Ex Parte O

Board of Patent Appeals and Interferences

Jan 13, 2011

11555607 (B.P.A.I. Jan. 13, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/555,607 11/01/2006 Dennis Robert O'Keefe 7253
58191 7590 01/13/2011
GODO CONSULTING
5045 PARK WEST AVE.
SAN DIEGO, CA 92117
EXAMINER
WENDELL, MARK R
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
01/13/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DENNIS ROBERT O’KEEFE
____________

Appeal 2010-000479
Application 11/555,607
Technology Center 3600
____________

Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-000479
Application 11/555,607

STATEMENT OF THE CASE
Dennis Robert O’Keefe (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision to finally reject claims 1 and 3-20. Claim 2
has been canceled. We have jurisdiction over this appeal under 35 U.S.C.
§ 6.

THE INVENTION
Appellant’s invention relates to a method and system for the
abatement of hurricanes. Spec. 1, para. [0002].
Claims 1 and 17 are representative of the claimed invention and read
as follows:
1. A method for abating a cyclonic atmospheric disturbance, the
method comprising the steps of:
identifying spatial coordinates of a time varying localized updraft
tower of a cyclonic atmospheric disturbance utilizing a high resolution
computer simulation of said cyclonic atmospheric disturbance,
delivering a coolant to said spatial coordinates of a time varying
localized updraft tower of said cyclonic atmospheric disturbance, and
applying said coolant to said spatial coordinates of a time varying
localized updraft tower of said cyclonic atmospheric disturbance.

17. A system comprising:
a delivery vehicle, and
a means for discharging a cryogenic coolant into a time varying
localized updraft tower of a cyclonic atmospheric disturbance.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Mather US 5,357,865 Oct. 25, 1994
Appellant’s Admitted Prior Art (hereafter “AAPA”)
Spec. 1, paras. [0003]-[0009]
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The following rejections are before us for review:
The Examiner rejected claims 1 and 3-20 under 35 U.S.C. § 101
because the claimed invention is inoperative and therefore lacks utility.
The Examiner rejected claims 1 and 3-20 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the enablement requirement.
The Examiner rejected claims 1, 3-7, and 13-20 under 35 U.S.C.
§ 103(a) as unpatentable over AAPA.2
The Examiner rejected claims 8-12 under 35 U.S.C. § 103(a) as
unpatentable over AAPA and Mather.

SUMMARY OF DECISION
We AFFIRM-IN-PART.
ANALYSIS
The inoperative invention rejection
The Examiner has the initial burden of setting forth a reason to doubt
Appellant’s presumptively correct assertion of utility. In re Swartz, 232
F.3d 862, 864 (Fed. Cir. 2000). “The PTO may establish a reason to doubt
an invention's asserted utility when the written description ‘suggest[s] an
inherently unbelievable undertaking or involve[s] implausible scientific
principles.’” In re Cortright, 165 F.3d 1353, 1357 (Fed. Cir. 1999) (quoting
In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995)) (alterations in original).
The burden of coming forward with evidence of utility shifts to Appellant

2 Although the heading of this rejection does not include claims 4 and
5, the body of the rejection does include them. Ans. 7 and 8. Accordingly,
for the purpose of this appeal, we have considered this to be a mere
typographical error on the part of the Examiner.
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“[i]f the [Examiner] provides evidence showing that one of ordinary skill in
the art would reasonably doubt the asserted utility[.]” Id.
Appellant contends that the Examiner has failed to provide evidence
and reasoning to show reasonable doubt as to the utility of their invention,
and therefore has not satisfied the initial burden. App. Br. 5-7. We agree.
The Examiner has not presented any evidence to show that one of ordinary
skill would reasonably doubt the utility of Appellant’s claimed invention.
See Ans. 10-12. Likewise, the Examiner has not persuaded us that
Appellant’s system and method for abating a cyclonic atmospheric
disturbance involves an inherently unbelievable undertaking or implausible
scientific principles, i.e., perpetual motion. Moreover, Appellant has
provided a calculation of the approximate amount of cooling generated by
the release of 13,000 gallons of liquid air (App. Br., Appendix E), whereas
the Examiner has not shown any error in Appellant’s calculations. As such,
we cannot find by a preponderance of the evidence that the claimed subject
matter is inoperative, and we cannot sustain the rejection of claims 1 and 3-
20 as lacking utility.

