Ex Parte Laberge et al

Patent Trial and Appeal Board

Nov 13, 2017

12643792 (P.T.A.B. Nov. 13, 2017)

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.
12/643,792 12/21/2009 Michel Georges Laberge GENFUS.002C1 5154
20995 7590 11/15/2017
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
BURKE, SEAN P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
11/15/2017 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):
jayna.cartee@knobbe.com
efiling @ knobbe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL GEORGES LABERGE, DANIEL GELBART,
ROSS HENRY HILL, and DENIS J. CONNOR
Appeal 2015-0010801
Application 12/643,7922
Technology Center 3600
Before ANTON W. FETTING, KEVIN W. CHERRY, and
JAMES A. WORTH, Administrative Patent Judges.
CHERRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Georges Laberge et al. (Appellants) seek review under
35 U.S.C. § 134(a) of the Final Rejection of claims 1—8, 10-16, and 21—24,
the only claims pending in the application on appeal. We have jurisdiction
over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision references the Appellants’ Appeal Brief (“Appeal Br.”), filed
July 25, 2014, Appellants’ Reply Brief (“Reply Br.”), filed October 28,
2014, the Final Action (“Final Act.”), mailed March 6, 2014, and the
Examiner’s Answer (“Ans.”), mailed August 29, 2014.
2 Appellants identify General Fusion, Inc., as the real party in interest for
this appeal (Appeal Br. 3).
Appeal 2015-001080
Application 12/643,792
We AFFIRM-IN-PART.
Appellants’ claimed invention “relates to nuclear fusion reactors and
more particularly to pressure wave generation in nuclear fusion reactors”
(Spec. 12).
Claims 1 and 10 are the two independent claims. Claims 1 and 10 are
illustrative of the subject matter on appeal and are reproduced below.
1. A pressure wave generator for generating a pressure
wave in a liquid medium, the pressure wave generator
comprising:
a movable piston;
a control rod coupled to the piston;
a transducer configured to be coupled to the liquid
medium;
a housing having an inner bore, a first end, and a second
end, the movable piston and at least a portion of the control rod
disposed in the inner bore of the housing, the transducer slideably
accommodated in an opening at the second end of the housing,
the inner bore comprising a first cavity between the first end and
the movable piston and a second cavity between the movable
piston and the transducer, wherein the first cavity is configured
to receive a fluid for applying fluid pressure to the movable
piston to accelerate the movable piston toward the transducer,
and wherein the movable piston is configured to move within the
second cavity toward the transducer;
a position sensor configured to generate a position signal
representing a position of the movable piston;
a controller operatively coupled to the position sensor,
wherein the controller is configured to generate a control signal
based at least in part on the position signal; and
a brake operatively coupled to the controller, the brake
configured to apply a restraining force to the control rod in
response to the control signal such that the movable piston
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impacts the transducer at a desired time and with a desired kinetic
energy,
wherein the movable piston and the transducer are
configured to convert part of the desired kinetic energy of the
movable piston into a pressure wave in the liquid medium upon
impact of the movable piston with the transducer.
(Appeal Br. 33, Claims App.).
10. A pressure wave generator for generating a pressure
wave in a liquid medium, the pressure wave generator
comprising:
a movable assembly;
a transducer configured to be coupled to the liquid
medium;
a motive force generator configured to accelerate the
movable assembly toward the transducer; and
a brake configured to apply a restraining force to the
movable assembly, the restraining force adjustable so that the
movable assembly impacts the transducer at a desired time and
with a desired kinetic energy such that a portion of the desired
kinetic energy from the movable assembly is converted into a
pressure wave m the liquid medium.
(id. at 34—35, Claims App.)
Rejections
Claims 1—8, 10-16, and 21—24 stand rejected under 35 U.S.C. § 112
11, as based on a disclosure that is not enabling.
Claims 10-16 and 24 stand rejected under 35 U.S.C. § 112 | 1, for
failure to comply with the written description requirement.
Claims 1—8, 10-16, and 21—24 stand rejected under 35 U.S.C. § 112
12, as being incomplete for omitting essential elements, such omission
amounting to a gap between the elements.
