Ex Parte Pinto

Patent Trial and Appeal Board

Aug 30, 2013

11197787 (P.T.A.B. Aug. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FABRIZIO PINTO
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Appeal 2010-012113
Application 11/197,787
Technology Center 3600
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Before: EDWARD A. BROWN, HYUN J. JUNG, and
NEIL T. POWELL, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Fabrizio Pinto (Appellant) filed a “Request for Rehearing Under 37
CFR 41.52” (hereinafter “Request”), requesting that we reconsider our
decision of May 1, 2013 (hereinafter “Decision”).
In the Decision, we reversed the rejection of claims 1-20 under 35
U.S.C. § 101 because the disclosed invention is inoperative; we reversed the
rejection of claims 1-20 under 35 U.S.C. § 101 because the claimed
invention lacks a substantial utility; we reversed the rejection of claims 1-20
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under 35 U.S.C. § 112, first paragraph, because one skilled in the art would
not know how to use the claimed invention; we reversed the rejection of
claims 1-9 and 19 under 35 U.S.C. §112, second paragraph, as indefinite and
for omitting essential elements; we reversed the rejection of claims 1-7
under 35 U.S.C. §102(b) as anticipated by Esslinger, Hirano, Gersonde, or
Kasevich; we reversed the rejection of claims 1-7, 9-12, and 14-20 under 35
U.S.C. § 102(b) as anticipated by Cox; and we reversed the rejection of
claim 8 under 35 U.S.C. § 103(a) as unpatentable over Cox. We also
entered a new ground of rejection of claims 1-20 under 35 U.S.C. § 112, first
paragraph, as failing to meet the enablement requirement.
The Appellant argues that “if the Board were to reconsider this case
based on a correct understanding [of] the Specification, the analysis would
compel a different conclusion than that previously reached” because “the
claims on appeal are enabled.” Request 4. Because the Decision applies the
multi-factor analysis from In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988),
the Appellant presents arguments for each of the Wands factors, which we
address in turn infra.
As for the Wands factor of quantity of experimentation needed to
make or use the invention based on the content of the disclosure, the
Decision finds that
the Specification does not describe, for example, what amount
of electromagnetic radiation a device must deliver that is
sufficient to induce long-range interactions between particles
and cause the particles to accelerate or hover, as required by
claims 1 and 17 or current a controller must provide to a laser
that is sufficient to induce long-range interactions between
particles and cause the particles to accelerate or hover, as
required by claim 19.