The lack of enablement rejection
When rejecting a claim for lack of enablement, “the [Examiner] bears
an initial burden of setting forth a reasonable explanation as to why [the
Examiner] believes that the scope of protection 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)).
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In this case, the Examiner concluded that the enablement requirement
is not satisfied because the invention lacks credible utility and because
undue experimentation would be required. Ans. 5-6. As discussed above,
we have determined that the Examiner has not established that the invention
lacks utility, and therefore we cannot affirm the enablement rejection on that
basis.
As to undue experimentation, the Examiner sets forth six bulleted
findings. Id. at 6. One finding is that “[t]he application is devoid of
working examples.” Id. However, Appellant has provided a calculation of
the approximate amount of cooling generated by the release of 13,000
gallons of liquid air (App. Br., Appendix E). As noted above, the Examiner
does not explain why those calculations are incorrect or why the examples
otherwise fail to provide enough guidance to one of ordinary skill attempting
to practice the claimed invention. Most of the remaining undue
experimentation findings lack adequate specific reasoning and are too
conclusory to support a determination that any experimentation would be
undue. See, e.g., Ans. 6 (“The nature of the invention may cause large-scale
environment impacts. … The amount of experimentation needed to use the
invention based on the content of the disclosure is far too extensive.”)
Lastly, the Examiner states that the claimed invention “is not
supported by the specification in exact terms.” Ans. 5. Emphasis added.
The Examiner’s articulation of the rejection suggests that the Examiner has
set an inappropriately high disclosure requirement. The test for compliance
with the enablement requirement is not whether the disclosure supports the
claimed invention in “exact terms” but rather whether the disclosure, as
filed, is sufficiently complete to enable one of ordinary skill in the art to
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Appeal 2010-000479
Application 11/555,607

make and use the claimed invention without undue experimentation. In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
We conclude that the Examiner has not satisfied the initial burden of
explaining why claims 1 and 3-20 fail to satisfy the enablement requirement
of § 112, first paragraph. As such, we cannot sustain that rejection.

The obviousness rejections
Claims 1, 3-16, and 20
The Examiner found that AAPA discloses all the limitations of
independent claim 1 with the exception of determining the “spatial
coordinates of a time varying localized updraft tower” of a cyclonic
atmospheric disturbance. Ans. 7, 18. However, the Examiner contends that
on page 18, lines 21-26 of Appellant’s Request for Continued Examination,
filed Jun. 17, 2008 (hereafter “RCE”), Appellant admits that “NASA3 has
been locating and identifying spatial coordinates of time varying localized
updraft towers of a cyclonic atmospheric disturbances utilizing high
resolution computer simulation since at least 1998.” Id. The Examiner
further contends that it is well documented that cloud seeding involves
locating a region with an atmospheric disturbance and dropping a substance

3 The Examiner and Appellant refer to a journal article incorporated by
reference in the Specification in its entirety. See Spec., para [0039].
Specifically, they refer to: S.A. Braun et al., High-Resolution Simulation of
Hurricane Bonnie (1998). Part I: The Organization of Eyewall Vertical
Motion, Journal of the Atmospheric Sciences, Vol. 63, Issue 1, p. 19-42
(2006). Since both Appellant and the Examiner refer to this journal paper as
“the NASA reference,” for the purpose of continuity we shall also refer to it
as such. See e.g., App. Br. 22 and Ans. 9.
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within that region. Ans. 18. As such, the Examiner concludes that it would
have been obvious for a person of ordinary skill in the art,
“… to modify the method of cloud see[d]ing
(described in paragraph 5 of the original
specification) in Project Cirrus and drop the dry ice
coolant into the thermal updraft (which is
determined by a computer model similar to that of
the NASA model incorporated into the reference)
of the hurricane to thoroughly disperse the coolant
throughout the hurricane (see Mather US 5357865
column 4 and the abstract of NASA that discloses
the updraft as being associated with and rotating
cyclonically around the eyewall of the hurricane.”