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Claims 1—8, 10-16, and 21—24 stand rejected under 35 U.S.C. § 112
12 for indefiniteness.
Claims 10-12 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Tessien (US 2009/0059718 Al, pub. Mar. 5, 2009).
Claims 1, 2, 4, 7, 8, 15, 16, 23, and 24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tessien and Venier et al. (US 6,532,887
Bl, iss. Mar. 18, 2003, “Venier”).
Claims 3, 5, 6, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tessien, Venier, and Lemelson (US 4,367,130, iss.
Jan. 4, 1983).
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tessien, Venier, Lemelson, and Lungu
(WO 91/10242 A2, pub. July 11, 1991).
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tessien and Lemelson.
ANALYSIS
Enablement of Claims 1—8, 10—16, and 21—24
We are persuaded by Appellants’ argument that the Examiner has
failed to demonstrate that claims 1—8, 10-16, and 21—24 are not enabled
(Appeal Br. 19—21; Reply Br. 2—6). The Examiner cites In re May hew, 527
F.2d 1229, 1233 (CCPA 1976), for the proposition that “claims failing to
recite a necessary element of the invention fail for lack of an enabling
disclosure” (Ans. 2—3). In Mayhew, however, “the method claims omitted a
step without which the invention as claimed was wholly inoperative
(meaning it simply would not work and could not produce the claimed
product).” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
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1337—38 (Fed. Cir. 2003) (citing Mayhew, 527 F.2d at 1233). Here, the
Examiner has not found, and does not contend, that the lack of a limitation
directed to a “fusion reactor” is a failure to describe the structure or a
necessary element of a “pressure wave generator” (Ans. 2). Because the
invention as claimed—a pressure wave generator—does not require a fusion
generator or a liquid medium for its operation, the Examiner’s reliance on
Mayhew was misplaced. There is no other reasoning to support to the
enablement rejection, so we cannot sustain the rejection of claims 1—8, 10—
16, and 21—24 as not enabled. See In re Strahilevitz, 668 F.2d 1229, 1232
(CCPA 1982) (holding the PTO has the initial burden of providing reasoning
inconsistent with enablement).
Lack of Written Description of Claims 10—16 and 24
We are not persuaded by Appellants’ argument the Specification has
adequate written description support for the “movable assembly” claimed in
claims 10-16 and 24 (Appeal Br. 14—16; Reply Br. 7—8). Relying on
dictionary definitions, Appellants contend that an “assembly” is simply “the
fitting together of manufactured parts into a complete machine, structure, or
unit of a machine” (Appeal Br. 15 (citing Exhibit B (.Merriam Webster’s
Collegiate Dictionary, Tenth Edition (1993))). Thus, under Appellants’
definition, a “movable assembly” is “the fitting together of manufactured
parts into a complete machine, structure, or unit of a machine” that is
capable of movement (id.).
Appellants point to the disclosure in the Specification of a piston and
control rod in a pressure wave generator shown in Figures 5, 8, 13, 14, 21,
and 22, and described in paragraphs 129, 135, 143, 144, 164, and 173—175,
as providing support for the claimed “movable assembly” (Appeal Br. 15—
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16; Reply Br. 7—8). We disagree. The cited figures and description all show
a piston and control rod as the moving parts of the pressure wave generator
in a fusion reactor. By Appellants’ own definition, a “movable assembly,” is
far broader than just a piston and a control rod. Their definition includes any
“manufactured parts” that are “fitted together . . . into complete machine,
structure, or unit of a machine” that is capable of movement (App. Br. 15).
Thus, although Appellants’ Specification may disclose one species of such a
“movable assembly”—it fails to provide any disclosure of the entire genus
of “movable assemblies]” for any use now claimed. “[A]n adequate written
description of a claimed genus requires more than a generic statement of an
invention’s boundaries.” AriadPharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1349 (Fed. Cir. 2010) (en banc) (citing Regents of the Univ. of Cal. v.
Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997)). “One needs to show
that one has truly invented the genus, i.e., that one has conceived and
described sufficient representative species encompassing the breadth of the
genus. Otherwise, one has only a research plan, leaving it to others to
explore the unknown contours of the claimed genus.” AbbVie Deutschland
GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300 (Fed. Cir.