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Decision 10.
The Appellant contends that “[e]quations (51) and (52) of
[A]ppellant’s Specification provide the power requirement to induce
particles to exhibit long-range interactions and cause the particles to
accelerate or hover (or generate a lifting force)” and that “[k]nowing the
power requirement, one skilled in the art can readily determine how much
current a controller must supply to a laser to generate that power.” Request
5. The Appellant also argues that “35 MW actually provides an amount of
EM radiation that a device must deliver or current that must be provided to a
laser that is sufficient to induce particles to exhibit long-range interactions
and cause the particles to accelerate or hover.” Request 6. The Appellant
further argues that “reload time will have no effect on the amount of power
that is required to cause the particles in the trap to hover.” Request 8
(emphasis omitted).
The arguments are not persuasive. As stated on pages 9-10 of the
Decision, the Specification does not describe what amount of
electromagnetic radiation a device must deliver that is sufficient to induce
long-range interactions between particles and cause the particles to
accelerate or hover, as required by claims 1 and 17, or current a controller
must provide to a laser that is sufficient to induce long-range interactions
between particles and cause the particles to accelerate or hover, as required
by claim 19. Page 31 of the Specification provides equations, such as
equations (51) and (52), for estimating the “total radiation power utilized,”
but does not there mention an amount of electromagnetic radiation sufficient
for inducing short-range interactions to exhibit long-range interactions and
causing particles to accelerate or hover, as required by the claims. Also, the
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Specification fails to indicate how the estimated total radiation power is
applied so as to meet the Specification’s earlier statement that “it is
immediate to conclude that the almost immediate ionization of the entire
atomic population is highly likely in all technologically meaningful cases
and that . . . it is imperative to choose parameters that ensure the expulsion
of the gas from the trap before this process is completed” at page 26. As
described on page 23 of the Decision, we do not find, nor does the Appellant
explain, how the Specification guides the skilled artisan in choosing those
unspecified “parameters” so as to cause particles to hover or accelerate, but
not ionize the entire atomic population.
The numerical example that begins on page 35 of the Specification, as
explained by the Appellant, is based on equations (51) and (52). The 35
MW and 2.7 kW values of the numerical example indicate the power
requirement or the rate of energy transfer, but not the claimed amount of
electromagnetic radiation or current a controller must provide to a laser that
is sufficient to induce long-range interactions between particles and cause
the particles to accelerate or hover. The numerical example also does not
provide guidance as to how to choose parameters to ensure the expulsion of
gas from a trap before immediate ionization, as advised by the Specification.
For example, the Appellant does not explain how the Specification guides
the skilled artisan to expose 0.786 kg of a gas in a chamber with a diameter
of 20.3 cm to 35 MW so that the 0.786 kg of gas provides acceleration to a
10 metric ton vehicle due to impact of the gas with a plate without having
the 35 MW thermally expand the gas, ionize the gas, or form plasma with
the gas. See Spec. 35.
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The Appellant argues that “those skilled in the art are well aware that
the U.S. and Russia have been powering satellites and space craft via nuclear
systems for over 50 years.” Request 10. The Appellant argues that designs
for multi-megawatt, space-based nuclear reactors have existed for decades.
Request 10-18. The Appellant contends that six designs can produce in
excess of 35 MW and that 35 MW of power can be supplied by two or more
reactors. Request 15. However, none of the Appellant’s cited examples of
space-based nuclear reactors indicate a 35 MW reactor can be fitted onto a
10 metric ton craft. As stated in the Decision, one of ordinary skill in the art
would need to experiment to find or develop a suitable power source that can
be put on a 10 metric ton craft and be capable of over 30 MW. Decision 12.
The Appellant argues that “perturbation theory indicates that, based
on the lifetimes of Rydberg atoms versus the laser turn-on time and light
transit time, the electromagnetic radiation can be delivered to particles
before modification to [the] wavefunction of the particles occurs.” Request
18. The Appellant states that “[t]here is NO experimentation required to
‘uncover how to expose particles while behaving as atomic dipoles and
before turning to plasma’” because “[t]hat has been done by researchers for
decades.” Request 19. The Appellant also states that “some
experimentation will be required, at least to confirm the [A]ppellant’s
expectations based on perturbation theory, [but] it will not require inventing
new devices or procedures or experimenting at great lengths without
guidance.” Id.
The arguments are not persuasive. Although the Appellant explains
that exposing particles before ionization is possible, the Appellant fails to
explain how the skilled artisan relying on the Specification as a guide would
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be able to achieve the result of exposing particles to cause them to hover or
accelerate before those same particles absorb the energy needed for causing
ionization. For example, the Specification does not explain how the skilled
artisan, using the numerical example, should expose 0.786 kg of a gas in a
20.3 cm diameter chamber to 35 MW so that the 0.786 kg of gas provides
acceleration to a 10 metric ton vehicle before the 35 MW thermally expand
the gas, ionize the gas, or form plasma with the gas. See Spec. 35.
As for the Wands factor of the amount of direction or guidance
presented, the Appellant argues that the Specification includes equations that
provide power requirements. Request 21. The Appellant states that “the
Specification indicates that it is reasonable to assume that ‘the upward
acceleration of the atoms takes place in the very early stages of immediately
following the application of the laser radiation and before the eventual
modification of the wavefunction intervenes.” Id. at 22. As discussed
supra, the power requirements specified do not provide guidance as to how
to choose the parameters to ensure expulsion of the gas before immediate
ionization. See also Decision 13. Also, the Appellant does not explain how
the Specification’s indication of upward acceleration before eventual
waveform modification guides the skilled artisan to the claimed subject
matter.
As for the Wands factor of the existence of working examples, the
Appellant states that “there is no working example disclosed in the
Specification or otherwise in existence.” Request 23. The Appellant further
states that, because of limited time and financial resources, “there is no
working prototype.” Id. The Appellant thus asserts that “it is unreasonable
to draw any conclusion whatsoever from the fact that there is no working
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model, other than to conclude that the inventor could not afford to build it.”
Id.
Although we appreciate that an inventor may not have the time or
resources to build a working model of an invention, such lack of time and
resources need not be the only reason a working model has not been built, as
asserted by the Appellant. Moreover, in the present analysis using the multi-
factor approach of Wands, the lack of a working model is one factor that
