriadPharms., Inc. v. EliLilly & Co., 598 F. 3d 1336, 1353—54 (Fed. Cir.
2010) (en banc) (citations and internal quotations omitted).
Accordingly, we sustain the Examiner’s rejection of claims 5, 7—9, 11,
and 12 as failing to comply with the written description requirement.
Indefiniteness under 35 U.S.C. § 112, second paragraph
The Examiner included two grounds for rejecting the claims under 35
U.S.C. § 112, second paragraph. The first is that independent claim 5 is
“incomplete for omitting essential steps, such omission amounting to a gap
between the steps” which “renders the claim indefinite.” Final Act. 6—7
(citing MPEP § 2172.01). The second is that independent claim 5 is
indefinite because it “recites producing a non-local effect but does not
specify an effect or disclose clearly how an effect is generated in a target by
interacting with a medium.” Final Act. 7. We do not sustain the rejection
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under § 112, second paragraph, on either of the grounds specified by the
Examiner.
Regarding the first ground, as mentioned in the portion of the MPEP
cited by the Examiner (§ 2172.01) the omission of essential elements is
typically a concern addressed under the enablement requirement of the first
paragraph of § 112. That same section of the MPEP also notes that the
omission of essential elements may create additional issues under the second
paragraph of § 112. However, although such omission might create issues
under the “regards as the invention” language of § 112, second paragraph
(MPEP § 2172.018), unless there is a specific issue of claim clarity such
omission, without more, relates to breadth as opposed to indefmiteness.
Regarding the second ground, the Examiner points out that no specific effect
is specified. Final Act. 7. This, without more, is again a question of breadth
as opposed to indefmiteness. The Examiner also raises issues with regard to
how the effect is generated. Final Act. 7. This relates only to a lack of clarity
in the operation of the device as opposed to a lack of clarity in the metes and
bounds of the claimed subject matter. Although this may relate to issues of
utility and enablement, as discussed above, the Examiner has not, on the
record before us, demonstrated how these issues create uncertainty as to the
scope of the claimed subject matter.
With regard to claims 7 and 11, the Examiner states with regard to the
limitation,
a “magnetic coil connected to a driving mechanism, a laser
device, or a microwave device”. It is unclear if this is meant to
mean the coil may be connected to any of these three items
8 Citing In re Collier, 397 F.2d 1003 (CCPA 1968) (holding the claim “fails
to comply with section 112, second paragraph, in failing distinctly to claim
what appellant in his brief insists is his actual invention”).
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(driving mechanism, laser device, or microwave) or if the laser
device and/or microwave are intended to be distinct sources from
the coil connected to a driving mechanism.
Final Act. 7. However, in light of Appellants’ consistent use of commas and
semi-colons throughout the claim, only the first of the Examiner’s proposed
interpretations is reasonable. Thus, we are not apprised of any ambiguity in
the specific clause quoted by the Examiner.
For the foregoing reasons, we do not sustain the Examiner’s rejections
under § 112, second paragraph on the bases set forth by the Examiner.
DECISION
The Examiner’s rejections under § 101 and § 112, first paragraph are
affirmed. The Examiner’s rejection under § 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
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