2014). Here, we determine that the mere description of one species of
“movable assemblies”—a piston and rod—is insufficient to show that the
inventors had possession of the entire genus of “movable assemblies.” See
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562—63 (Fed. Cir. 1991).
Thus, we sustain the Examiner’s rejection of claims 10—16 and 24, because
the term “movable assembly” lacks written description support.
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“Missing Elements” of Claims 1—8, 10—16, and 21—24
The Examiner’s rejection of claims 1—8, 10-16, and 21—24 was based
on the Examiner’s determination that Mayhew applied to this case (see
Ans. 4 (citing MPEP § 2172.01)). However, as we determined above,
Mayhew does not apply to this case, so we cannot sustain the rejection of
claims 1—8, 10—16, and 21—24 as “missing elements.”
Indefiniteness of Claims 1—8, 10—16, and 21—24
We are persuaded by Appellants’ arguments that the terms “movable
assembly” and “medium” are not indefinite (Appeal Br. 17; Reply Br. 9—10).
In rejecting the claims, the Examiner explained that “[t]he metes and bounds
of the claimed invention are vague and ill-defined because the metes and
bounds of ‘medium’ and [‘jmovable assembly’ are vague and ill-defined due
to a lack of an adequate written description, with reference to the rejection
under 35 U.S.C. 112, first paragraph” (Ans. 4). The Examiner further
asserts that “the ‘moveable [sic.] assembly’ is undefined by the specification
and is amenable to at least two constructions—the construction provided by
the Appellant which includes a piston and control rod and the construction
implied by [Fjigure 5 which also includes a position sensor and signal line”
(Ans. 22).
Appellants argue that claims have been amended to recite “liquid
medium” instead of “medium,” which should resolve this dispute (Appeal
Br. 17). As for “movable assembly,” Appellants argue that the term is clear
and is not amenable to multiple constructions (Appeal Br. 17; Reply Br. 9).
With respect to “medium,” we agree with Appellants that the
Examiner has failed to explain why, when viewed in light of the
Specification that “liquid medium” is not sufficiently clear (see Appeal
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Br. 17; Spec. 1127). Thus, we do not sustain the rejection of the claims 1—
8, 10-16, and 21—24 as indefinite based on the term “liquid medium.”
For the term “movable assembly,” we also agree with Appellants that
the Examiner has failed to show that the term is indefinite. As we explained
above, we construe the term “movable assembly” as any “manufactured
parts” that are “fitted together . . . into complete machine, structure, or unit
of a machine” that is capable of movement. The Examiner’s finding is
really that there are two potential embodiments that could be encompassed
by this term. Our construction is broad enough to encompass both
embodiments. We find this term, although broad, is sufficiently clear. As
we explained above, the Examiner is correct that the term “movable
assembly” is far broader than the disclosure provided in the written
description, but “breadth is not equated with indefmiteness.” In re Miller,
441 F.2d 689, 693 (CCPA 1971). Thus, we cannot sustain the Examiner’s
rejection of claims 10—16 and 24 as indefinite based on the term “movable
assembly.”
Anticipation of Claims 10—12 by Tessien
We are not persuaded by Appellants’ arguments that the Examiner
erred in finding that Tessien anticipates claims 10—12 (Appeal Br. 18—21;
Reply Br. 10-13). Appellants argue that Tessien fails to disclose that
“movable assembly can be accelerated ‘toward the transducer’ and that ‘the
movable assembly impacts the transducer’” (Appeal Br. 19-20; Reply
Br. 10—13). However, we agree with the Examiner that the two limitations
of claim 10 that Appellants rely on to support these contentions do not
impose the requirements on the claim that Appellants assert.
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First, claim 10 recites the “pressure wave generator” include a
“motive force generator configured to accelerate the movable assembly
toward the transducer1'’ (Appeal Br. 34, Claims App.). Appellants argue that
the Examiner reads this language “out of context of the entirety of claims
10—12 as read in light of the Specification” (Reply Br. 11). However, it is
Appellants that take the claim language out of context. For it is only by
selectively quoting and omitting the structural limitations that the functional
limitations modify that Appellants arrive at the conclusion that this language
requires that the “movable assembly” impact the transducer (see id.