weighs against enablement, but the other factors may indicate that the lack
of a working example is outweighed.
For the next Wands factor, the nature of the invention, the Appellant
argues that the Decision incorrectly presumes “that the relevant art to the
claimed invention is conventional propulsion technology” and contends that
the “relevant art here is not conventional propulsion technology, but ‘the
subject matter to which the claimed invention pertains’ . . . is lasers, atomic
traps, and the study of interatomic forces.” Request 23-24. The Appellant
thus asserts that “any experimentation that might be required to make and
use the claimed invention would involve concepts routinely encountered in
the above referenced relevant arts and thus should be considered to be
‘routine.’” Id. at 24.
The Appellant’s identification of relevant arts and statement that
experimentation would involve concepts routinely encountered in the
identified arts are not persuasive. The Appellant does not explain how in the
identified relevant arts such experimentation involves concepts routinely
encountered to determine parameters so as to cause particles to hover or
accelerate but not ionize. Moreover, the Appellant has not explained how
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the record supports the contention that experimentation would involve
concepts routinely encountered in the identified arts.
As for the state of the prior art, the Appellant states that “the relevant
prior art includes high-power lasers, atomic traps, and work related to
interatomic forces and connected fields.” Request 25. The Appellant
contends that “[a]lthough [A]ppellant’s invention[] extends the operation of
the atomic trap to a new regime using high power lasers, the implementing
technologies have been available for decades” and “[a]s a consequence, any
experimentation required to be performed by those skilled in the relevant
arts will, in fact, be routine and feasible using [A]ppellant’s Specification as
a guide.” Id.
The argument is also not persuasive. The Appellant does not explain
how the Specification is a guide to those skilled in the relevant art so that
known lasers and atomic traps can be combined to enable the claimed
subject matter. Although lasers and atomic traps may be known, the
Appellant does not explain how the Specification guides the skilled artisan
to combine these known components to achieve the claimed result, instead
of another result, such as ionization of the gas. The Appellant also does not
cite any portion of the Specification that explains how known lasers and
atomic traps are to be operated so that they operate in the new regime. The
Appellant does not explain how the Specification guides the skilled artisan
with knowledge in the relevant arts to make and use the Appellant’s
extension of an atomic trap to a new regime so that such an atomic trap
operates in the new regime.
As for the Wands factor of the relative skill of those in the art, the
Appellant argues that “[i]t should be immediately apparent that if one were
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to attempt to build a system for carrying out the claimed invention, the
individuals on the design team would be experts in high-power lasers,
atomic traps, and interatomic forces and related forces.” Request 26. The
argument is not persuasive because it does not cogently explain how the
Specification enables the asserted skilled artisans using their skill to
combine known lasers and atomic traps can achieve the claimed result,
instead of another result, such as ionization of the gas, so as to make and use
the claimed subject matter.
As for the Wands factor of level of predictability in the art, the
Appellant argues that physics is a predictable art and that “the relevant prior
art to the claimed invention is lasers and atomic traps, which have been used
and studied extensively for many years.” Request 27-28. Also, the
Appellant states that “[i]n fact, one skilled in the art would learn, if they did
not already know, that using lasers to transform short-range interactions into
long-range interactions among neutral atoms was known in the art prior to
the invention.” Request 29 (citing Spec. 7). The Appellant further states
that “the Inventor anticipated that once actually determined by
experimentation, it will be found that the time spent by the atoms in the trap
is relatively short” and that “[t]here is no doubt that once the problem is
‘solved;’ that is, once a mathematical expression that describes the behavior
is developed, the atoms will behave as computed every time.” Request 30.
The arguments are not persuasive. Although lasers and atomic traps
have been used and studied extensively for many years and the Appellant
states that using lasers to transform short-range interactions into long-range
interactions is known in the art, the use of lasers and atomic traps for the
claimed “device for delivering electromagnetic radiation to the confined
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particles, wherein said device delivers an amount of electromagnetic
radiation that is sufficient to: (i) induce long-range interactions between said
particles; and (ii) cause said particles to either accelerate or hover,” is not
according to the Specification. Page 28 of the Specification also states that
“[p]art of the refining work of the present invention will be to consider in
detail the dynamics of the evolution of the atoms in the intense radiation
field.” Also, the Appellant does not explain how the Specification guides
the skilled artisan to determine experimentally the time spent by atoms in a
trap or to develop a mathematical expression that describes the behavior of
atoms in an intense radiation field so that these atoms will behave as
computed every time, as asserted by the Appellant.
As for the breadth of the claims, the Appellant states that “[c]laim 1 is
implicitly broad enough (by virtue of dependent claims) to encompass
embodiments including a vehicle” and that “[c]laim 17 is explicitly broad
enough to include a vehicle and a power source.” Request 31. The
Appellant argues that “neither claim 1, nor any of its dependent claims recite
a power source” and “to the extent that claims 1 or 17 require a power
source or a vehicle, that still does not require a nuclear power plant, crew
quarters, and shielding to enable their full scope.” Id. at 32. The Appellant
also argues that the “Specification does not need to teach one skilled in the
art how to make and use an embodiment that includes a nuclear power
subsystem, crew quarters, and shielding to enable the full scope of claim
19.” Id. at 33.
However, the Specification describes a vehicle 800 incorporating
propulsion system 100 that includes a nuclear power subsystem 810. Spec.
12-13 and figs. 8 and 9; see also Spec. 35-38. The Specification indicates
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that reactor power densities of approximately 1-5 kW/kg can generate laser
pulses over 30 MWe, but does not indicate other feasible power sources.
Spec. 37. The Appellant does not explain how the Specification describes
another embodiment with another power source so as to guide the skilled
artisan to make and use the claimed subject matter.
After considering the Appellant’s arguments regarding each of the
Wands factors, the facts from the disclosure underlying each factor, and the
evidence as a whole, we are not persuaded that the Specification enables one
of ordinary skill in the art to make and use the full scope of the claims.

DECISION
For the reasons supra, Appellant’s Request has been granted to the
extent that we have reconsidered our Decision in light of the arguments in
Appellant’s Request, but is denied with respect to our making any
modification to the Decision.
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).
DENIED

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