Ex Parte PintoDownload PDFPatent Trial and Appeal BoardAug 30, 201311197787 (P.T.A.B. Aug. 30, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte FABRIZIO PINTO ____________________ Appeal 2010-012113 Application 11/197,787 Technology Center 3600 ____________________ 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 Appeal 2010-012113 Application 11/197,787 2 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. Appeal 2010-012113 Application 11/197,787 3 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 Appeal 2010-012113 Application 11/197,787 4 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. Appeal 2010-012113 Application 11/197,787 5 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 Appeal 2010-012113 Application 11/197,787 6 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 Appeal 2010-012113 Application 11/197,787 7 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 Appeal 2010-012113 Application 11/197,787 8 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 Appeal 2010-012113 Application 11/197,787 9 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 Appeal 2010-012113 Application 11/197,787 10 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 Appeal 2010-012113 Application 11/197,787 11 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 msc Copy with citationCopy as parenthetical citation