(Modifying claim 10 to state “these claims also recite ‘the movable assembly
impacts the transducer . . . such that a portion of the desired kinetic energy
from the movable assembly is converted into a pressure wave in the
medium.’”). Instead, we agree with the Examiner that the plain language of
this limitation only places a restriction on the direction of travel of the
movable assembly, and does not require that the movable assembly impact
the transducer (see American-Heritage Dictionary Second College Edition
1282 (1982) (Defining “toward” as: “1. In the direction of: driving toward
home.'’’ ). We agree with the Examiner that Tessien discloses that the
“movable assembly” (piston 307 and two-part piston rod 309 and 311) is
accelerated “in the direction of’ the transducer (drive piston 303, seals 305,
and hydraulic cylinder 311) (Tessien, Fig. 3, 36—39).
Second, claim 10 recites:
a brake configured to apply a restraining force to the movable
assembly, the restraining force adjustable so that the movable
assembly impacts the transducer at a desired time and with a
desired kinetic energy such that a portion of the desired kinetic
energy from the movable assembly is converted into a pressure
wave in the liquid medium.
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Again for this limitation, Appellants omit the structural limitations
recited of “a brake configured to apply a restraining force to the movable
assembly, the restraining force adjustable” to argue that the claim requires
“the movable assembly impacts the transducer at a desired time and with a
desired kinetic energy” such that a portion of the desired kinetic energy from
the movable assembly is converted into a pressure wave in the liquid
medium (see App. Br. 19-20, 22; Reply Br. 10). However, as the Examiner
explains and we agree, this limitation also does not require that the movable
assembly impact the transducer (Ans. 23—25). Instead, it merely
functionally defines the properties of the recited “brake.” The “brake” must
be configured to apply a “restraining force,” and that “restraining force”
must be “adjustable” or capable of providing a “restraining force” of a
certain magnitude. Here, the Examiner found that the “the single hydraulic
line ‘can be used to extend and retract piston 307, utilizing multiple lines
323/325 allow for more rapid expansion/retraction of the pistons” and that
adjustment based on time and kinetic energy was inherent in such a device
(Ans. 24—25). We agree. Appellants have failed to present any evidence
overcoming this finding. Thus, we sustain the rejection of claims 10—12 as
anticipated by Tessien.
Obviousness of Claims 1, 2, 4, 7, 8, 15, 16, 23, and 24 over Tessien
and Venier
We are persuaded by Appellants’ argument that the Examiner erred
finding claim 1 obvious over Tessien and Venier. In contrast to claim 10,
claim 1 recites that “the movable piston and the transducer are configured to
convert part of the desired kinetic energy of the movable piston into a
pressure wave in the liquid medium upon impact of the movable piston with
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the transducer.” Different from the purely functional language regarding
impact that modifies “the restraining force” of the “brake” of claim 10,
claim 1 requires that “the movable piston” and “transducer” be “configured
to” impact each other. As the Federal Circuit has explained, “configured to”
has a narrower meaning than merely “capable of.” See In re Giannelli, 739
F.3d 1375, 1379-80 (Fed. Cir. 2014). Instead, “configured to” has been
understood as meaning “made to” or “designed to,” rather than “capable of’
or “suitable for.” In re Giannelli, 739 F.3d at 1379. Thus, with respect to
claim 1, we agree with Appellants that the Examiner erred in finding claim 1
obvious over the combination of Tessien and Venier because neither
reference discloses a “movable piston” and “transducer” designed to or
made to impact each other. Claims 2, 4, 7, 8, and 23 depend, directly or
indirectly, from claim 1 and rely on similar reasoning. Thus, we also cannot
sustain the rejection of claims 2, 4, 7, 8, and 23.
Claims 15 and 16 depend from claim 10 (Appeal Br. 35, Claims
App.). Appellants only argue that the rejection of claims 15 and 16 should
be reversed for the reasons stated above with respect to claim 10 (Appeal
Br. 24). As we discussed above with reference to the anticipation rejection
of claim 10, we were unpersuaded by those arguments. Thus, we sustain the
rejection of claims 15 and 16 as obvious over Tessien and Venier.