Supp. Ex. Ans. 18, 19.
Although we appreciate the Examiner’s position that in a cloud
seeding operation “the pilot still has to locate and decide to drop at [a]
random cloud or region” (see Ans. 19), we disagree that such a random
location constitutes the “spatial coordinates of a time varying localized
updraft tower” of a cyclonic atmospheric disturbance, as called for by claim
1. We agree with Appellant that when choosing a location at random, as per
the cloud seeding operation, the spatial coordinates are not specifically
determined to constitute “a time varying localized updraft tower” of a
cyclonic atmospheric disturbance. Reply Br. 13.
We further disagree with the Examiner’s reliance on the arguments in
Appellant’s RCE. First, we note that the Examiner did not use the disclosure
of the NASA reference to reject claim 1 as unpatentable under 35 U.S.C.
§ 103(a). Second, we note that the publication year of the NASA reference
is 2006, which is later than the earliest filing date of the instant application
of November 8, 2005. Third, we could not find any portion in the NASA
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Application 11/555,607

reference and the Examiner has not pointed to any portion that discloses
the use of high resolution computer simulation for determining spatial
coordinates of a time varying localized updraft towers of a cyclonic
atmospheric disturbances since at least 1998, as the Examiner contends.
Since the NASA reference merely discusses modeling of a hurricane that
occurred in 1998 and the Examiner does not cite to any particular portion of
the NASA reference to show the use of high resolution computer simulation
since at least 1998, the Examiner has failed to provide a factual basis for the
rejection. The initial burden of proof to produce the factual basis for the
rejection of an application under sections 102 and 103 is on the Patent
Office. See In re Warner 379 F.2d 1011, 1016 (CCPA 1967).
In conclusion, because the Examiner’s conclusion of obviousness is
based on an erroneous interpretation of Appellant’s arguments we shall not
sustain the rejection of claim 1, or its dependent claims 3-13 and 20. See In
re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988).
Each of claims 14-16 also includes the limitation of delivering a
coolant to “spatial coordinates of a time varying localized updraft tower” of
a cyclonic atmospheric disturbance. App. Br., Claims Appendix. Therefore,
for the reasons presented supra, the rejection of claims 14-16 likewise
cannot be sustained.
Lastly, with respect to claims 8-12, the addition of Mather does not
cure the deficiencies of AAPA as described above. Accordingly, the
rejection of claims 8-12 under 35 U.S.C. § 103(a) as unpatentable over
AAPA and Mather also cannot be sustained.

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Appeal 2010-000479
Application 11/555,607

Claims 17-19
Each of claims 17-19 requires a delivery vehicle and a means for
discharging a cryogenic coolant into a time varying localized updraft tower
of a cyclonic atmospheric disturbance. App. Br., Claims Appendix.
The Examiner found that:
"Project Cirrus," disclosed by the Applicant in the
"Background of the Invention," used an aircraft,
which would inherently have a means for
discharging the coolant, to deliver the coolant to
the atmospheric disturbance. It would be inherent
to manufacture the coolant used and load it onto
the plane in order to drop it, via the aircraft, into
the disturbance.
Supp. Ex. Ans. 9.
With respect to independent claim 17, Appellant does not present any
arguments separate from the arguments presented with respect to claim 1.
However, claim 17 is drawn to a system,4 whereas claim 1 is drawn to a
method. It is well established that while features of an apparatus may be
recited either structurally or functionally, claims directed to an apparatus
must be distinguished from the prior art in terms of structure rather than
function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).

4 Although claim 17 is written in means-plus-function format, it is
unclear from the record whether the “means for discharging a cryogenic
coolant into a time varying localized updraft tower of a cyclonic atmospheric
disturbance” has been recognized as a § 112, sixth paragraph “means-plus-
function” limitation because both Appellant and the Examiner are silent as to
its interpretation. Nonetheless, since Appellant’s arguments do not
challenge whether the Examiner's modification of AAPA discloses the
corresponding structure described in the Specification or an equivalent
thereof, we do not reach its merits. See In re Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential).
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Appeal 2010-000479
Application 11/555,607

“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). Therefore, as long as the system of AAPA is capable of
delivering a coolant into a time varying localized updraft tower of a cyclonic
atmospheric disturbance, AAPA satisfies the limitations of claim 17. In this
case, we find that AAPA discloses dropping dry ice (coolant) from an
airplane (delivery vehicle) into a hurricane. Spec., para. [0005]. Since the
airplane of AAPA flew into the hurricane and the time varying localized
updraft tower is merely a location within the hurricane, we conclude that
AAPA’s airplane is capable of delivering the dry ice at a time varying
localized updraft tower of the hurricane. Accordingly, the rejection of claim
17 and its dependent claims 18 and 19, under 35 U.S.C. § 103(a) as
unpatentable over AAPA is sustained.

SUMMARY
The decision of the Examiner is affirmed as to claims 17-19 and
reversed as to claims 1, 3-16, and 20.
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) (2007).

AFFIRMED-IN-PART

JRG

GODO CONSULTING
5045 PARK WEST AVE.
SAN DIEGO, CA 92117
10