Claim 24 depends indirectly from independent claim 10 (Appeal
Br. 35—36, Claims App.). In addition to the arguments regarding claim 10
that we found unpersuasive above, Appellants further contend that the
combination of Tessien and Venier fails to teach or suggest “the controller is
configured to increase the adjustable restraining force if the position of the
movable assembly is ahead of a desired position of the movable assembly,
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and reduce the adjustable restraining force if the position of the movable
assembly is behind the desired position of the movable assembly,” as recited
in claim 24 (Appeal Br. 26). Appellants argue that “nothing in Venier
discloses controlling piston position based on a ‘desired position of the
movable piston,'1 let alone that Venier’s controller is configured to ‘increase
the restraining force applied by the brake if the movable piston position is
behind the desired position of the movable piston’” (Appeal Br. 24—24;
Reply Br. 15). We disagree. As the Examiner found, Venier teaches a
controller for controlling a pressure wave generator that is coupled to a
position sensor (Ans. 27 (citing Venier, col. 4, line 55 — col. 5,1. 2)).
Moreover, as the Examiner explains, given the limited range of motion in a
piston-based system, such as Venier’s, we agree that Venier’s position
sensor measures a “desired” position (id.). As Appellants’ arguments
regarding differences between Venier and the specific implementation
described in Appellants’ Specification (Reply Br. 15), such as position
schedules, we note that those details of the implementation are not claimed.
Thus, we sustain the Examiner’s rejection of claim 24 as obvious over
Tessien and Venier.
Obviousness of Claims 3, 5, 6, and 21 Over Tessien, Venier, and
Lemelson
The Examiner’s rejection of claims 3, 5, 6, and 21 as obvious over
Tessien, Venier, and Lemelson is based on the same reasoning considered
above with respect to the rejection of claim 1 as obvious over Tessien and
Venier. Thus, for the same reasons discussed above with respect to claim 1,
we cannot sustain the rejections of claims 3, 5, 6, and 21 as obvious over
Tessien, Venier, and Lemelson.
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Obviousness of Claim 22 Over Tessien, Venier, Lemelson, and Lungu
The Examiner’s rejection of claim 22 as obvious over Tessien, Venier,
Lemelson, and Lungu is based on the same reasoning considered above with
respect to the rejection of claim 1 as obvious over Tessien and Venier.
Thus, for the same reasons discussed above with respect to claim 1, we
cannot sustain the rejections of claim 22 as obvious over Tessien, Venier,
Lemelson, and Lungu.
Obviousness of Claims 13 and 14 Over Tessien and Lemelson
Claim 13 depends from independent claim 10 and claim 14 depends
from claim 13 (Appeal Br. 35, Claims App.). In addition to arguing the
reasons we rejected above that Tessien does not anticipate claim 10,
Appellants contend that Lemelson’s lineal drive fails to teach or suggest the
“an eddy current brake configured to apply the restraining force when the
movable assembly moves with respect to the transducer,” as recited in
claim 13 (Appeal Br. 28—29, 31; Reply Br. 19). We disagree. Instead, for
the reasons stated by the Examiner, we agree that Lemelson accounts for this
element (Ans. 30 (citing Lemelson, drive 23)). Thus, we sustain the
rejection of claim 13.
As for claim 14, we do not agree with Appellants that the Examiner has
failed to make any finding regarding claim 14’s recitation of “a latch
coupled to the movable assembly, the latch configured to provide a holding
force on the movable assembly when the movable assembly is at rest with
respect to the transducer” (Appeal Br. 35, Claims App.; Reply Br. 2). As the
Examiner found, the “push pull solenoid 23” of Lemelson meets the claimed
latch (Ans. 18). Indeed, the Specification expressly provides that “[t]he
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latch may include an electromechanical solenoid” (Spec. 1147). Thus, we
sustain the rejection of claim 14 as obvious over Tessien and Lemelson.
DECISION
The Examiner’s decision to reject claims 10—16 and 24 is affirmed.
The Examiner’s decision to reject claims 1—8 and 21—23 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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